Free Remark - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION REMBRANDT TECHNOLOGIES, LP Plaintiff, v. COMCAST CORPORATION; COMCAST CABLE COMMUNICATIONS, LLC; AND COMCAST OF PLANO, LP Defendants. § § § § § § § § § § §

Civil Action No. 2-05CV-443 Judge T. John Ward Jury Demand

DEFENDANT COMCAST CORPORATION'S RESPONSE TO PLAINTIFF'S MOTION FOR CLARIFICATION REGARDING P.R. 3-1(H) I. INTRODUCTION

In its Motion for Clarification, Rembrandt does not dispute that it intends to prove the existence of certain claim elements by reference to the source code for the Accused Instrumentalities. In fact, Rembrandt concedes that some devices may not implement the claim elements except in software / firmware, and Rembrandt expressly reserves the right to prove infringement with reference to the source code alone. Nevertheless, Rembrandt takes the novel position that it is not bound by the requirements of this Court's Patent Rule 3-1(h), and that it need not update its Preliminary Infringement Contentions to identify the source code of the Accused Instrumentality that allegedly satisfies those software limitations. Rembrandt's position appears to be that so long as its review of source code is consistent in its mind with the general assertions made in its Preliminary Infringement Contentions ("PICs"), it does not have to comply with Rule 3-1(h). But Rule 3-1(h) contains no such exception, and Rembrandt cites no support for its abridged construction. Contrary to

Rembrandt's interpretation, the Court explained in its Amended Discovery Order that the purpose of Rule 3-1(h) is to provide alleged infringers with specific infringement contentions early on in the case, and that the failure to do so hampers a defendant's "ability to prepare a

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defense." (Amended Discovery Order dated Jun. 15, 2006, at 9). For claim elements that are allegedly satisfied by software limitations, the rule could not be any clearer that a plaintiff has 30 days from the receipt of source code to "identify, on an element-by-element basis for each asserted claim what source code of each Accused Instrumentality allegedly satisfies the software limitations of the asserted claim elements." (See id. (emphasis added)). Given that Rembrandt admits that it intends to show that certain claim elements are met by software / firmware limitations in the Accused Instrumentalities, Rembrandt should comply with Rule 3-1(h) and supplement its Preliminary Infringement Contentions. Rembrandt should not be allowed to hide the ball regarding which claim elements it contends are met by software limitations, and what software or source code it believes support those contentions. Such tactics are not permitted by the letter or intent of this Court's rules.

II.

BACKGROUND

Rembrandt served its Preliminary Infringement Contentions ("PICS") on May 12, 2006. Therein, Rembrandt contends that Comcast infringes the patents-in-suit by its adherence to two industry standards: the ATSC standard for United States Patent No. 5,243,627 ("the `627 Patent"); and DOCSIS for United States Patent Nos. 5,852,631, 4,937,819, and 5,719,858 (the `631, `819, and `858 Patents"). (See generally Ex. A to Mot. for Clarification). The ATSC standard defines certain characteristics for the transmission of digital television signals over the air. DOCSIS is a protocol that defines certain characteristics of high-speed internet service on a cable system. The only details Rembrandt provides in its PICs are citations to these standards. This is so even for those claim elements for which ATSC and DOCSIS are silent because they do not specify all details of compliant equipment. Rembrandt's PICs do not contain a specific reference to any of the Accused Instrumentalities, or a description of where the claim limitations allegedly can be found in the devices as constructed or implemented. (See generally id.). Also, for nearly every claim element, Rembrandt states in its PICs that: "This claim element may include features that relate to software of the Accused Instrumentalities, and Rembrandt reserves

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the right to supplement or modify these contentions under Judge Ward's modification to the Local Patent Rules, Rule 3-1(h)." (See generally id.). Because Rembrandt did not yet have any software / firmware for the Accused Instrumentalities, and supposedly could only rely on the publicly available standards, Comcast did not object to the adequacy of Rembrandt's Rule 3-1 disclosure. Comcast reasonably

expected--in accordance with the Local Patent Rules and this Court's Amended Discovery Order--that for those claim elements that Rembrandt intended to meet by reference to software limitations in the Accused Instrumentalities, Rembrandt would supplement it PICs after receiving the relevant source code. Rembrandt did not do so. Instead, on November 1, 2006, more than five months after Rembrandt served its PICs, Rembrandt sent a letter to Comcast stating that it did not intend to supplement its PICs, even though it intended to rely on source code to meet certain claim limitations. (See Ex. C to Mot. for Clarification). Rembrandt's position, as stated in its letter, is that because its analysis of source code only confirms its earlier contentions, Rule 3-1(h) does not apply. (See id.).

Rembrandt was careful, however, to reserve the right to rely at trial on any software implementation found in source code, regardless of whether its infringement contentions ever identified how such software complies with the asserted claims. (See id.). On November 3rd Comcast responded to Rembrandt's letter by citing Rule 3-1(h) and requesting that for every claim element Rembrandt contends to be met by a software limitation, Rembrandt supplement its PICs to identify the corresponding source code. (See Ex. D to Mot. for Clarification). After an unsuccessful meet and confer, the instant motion followed. III. A. ARGUMENT

Rembrandt Misinterprets Rule 3-1(h). Rembrandt contends that Rule 3-1(h) only "applies in a situation where a party cannot

`accurately indicate where the infringement occurs without the source code.'"

(Mot. for

Clarification, at 6 (citations omitted)). Rembrandt then argues that because its PICs provide

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some indication of where the infringement occurs, i.e., in the industry standards, and its review of source code to date is consistent in its opinion with those contentions, Rule 3-1(h) is not applicable in this case. (See id.). But the language of Rule 3-1(h) is not so limited, and nothing excuses Rembrandt from its obligations under the rule. To the contrary, Rule 3-1(h) applies whenever a party "asserts that a claim element is a software limitation." (Amended Discovery Order dated Jun. 15, 2006, at 9). In those instances, a party is required within 30 days from the receipt of source code to "identify, on an element-by-element basis for each asserted claim what source code of each Accused Instrumentality allegedly satisfies the software limitations of the asserted claim elements." (Id.). The exception that Rembrandt concocted simply is not

supported by the plain language of the rule. Rembrandt's narrow interpretation of Rule 3-1(h) also is not supported by American Video Graphics, LP v. Electronic Arts, Inc., 359 F. Supp. 2d 558 (E.D. Tex 2005), the decision cited by this Court as a basis for its adoption of Rule 3-1(h). In American Video Graphics, as here, the plaintiff argued that it had satisfied Rule 3-1, despite not having identified in its preliminary infringement contentions any of the allegedly infringing source code. The Court agreed, stating that "AVG has complied with Rule 3-1(c) to the best of its current ability." (Id. at 561). Nonetheless, "[t]o accommodate Defendants' need for more specific information," the court ordered the plaintiff to "supplement its 3-1(c) charts with specific references to the source code within 30 days of Defendants depositing the code into escrow." (Id.). Thus, under American Video Graphics, even if Rembrandt's PICs initially satisfied Rule 3-1, as it claims, Rembrandt is not exempted from supplementing those contentions with references to source code once the source code becomes available. Furthermore, the exception from Rule 3-1(h) that Rembrandt is seeking is inconsistent with the purpose behind Rule 3-1 and would significantly prejudice Comcast's ability adequately to defend itself in this litigation. Rules 3-1 and 3-1(h) are designed and intended to provide accused infringers with specific infringement contentions early on in the case: "The Patent Rules require a party asserting claims of patent infringement to take a firm position in the litigation as

