T.M. Patents, L.P. et al v. Cisco Systems, Inc.
Filing
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Judge William G. Young: ORDER entered. MEMORANDUM AND ORDER: The Court therefore GRANTS the Defendant Cisco's motion for summary judgment of non-infringement, ECF No. 106 On all other grounds, summary judgment of non-infringment is DENIED.(Paine, Matthew)
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
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Plaintiffs,
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v.
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CISCO SYSTEMS, INC.
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Defendant.
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T.M. PATENTS, L.P., and
T.M. CREDITORS LLC,
CIVIL ACTION
NO. 12-11418-WGY
MEMORANDUM AND ORDER
YOUNG, D.J.
I.
November 14, 2013
INTRODUCTION
In the present case, plaintiffs T.M. Patents, L.P. and T.M.
Creditors LLC (collectively, “T.M. Patents”) charge the
defendant, Cisco Systems, Inc. (“Cisco”), with infringement of
U.S. Patent No. 5,212,773 (“the ‘773 Patent”), titled “Wormhole
Communications Arrangement for Massively Parallel Processor.”
This memorandum addresses three motions brought by the parties:
(1) a motion for summary judgment of non-infringement brought by
Cisco, (2) a motion for partial summary judgment brought by
Cisco to limit damages, and (3) a cross-motion for partial
summary judgment brought by T.M. Patents.
A.
Procedural Posture
1
T.M. Patents, the owner of the ‘773 Patent, commenced this
litigation against Cisco in August 2012. See Compl. & Jury
Demand, ECF No. 1. This Court held a Markman hearing on June 7,
2013, during which it construed certain claims in a decision
orally delivered from the bench. See Tr. Markman Hr’g 27:928:16, ECF No. 67 (“Markman Tr.”). The Court entered an order
memorializing the constructions on June 18, 2013. Order
(“Markman Order”), ECF No. 69.
Shortly thereafter, Cisco filed its first motion for
summary judgment, requesting partial summary judgment to limit
the scope of damages based on T.M. Patents’ alleged failure to
comply with federal statutory marking requirements and provide
Cisco with actual notice of infringement before the expiration
of the patent-in-suit. Cisco Sys. Inc.’s Notice Mot. & Mot.
Summ. J., ECF No. 73; Def. Cisco Sys. Inc.’s Mot. Partial Summ.
J. Limit Damages, ECF No. 74. T.M. Patents responded by crossmoving for partial summary judgment on the marking issue, asking
the Court to rule that T.M. Patents did not violate its
obligation to mark devices practicing the ‘773 Patent. Pls. T.M.
Patents, L.P. & T.M. Creditors LLC’s Notice Cross-Mot. Partial
Summ. J. Marking Issue, ECF No. 109; Pls. T.M. Patents, L.P. &
T.M. Creditors LLC’s Cross-Mot. Summ. J. Marking Issue, ECF No.
112. Overlapping with this activity, Cisco moved for summary
judgment of non-infringement. Cisco Sys. Inc.’s Notice Mot. &
2
Mot. Summ. J. Non-Infringement, ECF No. 106; Def. Cisco Sys.
Inc.’s Mot. Summ. J. Non-Infringement (“Def.’s Non-Infringement
Mem.”), ECF No. 107. The Court heard oral arguments on all three
motions on October 10, 2013, and took the case under advisement.
Elec. Clerk’s Notes, ECF No. 136; see Tr. Mot. Hr’g, ECF No.
140. The parties subsequently entered alternative dispute
resolution proceedings held before Magistrate Judge Bowler, but
her report was that further settlement efforts would be unlikely
to be productive. See Report Re: Reference for Alternative
Dispute Resolution, ECF No. 160.
B.
Undisputed Facts
1.
U.S. Patent No. 5,212,773
The patent in suit, “Wormhole Communications Arrangement
for Massively Parallel Processor,” teaches a system for
transmitting computer messages across a processor network using
wormhole routing, also referred to as cut-through routing or
cut-through switching. Pls.’ T.M. Patents, L.P. & T.M. Creditors
LLC’s Opening Claim Construction Br. U.S. Patent Nos. 5,212,773
(“Pls.’ Opening Markman Br.”) 2, ECF No. 46.1
Wormhole routing is a method of transmitting messages
quickly from one network device to another. When a message
1
The internet itself faces a roughly analogous
communications challenge. For a lucid, understandable
description of the issue, see Molly K. Raskin, No Better Time
17-19, 56-60 (2013).
