06-22-2017 – The Court issued its claim construction ruling.
During a Session.” The ‘527 Patent relates “to a method and a system for maintaining session continuity when a user changes access address or access technology of a terminal, or even changes the terminal in a session.” Id. at 1:20–24. The specification states “the present invention may logically replace an original session connection established before a handover with a new session connection established after the handover to guarantee the session continuity.” Id. at 4:37–45. Figures 2A illustrates an embodiment of performing a session handover in a terminalcontrolled mode.
The connection between the HOSF and the HOAF-CP and the connection between the HOSF and the HOAF-UP respectively correspond to the control plane connection and the user plane connection established before the handover. The two connections are illustrated with dotted lines. The connection between the HODF and the HOAF-CP and the connection between the HODF and the HOAF-UP respectively correspond to the control plane connection and the user plane connection established after the handover, and they are illustrated with solid lines.” Id. at 8:10–20. The specification also states that “[t]he HOSF is used for establishing a control plane first connection with the HOAF-CP and a user plane first connection with the HOAF-UP when the first user initiates or accepts a session,” and that “[t]he HODF is used for establishing a control plane second connection with the HOAF-CP and a user plane second connection with the HOAF-UP when the handover condition is satisfied.” Id. at 8:32–39. The specification adds that “[t]he HOAF-CP is used for establishing a control plane first connection with the HOSF when the first user initiates or accepts a session; establishing a control plane second connection with the HODF when the handover condition is satisfied; replacing the control plane first connection with the HOSF with the control plane second connection with the HODF, and indicating the HOAFUP to replace the user plane first connection between the HOAF-UP and the HOSF with the user plane second connection between the HOAF-UP and the HODF.” Id. at 8:40–49. The specification concludes the method by stating that “[a]fter establishing the second connection with the HODF, the HOAF-CP and the HOSF release the first connection between them, and the two users can continue the session through the second connection.” Id. at 9:21–24.
continuing the session between the first user and the second user through the user plane second connection between the HODF and the HOAF-UP, the control plane second connection between the HODF and the HOAF-CP, and the control plane connection, which is already established between the HOAF-CP and the terminal side of the second user before the handover condition is satisfied.
The ‘261 Patent was filed on June 12, 2014, issued on January 19, 2016, and is titled “Method, System, and Device for Negotiating Security Capability When Terminal Moves.” The ‘261 Patent is generally “directed to a method for negotiating a security capability when a terminal moves, so that when moving from a 2G/3G network to an LTE network, a UE in an idle state can negotiate a security capability.” ‘261 Patent at 2:13–16. Figure 1 is a flow chart of a method for negotiating a security capability when a terminal moves.
Id. at Figure 1. The specification states that “[i]n step 100, a UE [user equipment] sends a TAU [tracking area update] request to an MME [mobility management entity].” Id. at 4:47. The specification further discloses that “[t]he TAU request sent from the UE to the MME in this step not only carries some parameters such as a temporary mobile subscriber identity (TMSI) known to persons skilled in the art, but may also carry security capability information supported by the UE.” Id. at 4:54–58. The specification adds that the “[t]he security capability information includes an NAS security algorithm (an NAS integrity protection algorithm and/or an NAS confidentiality protection algorithm), and may also include an RRC security algorithm (an RRC integrity protection algorithm and/or an RRC confidentiality protection algorithm) or a UP security algorithm (a UP confidentiality protection algorithm).” Id. at 4:58–64.
and/or an NAS confidentiality protection key Knas-enc.” Id. at 5:38–40.
deriving a NAS protection key with the selected NAS security algorithm from the authentication vector-related key.
The ‘268 Patent was filed on March 4, 2010, issued on June 16, 2015, and is titled “Negotiating Security Capabilities During Movement of UE.” The ’268 Patent is generally directed to “a method for negotiating security capabilities during movement of a UE, so that the security capabilities can be negotiated when the UE in the idle state moves from an LTE network to a 2G/3G network.” ‘268 Patent at 1:66–2:3. Figure 1 is a flow chart of a method for negotiating security capabilities during movement of a UE.
Id. at Figure 1. The specification states that at “Step 100: The UE [User equipment] sends an RAU [Routing Area Update] Request to the 3G SGSN [Serving GPRS Support Node] through an RNC [Radio Network Controller].” Id. at 4:16–17. The specification discloses that “[t]he RAU Request sent by the UE to the 3G SGSN in this step not only carries the parameters well known to those skilled in the art, for example, Temporary Mobile Subscriber Identifier (TMSI), but also may carries the security capabilities supported by the UE, for example, a ciphering algorithm and/or an integrity protection algorithm.” Id. at 4:18–23.
SGSN uses the AV-related keys as the current ciphering key and integrity protection key.” Id. at 4:29–38.
UE and the selected security algorithm to the UE.” Id. at 4:57–61.
The specification next states that at “Steps 107-109: The UE deduces the AV-related keys according to its own root key, where the AV-related keys include IK and CK, or an IK’ and a CK’ further derived from the IK and the CK through unidirectional transformation, and uses them as the current ciphering key and integrity protection key respectively.” Id. at 4:64–5:2.
7. The specification concludes that at “Steps 110-111: The 3G SGSN sends an RAU Accept message to the UE,” and “[a]fter receiving the message, the UE returns an RAU Complete message to the 3G SGSN.” Id. at 5:8–11.
a transmitter configured to send the mobility management context to the SGSN, wherein the mobility management context comprises information for determining security capacities supported by the UE and the AV-related keys.
presumption that claim terms carry their accustomed meaning in the relevant community at the relevant time.”) (vacated on other grounds).
1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.'” Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
specification—even if it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
(ambiguous prosecution history may be “unhelpful as an interpretive resource”).
In some cases, however, the district court will need to look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871) (a patent may be “so interspersed with technical terms and terms of art that the testimony of scientific witnesses is indispensable to a correct understanding of its meaning”). In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the “evidentiary underpinnings” of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.
a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
‘means.'” (quotation marks and citation omitted)).
1298 (Fed. Cir. 2005). However, § 112 does not permit “incorporation of structure from the written description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
Docket No. 141-1 at 10. In view of the parties’ agreement on the proper construction of the identified terms, the Court hereby ADOPTS the parties’ agreed construction.
“requirement for performing a handover is met,” as Defendants proposed. The parties agreed during the hearing that the phrase should be given its plain and ordinary meaning. The Court agrees and finds that the phrase is unambiguous and easily understandable by a jury. The Court further finds that the parties did not provide persuasive reasoning for their proposed constructions. Accordingly, the Court agrees with the parties that the phrase “[a/the] handover condition is satisfied” should be given its plain and ordinary meaning.
identified phrase, the Court hereby ADOPTS the parties’ agreed construction.
(HOAF-UP)” require construction. Plaintiff contends that no construction is required because the claims themselves adequately define these terms. Defendants contend that there is no plain meaning for “Handover Anchor Function” / “HOAF,” and that the actual dispute is whether the term “Handover Anchor Function” should be construed.
adequately define these terms. Id. Plaintiff argues that “handover,” “user plane,” and “control plane” are well-known terms of art in telecommunications. Id. Plaintiff further contends that the remainder of the claims recites additional details that inform the reader about the nature of the HOAF-CP and HOAF-UP terms. Id.
specification. Id. According to Plaintiff, Defendants’ constructions unnecessarily raise questions without resolution. Id.
“HOAF” supports segmented exchange from a connection on one of its sides to a connection on its other side. (Dkt. No. 125 at 11) (citing Dkt. No. 125-6 at 26; Dkt. No. 125-1 at ¶¶ 29, 39).
Defendants further argue that the meaning of the word “anchor” in the art is consistent with the specification’s description of the “Handover Anchor Function” / “HOAF.” (Dkt. No. 125 at 11) (citing Dkt. No. 125-3 at 21; Dkt. No. 125-1 at ¶ 37.) Defendants contend that the anchor is a fixed location that holds onto connections to both end-points in a call, so that when an end-point changes (e.g., the mobile phone moves to a new cell), the new end-point can continue the call by reconnecting to the anchor that holds the connection to the party on the other end-point. (Dkt. No. 125 at 12) (citing Dkt. No. 125-3 at 22-24; Dkt. No. 125-1 at ¶ 37).
According to Defendants, a “HOAF” is a module for handover that separates two connections and supports segmented exchange between the first user and the second user. (Dkt. No. 125 at 12) (citing Dkt. No. 125-1 at ¶¶ 35-41).
requires explanation. (Dkt. No. 125 at 13). According to Defendants, a jury would have no way to understand the term “anchor” in the context of a HOAF, or the role of a HOAF in the context of the claimed invention. Id. Defendants also argue that Plaintiff is incorrect in arguing that HOAF is not a claim term. Id. Finally, Defendants argue that Plaintiff offers no substantive explanation for why a “module” is not a “function” in the context of the ‘527 Patent. (Id. at 14).
Defendants also contend that the term “segmented media exchange” is used in the specification and the term “segment” is used repeatedly to describe the function of the HOAF. (Id. at 14) (citing ‘527 Patent at 9:34–39; 11:39–12:20; 25:33–54).
Plaintiff, Defendants’ construction obscures this simple concept, and seeks to import two limitations, which are not required by the claims. (Dkt. No. 135 at 5). Plaintiff contends that the claims themselves explain the locations of and connections to the HOAF-CP and HOAF-UP. Id.
