*1 right partly partly wrong partly was — evi- of substantial finding a lack
wrong in fur- remanding for
dence; right party then be- question explanation.
ther question ease—a how to resolve
comes has not been which complexity
of some I and as to which parties
briefed respectfully I dissent opinion. no
express it insofar as majority’s decision
from International the Court
holds I not rest decision DSMC does
Trade’s grounds. evidence
on substantial TECHNOLOGIES,
TELCORDIA
INC., Plaintiff-Appellant,
v. INC., SYSTEMS, Defendant-
CISCO Appellant.
Cross 2009-1175, 2009-1184.
Nos. Appeals, States Court
United
Federal Circuit.
July 6, 2010. En Banc Denied Oct.
Rehearing *2 n Dunner,
Donald R. Finnegan, Henderson, Farabow, Dunner, Garrett & L.L.P., DC, of Washington, argued for plaintiff-appellant. With him on the brief were Don Burley, O. Karl, Darrel C. John M. Williamson. Reines,
Edward Weil, R. Gotshal & LLP, Manges Shores, CA, Redwood argued» for appellant. defendant-cross With him on the brief was Sonal N. Mehta. holding *, Judge, appeals district court’s RADER Chief Before PROST, pat- the '306 and '763 Judges. asserted claims of Circuit LOURIE are not invalid. also
ents Cisco contests *3 an accounting the district court’s award of by the court filed Chief Opinion for interest, and its pre-judgment and order dissenting in Judge Opinion RADER. negotiate the to the requiring parties roy- Judge PROST. part filed Circuit alty. RADER, Judge. Chief court erroneously Because the district (“Telcor- Inc. Technologies, Telcordia it construed the term on which based dia”) against Sys- Cisco initiated this suit of motion on its denial Cisco’sJMOL inval- (“Cisco”)
tems, alleging infringement Inc. the this court idity patent, of '306 vacates (“'306 4,893,306 pat- Nos. of U.S. Patent decision for that and remands determina- (“'763 ent”); 4,835,763 patent”); and RE the court validity tion of issue. This also (“'633 36,633 The patent”). United States provide opportu- to an parties remands the for the District Delaware District Court nity negotiate royalty. to the terms of the summary judgment non-in- granted court respects, In all other affirms. patent. the '306 Telcordia fringement of Inc., Techs., Sys., Inc. v. Cisco I. (D.Del.2007). 598, At F.Supp.2d 603-07 trial, willfully that Cisco jury the found by assignment Telcordia the owns '306 patents infringed '763 and '633 and the pat- the and the '633 patent, patent, '763 all three validity of asserted upheld the patents The to transmission ent. relate jury awarded million patents. $6.5 The in telecommunications networks. data The trial, the Following district damages. patent Apparatus '306 and for —“Method judgment motion for court denied Cisco’s Multiplexing and Packet Traffic”— Circuit (“JMOL”) that the '306 as a matter of law 9, 1990, on based on January issued a anticipated and the '763 patent was 10, The application. November '763 invalid as indefinite. Telcordia patent was patent Ring Network” —is- —“Survivable Techs., Inc., Sys., Inc. v. Cisco May 30, 1989, on a on based Febru- sued (D.Del. 727, 738-40, 743-44 F.Supp.2d 4, patent— '633 ary application. The 2009). pre court awarded The district Stamp Time “Synchronous Residual for judgment on the million dam $6.5 interest Timing Recovery in a Broadband Net- Further, ages award. Id. at 748-50. 2000, as work”—issued on March a accounting district court awarded 5,260,978. reissue of U.S. Patent No. January 2007 to the interim sales from Id. at In judgment. date of the 748-50. A.