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it relates to infringement early on in the case [as] parties opposing a claim for patent infringement are hampered in their ability to prepare a defense absent specific infringement contentions." (Amended Discovery Order dated Jun. 15, 2006, at 9). Under Rembrandt's interpretation, however, it could hide behind its alleged lack of knowledge about the source code running in the Accused Instrumentalities long after it has had the opportunity to analyze the source code, thus denying Comcast the ability to know how Rembrandt contends there is infringement--not merely hypothetical infringement with reference to a generic standard, but actual infringement by a particular device or service. Such gamesmanship is not permitted by the letter or intent of this Court's rules. In short, Rembrandt has, in qualified terms, admitted that various claim elements are software limitations. Once it receives the source code, it must clarify these qualified contentions: either it contends that the claim is satisfied by source code, in which case it must update its contentions with reference to source code, or it must effectively disavow that the claim is satisfied by source code. The one possibility that is not available to Rembrandt is to not amend its contentions with reference to source code and then later seek to use the source code for proof of infringement. To allow Rembrandt this option would vitiate Rule 3-1(h). B. For Those Claim Elements That Are Not Discussed in the Applicable Standard, Rembrandt Has Not Complied With Local Patent Rules 3-1 or 3-1(h) Even if the Court were to adopt Rembrandt's reading of Rule 3-1(h), Rembrandt should still be required to supplement its PICs for at least the claim elements for which Rembrandt has not, and cannot, specifically identify any allegedly infringing structures or operations within the ATSC or DOCSIS standards. For these elements, the specific software / firmware of the

Accused Instrumentalities is the only structure Rembrandt possibly can point to in an effort to show that the claim elements are met. For example, both of the asserted claims (Claims 9 and 19) in the `627 Patent purport to claim a "receiver" for receiving and processing a signal with certain characteristics. However, the ATSC standard, which forms the entire basis of the existing infringement contentions, does

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not specify the structure or operation of receivers at all.

It only describes transmitters.

Therefore, it is simply impossible for the current PICs for Claims 9 and 19 to be adequate without supplementation by reference to firmware or software that actually defines the operation of the accused receivers. For instance, the only description Rembrandt provides in its PICS for the "distributed viterbi decoder" element in Claims 9 and 19 is the following. On information and belief, ATSC compliant receivers necessarily have a distributed Viterbi decoder, or an equivalent circuit or software module, that recovers the originally encoded information encoded by the distributed trellis encoder described in the ATSC Standard. (Ex. A, Part 1 to Mot. for Clarification, at p. 15 of 50 (emphasis added)). But a "distributed Viterbi decoder" is not discussed anywhere in the ATSC standard. Similarly, for the

"deinterleaving the interleaved signal points" elements of Claims 9 and 19, Rembrandt merely states in its PICs that the Accused Instrumentalities "necessarily have" "deinterleaving circuitry or software[.]" (Id. at 14 of 50, 22 of 50). The same is true for the asserted claims in "the '631 Patent. Claim 1 of the `631 Patent requires both a "plurality of possible physical layer modulations" and a "plurality of possible link layer connections." (Ex. A, Part 4 to Mot. for Clarification, at 11 of 37 & 13 of 37). While DOCSIS may allow for and accommodate a "plurality" of modulations or connections, the Accused Instrumentalities, as implemented, may only contain one form of modulation or connection. Consequently, Rembrandt necessarily will need to rely on the software or firmware of the Accused Instrumentalities in order to meet these limitations. Rembrandt's need to rely on software or firmware to prove infringement is even more obvious with other claim elements in the `631 Patent. For example, Claim 10 requires "[a] computer program product having a computer readable medium including computer program logic ...." (Ex. A, Part 4 to Mot. for Clarification, at 30 of 37). In support of this element, Rembrandt's PICS, as currently constituted, simply state: "On information and belief, the

Accused Software is a computer program having a computer readable medium including computer program logic recorded thereon." (Id. (emphasis added)). There can be no question

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that this contention fails to meet the requirements of Rules 3-1 and 3-1(h).

(See, e.g.,

STMicroelectronics, Inc. v. Motorola, Inc. 308 F. Supp. 2d 754, 755 (E.D. Tex. 2004) (preliminary infringement contentions must provide notice of infringement that goes "beyond that which is provided by the mere language of the patent")). In sum, Rembrandt own PICs demonstrate that infringement of many claim elements cannot be proven solely by reference to the industry standards or protocols that currently provide the basis for Rembrandt's infringement contentions. In order to satisfy its burden of proof with respect to these elements, Rembrandt necessarily will be forced to rely on the software / firmware of the Accused Instrumentalities. Rembrandt concedes as much in its Motion for Clarification, where it seeks to reserve rights to prove infringement of certain claim elements solely by reference to source code evidence while simultaneously shirking its obligations to disclose the source code it intends to rely upon under the rules. (See Mot. for Clarification at 4, n.3, 5). Comcast respectfully submits that with respect to these claim elements at a minimum, Rule 3-1(h) requires Rembrandt to update its PICs and identify the particular source code that allegedly supports Rembrandt's contentions. C. Rembrandt Cannot Avoid Rule 3-1(h) Merely Because It Believes the Rule Is Onerous In This Case. Animating Rembrandt's entire pleading is the notion that Rule 3-1(h), if applied literally, would cause "substantial prejudice" to plaintiffs in cases such as this by requiring unnecessary supplementation of PICs. (Mot. for Clarification, at 5). Rembrandt posits that, absent relief from the Court, it will be forced to supplement its PICs over 30 times in this case, which could trigger a new round of invalidity contentions each time. (See id. at 4-5). In the first instance, Rembrandt can hardly be heard to complain about the burdens of Rule 3-1(h), given that it chose to implicate dozens or more different devices in this lawsuit. The scope of its obligations under Rule 3-1 is coextensive with the sweeping nature of its allegations. Moreover, Rembrandt mischaracterizes Comcast's position in an attempt to exaggerate the burdens associated with this rule. If Rembrandt already has provided specific allegations

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regarding how the ATSC and DOCSIS standards allegedly read on the asserted claim elements, Comcast is not insisting that Rembrandt supplement its entire PICs every time source code merely confirms that a device complies with those standards. Rather, Comcast is simply

requesting that for those claim elements for which Rembrandt cannot provide direct, specific citations to the ATSC or DOCSIS standards to support its PICs, Rembrandt should be required to state which elements it contends are software limitations and to identify the specific software / firmware of the Accused Instrumentalities that allegedly satisfies these limitations. Anything less would deny Comcast notice of Rembrandt's theory of infringement, and would unfairly hamper Comcast's ability to prepare its defense. Finally, with regard to the timing of any Rule 3-1(h) supplementation of Rembrandt's PICs, Comcast offered to meet and confer to work out a reasonable schedule, but Rembrandt declined Comcast's offer. If the Court concludes that Rule 3-1(h) applies in this case, Comcast submits that the parties should endeavor to work out a reasonable schedule for Rembrandt to comply. But permitting Rembrandt to wait until every last third-party witnesses produces source code, as Rembrandt requests, is both unworkable and unnecessary. Such an outcome almost certainly would leave Comcast in the position of not knowing the specific bases for Rembrandt's contentions until very end of discovery, when it will be too late for Comcast to adjust its defense in response to those contentions. Unlike American Video Graphics and other cases, the timing of the production of source code is not in Comcast's control. And with only three companies' source code currently on deposit, it only makes sense that Rembrandt should immediately comply with respect to the devices using those three samples of source code, rather than waiting and attempting to provide disclosures regarding all source code all at once at or near the close of discovery. IV. CONCLUSION

In trying to argue its way out of Rule 3-1(h), Rembrandt straddles two inconsistent lines of reasoning. On the one hand, Rembrandt claims that any citation to software would "provide[]

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only supplemental evidence of infringement" and is therefore unnecessary. Clarification, at 5).