(HOAF-UP)” appears in claims 1, 14, 29, and 41 of the ‘527 Patent. The Court finds that the term is used consistently in the claims and is intended to have the same general meaning in each claim.
When the HOAF-CP and the HOAF-UP are both located on the terminal side of the peer user, the session between the handover user and the peer user is born only by the control plane connection between the HOSF or the HODF in the handover UE and the HOAF-CP and the user plane connection between the HOSF or the HODF in the handover UE and the HOAF-UP respectively. This mode is hereinafter referred to as an end-to-end mode.
If the HOAF-CP is located on the home network side of the handover user and the HOAF-UP is located on the terminal side of the peer user, on the control plane, the session between the handover user and the peer user needs to be born by two segments of connections, one is the connection between the HOSF or the HODF and the HOAF-CP, i.e., the control plane first connection or the control plane second connection, and the other is the control plane connection between the HOAF-CP and the terminal side of the peer user. As the HOAF-UP is on the terminal side of the peer user, on the user plane, the session between the handover user and the peer user is still born by the end-to-end user plane first or second connection. This mode is hereinafter referred to as a CP-segmented mode.
If the HOAF-CP and the HOAF-UP are both located on the home network side of the handover user, besides the control plane and user plane first connection and the second connection with the HOSF and the HODF of the handover user respectively, the HOAF needs to establish another control plane connection and user plane connection with the terminal side of the peer user. The session between the handover user and the peer user in such a situation is born by two segments of connections on both control plane and user plane. To be specific, one segment is the control plane and user plane first connections or the control plane and user plane second connections, the other segment is the control plane and user plane connections between the HOAF and the terminal side of the peer user. This mode is hereinafter referred to as a CPandUP-segmented mode.
Defendants agree that claim 1 and 29 are directed to CP-segmented embodiments, and that claim 41 is directed to the CPandUP-segmented embodiment. (Dkt. No. 125 at 16). As indicated above, in the CP-segmented embodiment “the HOAF-UP is on the terminal side of the peer user, on the user plane, the session between the handover user and the peer user is still born by the end-to-end user plane first or second connection.” ‘527 Patent at 11:63–66. Defendants’ construction would require the HOAF-UP to “separate two connections.” This contradicts the claim language of claims 1 and 29, which is an end-to-end user plan connection. Regarding the term “function,” Defendants have not provided a persuasive reason to redraft the claim as they propose.
the Court does not adopt Defendants’ construction.
“Handover Anchor Function User Plane (HOAF-UP)” to mean “HOAF for the user plane.” Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
Defendants’ construction attempts to import the limitation that the connection must be “end-toend.” (Dkt. No. 119 at 14). Plaintiff also argues that Defendants’ construction would be confusing to the jury. Id. According to Plaintiff, UEs are not “directly” connected to each other, but instead connect to each other through a host of intermediary components. Id. Plaintiff suggests that Defendants may be seeking to develop a non-infringement argument whereby one UE must communicate directly to another UE with no intervening components connecting the two. Id.
only the control plane is segmented, and “CPandUP-segmented” refers to the situation in which both the control and user planes are segmented. (Dkt. No. 125 at 15) (citing ‘527 Patent at 12:1– 15).
Responding to Plaintiff’s arguments, Defendants contend that their construction does not import “end-to-end” into the claim, but instead is a necessary characteristic of claims 1 and 29. (Dkt. No. 125 at 16) (citing ‘527 Patent at 11:63–66). Defendants further argue that “end-to-end” comes directly from the specification’s description of how these connections must work in the context of the ‘527 Patent. (Dkt. No. 125 at 17) (citing ‘527 Patent at 11:49–67; 5:50–53). Finally, Defendants argue that the patent uses “end-to-end” to indicate that there are no intervening HOAFs, not to show that the connection has no intervening components. (Dkt. No. at 125 at 17) (citing Dkt. No. 125-1 at ¶ 47).
admit that claims 1 and 29 already recite no anchor points between the first user and the terminal side of the second user. (Dkt. No. 135 at 6). Plaintiff contends that the alleged “necessary characteristic” is already explicitly recited in the claim. Id. Plaintiff further argues that to the extent “end-to-end” in their construction really means what Defendants now claim it means, it is redundant. Id.
should be given its plain and ordinary meaning.
The phrase “user plane first connection between the HOSF and a Handover Anchor Function-User Plane (HOAF- UP) of a second user” appears in claim 1 of the ‘527 Patent. The phrase “HOAF-UP is configured to establish the user plane first connection between the HOSF and the HOAF-UP” appears in claim 29 of the ‘527 Patent. The Court finds that adding “end-toend connection” to the construction is unnecessary and redundant. As the parties agree, “claims 1 and 29 already recite no anchor points between the first user and the terminal side of the second user . . . thus, what [Defendants] allege to be a ‘necessary characteristic’ is already explicitly recited in the claim.” (Dkt. No. 135 at 6).
include the concept that Dr. Seshan says is represented by the words ‘end-to-end,’ and thus adding ‘end-to-end’ to the claim would be unnecessary and confusing.” (Id. at ¶ 31) (emphasis added). The Court agrees. To the extent that Plaintiff argues that the scope of the disputed phrases include “intermediate anchor points,” the Court rejects that argument. Likewise, to the extent that Defendants contend that the scope of the disputed phrases excludes “intervening components,” the Court rejects that argument because Defendants have conceded that point. See, e.g., Dkt. No. at 125 at 17 (“Moreover, the patent uses ‘end-to-end’ to indicate that there are no intervening HOAFs, not to show that the connection has no intervening components, as Huawei asserts.”) (citing Dkt. No. 125-1 at ¶ 47). Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
will be given its plain and ordinary meaning.
Plaintiff argues that its construction is squarely supported by the specification. (Dkt. No.
timing-related ambiguity. (Id. at 15-16).
Defendants respond that the specification expressly and repeatedly confirms that the HOSF is a module in the device before “handover,” and the HODF is a module in the device after “handover.” (Dkt. No. 125 at 17) (citing ‘527 Patent at 14:18–23, 14:26–29). Defendants argue that the specification confirms that the HOSF and HODF are “modules” in a terminal.
(Dkt. No. 125 at 18) (citing ‘527 Patent at 10:60–67; Dkt. No. 125-1 at ¶¶ 49, 55-56). Defendants also contend that Plaintiff’s constructions are too broad because any two devices with different access addresses could be a HOSF and a HODF. (Dkt. No. 125 at 18). Defendants further argue that Plaintiff’s construction are circular because the HOSF is defined in terms of the HODF, and the HODF in terms of the HOSF, without explaining what either actually is. Id.
adds additional words without support from the specification. Id.
“located in a same terminal of a first user or different terminals of the first user” (claim 29).
exclude embodiments where the HODF initiates a handover because the “module of the first user terminal” would only become a HODF “after handover.” Id.
37, and 41 of the ‘527 Patent. The Court finds that the term is used consistently in the claims and is intended to have the same general meaning in each claim. The Court further finds that neither parties’ constructions accurately captures how the term should be construed in light of the intrinsic evidence.
Plaintiff argues that the “before and after” language raises a timing-related ambiguity. According to Plaintiff, it is unclear if the HOSF ceases to be a module after handover, and whether the HODF was a module before the handover or if it even existed. (Dkt. No. 119 at 16).
As indicated in the Field of the Invention section, “[t]he present invention relates . . . to a method and a system for maintaining session continuity when a user changes access address or access technology of a terminal, or even changes the terminal in a session.” ‘527 Patent at 1:20–24. Accordingly, the claims inherently include a timing issue, and the recited functions are identified by whether they are the source (i.e., before handover) or the destination (i.e., after handover).
specification. See, e.g., ‘527 Patent at 14:18–23.
HODF are different, as Plaintiff contends. Accordingly, to the extent that a party argues that the HOSF and HODF are the same, the Court rejects that argument. Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
from a “handover control” widget. Id.
Defendants respond that Plaintiff never states what the plain meaning of “function” is in the ‘527 Patent. (Dkt. No. 125 at 19). Defendants also argue that the specification explains that these “functions” are something inside a terminal, i.e., a “module.” (Id.) (citing ‘527 Patent at 10:60–65, 26:22–25; Dkt. No. 125-1 at ¶¶ 49, 55-56).
Plaintiff replies that Defendants agree that the only real dispute is whether their proposal to replace “function” with “module” is proper. (Dkt. No. 135 at 7). Plaintiff contends that it is improper because it is contradicted by Defendants’ other arguments that “module” is a nonce word. Id.
HOSF and HODF, not the HOCF. See, e.g., ‘527 Patent at 10:60–65 (“The HOSF and the HODF . . . can be different access modules in a same terminal of the handover user, or access modules in different terminals of the handover user.”). Accordingly, the Court rejects Defendants’ construction. Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
(citing Dkt. No. 119-6 at 10-11 (TS 36.331 V0.1.4)). According to Plaintiff, the “RRC_IDLE” RRC state reflects the “idle mode” to which the patents refer. (Dkt. No. 119 at 18). Plaintiff further contends that in the idle state, only “broadcast/multicast” data is transferred, which the UE uses to detect incoming calls. Id. (citing Dkt. No. 119-6 at 10-11) (TS 36.331 V0.1.4)). Plaintiff argues that in idle mode, there is no RRC connection, and thus no voice or user data can be transmitted. (Dkt. No. 119 at 18).