addition, district court ordered the royalty terms of a parties negotiate to a data The '306 describes trans- to apply accounting to the would Dynamic technique called Time mission sales. Id. post-judgment (“DTDM”). DTDM Multiplexing Division the circuit compatible with both trans- challenges appeal, On Telcordia dis- packet transmis- mission format and the trict claim construction with re- 1980’s, public format. In the late patent. Cisco cross- sion spect to the '306 * Judge position Chief on June R. Rader assumed Randall
telephone began work. shifting patented network from the to invention aimed provide migration strategy an alternate packet circuit format to the transmission between the different two transmission “commonly-held transmission format. The formats. view packet as to how to introduce technol- ogy network public deploy into the [was] system A implementing DTDM allocates packet network.” overlay “frames,” segments, single discrete or of a migration col.3 strategy 11.3-18. This re- (e.g., transmission line several sources quired building packet data). transmission voice, video, net- A frame is top work on of a circuit transmission net- basic unit of transmission: *4 Id. at fig.l. Each frame has two fixed- frames source, to each information length fields: a transmission overhead system DTDM dynamically allocates the (“T”) payload. and a The transmission frames to each source based on the has, example, timing overhead for frame priority availability. source’s and data level information empty/full and the status of Figure 2 multiplexer illustrates how a the frame. payload The field has a header (3) called a “DTDM Assembler” merges (“H”) storing field for the sender’s and traffic from addresses, three different information recipient’s and an information 9) (5, 7, field for sources into a storing single the actual data for trans- DTDM bit (12). mission. Rather than pre-assign the stream fig.2. Id. at system generates The a train fields. Id. at col.4 l.65-col.5 l.2. This train (10) of DTDM frames with occupied trans has “a bit rate which defines a basic back mission empty overhead fields and payload bone transmission rate” for system. simultaneously via said bit sources The information sources ll.2-4. Id. at col.5 stream. (7), (5), video transmit, example, voice added). (9), or “trib their data lines (emphases over Id. at col. 17 ll.44-61
and data incoming segments data generating utaries.” A method for a bit transporting data capable format stream circuit transmission may be from both circuit transmis- originating Paeke format. packet transmission or the packet comprising sources sion 15) (11, 13, incoming data put tizers comprising a generating bit stream by adding structure packet into a segment frames, sequence of each of said frames (“H”) beginning at the header packet including a transmission overhead field DTDM assem segment. The each data timing information and containing frame empty packets into inserts bler empty payload field, If the DTDM frames. fields of payload plurality data from a packetizing simultaneously re the DTDM assembler having sources different bit rates multiple information packets from ceives which have access to said bit stream sources, selects the the DTDM assembler including circuit transmission sources or priority level. The highest with the packet *5 pro- premises equipment customer (12) stream contains resulting DTDM bit and packets, duce data sources. multiple information packets from packets from said sources inserting said empty payload into the fields of said infringes that Cisco alleges Telcordia any packet frames such that a from of patent. 4 of the '306 claims and any inserted into avail- said sources is method claims. Claim 1 and 3 are Claims any of said empty payload able of field claim. Each is stated apparatus an transmitting frames for data from each underlined): (important phrases below at its own desired bit of said sources simultaneously trans- 1. A method for via stream and for trans- rate said bit having from sources differ- mitting data mitting plurality data from said of net- rates in a telecommunication ent bit simultaneously using said bit sources of: comprising steps work stream. added). (emphases Id. at col. 18 ll.1-20 a comprising a bit stream generating assembling dy- a apparatus 4. An for frames, frames of each of said sequence multiplexing bit namic time division overhead field
including a transmission comprising, stream timing information and containing frame a train generating means for generating payload field, and empty frames wherein each frame includes of in empty payload fields said filling containing transmission overhead field packetized format frames with data empty pay- and an timing information which have plurality of sources from field, load including stream access to the bit circuit data processing processing means for sources, such that data packet or packet into plurality from a of sources any said packetized format, from of format any written into available
