Parity Networks, LLC v. Ericsson, Inc.
Filing
99
MEMORANDUM OPINION AND ORDER construing the disputed claim terms in United States Patent Nos. 7,468,978, 6,643,287, 6,763,394, 7,107,352, and 6,870,844 asserted in this suit by Parity Networks, LLC against Defendants. For ease of reference, the Court's claim interpretations are set forth in a table in Appendix A. Signed by Magistrate Judge K. Nicole Mitchell on 1/28/2019. (mjc, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
PARITY NETWORKS, LLC
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v.
HEWLETT PACKARD ENTERPRISE
COMPANY
PARITY NETWORKS, LLC
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v.
ERICSSON, INC.
CASE NO. 6:17-cv-683-JDK-KNM
CONSOLIDATED
CASE NO. 6:17-cv-526-JDK-KNM
CONSOLIDATED (Lead Case)
MEMORANDUM OPINION AND ORDER
This Memorandum Opinion and Order construes the disputed claim terms in United States
Patent Nos. 7,468,978 (“the ‘978 Patent”), 6,643,287 (“the ‘287 Patent), 6,763,394 (“the ‘394
Patent), 7,107,352 (“the ‘352 Patent”), and 6,870,844 (“the ‘844 Patent) asserted in this suit by
Parity Networks, LLC (“Plaintiff”) against Defendants. 1
On December 6, 2018, the parties presented oral arguments on the disputed claim terms at
a Markman hearing. For the reasons stated herein, the Court ADOPTS the constructions set forth
below.
1
The only remaining Defendant in this suit is Hewlett Packard Enterprise Company (“Defendant” or “HPE”).
1
BACKGROUND
Plaintiff alleges that Defendant infringes six asserted patents: the ‘978 Patent, the ‘287
Patent, the ‘394 Patent, the ‘352 Patent, the ‘844 Patent, and United States Patent No. 6,252,848
(“the ‘848 Patent) (collectively, “the asserted patents”). See Parity Networks, LLC v. Hewlett
Packard Enterprise Co., No. 6:17-cv-683, Dkt. No. 1 (E.D. Tex. Dec. 8, 2017). 2
APPLICABLE LAW
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to
define the patented invention’s scope. Id. at 1313–1314; Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the
claims, the specification, and the prosecution history. Phillips, 415 F.3d at 1312–13; Bell Atl.
Network Servs., 262 F.3d at 1267. Courts give claim terms their ordinary and customary meaning
as understood by one of ordinary skill in the art at the time of the invention in the context of the
patent as a whole. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
1368 (Fed. Cir. 2003).
Claim language provides substantial guidance in the Court’s construction of claim terms.
Phillips, 415 F.3d at 1314. “[T]he context in which a term is used in the asserted claim can be
highly instructive.” Id. Other claims, asserted and un-asserted, can provide additional instruction
because “terms are normally used consistently throughout the patent.” Id. The differences among
claims, such as additional limitations in dependent claims, can provide further guidance. Id.
2
Hereafter, references to docket numbers will refer to filings in the consolidated lead case Parity Networks, LLC v.
Ericsson, Inc., No. 6:17-cv-526 (E.D. Tex. Dec. 8, 2017).
2
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d, 517 U.S. 370,
116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996)). “[T]he specification ‘is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of
a disputed term.’” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)); see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
In the specification, a patentee may define his own terms, give a claim term a different meaning
than the ordinary meaning of the term, or disclaim or disavow the claim scope. Phillips, 415 F.3d
at 1316. While the Court generally presumes terms possess their ordinary meaning, statements of
clear disclaimer can overcome this presumption. See SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir. 2001). Further, this presumption
does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar
Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
The specification may resolve ambiguous claim terms “where the ordinary and accustomed
meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to
be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For example, “[a] claim
interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely, if ever,
correct.’” Globetrotter Software, Inc. v. Elan Computer Group Inc., 362 F.3d 1367, 1381 (Fed.
Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough the specification may aid
the court in interpreting the meaning of disputed language in the claims, particular embodiments
and examples appearing in the specification will not generally be read into the claims.” Constant
v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also Phillips, 415
F.3d at 1323.
3
The prosecution history is another tool to supply the proper context for claim construction
because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v.
LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent
applicant may define a term in prosecuting a patent”). The well-established doctrine of prosecution
disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings
disclaimed during prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.
Cir. 2003). The prosecution history must show that the patentee clearly and unambiguously
disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance.
Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002); see also Springs Window
Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir. 2003) (“The disclaimer . . . must
be effected with ‘reasonable clarity and deliberateness.’”) (citations omitted). “Indeed, by
distinguishing the claimed invention over the prior art, an applicant is indicating what the claims
do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d 1372, 1378–79 (Fed. Cir. 1988)
(quotation omitted). “As a basic principle of claim interpretation, prosecution disclaimer promotes
the public notice function of the intrinsic evidence and protects the public’s reliance on definitive
statements made during prosecution.” Omega Eng’g, Inc., 334 F.3d at 1324.
Although “less significant than the intrinsic record in determining the legally operative
meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on the
relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises
may help a court understand the underlying technology and the manner in which one skilled in the
art might use claim terms, but such sources may also provide overly broad definitions or may not
be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may
aid the Court in determining the particular meaning of a term in the pertinent field, but “conclusory,
4
unsupported assertions by experts as to the definition of a claim term are not useful.” Id. Generally,
extrinsic evidence is “less reliable than the patent and its prosecution history in determining how
to read claim terms.” Id.
ANALYSIS
I.
Agreed Terms
Twenty terms were originally identified as disputed in the Joint Claim Construction and
Prehearing Statement. See Doc. No. 35. In its Opening Claim Construction Brief, Plaintiff
withdrew one term from dispute due to its preliminary claim election and addressed the other
nineteen terms. See Doc. No. 66. In its Responsive Claim Construction Brief, HPE withdrew its
dispute of fourteen terms. See Doc. No. 75 at 19-20. Subsequently, in its Reply Brief, Plaintiff
asked the Court to adopt its constructions because HPE withdrew its disputes after Plaintiff filed
its Opening Claim Construction Brief. See Doc. No. 76. The parties’ chart of agreed terms
submitted with its Joint Claim Construction Statement presented these fifteen withdrawn claim
terms as “agreed” terms along with additional “agreed” terms. See Doc. No. 90-2. However, the
parties’ chart contained two different constructions for fourteen of the purportedly “agreed” terms.
See Doc. No. 90-2. Accordingly, the Court declines to construe those fourteen terms as no agreed
construction has been presented by the parties and constructions for these terms were not argued
in the Markman hearing.
The parties have submitted the following “agreed” terms for which agreed constructions
were also presented (Doc. No. 90-2):
5
a. The ‘287 Patent and the ‘978 Patent:
Term
Agreed Construction
“such that said value is also associated
with the source and destination nodes on
the first subnetwork”
Plain and ordinary meaning.
(The ‘287 Patent claims 1, 19)
b. The ‘394 Patent and the ‘352 Patent:
Term
Agreed Construction
“content addressable memory (CAM)”
Memory for which a lookup is done by
using the content one wishes to match
rather than addresses.
(The ‘394 Patent claims 4, 5, 6, 10, 11,
12, 16, 17, 18, 22, 23, 24)
(The ‘352 Patent claims 6, 7, 8, 14, 15,
16, 22, 23, 24, 30, 31, 32)
“egress pass/drop determinations”
Plain and ordinary meaning
(The ‘394 Patent claim 1)
(The ‘352 Patent claim 1)
“an egress port identity” / “egress port
number”
Plain and ordinary meaning
(The ‘394 Patent claim 1)
(The ‘352 Patent claim 1)
“lookup table”
Plain and ordinary meaning
(The ‘394 Patent claims 1, 7, 13, 19)
(The ‘352 Patent claims 2, 5, 11, 19, 27,
29)
“In a network packet router, an ingress
port, comprising:”
In a network packet router, an ingress port
comprising:
(The ‘394 Patent claim 7)
(The ‘352 Patent claim 9)
Preamble
Preambles are limiting
6
In light of the parties’ agreements on the proper construction of these terms, the Court
ADOPTS AND APPROVES these constructions.
