SUE L. ROBINSON, District Judge.
Presently before the court are ten motions brought in two related patent infringement actions involving SSBG and Cisco Systems, Inc. ("Cisco") relating to Teles's U.S. Patent Nos. 6,954,453 ("the '453 patent"), 7,145,902 ("the '902 patent") and 7,483,431 ("the '431 patent") (collectively, the "patents in suit"). The procedural history of these actions is complex and detailed below. Pending before the court are: (1) Teles's motion to amend its pleadings (Civ. No. 09-72, D.I. 86; Civ. No. 09-232, D.I. 170); (2) Cisco's motion to dismiss for lack of subject matter jurisdiction (Civ. No. 09-72, D.I. 198; Civ. No. 09-232, D.I. 281); (3) Cisco's motion to exclude the opinion of SSBG's expert Christopher Spadea on commercial success (Civ. No. 09-72, D.I. 202; Civ. No. 09-232, D.I. 285); (4) SSBG's motion to limit the testimony of Cisco's expert Thomas La Porta (Civ. No. 09-72, D.I. 205; Civ. No. 09-232, D.I. 288); (5) SSBG's motion to limit the testimony of Cisco's expert Kevin Negus (Civ. No. 09-72, D.I. 206; Civ. No. 09-232, D.I. 289); (6) SSBG's motion for partial summary judgment of no inequitable conduct (Civ. No. 09-72, D.I. 216; Civ. No. 09-232, D.I. 299); (7) Cisco's motion for summary judgment of noninfringement (Civ. No. 09-72, D.I. 218; Civ. No. 09-232, D.I. 301); (8) SSBG's motion for partial summary judgment of infringement (Civ. No. 09-72, D.I. 222; Civ. No. 09-232, D.I. 305); (9) Cisco's motion for partial summary judgment for invalidity of the '431 patent pursuant to 35 U.S.C. § 112 and for confirmation of the priority date for the '431 patent (Civ. No. 09-72, D.I. 223; Civ. No. 09-232, D.I. 306); and (10) Cisco's motion for summary judgment of invalidity (Civ. No. 09-72, D.I. 227; Civ. No. 09-232, D.I. 310).
The patents in suit relate to voice over internet protocol ("VoIP") telephony. Cisco provides routers and other network products that provide access to VoIP service providers. Teles is the listed owner
The patents in suit share a common specification claiming priority to original German patent applications filed in October 1996. The '453 patent issued from PCT No. PCT/DE97/02363, filed on October 7, 1997. The application issuing as the '902 patent was filed as a divisional application from the '453 patent application (U.S. Patent Application No. 09/147,970). The '431 patent was filed as a continuation of the '902 patent application (U.S. Patent Application No. 11/456,549).
This case concerns internet telephony. Traditional telephony involves routing a telephone call over the public switched telephone network (the "PSTN") from one telephone to another. The patents in suit and the accused Cisco products relate to VoIP technology through which a telephone call may be routed over a data network, such as the internet, rather than the PSTN.
The patents describe two methods of data transfer: line-switching (or circuit switching) and packet-switching. Line-switching connections are synchronous connections. ('902 patent, col. 1:45-48) When a line-switching call is put through, a continuous, real-time connection is established using the full bandwidth of a channel. (Id. at col. 1:49-52) Data is transferred from one line section to an adjoining line section through a switch. (Id. at col. 1:45-48) Although a line-switching connection is free of any time delay and has a fixed bandwidth, such connections are expensive, since costs accumulate irrespective of the data actually being transferred. (Id. at col. 1:52-58)
A packet-switching exchange involves the transfer of data, such as audio or video data or computer files, which are packeted and transferred as data packets. (Id. at col. 1:59-62) Packet-switching is asynchronous, and a fixed connection need not be maintained. (Id. at col. 1:62-67) The data packets are transferred time-delayed between two adjoining line sections by a switch; "each packet is treated individually and not in conjunction with the others." (Id. at col. 1:62-2:2) Packet-switching is used on the internet, whose data packets are termed "IP packets" (for "Internet Protocol"). (Id. at col. 2:3-5) IP packets have a length of 16 bytes or more because they contain information in their headers, such as sender and receiver addresses. (Id. at col. 2:5-11) Because of this length, a time delay occurs in the packet-switch (an IP-switch or router
The patents disclose that, "[b]ased on the prior art, the present invention is concerned with the problem of providing a method for transferring data from a first switch to a second switch and providing a switch[] for carrying out the method which, depending on the data origin and headers of a user or network management system, allows flexible data transfer between the switches and more particularly
The patents describe utilizing switches having both line-switching and packet-switching functionality. (Id. at col. 3:43-46) That is, the switch has "a packeting device for packeting and unpacketing data, an IP-switching device for routing data packets, a line-switching device for establishing connections for switching through data channels and a control device which directs incoming data either to the IP-switching device or to the line-switching device depending on the control signals." (Id. at col. 3:46-53; fig. 4) "The important factor is therefore the possibility of dynamically switching between packet-switching and line-switching during one transfer." (Id. at col. 7:20-22) The internal control commands (as to whether packet-switching is to take place through an IP-switch or line-switching is to take place through a line-switching device) are produced in a control unit, which is itself "substantially a switch" that monitors and controls open connections. (Id. at col. 8:49-60) The switching decision is made by the control unit based on specified transfer parameters. (Id. at col. 9:46-56)
Together, the patents in suit contain 210 claims to various methods and apparatus encompassed by the invention, for example, methods for data transfer and data switching apparatus. SSBG asserts that Cisco infringes the following claims: (A) claims 2, 34, 68, 69, 71, 74-77, 79, 82-85, 87, 90-92, 95, 98, 100-01, and 104 of the '902 patent; (B) claims 34-36 and 38 of the '453 patent; and (C) claims 1, 3, 6, 8, 11, 13, 16, 18, 45, 46 and 47 of the '431 patent. (D.I. 281, JA6440 at ¶ 10
The '453 patent issued on October 11, 2005. On October 18, 2005, Cisco filed a declaratory judgment action against Teles in the United States District Court for the District of Columbia, seeking a declaration that the '453 patent is invalid and not infringed (hereinafter, "Teles I"). (Civ. No. 09-232, D.I. 1)
The '902 patent issued December 5, 2006. Teles amended its Quintum complaint in December 2006 to add a count of infringement of the '902 patent; the amendment was not opposed by Quintum. (Civ. No. 06-197, D.I. 28)
In February 2007, Teles was granted leave to amend its counterclaims to include allegations that Cisco infringes the '902 patent. (Civ. No. 09-232, D.I. 39; D.I. 41) In August 2007, Cisco filed a request for inter partes reexamination of the '453 and '902 patents with the United States Patent and Trademark Office (the "PTO"), and moved to stay Teles I.