sources is receiving said train inserting means for any of of said empty payload said inserting each field of of frames transmitting data from each frames for one packets comprised data from of at its own desired bit of said sources any empty plurality sources into said trans- avail- any via said bit stream and for of said frames payload rate field form said inserting to said means to plurality of able data from said mitting bit stream so that data from each of said stand a cut line or Figure failed node. can sources be at transmitted its own illustrates the invention: desired bit rate via said bit stream and
so that plurality data from said
sources can be transmitted simulta-
neously via said bit stream. added). at (emphases
Id. col. 18 ll.21-37
B. claims a survivable or
self-healing ring network that can with- *6 fig.2. on the specific channels that were lost due to the break. When these error-contain- The invention consists of two rings car- ing node, channels reach their destination rying multiplexed identical node-to-node the selector in the node will detect the opposite communications in A directions. error signal identical, and select the error- (1), node for example, (117, has controllers free channels from the other ring. 118) (119-121). and selectors Each node (122) can a detect break in by either ring Monitoring of arriving errors the sig- monitoring arriving signals for defects. nals is essential to the invention. The defective, If an arriving signal is the con- asserted independent claims 1 and 7 both troller in the node signal inserts an error claim this functionality via the “monitoring purportedly switches illustra- cused routers and requirement. Claim means” underlined): multiplex have SONET framers that (important phrase tive Synchro- ATM into a frame called a cells having communications network 1. In a Signal One. Transport nous in a interconnected of nodes plurality which ring a first ring configuration communica-
conveys multiplexed subrate D. ring from node to around the first tions infringement for Telcordia sued Cisco ring and a second node in one direction '306, '633, patents. and '763 On June subrate com- conveys multiplexed which 22, 2006, court issued a claim the district ring the second munications around Telcordia conceded construction order. direction, in the other from node to node infringement it not could establish including subrate transmit- each node on the district the '306 based and multiplexers associated ters with Specifically, claim construction. with associated subrate demultiplexers not that the prove Telcordia could accused receivers, improved comprising node products following met the limita- Cisco means, with the monitoring associated (1) “empty payload tions: fields” limi- ring, evalu- ring and the second for first (2) 4; 1, 3, tations of claims and and integrity multiplexed ating the “having access” limitations of claims on the subrate communications first court, however, The district denied Tel- ring, respectively, ring and the second 54(b) judg- cordia’s Rule motion to have a non-infringement pat- ment of of the '306 against ent entered it. means, with the insertion associated monitoring demultiplexers and said summary judg- Cisco then moved for means, signal on inserting an error noninfringement pat- ment of of the '306 commu- designated ones of the subrate argued ent. Cisco accused monitoring response to said nications products lacked not the two claim *7 integrity a lack of on detecting means limitations that Telcordia had conceded subrate communications multiplexed missing were four additional claim but ring or ring first or the second on the granted court limitations. The district ring. ring the first and the second both grounds motion “on all raised Cisco’s added). (emphasis at col.4 l.53-col.5 l.5 Id. Telcordia, F.Supp.2d at [Cisco].”
603-07. C. 2007, April May In to the district court infringement held a trial on of the '633 and are routers products The accused Cisco validity pat- and all three patents '763 of asynchronous that transmit and switches 10, 2007, May jury ents. On returned (“ATM”) and other transfer mode cells for on all a unanimous verdict Telcordia synchronous optical over types packets willfully jury claims. The found that Cisco (“SONET”). SONET is an indus- network claims of infringed all asserted the '633 optical transmission. try standard for jury upheld also patents. and '763 from dividing ATM a data protocol is '306, '633, and '763 validity called multiple segments sources into small 16, 2007, May the district patents. On intermixing those cells for “cells” and judgment on the verdict. ac- court entered a across a network. The transmission 6, 2009, January On Cybor Techs., Inc., the district court ence. Corp. v. FAS granted 1448, (Fed.Cir.1998) (en Telcordia’s motion for an award of 138 F.3d 1455-56 prejudgment banc). accounting interest and an The claim generally terms “are 31, infringing January Cisco’s sales from given ordinary customary their and mean- judgment. 