3
travels across a network, it passes through network nodes,
computer devices like message routers or servers, which read the
message’s destination address and forward the message on to the
next appropriate way station in the network. See T.M. Patents,
L.P. v. International Bus. Mach. Corp., 72 F. Supp. 2d 370, 392
(S.D.N.Y. 1999) (“IBM Markman”). Destination information is
contained in a message’s head and is the first part of a message
to arrive at any network node. See Pls.’ Opening Markman Br. 2.
When a message router uses wormhole routing, it decodes the head
of a message and begins forwarding before it has received the
rest of the message. Id. This represents an improvement over
prior art, a store-and-forward system in which a message would
not be forwarded until it had been received in its entirety. IBM
Markman, 72 F. Supp. 2d at 392-93.
At present, only infringement of Claims 1 and 9 of the ‘773
patent are in dispute. See Pls. T.M. Patents, L.P. & T.M.
Creditors LLC’s Am. Supplemental Infringement Disclosures,
App’x. A, Pls.’ Supplemental Infringement Disclosures – U.S.
Patent No. 5,212,773 (“Am. Supplemental Infringement
Disclosures”), ECF No. 84-1; Def.’s Non-Infringement Mem. 3.
Claim 1 teaches “[a] computer system comprising a plurality of
processing elements and a messaging router” that uses a
particular process to achieve wormhole routing. Am. Supplemental
Infringement Disclosures at 1. Claim 9 teaches “[a] message
4
router for connection to a plurality of processing elements to
form a computer system” which uses the same wormhole routing
process. Id. at 8.
2.
The Accused Devices
T.M. Patents identifies two Cisco products that allegedly
infringe the ‘773 patent: the Nexus 5000 Series switch2 (“Nexus
5000”) and the UCS 6100 Series Fabric Interconnect (“UCS 6100”).
See Pls.’ Mem. Law. Opp’n Def. Cisco Sys. Inc.’s Mot. Summ. J.
(“Pls.’ Opp’n”) 2, ECF No. 126. The Nexus 5000 is a message
router that transmits messages between processing elements. See
Decl. Daniel M. Forman Supp. Cisco Sys. Inc.’s Mot. Strike
Portions Expert Report Bradley C. Kuszmaul, Ex. E, Expert Report
Bradley C. Kuszmaul (“Pls.’ Expert Report”) 25, ECF No. 102-5.
The UCS 6100 is a more sophisticated message router that at
least sometimes is sold as part of a Cisco Unified Computing
System. See Pls.’ Opp’n, Ex. B., E-mail from Lana Shiferman to
Stephen J. Driscoll & Daniel M. Forman, ECF No. 126-2. The
Unified Computing System is a package of Cisco products,
including processing elements, designed to operate seamlessly
and at a high level of performance when connected in a single
2
Cisco refers to the Nexus 5000 as a “switch,” but it is
more appropriate here to call the device a router. Although it
is common to call certain types of message routers “switches,”
the term “switch” in the context of this memorandum refers to
the component of a routing device that internally routes
messages between the device’s input and output circuits.
5
network. See Servers – Unified Computing, http://www.cisco.com/
en/US/products/ps10265/index.html (last visited Nov. 13, 2013).
The UCS 6100 is “the management and communication backbone” for
the Unified Computing System. See Cisco UCS 6100 Series Fabric
Interconnects, http://
www.cisco.com/en/US/products/ps10276/index.html (last visited
Nov. 13, 2013). With one exception, T.M. Patents’ infringement
allegations do not distinguish between the Nexus 5000 and UCS
6100, because both products use identical technology internally
to route messages from their input circuits to their output
circuits. See “Def.’s Non-Infringement Mem.” 10, ECF No. 107.;
Pls.’ Expert Report 25. Thus, unless the products’
distinguishing features are relevant to the issue being decided,
the Court will refer to both products as one accused device.
When a message is sent from a processing element to the
accused device, the message arrives at the device’s input
circuit, referred to by Cisco as the Gatos ASIC. Def.’s NonInfringement Mem. 10. The head of the arriving message contains
a destination MAC address designating the message’s final
intended destination. See id. The Gatos ASIC uses an internal
lookup table to translate the MAC address into an egress port
number that corresponds to a specific egress port, or output
port, of the accused device. Id. The message must exit the
6
device through the designated output port in order to follow the
correct route to its final destination. See id. at 8, 10.