II.
Disputed Terms in the ‘287 Patent and the ‘978 Patent:
The ‘287 Patent, filed on November 24, 1999, is entitled “Apparatus and Method for
Forwarding Packets on a Network having Multiple Links Between Nodes,” and issued on
November 4, 2003. The ‘978 Patent is a continuation application from the ‘287 Patent and is
entitled “Apparatus and Method for Forwarding Encapsulated Data Packets on a Network Having
Multiple Links Between Nodes.” The ‘978 Patent, filed November 4, 2003, issued on December
23, 2008, and bears a priority date of November 24, 1999. The ‘287 Patent and the ‘978 Patent
share a specification and are family members. See Doc. No. 66 at 7; Doc. No. 75 at 4. The Abstract
states:
An apparatus and method for encapsulating and forwarding packets on a network
are disclosed. The network can include a first subnetwork such as a virtual private
network connected to a larger public network such as the Internet. An encapsulating
header is attached to a packet to be transferred across the public network from a
source node on the private network to a destination node on the private network,
such that the packet can be transferred across the public network. The encapsulating
header includes a value which is derived from the private header on the packet used
to transfer the packet along the private network. The value is therefore associated
with a source/destination pair within the private network. The value can be derived
from the private network header is attached to the packet, it can be forwarded across
the public network. A logical operation such as a hash operation can be performed
on the public network header to select one of a plurality of possible paths on the
public network to forward the packet. As a result, each source/destination pair
within the private network will be associated with a path within the public network.
Traffic from the private network can therefore be distributed over multiple paths in
the public network, thus reducing or eliminating traffic congestion and overload.
7
a. “using the second header portion, selecting one of a plurality of paths on the second
subnetwork for forwarding of the packet” / “uses the second header portion, selecting
one of a plurality of paths on the second subnetwork for forwarding of the packet”
(Claims 1, 19 of the ‘287 Patent; Claims 1, 12 of the ‘978 Patent)
Plaintiff’s Proposed
Construction
Plain and ordinary meaning
or
“using the second header portion that
includes the value derived from the first
header portion, selecting one of a plurality
of paths on the second subnetwork for
forwarding of the packet”
Defendants’ Proposed
Construction
“using / uses the derived value in the
second header portion, selecting one of
a plurality of paths on the second
subnetwork for forwarding of the
packet, such that different paths are
selected for packets having different
derived values”
The parties initially disputed the construction of the above-referenced terms, but at the
Markman hearing the parties’ agreed to a construction where “at least the derived value in the
second header portion” is used to select a path. See Hearing Transcript (Doc. No. 96) at 28:8-29:2.
Therefore, the Court construes “using the second header portion, selecting one of a
plurality of paths on the second subnetwork for forwarding of the packet” to mean “using at
least the derived value in the second header portion, selecting one of a plurality of paths on
the second subnetwork for forwarding of the packet.” Likewise, the Court construes “uses the
second header portion, selecting one of a plurality of paths on the second subnetwork for
forwarding of the packet” to mean “uses at least the derived value in the second header
portion, selecting one of a plurality of paths on the second subnetwork for forwarding of the
packet.”
III.