2007 to the date of the Telcor ing.” Phillips v. Corp., AWH 415 F.3d dia, F.Supp.2d at 748-50. The district (Fed.Cir.2005) (en banc) (quota- court parties negotiate ordered the omitted). tion “[T]he claims themselves royalty. terms of the Id. The district provide substantial guidance as to the court denied Cisco’s JMOL motion meaning particular claim terms.” Id. at patent asserted claims of the '306 Also, patent’s specification “is al- claims are anticipated. invalid as Id. at ways highly relevant to claim construc- 743-44. The district court also denied Cis analysis.” tion (quotation Id. at 1315 co’s JMOL motion that the asserted claims omitted). Courts should also consider of the '763 are invalid as indefinite. prosecution history of the pat- asserted Id. at 738-40. However, ents. Id. at 1317. because appeal, prosecution On Telcordia challenges history represents the dis- an ongoing trict claim court’s construction and sum- negotiation between the United States mary judgment of non-infringement of the Patent and Trademark Office and the in- patent. '306 cross-appeals Cisco the dis- ventor, “it often clarity lacks the of the trict court’s denial of its JMOL motions on specification and is thus less useful for validity of the patents. '306 and '763 Cis- claim construction purposes.” Id. appeals co also the district court’s dam- ages awards. jurisdiction This court has B. 1295(a)(1). §
under 28 U.S.C. noted, 1, 3,
As claims of the III. claim “a transmission overhead containing field timing frame information Telcordia challenges the district court’s and an empty payload field.” The district construction of six pat- terms in the '306 court construed the term “empty payload ent, all of which independent formed field” mean payload “a field that grounds for the district summary empty data, of source including but bit judgment of non-infringement. This court kind, signals of some i.e. garbage bits.” first construes the term “empty payload Techs., Inc., Telcordia Inc. v. Sys., Cisco 1, 3, field” in claims as the definition 04-cv-876, No. slip. op. at 2006 WL affects other construed terms. Because *8 (D. 2006) (“Claim 22, Del. June this court agrees with the district court’s Order”). parties Construction The dis construction of the term “such that ... [a pute whether the claim packet is construction in any inserted emp- into] available cludes ty payload explanatory phrase gar field” in “i.e. claims and and the bits,” which, bage according term “inserting parties, means” in claim court judgment signals affirms the limits the “bit of non-in- some kind” to fringement patent. of the '306 “bits that purpose serve no other than
place-holding.” A. empty payload The “empty” fields are Claim packets construction is an issue of data and therefore have non- law that this court reviews without signals defer- source bit only. specification The A144, Counsel: DTDM frames Bell Communications’ train of that “a explains And, you lines 29-35. what fields ... has bit column payload empty with point.... backbone trans there at that a basic will see rate which defines system.” '306 the DTDM rate for mission Clevenger: There is a bit rate. Judge Therefore, sig the bit col.7 ll.27-30. says, It Bell Communications’s Counsel: maintain a bit system DTDM help nals talking empty It “this train.” about transmitting not when it is stream even payload field. “This train 10 has bit an information source. from data words, In it’s but it empty, rate.” other in the specify not where specification does a bit rate. Because in order to have has it rate” is stored nor does frame the “bit packet ... sometimes there won’t be a used to type of non-source bits specify Therefore, nothing ready. bit rate. The stream must continue. maintain the signals the bit restricts in the '306 There must be a bit the stream. It to ones that payload bit, field empty in the just be a data it won’t be a won’t purpose place-holding. other than serve no It be a bit. source data bit. will And it it, will have but it won’t information apparently court took the The district be source information. from an ad lib com- explanatory phrase hearing an oral at the during made Bryson: just ment It Judge garbage, would be In Bell Communications Federal Circuit. just I I take it. mean it will be ’s and Inc., Research, Systems, Inc. v. Fore relationship 0’s that have no to the (Fed.Cir.2003), Bell Com- Fed.Appx. 951 any stream that’s com- information Research, Inc., now known as munications ing in the source. from Telcordia, patent against asserted the '306 Bell Communications’s Counsel: Exact- court reviewed a another defendant. This ly, Your Honor. of the term court’s construction district patent. field” in the '306 “empty payload appeal, initially, The issue on at least case, court had In that the district Id. court seemed be whether district payload that “a frame’s has zero explained any actually signals meant “no kind” bit During in it.” Id. at 957. oral hear- data it Id. At oral hear- when said “zero data.” agreed with Cir- ing, Bell Communications however, ing, Systems, Fore Inc. stated its “ characterization of Judge Bryson’s cuit understanding that ‘zero data’ encom- “empty payload “gar- in the fields” as bits signals might various bit that passed] bage:” maintain rate of a the stated transmission stream, including ‘placeholders’ ‘gar- or bit Clevenger: we come back to Judge Can ” Commc’ns, bage bits.’ Bell at 957. Be- payload “Empty” field? empty parties’ agreement on this meaning cause to me ... the common seems of “zero data” ren- “empty” interpretation means there is broader of the word moot, So, nothing you saying there. are dered the claim construction issue de- something there is in the written the district this court declined to refine empty tells me what scription court’s construction. Id.
