Optimumpath LLC v. Belkin International Inc et al

Filing 270

ORDER CONSTRUING CLAIMS (Docket No. 234) and GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT (Docket No. 236) by Judge Wilken. (cwlc3, COURT STAFF) (Filed on 4/12/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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OPTIMUMPATH, LLC,

United States District Court
For the Northern District of California

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No. C 09-01398 CW

Plaintiff,
v.
BELKIN INTERNATIONAL, INC.;
CISCO-LINKSYS, LLC; D-LINK
SYSTEMS, INC.; NETGEAR, INC.; AND
SMC NETWORKS, INC.,

ORDER CONSTRUING
CLAIMS AND
GRANTING
DEFENDANTS' MOTION
FOR SUMMARY
JUDGMENT
(Docket Nos. 234 &
236)

Defendants.
________________________________/

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Plaintiff OptimumPath and Defendants Belkin International,

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Inc.; Cisco-Linksys, LLC; D-Link Systems, Inc.; and NETGEAR, Inc.

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dispute the meaning of claims in OptimumPath's U.S. patent No.

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7,035,281 ('281 patent).1

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In addition, Defendants move for

(1) summary judgment of non-infringement, (2) preclusion of

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OptimumPath's claims based on the doctrine of equivalents, and
(3) summary judgment of invalidity.
1SMC

The motions were heard on

Networks, Inc. was also a defendant in this action.
However, on April 11, 2011, the Court granted the parties'
stipulation to the dismissal with prejudice of OptimumPath's
claims against SMC, and SMC's counterclaims for non-infringement,
invalidity, and unenforceability. Docket No. 269.

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February 17, 2011.

Having considered all of the parties'

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submissions and oral argument, the Court construes the claims, and

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grants Defendants' motion for summary judgment.

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DISCUSSION
The '281 patent is entitled "Wireless Provisioning Device."
The patent application was filed on September 13, 2000 by two
inventors, Anthony Spearman and Andrew Tompkins of Summerville,

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South Carolina.

Plaintiff asserts two independent claims, claims

United States District Court
For the Northern District of California

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1 and 13, and six dependent claims, claims 2, 6, and 9 through 12.

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I. Claim Construction

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A. Legal Standard

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The construction of a patent is a matter of law for the

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Court.
(1996).

Markman v. Westview Instruments, Inc., 517 U.S. 370, 372
“It is a „bedrock principle‟ of patent law that „the

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claims of a patent define the invention to which the patentee is
entitled the right to exclude.‟”

Phillips v. AWH Corp., 415 F.3d

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1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water,

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Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115

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(Fed. Cir. 2004)).

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Court first looks to the words of the claims.

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Accordingly, in construing disputed terms, the
Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Generally, the Court ascribes the words of a claim their ordinary

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and customary meaning.

Id.

The Federal Circuit instructs that

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“the ordinary and customary meaning of a claim term is the meaning

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that the term would have to a person of ordinary skill in the art
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in question at the time of the invention, i.e., as of the

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effective filing date of the patent application.”

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F.3d at 1313.

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assist in determining the meaning of a claim term.

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“Because claim terms are normally used consistently throughout the

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Phillips, 415

Other claims of the patent in question can also
Id. at 1314.

patent, the usage of a term in one claim can often illuminate the
meaning of the same term in other claims.”

Id.

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The Federal Circuit also instructs that claims “must be read

United States District Court
For the Northern District of California

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in view of the specification, of which they are a part.”

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1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967,

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979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996)).

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specification must contain a description of the invention that is

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clear and complete enough to enable those of ordinary skill in the

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Id. at

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art to make and use it, and thus the specification is “always

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highly relevant” to the Court's claim construction analysis.
Vitronics, 90 F.3d at 1582. “Usually, [the specification] is

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dispositive; it is the single best guide to the meaning of a

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disputed term.”

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that the patentee has given a special definition to a claim term

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that differs from its ordinary meaning; in such cases, “the

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Id.

In some cases, the specification may reveal

inventor's lexicography controls.”

Phillips, 415 F.3d at 1316.

The specification also may reveal the patentee's intentional

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disclaimer or disavowal of claim scope.

“In that instance, as

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well, the inventor has dictated the correct claim scope, and the

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inventor's intention, as expressed in the specification, is
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regarded as dispositive.”

Id.

However, claims are not limited to

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the preferred embodiment described in the specification.

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Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed.

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Cir. 1985) (en banc, plurality opinion).

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See SRI

While emphasizing the importance of intrinsic evidence in
claim construction, the Federal Circuit has authorized courts to
rely on extrinsic evidence, which consists of “all evidence

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external to the patent and prosecution history, including expert

United States District Court
For the Northern District of California

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and inventor testimony, dictionaries, and learned treatises.”

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Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980).

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While extrinsic evidence may be useful to the Court, it is less

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significant than intrinsic evidence in determining the legally

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operative meaning of claim language.