Plaintiff further argues that the ‘268 Patent prosecution history confirms the patentee interpreted “idle state” in accord with its well-known meaning that no connection exists. (Dkt.
No. 119 at 19) (citing Dkt. No. 119-4 at 3, 28). According to Plaintiff, the patentee made clear that an “active mode or state,” in which a UE already has a connection to a radio network, is different from the claimed “idle mode” or “idle state” in LTE, where the UE has no such connection. (Dkt. No. 119 at 19). Plaintiff further contends that the patentee explicitly relied upon 3GPP definitions related to idle mode when explaining the ‘268 Patent to the Examiner during prosecution. (119 at 20) (citing Dkt. No. 119-4 at 16 n.1 (‘268 Patent Prosecution History, Sept. 20, 2013 Response to Office Action)). Plaintiff also contends that TR 21.905 V7.0.0 defines “idle mode” as the “state of UE switched on but which does not have any established RRC connection” and “RRC connection” as “[a] point-to-point bi-directional connection between RRC peer entities on the UE and the UTRAN sides, respectively.” (Dkt. No. 119 at 20) (citing Dkt. No. 119-7 at 14, 23).
Regarding Defendants’ construction, Plaintiff argues that it confuses the true nature of active and idle modes/states. (Dkt. No. 119 at 20). Plaintiff contends that the UEs of two individuals engaged in a voice call are both in active mode. Id. According to Plaintiff, Defendants’ construction suggests that these active mode UEs momentarily revert to idle mode whenever there is a conversational lull or long pause Id. Plaintiff argues that the UEs remain in active mode and do not momentarily revert to idle mode whenever there is such a pause. Id. Plaintiff further argues that the UEs remain in active mode until a connection between the UE and the network ceases to exist. Id.
at 4 (TR 21.905 V7.0.0)).
Plaintiff replies that a mobile device in idle mode has no established connection (whether voice or data) to the network in the 3GPP body of standards. (Dkt. No. 135 at 8). Plaintiff argues that this is the plain and ordinary meaning of these terms in view of the asserted patents. Id.
Plaintiff further argues that Defendants’ expert agrees with Plaintoff. Id. (citing Dkt. No. 125-9 at ¶ 44). According to Plaintiff, the UE has no established connection, which is more than “not currently sending or receiving user data.” (Dkt. No. 135 at 8).
Given the reliance on this definition in the prosecution history, the Court finds that this is how a person of ordinary skill in the art would interpret the term “idle mode.” Indeed, Plaintiff argues that Defendants’ expert agrees that “[i]n idle mode, there is no RRC connection, and thus no voice or user data can be transmitted.” (Dkt. No. 135 at 8) (citing Dkt. No. 125-9 at ¶ 44 (“Therefore, a UE in ‘idle state’ or ‘idle mode,’ does not have an established RRC connection and thus cannot send or receive user data.”)). Furthermore, the parties agree that the terms “idle mode” and “idle state” should have the same meaning. Accordingly, with the understanding that an RCC connection is required “to send or receive user data,” the Court construes “idle mode” and “idle state” to mean “the state in which User Equipment (UE) is switched on but cannot send or receive user data.” Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
The parties dispute whether the recited “mobility management entity (MME)” is limited to an element in an LTE network, as Plaintiff contends. Plaintiff argues that a “mobility management entity” or “MME” is a well-known network entity that belongs explicitly to an LTE network and manages mobility of a UE. (Dkt. No. 119 at 20) (citing ‘268 Patent at 1:23–47; ‘261 Patent at 1:26–32). Plaintiff contends that both the ‘268 and ‘261 Patents are expressly directed to LTE networks. (Dkt. No. 119 at 21) (citing ‘261 Patent at 2:1–9; ‘268 Patent at 1:57–62).
According to Plaintiff, reference to an “MME” in the asserted patent is unambiguously intended to be interpreted as a particular component in an LTE system. (Dkt. No. 119 at 21).
Plaintiff further argues that if the patent used the term “MME” in the generic sense, as Defendants propose, the patent would have stated that a “SGSN” is a “MME” operating in a 3G network. Id. Plaintiff also contends that Defendants’ interpretation is incompatible with the remainder of the ‘268 and ‘261 Patents, which describe these components as distinct entities.
(Dkt. No. 119 at 21) (citing ‘268 Patent at 4:9–11, 5:16–17; ‘261 Patent at 7:18–31, 8:43–53).
(entity) with another (element). Id. Defendants also argue that Plaintiff seeks to define a MME by stating where it is (in an LTE network), without clarifying what it is (a server that manages UE mobility). Id.
Plaintiff replies that Defendants’ expert neither opposed its construction nor supported Defendants’ construction. (Dkt. No. 135 at 8). Plaintiff further argues that Defendants’ injection of the word “server” is inappropriate. Id. Plaintiff contends that the sole use of “server” in either patent is a reference to another network element, the “Home Subscriber Server (HSS).” Id. (citing ‘261 Patent at 8:58; ‘268 Patent at 6:32–33). According to Plaintiff, the MME is explicitly named an “entity,” not a “server,” and Defendants provide no support for such a narrowing. (Dkt. No. 135 at 8).
mean an “entity in a Long Term Evolution (LTE) network responsible for mobility management.” The intrinsic evidence indicates that a “mobility management entity” or “MME” is a well-known network entity that belongs to an LTE network and manages mobility of a UE.
wireless network includes an MME.”).
The parties agree, and the Court finds, that the ‘268 and ‘261 Patents are directed to LTE networks. See, e.g., ‘261 Patent at 2:1-9 (noting the lack of security capability negotiation methods for UEs moving from a 2G or 3G network to an LTE network); ‘268 Patent at 1:57-62 (noting the lack of security capability negotiation methods for UEs moving from an LTE network to a 2G or 3G network). Furthermore, the specifications explicitly state that the MME is responsible for mobility management. ‘261 at 1:28–32 (“The MME . . . is mainly responsible for mobility management and user authentication.”); ‘268 at 1:24–26 (“A Long Term Evolution (LTE) radio core network includes a Mobility Management Entity (MME), which implements mobility management and user authentication . . . .”).
Defendants argue that the patentee used the term MME in a generic sense to mean a server in any network (e.g., LTE, 2G, 3G). (Dkt. No. 125 at 23). There is no indication that the ‘261 and ‘268 Patents intended to use “mobility management entity (MME)” to refer to anything other than an MME in a LTE network. Defendants’ generic interpretation is inconsistent with the specification, which describe the respective components as distinct entities. See, e.g., ‘268 Patent at 4:9–11 (describing an embodiment where the “3G SGSN obtains the AV-related keys from the MME directly), 5:16–17 (describing an embodiment where the “3G SGSN obtains a root key from the MME”); ‘261 Patent at 7:18–31 (“[T]he MME . . . sends a context request message to an SGSN.”), 8:43–53 (“[T]he MME acquires an NAS security algorithm supported by the UE from an SGSN through mobility management context request and response messages.”). Accordingly, the Court does not adopt Defendants’ construction. Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
because the phrase “information for determining” cannot both modify “AV-related keys” and not modify it. (Dkt. No. 125 at 24-25) (citing Dkt. No. 125-9 at ¶ 41, 43).
Plaintiff responds that the surrounding claim language leaves no doubt that there is only one reasonable reading of the claims, and Defendants’ alleged second definition is contrived.
“deduced according to a root key of the MME.” Id. According to Plaintiff, this means the root key of the MME is information from which the AV-related keys are determined. Id. (Dkt. No.
¶¶ 41-44). Plaintiff argues that the only sensible reading of the claims is that “information for determining” only modifies “security capacities supported by the UE.” (Dkt. No. 135 at 9).
For the following reasons, the Court finds that the “information for determining” phrases inform a person of ordinary skill in the art the scope of the claims with reasonable certainty, and should be given their plain and ordinary meaning.
Defendants contend that it is unclear whether “information for determining” modifies only “security capacities supported by the UE,” or also modifies “AV-related keys.” (Dkt. No.
claim, and is inconsistent with the intrinsic evidence.
Steps 101-103: The 3G SGSN obtains the AV-related keys from the MME through a mobility management context message, where the AV-related keys are deduced according to the root key.
Specifically, the 3G SGSN sends a mobility management context request to the MME. The MME deduces the AV-related keys through a unidirectional transformation function according to its own root key Kasme, where the AVrelated keys include an integrity protection key IK and a ciphering key CK, or an IK’ and a CK’ further derived from the IK and the CK through unidirectional transformation by the MME; then the MME returns a mobility management context response that carries the AV-related keys to the 3G SGSN; and the 3G SGSN uses the AV-related keys as the current ciphering key and integrity protection key.
response returned by the MME to the 3G SGSN in step 103 needs to further carry the security capabilities supported by the UE.
Steps 201-203: The 3G SGSN obtains the root key from the MME through a mobility management context message, and then deduces the AV-related keys according to the root key.
Specifically, the 3G SGSN sends a mobility management context request to the MME. The MME returns a mobility management context response that carries the root key to the 3G SGSN. The 3G SGSN deduces the AV-related keys through a unidirectional transformation function according to the root key Kasme in the response, where the AV-related keys include an integrity protection key IK and a ciphering key CK, or an IK’ and a CK’ further derived from the IK and the CK through unidirectional transformation by the 3G SGSN, and uses them as the current ciphering key and integrity protection key respectively.
if the RAU request sent by the UE to the 3G SGSN carries no security capabilities supported by the UE, the mobility management context response returned by the MME to the 3G SGSN in step 203 needs to further carry the security capabilities supported by the UE.
those skilled in the art about the scope of the invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124, (2014). Contrary to Defendants’ contention, the claim language informs those skilled in the art about the scope of the claims with reasonable certainty. Defendants have failed to carry their burden of proving indefiniteness. Accordingly, the Court finds that the disputed phrases inform a person of ordinary skill in the art the scope of the claims with reasonable certainty, and should be given their plain and ordinary meaning. Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
their plain and ordinary meaning.