(Mot. for

On the other hand, Rembrandt concedes that some devices may not

implement the claim elements except in software, and Rembrandt therefore expressly reserves the right to prove infringement with reference to software alone. (See id. at 4, n.3, 5).

Rembrandt cannot have it both ways. If Rembrandt contends that a claim element is met by a software / firmware limitation, it has an obligation under this Court's Rule 3-1(h) to say so in its Preliminary Infringement Contentions, and to identify the particular source code that supports its contention. If Rembrandt fails to comply with this obligation, Comcast respectfully submits that Rembrandt should not be allowed to later surprise Comcast and rely on source code at trial. Respectfully submitted, /s/ Jennifer Haltom Doan Jennifer Haltom Doan Texas Bar No. 08809050 John Peyton Perkins, III Texas Bar No. 24043457 HALTOM & DOAN 6500 N. Summerhill Road, Suite 1A P. O. Box 6227 Texarkana, TX 75505-6227 Telephone: 903-255-1000 Facsimile: 903-255-0800 Brian Ferral Leo Lam Matthew M. Werdegar Eric H. MacMichael Keker & Van Nest, LLP 710 Sansome Street San Francisco, CA 94111-1704 Telephone: 415-676-2235 Facsimile: 415-397-7188 ATTORNEYS FOR DEFENDANTS COMCAST CORPORATION, COMCAST CABLE COMMUNICATIONS, LLC, and COMCAST OF PLANO, LP

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CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). As such, this answer was served on all counsel who are deemed to have consented to electronic service. All other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by certified mail, return receipt requested, on this 9th day of November, 2006.

/s/ Jennifer Haltom Doan Jennifer Haltom Doan

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

REMBRANT TECHNOLOGIES, LP Vs. COMCAST CORP., ET AL.

§ § § CIVIL ACTION NO. 2:05CV443

ORDER Time Warner's unopposed motion for leave to exceed page limits (#90) is granted. SIGNED this 13th day of November, 2006.

__________________________________________ T. JOHN WARD UNITED STATES DISTRICT JUDGE

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SEALED DOCUMENT

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION REMBRANDT TECHNOLOGIES, LP v. COMCAST CORPORATION; COMCAST CABLE COMMUNICATIONS, LLC; AND COMCAST OF PLANO, LP Civil Action No. 2:05-cv-00443-TJW

JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT Pursuant to Eastern District of Texas Patent Rule 4-3, Plaintiff Rembrandt Technologies LP ("Rembrandt"), and Defendants Comcast Corporation, Comcast Cable Communications, LLC, and Comcast of Plano, LP (collectively "Comcast") hereby provide their Joint Claim Construction and Prehearing Statement. I. AGREED CLAIM CONSTRUCTIONS The parties have agreed that certain claim terms, phrases, or clauses that were the subject of the parties' Patent Rule 4-2 Exchange do not presently require construction by the Court, and have removed those claim terms, phrases, or clauses from the charts attached to this pleading. The parties have also agreed as to the function of certain of the means-plusfunction terms in the patents-in-suit. Because the corresponding structure remains in dispute, these terms are listed in exhibit A, attached. II. DISPUTED CLAIM CONSTRUCTIONS The parties have set forth their proposed constructions, including the intrinsic and extrinsic evidence relied upon in support thereof, in Exhibit A, attached. The parties reserve the right to rely on any evidence cited by either party. The parties further reserve

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the right to offer rebuttal expert testimony on any claim term for which the other party offers expert testimony. III. ANTICIPATED LENGTH OF CLAIM CONSTRUCTION HEARING The parties believe that it would be appropriate for the Court to allocate four hours to the claim construction hearing, with two hours allocated to each side, including reserved rebuttal time. IV. CLAIM CONSTRUCTION WITNESSES The parties do not anticipate calling live witnesses at the claim construction hearing except as the Court may request. If so requested, Rembrandt would present the testimony of Dr. V. Thomas Rhyne and Dr. Stephen Wicker. Comcast would present the testimony of Dr. Curtis A. Siller, Jr., and Dr. Harry Bims. V. CLAIM CONSTRUCTION PREHEARING CONFERENCE The parties do not believe a claim construction prehearing conference is needed, except at the request of the Court.

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Dated: November 14, 2006

Respectfully submitted,

By: /s/ Thomas A. Brown Otis Carroll State Bar No. 03895700 Wesley Hill State Bar No. 24032294 IRELAND, CARROLL & KELLEY, P.C. 6101 S. Broadway, Suite 500 Tyler, Texas 75703 Tel: (903) 561-1600 Fax: (903) 581-1071 Email: [email protected] Frank E. Scherkenbach Lawrence K. Kolodney Michael H. Bunis Thomas A. Brown FISH & RICHARDSON P.C. 225 Franklin Street Boston, MA 02110 Tel: 617-542-5070 Fax: 617-542-8906 Timothy Devlin FISH & RICHARDSON P.C. 919 N. Market Street, Suite 1100 Wilmington, DE 19899-1114 Tel: 302-652-5070 Fax: 302-652-0607 Alan D. Albright State Bar # 00973650 FISH & RICHARDSON P.C. One Congress Plaza, 4th Floor 111 Congress Avenue Austin, TX 78701 Tel: 512-391-4930 Fax; 512-591-6837 Attorneys for Plaintiff REMBRANDT TECHNOLOGIES, LP

By: /s/ Matthew M. Werdegar (by permission TAB) Jennifer Haltom Doan HALTOM & DOAN, LLP 6500 Summerhill Road, Suite 1A P.O. Box 6227 Texarkana, TX 75505-6227 Telephone: (903) 255-1000 Facsimile: (903) 255-0800 Brian L. Ferrall Leo L. Lam Matthew M. Werdegar Eric H. MacMichael KEKER & VAN NEST, LLP 710 Sansome Street San Francisco, CA 94111-1724 Telephone: (415) 391-5400 Facsimile: (415) 397-7188 Attorneys for Defendant COMCAST CORPORATION

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CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the foregoing was served by electronic filing to all counsel of record on this 14th day of November, 2006. /s/ Thomas A. Brown Thomas A. Brown

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EXHIBIT A: DISPUTED CLAIM TERMS

United States Patent No. 5,243,627 Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence Proposed construction Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence The output of a mapper that is generated from the output of a single state transition of a trellis encoder.