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Id.; see also C.R. Bard,

Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004).

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Furthermore, extrinsic evidence is unlikely to lead to a reliable
interpretation of claim language unless considered in the context
of the intrinsic evidence.

Phillips, 415 F.3d at 1319.

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B. Analysis

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The parties dispute the meaning of the following terms:

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"wireless card," "network card," "chassis," "channeling
controller," "routes" and "authenticator."2

Claims 1 and 2 recite

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the disputed language, but the terms and phrases appear throughout

Defendants initially sought construction of the term
"public domain networks," but the parties now agree that this term
need not be construed.
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the patent.

The claims are as follows, with the disputed language

underlined:
Claim 1
A wireless provisioning device for use in public domain
networks wherein the wireless provisioning device is
accessible by a user of mobile computing devices,
comprising:

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a chassis;

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at least one network card;

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at least one wireless card;

United States District Court
For the Northern District of California

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at least one processor;
an operating system, the operating system operably
configured in the chassis to control the at least one,
network card, the at least one wireless card and the at
least one processor, which are operatively coupled with
the chassis;
a packet-switched interface capable of receiving a
multiplicity of inbound framed packet-data to provide
inbound packets and transmitting a multiplicity of
outbound framed packet-data comprising outbound packets;
a channeling controller, coupled to the packet-switched
interface that channels the inbound packets based on the
inbound address information and constructs the outbound
packets and channels the outbound packets with the
outbound address information, the channeling controller
capable of being effectively connected to at least one
network via the operating system; and
an authenticator in operative communication with the
operating system to allow authentication at the wireless
provisioning device;
whereby the user of a mobile computing device connects
to the wireless provisioning device without having to
first access the Internet.
Claim 2
The wireless provisioning device of claim 1, wherein the
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channeling controller routes the outbound packets.
'281 patent at 12:63-13:28.
1. Wireless card

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OptimumPath contends that the word "wireless card" need not
be construed.

Defendants' proposed construction is

a removable printed circuit board having an electrical
connector that allows it to connect to a corresponding
electrical connector in the chassis that is separate
from the network card(s) and transmits and receives
data using a wireless connection.

United States District Court
For the Northern District of California

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OptimumPath responds that a wireless card refers generally to any

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component, removable or integrated, with electronic circuitry

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providing a wireless interface.

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The sparse language cited by OptimumPath, found in the
summary of the invention, indicates that the wireless card was
intended to mean a wireless interface.

However, a full reading of

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the specification demonstrates that the wireless card was meant to
be a removable wireless interface, as opposed to a component

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integrated into the invention's internal circuitry.

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specification describes the wireless provisioning device as one

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capable of being "configured with differing numbers of wireless

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cards and network cards."

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Id. at 10:11-15.

The

The user can

"increase the number of potential customers to the connection
point in the network by adding cards and antennas[.]"

Id. at

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10:8-10.

At various points, the specification refers to the

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insertion and addition of cards.

Id. at 9:43-47; 9:63-65.

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capacity to add or remove cards gives the invention the
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The

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flexibility that is one of its defining characteristics.

Id. at

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9:63-10:2.

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be a separate, stand-alone circuit board, not a chip soldered and

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integrated onto the main circuit board inside the chassis.

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Figures 1 and 2 affirm this understanding because they depict

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In order to insert or remove a wireless card, it must

multiple, external wireless cards.

Contrary to OptimumPath's

argument, this interpretation does not rest solely on the

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preferred embodiments described in the specification.

See Fuji

United States District Court
For the Northern District of California

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Photo Film Co., Ltd. v. International Trade Com'n., 386 F.3d 1095,

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1106 (Fed. Cir. 2004).

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In addition to the intrinsic evidence, industry dictionaries

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provide support for Defendants' interpretation of the term

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"wireless card."

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The Microsoft Computer User's Dictionary (1998),

the IEEE Authoritative Dictionary on IEEE Standards Terms (2000),

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the IBM Dictionary of Computing (1994), and Microsoft Press
Computer (1994) all define a "card" as a printed or electrical

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"circuit board" or component that "plug[s] into" or "can be

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plugged into" a computer.

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consistent with the understanding of a wireless card as one that

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is separate and removable from the main circuit board, which is

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These definitions are uniform and

internal to the wireless provisioning device.

Boston Scientific

Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 987 (Fed. Cir. 2009)

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("Courts may of course 'rely on dictionary definitions when

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construing claim terms, so long as the dictionary definition does

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not contradict any definition found in or ascertained by a reading
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of the patent documents . . .'") (citing Phillips, 415 F.3d at
1322-23).
Finally, an OptimumPath pending application before the United

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States Patent and Trademark Office (PTO), Application No.

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11/157,592 ('592 application), contradicts its assertions in this

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action that the '281 patent encompasses wireless interface chips
and chipsets.