means? appeal on The claim construction issue I Counsel: am Bell Communications’s empty present in the case—whether the saying---- only that act as payload field has bits one in different from the placeholders in the written Judge Clevenger: Where —is emp- the Bell Communications —whether description? ty payload any field has bits at all. Circuit strued all three claim require elements to comments, therefore, Judge Bryson’s are that “packets only put are into frames directly specific not relevant to the issue in which empty.” are Claim Construction present case. The district court erred Order at 6-7. The district court further by limiting scope the claim based on the ad clarified that encompass only the claims Techs., lib comment from the bench. packet per one frame. Telcordia Inc., Inc. Sys., v. Cisco F.Supp.2d addition, In contrary to Cisco’s asser- (D.Del.2007). Each SONET frame in tion, changed Telcordia has not pro- its products the accused multiple carries ATM claim posed “empty construction of pay- cells packets. or Id. Telcordia therefore Communications, load field.” In Bell appeal concedes on that it prove cannot agreed Telcordia empty payload that the if infringement the asserted claims encom- only fields “garbage have bits” it because pass only packet per one frame. phrase understood the “garbage bits” to mean bits with “no relationship to the agrees This court with the district any stream of coming information that’s court’s construction that each frame in the case, from the source.” In the present DTDM bit carry only stream can one data Telcordia disputes the claim construction packet. specification clearly limits the phrase “garbage with the bits” because disclosed mechanism to packet per one apparently district court meant “non- frame. signals source bit that serve purpose no Figure which “illustrates the forma- Thus, other than place-holding.” Telcor- stream,” tion of a DTDM bit '306 precluded dia is not making from added), col.7 (emphasis 11.14-15 shows a claim arguments construction it DTDM assembler inserting packet one makes now. empty Also, into each payload field. Accordingly, “empty payload field” DTDM assembler’s structure allows it “a payload means empty field packet insert one per frame. The data, source but includes bit signals of DTDM assembler reads data from a FIFO some kind.” queue packets of data if two conditions are
met. The first condition is that at least packet one full is stored in the FIFO C. queue. The second condition is that “the noted, As claim of the incoming DTDM frame ... already is not claims “such packetized that data in for occupied by a packet, valid i.e. the incom- any mat from of said ing sources is written DTDM frame is empty.” Id. at col. 9 any into available empty payload Thus, field of 11.38-41. “empty” frame is one any of said frames.” Claim 3 recites “such that already “is not occupied by a valid packet that a any from packet.” said sources is Id. at (emphasis col.9 11.38-41 added). any inserted into empty payload available If the presence of one packet any field of of said frames.” Claim 4 payload makes a “empty,” field not “inserting recites each of packets packet, said next which must be inserted into comprised of data from plurali frame, one said an empty DTDM must wait for the ty any of sources empty payload into Therefore, field next available frame. any of said frames available to said DTDM assembler cannot insert more than inserting means.” The district court con- one data packet into a frame.
1375 ' of enlarge the content Moreover, further ex tion cannot specification ”). queue specification.... has a the FIFO that when plains signal an enable ready, “triggers it packet patent the '306 discloses a Accordingly, frame for the whole be asserted ... each frame DTDM mechanism which allowing the data period transmission packet. can one data This court store from the FIFO moved packet to be the district court’s claim con- agrees with the DTDM bit the framer and into through limitation in structions of the “such that” (emphasis 11.42-47 Id. at col.9 stream.” 3, “inserting 1 and and the means” claims added). can move Only packet one data in claim 4. Because Telcordia limitation bit queue to the DTDM from the FIFO prove infringement it cannot concedes that “the frame transmis during stream whole constructions, on these claim based frame indicating that each period,” sion affirms grant the district court’s court packet. By to one re only up can store judgment non-infringement. summary inventive DTDM describing the peatedly only allows one one that mechanism as frame, IV. patentee “the has dem per