On May 9, 2008, Quintum moved to transfer Quintum to the District Court for the District of Columbia or, in the alternative, to stay the action pending reexamination of the '453 and '902 patents. (Civ. No. 06-197, D.I. 49) This court denied the motion.
The '431 patent issued January 27, 2009. Two days later, Teles filed a complaint against Cisco in this court alleging infringement of the '431 patent (hereinafter, "Teles II"). (Civ. No. 09-72, D.I. 1) In early February, Cisco filed a declaratory judgment complaint for invalidity and non-infringement of the '431 patent in the District of Columbia (hereinafter, "Teles III"). (D.D.C.Civ. No. 09-224-RBW, D.I. 1)
On February 5, 2009, Cisco filed a motion to transfer Teles II to the District of Columbia or, in the alternative, to dismiss or stay the action pending the conclusion of Teles III. (Civ. No. 09-72, D.I. 5) Judge Walton subsequently dismissed Teles III in favor of Teles II under the first-filed rule. (Id., D.I. 16)
On February 23, 2009, Cisco moved for leave to amend its declaratory judgment complaint in Teles I to add claims relating to the invalidity, unenforceability, and Cisco's non-infringement of the '431 patent. (Civ. No. 09-232, D.I. 81) The following day, Teles moved to transfer to this court. (Id., D.I. 82) The Teles I stay was terminated on March 4, 2009. (Id., D.I. 85) On March 24, 2009, Judge Walton denied Cisco's motion to amend its complaint in Teles I given that the '431 patent was the subject of Teles II and, following consultation with this judicial officer, transferred Teles I to this court. (Id., D.I. 91)
On April 24, 2009, Teles moved to consolidate the three Delaware actions (Teles I, Teles II, and Quintum), which motion was denied,
The reexaminations of the '453 and '902 patents have proceeded concurrently with
On August 6, 2008, a final office action issued in the '453 patent reexamination affirming the rejection of all claims. (D.I. 246, ex. E) On October 3, 2008, the CRU issued an "Action Closing Prosecution" in the '902 patent reexamination, finally rejecting all of the claims except dependent claims 91 and 104. (Id., ex. F)
The parties have since appealed both final actions by the CRU to the Board of Patent Appeals and Interferences ("BPAI"), which heard argument on the '453 patent in December 2009. No decision has yet issued. Oral argument has not yet been scheduled on the '902 patent.
A court shall grant summary judgment only if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "Facts that could alter the outcome are `material,' and disputes are `genuine' if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct." Horowitz v. Fed. Kemper Life Assurance Co., 57 F.3d 300, 302 n. 1 (3d Cir.1995) (internal citations omitted). If the moving party has demonstrated an absence of material fact, the nonmoving party then "must come forward with `specific facts showing that there is a genuine issue for trial.'" Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (quoting Fed.R.Civ.P. 56(e)). The court will "view the underlying facts and all reasonable inferences therefrom in the light most favorable to the party opposing the motion." Pa. Coal Ass'n v. Babbitt, 63 F.3d 231, 236 (3d Cir.1995). The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment; there must be enough evidence to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex
On October 1, 2009, Teles filed a motion to amend its patent infringement complaints in Civ. Nos. 09-72-SLR and 06-197-SLR and to amend its counterclaims and request for declaratory judgment in Civ. No. 09-232-SLR. (D.I. 86) Cisco opposed the motion on the basis that Teles remains a named party in the amended pleadings. Cisco argued that Teles, a non-exclusive licensee, now lacks standing to sue and has filed a motion to dismiss on that basis. (D.I. 198) Cisco also opposed the motion to amend on the basis that the amended pleadings in Civ. No. 09-232-SLR contain an extended list of accused products adding over 200 new products over multiple categories to the litigation. (D.I. 97 at 5) Cisco objected that the amended pleadings only conclusorily assert infringement as to these products; the bases for infringement are not detailed. (Id.)
On June 7, 2010, after discovery closed and oral argument on claim construction had been held, the court issued an order that the parties supplement their briefing on the motions to amend and to dismiss. Specifically, it was not clear to the court if any of Cisco's concerns with respect to the motion to amend had been mooted by the close of discovery and whether all of the 200 products sought to be added to the pleadings in Civ. No. 09-232-SLR had been vetted through the discovery process. (D.I. 353) The parties have clarified their respective positions as follows.
The parties agree that SSBG should be substituted for Teles in this case pursuant to Federal Rule of Civil Procedure 25(c) and, therefore, the court will do so. (D.I. 361 at 1; D.I. 362 at 2) Cisco is correct that Teles's motion to amend must be denied, however, insofar as the proposed pleadings filed in connection with that motion merely add, rather than substitute, SSBG as a party. (D.I. 86, ex. 1B (Civ. No. 09-232-SLR), ex. 2B (Civ. No. 09-72-SLR)) The court no longer has jurisdiction over Teles, a non exclusive licensee. See Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1367 (Fed.Cir.2008) (collecting authority). Accordingly, Cisco's motion to dismiss Teles is denied as moot.
In its request for supplemental briefing, the court informed Teles that it could file amended proposed pleadings deleting any of the 200 products that had not been vetted through discovery. Teles responded that it was its "understanding" that all of the 200 products "were the subject of discovery" and, quite surprisingly, listed an
Cisco has identified at least six products
The court has before it cross motions for summary judgment. SSBG seeks partial summary judgment that Cisco's 1861, 881 SRST and 888 SRST router products infringe claim 34 of the '453 patent, claim 45 of the '431 patent, and claims 69 and 84 of the '902 patent. (D.I. 224) Cisco seeks summary judgment that its router products do not infringe the patents under any of the "fourteen infringing scenarios" identified by SSBG's expert in his infringement report.
At issue in SSBG' infringement motion are apparatus claims of each patent, as follows:
(emphases added) Cisco seeks summary judgment of noninfringement with respect to all of the asserted claims and accused products.
By its memorandum order of the same date, the court has construed certain claim limitations relevant to the issue of infringement.
With these constructions in mind, the court turns now to the issues of infringement.
It is SSBG's position that Cisco products that are capable of executing software that enables routers to be "voice-enabled" infringe the patents in suit. (D.I. 281 at JA6445-46, ¶¶ 14-15, 17) The Cisco software having these voice-enabled features is Cisco's Internetworking Operating System (or "IOS"). The IOS software has IP telephony capability and renders the accused Cisco products capable of interconnection and data transfer over packet-switching networks (e.g., an IP Wide Area Network or IP "WAN") or a line-switching network (such as the PSTN).
Although over 200 Cisco products (running the IOS) are accused of infringement, SSBG focused on the Cisco 1861 router at oral argument and in its summary judgment briefing. Cisco's 1861 router is marketed to small to medium sized offices to provide a unified communications system by offering the integration of voice gateway, call processing, voicemail, conferencing and security capabilities, among others.