The PTO Examiner rejected the '592 application

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because it was anticipated by or obvious in light of another

United States District Court
For the Northern District of California

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OptimumPath application, No. 10,223,255 ('255 application).

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OptimumPath does not dispute that its '255 application adopted the

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entirety of its '281 patent, which was pending at that point.

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response to the Examiner's rejection, OptimumPath sought to

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distinguish the '592 application from the '255 application.

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In

It

explained that the '592 application offered a configuration with a

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microprocessor chipset that allowed for an indeterminate number of
connections, as an alternative to a configuration containing "up

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to seven wireless connections and one wired connection, or one

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wired connection and seven wireless connections, or any

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combination as seen fit for the network."

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Thus, by implication, the '281 patent, which also described
the wireless provisioning device as containing "up to seven
wireless connections and one wired connection, or seven wired

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connections and one wireless connection, or any combination as

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seen fit for the network," with no mention of chipsets or chips,

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treated wireless cards as circuit boards, distinct from chips and
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chipsets, which are integrated into motherboards as opposed to
insertable and removable.
Accordingly, the Court construes a wireless card as "a

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removable printed circuit board having an electrical connector

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that allows it to connect to a corresponding electrical connector

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in the chassis that is separate from the network card(s) and
transmits and receives data using a wireless connection."

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United States District Court
For the Northern District of California

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2. Network card
OptimumPath contends that the phrase "network card" need not

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be construed.

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printed circuit board having an electrical connector that allows

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it to connect to a corresponding electrical connector in the

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chassis that is separate from the wireless card(s) and transmits

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Defendants' proposed construction is "a removable

and receives data using a wired connection."

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Defendants rely on much of the same patent language that
refers to the wireless cards as being separate, but capable of

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insertion into the chassis.

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identifies a "10/100 NIC," a network card that is separate from

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four wireless cards, and capable of insertion into the chassis.

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The specification expressly identifies Figure 1 as "an exemplary

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They also point to Figure 1, which

embodiment of a wireless provisioning device in accordance with
the present invention."

Id. at 12:7-9.

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OptimumPath counters by pointing out that Figure 2 depicts a

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"2 slot wireless Router" but it does not show a network card

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separate from the motherboard.

OptimumPath notes that the
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specification refers to Figure 2 as an embodiment of the patent

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when it states, "The presently preferred embodiments of the

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invention will be best understood by reference to the drawings of

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FIGS. 1-3."

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describes Figure 2 as "a schematic diagram of a two slot wireless

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Id. at 11:40-42.

In addition, the specification

device embodiment in accordance with the present invention."
at 3:13-15.

Id.

According to OptimumPath, because claim 1 requires at

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least one network card, and a network card is not depicted in

United States District Court
For the Northern District of California

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Figure 2, the network card must be integrated into the

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motherboard, not a "separate, removable circuit board."

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However, the specification further explains that Figure 2

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depicts a 2.4 Ghz bridge, and states that "a typical configuration

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for a 2.4 Ghz bridge 200 is either 1 or 2 wireless cards with

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PCM/CIA connectors."

Id. at 12:28-30.

The specification explains

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that the "output for the wireless bridge 200 is either the 10/100
ethernet or the other wireless card 210."

Id. at 12:31-32.

Thus,

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Figure 2 provides a schematic drawing of a 2.4 Ghz bridge which

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may be configured in two ways--one that includes two wireless

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cards and no network card, and another that includes a wireless

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card and a network card.

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Accordingly, the configuration of the

Figure 2 bridge with a network card may embody the claimed
invention, even though the configuration of the Figure 2 bridge

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without a network card does not.

The Federal Circuit has

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explained, "Our precedent is replete with examples of subject

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matter that is included in the specification, but is not claimed."
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TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d

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1364, 1373 (Fed. Cir. 2008).

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has also stated that generally claims are not interpreted to

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exclude embodiments disclosed in the specification.

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IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008).

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It is true that the Federal Circuit

Oatey Co. v.

Nonetheless,

while Figure 2's depiction of a wireless bridge with two wireless
cards may not be an embodiment of the claimed invention, an

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United States District Court
For the Northern District of California

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alternate configuration of the figure, as described in the
specification, is an embodiment.

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Accordingly, the Court construes a network card as a

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removable printed circuit board having an electrical connector

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that allows it to connect to a corresponding electrical connector

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in the chassis that is separate from the wireless card(s) and

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transmits and receives data using a wired connection.

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3. Chassis
OptimumPath contends that the word "chassis" need not be

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construed, while Defendants' proposed construction is "a casing

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having slots for removable network and wireless cards."

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OptimumPath's expert, Dr. Teresa Dahlberg, stated in her report

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that the chassis described in the '281 patent houses the

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components of the wireless provisioning device.

The '281 patent

describes the chassis as containing slots capable of accommodating

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the addition of various cards and antennas.

"The user can also

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increase the number of potential customers to the connection point

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in the network by adding cards and antennas without the need for
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chassis changes."

