Aten International Co., Ltd. v. Uniclass Technology Co., Ltd., 932 F.3d 1364

Background

ATEN sued Uniclass and several customers for alleged infringement of claims of U.S. Patent No. 8,589,141 (’141) and U.S. Patent No. 7,640,289 (’289) related to KVM-switch technology.
The jury found the asserted claims of the ’141 patent invalid as anticipated and found no infringement of the asserted claims of the ’141 and ’289 patents.
ATEN moved for JMOL challenging the jury’s anticipation finding and arguing the evidence compelled infringement findings; the district court denied JMOL.
On appeal, the Federal Circuit reviewed denial of JMOL de novo (Ninth Circuit law governs procedure) and considered whether the anticipation finding was supported by substantial evidence and whether ATEN waived claim-construction challenges at trial.
The panel concluded Uniclass failed to prove by clear and convincing evidence that (1) the CS-1762 product’s firmware predated the critical date and (2) GB ’540 disclosed the ‘‘emulating…to the first host’’ limitation; thus anticipation was unsupported.
The panel affirmed the denial of JMOL on infringement because ATEN waived objections to the defendant expert’s claim-construction testimony at trial, which meant claim construction was not properly preserved for JMOL.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Anticipation of ’141 claims by CS-1762	CS-1762 (and its firmware) was prior art (firmware released in 2006) and anticipates the claims	Firmware date not shown to predate critical date (no month/day proof); insufficient evidence	Reverse: jury’s anticipation verdict unsupported as to CS-1762 (no clear & convincing proof firmware predated critical date)
Anticipation of ’141 claims by GB ’540	GB ’540 discloses required claim elements including emulation to the first host	GB ’540 does not disclose ‘‘emulating the input device to the first host’’ as required by claim 1; no testimony mapping that limitation	Reverse: jury’s anticipation verdict unsupported as to GB ’540 (no substantial evidence of that limitation)
Infringement of ’141 and ’289 patents	Evidence compels infringement; jury confused by defendant expert’s testimony on claim scope	Defendant’s expert offered claim-construction-based testimony; plaintiff failed to object at trial, waiving challenge	Affirm: JMOL denied as to infringement because ATEN waived challenge to expert’s claim-construction testimony; claim scope disputes should have been raised to the court
Preservation of claim-construction challenges	ATEN’s post-trial Daubert and other motions preserved claim-construction objections	ATEN did not timely object during trial or seek court resolution of disputes; thus waived	Affirm: waiver applies; experts should not present claim construction to the jury, but failure to object precludes reversal

Key Cases Cited

TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356 (Fed. Cir. 2017) (regional-circuit law governs review of JMOL denials)
Harper v. City of Los Angeles, 533 F.3d 1010 (9th Cir. 2008) (standard for JMOL under Ninth Circuit)
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996) (clear-and-convincing proof of prior art date)
Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir. 2015) (anticipation requires every claim element in a single reference)
Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304 (Fed. Cir. 2002) (expert testimony on anticipation must explain how each claim element is disclosed)
CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168 (Fed. Cir. 2005) (claim construction is for the court; expert testimony on construction is improper but harmless absent timely objection)
O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008) (district court’s duty to resolve fundamental claim-scope disputes)
In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) (public accessibility is a factual question relevant to prior art)
Cordis Corp. v. Bos. Sci. Corp., 561 F.3d 1319 (Fed. Cir. 2009) (anticipation and infringement are factual questions reviewed for substantial evidence)