The Cisco 1861 router has built-in interfaces, specifically, FXO and ISDN Basic Rate Interface ("BRI") configurations,
The 1861 router (with the IOS) will attempt to transfer data over the IP WAN, but will change over to the PSTN upon determining that the IP WAN would not be suitable for the transfer. Reasons that the IP WAN may not be suitable include too much time delay or variation in delay. Additionally, certain "cause codes" (generated by the remote router connected to the telephone being called) indicate that the remote router has problems in forwarding data to the telephone being called and will cause a change over to PSTN.
SSBG also asserts that Cisco's 881 and 888 SRST routers infringe the claims. These routers have four built-in ethernet ports that are used to transfer data packets to and from IP telephones. The 881 and 888 SRST routers also have four FXS ports that are used to receive analog (non-packeted) data from analog telephones.
SSBG's expert, Robert Stillerman ("Stillerman"), has identified several "infringing scenarios" relevant to Cisco's products. Stillerman's infringement opinion relates to "Cisco products that are capable of executing software that enables routers [or] gateways [] to be `voice-enabled.'" (D.I. 281 at JA6445, ¶ 14) These "Voice Enabled Switching Products" comprise "Voice Enabled IOS Products" that utilize Cisco's IOS software. (Id. at ¶ 15)
Stillerman explains that the Cisco Voice Enabled Switching Products employ two mechanisms for determining how to route a telephone call: consideration of the dial plan and Call Admission Control ("CAC"). From the dial plan, the Voice Enabled Switching Products "determine when a roundtable number has been dialed, and then determine which routes are available to reach the destination having that routable number." (Id., JA6491-92 at ¶ 183) CAC determines whether a packet network has the "resources" to carry a voice call. (Id., JA6488 at ¶ 176, citing "Tarng Exhibit 215") "CAC occurs during call setup after a dialable number has been matched and is done on a call by call basis." (Id., JA6487 at ¶ 173) "When a call that is intended for the packet switching network fails to be admitted to that network, the next preferred route is considered. When that next route is the PSTN, then switch over from the packet switching network to the line switching network occurs." (Id., JA6492 at ¶ 185)
According to Stillerman, all of the Voice Enabled Switching Products use CAC "at least in the handling of calls being considered for a packet switching network." (Id., JA6490 at ¶ 178) "PSTN Fallback" and "MAX CONN" are examples of CACs used by the Voice Enabled Switching Products. (Id., JA6488 at ¶ 175) With PSTN Fallback, "[i]n the event [an] impairment [delay, jitter and packet loss] is
Stillerman describes the "MAX CONN" CAC as follows:
(Id., JA6504 at ¶ 215) Stillerman describes one scenario wherein this procedure may occur outside of the "call setup" phase and in the "voice state," that is, where a caller decides to transfer the call to another extension within the network. A transfer operation may occur whereby the PSTN is selected upon the caller's use of a "switch-hook flash" or "a button configured on the phone for flash or transfer." (Id., JA6504-05 at ¶ 216) The second caller is on hold during the exchange process.
Stillerman describes several other infringing scenarios in which the decision as to whether to admit a call and/or to switch over to the PSTN occurs when the call is initially routed, as compared to in the voice phase. (Id., JA6508 at ¶¶ 222, 227) ("Resource-Based CAC with Gatekeeper"); JA6515 at ¶ 239 ("CAC using Cisco Call Manager" ("CCM")); JA6518 at ¶ 248 ("CAC with RSVP Agent"); JA6520 at ¶ 257 ("Call Setup and re-routing under various network conditions"); JA6522 at ¶ 263 ("Call Forward"); JA6523 at ¶ 269 ("Call Forward—idivert"); JA6528 at ¶ 282 ("Call Control Discover"); JA6529 at ¶¶ 286-88 ("Codec Mismatch"); and JA6531 at ¶ 293 ("Infringing Wireless Scenarios").
The primary claim construction issue presented by the parties concerns the use of the term "changing over" (or "change-over") in the patents. According to SSBG, a telephone call has three phases—a call set up, media, and tear-down phase—and change-over may occur during any of these phases. Cisco advocated that a change-over must occur only during the media (voice or midcall) phase of the call. For reasons discussed in the court's commensurate claim construction order, the court has found Cisco's construction to be the proper one.
The court need go no further than this construction to find the majority of SSBG's "infringing scenarios" inapplicable. As characterized by Stillerman, in all scenarios except for "Call Transfer," Cisco's routers redirect a call automatically to the PSTN when the data network is congested at the time of call
The "call transfer scenario" is the only of SSBG's infringing scenarios that implicate a change-over following the establishment of a connection. During a call in progress, caller one or two may initiate a call transfer (to caller three) by "a switchhook flash and dialing a number, or by depressing the appropriate soft key on a Cisco phone[.]" (D.I. 281, JA6523 at ¶ 270) Stillerman describes the "first data" of the call, including the dialed digits, destined for the end terminal as well as the "second data" of the call, which is any data sent over the PSTN once the call is transferred to the PSTN. (Id., JA6523 at ¶¶ 271-72) He describes the control signal that is sent for the purpose of routing the call over the most preferable network. (Id. at ¶ 273) According to Stillerman, "[s]witch over occurs when the next configured dial peer to be used for the call is tried after not admitting the forwarded call to the packet-switching network attempt." (Id., JA6524 at ¶ 274) (emphasis added)
Call transfer necessarily involves establishing a connection to a third end terminal. According to Cisco, one of the original callers must put the call on hold in order to initiate the transfer. Assuming that the Cisco voice-enabled router products establish the proposed call over the PSTN (rather than the WAN), the original transferor is thereafter dropped from the call. Thus, "there is no change over from packet-switching to line-switching of the voice data that was transferred during the
SSBG's response is both brief and convoluted; it simply states that "Cisco ignores the fact that Cisco phone systems may allow a phone call for delivery to one end terminal to be answered by another party, such as a secretary." (D.I. 247 at 17) SSBG provides no rebuttal to Cisco's characterization of the call transfer process. SSBG appears to assert a doctrine of equivalents argument, but cites no expert testimony or other evidence in support thereof.
On this limited record, Cisco's position is the better one. Call transfer implicates two separate calls (connections). Viewed in the context of the new call being initiated to caller three, the change-over precedes the voice phase of this connection with the transferee and, therefore, falls outside of the scope of the claims. Viewed in the context of the call between callers one and two, the change-over does occur after the initiation of the voice phase of the call. The purpose of this change-over, however, is not to improve the call quality or improve data flow between callers one and two; the purpose is to establish the best connection for the call being initiated to transferee caller three. As the court has found that a "change-over" must occur after the call setup phase, the issue presented by the call transfer scenario is whether the change-over from packet-switching to line-switching occurs during an ongoing end-terminal to end-terminal connection between callers one and two. Stillerman provides no detail regarding the effect of the user's request for call transfer, such as, at what point data flow between callers one and two is suspended or terminated. There is simply no evidence of record that the preexisting call between callers one and two does not terminate upon the request for transfer to caller three. Absent any indication that the change-over occurs during an existing voice connection (between callers one and two), as construed by the court, summary judgment of noninfringement is appropriate.