'281 patent at 10:8-11.

"By inserting the

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cards in the slots of a chassis that contains open-source code,

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preferably LINUX, as its operating system (OS), the wireless

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provisioning device can be configured as a router or a bridge."

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Id. at 9:43-47.

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Because the device requires removable wireless

and network cards, the chassis must contain slots for the
insertion of both.

Accordingly, the Court construes the term

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United States District Court
For the Northern District of California

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chassis as "a casing having slots for removable network and
wireless cards."
4. Channeling controller
Defendants assert that it is unnecessary to construe the

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meaning of "channeling controller" because the plain claim

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language is sufficient to define the term.

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The claim language

states that the "channeling controller . . . channels the inbound

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packets based on the inbound address information and constructs
the outbound packets and channels the outbound packets with the

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outbound address information."

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history for the '281 patent reveals that, after the Examiner

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rejected claim 1 on the grounds that the description of

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"channeling controller" was insufficiently definite, OptimumPath

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Id. at 13:13-17.

The prosecution

responded that "it may readily be ascertained from the claim
itself that the channel controller directs and assembles the

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inbound and outbound data packets based on their address, which

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gives a definite scope to claim 1."

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(Briggs Decl.), Ex. DD, DEF005394.
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Declaration of Todd Briggs

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In its opening brief, OptimumPath sought a construction of a

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"channeling controller" as "a component that routes or bridges

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packets in a network."

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narrow its proposed construction, asserting that the channeling

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controller is a component of the wireless provisioning device that

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In its reply brief, OptimumPath appears to

performs the dynamic routing function.
"Without a customary meaning of a term within the art, the

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specification usually supplies the best context for deciphering

United States District Court
For the Northern District of California

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claim meaning."

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Systems Corp., 488 F.3d 982, 991 (Fed. Cir. 2007).

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Court rejects OptimumPath's new proposed construction that the

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"channeling controller" is a component of the wireless

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Honeywell Intern. Inc. v. Universal Avionics
Therefore, the

provisioning device that necessarily performs the dynamic routing

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function.

Instead, the Court construes the term channeling

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controller in accordance with the claim language as a component

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that channels inbound packets based on inbound address information

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and constructs outbound packets and channels outbound packets with

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the outbound address information.

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5. Routes
Defendants assert that "routes" includes dynamic or static
routing, whereas OptimumPath contends that it requires dynamic

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routing.

Because the term dynamic routing is not expressly used

in the '281 patent, the issue is whether the specification, claims

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or other evidence supports a construction that requires dynamic

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routing.

According to Dr. Dahlberg, the specification clearly
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contemplates dynamic routing because it refers to the Routing

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Information Protocol (RIP), '281 patent at 7:41-50, which is a

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form of dynamic routing.

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routers as making

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Furthermore, the specification describes

use of the destination network identifier in a message
to determine an optimum path from the source network
to the destination network. Various routing
algorithms may be used by routers to determine the
optimum paths.

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Id. at 8:14-18.

This description of the routing function reflects

United States District Court
For the Northern District of California

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dynamic or adaptive routing, rather than static routing, which

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does not seek out the optimum path for the transmission of data

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packets.

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Claim Construction Brief, Ex. 5, IEEE 100--The Authoritative

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Dictionary of IEEE Standard Terms 16 (7th Ed. 2000).

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Declaration of Corby R. Vowell in Support of Opening

Therefore,

the Court finds that "routes" requires dynamic routing.

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6. Authenticator

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OptimumPath proposes that the term "authenticator" be
construed as,
a mechanism for authenticating the identity of a
device or user in a manner that does not require the
wireless provisioning device to be rebooted each time
a new user or device is added to the network.

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Defendants, on the other hand, seek to define the term more

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broadly, simply as "a mechanism for authenticating the identity of

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a device or user."3

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The construction Defendants propose in their brief is not
the same as the construction they previously set forth in the
Joint Claim Construction Statement.
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The plain language of asserted claims 1, 2, 6, and 9 through

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13 does not make express reference to an authenticator capable of

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adding new users without rebooting.

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that, because the rebooting requirement is omitted in the asserted

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claims but included in other, unasserted claims, it is

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Defendants correctly argue

impermissible to import such a limitation into the asserted
claims.

Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d

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1313, 1326 (Fed. Cir. 2003) ("Our court has made clear that when a

United States District Court
For the Northern District of California

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patent claim does not contain a certain limitation and another

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claim does, that limitation cannot be read into the former claim

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in determining either validity or infringement").

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because the '281 patent specification provides an explicit

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definition for "authentication," which does not include a no-

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Furthermore,

rebooting requirement, it is improper to import such a limitation

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into the definition of authentication.

Linear Tech. Corp. v.

Int'l Trade Comm'n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)

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(affirming a claim construction because it was consistent with the

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specification's explicit definition).