`627 Patent Claim Terms

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trellis encoded channel symbol (claims 9, 19)

A set of one or more trellis encoded signal points that corresponds to a group of bits that is treated as a unit by an Intrinsic Evidence encoding system Abstract Intrinsic Evidence Col 1 Lns. 38-44; 48-58; 59 Col 2 Ln 2; 5-13; 14-18; 21-28; 31-50; 53 ­ Col. 4 Ln. 3; Abstract. Col 4 Lns 4-11; 12-24 Col 6 Lns 3-23; 36-39; Ln 55 ­ Col 7 Ln 6 Figures 1, 2, 3, 4, 5, 6, 7. Col 7 Lns 9-18; 25-32; 33-54; Ln 55 ­ Col 8 Ln 9 Column 1, line 34 ­ column 2, line 50. Col 8 Lns 14-35; 38-56; 58 ­ Col 9 Ln 13 Col 9 Lns 14-28; 14-28; 36-44 Column 2, line 61 ­ column 3, line 3. Column 3, line 19 ­ column 4, line 24. Column 5, lines 1 ­ 41. Column 6, line 46 ­ column 9, line 51. Claims 1, 3, 11, 13, 21 and 23. Extrinsic Evidence U.S. Patent No. 5,559,561 (REM0086656-REM0086673) U.S. Patent No. 5,706,312 (REM0086674-REM0086687) U.S. Patent No. 5,512,957 (REM0086636-REM0086655) 802.14 PHY Proposal, Thomas Kolze (Cable TV Protocol Working Group), October 1995 (COMREM00669632Figures 1-7

Document 189-7

U.S. Patents Nos. 5,029,185; 3,988,677; 4,677,624; 4,677,625. Prosecution History: December 21, 1992 Amendment, at pgs. 2-6; Notice of Allowability. Extrinsic Evidence IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONIC TERMS 1072 (6th ed. 1996) ("Symbol") (5th definition).

Page 5 of 41 JERRY MARTIN ROSENBERG, DICTIONARY OF COMPUTERS, DATA PROCESSING, AND TELECOMMUNICATIONS 518 (1984). ("Symbol") (3rd definition). JERRY MARTIN ROSENBERG, DICTIONARY OF COMPUTERS,

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A-1

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`627 Patent Claim Terms COMREM00669645). Dolinar and Belongie. Enhanced Decoding for the Galileo S-band Mission, August 1993. (REM0086691REM0086706) Blue Book, Issue-3, Telemetry Channel Coding. Consultative Committee for Space Data Systems, May 1992. (REM0086940-0086981) Technical Report Number 59, Signal Carrier Rate Adaptive Digital Subscriber Line, September 1999. (REM0086707-REM0086896) Data Over Cable Systems Radio Frequency Interface Specification 1.1, Engineering Committee, 2002 (COMREM00845847-COMREM0084624) Data Over Cable Service Interface Specifications 2.0, Radio Frequency Interface Specification, 2003 (REM0065021-REM0065532)

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

DATA PROCESSING, AND TELECOMMUNICATIONS 479 (1984) ("Signal element") (3rd definition). EZIO BIGLIERI, ET AL., INTRODUCTION TO TRELLIS-CODED MODULATION WITH APPLICATIONS 72-73 (1991). RICHARD D. GITLIN, ET AL., DATA COMMUNICATION PRINCIPLES 355-356 (1992). U.S. Patent No. 4,945,549 at Fig. 1; Col. 4 Lns. 4-31(filed Sep. 15, 1988). U.S. Patent No. 4,922,507, at Col. 4, Lns. 37-56 (filed Dec. 1, 1987).

Expert opinion of Dr. Harry Bims regarding what one of ordinary skill in the art would understand this claim term to mean. U.S. Patents Nos. 5,029,185; 3,988,677; 4,677,624; 4,677,625. Prosecution History: December 21, 1992 Amendment, at pgs. 2-6; Notice of Allowability. Wang, et al., U.S. Patent No. 5,052,000. Intrinsic Evidence Abstract Col 1 Lns. 38-44; 48-58; 59 Col 2 Ln 2; 5-13; 14-18; 21-28; 31-50; 53 ­ Col. 4 Ln. 3; Col 4 Lns 4-11; 12-24 Col 6 Lns 3-23; 36-39; Ln 55 ­ Col 7 Ln 6

Document 189-7 U.S. Patent No. 5,023,889, at Col. 3, Ln. 38 - Col. 4, Ln. 28 (filed May 31, 1988). Filed 06/28/2007 Page 6 of 41

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`627 Patent Claim Terms

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence Col 7 Lns 9-18; 25-32; 33-54; Ln 55 ­ Col 8 Ln 9 Col 8 Lns 14-35; 38-56; 58 ­ Col 9 Ln 13 Col 9 Lns 14-28; 14-28; 36-44 Figures 1-7 U.S. Patents Nos. 5,029,185; 3,988,677; 4,677,624; 4,677,625. Prosecution History: December 21, 1992 Amendment, at pgs. 2-6; Notice of Allowability.

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signal point (claims 9, 19) A value that is transmitted by a modulator in one signaling interval Intrinsic Evidence Abstract. Figures 1, 2, 3, 4, 5, 6 and 7 Column 2, lines 5 ­ 50. Column 3, line 4 ­ column 4, line 51. Column 5, line 1 ­ column 6, line 26. Column 6, line 48 ­ column 9, line 51. Extrinsic Evidence U.S. Patent No. 5,559,561 (REM0086656-REM0086673) U.S. Patent No. 5,706,312 (REM0086674-REM0086687) U.S. Patent No. 5,512,957 (REM0086636-REM0086655)

Proposed construction

A single mapped point in a signal constellation. Extrinsic Evidence EDWARD A. LEE, DIGITAL COMMUNICATION 186-187 (1988). GILBERT HELD, DICTIONARY OF COMMUNICATIONS TECHNOLOGY 400 (2d ed. 1995) ("Signal constellation"). RICHARD D. GITLIN, ET AL., DATA COMMUNICATION PRINCIPLES 355-356 (1992). Wang, et al., U.S. Patent No. 5,052,000.

Expert opinion of Dr. Harry Bims regarding what one of ordinary skill in the art would understand this claim term to mean. Intrinsic Evidence Abstract Col 1 Lns 29-33; 54-58 Col 2 Lns 5-13; 14-18; 21-28; 31-50; 53 ­ Col. 4 Ln. 3

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`627 Patent Claim Terms Col 3 Lns 4-10; 30-44; 56-60; 65 ­ Col 4 Ln 3 Col 4 Lns 4-11; 35-46 Col 5 Lns 24-41; 44 ­ Col 6 Ln 26 Col 6 Ln 48 ­ Col 8 Ln 9 Col 8 Lns 14-35; 38-56; 58 ­ Col 9 Ln 13 Col 9 Lns 14-28; 29-44; 45-49 Figures 1-7