Not subject to 112 ¶ 6 – plain meaning.
Function: to send the mobility management context to the SGSN Structure: No corresponding structure disclosed.
claimed functions in the context of an MME. Defendants further contend that the terms are indefinite, because the specification lacks adequate disclosure of corresponding structures, or any algorithm capable of implementing the claimed functions.
Specifically, Defendants argue that the ‘268 Patent discloses that an MME is a server, similar to an SGSN that “implements mobility management.” (Dkt. No. 125 at 26) (citing ‘268 Patent at 1:25–28). Defendants contend that locating the claimed elements within an MME fails to identify them as any particular structure, and actually contradicts the ordinary use of these terms. (Dkt. No. 125 at 26). Defendants further argue that an MME typically takes the form of a server or series of servers, which would not be known to a person of ordinary skill in the art to contain a “receiver” or a “transmitter.” (Dkt. No. 125 at 26) (citing Dkt. No. 125-9 at ¶¶ 24-26). Defendants also argue that while the actual physical housing of a server may have a number of ports through which data and messages are sent and received, one of ordinary skill in the art would not understand there to be a discrete “receiver” or “transmitter” anywhere in the device. (Dkt. No. 125 at 26) (citing Dkt. No. 125-9 at ¶¶ 24-26).
Defendants also contend that the words “receiver,” “processor,” or “transmitter,” do not appear in the specification or figures of the ‘268 Patent. (Dkt. No. 125 at 26) (citing Dkt. No.
interpreted by persons of skill in the art and courts to connote sufficient structure when they are a component within a mobile device that receives and sends signals over the air via electromagnetic waves. (Dkt. No. 125 at 27) (citing Dkt. No. 125-9 at ¶¶ 24-25). Defendants contend that MMEs are computer servers that are connected to other network elements using wired, not wireless, connections. (Dkt. No. 125 at 27) (citing Dkt. No. ¶ 25).
claim 2 recites functions, and the specification does not recite structures sufficient to perform the claimed functions. (Dkt. No. 125 at 27) (citing Dkt. No. 125-9 at ¶¶ 26-28). Defendants contend that the specification does not teach one of ordinary skill in the art how to configure a “receiver” to receive a context request, how to configure a “processor” to deduce an AV-related key, or how to configure a “transmitter” to send a context response. (Dkt. No. 125 at 27) (citing Dkt. No. 125-9 at ¶ 28). Defendants further argue that the specification fails to show specific algorithms or programming methods to convert general purpose receivers, processors, and transmitters into components capable of performing their specified function. (Dkt. No. 125 at 27-28) (citing Dkt. No. 125-9 at ¶¶ 27-28, 36).
Defendants also contend that the specification fails to disclose sufficient structure that corresponds to the claimed functions recited for the “receiver,” “processor,” and “transmitter” terms. (Dkt. No. 125 at 28) (Dkt. No. 125-9 at ¶¶ 27-28, 35-36). Defendants argue that specification does not use the terms “receiver,” “processor,” or “transmitter,” or describe any structure corresponding to these terms. (Dkt. No. 125 at 28) (Dkt. No. 125-9 at ¶ 26-27).
According to Defendants, the terms “receiver,” “processor,” and “transmitter” are indefinite because the specification lacks adequate disclosure of corresponding structures, or any algorithm capable of implementing the claimed functions. (Dkt. No. 125 at 28).
include clauses that further define the structure of the device by identifying how it is configured. Id. Plaintiff further argues that each of these terms are used within a larger network component, such as an MME or SGSN, which must include those structures to achieve their purpose. Id.
Plaintiff contends that “receiver,” “processor,” and “transmitter” each have a recognizable structure to persons of ordinary skill in the art. Id. at 25. Plaintiff further argues that where a would-be functional limitation recites relatively simple functions, such as transmitting or receiving, little disclosure is needed to apprise the public of the structure that corresponds to that function. Id.
“transmitter” can only connote sufficient structure in wireless systems is not credible. (Dkt. No. 135 at 10). According to Plaintiff, transmitters and receivers in wired networks were widely known long before their relatively recent prevalence in wireless systems. Id. (Dkt. No. 135-1 at ¶¶ 45-47).
The phrase “a receiver configured to receive a context request for requesting a mobility management context sent by a serving GPRS support node (SGSN) in a second or third generation (2G/3G) network according to a routing area update (RAU) request from a user equipment (UE) in an idle mode” appears in claim 2 of the ‘268 Patent. The phrase “a transmitter configured to send the mobility management context to the SGSN” appears in claim 2 of the ‘268 Patent. The phrase “a processor configured to deduce authentication vector (AV)-related keys according to a root key of the MME” appears in claim 2 of the ‘268 Patent.
(Fed. Cir. 2000)). “In undertaking this analysis, we ask if the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014) (citing Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011)).
rebuttable presumption that § 112, ¶ 6 does not apply. Defendants have failed to rebut the presumption because “the words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite meaning as the name for structure.” Williamson, 792 F.3d at 1348. Specifically, the intrinsic evidence demonstrates that a person of ordinary skill in the art would understand the necessary structure of the “receiver,” “transmitter,” and “processor” in claim 2 of the ‘268 Patent.
“the MME returns a mobility management context response that carries the AV-related keys to the 3G SGSN.” Id. at 4:35–36. Using similar language, claim 2 recites that the “transmitter” of the MME is “configured to receive a context request for requesting a mobility management context sent by a serving GPRS support node (SGSN).” Likewise, the specification states that “[t]he MME deduces the AV-related keys . . . according to its own root key.” Id. at 4:29–31.
“processor” is a “processor” of a Mobility Management Entity (MME).
The claim language further describes the inputs and outputs of these components, and what it is that they “receive,” “send,” or “deduce.” For example, the “receiver” is “configured to receive a context request for requesting a mobility management context sent by a serving GPRS support node (SGSN),” the “transmitter” is “configured to send the mobility management context to the SGSN,” and the “processor” is “configured to deduce authentication vector (AV)-related keys according to a root key of the MME.” See ‘268 Patent at Claim 2 (emphasis added). As explained in E2E, § 112, ¶ 6 does not apply when the written description provides context as to the “inputs and outputs” and how the claimed components “interact with other components . . . in a way that . . . inform[s] the structural character of the limitation-in-question or otherwise impart[s] structure.” E2E Processing, Inc. v. Cabela’s Inc., 2015 U.S. Dist. LEXIS 86060, *20 (E.D. Tex. July 2, 2015) (quoting Williamson, 792 F. 3d at 1351). Each of the disputed terms is used within a larger network component, such as an MME or SGSN, which must include those structures to achieve their stated objective (e.g., sending and receiving appropriate data).
1319-21 (Fed. Cir. 2004) (“circuit [for performing a function]” found to be sufficiently definite structure because the claim recited the “objectives and operations” of the circuit).
Defendants also contend that the specification does not use the terms “receiver,” “transmitter,” or “processor,” and does not disclose any structure for these terms. (Dkt. No. 125 at 28). Defendants argue that that the specification does not disclose any hardware, software, algorithms, or other structure that comprise the MME. Id. According to Defendants, “the specification lacks adequate disclosure of corresponding structures, or any algorithm capable of implementing the claimed functions.” Id.
The Court is not persuaded by Defendants’ argument. As discussed above, the specification contains descriptions of MMEs and SGSNs performing the claimed functionality.
its proper weight in light of the intrinsic evidence.
“receiving,” “selecting,” “sending,” and “deriving” steps to be performed by the MME.
limiting removes any potential ambiguity by requiring the “receiving,” “selecting,” “sending,” and “deriving” steps to be performed by the MME, and the “transmitting” step to result in a transmission to the MME. Id.
Plaintiff further argues that the specification repeatedly confirms that it is directed an innovative procedure whereby an LTE network MME enables security negotiation. Id. (citing ‘261 Patent at Abstract, 2:21–23). Plaintiff also argues that the specification further confirms that various steps are performed by the MME. (Dkt. No. 119 at 27) (citing ‘261 Patent at 3:32–64). Finally, Plaintiff contends that the prosecution history removes any doubt about the import of the claim preambles. (Dkt. No. 119 at 27) (citing Dkt. No. 119-13 at 22, 39, 48-52).
MME, given that the preamble refers to “using an MME.” Id.
A method for negotiating a security capability when a terminal moves, wherein when a user equipment (UE) moves from a second/third generation (2G/3G) network to a long term evolution (LTE) network, the method comprises: receiving, by a mobility management entity (MME), a tracking area update (TAU) request message sent from the UE, and acquiring a non-access signaling (NAS) security algorithm supported by the UE, and an authentication vectorrelated key or a root key derived according to the authentication vector-related key; selecting, by the MME, an NAS security algorithm according to the NAS security algorithm supported by the UE, deriving an NAS protection key according to the authentication vector-related key or the root key, and sending a message carrying the selected NAS security algorithm to the UE.