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Thus, while the patent addresses a problem with the prior
art, which required rebooting each time a change was made to the
list of authorized users or devices, and the specification states
that the invention does not require rebooting, this aspect of the

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patent describes a characteristic of the invention, rather than a
requirement of the authenticator.

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Therefore, the Court construes

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an authenticator as simply a mechanism for authenticating the

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identity of a device or user.

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II. Motion for Summary Judgment

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A. Legal Standard

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Summary judgment is properly granted when no genuine and

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disputed issues of material fact remain, and when, viewing the
evidence most favorably to the non-moving party, the movant is

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clearly entitled to prevail as a matter of law.

Fed. R. Civ. P.

United States District Court
For the Northern District of California

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56.

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Eisenberg v. Ins. Co. of N. Am., 815 F.2d 1285, 1289 (9th Cir.

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1987).

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the party against whom summary judgment is sought.

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Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986);

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Celotex Corp v. Catrett, 477 U.S. 317, 322-23 (1986);

The court must draw all reasonable inferences in favor of
Matsushita

Intel Corp. v. Hartford Accident & Indem. Co., 952 F.2d 1551, 1558

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(9th Cir. 1991).
Material facts which would preclude entry of summary judgment

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are those which, under applicable substantive law, may affect the

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outcome of the case.

The substantive law will identify which

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facts are material.

Anderson v. Liberty Lobby, Inc., 477 U.S.

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242, 248 (1986).

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B. Non-Infringement
The Court now considers whether there is evidence that the

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accused devices infringe the '281 patent given the Court's

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constructions.

"Infringement is assessed by comparing the accused

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device to the claims; the accused device infringes if it
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incorporates every limitation of a claim, either literally or

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under the doctrine of equivalents."

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Business Objects, S.A., 429 F.3d 1344, 1352 (Fed. Cir. 2005)

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(alterations omitted).

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not met, there is no literal infringement."

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MicroStrategy Inc. v.

"If, however, even one claim is missing or
Id.

1. Literal Infringement
As explained above, the Court has construed the wireless and

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network cards to be separate, removal circuit boards providing

United States District Court
For the Northern District of California

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wireless and network interfaces, and has further defined the

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chassis as a casing having slots for removable network and

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wireless cards.

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that, under those constructions, none of the accused products

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literally infringes the '281 patent.

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OptimumPath's expert, Dr. Dahlberg, has conceded

Briggs Decl., Ex. I,

Dahlberg Dep. at 85:24-87:7; 88:11-24 and 90:19-91:7.

Therefore,

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the Court summarily adjudicates that the accused devices do not
literally infringe the '281 patent.
2. Doctrine of Equivalents
Defendants contend that OptimumPath failed to comply with the

21

requirements of Patent Local Rule 3-1(e), and thus should be

22

precluded from asserting an infringement claim based on the

23
24

doctrine of equivalents.

Patent Local Rule 3-1 requires a

plaintiff to serve on all parties a "Disclosure of Asserted Claims

25
26

and Infringement Contentions."

Separately for each opposing

27

party, the disclosure must include, among other information,

28

"[w]hether each limitation of each asserted claim is alleged to be
17

1

literally present or present under the doctrine of equivalents in

2

the Accused Instrumentality."

3

heading "Patent L.R. 3-1(e)," OptimumPath referred to an attached

4

Exhibit A, a claims chart that provided no indication as to

5

whether it asserted literal or doctrine of equivalents

6
7

Patent L.R. 3-1(e).

Under the

infringement with respect to each limitation of each of its
asserted claims.

Thus, OptimumPath did not expressly invoke the

8
9

doctrine of equivalents, as required by Patent Local Rule 3-1.

United States District Court
For the Northern District of California

10

Nevertheless, OptimumPath asserts that Defendants were

11

sufficiently notified of its equivalency claims through its

12

disclosure under the heading Patent Local Rule 3-1(c).

13

OptimumPath stated that its

14
15
16
17
18

There,

disclosures pursuant to Patent L.R. 3-1(c) are set
forth in the chart as Exhibit A. For purposes of
infringement of the '281 Patent and the disclosure
requirements of L.R. 3-1(c), OptimumPath asserts that
the Accused Instrumentalities all function in the same
or substantially similar manner and include the same
or substantially similar components.

19

OptimumPath contends that this catch-all statement preserved its

20

claims based on the doctrine of equivalents.

21
22
23
24

Courts in this district, however, have strictly applied
Patent Local Rule 3-1(e).

Rambus Inc. v. Hynix Semiconductor

Inc., 2008 WL 5411564, *3 (N.D. Cal.) (holding that plaintiff's
failure to comply with Patent Local Rule 3-1(d), the predecessor

25
26

rule to Rule 3-1(e), "provides ample, alternative justification

27

for dismissing Rambus's claims of infringement under the doctrine

28

of equivalents"); MEMC Electronic Materials v. Mitsubishi
18

1

Materials Silicon Corp., 2004 WL 5363616, *4-6 (N.D. Cal.)