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

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U.S. Patents Nos. 5,029,185; 3,988,677; 4,677,624; 4,677,625. Prosecution History: December 21, 1992 Amendment, at pgs. 2-6; Notice ofAllowability. Proposed construction A Viterbi decoder having multiple Viterbi decoding processes operating on separate portions of a stream of data to be decoded Intrinsic Evidence Abstract. Figure 3, 4, 5, 6 and 7. Column 1, line 34 ­ column 2, line 20. Column 4, line 52 ­ column 5, line 41. Column 6, lines 12 ­ 26. Column 6, line 48 ­ column 8, line 13. Column 8, line 57 ­ column 9, line 28. Column 9, line 52 ­ column 10, line 3. Prosecution History, Office Action Response dated Two or more structures operating in parallel employing the Viterbi algorithm. Intrinsic Evidence: Abstract Col 1 Lns 29-33; 34-46; 59-65 Col 2 Lns 5-13; 14-18; 21-28; 31-50; 53 ­ Col. 4 Ln. 3 Col 6 Lns 12-26; 62-66 Col 8 Ln 58 ­ Col 9 Ln 13 Figures 1, 3-4 U.S. Patents Nos. 5,029,185; 3,988,677; 4,677,624; 4,677,625. Prosecution History: December 21, 1992 Amendment, at pgs. 2-6; Notice ofAllowability. Extrinsic Evidence:

Document 189-7

Distributed Viterbi decoder (claims 9, 19)

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`627 Patent Claim Terms December 21, 1992 at TKHR 0000886 ­ TKHR 0000890. Extrinsic Evidence U.S. Patent No. 4,677,625 (COMREM00669498COMREM00669505)

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence MICROSOFT COMPUTER DICTIONARY 167 (5th ed. 2002) ("Distribute"). MERIAM-WEBSTER COLLEGIATE DICTIONARY 337 (10th ed. 2001) ("Distribute"). WIKIPEDIA, available at http://en.wikipedia.org. ("Viterbi decoder").

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Proposed construction Interpreted under 35 U.S.C. § 112, ¶ 6. Function:

MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2265 (6th ed. 2003) ("Viterbi algorithm"). Means plus function claim to be construed pursuant to § 112, ¶ 6.

Document 189-7 Deinterleaving the interleaved signal points to recover the plurality of streams of trellis encoded channel symbols Structure: Figure 4 (Streams 456/442, Blocks 441/431, Elements 4411/4412); Figure 7 (Streams 456/442, Block 741, Elements 7411/7412/7413/7414); Col 2: Lns 39-42, 48-50; Col 5: Ln 67 - Col 6 Ln 20; Col 8: Ln 62 - Col 9 Ln 51.

means for deinterleaving the interleaved signal points to recover said plurality of streams of trellis encoded channel symbols (claim 9) Function: to reverse the process of interleaving performed in the transmitter to recover multiple streams of trellis encoded channel symbols from the interleaved signal points Structure: signal point deinterleaver 441 or switching circuit 431, or a software based deinterleaver or switching circuit, and equivalents Intrinsic Evidence Abstract. Figures 4, 5, 6 and 7. Column 5, line 67 ­ column 6, line 26. Column 8, line 57 ­ column 9, line 13. Column 9, line 45 ­ column 10, line 3. Refer also to intrinsic evidence cited in support of the

Intrinsic Evidence: Refer to intrinsic evidence cited in support of the claim terms: "trellis encoded channel symbols"; signal points"; and "plurality of streams of trellis encoded channel symbols". Prosecution History: December 21, 1992 Amendment, at pgs. 2-6; Notice ofAllowability.

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`627 Patent Claim Terms claim terms "trellis encoded channel symbol" and "signal point" Extrinsic Evidence:

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Extrinsic evidence cited above relating to component terms. Expert opinion of Dr. Harry Bims regarding what one of ordinary skill in the art would understand to be the structures disclosed in the patent specification corresponding to this means-plus-function claim term.

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United States Patent No. 5,852,631 Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence Proposed construction The physical layer is the lowest layer of the Open Systems Interconnect (OSI) seven layer model, and is concerned with establishing the mechanical, electrical, functional, and procedural connection between two modems. Intrinsic evidence Intrinsic Evidence: Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence The physical layer is the lowest layer of the Open Systems Interconnect (OSI) seven layer model, which is concerned with establishing the electrical and mechanical connection between two modems.

`631 Patent Claim Terms

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physical layer (claims 1, 6, 10)

Document 189-7 Filed 06/28/2007

Abstract Abstract, FIGS 2-8; 1:23-2:39; 2:62-3:15; 3:34-58; 4:5-18; Col 1 Ln 62 ­ Col 2 Ln 11 5:42-11:27; claims 1, 2, 6, 7, and 10 Col 2 Lns 12-18; 33-39; 39-59; 62 ­ Col 3 Ln 21 Col 3 Lns 4-13; 24-61 Office Action of September 4, 1997 (TKHR0000181Col 5 Lns 5-24 TKHR0000189); Response of October 23, 1997 Col 6 Lns 24-36; 37-56; 66 ­ Col 7 Ln 29 (TKHR0000165-TKHR0000179); Office Action of Col 10 Lns 57-59, 63 ­ Col 11 Ln 10 November 21, 1997 (TKHR0000156-TKHR0000162); Col 11 Lns 23-28; 33-42 Col 12 Lns 43-54 Response of January 22, 1998 (TKHR0000144Col 13 Lns 23-41 TKHR0000154); Office Action of February 19, 1998 (TKHR0000136-TKHR0000143); Response of April 23, Figures 1-8 1998. U.S. Patents Nos. 4,905,282; 5,425,080; 5,710,761. Extrinsic evidence Prosecution History: Preliminary Amendment, submitted Hubert Zimmermann, "OSI Reference Model--The ISO on March 20, 1997, at pg. 2; First Response With Model of Architecture for Amendments, submitted on October 23, 1997, at pgs. 5-13; Response to Final Rejection, submitted on January 23, Open Systems Interconnection," IEEE Transactions on 1998, at pgs. 2-10; Third Response, submitted on April 23, Communications, vol. 28, No. 4, April 1980, pp. 425-432 1998, at pg. 3; Transmittal of New Drawings, submitted on (REM0086902-REM0086909). July 27, 1998; Notice of Allowability. Society of Cable Telecommunications Engineers, CableTec Expo '98 (Denver Colorado, June 10-13, 1998) Extrinsic Evidence:

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`631 Patent Claim Terms (COMREM 00982076-00982709). The New IEEE Standard Dictionary of Electrical and Electronics Terms (6th ed. 1996) (REM0086899REM0086900) (definition of "physical layer"). DSET, LNP Automation Solution: Local Service Management System (LSMS) for Comcast (December 8, 2004) (COMREM00960142COMREM00960170). Proposed construction A physical layer modulation selected by a process permitting two modems supporting different physical layer modulations to agree on a physical layer modulation, in which one modem presents one or more options, and the other modem selects from among the presented options.

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

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IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONIC TERMS 203 (6th ed. 1996) ("Connection") (5th definition).