packet to limit the a clear intention onstrated declaratory judg party seeking “A expressions of scope using words or claim invalidity presents a claim inde ment of Liebel- or restriction.” manifest execution charge in pendent patentee’s of the Medrad, Inc., 358 F.3d Co. v. Flarsheim v. fringement.” Cardinal Chem. Co. (internal (Fed.Cir.2004) 898, quotation Int’l, 83, 96, 113 Morton 508 U.S. S.Ct. omitted). (1993). Therefore, 124 L.Ed.2d during the recognizes that This court affirmance of the district this court’s patent, appli- prosecution of the '306 non-infringement findings as to suggesting that a cant made statements moot in patent the '306 does not Cisco’s than one able to store more may frame be cross-appeal. validity counterclaim on packet: Town Canoe Co. v. See Old Confluence (Fed. Corp., 448 F.3d Holdings field of each frame empty payload [A]n Cir.2006). ar This court reaches Cisco’s includ- packet with a data may be filled of the the asserted claims gument cases, In certain it ing ] a header. [¶]... independently are invalid as field of a may possible payload for a be prior publications: art anticipated by two for more capacity to have the frame (1) al. of FasNet Limb et Description packet. than one (2) (“FasNet”); packet/circuit “A “it suggests that Although this statement (“Budrikis”). al. by Budrikis et switch” payload for a field” may possible be denied Cisco’s JMOL The district court specifi multiple packets, contain data invalidity motion on of the '306 any mechanisms cation does not disclose jury that a reasonable solely on the basis packet per than one that would allow more that “the bits used Fas- could conclude history com prosecution These frame. intentionally placed Net and Budrikis were trump plain language ments cannot thus, were not purpose, with some teaching of the claims and the direct Telcordia, F.Supp.2d bits.” garbage Biogen Inc. v. Berlex specification. See (Fed.Cir. noted, agrees with this court Labs., Inc., at As 318 F.3d limitation 2003) “garbage bits” Telcordia that during prosecu- (“Representations *11 1376 of the asserted claims.” Personalized Media
improperly scope limits the Commc’ns, Comm’n, on which L.L.C. v. Int’l Trade claims. Because the sole basis (Fed.Cir.1998). 696, 705 161 F.3d decision is no the district court based its valid, court remands to the longer The district court determined that the court for reconsideration of Cisco’s district “monitoring term means” was a means- revised invalidity counterclaim under the pursuant to plus function term 35 U.S.C. claim construction. ¶ 112, § 6. The district court identified the “monitoring
function of the means” be V. “evaluating integrity multiplexed of the ring subrate communications on the first that provides “[t]he Title 35 ring,” correspond and the second and the one or specification shall conclude with ing structure for that function to be “the particularly pointing more claims out and circuitry at a controller that if determines distinctly subject claiming the matter multiplexed a defect exists with the sub- applicant regards which the as his inven communications,” rate equivalents and all ¶ 112, § tion.” 35 2. For a means- U.S.C. thereof. 2- Claim Construction Order at plus satisfy function claim to the definite 3. requirement, description ness the written description The written of the pat- clearly link or must associate structure to adequately ent discloses the structure for Biomedino, the claimed function. LLC v. monitoring means in the node-to-node 946, Corp., Waters Techs. 490 F.3d system. communication Each node has (Fed.Cir.2007). Whether the written de controllers, two which are connected to scription adequately sets forth the struc rings. different communication As each corresponding ture to the claimed function integrity node monitors and evaluates the must be perspective considered from the node, signals arriving of the at the person a Corp. skilled the art. Intel signals controllers insert error onto the Techs., Inc., 1357, v. VIA 319 F.3d 1365-66 major channels when line fault occurs: (Fed.Cir.2003). question “The is not whether one of skill in the art would be continuously Each node monitors and capable implementing a structure to integrity evaluates the of the multi- function, perform but whether plexed signals subrate arriving at the person would understand the written de Illustratively, node. this could be ac- scription itself to disclose such a struc complished by detecting the absence of a Videotek, ture.” Licensing Corp. Tech. v. signal analog carrier in an signal envi- (Fed.Cir.2008). Inc., 545 F.3d ronment, any or the lack of incoming corresponding “While structure need not signal digital in a environment. When things necessary include all enable recognizes major node 1 122 in line fault work, claimed invention to it must include ring controller 118 an inserts error actually all structure that performs the signal onto the six subrate channels. recited function.” Credit illustratively This could accomplished be Default Proof U.S.A., Inc., Sys. Depot Card v. Home by inserting string l’s on each chan- (Fed.Cir.2005). F.3d “A deter digital nel in a environment. Node mination of claim legal indefiniteness is a performs activity by the identical simi- conclusion is drawn from the court’s larly placing signal error on the six performance duty ring of its as a construer of subrate channels