In the technical solutions of the present invention, the MME receives the TAU request message sent from the UE, and acquires the authentication vectorrelated key or the root key derived according to the authentication vector-related key and the NAS security algorithm supported by the UE; then selects the NAS security algorithm according to the NAS security algorithm supported by the UE, generates a message carrying the selected NAS security algorithm, and sends the message to the UE, thereby enabling the UE and the MME to share the NAS security algorithm. In addition, the MME derives the NAS protection key according to the authentication vector-related key or the root key derived according to the authentication vector-related key, and the UE derives the NAS protection key according to the authentication vector-related key, thereby enabling the MME and the UE to share the NAS protection key. In this way, when moving from the 2G/3G network to the LTE network, the UE can negotiate the NAS security algorithm and the NAS protection key with the MME, so that the security capability negotiation process in the TAU procedure between heterogeneous networks is achieved, thereby ensuring the security of subsequent interaction between the UE and the network.
‘261 Patent at 3:28–64. As indicated by the intrinsic evidence, the Court finds that “the preamble is essential to understand[ing] limitations or terms in the claim body.” Catalina Mktg. Int’l Inc.
v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
The patent prosecution history further confirms the importance of the preamble. As originally filed, the “receiving,” “selecting,” “sending,” and “deriving” steps of claim 1 each were limited to being done “by the MME.” (Dkt. No. 119-13 at 22). The patentee later amended the claims so that the “MME” limitation appeared in the claim preamble, rather than the body. (Dkt. No. 119-13 at 38). Importantly, the patentee did not indicate or suggest that this amendment changed the scope of the claim. Id. at 119-13 at 49-52.
Defendants argue that clarification is needed to ensure that the jury is not confused about which steps have to be performed by an MME, given that the preamble refers to “using an MME.” (Dkt. No. 125 at 30). The Court agrees, and finds that interpreting the preamble as limiting makes clear that the MME is used for security negotiation for idle state mobility.
Accordingly, requiring the “receiving,” “selecting,” “sending,” and “deriving” steps to be performed by the MME, and the “transmitting” step to result in a transmission to the MME properly clarifies the scope of the claim for the jury.
The preamble of claim 1 is limiting and requires the “receiving,” “selecting,” “sending,” and “deriving” steps to be performed by the MME.
Defendants contend, or if it can be performed by the MME, as Plaintiff contends. The parties also dispute whether the recited “authentication vector-related key” (“AV-key”) must be used as an input to the recited “selected NAS security algorithm,” as Defendants contend. Plaintiff argues that the specification describes (1) the AV-key, and (2) the selected security algorithm as inputs to a “derivation method” to produce the NAS protection key. (Dkt. No. 119 at 28) (citing ‘261 Patent at 5:10–12, 5:24–31, 5:36–38, 6:55–7:3). Plaintiff contends that the patent teaches that the selected algorithm and AV-key are input to a function to derive the NAS protection key. (Dkt. No. 119 at 29). According to Plaintiff, after the recited security negotiation procedure concludes, the UE and network later use the NAS protection keys as inputs to the security algorithm to encrypt and/or provide integrity protection to messages passed between them. Id.
(citing at ‘261 Patent at 3:58–64, 15:17–28).
Regarding Defendants’ construction, Plaintiff argues that the specification does not describe the MME as deriving NAS protection keys using AV-keys as inputs to the selected NAS security algorithm. (Dkt. No. 119 at 29). Plaintiff contends that the specification describes deriving NAS protection keys using the selected NAS security algorithm as an input to the derivation method. Id. (citing ‘261 Patent at 6:60–7:3). Plaintiff concludes that Defendants’ interpretation cannot be correct because it directly contradicts the specification. (Dkt. No. 119 at 29).
performed “using an MME” or some other entity. Id. Defendants also argue that based upon the sequence of steps in claim 1, the specification, and the figures, the deriving step should be construed to be performed by the UE. Id. (citing ‘261 Patent at 11:64–12:2, 4:65–5:65, Figure 1).
59). Defendants also argue that in the second method, one can “directly derive the NAS protection key according to the authentication vector-related key without deriving the root key.” (Dkt. No. 125 at 32). Defendants contend that because claims 1, 9, and 17 do not recite a root key, KASME, the claims cover “directly deriv[ing]” the NAS Protection Keys from the AV-related keys, which can only be done if the AV-related keys are the inputs to the NAS security algorithm. Id. (citing ‘261 Patent at 6:56).
Defendants further contend that the patentee claimed the first method (in which the processor first derives the root key from the AV-related keys and then derives the NAS protection keys from the root keys) in the parent application to the 261 Patent, U.S. Patent No.
8,812,848 (“the ‘848 Patent”). (Dkt. No. 125 at 32). According to Defendants, this means that the patentee deliberately elected to claim the second method in which the NAS protection keys are “directly derive[d]” from the AV-related keys instead of the generated root key.” Id.
MME from performing it because that would contradict the clear description in the specification. Id. (‘261 Patent at 3:52–55).
“transmitting step” is performed by a service general packet radio service (GPRS) support node (SGSN).
inconsistent with the intrinsic evidence.
Defendants’ rationale the “receiving,” “sending,” and “selecting” steps could not be performed by the MME, because “by the MME” was also removed from these steps. This would contradict the plain claim language of “using a mobility management entity (MME)” recited in the preamble.
protection key Knas-int and/or an NAS confidentiality protection key Knas-enc.” ‘261 Patent at 5:10-12, 5:24-31, 5:36-38.
Kasme. Id. at 5:36–38, 5:20–23, 6:66–67. The specification then teaches using a “derivation method” to derive the confidentiality protection key—Knas-enc = f(Kasme, NAS confidentiality protection algorithm, other parameters)—and a function for deriving the integrity protection key—Knas-int = f(Kasme, NAS integrity protection algorithm, other parameters). Id. at 6:607:3. Thus, the specification explicitly states that the selected algorithm and AV-key are input to a function to derive the NAS protection key. See, e.g., ‘261 Patent at 5:38–40 (“The NAS protection key includes an NAS integrity protection key Knas-int and/or an NAS confidentiality protection key Knas-enc.”). After the recited security negotiation procedure concludes, the UE and network later use the NAS protection keys as inputs to the security algorithm to encrypt and/or provide integrity protection to messages passed between them. Id. at 3:58–64, 15:17–28.
rejects Defendants’ construction. Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
Indefinite / incapable of construction.
30). According to Plaintiff, the “wherein” clause at issue describes the structure of the claimed MME claimed system. (Id. at 30-31). Plaintiff contends infringement of these claims occurs as soon as an apparatus is made, used, or sold (or offered for sale) with the ability to create the claimed tunnel. Id.
Plaintiff further argues that the Federal Circuit cases make clear that even the use of an active verb does not turn the claim into an improper mixed method and apparatus claim. Id.
Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008); HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1273 (Fed. Cir. 2012)). Plaintiff contends that the disputed claim language is similar to the active verbs used in these cases, and describes the larger network environment in which the claimed apparatus resides. (Dkt. No. 119 at 31-32).
“sends,” and “derives.” (Id. at 34).
Plaintiff replies that it explained why its claims are four corners with those in UltimatePointer. (Dkt. No. 135 at 12). Plaintiff argues that claim 17 first cites the structure of “a mobility management entity (MME),” and then cites functionality explicitly linked to that cited structure, e.g., “wherein the MME is in the LTE network and selects a NAS security algorithm . . .” Id. According to Plaintiff, this claim form does not implicate IPXL. Id.
For the following reasons, the Court finds that claim 17 of the ‘261 Patent is not indefinite under IPXL, and that the disputed clause should be given its plain and ordinary meaning.
“A single patent may include claims directed to one or more of the classes of patentable subject matter, but no single claim may cover more than one subject matter class.” IPXL, 430 F.3d at 1384 (holding indefinite a claim covering both an apparatus and a method of using that apparatus). Claim 17 of the 261 Patent recites “[a] communications system . . . comprising: a mobility management entity (MME) that receives security capabilities of a user equipment (UE) . . . .” Defendants agree that there are no IPXL issues for this portion of the claim.
indicate that the associated structures have this capability (for example, the image sensor and processor in claim 1) and do not require that any data be actually generated by the user.” Id. at 827.
“reflect an attempt to claim both an apparatus and a method, but instead claim[s] an apparatus with particular capabilities.” Id. at 827-828. Here, the claim recites a communications system that includes an MME, which “selects a NAS security algorithm supported by the NAS security capabilities of the UE, sends a message that indicates the selected NAS security algorithm to the UE, and derives a NAS protection key with the selected NAS security algorithm from the authentication vector-related key.” The Court agree that the “wherein” clause describes the structure of the claimed MME in terms of the actions that the MME must be capable of performing when it is part of the claimed system. In other words, “[u]nlike IPXL and similar cases, the claim at issue here makes clear that [the “selecting,” “sending,” and “deriving”] limitation[s] reflect the capability of that structure rather than the activities of the user.” Id. at 827.
disputed clause should be given their plain and ordinary meaning.
Function: receive from a user equipment (UE) security capabilities of the UE including non-access stratum (NAS) security capabilities of the UE Structure: No corresponding structure disclosed.
