348 F. Supp. 3d 99
D.D.C.2018Background
- Dispute concerns whether Thomas Schulter should be (re)listed as a joint inventor of U.S. Patent '430; Egenera previously petitioned the PTO (Sept. 2017) to remove Schulter and the PTO granted that modification (Jan. 2018).
- Cisco asserts Schulter conceived a "virtual LAN proxy" that maps/ translates internal addresses and modifies messages before sending them to external communication and storage networks — a function reflected nearly verbatim in Schulter's October–November 2000 "Interframe Network Architecture" document.
- Egenera contends Schulter did not conceive the claimed VLAN proxy; it points to earlier Egenera priority documents (June–Oct. 2000 Interframe materials) that disclose controller/interframe nodes forwarding packets to external networks and simulated MAC addresses, arguing these documents corroborate conception by the named inventors.
- The claim element at issue is a means-plus-function limitation: "logic to modify said received messages to transmit said modified messages to the external communication network and to the external storage network," which the court construed to correspond to structures including virtual LAN server 335, virtual LAN proxy 430, and physical LAN driver 345 and equivalents.
- Cisco relies on Schulter’s contemporaneous Interframe document as corroboration of conception and of disclosed structure; Egenera argues its priority documents supply the necessary conception and reduction-to-practice evidence.
- Procedurally, the court denied the parties’ cross-motions on inventorship (reserving final judgment), found a genuine dispute of material fact regarding conception and structure, set a bench trial date for the inventorship dispute, and denied without prejudice remaining dispositive motions pending that trial.
Issues
| Issue | Plaintiff's Argument (Cisco) | Defendant's Argument (Egenera) | Held |
|---|---|---|---|
| Whether Schulter may now be relisted as inventor under 35 U.S.C. § 256 | Schulter conceived the VLAN proxy; his contemporaneous Interframe document corroborates conception and disclosed structure | Egenera argues prior representations to the PTO removed Schulter; also contends its earlier priority documents show conception by named inventors | Court: Egenera is judicially estopped from relisting Schulter because it successfully persuaded the PTO he was not an inventor; thus Egenera may not now seek to restore Schulter via § 256 |
| Whether Schulter is a joint inventor (conception and corroboration) | Schulter’s Interframe doc shows conception of the VLAN proxy and the structural components performing the claimed functions | Egenera contends its priority documents disclose controller architecture and simulated MACs and thus corroborate conception by the named inventors; argues Schulter’s authorship alone is not dispositive | Court: Genuine dispute of material fact exists as to conception and whether priority documents disclose the message-modification function and structures; reserved judgment and set bench trial |
| Whether the priority documents disclose structures corresponding to the means-plus-function claim | Cisco: Schulter’s doc supplies the structural disclosure (virtual LAN proxy, server, physical driver) | Egenera: Priority documents describe controllers forwarding packets but do not explicitly disclose subcomponents that perform modification; argues functions are implied or disclosed elsewhere | Court: Priority documents do not clearly disclose the structures; unresolved factual and credibility issues require trial |
| Whether Egenera’s PTO petition removing Schulter was an "error" under § 256 permitting later correction | Cisco: Egenera's earlier petition and affidavits were deliberate and accepted by the PTO, not an "error"; judicial estoppel bars changing position | Egenera: Suggested it could relist Schulter if circumstances required (implied) | Held: The petition was a considered act; judicial estoppel bars rescission of that prior position and § 256 relief is unavailable here because the earlier position was accepted by the PTO |
Key Cases Cited
- Coleman v. Dines, 754 F.2d 353 (Fed. Cir.) (conception and corroboration standards; possession of every claim feature required)
- New Hampshire v. Maine, 532 U.S. 742 (2001) (doctrine of judicial estoppel and factors for application)
- Yeda Research & Dev. Co. v. Imclone Sys., 443 F. Supp. 2d 570 (S.D.N.Y.) (party cannot contradict representations made to the PTO to obtain a patent)
- Vapor Point LLC v. Moorhead, 832 F.3d 1343 (Fed. Cir.) (inventorship is a question of law)
- Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223 (Fed. Cir.) (conception as the formation of a definite and permanent idea; need for corroboration)
- Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir.) (standards for joint inventorship; mere assistance or state-of-the-art explanations insufficient)
- Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir.) (means-plus-function scope limited to disclosed structure and equivalents)
- Applied Med. Res. Corp. v. U.S. Surgical Corp., 967 F. Supp. 867 (E.D. Va.) (interpretation of "error" under § 256 as generally meaning unintentional deviation)
- In re Katz, 687 F.2d 450 (C.C.P.A.) (authorship alone does not create a presumption of inventorship)