981 F.3d 1015
Fed. Cir.2020Background
- The ’930 patent (issued 2001) claims a method for remotely powering access equipment over Ethernet by delivering a “low level current,” sensing a voltage response, and then controlling a secondary power source to increase current if a preselected voltage condition is detected; claim 6 is representative.
- The patent underwent two PTO reexaminations; the ’401 reexam added dependent claims 15 and 16 (stating the secondary power source can be the same source or same physical device as the main power source). Network-1 later disclaimed claims 15–16.
- Avaya petitioned for IPR challenging claims 6 and 9; the PTAB instituted on grounds based on Matsuno and De Nicolo. HP later joined the Avaya IPR as a party by joinder under §315(c).
- At a 2017 jury trial in E.D. Texas, the jury returned a general verdict finding no infringement and that the asserted claims were invalid. The district court denied Network-1’s new-trial motion on infringement but granted JMOL for Network-1 on validity, holding HP estopped under 35 U.S.C. §315(e)(2) from raising certain obviousness defenses because of its joinder.
- On appeal, the Federal Circuit: affirmed the district court’s construction of “low level current”; reversed the district court’s construction of “main power source” (excluding AC); vacated the JMOL holding on statutory estoppel and remanded; and affirmed that claim 6 was not improperly broadened by the reexamination.
Issues
| Issue | Plaintiff's Argument (Network-1) | Defendant's Argument (HP) | Held |
|---|---|---|---|
| Proper construction of “low level current” | Should be limited only by an upper bound (i.e., current below sustaining start-up) | District court’s construction (lower and upper bound) is acceptable; HP used it at trial | Affirmed: "low level current" includes a lower bound (sufficient to begin start-up but not sustain it) |
| Proper construction of “main power source” | Ordinary meaning includes AC or DC; the specification and preferred embodiments disclose AC inputs | District court limited term to DC only because AC directly to device may be inoperable | Reversed: “main power source” includes both AC and DC; district court erred by excluding AC and adding conversion limitation |
| Statutory estoppel under 35 U.S.C. §315(e)(2) from joinder to Avaya IPR | HP should be estopped from raising obviousness grounds that it reasonably could have raised in the IPR | HP was a joined party and could not reasonably have raised new grounds beyond those instituted; thus it is not estopped from other grounds | Vacated JMOL: HP not estopped as a joinder; it could not have raised new grounds that were not instituted, so §315(e)(2) does not bar those challenges |
| Improper claim broadening during reexamination (addition of claims 15–16) | New dependent claims practically expanded claim 6 and so broadened the patent | Claim 6 itself was not amended; dependent claims cannot broaden the unamended independent claim | Affirmed district court: claim 6 was not improperly broadened; dependent claims cannot broaden the independent claim and were later disclaimed |
Key Cases Cited
- Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (standard of review for claim construction; de novo review of intrinsic-only constructions)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims are given their ordinary meaning to a person of skill; specification is primary guide)
- Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371 (Fed. Cir. 2004) (erroneous claim construction that removes a reasonable basis for a verdict requires reversal)
- Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040 (Fed. Cir. 2016) (harmless-error test for claim construction errors affecting jury verdict)
- Creo Products, Inc. v. Presstek, Inc., 305 F.3d 1337 (Fed. Cir. 2002) (two-step inquiry for improper broadening in reexamination)
- MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007) (claims should not be construed to exclude a preferred embodiment)
- GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014) (ordinary meaning presumption applies absent express intent to impart a novel meaning)
- Enzo Biochem Inc. v. Applera Corp., 780 F.3d 1149 (Fed. Cir. 2015) (dependent claims cannot broaden the independent claim from which they depend)
- ArcelorMittal France v. AK Steel Corp., 786 F.3d 885 (Fed. Cir. 2015) (reissue/reexamination broadening principles; context where patentee conceded broadened scope)