Function: to select a NAS security algorithm supported by the NAS security capabilities of the UE and send a message that indicates the selected NAS security algorithm to the UE Structure: No corresponding structure disclosed.
at ¶¶ 29-33). Defendants further argue that Figure 4 only discloses generic boxes for the “acquisition module,” “selection module,” and “key derivation module,” and that there is no indication of what is inside, how it works, or how it is supposed to perform the claimed functions. (Dkt. No. 125 at 35) (citing Dkt. No. 125-9 at ¶¶ 30-33).
Defendants also argue that even if the “module” terms had a common understanding in the context of an MME, a person of ordinary skill would not understand the identity of these components in light of the functions they perform in the claims. (Dkt. No. 125 at 35) (citing Dkt. No. 125-9 at ¶¶ 34-36). Defendants further argue that a person of ordinary skill would not be able to understand whether the claimed modules refer to software or hardware such as a Network Interface Card (NIC), routers, switches, or something else entirely. (Dkt. No. 125 at 36) (Dkt. No. 125-9 at ¶ 34). According to Defendants, these claim elements would not have “an understood meaning in the art,” and should be construed under § 112, ¶ 6. (Dkt. No. 125 at 36).
Defendants further contend that the “module” terms are indefinite because the specification provides no corresponding structure for the claimed functions. (Dkt. No. 125 at 36).
Defendants argue that if the “module” terms are construed as software, the specification does not discloses a processor that executes the corresponding function or an algorithm for the claimed functionality. Id. (citing Dkt. No. 125-9 at ¶ 36). Defendants also argue that the mere disclosure of an “acquisition module,” “selection module,” and “key derivation module” in Figure 4 is not sufficient structure for performing the claimed functions. (Dkt. No. 125 at 36) (citing Dkt. No. 125-9 at ¶ 36).
(MME). (Dkt. No. 119 at 34) (citing ‘261 Patent at 12:45–48).
In the alternative, Plaintiff argues that even if these terms are construed under § 112, ¶ 6, the specification sets forth sufficient structure corresponding to the claims. (Dkt. No. 119 at 34). Plaintiff contends that each of these proposed constructions finds corresponding structure in the specification. Id. According to Plaintiff, Figure 4 of the ‘261 Patent depicts the “acquisition module,” “selection module,” and “key derivation module” within the MME. Id. Plaintiff further contends that the specification describes the recited functions and clearly links them to elements depicted in Figure 4. Id. (citing ‘261 Patent at 2:59–3:8, 10:6–54).
system. (Dkt. No 135 at 12) (Dkt. No. 135-1 at ¶¶ 48-54).
For the following reasons, the Court finds that the term “acquisition module” is not subject to § 112, ¶ 6, and should be construed to mean “receiver of a Mobility Management Entity (MME).” The Court further finds that the term “selection module” is subject to § 112, ¶ 6, and is indefinite for failing to discloses sufficient structure that corresponds to the claimed function. The Court also finds that the term “key derivation module” is subject to § 112, ¶ 6, and is indefinite for failing to discloses sufficient structure that corresponds to the claimed function.
NAS security algorithm from the authentication vector-related key” appears in claim 9 of the ‘261 Patent.
structure’ or else recites ‘function without reciting sufficient structure for performing that function.'” Williamson, 792 F.3d at 1339 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). “In undertaking this analysis, we ask if the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014) (citing Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011)).
Claim 9 of the ‘261 Patent does not recite the word “means.” Therefore, there is a rebuttable presumption that § 112, ¶ 6 does not apply. For the term “acquisition module,” Defendants have failed to rebut the presumption because “the words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite meaning as the name for structure.” Williamson, 792 F.3d at 1348. Specifically, the intrinsic evidence demonstrates that a person of ordinary skill in the art would understand the necessary structure of the “acquisition module” in claim 9 of the ‘261 Patent.
“understood meaning in the art” and thus are not subject to § 112 ¶ 6 construction. See Chrimar Sys. v. ADTRAN, Inc., 2016 U.S. Dist. LEXIS 79555, *38 (E.D. Tex. June 17, 2016) (“Where a claim term has an understood meaning in the art, it recites sufficient structure.”).
Defendants argue that the acquisition module contains the nonce word “module” coupled with a function. (Dkt. No. 125 at 34). According to Defendants, the term “module” in claim 9 of the ‘261 Patent “does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.” (Dkt. No. 125 at 35). Defendants further argue that Figure 4 only discloses generic boxes for the “acquisition module.” Id.
As discussed above, the intrinsic evidence indicates that the claimed “acquisition module” is a “receiver of a Mobility Management Entity (MME).” Furthermore, the intrinsic evidence indicates that MME must include this structure to achieve its stated objective (e.g., receiving an attach request and requesting to initiate a procedure). See, e.g., Linear Tech. Corp.
v. Impala Linear Corp., 379 F.3d 1311, 1319-21 (Fed. Cir. 2004) (“circuit [for performing a function]” found to be sufficiently definite structure because the claim recited the “objectives and operations” of the circuit). Importantly, what is claimed here is a communication system that receives from a user equipment (UE) security capabilities of the UE including non-access stratum (NAS) security capabilities of the UE.
1349 (Fed. Cir. 2015). Like the previous terms, the disputed term contains the word “module” coupled with a function. The term also includes adjectival modifier of “selection” and “key derivation.” However, unlike the previous terms, this combination does not have an understood meaning in the art or belong to a class of structures. (Dkt. No. 125-9 at ¶¶ 29-32).
‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means.'” Williamson, 792 F.3d at 1350 (emphasis added). Here, the recited “selection module” and “key derivation module” are generic recitations of software or hardware, and are purely functional claiming. Thus, the term “selection module” and the term “key derivation module” in claim 9 of the ‘261 Patent “does not provide any indication of structure, because it sets forth the same black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.” Id.
“selection module” and “key derivation module” are subject to § 112, ¶ 6.
limitations under § 112 ¶ 6 must satisfy the definiteness requirement of § 112 ¶ 2.”).
ordinary skill in the art. (Dkt. No. 125-9 at ¶¶ 30-33). This description does not point to any hardware that could perform the stated functions. The specification also fails to disclose a processor that executes the corresponding function or an algorithm for the claimed functionality.
specification to support it contention that the terms are not indefinite. Plaintiff conceded that the arguments presented during the hearing were not identified in its briefing. The Court has reviewed the specification in light of Plaintiff’s argument and is not persuaded that it alters the analysis. Accordingly, the Court finds that the “selection module” and “key derivation module” terms are indefinite because the specification fails to provide corresponding structure for the claimed function. Finally, in reaching its conclusion, the Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic evidence.
The Court finds that the term “acquisition module” is not subject to § 112, ¶ 6, and should be construed to mean “receiver of a Mobility Management Entity (MME).” The Court further finds that the term “selection module” is subject to § 112, ¶ 6, and is indefinite for failing to discloses sufficient structure that corresponds to the claimed function. The Court also finds that the term “key derivation module” is subject to § 112, ¶ 6, and is indefinite for failing to discloses sufficient structure that corresponds to the claimed function.
positions and should not expressly refer to any portion of this Order that is not an actual construction adopted by the Court. The references to the claim construction process should be limited to informing the jury of the constructions adopted by the Court.
Next Steven Green v. Stericycle, Inc.


text:
Kinney v. United States Fidelity & Guaranty Co.
Mayer v. American Security & Trust Co.
Acme Harvester Co. v. Beekman Lumber Co.
Union Pacific R. Co. v. Updike Grain Co.
Union Pacific R. Co. v. Mason City &c. R. Co.
United States v. Fidelity Trust Co.
Anderson v. United Realty Co.
Troy Bank v. Whitehead & Co.
United States v. B. & O. S.W. R. Co.

matches: v. v. v. v. v. v. v. v. v.


KERRY ADOLPHSON, Petitioner-Appellant, v. COMMISSIONER OF INTERNAL REVENUE, Respondent-Appellee.
Before FLAUM, MANION, and WILLIAMS, Circuit Judges.
This is a difficult tax case made more so by the refusal of the Commissioner of Internal Revenue to engage the taxpayer's arguments or the tax court's decision. Kerry Adolphson, who has failed to file a tax return since at least 2002, challenges levies used by the IRS to collect his unpaid taxes. The tax court dismissed his petition for lack of subject-matter jurisdiction because Adolphson had not challenged the levies administratively, see 26 U.S.C. § 6330(d), and, therefore, lacked the requisite notice of determination from the IRS Office of Appeals.
Adolphson contends that because the IRS prevented him from obtaining a notice of determination by failing to properly notify him of its intent to levy, the tax court should have declared the levies invalid. To support his argument, Adolphson relies on a line of cases where the tax court accepted this argument and invalidated levies despite the fact that absent a notice of determination, the tax court lacks the statutory authority to hear a taxpayer's claim. While we agree with Adolphson that his case is indistinguishable from this line of tax court precedent, we affirm the judgment dismissing Adolphson's petition because we find that those decisions are unsound and reflect an improper extension of the tax court's jurisdiction.
The IRS's authority to levy a taxpayer's property is governed by 26 U.S.C. § 6330, which states that “[n]o levy may be made on any property or right to property of any person unless the Secretary has notified such person in writing of their right to a hearing under this section before such levy is made.” Id. § 6330(a)(1). This “Final Notice of Intent to Levy” may be given in person, left at the taxpayer's home or place of business, or sent by certified mail to the person's last known address. Id. § 6330(a)(2). After issuance, the taxpayer has 30 days to request a “collection due process hearing” (“CDP hearing”) with the Office of Appeals, at which the person may challenge both the levy activities and the underlying tax debt, if there has not previously been an opportunity to do so. Id. § 6330(b),(c). After the hearing, the Office of Appeals issues a notice of its determination, which authorizes a dissatisfied taxpayer to petition the tax court for review within 30 days. Id. § 6330(d). We have held that the tax court lacks subject-matter jurisdiction to review IRS collection activities unless the aggrieved taxpayer has obtained a notice of determination. See Gray v. Comm'r, 723 F.3d 790, 792–93 (7th Cir. 2013); Cleveland v. Comm'r, 600 F.3d 739, 741 (7th Cir. 2010).