1377 presenting for not have Cisco faults Telcordia The nodes eol.3 ll.4-17. patent '763 selectors; selectors that the links patent those evidence and sufficient controllers in the subrate any errors recognize cannot with the claimed function of the controller reach the destined signals until the signals Cisco, particu in monitoring the means. Therefore, must mon the controller node. lar, testimony challenges Dr. Prucnal’s error; other incoming signals for the itor circuitry in the controller corre that the to wise, would not be able the controller monitoring means. Howev sponds to the chan signals onto the subrate insert error valid, er, and patents presumed are be Prucnal, also expert, nels. Dr. Telcordia’s so, proving bears the burden Cisco 117 and 118 and that controllers testified ordinary an artisan would not understand associated circuitry are the structure their 282; § see Aero the disclosure. 35 U.S.C. monitoring means. function of the with the Int'l, Corp., Rec. Prods. Inc. v. Intex by Thus, did not err the district court (Fed.Cir.2006). The rec F.3d un ordinary artisan would finding that an did not show that an ord shows that Cisco clearly description to the written derstand ordinary artisan would not understand with the the controller link or associate moni link the controller and the between claimed function. Therefore, court af toring function. this notes, figures As Cisco deny firms the district court’s decision circuit as a controller’s show the patent motion that the asserted Cisco’s JMOL box, i.e., nothing figures in the de- black of the '763 are indefinite. claims circuitry. inner the details of its scribes “[Hjowever, of internal circui- the absence VI. does not description written
try in the
the claim indefinite.”
automatically render
A.
As
would know (Fed.Cir.2008). 1359, 1372 527 F.3d The rec- actually build a circuit. tion and ordinary artisan would that an ord shows an the controller as elec- recognized have B. a known structure. device with
tronic the district challenge to Cisco’s Therefore, along with the specification largely stems damages decisions to define figures shows sufficient structure jury’s damages argument that the from its ordinarily artisan the claim terms for fee, lump-sum licensing paid-up, award is a the relevant field. Cisco’s by grant- infringing court erred Telcordia for all of activ- the district beyond relief million award ing Telcordia additional ities. is closer to $6.5 jury proposed past verdict. million Cisco for $5 *13 ongoing infringement pro- than million $75 The asked: verdict form posed by past for infringement Telcordia you any If claim of have found Telcordia However, only. party proposed neither 4,835,763 or U.S. Patent U.S. Patent No. figure. any the exact million In $6.5 36,633 No. Re. to be both valid and event, this court holds that the district Cisco, infringed by please identify the jury’s finding that the verdict com- monetary damages that amount of will pensates only for past infringe- Telcordia for in- compensate Telcordia Cisco’s clearly ment not erroneous. In is the cir- fringement. case, this court cumstances finds the district court did not abuse its (6.5 MIL)” “$6,500,000 jury entered discretion in interpreting the verdict form. on the verdict form. The verdict form is jury compensated unclear the whether Tel- past
cordia Cisco’s infringement for C. past ongoing infringement.
or for both Title 35 for the provides calcula trial, During parties presented the “together tion of damages with interest damages three jury. sets of numbers to the ... as fixed the court.” 35 U.S.C. damages expert Telcordia’s testified that cases, § patent infringement 284. In “pre damages proper award should be judgment be interest should awarded un running royalty. based on a Cisco’s ex- justification § der 284 absent some for pert testified that the award should be withholding such an award.” General Mo lump-sum, paid-up based on a license. 648, tors Corp. Corp., v. Devex 461 U.S. expert applied Cisco’s also a running roy- (1983). 211 S.Ct. L.Ed.2d alty analysis show the to differences be- jury’s Cisco asserts damages tween approaches Telcordia’s and Cisco’s interest, prejudgment award includes To damages. complicate Id. the matter thereby award barring its under section further, parties presented also differ- reasons, 284. For the same the verdict royalty ent royalty rates and bases. There- form ambiguous as to whether jury’s fore, it jury is unclear whether the based damages prejudgment award includes in license, lump-sum, paid-up its award on a terest. district Because the court not did running royalty, some variation or combi- clearly by concluding jury’s err that the two, nation of the or theory. some other damages not prejudg award did include interest, ment the district court’s award of District courts have broad discretion interest under section 284 does not consti form, interpret ambiguous an verdict be- impermissible recovery. tute an double cause district courts partici- witness and pate directly jury in the trial process. The district in a position court was to assess D. figure
whether the verdict represented circumstances, past infringement awarding as well in- “Under some ongoing as fringement. an ongoing royalty infringement In the absence of an express verdict, may in injunction appropri- statement this court lieu of an be cannot jury compensated Toyota determine whether the ate.” Corp., Paice LLC v. Motor (Fed.Cir.2007). AFFIRMED-IN-PART, If the VACATED- F.3d IN-PART, REMANDED. permanent that a court determines district warranted, the district injunction is not to allow the may, encouraged, and is court COSTS at 1315. negotiate a license. Id.