Document 189-7 A physical layer modulation agreed upon between two modems after exchanging information at run time. Intrinsic Evidence:

negotiated physical layer modulation (claims 1, 6, 10)

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Abstract Col 1 Lns 17-21; 37-48; 49-51; 55-61; 62 ­ Col 2 Ln 11 Col 2 Lns 12-18; 33-39; 39-59; 62 ­ Col 3 Ln 21 Col 3 Lns 24-61 Col 6 Lns 24-39; 37-56; 66 ­ Col 7 Ln 2 Intrinsic evidence Col 7 Lns 15-30 Col 8 Lns 23-41 Abstract, FIGS 2-8; 1:23-2:39; 2:62-3:15; 3:34-58; 4:5-18; Col 11 Lns 39-46 5:42-11:27; claims 1, 2, 6, 7, and 10 Figures 1-8 Office Action of September 4, 1997 (TKHR0000181U.S. Patents Nos. 4,905,282; 5,425,080; 5,710,761. TKHR0000189); Response of October 23, 1997 (TKHR0000165-TKHR0000179); Office Action of Prosecution History: Preliminary Amendment, submitted November 21, 1997 (TKHR0000156-TKHR0000162); on March 20, 1997, at pg. 2; First Response With Response of January 22, 1998 (TKHR0000144Amendments, submitted on October 23, 1997, at pgs. 5-13; TKHR0000154); Office Action of February 19, 1998 Response to Final Rejection, submitted on January 23, 1998, at pgs. 2-10; Third Response, submitted on April 23, (TKHR0000136-TKHR0000143); Response of April 23, 1998, at pg. 3; Transmittal of New Drawings, submitted on
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`631 Patent Claim Terms 1998. Extrinsic evidence Extrinsic Evidence: U.S. Patent No. 4,905,282 (REM0086910-REM0086924) July 27, 1998; Notice of Allowability.

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

"Negotiation": When a connection is established between U.S. Patent No. 5,491,720 (REM0086925-REM0086935) the virtual terminals in different systems, an initial dialogue is needed to establish the parameters that each will use IEEE Std 802.3u-1995, § 28 (COMREM 671706-672120). during the transaction. This is known as the negotiation phase." GILBERT HELD, DICTIONARY OF COMMUNICATIONS Draft CEA-679-C, National Renewable Security Standard TECHNOLOGY 285 (2d ed. 1995). (NRSS) (COMREM50007474). "Negotiate": To confer with another or others in order to come to terms or reach an agreement .... To arrange or Rembrandt incorporates by reference the intrinsic and settle by discussion and mutual agreement. THE AMERICAN extrinsic evidence cited for the term "physical layer HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1176 (4th ed. 2000). modulation." "Negotiate": to arrange for or bring about through conference, discussion, and compromise." MERIAMWEBSTER COLLEGIATE DICTIONARY 775 (10th ed. 2001).

Expert opinion of Dr. Harry Bims regarding what one of ordinary skill in the art would understand this claim term to mean.

Case 1:07-cv-00398-GMS Document 189-7

Filed 06/28/2007

physical layer modulation (claims 1, 6, 10)

Proposed construction A protocol that is concerned with establishing the mechanical, electrical, functional, and procedural connection between two modems.

The process or protocol that defines how bits are translated into waveforms and transmitted at the physical layer. The physical layer is the lowest layer of the Open Systems Interconnect (OSI) seven layer model, which is concerned with establishing the electrical and mechanical connection between two modems. Intrinsic Evidence:

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The physical layer is the lowest layer of the Open Systems Interconnect (OSI) seven layer model, and is concerned with establishing the mechanical, electrical, functional,

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`631 Patent Claim Terms and procedural connection between two modems.

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Case 1:07-cv-00398-GMS Document 189-7

Abstract Col 1 Lns 17-20; 37-48; 49-51; 55-61; 62 ­ Col 2 Ln 11 Col 2 Lns 12-18; 29-38; 39-59; 62 ­ Col 3 Ln 21 Intrinsic evidence Col 3 Lns 24-61 Abstract, FIGS 2-8; 1:23-2:39; 2:62-3:15; 3:34-58; 4:5-18; Col 4 Lns 41-44, 48-51, 56-58 5:42-11:27; claims 1, 2, 6, 7, and 10 Col 5 Lns 8-10, 24-25, 33-34; 49 ­ Col 6 Ln 11 Col 6 Lns 12-23; 24-56; 57-65 Office Action of September 4, 1997 (TKHR0000181Col 7 Lns 15-30; 35-38; TKHR0000189); Response of October 23, 1997 Col 8 Lns 23-41; 48-51 (TKHR0000165-TKHR0000179); Office Action of Col 9 Lns 4-8; 15-22; 32-34, 38-46; 54-57, Col 10 Lns 1-4 Col 10 Lns 26-31; 57 ­ Col 11 Ln 10 November 21, 1997 (TKHR0000156-TKHR0000162); Col 11 Lns 30-46 Response of January 22, 1998 (TKHR0000144Col 12 Lns 45-50; 59-65 TKHR0000154); Office Action of February 19, 1998 Col 13 Lns 23-41 (TKHR0000136-TKHR0000143); Response of April 23, Col 14 Lns 1-5 1998. Figures 1-8 Extrinsic evidence Hubert Zimmermann, "OSI Reference Model--The ISO Model of Architecture for Open Systems Interconnection," IEEE Transactions on Communications, vol. 28, No. 4, April 1980, pp. 425-432 (REM0086902-REM0086909). U.S. Patents Nos. 4,905,282; 5,425,080; 5,710,761. Prosecution History: Preliminary Amendment, submitted on March 20, 1997, at pg. 2; First Response With Amendments, submitted on October 23, 1997, at pgs. 5-13; Response to Final Rejection, submitted on January 23, 1998, at pgs. 2-10; Third Response, submitted on April 23, 1998, at pg. 3; Transmittal of New Drawings, submitted on July 27, 1998; Notice of Allowability. Extrinsic Evidence:

Filed 06/28/2007

Society of Cable Telecommunications Engineers, CableTec Expo '98 (Denver Colorado, June 10-13, 1998) (COMREM 00982076-00982709). The New IEEE Standard Dictionary of Electrical and Electronics Terms (6th ed. 1996) (REM0086899REM0086900) (definition of "physical layer"). DSET, LNP Automation Solution: Local Service

Page 14 of 41 IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONIC TERMS 662 (6th ed. 1996) ("Modulation") (1st and 5th definitions). MICROSOFT COMPUTER DICTIONARY 346 (5th ed. 2002)

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`631 Patent Claim Terms Management System (LSMS) for Comcast (December 8, 2004) (COMREM00960142-COMREM00960170). ("Modulation") (2nd definition).

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

EDWARD A. LEE, DIGITAL COMMUNICATION 679 (1988).

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WILEY ENCYCLOPEDIA OF ELECTRICAL AND ELECTRONICS ENGINEERING 668 (John G. Webster, ed.) (1999). ANDREW S. TANENBAUM, COMPUTER NETWORKS 29-30 (3d ed. 1996). THE COMMUNICATIONS HANDBOOK 573 (Jerry D. Gibson, ed.) (1996). Proposed construction The link layer is the second lowest layer of the Open Systems Interconnect (OSI) seven layer model, which performs error checking functions as well as error correction through frame retransmission.