In 2014, the IRS set out to collect $244,464 in unpaid taxes and penalties assessed against Adolphson for tax years 2002 and 2006 through 2010. According to Adolphson, he was unaware of the IRS's collection efforts until May 2014, when the agency levied on his funds held by third parties. Rather than challenge the levies directly with the IRS, Adolphson filed a pro se petition in September 2014, asking the tax court to enjoin collection efforts by the IRS and refund amounts already collected through the levies. Adolphson argued that the levies are invalid because the IRS had not mailed him a Final Notice of Intent to Levy as required, and so he was deprived of the right to challenge the liability in a CDP hearing before the IRS Office of Appeals. He relied on several tax court decisions, including Buffano v. Commissioner, 93 T.C.M. (CCH) 901 (2007), in which the tax court asserted that it lacked subject-matter jurisdiction without a notice of determination, yet nevertheless invalidated levies after finding that the taxpayer was prevented from requesting a CDP hearing by the IRS's failure to mail a Final Notice of Intent to Levy to the proper address.
The Commissioner initially responded by asserting that the statutorily required notices had been “mailed” but said that further investigation was needed to ascertain where those notices were sent. The Commissioner never provided an answer to that question, however, and instead moved to dismiss Adolphson's petition. The Commissioner argued that the tax court lacked subject-matter jurisdiction under 26 U.S.C. § 6330(d), because Adolphson had not requested a CDP hearing. Absent a CDP hearing, Adolphson could not have received a notice of determination from the IRS Office of Appeals. The Commissioner maintained that without a notice of determination, the tax court had no power to review the levies or to determine whether the IRS had issued them properly. In his motion, the Commissioner did not acknowledge Buffano or the other decisions in which the tax court had invalidated levies—notwithstanding the absence of a notice of determination—based on the same argument Adolphson advanced.
Despite contending that the tax court lacked jurisdiction, however, the Commissioner responded to Adolphson's challenge on the merits. The Commissioner noted that Final Notices of Intent had been issued on March 11, 2010 and January 16, 2014. While IRS records indicated that Adolphson's address had been updated in 2006, and then again in 2014, the Commissioner was unable to say “with certainty” whether the Final Notices of Intent were sent to the proper addresses. Although the Commissioner conceded that the Notices of Intent to Levy were invalid if mailed to the improper address, which would mean that the levies must be reversed, the Commissioner once more reiterated that absent a CDP letter, the Court lacked jurisdiction over the collection matter pursuant to Section 6330(d)(1).
While Adolphson conceded that he lacked a notice of determination, he urged the tax court to apply Buffano and invalidate the levies because the IRS had prevented him from requesting a CDP hearing by failing to send him a Final Notice of Intent to Levy for any of the relevant tax years. He further argued that although the Commissioner's exhibits listed an Iowa address, his “address for the last 5 years has and always has been” in Illinois.
At that point the Commissioner conceded that the IRS could not establish through its records where the agency had sent either of the Final Notices of Intent to Levy. The Commissioner speculated, though, that the Iowa address on the transcripts of account is “the most likely address to which these notices were sent.” As before, the Commissioner did not acknowledge—much less try to distinguish—the tax court decisions relied upon by Adolphson, instead faulting him for the agency's floundering while continuing to insist that the tax court lacked subject-matter jurisdiction to invalidate the levies. Nor did the Commissioner submit additional evidence, instead relying upon the assertion that IRS “records reflect that Notice was mailed,” which misrepresents the strength of the agency's evidence, since (with the possible exception of the 2010 notice that was returned “undeliverable”) those records reflect nothing more than dates of issuance.
Adolphson then produced a letter he “ha[d] recently come across,” which the IRS sent in November 2012 to the Illinois address where he claimed to have resided for more than five years. This letter, he argued, proves that the IRS was aware of his Illinois address for more than a year before issuing (and apparently mailing to Iowa) the Final Notice of Intent to Levy for tax years 2006 through 2010. Adolphson pointed out explicitly that the Commissioner still had not acknowledged Buffano and other decisions in which the tax court had invalidated levies where the IRS could not prove proper mailing.
The tax court granted the Commissioner's motion to dismiss, reasoning that it lacked the authority to grant relief under § 6330(d) without a notice of determination. The tax court acknowledged the IRS's inability to show where it had mailed the Final Notices of Intent to Levy, but distinguished Buffano with the explanation that Adolphson—the taxpayer—had failed to establish where the notices should have been mailed.
We review de novo the tax court's dismissal of a petition for a lack of jurisdiction. Estate of Kunze v. C.I.R., 233 F.3d 948, 950 (7th Cir. 2000). Although we find that this case is indistinguishable from the Buffano line of cases, because we find that those cases were decided in error, we will affirm the tax court's dismissal of Adolphson's petition for lack of jurisdiction.
In this court, Adolphson principally argues that the transcripts of account attached to the Commissioner's motion to dismiss were not admissible or, at the very least, not properly authenticated. Adolphson is correct that the Federal Rules of Evidence apply in the tax court, see 26 U.S.C. § 7453, and though transcripts of account are admissible if properly authenticated, these were not. See United States v. Ryan, 969 F.2d 238, 239 (7th Cir. 1992). That said, Adolphson's argument is a distraction; he treated the transcripts as valid before the tax court and, more importantly, the tax court's decision does not turn on their content.
The significant issue in this appeal is the one that Adolphson has been pressing since the beginning: the tax court should have invalidated the IRS's levies under Buffano. We agree that this case is indistinguishable from Buffano.
In Buffano, the IRS mailed a Final Notice of Intent to Levy to the address listed on the taxpayer's most recently filed tax return (an address where the taxpayer no longer lived). On the same day, though, the IRS also mailed two unrelated letters to the taxpayer's current address, which the agency had obtained through a Postal Service database. The IRS's letters did not mention collection activity, and when the taxpayer learned later that the agency had levied on his wages, he promptly requested a CDP hearing. The IRS refused to conduct a CDP hearing because the agency had received the taxpayer's request more than 30 days after issuance of the Final Notice of Intent to Levy. The taxpayer nevertheless petitioned the tax court for review, and the Commissioner moved to dismiss for lack of subject-matter jurisdiction, citing the absence of a notice of determination. Buffano, 93 T.C.M. (CCH) 901, at *2–3. The tax court denied the Commissioner's motion to dismiss, yet still entered an order dismissing for lack of jurisdiction—but only after invalidating the levies based on a finding that the IRS had mailed the final notice to the wrong address. The tax court reasoned that the taxpayer's current address, which the IRS had obtained from the Postal Service database and used in the two letters sent to him, had superseded, for purposes of his “last known address,” the one listed on his most recently filed tax return. Id. at *4–5.
This analysis—dismissing the taxpayer's petition for lack of jurisdiction while still granting the very relief he seeks—is illogical, but Buffano is not an outlier. That 2007 decision has been relied upon to invalidate levies in situations analogous to Adolphson's at least seven times in published decisions (and we cannot be sure that there are not even more, unpublished instances). See Minemeyer v. Comm'r, 104 T.C.M. (CCH) 616, at *4 (2012); Roberts v. Comm'r, T.C. Summ. Op. No. 7222-09S, at *3 (2010); Space v. Comm'r, 98 T.C.M. (CCH) 328, at *2–4 (2009); Kennedy v. Comm'r, 95 T.C.M. (CCH) 1121, at *3 (2008); Graham v. Comm'r, 95 T.C.M. (CCH) 1504, at *5 (2008); Downing v. Comm'r, 94 T.C.M. (CCH) 319, at *8 (2007); Schwengel v. Comm'r, No. 13979-06L (T.C. Nov. 20, 2007).
In other decisions, the tax court has relied on Buffano but sided with the Commissioner, dismissing petitions for lack of jurisdiction because the required notices had been properly mailed and the petitions were, therefore, untimely. See, e.g., Anson v. Comm'r, 99 T.C.M. (CCH) 1504, at *4 (2010). To further complicate matters, the tax court has been inconsistent; for example, in Walthers v. Commissioner, 97 T.C.M. (CCH) 1793, at *2–3 (2009), it cited Buffano in concluding that the IRS had failed to properly mail notice to the taxpayer, but still refused to enjoin collection of the (invalid) levies, citing the absence of a notice of determination.
The outcome of this case, therefore, turns on the validity of the Buffano line of cases. If the tax court has the power under § 6330 to evaluate the sufficiency of the IRS's collection activities and invalidate levies where the agency fails to properly mail notice, then Adolphson should have prevailed. Direct evidence is required when the IRS must prove that it properly mailed notice, and a computer printout listing a mailing date but without an address will not suffice. Walthers, 97 T.C.M. (CCH) 1793, at *2. Here, the Commissioner cannot even say with certainty to what address Adolphson's notice was mailed, much less prove that it was sent by certified mail to his “last known address.” And the tax court's ground for distinguishing Buffano is untenable; the court rejected the petition due to “the paucity of information,” Adolphson's failure to state what address was shown on his last tax return, and because, the court reasoned, the address shown on the 2012 letter is “hardly determinative as to his ‘last known address' for purposes of section 6330.” This reasoning improperly shifts the burden to Adolphson to prove that the IRS met its own statutory duty to notify him before levying his assets. It strikes us as nonsensical to fault the taxpayer for not establishing where the IRS should have mailed notice if the agency concedes, as it did here, that it cannot say if notice was mailed to New York or Los Angeles or somewhere in between.