2

(precluding reliance on the doctrine of equivalents and barring

3

related expert testimony because plaintiff failed to disclose such

4

claims as required by Patent Local Rule 3-1(d)).

5

local rules were adopted by this district in order to give

6
7

"The patent

infringement contentions and claim charts more 'bite.'"

MEMC

Electronic, 2004 WL 5363616 at *4.

8
9

Thus, judges of this court have rejected plaintiffs' attempts

United States District Court
For the Northern District of California

10

to assert claims under the doctrine of equivalents with blanket

11

statements.

12

Rules require a limitation-by-limitation analysis, not a

13

boilerplate reservation."); MEMC Electronic, 2004 WL 5363616 at *5

14

("This blanket statement does not identify where each element of

15

Rambus, 2008 WL 5411564 at *3 ("The Patent Local

each asserted claim is found within each wafer and does not point

16
17
18

out each element of each asserted claim that MEMC claims is
present under the doctrine of equivalents.").

Here, OptimumPath

19

also relies on a blanket statement, asserting substantial

20

similarities as to the instrumentalities, but failing to link

21

those similarities to particular claims or limitations within the

22

'281 patent.

23
24

This language falls short of the requirements of

Patent Local Rule 3-1(e).

Accordingly, OptimumPath's reliance on

the doctrine of equivalents is barred.

Genentech, Inc. v. Amgen,

25
26

Inc., 289 F.3d 761, 773-74 (2002).

27

Even if the Court were to consider OptimumPath's arguments

28

under the doctrine of equivalents, OptimumPath fails to produce
19

1

sufficient evidence of infringement.

The parties agree on two

2

tests to determine equivalence--the "insubstantial difference

3

test," and the "function-way-result" test.

4

accused product is equivalent to a claim limitation if the

5

differences between the two are 'insubstantial' to one of ordinary

6
7

skill in the art."

"An element in the

Seafoss v. Pioneer Consol. Corp., 374 F.3d

1142, 1150 (Fed. Cir. 2004).

"Under the function-way-result test,

8
9

one considers whether the element of the accused device at issue

United States District Court
For the Northern District of California

10

performs substantially the same function, in substantially the

11

same way, to achieve substantially the same result, as the

12

limitation at issue in the claim."

13

that it applies the insubstantial differences test, and "[i]n

14

appropriate cases" the function-way-result test "offers additional

15

The Federal Circuit has stated

guidance on the question of equivalence."

Dawn Equipment Co. v.

16
17
18
19
20
21
22
23
24

Kentucky Farms, Inc., 140 F.3d 1009, 1015-16 (Fed. Cir. 1998).
The Supreme Court has not ruled on which test provides the better
approach.

Instead the Court has explained,

In our view, the particular linguistic framework used
is less important than whether the test is probative
of the essential inquiry: Does the accused product or
process contain elements identical or equivalent to
each claimed element of the patented invention?
Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S.
17, 40 (1997).

25
26

Dr. Dahlberg states in her report that an integrated wireless

27

card is equivalent to a separate, removable wireless card because

28

it performs the same function, in substantially the same way, and
20

1

achieves the same result, by essentially allowing network-capable

2

devices to access the network through a wireless connection.

3

Briggs Decl., Ex. I, Dahlberg Dep. at 93:18-97:17.

4

report, however, does not establish equivalency in another

5

important regard.

6
7

Dr. Dahlberg's

It is undisputed that integrated wireless

chipsets cannot be removed from an internal motherboard without
causing damage, and thus the removable wireless cards offer the

8
9

distinct advantage of permitting upgrades, repairs and

United States District Court
For the Northern District of California

10

modifications, rendering the wireless provisioning device more

11

adaptable.

12

¶ 90.

13

that is one of the defining characteristics of the wireless

14

provisioning device.

15

Declaration of Dr. Nicholas Bambos, (Bambos Decl.)

The ability to add or remove cards provides flexibility

'281 patent at 9:63-10:2.

Because

OptimumPath has not produced evidence to establish the equivalence

16
17
18

of this element of the accused devices, the Court summarily
adjudicates that the devices do not infringe the '281 patent under

19

the doctrine of equivalents.

20

III. Invalidity

21
22
23

Defendants assert that three prior art devices invalidate the
'281 patent by anticipation or obviousness.
Title 35 U.S.C. § 102 establishes the various grounds for

24
25
26

invalidation of patents based on anticipation by prior art.

The

defense of anticipation requires "the presence in a single prior

27

art disclosure of all elements of a claimed invention arranged as

28

in the claim.'"

Therasense, Inc. v. Becton, Dickinson and Co.,
21

1

593 F.3d 1325, 1333 (Fed. Cir. 2010) (quoting Transclean Corp. v.

2

Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002)).