The egress port number is prepended to the message, and the
message is sent to the next part of the device, the Altos ASIC.
See id. at 11; Pls.’ Opp’n 2. Here, Altos’s pre-processing
element reads the message’s egress port number and releases the
message to the Altos crossbar fabric. Def.’s Non-Infringement
Mem. 11. The crossbar fabric is key to this dispute because it
is the switch component of the accused device, comprising a
matrix of interconnected pathways linking all of the device’s
input circuits to all of its output circuits. See Pls.’ Expert
Report 29-30. When the message travels through the crossbar, it
self-routes along an established path to the appropriate egress
port and then exits the accused device, traveling on to the next
processing element in the network. Id. at 29.
3.
Previous Litigation
The ‘773 patent has been the subject of previous litigation
at least twice. In 2006, T.M. Patents brought a suit in the
Southern District of New York against Sun Microsystems, Inc. for
infringement of several patents, including the ‘773 patent. T.M.
Patents, L.P. v. Sun Microsystems, Inc., 06-cv-13558-WGY, ECF
No. 1-7. The case was eventually assigned to this Court, sitting
by designation in the Southern District of New York, and the
7
parties settled before trial in 2011. See T.M. Patents, L.P. v.
Sun Microsystems, Inc., 10-cv-12115-WGY, ECF No. 78.
More importantly for the purposes of this memorandum, T.M.
Patents was also the plaintiff in an infringement lawsuit
brought against International Business Machines Corporation
(“IBM”) in the Southern District of New York in 1999. See T.M.
Patents, L.P. v. International Bus. Mach. Corp. (“IBM Summ.
J.”), 121 F. Supp. 2d 349 (S.D.N.Y. 2000). In that case, Judge
Colleen McMahon had occasion to construe several terms of the
‘773 patent relevant to this Court’s current analysis. See IBM
Markman, 72 F. Supp. 2d at 392-98. After claim construction and
considerable litigation, Judge McMahon granted summary judgment
for IBM on two separate grounds: first, that T.M. Patents did
not have standing to sue, and second, that IBM’s products did
not infringe on the ‘773 patent. IBM Summ. J., 121 F. Supp. 2d
at 352-53.
II.
ANALYSIS
A.
Summary Judgment Standard
“Summary judgment is as available in patent cases as in
other areas of litigation.” Continental Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1265 (Fed. Cir. 1991) (citing
Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774,
778-79 (Fed. Cir. 1983)). Summary judgment is proper if the
moving party shows, based on the materials in the record, that
8
“there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” Fed. R. Civ.
P. 56(a). An issue of material fact is genuine “if the evidence
is such that a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248 (1985). Whether a fact is material or not depends on the
substantive law of the case, and only factual disputes that
might affect the outcome of the suit can properly preclude
summary judgment. Id.
When deciding a motion for summary judgment, the Court
views the record “in the light most favorable to the non-moving
party” and draws all reasonable inferences in favor of the
respondent. Pineda v. Toomey, 533 F.3d 50, 53 (1st Cir. 2008).
Summary judgment must be granted if, after adequate time, the
non-moving party “fails to make a showing sufficient to
establish the existence of an element essential to that party’s
case, and on which that party will bear the burden of proof at
trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
B.
Literal Infringement
In its motion for summary judgment of non-infringement,
Cisco raises several arguments distinguishing its products from
the claims of the ‘773 patent. It is necessary to address only
one of these arguments at length in this memorandum: Cisco
contends that its products do not infringe because they do not
9
read on the claim limitation requiring a switch that establishes
and maintains a cut-through path from an input circuit to an
output circuit “for each message received” by the device. See
Def.’s Non-Infringement Mem. 15-19. The Court agrees with this
position, for the reasons set out below.
1.
Standard of Review
Determination of patent infringement entails a two-step
process: first, the relevant patent documents are studied to
determine the scope and meaning of the claims asserted, and
second, the properly construed claims are compared to the
accused products. See Becton Dickinson & Co. v. C.R. Bard, Inc.,
922 F.2d 792, 796 (Fed. Cir. 1990) (citing Caterpillar Tractor
Co. v. Berco, S.P.A., 714 F.2d 1110, 1114 (Fed. Cir. 1983)).
A
plaintiff will prevail in a patent infringement suit only if
“every limitation set forth in a claim [is] found in an accused
product or process exactly or by a substantial equivalent.” Id.
at 796 (citing Corning Glass Works v. Sumitomo Elec. U.S.A.,
Inc., 868 F.2d 1251, 1259 (Fed. Cir. 1989)).