Disputed Terms in the ‘394 Patent and the ‘352 Patent
The ‘394 Patent, filed on August 22, 2001, is entitled “Virtual Egress Packet Classification
at Ingress,” and issued on July 13, 2004. The ‘352 Patent is a continuation application from the
8
‘394 Patent and is entitled “Virtual Egress Packet Classification at Egress.” The ‘352 Patent, filed
July 12, 2004, issued on September 12, 2006, and bears a priority date of August 22, 2001. The
‘394 Patent and the ‘352 Patent share a specification and are family members. See Doc. No. 66 at
7; Doc. No. 75 at 10. The Abstract states:
In a network packet router having one or more ingress and egress ports, a method
is implemented at an ingress port for egress pass/drop determination for packets,
comprising the steps of (a) noting header combinations and values, and egress port
destination for incoming packets; (b) comparing the header combinations and
values with rule sets associated with the header combinations and values including
egress port identities, and (c) returning a determination of pass or drop for the
packet.
a. “a system implemented at an ingress port for egress pass/drop determination
for packets” (Claim 1 of the ‘394 Patent; Claim 1 of the ‘352 patent) 3
Plaintiff’s Proposed
Construction
Preamble is limiting
Defendants’ Proposed
Construction
Preamble is limiting.
Plain and ordinary meaning. Rejecting
proposal regarding “all egress pass/drop
determinations” and “all egress rules for
packets.”
“a system implemented at an ingress
port for all egress pass/drop
determinations for packets”
At issue is whether the claim terms should be construed to require “all” egress pass/drop
determinations for packets to be performed at the ingress port. Plaintiff first argues that the claim
language plainly shows that “pass/drop determinations” are implemented at an ingress port—not
“by” an ingress port. Doc. No. 66 at 17. Plaintiff points to the claim language that “specifies that
a system is implemented at an ingress port for egress pass/drop determinations.” Id. Plaintiff argues
that “[t]here is nothing in the claim that prevents or limits another system or subsystem at another
location from performing other determinations.” Id. at 18.
3
Plaintiff no longer asserts method claims for these patents. The only remaining disputed terms relate to the system
claims. See Hearing Transcript (Doc. No. 96) at 30:17-24. Plaintiff also agrees that the preambles of claim 7 and 9
of the ‘394 and ‘352 Patents, respectively, are limiting. Doc. No. 75 at 11 n. 3.
9
Plaintiff next argues that HPE’s construction requiring “all egress pass/drop determination
for packets” to be made at an ingress port adds an exclusion to the claim language where “there is
no such language of exclusion in the claim.” Id. This interpretation, Plaintiff argues, violates the
basic principle of patent law that “[m]odification by mere addition of elements of functions,
whenever made, cannot negate infringement without disregard of the long established, hornbook
law . . . .” Id. at 18 (quoting Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1482 (Fed. Cir.
1984)).
Plaintiff then notes that “[w]hile the specification does suggest that performing
determinations for egress ports at egress ports may . . . be ‘obviated,’ . . . it does not teach that
performing any determination at any port other than the specified ingress ports is never desirable.”
Id. (citing the ‘352 Patent at 2:56). Parity concludes that such a negative limitation may only be
made by a “clear disavowal of claim scope.” Id. (citing Advanced Micro Devices, Inc. v. LG Elecs.,
Inc., 2017 WL 1383271, at *11 (N.D. Cal. Apr. 18, 2017)).
In response, HPE argues that the “clear disavowal” in the ‘394 Patent’s intrinsic record
confirms that “all egress pass/drop determinations” must be performed at the ingress port. Doc.
No. 75 at 11. HPE contends the ‘394 Patent attempted to overcome issues in the prior art “by
moving all of the egress pass/drop determinations to the ingress port.” Id. (citing the ‘394 Patent
at 2:28-49). To support its argument, HPE points to a number of passages within the ‘394 Patent
that allegedly support its argument that “all pass/drop functionality” is only implemented at
ingress. See id. at 12 (citing Doc. No. 66-5 at 5:8-10 (“A further advantage for doing all pass/drop
functions at ingress is that no packets will then be processed in the router”); 5:11-12 (“implemented
only at ingress ports”); 5:21-22 (“This allows all functionality to be implemented at ingress ports”);
5:33-34 (“the ingress and egress lookups, both performed at the ingress ports”); 5:47-50 (“With an
10
ACL according to the present invention, all pass/drop functionality occurs at ingress, and the
mechanisms at egress are no longer necessary”)).
Thus, HPE concludes, “the intrinsic record confirms that the patentee limited the
performance of all pass/drop functionality to be performed exclusively at the ingress port.” Id.