3

Section 102(a) provides that a claimed invention cannot be

4

validly patented if it was known, in use, patented, or described

5

in a printed publication anywhere in the world, before the

6
7

patentee's date of invention.

35 U.S.C. § 102(a).

To invalidate a patent under section 102(b), an invention

8
9

must have been "patented or described in a printed publication in

United States District Court
For the Northern District of California

10

this or a foreign country or in public use or on sale in this

11

country, more than one year prior to the date of the application

12

for the patent in the United States."

35 U.S.C. § 102(b).

13

Section 102(g) "provides that an applicant is not entitled to

14

a patent if 'before such person's invention thereof, the invention

15

was made in this country by another, who had not abandoned,

16
17
18

suppressed, or concealed it.”

Apotex Corp. v. Merck & Co., Inc.,

507 F.3d 1357, 1359 (Fed. Cir. 2007) (quoting 35 U.S.C. § 102(g)).

19

If the requirements for an anticipation defense are not

20

satisfied, obviousness provides another theory for invalidating a

21

patent.

22
23
24
25
26

Title 35 U.S.C. § 103(a) provides,

A patent may not be obtained though the invention is
not identically disclosed or described as set forth in
section 102 of this title, if the differences between
the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would
have been obvious at the time the invention was made
to a person having ordinary skill in the art to which
said subject matter pertains.

27
28
22

1

To avoid being obvious, a patent must be "more than the

2

predictable use of prior art elements according to their

3

established functions."

4

398, 417 (2007).

5

considered as a whole and the claims must be considered in their

6
7

entirety."

KSR In't Co. v. Teleflex Inc., 550 U.S.

To determine obviousness, "the invention must be

Kahn v. General Motors Corp., 135 F.3d 1472, 1479

(Fed. Cir. 1998).

8
9

United States District Court
For the Northern District of California

10

A. ISP Base Station
Defendants assert that certain ISP Base Station prior art,

11

that corresponding to 1998 and 1999 invoices, contained every

12

limitation of claims 1, 2 and 9 through 12, except for a removable

13

network card and chassis, if those terms are construed as

14

Defendants propose.

15

However, Defendants contend that the

removable network card and slotted chassis would have been obvious

16
17
18

to one of ordinary skill in the art because other versions of the
ISP Base Stations included removable network cards.

Defendants

19

further argue that the other two asserted claims--6 and 13--are

20

obvious because it would have been obvious to combine the ISP Base

21

Station with a Linux operating system.

22
23
24

OptimumPath's sole argument that the ISP Base Station does
not invalidate the asserted claims of the '281 patent is that the
device performed only a bridging function, not a routing function,

25
26

and therefore did not include the patent's claimed channeling

27

controller.

This argument fails in light of the Court's

28

construction of the channeling controller, as a component which
23

1

"channels the inbound packets based on the inbound address

2

information and constructs the outbound packets and channels the

3

outbound packets with the outbound address information."

4

addition, Defendants present evidence the ISP Base Station did

5

perform the routing function, and OptimumPath presents no evidence

6
7

to the contrary.

In

Doug Karl's testimony and corroborating evidence

supports that the ISP Base Station used RIP.

OptimumPath does not

8
9

dispute, and its own expert agrees, that RIP is a dynamic routing

United States District Court
For the Northern District of California

10

protocol.

Dahlberg Report, ¶ 21.

Therefore, the Court grants

11

Defendants' motion for summary adjudication that the ISP Base

12

Station invalidates the asserted claims of the '281 patent.

13

B. Apple AirPort

14

Defendants next argue that the Apple AirPort prior art

15

invalidates all of the asserted claims of the '281 patent due to

16
17
18
19

anticipation under sections 102(b) and (g), and obviousness under
section 103(a).
With respect to timing, OptimumPath disputes only that the

20

Apple AirPort was prior art within the meaning of section 102(b).

21

The relevant portion of section 102(b) states that a patent is

22

invalid if the claimed invention was on sale more than one year

23
24

prior to the date the patent application was filed.
§ 102(b).

35 U.S.C.

OptimumPath points out the absence of evidence as to

25
26

when the Apple AirPort was first sold or shipped.

However, a

27

claimed invention is considered "on sale" within the meaning of

28

section 102(b) when it is offered for sale.
24

Scaltech, Inc. v.

1

Retec/Tetra, LLC, 269 F.3d 1321, 1325 (Fed. Cir. 2001).

The

2

sealed evidence upon which Defendants rely shows that the AirPort

3

was on sale within the meaning of § 102(b) more than one year

4

before the application for the '281 patent was filed.

5
6
7

Defendants argue that the '281 patent is obvious in light of
the Apple Airport.

First, Defendants argue that the Apple AirPort

contains every limitation of claims 1 and 9 through 12, except for

8
9

a removable network card and chassis as Defendants construe those

United States District Court
For the Northern District of California

10

terms.