Moreover, this question of burden-shifting aside, Adolphson's contention that the IRS should have used his Illinois address has merit. In the tax court, the agency asserted that twice it had updated Adolphson's address using the Postal Service database—presumably to his Illinois address, where the 2012 letter was mailed—yet the agency conceded that it “most likely” sent the Final Notices of Intent to Levy to Iowa. See Gyorgy v. Comm'r, 779 F.3d 466, 475–76 (7th Cir. 2015) (noting that treasury regulations treat an updated address in the Postal Service database as “clear and concise notification” of taxpayer's address); McPartlin v. Comm'r, 653 F.2d 1185, 1191 (7th Cir. 1981) (explaining that notice sent by certified mail will be deemed insufficient if Commissioner cannot produce return receipt); Pyo v. Comm'r, 83 T.C. 626, 636–37 (1984) (concluding that taxpayers were reasonably entitled to assume, after receiving correspondence from IRS at new address, that future mailings would be sent to same address). In other words, had the tax court followed Buffano and required the Commissioner to prove proper mailing, the “paucity of information” should have led to a win for Adolphson.
But instead of explaining why Adolphson's reliance on Buffano is “misconceived,” the Commissioner simply changes the subject and asserts that Adolphson, proceeding pro se, erred by asking the tax court to enjoin further collection efforts and refund money already collected, rather than asking the court to invalidate the levies. Because the tax court had no jurisdiction to issue injunctions or order refunds, the Commissioner argues, the court lacked jurisdiction to grant the specific relief requested. This is not helpful; the issue is whether the tax court had the power to determine the sufficiency of the IRS's mailings, not whether Adolphson knew to specifically ask for invalidation as opposed to an injunction. The Commissioner continues to pretend that Buffano and its progeny do not exist, while simultaneously arguing that the tax court lacks jurisdiction absent a notice of determination.
Notwithstanding this unwillingness to confront the salient issue, the Commissioner is correct that, absent a notice of determination, the tax court lacks jurisdiction under 26 U.S.C. § 6330(d). See 14 MERTENS, LAW OF FEDERAL INCOME TAXATION, § 50:22 (Jane C. Bergner ed., 2016) (explaining that a notice of determination is a taxpayer's “ticket” to tax court and that court lacks jurisdiction over claim by taxpayer who fails to timely request, and receive, a CDP hearing); Hauptman v. Comm'r, 831 F.3d 950 (8th Cir. 2016) (recognizing that a notice of determination is a prerequisite to tax court jurisdiction under § 6330). A decision invalidating administrative action for not following statutory procedures is a quintessential merits analysis, not a jurisdictional ruling. The Buffano line of cases therefore represents an improper extension of the tax court's statutorily defined jurisdiction.
This practice of invalidating collection activity where the tax court lacks statutory authority to proceed also violates the Tax Anti-Injunction Act, 26 U.S.C. § 7421(a), which (with exceptions inapplicable here) provides that “no suit for the purpose of restraining the assessment or collection of any tax shall be maintained in any court by any person.” This statute deprives courts of jurisdiction to enter pre-collection injunctions and “protects the Government's ability to collect a consistent stream of revenue” by ensuring that “taxes can ordinarily be challenged only after they are paid, by suing for a refund” under 28 U.S.C. § 1346(a)(1). Nat'l Fed'n of Indep. Bus. v. Sebelius, 132 S. Ct. 2566, 2582 (2012); Korte v. Sebelius, 735 F.3d 654, 669 (7th Cir. 2013). By invalidating levies despite the absence of a notice of determination under § 6330—a taxpayer's jurisdictional hook to enter tax court—decisions such as Buffano stand in direct opposition to the Act.
We note that, as far as we can tell, this framework for invalidating levies through a jurisdictional dismissal appears to have originated in a related but distinct context. The tax court in Buffano extended (without discussion) a much older and less problematic practice related to a different area of the tax court's jurisdiction. When the IRS determines that a taxpayer (who, presumably, has filed tax returns) underpaid for a particular year, it issues a notice of deficiency (not to be confused with the notice of determination at issue here). The taxpayer may then immediately petition the tax court for redetermination of the alleged deficiency under 26 U.S.C. § 6213(a). In other words, no agency appeal is required—a taxpayer may go straight to the tax court as long as the petition is filed within 90 days of the deficiency notice.
But when the taxpayer does not learn of the deficiency and petition for redetermination until more than 90 days after assessment, the IRS typically moves to dismiss the petition for lack of jurisdiction on timeliness grounds. The tax court then analyzes the IRS's proof of mailing to determine whether the deficiency notice met statutory requirements. If notice was properly mailed, the case will be dismissed for lack of jurisdiction as untimely. See Lee v. Comm'r, 101 T.C.M. (CCH) 1634, at *2–3 (2011). But if the IRS cannot produce records or the tax court finds that the address used is not the taxpayer's legal “last known address,” the court will side with the taxpayers and deem the notice insufficient (preventing further collection activity until the IRS complies with procedural requirements). See King v. Comm'r, 857 F.2d 676, 681 (9th Cir. 1988); Crum v. Comm'r, 635 F.2d 895, 900–01 (D.C. Cir. 1980) (reversing tax court's dismissal for lack of jurisdiction to give taxpayer “the opportunity, as provided by statute, to seek in the Tax Court a redetermination of the 1969 deficiency prior to payment upon the filing of a timely petition”). This makes sense because the Congressional intent of providing taxpayers a forum to resolve a disputed deficiency is met, and because the jurisdictional requirement—a deficiency assessed by the IRS—must exist for the IRS to pursue any collection efforts, whether or not the taxpayer physically possesses the notice.
Over time, this morphed into a practice by which taxpayers who wish to argue that the IRS never properly served notice of a deficiency will file a petition, then immediately move for dismissal of their own petition for lack of jurisdiction on the ground that a deficiency was not properly sent. See, e.g., Pyo v. Comm'r, 83 T.C. 626, 631–32 (1984); Mulder v. Comm'r, 855 F.2d 208, 210–12 (5th Cir. 1988). Although calling this ground for dismissal “jurisdictional” is a misnomer, the logical underpinning is the same: The tax court is determining whether the IRS has met statutory requirements to proceed with collection, but there isn't a question of whether or not the jurisdictional hook exists (were there no deficiency, there would be nothing to collect).
Buffano applied the analysis long used for cases in which a taxpayer challenges a notice of deficiency, but applied it to a case where the IRS had never issued a determination notice, without analyzing the significant differences between the two grants of jurisdiction. Buffano, 93 T.C.M. (CCH) 901, at *3–5. The tax court improperly transferred this longstanding practice to a new context without considering that under § 6330, absent a notice of determination concerning levy activities, the tax court has nothing to review.
No circuit court has directly addressed the practice of invalidating a levy through a jurisdictional dismissal, although the D.C. Circuit recently remanded to the tax court for it to consider, among other arguments, whether it has jurisdiction over a claim identical to that in Buffano. Edwards v. Comm'r, 791 F.3d 1, 7–8 (D.C. Cir. 2015). The absence of relevant case law perhaps is not surprising, however, since the Commissioner chose not to appeal any adverse decision resting on Buffano. Instead, the IRS's Chief Counsel has advised the agency to maintain better mailing records than applicable regulations require because, “if [a] taxpayer alleges that he never received a CDP notice and the Service cannot prove that it mailed the notice by certified or registered mail, the [tax] court will dismiss the case for lack of jurisdiction on the basis that the CDP notice was invalid.” IRS Chief Counsel Advice 200842042, 2008 WL 4610126.
The framework used in Buffano to scrutinize the IRS's compliance with its statutory obligations does have equitable appeal; a taxpayer to whom the IRS fails to mail a Final Notice of Intent to Levy and, through no fault of her own, misses the 30-day window to request a CDP hearing might otherwise be left without an opportunity to petition the tax court prior to seizure of her assets. This is the system devised by Congress, however, and at least one circuit decision has rejected an argument that the tax court must have jurisdiction to address this apparent problem. In Boyd v. Commissioner, 451 F.3d 8, 10 (1st Cir. 2006), taxpayers argued that the IRS “negate[d] Congress's grant of jurisdiction by withholding the very process [a CDP hearing] that is designed to give taxpayers fair opportunity to challenge the agency's decision-making.” In rejecting the argument that the tax court has equitable power to hear such claims despite the absence of a notice of determination, the court noted that an aggrieved taxpayer unable to access the tax court has an alternate remedy: a refund suit in district court. Id. at 11. Troubling though this “remedy” may be, given the expense and potential delays inherent in such a suit, there is no lawful basis for expanding the tax court's jurisdiction to resolve the perceived problem. Absent a notice of determination, the tax court simply has no lawful authority to hear a taxpayer's claim under § 6330(d).
We AFFIRM the decision of the tax court dismissing Adolphson's petition for lack of jurisdiction.