(citing Poly-America v. API Industries, Inc., 839 F.3d 1131, 1136-1137 (Fed. Cir. 2016); Teleflex,
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002); Hormone Research Found.,
Inc. v. Genentech, Inc., 904 F.2d 1558, 1563 (Fed. Cir. 1990)). HPE finally argues that Plaintiff is
trying to recapture “through claim construction what it surrendered to the public.” Id. at 13 (citing
MarcTec, LLC v. Johnson & Johnson, 2010 WL 3075289, *2 (Fed. Cir. 2010); Mass Inst. Of Tech
v. Shire Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016)).
In its reply, Plaintiff argues that HPE has not shown “a clear and unmistakable disavowal.”
Doc. No. 76 at 6 (citation omitted). Plaintiff further argues that the specification passages cited by
HPE “simply state that it may be more advantageous to move egress determination to ingress, and
‘the mechanisms at egress are no longer necessary.” Id. (citing the ‘352 Patent at 5:56-60). Plaintiff
further contends that “[n]othing is claimed relative to a system implemented at an egress port, or
not implemented at an egress port, and the claims are not directed to what characteristics an egressassociated system may have.” Id. Plaintiff concludes “[p]erforming at least some but not all egress
determinations at ingress provides the benefit that at least some egress pass/ drop determinations
can be made at an ingress port by the system without passing these packets to the egress port for
pass/drop determinations . . . .” Id.
First, the plain language of Claims 1 of the ‘352 and ‘394 Patents does not include the
limitation that “all” pass/drop determinations must be made at the ingress port. The plain language
of the claims actually contemplates additional ports potentially with other functionality. Claim 1
11
of the ‘352 and ‘394 Patents provides that “[i]n a network packet router having one or more ingress
and egress ports, a system implemented at an ingress port for egress pass/drop determination for
packets . . . .” ‘352 Patent at 6:22-24; ‘394 Patent at 6:11-13 (emphasis added). The plain language
of the claims supports Plaintiff’s argument that the claims cover “what occurred at specific ingress
ports, not what does not occur at all other ports, including egress ports.” Doc. No. 66 at 18. Put
differently, the claim preambles contemplate having “one or more ingress and egress ports” within
the network packet router, and the claims are directed to “a system implemented at an ingress
port.” ‘352 Patent at 6:22-24; ‘394 Patent at 6:11-13.
Second, Plaintiff’s argument that the addition of the term “all” would improperly limit the
claims scope also finds support in the specification. For example, the specification states that the
lookup of egress port information at the ingress port “allows all functionality to be implemented
at the ingress ports, and there is no loss of functionality at egress ports.” ‘352 Patent at 5:32-34
(emphasis added). In other words, the claimed invention “allows all functionality to be
implemented at the ingress ports,” but does not require it be implemented only at ingress ports.
Additionally, after recognizing “some manufacturers may prefer to implement the ACL pass/drop
function at only ingress ports,” the specification provides, “[w]hat is clearly needed is a method
and apparatus that enables a router or server to accomplish both ingress and egress pass/drop
functionality at ingress ports, obviating the need for the mechanisms to accomplish the function at
egress ports.” ‘352 Patent at 2:48-58. This statement further supports Plaintiff’s proposed
construction because “obviating the need for the mechanisms to accomplish the function at egress
ports[ ]” does not mean that function at egress ports is “excluded” by the invention. In sum,
Plaintiff’s proposed construction finds support in the plain language of the claims as well as the
specification.
12
Third, the specification statements relied on by HPE do not show a “clear and
unmistakable” disavowal of claim scope. HPE’s strongest evidence that “all” pass/drop
determinations must be made at ingress ports is a statement from the specification that provides:
“With an ACL according to the present invention, all pass/drop functionality occurs at ingress, and
the mechanisms at egress are no longer necessary, without any loss in functionality.” ‘352 Patent
at 5:56-59. However, as previously discussed, the specification also provides that the invention
“allows” pass/drop determinations to be made at ingress ports but does not require these
determinations to be made only at ingress ports. See ‘352 Patent at 5:32-34. The specification is,
at best, ambiguous as to whether all egress determinations must be made at ingress and, therefore,
does not provide a “clear and unmistakable” disavowal of claim scope. See Thorner v. Sony
Comput. Entm't Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“The standard for disavowal of
claim scope is . . . exacting.”); Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed.