The parties agree that a control device is disclosed as the structure corresponding to the "means responsive to a control signal for changing over" function; such device is control device 71 (described by figure 4 of the patents). There are no other corresponding structures specifically disclosed in the specification. Cisco argues that the claims should be limited, therefore, to the control device 71. SSBG asserts that the patents describe "general control devices for performing the change-over," many of which were known in the art and appreciated by persons of ordinary skill in the art as being capable of the function of responding to a control signal. (D.I. 247 at 19) SSBG relies on the deposition testimony of Cisco's expert, Thomas La Porta ("La Porta"), in this regard. (D.I. 247 at 19 n. 66 & 67; D.I. 207 at 33, n. 93-94) Thus, SSBG asserts, the claims need not be limited to control device 71.
A corresponding structure for purposes of 35 U.S.C. § 112, ¶ 6 must be disclosed within the four corners of the patent or clearly within the intrinsic record. See Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1208 (Fed.Cir.2002) ("Structure disclosed in
(D.I. 207 at 25 & n. 41-44)
La Porta's testimony does not call out any other disclosures in the specification. Rather, La Porta generally testified that persons of skill in the art would know how to use a control device or equivalent device to perform the claimed function. Specifically, "[t]he structure would be a switch that could take an input signal and switch from one line to another, one communication path to another, and I think that is a well-known structure" in the art. (D.I. 282 at JA8930, p. 403)
The disclosures called out by SSBG do not expand the guidance provided in the specification with respect to the control devices illustrated in figure 4:
('902 patent, col. 8:59-col. 9:9) In view of this specific disclosure, the "means responsive to a control signal for changing over" limitation is limited to the control device 71 and its equivalents. See Minks v. Polaris Indus., Inc., 546 F.3d 1364, 1377 (Fed.Cir.2008) (limiting claim to a structure of one Figure and structural equivalents) (citations omitted).
In this regard, not all structures known in the art necessarily fall within the scope of permissible equivalents. In order to prove literal infringement, SSBG must show "that the relevant structure in the accused device perform[s] the identical function recited in the claim and [is] identical or equivalent to the corresponding structure in the specification." Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320 (Fed.Cir.2003). Equivalence is determined by whether the structures "perform the identical function, in substantially the same way, with substantially the same result." Kemco Sales, Inc.
The issue at bar, therefore, is whether SSBG has adduced proof of equivalence regarding control device 71.
"Direct infringement requires a party to perform each and every step or element of a claimed method or product." BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed.Cir.2007). "If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir.2000).
Cisco asserts that it cannot infringe the '431 patent under Stillerman's "infringing wireless scenario" because, for a customer to carry out this scenario using Cisco's products, the customer would have to: (1) purchase a Cisco voice-enabled router with a 3G card; (2) obtain the appropriate service plan with his wireless carrier, including a SIM
In his expert report, Stillerman states that, in this scenario, "it is possible for a phone, for example a Cisco 7961
In response to Cisco's motion, SSBG asserts, without further explanation, that "Cisco sells numerous types of adapters/modules for 3G GSM, CDMA and WiFi wireless capabilities," which Cisco has ignored in its motion. (D.I. 247 at 22) SSBG also asserts that, under Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed.Cir.2002), Cisco infringes by selling software that may be configured by a user to infringe, since the infringing capabilities are "already present in the underlying software." (D.I. 247 at 22-23, citing Fantasy Sports, 287 F.3d at 1118)
The court disagrees that Fantasy Sports is applicable to the present situation. In that case, the accused fantasy football software product was "able to [be] customize[d]" to include a bonus scoring system that was described in the asserted patent. Emphasizing that infringement may not be based on only a mere capability of infringing modification,
Id. at 1117-18. In contrast to Fantasy Sports, SSBG concedes that Cisco does not supply the entire invention: Cisco does not make or sell SIM cards. SSBG nevertheless argues that "SIM cards are simply something customers are intended to have and install" in order to access a 3G wireless network. (D.I. 247 at 23) SSBG cites no evidence, from its expert or otherwise, in support of this proposition.
All but one of SSBG's relevant "infringing scenarios" are premised on its construction of the term "change over," which the court has rejected. SSBG has not identified a genuine issue of material fact for trial with respect to "call transfer." With respect to those asserted claims requiring "means responsive to a control signal for changing over," the court's holding is buttressed insofar as there is no dispute that Cisco's products do not contain the "control device" structure as described in the specification. Finally, no reasonable jury could find that Cisco infringes the '431 patent for the additional reason that there is no indication that Cisco directly infringes that patent. Cisco's motion for summary judgment of noninfringement is granted;
Cisco seeks judgment that the '453 and '902 patents are invalid in view of the same references it has advanced in the reexaminations. These primary references are U.S. Patent No. 6,069,890 to White et al. ("White"), U.S. Patent No. 6,137,792 to Jonas et al. ("Jonas"), and U.S. Patent No. 5,598,411 to Matsukawa ("Matsukawa"). Each were before the PTO on reexamination and found to invalidate certain claims. Cisco reiterates those positions here, as well as advances certain new arguments not considered by those examiners.
Specifically, Cisco asserts that the combination of White and Jonas render the asserted claims of the '453 patent obvious, consistent with the PTO's conclusions. (D.I. 278 at JA3881) Cisco now also asserts that the White-Jonas combination renders the '902 patent obvious.
On reexamination, the PTO has found claims 68, 69, 71, 75, 77, 79, 82, 84, 87, 90, 92, 95, 98, and 100 (plus others not at issue) of the '902 patent anticipated by Jonas. (D.I. 284 at JA10149-71, 10228-56) Cisco seeks judgment that claims 34, 74, 76, 83, 85, 91, 101 and 104 of the '902 patent, added to this litigation after the commencement of the '902 patent reexamination, are anticipated by Jonas, as are claims 34, 35, 36 and 38 of the '453 patent.
