U.S. Ethernet Innovations, LLC v. Acer, Inc. et al. (Apple, Dell, Fujitsu, Gateway, HP, Sony, Toshiba, J.C. Penny, Rent-A-Center, Marvell Semi., Intel)

Docket No. 2015-1640, -1641

April 25, 2016


Brief Summary: DC decision granting Appellees motion for SJ of invalidity affirmed based on claim construction.

Summary: U.S. Ethernet (“USEI”, successor in interest to 3Com) appealed DC decision granting Appellees motion for SJ of invalidity (anticipation over the SONIC reference) of USEI’s US 5,434,872 and 5,732,094 directed to an apparatus and process of Ethernet data transmission. The FC panel opinion explains that in an Ethernet network, each computer is connected the network via an Ethernet network adaptor which includes a “transmit buffer” where host computer data “rests” before being transferred to the network, and the nature of the transmit buffer was at issue in this case. As explained in FN4, “[a]ll asserted the claims of both patents [were] analyzed together according to representative claim 1 in the ‘872 patent”, which requires a “buffer memory for storing data of frames composed by the host computer for transmission of the communications medium”. At the DC, USEI argued against the Appellees motion of SJ of invalidity over SONIC “on the basis that the claims require capacity in the buffer to hold at least a full-sized 64-bit Ethernet frame” but the court held “‘the plain language of the claims says nothing about the buffer memory’s ability to hold a complete frame of data,’ and explain[ed] that adding such an ability would improperly import a limitation from the specification into the claims.” The FC reviewed the decision de novo, and explained that “[w]hen there are no factual disputes, the anticipation issue collapses into an issue of claim construction” (Athletic Alts., FC 1996; Gen. Mills, FC 1997). USEI argued persons of ordinary skill would read the claim language as it proposes (requiring “the buffer to hold at least a full-sized 64-bit Ethernet frame”) from the specification but the FC panel disagreed because “[t]he claims say only ‘data of frames,’ indicating that the buffer need not be capable of storing an entire Ethernet frame of data” (e.g., “the claims do not include the element, ‘transmit data buffer’” but “[i]nstead, the claims include the notably broader phrase, ‘buffer memory’” and “[t]here is no claim requirement that the buffer ‘successfully transmit’ the data in the sense of requiring local storage of the data”). The FC panel was also unpersuaded by USEI’s argument that that construction “would render superfluous the claim limitation ‘means…for initiating transmission of of the frame prior to the transfer of all of the data…”, finding that limitation to “actually undermine USEI’s argument, because it shows that where the patent intended to indicate all the data of the frame in the claim, it said so.” The FC panel also concluded the expert testimony did “not answer the claim construction issue before us.” The DC decision was therefore affirmed.

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