parties to No Costs. may step to assess The district court fail parties
reasonably royalty should agreement. Id. to come to PROST, Judge, dissenting-in- Circuit part. case, declining Telcordia’s In this after *14 the dis- injunction, permanent
motion for I the narrow respectfully dissent on is- negotiate to parties court directed the trict in Part of sue of indefiniteness discussed V ongoing infringe- royalty reasonable majority opinion the in the case. I do not royalty ongoing An of an ment. award agree patent that the disclosure here supports record because the appropriate clearly the structure of the controller links that Telcordia finding the district “evaluating with the claimed function of con- compensated for Cisco’s has not been integrity multiplexed the of the subrate Therefore, the dis- tinuing infringement. ring communications on the first and the by trict court did not abuse its discretion ring,” required by second to the extent the terms directing parties negotiate the to precedent. this court’s royalty. appropriate of the patent specification The describes the affirms the dis- Accordingly, this court comprising invention as nodes. Each node accounting and grant of an trict court’s plurality parts, including has a con the district prejudgment interest. As troller and a selector. The disclosure parties instructed the to properly court continuously states that “the node moni royalty, the this court remands negotiate integrity the of the tors evaluates can parties court so that the to the district arriving at the multiplexed signals subrate royalty negotiation process. the complete (“'763 4,835,763 node.” Patent No. U.S. agreement, an parties If the cannot reach patent”) col.3 ll.4-17. The disclosure step in and assist the district court should monitoring the function with the associates appropriate on own the or calculate its At the point node as a whole. no does Telcordia and Cisco will have rate. with specification reveal the structure appeal royalty the set opportunity performs monitoring in the node that the the district court. circuitry controller. task is the of the Furthermore, specification dedicates VII. describing the function of the ample text to description explains controller. The court vacates the dis- Accordingly, this signals the controller inserts error when motion trict court’s denial Cisco’s JMOL in ring. and re- the node detects a fault Id. invalidity on of the '306 mention validity specification Nowhere does the for determination of the mands part also the of the remands to allow that the controller is issue. This court also the faults of the node that monitors and detects negotiate the terms parties ar- signals subrate multiplexed this court when the royalty. respects, In all other Indeed, func- by attributing certain rive. affirms. tions to the node as a whole and other controller, specifically
functions to the implies
disclosure that the node structure monitoring
associated with the means is
distinct from the controller structure asso-
ciated with signals. the insertion of error majority holds that one of skill in
the art would understand that the selector
component is not capable performing function,
the monitoring by process
elimination would deduce that the control-
ler is the component structural of the node
associated with the claimed function. Ma-
jority Op. at 1376-77. It enough, is not view,
my that a skilled artisan can follow clues and solve mys-
tery of what structure perform must
claimed function. Licensing See Tech. Videotek, Inc.,
Corp. v. 545 F.3d
(Fed.Cir.2008). precedent Our requires
that the specification clearly link a particu-
lar structure with a claimed function. See
Biomedino, LLC v. Corp., Waters Techs. (Fed.Cir.2007);
490 F.3d Tech.
Licensing, 545 at F.3d 1338.
Accordingly, I would hold that the term
“monitoring means” is indefinite under 35 §
U.S.C. failing disclose struc- function,
ture associated with the claimed
and thus hold the asserted claim of the invalid. Joseph
In re GIACOMINI, Peter Walter Pitio,
Michael Hector Francisco Rod
riguez, and Schugard. Donald David
No. 2009-1400.
United States Court of Appeals,
Federal Circuit.
July