The PTO also rejected the '902 patent claims at issue in the reexamination as anticipated by Matsukawa; Cisco seeks that same judgment here, and adds that Matsukawa also anticipates claims 34, 68, 69, 71, 74-77, 79, 82-85, 87, and 90-91 of the '902 patent, as well as claims 34, 35, 36 and 38 of the '453 patent. (Id. at JA10259-62) Finally, Cisco asserts that, if this court adopts its construction of the "mobile phone packet switching network" limitation, the combination of Jonas plus U.S. Patent No. 6,125,113 to Farris, et al. ("Farris") renders the '431 patent invalid as obvious. In short, the PTO has found that Jonas identifies the problem inherent with sending time-sensitive data communications over the internet, and discloses a solution of changing over in the middle of an end-to-end connection. This ability to change-over during the existing transfer is the only component of the patented inventions not disclosed by White. Farris is similar to White, but also discloses routing calls from cellular telephones. Finally, the PTO has determined that Matsukawa discloses changing over an existing end terminal to end terminal call from a packet-switching to a line-switching connection during (and without interruption of) the call-set up procedure.
The court notes at the outset that the BPAI and Federal Circuit have not affirmed the rejection of any of the claims on reexamination and, consequently, the PTO's findings at this stage are not binding. Moreover, the examiners' conclusions on reexamination are not relevant to the merits of the pending summary judgment motion. This court is not, as the examiners were, a finder of fact with respect to invalidity; it may only adjudge whether SSBG has advanced sufficient evidence from which a reasonable jury could find the patents valid.
(D.I. 281 at JA7640, ¶ 93) Additionally:
(Id. at JA7686-87, ¶ 306) Even if this cursory discussion were sufficient to withstand summary judgment on anticipation by Jonas, these passages do not relate to Cisco's other anticipation or obviousness arguments. Stillerman's validity report does address each asserted reference substantively. The court declines, however, to extend its limited judicial resources crafting validity positions on behalf of SSBG, which is represented by (at least six) counsel.
The court is generally reluctant to stay proceedings in view of concurrent reexamination proceedings, but does so in this case for several reasons. Granting summary judgment of invalidity on this record would be, essentially, founded on SSBG's failure of proof, not necessarily the merits of Cisco's claims. Reexamination of the '453 and '902 patents has moved to final action. As both reexaminations are nearing the conclusion of the first stage of appellate review (with the BPAI), it is very possible that the Federal Circuit will hear the case through an appeal of the BPAI decisions prior to receiving the court's issuance of a post-trial (JMOL) opinion in this case and an appeal therefrom.
Two of the pending motions in limine relate to validity, specifically, SSBG's motion to limit La Porta's testimony and Cisco's motion to exclude the opinion of SSBG's expert Christopher Spadea ("Spadea") on commercial success. (D.I. 205, 202) There is no cross-motion (by SSBG) for a judgment of validity, therefore, the court's ruling on the La Porta motion does not affect its disposition of the issues at bar. In view of the court's decision to stay trial on the '453 and '902 patents on validity, the remaining in limine motions are denied as moot.
Cisco claims that the '431 patent is unenforceable due to inequitable conduct. Specifically, Cisco asserts that Vincent DeLuca ("DeLuca"), who was acting as both the prosecuting attorney for the '431 patent application and as lead counsel for SSBG in the '453 and '902 reexaminations, committed inequitable conduct by knowingly and intentionally failing to disclose information about those reexaminations to the examiner of the copending '431 patent application. (D.I. 245 at 1) Cisco also claims that the duty of candor was violated by Prof. Schindler, first named inventor on the '431 patent. (Id. at 14) SSBG seeks summary judgment of no inequitable conduct. (D.I. 217) There is no cross motion by Cisco.
Applicants for patents and their legal representatives have a duty of candor, good faith, and honesty in their dealings with the PTO. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed.Cir. 1995); 37 C.F.R. § 1.56(a). This duty is predicated on the fact that "a patent is an exception to the general rule against monopolies and to the right of access to a free and open market." Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 816, 65 S.Ct. 993, 89 L.Ed. 1381 (1945). The duty of candor, good faith, and honesty includes the duty to submit truthful information and the duty to disclose to the PTO information known to patent applicants or their attorneys which is material to the examination of a patent application. Elk Corp. of Dallas v. GAF Bldg. Materials Corp., 168 F.3d 28, 30 (Fed.Cir.1999). A breach of this duty constitutes inequitable conduct. Molins, 48 F.3d at 1178.
If it is established that a patent applicant engaged in inequitable conduct with respect to one claim, then the entire patent application is rendered unenforceable. Kingsdown Med. Consultants v. Hollister Inc., 863 F.2d 867, 877 (Fed.Cir. 1988). Additionally, "[a] breach of the duty of candor early in the prosecution may render unenforceable all claims which eventually issue from the same or a related application." Fox Indus., Inc. v. Structural Pres. Sys., Inc., 922 F.2d 801, 803-04 (Fed.Cir.1990).
A finding of inequitable conduct is "an equitable determination" and, therefore, "is committed to the discretion of the trial court." Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1261 (Fed. Cir.2001). In order to establish unenforceability based on inequitable conduct, a defendant must establish by clear and convincing evidence that: (1) the omitted or false information was material to patentability of the invention; (2) the applicant had knowledge of the existence and materiality of the information; and (3) the applicant intended to deceive the PTO. Molins,
Rule 56 provides:
37 C.F.R. § 1.56(b) (2007).
After determining that the applicant withheld material information, the court must decide whether the applicant acted with the requisite level of intent to mislead the PTO. See Baxter Int'l, Inc. v. McGaw Inc., 149 F.3d 1321, 1327 (Fed.Cir. 1998). "Intent to deceive cannot be inferred solely from the fact that information was not disclosed; there must be a factual basis for finding a deceptive intent." Hebert v. Lisle Corp., 99 F.3d 1109, 1116 (Fed.Cir.1996). That is, "the involved conduct, viewed in light of all the evidence, including evidence indicative of good faith, must indicate sufficient culpability to require a finding of intent to deceive." Kingsdown, 863 F.2d at 876. A "smoking gun" is not required in order to establish an intent to deceive. See Merck & Co., Inc. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1422 (Fed.Cir.1989). An inference of intent, nevertheless, is warranted where a patent applicant knew or should have known that the withheld information would be material to the PTO's consideration of the patent application. Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1256 (Fed.Cir.1997).
Once materiality and intent to deceive have been established, the trial court must weigh them to determine whether the balance tips in favor of a conclusion of inequitable conduct. N.V. Akzo v. E.I. DuPont de Nemours, 810 F.2d 1148, 1153 (Fed.Cir.1987). The showing of intent can be proportionally less when balanced against high materiality. Id. In contrast, the showing of intent must be proportionally greater when balanced against low materiality. Id. Because a patent is presumed valid under 35 U.S.C. § 282, inequitable conduct requires proof by clear and convincing evidence. Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 551 (Fed.Cir.1990).
The pertinent facts are not disputed by the parties. The '431 patent application was being prosecuted by DeLuca during the same time as the '453 and '902 patent reexaminations. As noted previously, the requests for reexamination were filed in August 2007. The '431 patent application was filed in July 2006, and prosecution was ongoing until that patent issued in January 2009. Examiner Escalante was the examiner on both reexaminations; the '431 patent examiner, Examiner Qureshi, was not involved in the reexaminations.