Document 189-7

link layer (claims 1, 3, 4, 6, 8, 9, 10)

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The link layer is the second lowest layer of the Open Systems Interconnect (OSI) seven layer model, and provides the functional and procedural means to transfer data between modems, and to detect and correct errors that Intrinsic Evidence: can occur in the physical layer. Abstract Col 1 Lns 17-21; 27-48; 51-54; 55-61 Intrinsic evidence Col 2 Lns 39-59; 62 ­ Col 3 Ln 21 Abstract; FIGS. 2-8; 1:23-61; 2:40-59; 2:62-3:15; 3:34-58; Col 3 Lns 24-61 Col 6 Lns 57-65 4:5-18; 11:30-13:41; claims 1, 3, 4, 6, 7, 9, and 10 Col 11 Lns 23-28; 30-51; 52-58; 59 ­ Col 12 Ln 8 Office Action of September 4, 1997 (TKHR0000181Col 12 Lns 9-36, 36 ­ Col 13 Ln 4 TKHR0000189); Response of October 23, 1997 Figures 1-8 (TKHR0000165-TKHR0000179); Office Action of November 21, 1997 (TKHR0000156-TKHR0000162); U.S. Patents Nos. 4,905,282; 5,425,080; 5,710,761. Response of January 22, 1998 (TKHR0000144Prosecution History: Preliminary Amendment, submitted TKHR0000154); Office Action of February 19, 1998 on March 20, 1997, at pg. 2; First Response With (TKHR0000136-TKHR0000143); Response of April 23, Amendments, submitted on October 23, 1997, at pgs. 5-13; 1998. Response to Final Rejection, submitted on January 23,

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`631 Patent Claim Terms Extrinsic evidence The New IEEE Standard Dictionary of Electrical and Electronics Terms (6th ed. 1996) (REM0086897REM0086898) (definition of "link layer"). Extrinsic Evidence: The New IEEE Standard Dictionary of Electrical and Electronics Terms (6th ed. 1996) (REM0086897REM0086898).

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence 1998, at pgs. 2-10; Third Response, submitted on April 23, 1998, at pg. 3; Transmittal of New Drawings, submitted on July 27, 1998; Notice of Allowability. EDWARD A. LEE, DIGITAL COMMUNICATION 679 (1988). WILEY ENCYCLOPEDIA OF ELECTRICAL AND ELECTRONICS ENGINEERING 668, 670 (John G. Webster, ed.) (1999).

Hubert Zimmermann, "OSI Reference Model--The ISO Model of Architecture for Open Systems Interconnection," THE COMMUNICATIONS HANDBOOK 573 (Jerry D. Gibson, ed.) (1996). IEEE Transactions on Communications, vol. 28, No. 4, April 1980, pp. 425-432 (REM0086902-REM0086909). ANDREW S. TANENBAUM, COMPUTER NETWORKS 30 (3d ed. 1996).

IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONIC TERMS 203 (6th ed. 1996) ("Connection") (5th definition).

Expert opinion of Dr. Harry Bims regarding what one of ordinary skill in the art would understand this claim term to mean. Proposed construction The link layer connection is established substantially instantaneously upon the completion of the physical layer negotiation, using information derived from the negotiated physical layer modulation. Intrinsic evidence Abstract; FIGS. 2-8; 1:23-61; 2:40-59; 2:62-3:15; 4:5-18;

establishing said link layer connection based upon said negotiated physical layer modulation. (claims 1, 6, 10)

Link layer: The link layer is the second lowest layer of the Open Systems Interconnect (OSI) seven layer model, which performs error checking functions as well as error correction through frame retransmission. Negotiated physical layer modulation: A physical layer modulation agreed upon between two modems after exchanging information at run time.

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`631 Patent Claim Terms 11:30-13:41; claims 1, 3, 4, 6, 7, 9, and 10 Office Action of September 4, 1997 (TKHR0000181TKHR0000189); Response of October 23, 1997 (TKHR0000165-TKHR0000179); Office Action of November 21, 1997 (TKHR0000156-TKHR0000162); Response of January 22, 1998 (TKHR0000144TKHR0000154); Office Action of February 19, 1998 (TKHR0000136-TKHR0000143); Response of April 23, 1998. Rembrandt incorporates by reference the definitions and intrinsic and extrinsic evidence cited above for "link layer" and "negotiated physical layer modulation." Proposed construction Interpreted under 35 U.S.C. § 112, ¶ 6. Function: Establishing a physical layer connection based on a negotiated physical layer modulation Structure: a modem configured to establish a physical layer connection based on a negotiated physical layer modulation. In the event the Court holds that the structure corresponding to the recited function must be an algorithm, Rembrandt designates the following alternative structures: FIG. 4, boxes labeled "Finish dialing and send Clqck-cell signal (1500 & 1900)," "1680 Hertz," "800 Hertz," "Detect other answer signal"; "Perform modem Function:

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence Comcast does not believe that the rest of this term needs to be construed, but reserves its right to argue its ordinary meaning and to counter Rembrandt's proposed construction.

Case 1:07-cv-00398-GMS Document 189-7

Means plus function claim to be construed pursuant to § 112, ¶ 6.

Establishing a physical layer connection based on a negotiated physical layer modulation. Structure: Figs. 4-9; Col. 8, Ln. 23-Col. 9. Ln. 8; Col. 9, Lns. 15-46; Col. 9, Ln. 47-Col. 10, Ln. 56. Intrinsic Evidence: Refer to intrinsic evidence cited in support of the claim terms: "physical layer connection"; "negotiated physical layer modulation"; "physical layer modulation"; "based on". Prosecution History: Preliminary Amendment, submitted on March 20, 1997, at pg. 2; First Response With

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means for establishing a physical layer connection between said calling and said answer modems, wherein said physical layer connection is based on a negotiated physical layer modulation chosen from said first and second physical layer modulations (claim 6)

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`631 Patent Claim Terms

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence Amendments, submitted on October 23, 1997, at pgs. 5-13; Response to Final Rejection, submitted on January 23, 1998, at pgs. 2-10; Third Response, submitted on April 23, 1998, at pg. 3; Transmittal of New Drawings, submitted on July 27, 1998; Notice of Allowability. Extrinsic Evidence: Expert opinion of Dr. Harry Bims regarding what one of ordinary skill in the art would understand to be the structures disclosed in the patent specification corresponding to this means-plus-function claim term.

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startup and training"; "Synchronize to alternative modulation standard"; or FIG. 5, boxes labeled "Clqck signal received within two seconds,""Standard automode, send ans (2100 Hz)," "Send ANSqck (V.34 S signal)," "Perform Modem Startup and Training"; or FIG. 6, boxes labeled "Send Clqck-Central," "ANS detected?," "ETC1 (V.32bis training); "ANSam detected?"; "V.34 startup," "ANSqck detected (1680)," "Startup under alternative standard"; or FIG. 7, boxes labeled "CI of V.34 detected," "V.34 send ANSam," "Cletc1 detected," "ETC1 mode, send `ans,'" "Clqck-cell detected (1500 & 1900)," "Send ANSqck-PSTN," "Send ANSqck (V.34 S signal) (1680 Hz)," "ETC2 Startup (Send S signal)." Intrinsic evidence Abstract, FIGS 1-9; 1:23-2:39; 2:62-3:15; 3:31-62; 4:5-18; 5:42-11:27; 13:42-14:19; claims 1, 2, 6, 7, and 10 Office Action of September 4, 1997 (TKHR0000181TKHR0000189); Response of October 23, 1997 (TKHR0000165-TKHR0000179); Office Action of November 21, 1997 (TKHR0000156-TKHR0000162); Response of January 22, 1998 (TKHR0000144TKHR0000154); Office Action of February 19, 1998 (TKHR0000136-TKHR0000143); Response of April 23, 1998. Extrinsic evidence Testimony of Dr. V. Thomas Rhyne regarding the structures corresponding to the recited function.

Extrinsic evidence cited above relating to component terms.

