Network-1 Techs., Inc. v. Hewlett-Packard Co. et al.
Docket No. 2018-2338-39, -2395-96
PROST, NEWMAN, BRYSON
September 24, 2020
Brief Summary: DC claim construction affirmed and reversed (“ordinary meaning”); joinder rule did not prevent HP from raising new obviousness arguments that could have been raised during IPR; no improper broadening during reissue.
Summary: Network-1 appealed DC finding that HP does not infringe US 6,218,030 relating to methods for “remotely powering access equipment in a data network” and the DC’s construction of the claim terms “low level current” and “main power source”. HP cross-appealed the DC’s finding that Network-1 did not improperly broaden the ‘030 claim term “secondary power source” during reexamination (two reexaminations of the ‘030 patent). In a previous IPR proceedings filed by Avaya and joined by HP (after being denied its own IPR as time-barred (“§ 315(b) creates an exception from the time bar for joinder under 35 U.S.C. § 315(c)”), ‘030 claims 6 and 9 were not held to be unpatentable. The DC also granted JMOL to Network-1 regarding some of HP’s obviousness arguments that were not but “‘reasonably could have been raised’ in the Avaya IPR.”
The FC panel agreed with the DC’s construction of “low level current” but not “main power source”. “Low level current” was found to include a “lower bound” of the current indicated “by use of the word ‘low’” in order “to give meaning to the term ‘current’” (“the delivered ‘low level current’ is current that is sufficient to begin start-up”; e.g., “[e]ven Network-1 admits that the term ‘current’ necessarily requires some flow of electric charge because ‘[i]f there is no flow, there is no ‘current’”). Relying on expert testimony and Talbert Fuel (FC 2002 (“[a] construction that renders the claimed invention inoperable should be viewed with extreme skepticism”)), the DC “construed ‘main power source’ as ‘a DC power source,’ and thereby excluded AC power sources from its construction”. But the FC panel disagreed, finding that “the correct construction…include[s] AC and DC power sources” as consistent with the ordinary meaning but “neither the claims nor the specification…require a departure from this ordinary meaning” (Starhome, FC 2014 (“In the absence of an express intent to impart a novel meaning to claim terms, an inventor’s claim terms take on their ordinary meaning.”)), “[t]he specification likewise never expresses a preference for DC power sources, much less a suggestion that DC power is an ‘essential’ feature of the main power source” (GE Lighting, FC 2014), and “the ‘930 patent’s disclosure of a preferred embodiment” (MBO Labs., FC 2007 (“A claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.”)). The FC panel also found the DC erred “by adding a limitation to the claims to carve out certain inoperable embodiments” but also “excluded operable embodiments” (Cordis, FC 2008).
The DC also found HP to be estopped under § 315(e) from raising obviousness arguments that “‘reasonably could have been raised’ in the IPR”. The FC panel explained that under Facebook (FC 2020) joined party HP could not “bring into the proceeding new grounds that were not already instituted” and was therefore “not statutorily estopped”. The DC decision was therefore vacated and remanded on this ground. HP also argued that certain claims are invalid due to improper broadening during reissue (§ 305; Creo Prods., FC 2002; Predicate Logic, FC 2008 (“broader in scope…if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent”)). The FC panel disagreed that the scope of the disputed claim was changed during reexamination (Creo; Enzo, FC 2017 (“dependent claims cannot broaden an independent claim”); ArcelorMittal, FC 2015 (AK Steel) (rejecting “the argument that a defective reissue application invalidates…[the] original claims carried over from the original application”)).
Federal Circuit summaries 