On August 6, 2008 and October 3, 2008, respectively, Examiner Escalante issued a final rejection in the '453 patent reexamination and a right of appeal notice in the '902 patent reexamination. With the exception of dependent claims 91 and 104 of the '902 patent, all of the claims remained rejected.
On August 19, 2008, an amendment was filed in the '431 application. In that amendment, DeLuca added three new claims, claims 72-74. Claims 72 and 73 issued as claims 45 and 46 of the '431 patent without amendment. Those claims are nearly identical to claim 34 of the '453 patent and claim 36 of the '902 patent, rejected on reexamination:
'453 Patent, Claim 34—rejected '431 Patent, Claim 45 Switching apparatus for Switching apparatus for routing a telephone call routing a telephone callcomprising nonpacketized from a first end terminal todata from a first end terminal a second end terminal, selectivelylocated at a user's by line switchingpremises to a second end or packet switching, the terminallocated at another switching apparatususer's premises, selectively comprising by line switching or packet switching, the switching apparatus comprising: means for establishing a means for establishing a connection through a line-switching connection through a line-switching network to the network to the second end terminal second end terminal; means for line-switching means for line-switching transferring data received transferring data received from the first end terminal from the first end terminalas non-packetized data over the line-switching over the line-switching network to the second end network to the second end terminal; terminal means for establishing a means for establishing a connection through a packet-switching connection through a network to themobile packet-switching second end terminal network to the second end terminal means for packet-switching means for packet-switching transferring data received transferring data received from the first end terminal from the first end terminalas non-packetized data over the mobile packet-switching over the packetswitching switching to the second end network to the second end terminal; and terminal; and means responsive to a control means responsive to a control signal for transferring signal for transferring to a line-switching transfer to a line-switching transfer or a packet-switching transfer or a packet-switching transfer to the second end terminal; to the second end terminal; said means responsive said means responsive to a control signal changing-over to a control signal changing-over to a line-switching to a line-switching data transfer or a packet-switching data transfer or amobile transfer during packet-switching transfer the existing transfer with during the existing transfer the presence of said control with the presence of said signal. control signal.
'902 Patent, Claim 36—rejected '431 Patent, Claim 46 A method for transferring A method for transferring data selectively by line data selectively by line switching or by packet switching or by packet switching from a first switching from a first switch to a second switch, switch to a second switch, the first switch being part the first switch being part of or having access to a of or having access to a line-switching network and line-switching network and a packet switching network, amobile packet switching comprising: network, comprising: packetizing the data into packetizing the date into data packets in the first data packets in the first switch if the data does not switch if the data does not yet exist as data packets yet exist as data packets; transferring the data transferring the data packets packets from the first from the first switch switch through the packet-switching through the mobile packet-switching network to the network to the second switch second switch; checking whether a control checking whether a control signal exists for changing-over signal exists for changing-over from the packet-switching from the packet-switching data transfer of data transfer of the data packets through the data packets through the packet switching net-work themobile packet switching to a line-switching network to a line-switching connection to the second connection to the switch, wherein the control second switch, wherein the signal is produced by a net-work control signal is produced management system by a network management system; establishing the line-switching establishing the line-switching connection connection through the line-switching through the line-switching network to the second network to the second switch in response to said switch in response to said control signal, if the line-switching control signal, if the line-switching
connection is not connection is not yet present; and yet present; and changing-over from the changing-over from the packet-switching data packet-switching data transfer of the data packets transfer of the data packets through the packet switching through the mobile packet network to a line-switching switching network to a line-switching data transfer in data transfer in response to said control signal response to said control signal and transferring data and transferring data over the line switching over the line switching connection to the second connection to the second switch. switch.
To reiterate, these claims were added to the '431 patent application
There is no dispute among the parties that DeLuca did not specifically inform the '431 Examiner Qureshi, at any time prior to the issuance of the '431 patent, of the final rejections of either the '453 or '902 patents on reexamination, (e.g., D.I. 217, ex. 9 at 60:6-61:2) It is SSBG's position that Examiner Qureshi indicated to DeLuca that he need not supply any such information. According to DeLuca, on December 17, 2007, prior to the issuance of both final rejections in the reexaminations, DeLuca had an in-person interview with Examiner Qureshi. DeLuca testified that the "first thing [he] brought up" at that meeting was generally confirming with Examiner Qureshi that he was "aware ... that the parent applications [were] presently involved in reexamination proceedings." (Id. at 53:6-56:20) According to DeLuca, he asked Examiner Qureshi whether he wanted the applicants to duplicate any of the filings in the reexaminations in the '431 file wrapper, to which Examiner Qureshi replied "don't worry about it."
The first basis of SSBG's motion is that, in its view, Cisco has not substantiated its claim that rejections of claim 34 of the '453 patent and claim 36 of the '902 patent are material. (D.I. 293 at 8-11) This position is quite remarkable, as the Federal Circuit has explicitly stated that the rejection of substantially similar claims in co-pending applications is material:
Further,
Dayco Products, Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed.Cir. 2003). The Dayco rationale is equally applicable to prior rejections during reexamination (wherein the applicant's rights are at stake). The court also rejects SSBG's suggestion that the rejections of claim 34 of the `453 patent and claim 36 of the `902 patent were necessarily cumulative insofar as Examiner Qureshi indicated he was aware of the reexaminations. (D.I. 293 at 10-11) "It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, except where the interview was initiated by the examiner and the examiner indicated on the `Examiner Initiated Interview Summary' form (PTOL-413B) that the examiner will provide a written summary." MPEP § 713.04 (8th Ed., Rev. 7, 2008). The court need not, on SSBG's motion, infer that such an interview took place. Cisco clearly challenges this fact and, taking all reasonable inferences in Cisco's favor, it is equally plausible that DeLuca failed to document the event because no meeting actually took place. On these facts—the similarity of rejected and copending claims in related applications, DeLuca's involvement with both the reexaminations and the `431 application, DeLuca's failure to specifically inform Examiner Qureshi of the rejections on reexamination,
In view of the high level of materiality of the withheld information in this case, an intent to deceive by Schindler, a named inventor on both the rejected patents and new `431 patent application, is also inferrable on the facts of record. Schindler's testimony implies that Schindler was present in the purported interview with Examiner Qureshi. Schindler stated that he understood that it was important to disclose to the examiner the existence of the reexamination, and he had "no idea" whether Examiner Qureshi ever reviewed any reexamination materials. Schindler did not state that he disclosed anything to Examiner Qureshi in accordance with his duty. (D.I. 217, ex. 7 at 236:21-237:4) In sum, SSBG' motion for summary judgment of no inequitable conduct is denied.