The first step of patent construction is matter of law for
a judge, not a jury, to decide. Markman v. Westview Instruments,
Inc., 517 U.S. 370, 372 (1996). When the parties do not dispute
relevant facts but instead dispute the construction of a claim,
“the question of literal infringement collapses into one of
claim construction and is thus amenable to summary judgment.”
10
MBO Labs., Inc. v. Becton, Dickinson & Co., 783 F. Supp. 2d 216,
220-21 (D. Mass. 2011) (Stearns, J.), aff'd, 467 Fed. App’x 892
(Fed. Cir. 2012) (citing Athletic Alts., Inc. v. Prince Mfg.,
Inc., 73 F.3d 1573, 1578 (Fed. Cir. 1996)).
2.
Previous Claim Construction
During the claim construction process that took place last
June, the Court construed a number of claim terms in Claims 1
and 9 at the request of the parties.3 See Markman Order. At this
stage of the litigation, however, some constructions remain
disputed, giving the Court occasion to revisit two claim terms
that are relevant to its infringement analysis.
a.
“Once the Router Node Receives Enough of a
Message to Decode Its Address”
As stated earlier, wormhole routing represents an
improvement over the prior art of store-and-forward routing
because it enables devices to speed up message transmissions.
See IBM Markman, 72 F. Supp. 2d at 392. Accordingly, the timing
of events in a patented wormhole routing method is important to
the method’s novelty. Last June, the Court was asked to construe
claim language relating to when the claimed switch must
establish a path for a message to travel to the appropriate
3
The Court heard arguments relating to the construction of
Claim 2, but “decline[d] to put any gloss on claim 2 because the
plain and ordinary meaning of the words is appropriate.”
Markman Order 2.
11
output circuit. The Court determined that “the paths must be
established once the router node receives enough of a message to
decode its address.” Markman Order ¶ 3.
In subsequent briefing materials and at oral argument, the
parties have disputed the scope of the term “once.” See, e.g.,
Def.’s Non-Infringement Mem. 15-17; Pls.’ Opp’n. 11-12; Tr. Mot.
Hr’g 7:16-8:11, ECF No. 140. The Court spoke clearly on this
issue, however, during the Markman hearing.4 The claimed switch
does not need to establish a message’s path immediately after
receiving enough information to decode its address, but the
switch must establish a path before the full message has been
received. Otherwise, the switch is not using cut-through
switching to route the message.
b.
“For Each Message Received”
The Court was also asked to construe the phrase “for each
message received by said input circuits” in the larger context
of the following claim language, found in Claims 1.B.iii and 9.C
4
Cisco asked the Court to construct a claim limitation
requiring the patented switch to establish a path “as soon as” a
message’s address is decoded, Markman Tr. 17:14-20:23, and the
Court declined to do so, id. at 25:18-25. The Court further
proposed adding language to its construction clarifying that the
patented switch must begin forwarding “before the whole message
has arrived,” id. at 15:6-7, and T.M. Patents confirmed that
“what the wormhole switching is about is forwarding the message
before the end is received,” id. at 20:25-21:1. Cisco ultimately
persuaded the Court to refrain from adding such language, but
only on the ground that it was superfluous. See id. at 19:1121:10.
12
and reproduced here with relevant phrases emphasized for
clarity:
[A] switch connected to said input circuits for,
for each message received by said input circuits,
decoding one address element of the message to
identify therefor an output circuit, said switch
establishing a path for said message between the
input circuit which received the message and the
identified output circuit to facilitate the
transfer of message elements of said message
therebetween, said switch maintaining the path
until the last of the serially-received message
elements for the message have been transferred to
the output circuit.
U.S. Patent No. 5,212,773 claim 1.B.iii (filed Feb. 22, 1991).
Claim 9.C is identically phrased. U.S. Patent No. 5,212,773
claim 9.C (filed Feb. 22, 1991).
During claim construction, the parties disputed whether the
phrase “for each message received” modifies all three gerunds in
the claim term: decoding, establishing, and maintaining. See,
e.g., Pls.’ Opening Markman Br. 6-8; Cisco Sys., Inc.’s Opening
Claim Construction Br. (“Def.’s Opening Markman Br.”). 8-13, ECF
No. 47. This Court ruled that it does, meaning that a switch
practicing the ‘773 patent must not only decode the address
elements of each message received, the switch must also
establish and maintain a path for the message to travel directly
from an input circuit to an output circuit. See Markman Order ¶
2.
