K.Mizra LLC v. Hewlett Packard Enterprise Company
2:21-cv-00305
| E.D. Tex. | Nov 21, 2023Background:
- K. Mizra LLC sued Hewlett Packard Enterprise Company and Aruba Networks, LLC over U.S. Pat. Nos. 8,234,705 and 9,516,048 relating to network contagion isolation and quarantining hosts that lack a required "attestation of cleanliness."
- The patents describe detecting insecure conditions by contacting a trusted computing base (TCB) associated with a trusted platform module (TPM), receiving a response, and determining whether the response includes a valid digitally signed attestation of cleanliness; hosts without such attestation are quarantined and permitted limited remediation access.
- Parties agreed on constructions for "trusted platform module" and "trusted computing base."
- The primary dispute presented was the construction of the term "attestation of cleanliness": whether it needs a formal construction and whether it must be received from the trusted computing base.
- The Court concluded no further construction was necessary (plain meaning), but expressly found the claims require that the attestation be received from the trusted computing base; the Court declined to fold that requirement into the term’s standalone construction to avoid redundancy.
- The Court limited parties from referencing claim-construction positions before the jury and restricted jury-facing references to only the definitions the Court adopted.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether "attestation of cleanliness" requires formal construction | K.Mizra: plain and ordinary meaning; no construction needed | HPE: should be limited to an attestation received from the trusted computing base (and previously proposed a narrower formulation) | Court: No additional construction; term given plain meaning, but court notes claims show attestation is received from the trusted computing base |
| Whether the attestation must originate from the trusted computing base | K.Mizra: claims do not dictate origin; could be direct, indirect, or from elsewhere | HPE: K.Mizra's statements amount to an admission that the attestation is from the trusted computing base; include that in construction | Court: Claim language (contacting TCB then receiving a response) implies attestation is received from the TCB; court will not rewrite the term to add that limitation but expressly finds it required by the claims |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc) (claim construction is a question of law for the court and claims define patent scope)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (specification is primary guide to claim meaning and ordinary meaning is that of a POSITA)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (courts may consult extrinsic evidence and make subsidiary factual findings when needed)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (intrinsic record controls claim construction; attorney arguments cannot override clear claim language)
- Renishaw PLC v. Marposs, 158 F.3d 1243 (Fed. Cir. 1998) (interpretation must align with what inventors actually invented and intended)
- Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795 (Fed. Cir. 1999) (district court need only construe disputed terms to the extent necessary)
- O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351 (Fed. Cir. 2008) (limits on claim construction when court fails to resolve disputes)