DC claim construction affirmed; refusal to correct inventorship vacated/remanded (“AIA did not narrow the meaning of ‘error’”)

Egenera, Inc. v. Cisco Systems, Inc.
Docket No. 2019-2015, -2387
PROST, REYNA, STOLL
August 28, 2020

Brief Summary: DC claim construction affirmed; refusal to allow Egenera to correct inventorship vacated/remanded (“AIA did not narrow the meaning of ‘error’”).

Summary: Egenera appealed DC claim construction of the claims of US 7,231,430 relating to enterprise server systems and application of judicial estoppel to prevent Egenera from relisting an inventor delisted during a copending IPR proceeding, leading to its holding of invalidity for failing to name all inventors. Egenera argued the DC misconstrued the “logic to modify” limitation (“at least one control node including logic to modify said received messages to transmit said modified messages”) as a means-plus-function limitation (section 112, para. 6; Williamson, FC 2015 (“presumption against means-plus-function” without the word “means”, “challenger need not show that the limitation is ‘essentially…devoid of anything that can be construed as structure” but “need only show that the structure is not ‘sufficient’”, “[g]eneric terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other…verbal constructs may be used…in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’”; TEK, FC 2019; MTD Prods., FC 2019 (may be invoked by “generic terms or black box recitations of structure or abstractions”)). The DC found “that, in the claim language, each ‘logic’ term was ‘described by a specific function’…unaccompanied by ‘structural components’” and “the specification was…‘consistent with an understanding of logic as an abstraction’” (“a generic black box”), thereby “rebut[ing] the presumption against means-plus-function claiming.” The FC panel agreed with the DC that “[a]s used, ‘logic’ is no more than a ‘black box recitation of structure’ that is simply a generic substituted for ‘means’”. The FC panel also concluded the DC identified the correct structure “as corresponding to the claimed functions of the ‘logic to modify’ limitation”, explaining that Egenera agreed with that determination and “cannot now seek a much narrower construction on appeal.” The FC panel therefore affirmed the claim construction order. Egenera also appealed the DC’s refusal to allow it to correct the ‘430 patent inventorship. During the IPR proceeding, Egenera removed one inventor that it argued to the DC was an error under section 256(a)/(b) (“The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent…if it can be corrected as provided in this section.”) The FC panel explained that “ ‘error’ in [section] 256 includes ‘all varieties of mistakes-honest and dishonest’-rather than only unintentional inaccuracy” (Stark, FC 1997; same for reissue under section 251) and that this applied to amended section 256 (amended in the AIA to remove “without ‘deceptive intention’ on the inventor’s part” (“AIA did not narrow the meaning of ‘error’”; “the inequitable-conduct rules…provide a safety valve in the event of deceit”). The FC panel also explained that “[j]udicial estoppel is an equitable doctrine that prevents a litigant from taking a litigation position inconsistent with one successfully asserted in an earlier court proceeding” (New Hampshire, 1st Cir. 2010) which the DC incorrectly applied (e.g., “Egenera advanced no ‘clearly inconsistent’ position” and “would gain no unfair advantage”) and vacated/remanded that part of the decision.