13
To illustrate the scope the Court intended to give to this
construction, consider that when this same language was the
subject of litigation before Judge McMahon in the IBM case,
accused products in that case did not practice this claim
limitation. That is, then-defendant IBM’s “post-Springwood”
products did not establish or maintain a path to the output
circuit for each message, because IBM’s switches were designed
to sometimes “interleave chunks of different messages with each
other” as the messages traveled through the switch. IBM Summ.
J., 121 F. Supp. 2d at 375. As a result, message transmissions
crossing paths in the post-Springwood chips frequently
interrupted each other’s routes. Id. at 376. The ‘773 patent, as
this Court construes it, requires the switch to establish and
maintain dedicated paths in addition to decoding a message’s
destination information.
3.
The Construction of “Each”
While this construction lends some clarity to the issues at
bar, it is now apparent that the parties further dispute the
meaning of the term “each” in the phrase “for each message
received.” Although both parties have made statements suggesting
otherwise, see, e.g., Defs.’ Non-Infringement Mem. 15-16; Pls.’
Opp’n 8-9, none of the Court’s constructions during the Markman
hearing were primarily addressed to defining that term. The
14
Court’s infringement analysis regarding this claim language
cannot proceed until the word “each” is more directly construed.
a.
The Parties’ Arguments
Cisco would have the Court construe the term “each” to mean
“each and every” because it is, according to Cisco, consistent
with the term’s plain meaning. See Def. Cisco Sys., Inc.’s Reply
Supp. Mot. Summ. J. Non-Infringement (“Def.’s Reply) 2-3, ECF
No. 128. Adopting this construction would mean that without
exception, a device practicing the ‘773 patent must establish
and maintain a message’s path to the output circuit before the
full message is received by the device. Such a reading favors a
ruling of non-infringement because Cisco has identified four
scenarios when its devices, by design, do not establish or
maintain a path to the output circuit before the full message
has been received:
(1) The accused devices are designed to stall the routing
process when there is “contention” for an output port. See
Def.’s Non-Infringement Mem. 17. Output port contention, also
called message contention, occurs when a message is destined to
an output circuit that is already engaged by another message
transmission, or when multiple messages are destined to one
output circuit at the same time. Id. In these cases, the accused
products will buffer messages, temporarily holding some back so
that only one message travels along a path to a given output
15
circuit at a time. Id. This delay means that sometimes the
device has received the full message before a path is
established. Id.
(2) The default settings of the accused devices provide
that the device’s input circuits do not establish a path for any
message until at least 128 bytes of the message have been
received. Id. at 16. This threshold can be lowered to as few as
eighty bytes by user specification. Id. Thus, messages shorter
than eighty bytes, or shorter than the user-prescribed
threshold, are received by the device in their entirety before
any path is established. Id.
(3) When a message is transmitted to the accused devices
via certain high-performance technology, like Fiber Channel over
Ethernet or 1-gigabit Ethernet ports, the accused device
receives the full message before it has a chance to establish a
path. Id. at 17.
(4) When a message arrives at the device’s input circuits
in a corrupted state, or when a message satisfies the criteria
of a user-prescribed content filter, the accused devices drop
the message packet without ever establishing a path. Id.
T.M. Patents does not dispute that Cisco’s products
practice these features. It does, however, take the position
that “each” cannot be synonymous with “each and every” because,
it contends, the ‘773 patent is not limited to a device that
16
establishes a cut-through path in every conceivable
circumstance. See Pls.’ Opp’n 12-13. Indeed, the preferred
embodiment of the ‘773 patent discloses features that delay
establishing a path when there is output port contention and
that fail to establish any path when there is message
corruption. Id. at 13. The fact that the preferred embodiment
contemplates these “unusual situations” proves, id. at 11, on
T.M. Patents’ view, that the term “each” cannot mean that the
claimed device establishes a wormhole path for all messages
without exception. Id. at 8-9. By this logic, “each” is
effectively construed to mean “some.”
b.