Finally, the court addresses Cisco's motion for summary judgment that certain claims of the `431 patent are invalid under 35 U.S.C. § 112 as indefinite or, alternatively, for lack of a written description.
The definiteness requirement is rooted in § 112, ¶ 2, which provides that "the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." "A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." Personalized Media Comm., LLC v. Int'l Trade Com'n, 161 F.3d 696, 705 (Fed.Cir.1998).
Id. (citing Miles Lab., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed.Cir.1993)).
The statutory basis for the enablement and written description requirements, § 112 ¶ 1, provides in relevant part:
To satisfy the enablement requirement, a specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed.Cir. 1997). The written description requirement is separate and distinct from the enablement requirement. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1344-45, 1351 (Fed.Cir.2010);
"[T]he description must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed." Ariad, 598 F.3d at 1351 (citations and internal brackets omitted). "In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had
The court's conclusion with respect to whether these standards are met by the `431 patent is best framed by a brief discussion of the prosecution history. As noted previously, the `431 patent was filed (on July 10, 2006) as a continuation of the `902 patent; priority was claimed to the German patent applications filed in October 1996. Relevant to this analysis is the fact that, as a continuation application, the disclosure presented was required to be the same as that of the original application; it could not "include anything which would constitute new matter if inserted in the original application." See MPEP § 201.07. The `902 patent was itself a division of the `453 patent, which was the first United States filing in the chain.
The originally-filed claims of the application issuing as the `431 patent
On July 10, 2006, a second preliminary amendment was filed by which forty-eight (48) new claims were added to the application; DeLuca represented that "[n]o new matter has been added." (Id. at JA3463) The new claims were directed to several switching apparatus. Certain dependant claims (e.g., claim 29) were drawn to "mobile communication device[s]" comprising the claimed switching apparatus. Other dependant claims (e.g., claims 37, 38) limited the packet-switching network or line-switching network to a "mobile network." New independent claims relating to methods for transferring data selectively by line-switching or packet-switching were also added wherein the packet-switching network or line-switching networks were "mobile" networks, "interconnected to the Internet," or associated with certain mobile devices (claims 42, 56, 64). Still further dependant claims described a "GSM or CDMA" network (e.g., claim 62).
On February 14, 2008, a first office action was issued by Examiner Qureshi. All (71) claims in the `549 application were cited as "subject to restriction and/or election"—importantly, none were rejected on the merits. Examiner Qureshi stated that claims 1-23 and 24-71 were drawn to distinct inventions: the former to a "method and apparatus for [the] determination of communication parameters;" and the latter to "combined circuit-switching and packet-switching." (Id. at JA3511) On August 19, 2008, DeLuca filed an amendment cancelling claims 1-23,
(Id. at JA3527)
An interview summary by Examiner Qureshi states that agreement to the patentability of the pending claims was reached by a telephonic conference with DeLuca on September 30, 2008. Specifically: "Rejection based on [obvious-type double patenting] was discussed with the applicant's att[orne]y. The applicant agreed to submit a Terminal Disclaimer. Amendments to claim 74 were also discussed to use language better suitable for claimed subject matter. Applicant agreed to amend the claim by Examiner's Amendment." (Id. at JA3545) The examiner's amendment deleted the terms "capable of that originally followed the claim terms of "packet unit," "line unit" and "controller" of claim 74. (Id. at JA3562) Examiner Qureshi's "Reasons for Allowance" of the `549 application read as follows;
(Id. at JA3563) (emphasis in original)
As detailed above, DeLuca amended the `549 application on several occasions to specify that the invention related to mobile networks and mobile devices, yet the claims of the `549 application were never substantively rejected by Examiner Qureshi under 35 U.S.C. §§ 102, 103 or 112. The `431 patent, having duly issued by the PTO, enjoys a presumption of validity. It is the court's opinion, however, that the `431 patent is invalid as a matter of law as indefinite and, alternatively, that clear and convincing evidence supports the conclusion that the written description requirement is not satisfied by the `431 patent disclosure.
Each of the independent claims of the `431 patent recite either a "mobile phone packet switching network" or a "mobile packet switching network." Neither term is specifically defined in the specification, which states only that
(`431 patent, col. 6:46-48) (emphasis added)
According to the foregoing, "the internet" is an example of a "mobile packet switching network."
The question at bar with respect to indefiniteness is whether the patent apprises a person of ordinary skill in the art of the metes and bounds of the invention vis a vis the mobile network claim limitations. On careful consideration, the court must answer this question in the negative. As cited above, the specification specifically provides that "any" known packet-switching network could be used in the invention, ('431 patent, col. 6:46-48) "[M]obile phone networks" are an example. (Id.) There is no indication, however, of how many (or what nature of) existing packet-switching networks fall within the scope of the claims. SSBG argues that both parties' experts confirm that there were well-known mobile packet-switched networks in 1996, for example, cellular wireless networks and WiFi.
SSBG asserts that a "mobile phone packet-switching network" should be defined as a "packet-switching network capable of being accessed wirelessly by a mobile communication device, such as the packet-switching network of a wireless telephone system or WiFi system." (D.I. 277 at 29) This construction is circular and non-helpful. Certainly, a mobile packet-switching network must be a packet-switching network capable of mobile access. The proffered "such as . . ." clause provides no guidance as to the scope of the claims.
The internet is described as "[a] packet-switching network," not a
Even if the `431 patent were not invalid as indefinite, the court would find it invalid for failing to meet the written description requirement. The specification does not "convey with reasonable clarity" that the inventors were in possession of the full scope of the claimed invention (encompassing
It is Cisco's position that the claims of the `431 patent that require a means for connecting to or transferring packets over a "mobile phone packet switching network" (claim 45) or a "device that" provides access by the claimed switching apparatus to a mobile phone packet switching network (claims 1, 6, 11 and 16) also fail for indefiniteness, as there is no structure described in the specification of the `431 patent for performing these functions, in violation of § 112, ¶ 6. Cisco also asserts that claim 47 is invalid for indefiniteness because it is internally inconsistent. Insofar as the court agrees, providing a tertiary basis for its finding of invalidity with respect to these claims, the court briefly illuminates its reasoning here.
With respect to claim 45, SSBG proffers a claim construction whereby the corresponding structures "include[] an IP switch (e.g. IP switch 72), packet switch [], router [], [and] IP switching device[.]" (D.I. 194 at 36, no. 54) In its papers, SSBG all but abandons its position, stating that sufficient structure is disclosed because the `431 patent "discloses the means for the device and says what it does, that is sufficient to persons of ordinary skill in the art to know what was disclosed. No more was needed in this case[, as] "a means for packet-switching" was widely understood by persons of ordinary skill in the art." (D.I. 252 at 18) No citation to expert testimony (or other evidence) is provided.
