Texas Round-Up: May 2025

Co-Authored by: Carissa Patton, Summer Associate

Below are summaries of two claim construction opinions issued out of the Eastern District of Texas in May 2025.

ASUS Technology Licensing Inc. et al v. AT&T Inc. et al, No. 2-23-cv-00486 (EDTX, May 19, 2024) (Payne, M.J.)

In ASUS Technology, the court provided some helpful guideposts for when a claim term of art rooted in standards terminology would be given its “plain and ordinary meaning” versus when it would be given technical construction.

For terms like “data path,” “sequence number…,” “first eNB,” and “second eNB,” the court reasoned that they should be given their plain and ordinary meaning because they have “so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification.” Id. at 13 (citing Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 738 (Fed. Cir. 2014)). For example, the court gave “data path” its plain meaning and rejected the defendants’ indefiniteness argument. Id. at 44. The court reasoned that the “passing reference[s] to the specification” cited by the defendants were insufficient to give rise to a lack of reasonable certainty where the phrase, on its face, was “reasonably clear in the context of the claims at issue.” Id. at 43.

Similarly, the terms “a sequence number following a sequence number of a last in-sequence acknowledged packet of a transmitter” and “a sequence number of a next packet to be transmitted for the first time by the transmitter” were also given their plain meaning. Id. at 47. In this case, the court rejected the defendants’ argument that certain citations to the specification should inform the construction of these terms as those disclosures did “not set forth any lexicography because the disclosures [did] not define the disputed terms with ‘reasonable clarity, deliberateness, and precision sufficient to narrow the definition of the claim term in the manner urged.’” Id. (citing Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1355 (Fed. Cir. 2003)). Consequently, these disclosures failed to demonstrate how that procedure “warrant[ed] limiting the claim language to the details of the disclosed embodiment.” Id. at 47.

Finally, the court construed the terms “first eNB” and “second eNB” — shorthand for evolved Node B base station — according to their plain and ordinary meaning. Here, while the court construed the core term “evolved Node B base station” as discussed below, the descriptive terms “first” and “second” did not require additional construction because the specification simply used them as a way of distinguishing between repeated instances of the core eNB term. Id. at 24-25.

For other terms, however, plain and ordinary meaning was deemed insufficient. Terms such as “eNB” / “evolved Node B,” “RRCConnectionReconfiguration message,” and “mobilityControlInfo” were given constructions because the court determined that they were “technical terms used by a particular standard setting organization in a specific technical context, [so] referring to a standard [was] appropriate.” Id. at 1, 15, 32, 37-38, 41.

For example, the court construed “eNB” / “evolved Node B” in the context of 4G: “an E-UTRAN base station providing 4G/LTE cellular connectivity to the UE.” Id. at 15. The court reasoned that “eNB” and “eNodeB” were terms of art with well-established meanings, and the patentee failed to define the terms any more broadly, so the court presumed the patentee’s intent was to “use[] the term according to its well-established meaning in the relevant art.” Id. at 12. Rejecting the plaintiff’s attempt to broaden the construction, the court noted that the patentee used the same capitalization pattern as the 4G standard and incorporated-by-reference several 4G-specific documents regarding “E-UTRA” and “E-UTRAN” in the patent’s specification. Id. at 12. Importantly, the court determined that using the 4G standard terminology was appropriate because the meaning of the terms in the 5G context was “retrospective and tethered to the well-established meaning” described in the 4G standard. Id. at 12. Finally, the defendants “demonstrate[d] a progression of terminology for base stations” showing “NodeB” in 3G, “eNodeB” in 4G, and “gNodeB” in 5G such that the well-established meaning of “eNodeB” would continue to apply. Id. at 13.

Similarly, the terms “RRCConnectionReconfiguration message” and “mobilityControlInfo” carried a distinct 4G fingerprint. The former was construed as “RRCConnectionReconfiguration message as defined in 4G/LTE standard specifications” and the latter as “mobilityControlInfo as defined in 4G/LTE standard specifications.” Id. at 38. Similar to the analysis for “eNodeB,” the court determined that the patentee used terms of art with well-established meanings in 4G cellular networks, failed to define the terms any more broadly, and used the same capitalization pattern as the 4G standard. Id. at 35. The court rejected the plaintiff’s contention that newer 5G standards would change the well-established meanings of the terms. Id. at 35-36. Nevertheless, while the court was willing to construe the terms in accordance with the 4G standards, it declined to use to a specific, enumerated 4G standard because it was unnecessary and insufficiently justified. Id. at 36.

Video Solutions Pte. Ltd. v. Cisco Systems, Inc., No. 2-23-cv-00222 (EDTX, May 14, 2025) (Gilstrap, J.)

In Video Solutions, the court denied a motion requesting further claim construction, providing helpful guidance on the proper timing of claim construction issues.

Shortly before trial, Cisco sought an amendment to the court’s construction of the term “endpoint” on the grounds that the parties have a fundamental dispute regarding the scope of the term. Id. at 1 (citing O2 Micro Int’l, Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)). In the court’s original claim construction order, “endpoint” was construed as “a device or collection of devices, where data flow starts or ends, that connect to and exchange information over a computer network.” Id. at 2 (citing Dkt. No. 129 at 27). Cisco had argued it couldn’t include mid-network devices like servers, but Judge Payne pointed to “extrinsic evidence show[ing] otherwise.” Id. at 3.

In its request for further construction, Cisco requested that the court amend the construction of “endpoint” to be a “device or collection of devices, where videoconference data flow starts or ends, that are configured to capture videoconference data and that connect to and exchange information over a computer network.” Id. at 2. The reason? A “fundamental dispute” over the term’s scope, triggered by two “recent” developments. First, Cisco argued that the term needed clarification because Video Solutions had recently narrowed the case from three unrelated patents to one, and that sole patent contained “important contextual information as to how ‘endpoint’ should be construed.” Id. at 3. Second, Cisco argued that Video Solutions’ alternative infringement theory involved “a media server . . . [being] an endpoint,” which was “foreclosed by the correct construction of the claims.” Id. at 5. The court rejected both arguments.

As to the first, the court found that Cisco did not point to any place in the claim construction briefing where it indicated that “endpoint” should be construed differently across the three patents, and Cisco’s expert had admitted that a POSITA would understand that the term had the same meaning in all three patents. Id. at 4. And as to the second, the court found that Cisco’s motion did not present a bona fide claim construction dispute that it was required to resolve under O2 Micro. Id. Instead, the court believed that the present dispute primarily concerned the application of the construction — specifically, whether Cisco’s Webex media server would be deemed an ‘endpoint’ under the court’s existing construction. Id. While the court is required to resolve outstanding disputes over the scope of claim terms under O2 Micro, it is not required to “resolve disputes over the application of an already construed term which was raised at Markman.” Id. Further, even if the court had found there was a fundamental dispute over the scope of the terms that it had to resolve, it still would not have applied Cisco’s proposed construction as the language improperly “attempt[ed] to insert a limitation not present in the claims.” Id. at 6.

Setting aside the merits, the court also took issue with the timeliness of the request and found that Cisco had waived its right to present a new construction at this stage of the litigation. The narrowing of the case was not a “recent development” as it had happened months prior. Id. Further, the court noted that Cisco failed to object to the original construction of the term and even defended the original construction when it opposed Video Solutions’ objections to the claim construction “in full.” Id. The court’s ruling provides an important reminder to all parties to raise claim construction issues early, or risk losing them forever.