CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
Claim Construction J
The Parties’ Positions
Plaintiff submits: Defendant’s indefiniteness position is premised on the Asserted Patents having to provide how the recited determinations are made. This is an issue of enablement, not definiteness. Dkt. No. 48 at 13–14.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: ’061 Patent col.1 ll.42–45, col.5 ll.63–66. Extrinsic evidence: Thornton Decl. ¶¶ 46–48 (Plaintiff’s Ex. F, Dkt. No. 48-7 at 18–19); Carbonell Decl. ¶¶ 37–41 (Plaintiff’s Ex. E, Dkt. No. 48-6 at 15–18).
Defendant responds: “Determining” the parameters stated in the claims may cover “a variety of activities” and neither the claims nor the rest of the specification of the Asserted Patents provide guidance regarding what activities are within the scope of determining in the claims. For the meanings of the Determining Terms to be clear, the claims or the technical disclosure must provide either an input or output and also “the process or algorithm for how the actual determining is made.” The patents, however, “fail to disclose any techniques for determining” the recited parameters. Thus, the meanings of the Determining Terms are not reasonably clear. Dkt. No. 50 at 25–28.
In addition to the claims themselves, Defendant cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: ’061 Patent col.3 ll.49–52, col.4 ll.12–20. Extrinsic evidence: Thornton Decl. ¶¶ 46–56 (Defendant’s Ex. H, Dkt. No. 50-9 at 18–23).
Plaintiff replies: The issue of whether the Asserted Patents disclose any techniques for determining a recited parameter is not an issue of claim construction. Rather, this is an issue of enablement. In any event, the patents disclose using a look-up table to determine frequency. Dkt. No. 53 at 5–6.
Plaintiff cites further intrinsic evidence to support its position: ’061 Patent col.5 ll.23–28, col.5 ll.63–67.
Analysis
The issue is whether the Asserted Patents must provide algorithms for the various “determining” functions recited in the claims for the claims to be definite. They do not.
The Court is not persuaded by Defendant’s argument that for a claim including functional language to be definite, the functional language must be supported by descriptions of algorithms for how the function is performed. While this may be true when 35 U.S.C. § 112, ¶ 6 applies, Defendant provides no legal support for this as a rule separate from § 112, ¶ 6 and does not directly argue that § 112, ¶ 6 applies to the Determining Terms. Thus, whether the “determining” language is supported by the written description is determined under the enablement or written-description statutory requirements, it is not an issue of claim construction.
Accordingly, the Court holds that Defendant has not proven any claim indefinite by reason of including “determining” in the claim language and holds that the Determining Terms have their plain and ordinary meaning without the need for further construction.
Case No. 2:18-cv-00192
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