With respect to claims 1, 6, 11 and 16, the claim language at issue, "a device that provides access by said switching apparatus. . . through which data packets can be sent for delivery to a destination end terminal," is presumptively not subject to § 112, ¶ 6 because it lacks the term "means." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed.Cir.2002). The presumption against means-plus-function treatment may be overcome, however, "if it is shown that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function." Massachusetts Institute of Technology and Electronics For Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1353 (Fed.
Here, the relevant claims of the `431 patent are directed to switching apparatus comprising a "device" that performs a specific function, or provides access to a mobile phone packet switching network. The term "device" is generic and typically does not connote definite structure. Id. There is no indication that "device" denotes any generally understood meaning in this art, such as would indicate that § 112, ¶ 6 would not apply. Id. The court agrees with Cisco that this was "pure functional claiming" and that, insofar as there is no indication of what constitutes the structure of the device performing the access function, claims 1, 6, 11 and 16 are invalid as indefinite.
Finally, Cisco asserts that claim 47 of the `431 patent fails for indefiniteness because the claim language is nonsensical and internally inconsistent.
In response, SSBG points only to Stillerman's declaration, which states that "I have reviewed the claim language of claim 47 of the `431 patent and have determined that a person of ordinary skill in the art would find the language consistent and sufficiently clear." (D.I. 252, ex. 1 at ¶ 32) Even if the court were to disagree with Cisco's reading of the plain language of claim 47 (which it does not), such a bare assertion by Stillerman strains credulity.
It is the court's overall impression that this is a case where new matter was improperly added to claims in a continuation application (in an effort to retain an early priority date), when the application should have been made as a continuation-in-part. See MPEP § 608.04; 37 C.F.R. § 1.121(f). Adding new claims in continuing applications where the specification remains unchanged is, essentially, a gamble with respect to the written description requirement of § 112, ¶ 1. See, e.g., Agilent Techs. Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed.Cir.2009); ICU Medical, 558 F.3d at 1377-78. This case presents certain noteworthy, unusual circumstances in this regard: (1) the `431 patent concerns internet telephony, a technology area that undoubtedly has experienced rapid development since 1996; (2) a 1996 specification is asserted to support claims
For the aforementioned reasons: (1) Teles's motion to amend its pleadings is denied in part and denied in part as moot; (2) Cisco's motion to dismiss Teles for lack of subject matter jurisdiction is denied as moot; (3) the court substitutes SSBG as a party pursuant to Rule 25(c); (4) SSBG's motion for partial summary judgment of infringement is denied; (5) Cisco's motion for summary judgment of noninfringement is granted; (6) the court shall stay trial on the validity of the `453 and `902 patents pending final judgment by the Federal Circuit on the pending reexaminations; (7) Cisco's motion for summary judgment of invalidity of the `453 and `902 patents is denied without prejudice to renew should the stay be lifted; (8) Cisco's motion for summary judgment of invalidity of the `431 patent is granted; (9) SSBG's motion for summary judgment of no inequitable conduct is denied; and (10) both parties' motions to exclude expert testimony are denied as moot. An appropriate order shall issue.
At Wilmington this 26th day of July, 2010, consistent with the memorandum opinion issued this same date;
IT IS ORDERED that:
1. Sigram Schindler Beteiligungsgesellschaft mbH (hereinafter, "SSBG") is substituted for Teles AG Informationtechnologien;
2. Teles's motion to amend its pleadings (Civ. No. 09-72, D.I. 86; Civ. No. 09-232, D.I. 170) is denied in part and denied in part as moot;
3. Cisco's motion to dismiss for lack of subject matter jurisdiction (Civ. No. 09-72, D.I. 198; Civ. No. 09-232, D.I. 281) is denied as moot;
3. Cisco's motion for summary judgment of noninfringement (Civ. No. 09-72, D.I 218; Civ. No. 09-232, D.I. 301) is granted;
4. SSBG's motion for partial summary judgment of infringement (Civ. No. 09-72, D.I. 222; Civ. No. 09-232, D.I. 305) is denied;
5. The court stays the issues of the validity of the '453 and '902 patents pending final judgment by the Federal Circuit on the pending reexaminations;
6. Cisco's motion for summary judgment of invalidity (Civ. No. 09-72, D.I. 227; Civ. No. 09-232, D.I. 310) is denied without prejudice to renew should the stay be lifted;
7. Cisco's motion to exclude the opinion of SSBG's expert Christopher Spadea on
8. SSBG's motion to limit the testimony of Cisco's expert Thomas La Porta (Civ. No. 09-72, D.I. 205; Civ. No. 09-232, D.I. 288) is denied as moot;
9. SSBG's motion to limit the testimony of Cisco's expert Kevin Negus (Civ. No. 09-72, D.I. 206; Civ. No. 09-232, D.I. 289) is denied as moot;
10. SSBG's motion for partial summary judgment of no inequitable conduct (Civ. No. 09-72, D.I. 216; Civ. No. 09-232, D.I. 299) is denied;
11. Cisco's motion for partial summary judgment for invalidity of the '431 patent pursuant to 35 U.S.C. § 112 and for confirmation of the priority date for the '431 patent (Civ. No. 09-72, D.I. 223; Civ. No. 09-232, D.I. 306) is granted in part and denied in part as moot;
12. SSBG's motion for leave to supplement the record (Civ. No. 09-72, D.I. 377; Civ. No. 09-232, D.I. 460) is denied.
On July 22, 2010, less than a week prior to the pretrial conference in this matter, SSBG filed a motion for leave to supplement the summary judgment and claim construction record based on what it claims to be new admissions from Cisco witnesses deposed following their identification as trial witnesses. (D.I. 377) The court denies the motion.
The court notes that the appendices to SSBG's expert report, supposedly organizing its infringement theories in charts and to a greater level of detail, were not included in the Joint Appendix nor were the pages contained on the CDs supplied by SSBG. The court, therefore, has relied on the text of that report.
37 C.F.R. § 1.56(b) (2007).
SSBG also cites testimony of its former in-house attorney, Joern Gender ("Gender"), to this effect, as well as a declaration. (D.I. 217, ex. 3 at ¶ 10) In both instances, SSBG has not submitted the pages prior to its cited excerpts. It is not abundantly clear to the court, therefore, that Gender was in attendance at this supposed meeting, although it seems to be SSBG's position insofar as Gender had notes regarding the interview. Gender's declaration states that either Schindler or DeLuca suggested that SSBG would provide to Examiner Qureshi the first office actions in the reexaminations, but that Examiner Qureshi later indicated that he did not need to discuss the reexaminations. (Id., ex. 3 at ¶¶ 10-11)
Cisco has not concentrated on non-enablement, and SSBG has presented an enablement argument that is premised on its (rejected) claim construction that the change-over occur during the call set-up procedure. The court is in no position to carefully evaluate the In re Wands factors and make a determination on enablement on this limited record.