The Meaning of “Each” in T.M. Patents v. IBM
The parties’ arguments in this case are similar, to say the
least, to the arguments considered by Judge McMahon more than a
decade ago. Some of the accused devices in that case, like
Cisco’s products, established cut-through paths for messages
except when there was output port contention. See IBM Summ. J.,
121 F. Supp. 2d at 375, 377 (describing IBM’s line of “preSpringwood” products). IBM argued that “each” ought mean “each
and every,” thus precluding its products from infringing, and
T.M. Patents argued that features disclosed in the ‘773 patent’s
preferred embodiment showed that “each” ought still admit of
some exceptions for unusual circumstances. Id. at 377-78.
17
Cisco has argued that under the doctrine of collateral
estoppel, T.M. Patents is bound by Judge McMahon’s construction
of the meaning of “each.” See, e.g., Def.’s Opening Markman Br.
9-11. In response, T.M. Patents contends that it is not estopped
by that decision because Judge McMahon’s decision was based not
only on a finding of non-infringement, but also on the
alternative and independent ground that T.M. Patents lacked
standing to sue, giving the Southern District of New York no
subject-matter jurisdiction over the suit. See Pls.’ Opening
Markman Br. 1 n.1.
Consistent with the statements this Court made from the
bench during the June Markman hearing, the Court declines to
rule that T.M. Patents is barred by collateral estoppel from
litigating these issues. See Markman Tr. 3:8-17. The Court will
follow, however, its established norm of deference to all
reasonable, previously rendered decisions. In light of the many
similarities between this case and IBM, Judge McMahon’s rulings
are especially persuasive to the Court.
Judge McMahon’s analysis of the phrase “for each message”
contained two key conclusions. First, she determined that the
claim language “for each message” is clear and unambiguous, and
nothing additional ought be read into it. IBM Summ. J., 121 F.
Supp. 2d at 378. Second, she concluded that “[r]eading ‘each’ as
‘some’ would . . . allow [T.M. Patents] to recapture certain
18
elements that it disclaimed in order to obtain allowance of the
‘773 patent.” Id. Judge McMahon examined the ‘773 patent’s
prosecution history and determined that after T.M. Patents’
initial patent application was rejected, it added the phrase
“for each message” to the claims that eventually became Claims 1
and 9 to “overcome the impact of prior art,” id. at 380, namely
a system in which the relevant switch established a cut-through
path to the output circuit for at least some messages. See id.
at 379-80. Given this pre-existing technology, Judge McMahon
reasoned that T.M. Patents’ invention must be limited to a
device in which the switch establishes a path to the output
circuit for all messages, even when those messages are
ultimately dropped or buffered. See id. at 380.
On these grounds, Judge McMahon found that IBM’s products
did not establish or maintain a cut-through path “for each
message received” and thus did not infringe on the ‘773 patent.
Id. at 379-80.
c.
The Meaning of “Each” in This Case
This Court concurs with Judge McMahon’s well-reasoned
analysis. First, the claim language is unambiguous and
additional meaning ought not be read into it. The concept of
“some” is not inherent in the plain meaning of “each,” and no
evidence has been given to suggest that a person having ordinary
skill in the art would think otherwise. This observation already
19
presents grounds sufficient for this Court to rule that a switch
component practicing Claims 1 and 9 of the ‘773 patent must
establish and maintain a wormhole path to an output circuit for
all of the messages the device receives, even when there is
message contention or some other exception.
Second, the prosecution history of the ‘773 patent
forecloses T.M. Patents from claiming ownership over inventions
that establish wormhole paths for fewer than all messages
received. T.M. Patents disputes Judge McMahon’s reading of the
patent history and explains that the phrase “for each message”
was not added to the claim language to move its patent
application to novel territory, but merely to clarify the scope
of its invention. See Pls.’ Opening Markman Br. 8; Tr. Mot. Hr’g
13:6-14:12. The Court has no reason to disbelieve this
explanation, but T.M. Patents’ motivation for inserting this
phrase does not bear on the plain meaning of “each,” nor does it
mitigate the undisputed fact that prior art taught a switch that
established cut-through paths for at least some messages. The
‘773 patent is not novel unless it teaches more than that.
The Court is moreover unswayed by the fact that the
preferred embodiment of the ‘773 patent contemplates message
contention, for the same reasons that this information did not
sway Judge McMahon. See IBM Summ. J., 121 F. Supp. 2d at 378.
The preferred embodiment deals with output port contention by
20
routing messages to a buffering system, described in Claim 2 of
the patent. See id. at 380. That the preferred embodiment
teaches more than one claim does not give this Court sufficient
reason to depart from its construction of the term “each” as it
is used in Claims 1 and 9.