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`631 Patent Claim Terms Rembrandt incorporates by reference its intrinsic and extrinsic support for the claim terms: "physical layer "; "negotiated physical layer modulation"; "physical layer modulation"; and "establishing said link layer connection based upon said negotiated physical layer modulation." Proposed construction Interpreted under 35 U.S.C. § 112, ¶ 6. Function: Function: Establishing the link layer connection based upon the negotiated physical layer modulation Structure: a modem configured to establish the link layer connection based upon the negotiated physical layer modulation, or the equivalent In the event the Court holds that the structure corresponding to the recited function must be an algorithm, Rembrandt designates the following alternative structures: 11:39-46; 13:34-37. Intrinsic evidence Structure:

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

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means for establishing said link layer connection based upon said negotiated physical layer modulation (claim 6)

Means plus function claim to be construed pursuant to § 112, ¶ 6.

Figs. 8-9; Col. 12, Ln. 55-Col. 13, Ln. 17; Col. 13, Lns. 3441; Col. 13, Ln. 55-Col. 14, Ln. 9. Intrinsic Evidence: Refer to intrinsic evidence cited in support of the claim terms: "negotiated physical layer modulation"; "physical layer modulation"; "based upon"; "link layer connection".

Abstract; FIGS. 1-9; 1:23-61; 2:40-59; 2:62-3:15; 3:31-62; Prosecution History: Preliminary Amendment, submitted on March 20, 1997, at pg. 2; First Response With 4:5-18; 11:30-14:19; claims 1, 3, 4, 6, 7, 9, and 10 Amendments, submitted on October 23, 1997, at pgs. 5-13; Office Action of September 4, 1997 (TKHR0000181Response to Final Rejection, submitted on January 23, TKHR0000189); Response of October 23, 1997 1998, at pgs. 2-10; Third Response, submitted on April 23, (TKHR0000165-TKHR0000179); Office Action of 1998, at pg. 3; Transmittal of New Drawings, submitted on November 21, 1997 (TKHR0000156-TKHR0000162); July 27, 1998; Notice of Allowability. Response of January 22, 1998 (TKHR0000144Extrinsic Evidence: TKHR0000154); Office Action of February 19, 1998 (TKHR0000136-TKHR0000143); Response of April 23, Extrinsic evidence cited above relating to component terms.
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Document 189-7 Establishing link layer connection based upon negotiated physical layer modulation. Filed 06/28/2007 Page 19 of 41

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Document 106

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`631 Patent Claim Terms 1998. Extrinsic evidence: Testimony of Dr. V. Thomas Rhyne regarding the structures corresponding to the recited function. Proposed construction Interpreted under 35 U.S.C. § 112, ¶ 6. Function: Function: Presetting link layer parameters based on the negotiated physical layer modulation Structure: a modem configured to preset link layer parameters of the link layer connection to pre-defined settings based on the negotiated physical layer modulation, or the equivalent In the event the Court holds that the structure corresponding to the recited function must be an algorithm, Rembrandt designates the following alternative structures: 11:39-46; 13:34-37. Intrinsic evidence Structure:

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence Expert opinion of Dr. Harry Bims regarding what one of ordinary skill in the art would understand to be the structures disclosed in the patent specification corresponding to this means-plus-function claim term. Means plus function claim to be construed pursuant to § 112, ¶ 6.

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means for presetting link layer parameters of said link layer connection to pre-defined settings based on said negotiated physical layer modulation (claim 9)

Figs. 8-9; Col. 12, Ln. 55-Col. 13, Ln. 17; Col. 13, Lns. 3441; Col. 13, Ln. 55-Col. 14, Ln. 9. Intrinsic Evidence: Refer to intrinsic evidence cited in support of the claim terms: "link layer parameters"; "negotiated physical layer modulation"; "physical layer modulation"; "based on"; "link layer connection";

Prosecution History: Preliminary Amendment, submitted Abstract; FIGS. 1-9; 1:23-61; 2:40-59; 2:62-3:15; 3:31-62; on March 20, 1997, at pg. 2; First Response With Amendments, submitted on October 23, 1997, at pgs. 5-13; 4:5-18; 11:30-14:19; claims 1, 3, 4, 6, 7, 9, and 10 Response to Final Rejection, submitted on January 23, Office Action of September 4, 1997 (TKHR00001811998, at pgs. 2-10; Third Response, submitted on April 23, TKHR0000189); Response of October 23, 1997 1998, at pg. 3; Transmittal of New Drawings, submitted on (TKHR0000165-TKHR0000179); Office Action of July 27, 1998; Notice of Allowability. November 21, 1997 (TKHR0000156-TKHR0000162); Extrinsic Evidence: Response of January 22, 1998 (TKHR0000144TKHR0000154); Office Action of February 19, 1998 Extrinsic evidence cited above relating to component terms.
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Document 189-7

Presetting link layer parameters based on negotiated physical layer modulation.

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Document 106

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`631 Patent Claim Terms (TKHR0000136-TKHR0000143); Response of April 23, 1998. Extrinsic evidence Testimony of Dr. V. Thomas Rhyne regarding the structures corresponding to the recited function.

Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence Expert opinion of Dr. Harry Bims regarding what one of ordinary skill in the art would understand to be the structures disclosed in the patent specification corresponding to this means-plus-function claim term.

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Document 106

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United States Patent No. 4,937,819 Plaintiff Rembrandt's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence Proposed construction a computer program or process Intrinsic Evidence Abstract; FIG. 5; 1:7-12; 1:14-25; 1:45-52; 1:56-62; 2:5-10; 2:26-34; 3:12-19; 4:53-61; 5:59-68; 6:49-51 Intrinsic Evidence: `819 Patent Abstract; Figs. 2, 4-5; columns and lines 1:7-12; 1:14-33; 1:45-2:34; 2:56-60; 3:12-19; 3:21-24; 3:39-41; 3:50-56; 4:39-52; 4:55-61; 5:10-13; 5:24-26; 5:64-68; 6:43-48; 6:49-51; 6:66-67. `819 Prosecution History 9/26/88 Patent Application at 15-18 (REM 005594355946). 5/20/89 Office Action at 2 (REM 0055992). 8/30/89 Amendment at 2-4, 6 (REM 0056095-56097, 56099). 10/13/89 Office Action at 4 (REM 0056108). U.S. Patent No. 4,606,023 (Dragoo) (REM 005599956007). U.S. Patent No. 4,644,534 (Sperlich) (REM 005611256119). Extrinsic Evidence The New IEEE Standard Dictionary of Electrical and Electronics Terms (5th Ed.)(1993)(definition of "application program") Newton's Telecom Dictionary (7th Ed.)(1991)(definition of "application" and "program") 11/7/06 Deposition of Wayne Moore (rough transcript) at 84:13-24 11/8/06 Deposition of Joseph King (rough transcript) at 39:10-43:12; 53:17-54:23; 55:18-57:6; 58:23-59:3: 125:8126:17 Defendant Comcast's Proposed Construction and Identification of Intrinsic and Extrinsic Evidence

`819 Patent Claim Terms

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application program[s] (claims 1, 14)

A program designed to assist in the performance of a specific end-user task (e.g., word processing, accounting, or inventory management) in contrast to a program designed to perform management of or maintenance work on the system or system components.

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Document 106

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`819 Patent Clai