Network Protection Sciences, LLC v. Juniper Networks, Inc.
3:12-cv-01106
N.D. Cal.Sep 26, 2013Background
- Northern District of California patent infringement action between Network Protection Sciences (NPS) and Fortinet, concerning U.S. Patent No. 5,623,601.
- NPS accuses Fortinet’s FortiOS software (notably version 4.0 MR2) and related hardware/virtual machines of infringing five claims, especially claims 19, 29, and 57.
- The ’601 patent claims relate to a secure gateway for network communications; reexamination in 2012 confirmed all original claims and added new ones.
- Damages period runs from 2004 to 2012; Fortinet’s accused products include FortiOS software installed on FortiGate devices or virtual appliances.
- Fortinet moved for summary judgment and to strike NPS’s infringement (Keromytis) and damages (Jarosz) experts; three motions were fully briefed and argued.
- The court denied summary judgment and denied the Keromytis strike, but granted the Jarosz strike and related evidentiary motions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Infringement of claim 29 involves means-plus-function structure | NPS identified structure in the patent spec and corresponding accused code via a claim chart. | NPS failed to identify specific algorithms/structure in accused products. | Denied summary judgment; issue remains for trial. |
| Abandonment of claims 10 and 43 | NPS did not pursue those claims after briefing. | Abandonment should foreclose those claims. | Claims 10 and 43 abandoned; res judicata consequence noted. |
| Infringement of claims 19 and 57 (modified OS kernel) | Evidence shows Fortinet devices practice the claimed modification. | Dispute about construction of 'modified' and whether accused products meet it. | Summary judgment on non-infringement denied; trial to resolve construction. |
| NPS infringement theories for all accused products | Representative infringement contentions and typicality show all products infringe. | Need more detailed, product-by-product evidence and compliance with local rules. | Denied; representative theory and typicality findings survive to trial. |
| Fortinet's motion to strike Keromytis's report and testimony | Keromytis’s methodology is acceptable; reliance on assistants acceptable. | Methodology flaws and lack of specific code references. | Denied; Keromytis's testimony and report remain admissible. |
| Fortinet's motion to strike Jarosz's damages report (entire market value rule) | Used smallest salable unit and apportionment per LaserDynamics and Lucent. | Applied entire market value rule improperly to 70+ products. | Granted; damages report and testimony excluded in full. |
Key Cases Cited
- Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998) (structure-for-function test for means-plus-function claims)
- LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012) (restricts entire market value rule; need apportionment)
- Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed. Cir. 1995) (principles for apportioning damages between patented and unpatented features)
- Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (illustrates limits of using entire product value under the LMV rule)
- Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) (discusses damages disclosure and apportionment context under LMV)
- L & W, Inc. v. Shertech, Inc., 471 F.3d 1311 (Fed. Cir. 2006) (infringement testimony must reasonably characterize similarity across products)