11

of ordinary skill in the art to use a removable network card in

12

the Apple AirPort because removable network cards at the time were

13

widely available and were included in some versions of Karl's ISP

14

Base Station.

15

Defendants contend that it would have been obvious to one

Similarly, Defendants assert that claims 6 and 13 were

16
17
18

rendered obvious by the AirPort because the Linux operating system
was freely available as a fully functional "off-the-shelf"

19

operating system and a person of ordinary skill would have

20

recognized that combining it with the Linux operating system would

21

improve the device.

22
23
24

Finally, Defendants argue that the Apple AirPort renders
obvious claim 2 of the '281 patent, which claims "[t]he wireless
provisioning device of claim 1, wherein the channeling controller

25
26

routes the outbound packets."

'281 patent at 13:27-28.

Karl

27

testified to having sold hundreds of upgrades for the Apple

28

AirPort before September, 1999, which added the routing function
25

1

to the device.

The sealed testimony on which OptimumPath relies

2

does not create a material dispute as to the availability of these

3

upgrades for the Apple AirPort at that time.

4
5
6
7

OptimumPath's argument that the Apple AirPort does not render
obvious the asserted claims of the '281 patent relies on two
purported distinctions between the patent and the Apple AirPort.
First, OptimumPath argues that the AirPort did not perform a

8
9

routing function, and therefore lacked a channeling controller.

United States District Court
For the Northern District of California

10

This argument, however, is unavailing because the Court's

11

construction of channeling controller does not require that it

12

must perform a routing function.

13

did not perform a routing function, that is not sufficient to show

14

that it did not include the channeling controller element of

15

Thus, even if the Apple AirPort

claims 1 and 13 of the '281 patent.

Furthermore, if the

16
17
18

channeling controller were construed to require that it perform a
routing function, as explained earlier, adding such a function

19

would have been obvious.

20

the channeling controller fails to establish that the asserted

21

claims of the '281 patent were not obvious in the light of the

22

Apple AirPort.

23
24

Therefore, OptimumPath's argument as to

Second, OptimumPath argues that the AirPort did not render
obvious the asserted claims of the patent because the

25
26

authenticator, under its proposed construction, includes a no-

27

rebooting requirement.

However, Court has construed the

28

authenticator without the no-rebooting requirement.
26

Therefore,

1

even if the AirPort required rebooting, this does not show that it

2

did not contain the authenticator element of the '281 patent.

3

addition, Defendants have produced evidence that the Apple AirPort

4

did not require rebooting, and OptimumPath has failed to submit

5

any contrary evidence that would demonstrate a dispute of fact as

6
7

to this issue.

In

Therefore, the Court finds that the AirPort

invalidates the asserted claims of the '281 patent due to

8
9

obviousness.

United States District Court
For the Northern District of California

10

C. Täht/Retkowski System

11

Finally, Defendants argue that the asserted claims of the

12

'281 patent are invalid as anticipated by the Täht/Retkowski

13

System.

14

has found that the ISP Base Station and Apple AirPort invalidate

15

The Court need not resolve this issue because the Court

the asserted claims of the '281 patent.

16
CONCLUSION

17
18

The Court construes the following terms in the '281 patent.

19

A "wireless card" is a removable printed circuit board having an

20

electrical connector that allows it to connect to a corresponding

21

electrical connector in the chassis that is separate from the

22

network card(s) and transmits and receives data using a wireless

23
24

connection.

The Court construes a "network card" as a removable

printed circuit board having an electrical connector that allows

25
26

it to connect to a corresponding electrical connector in the

27

chassis that is separate from the wireless card(s) and transmits

28

and receives data using a wired connection.
27

The Court construes

1

the term "chassis" as a casing having slots for removable network

2

and wireless cards.

3

channels inbound packets based on inbound address information and

4

constructs outbound packets and channels the outbound packets with

5

outbound address information.

6
7

A "channeling controller" is a component that

"Routes" requires dynamic routing.

An "authenticator" is a mechanism for authenticating the identity
of a device or user.

8
9

The Court GRANTS Defendants' motion for summary judgment on

United States District Court
For the Northern District of California

10

OptimumPath's claim for literal infringement, and Defendants'

11

motion to preclude OptimumPath's claims based on the doctrine of

12

equivalents.

13

infringe under the doctrine of equivalents.

14

Defendants' motion for summary judgment that asserted claims 1, 2,

15

The Court also finds that the accused devices do not
The Court GRANTS

6, and 9 through 13 of the '281 patent are invalidated by the ISP

16
17
18

Base Station prior art and the Apple AirPort prior art.
pretrial conference and trial dates are vacated.

The

The clerk shall

19

enter judgment in Defendants' favor, and Defendants shall recover

20

costs from Plaintiffs.

21

IT IS SO ORDERED.

22
23
24

Dated: 4/12/2011

CLAUDIA WILKEN
United States District Judge

25
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27
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28