Therefore, Cisco’s devices read on this part of the claim
only if the accused devices employ switch components that
establish a wormhole path to an output circuit for each message,
even when there is output port contention or other extenuating
circumstance. Given this construction, no reasonable fact-finder
could find that the accused devices infringe on this claim
limitation.
4.
Part-Time Infringement
T.M. Patents argues in the alternative that even if “each”
does not mean “some,” Cisco is still liable for part-time
infringement, occurring whenever the accused devices do
establish and maintain cut-through paths in the typical routing
circumstance. Pls.’ Opp’n 10-11. When T.M. Patents made this
same argument before Judge McMahon, she declined to follow it,
see IBM Summ. J., 121 F. Supp. 2d at 380, and this Court does
the same. The doctrine of part-time infringement is not
applicable to the claim limitations at issue here.
It is true that “[i]f a claim reads merely on a part of an
accused device, that is enough for infringement.” SunTiger, Inc.
21
v. Scientific Research Funding Grp., 189 F.3d 1327, 1336 (Fed.
Cir. 1999) (holding that the accused product, a sunglass lens,
could infringe even though only a pin-head sized portion of the
lens was alleged to practice the patented claims). Adding nonpatented features to an accused device does not dilute the
infringing character of the parts of the device which do read on
the claims. Id. (quoting Stiftung v. Renishaw P.L.C., 945 F.2d
1173, 1178 (Fed. Cir. 1991)). T.M. Patents points out that when
Cisco’s products buffer, drop, or otherwise delay message
routing, they employ “additional circuitry” and protocols to
deal with these circumstances. Pls.’ Opp´n 11. Thus, T.M.
Patents contends, the occurrence of these exceptions ought not
permit Cisco to avoid a ruling of infringement. Id.
This reasoning misconstrues the similarities between prior
case law and the present case. According to the case law, parttime infringement can occur when part of a device practices
every relevant claim limitation. See SunTiger, Inc, 189 F.3d at
1336. In the present case, the accused device practices every
relevant claim limitation only part of the time. That Cisco
installs additional features to deal with certain exceptions
does not change the fact that when those exceptions occur, the
switches in Cisco’s products do not establish a wormhole path.
The Federal Circuit has established that infringement can
occur when “an accused product . . . sometimes, but not always,
22
embodies a claimed method,” Bell Commc’ns Research, Inc. v.
Vitalink Commc’ns Corp., 55 F.3d 615, 622-23 (Fed. Cir. 1995),
but it has also recognized that this principle does not prevail
in contravention of a claim limitation. In IGC-Medical Advances,
Inc. v. USA Instruments, Inc., 34 F. App’x 715 (Fed. Cir. 2002),
a patent-holder sued its competitor for infringement, arguing in
part that an element of the competitor’s devices practiced an
arched shape protected by the patent in suit. Id. at 719. The
accused elements, however, only assumed an arched shape when in
active use, and the claim limitation taught a “fixed arched
shape.” Id. at 719-20. On these facts, the Federal Circuit ruled
the plaintiff’s part-time infringement argument to be “without
merit.” Id. at 720.
Similarly, the terms of the ‘773 patent preclude T.M.
Patents from claiming the benefit of the part-time infringement
doctrine. As construed by this Court, the relevant claim
limitations teach a switch that always establishes a wormhole
path. That this task is always performed is essential to the
limitation, given the plain meaning of “each” and because it is
well-established by this point that the ‘773 patent does not
protect systems which practice wormhole routing only some of the
time. A ruling of part-time infringement would permit T.M.
Patents to circumvent this key limitation on the scope of its
patent. No reasonable fact-finder could find that Cisco’s
23
products infringe on a part-time basis given the claim
limitations of the ‘773 patent.
III. CONCLUSION
On the ground that the accused devices do not read on the
claim limitation requiring a switch that establishes and
maintains a wormhole path for each message received by the
device, the Court therefore GRANTS the Defendant Cisco’s motion
for summary judgment of non-infringement, ECF No. 106. On all
other grounds, summary judgment of non-infringement is DENIED.
Because this ruling disposes of the Plaintiff’s case, the
Court need not and does not reach the merits of Cisco’s motion
for summary judgment to limit damages or T.M. Patents’ crossmotion for summary judgment on the marking issue.
SO ORDERED.
/s/ William G. Young_
WILLIAM G. YOUNG
DISTRICT JUDGE
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