Cir. 2004) (“Absent a clear disavowal or contrary definition in the specification or the prosecution
history, the patentee is entitled to the full scope of its claim language.”); Alloc, Inc. v. ITC, 342
F.3d 1361, 1377 (Fed. Cir. 2003) (Schall, J., dissenting) (citing Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)) (“A specification may only be used to limit a claim
if a patentee has disavowed or disclaimed scope of coverage, by using words or expressions of
manifest exclusion or restriction, representing a clear disavowal of claim scope.”).
Therefore, the Court construes “a system implemented at an ingress port for egress
pass/drop determination for packets” to have its plain and ordinary meaning. The Court
further finds the preamble limiting and expressly rejects HPE’s proposal regarding “all egress
pass/drop determinations for packets.”
13
b. “ingress port[s] comprising/comprise . . . a first mechanism for noting header [field]
combinations and values, and egress ports for transmission . . . and a second
mechanism . . . returning a rule [determination] for the packet” (Claims 7, 13 of the
‘394 Patent; Claims 9, 17 of the ‘352 Patent)
Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Rejecting proposal regarding “all egress
rules for packets”
Defendants’ Proposed
Construction
“ingress port[s] comprising/comprise . .
. a first mechanism for noting header
[field] combinations and values, and
egress ports for transmission . . . and a
second mechanism for determining all
egress rules for packets”
The parties only dispute whether the ingress port’s second mechanism must determine “all”
egress rules or rule determinations for packets.
Plaintiff argues that the claims, as written, do not support the limitation urged by HPE.
Doc. No. 66 at 24. Plaintiff argues that “[i]t is a ‘bedrock principle’ of patent law that ‘the claims
of a patent define the invention to which the patentee is entitled the right to exclude.’” Id. (quoting
Phillips, 425 F.3d at 1312). Plaintiff also argues that “the Federal Circuit has consistently held that
even if there is a single embodiment disclosed in the specification, it is inappropriate to limit the
claims to that embodiment.” Id. at 24-25 (citing Phillips, 425 F.3d at 1323 (“In particular, we have
expressly rejected the contention that if a patent describes only a single embodiment, the claims of
the patent must be construed as being limited to that embodiment.”)).
In response, HPE again argues that the ‘394 Patent “mandates that all egress determinations
occur at the ingress port.” Doc. No. 75 at 13. Accordingly, HPE relies upon its arguments presented
for the term above. Id. at 14.
In its reply, Plaintiff points out that the “claimed function is ‘returning a [particular] rule
[determination] for the packet’” and “[t]he claim term is directed to how a packet is treated.” Doc.
No. 76 at 7. Plaintiff then argues that HPE’s construction modifies “the meaning of this function
14
and extrapolate[s] the function across ‘all rules[,]’” effectively “rewriting” the meaning of the
claim term. Id. (citations omitted).
The plain language of Claim 7 of the ‘394 Patent and Claim 9 of the ‘352 Patent does not
include a limitation that the second mechanism must return “all” rule determinations for the packet.
Claim 7 of the ‘394 Patent and Claim 9 of the ‘352 Patent are directed to “an ingress port,
comprising . . . a second mechanism . . . returning a rule for the packet.” See ‘394 Patent at 6:3948; ‘352 Patent at 6:53-61 (emphasis added). Likewise, the plain language of Claim 13 of the ‘394
Patent and Claim 17 of the ‘352 Patent does not include a limitation that the second mechanism
must return “all” rule determinations for the packet. Claim 13 of the ‘394 Patent and Claim 17 of
the ‘352 Patent are directed to “[a] network packet router comprising: one or more ingress ports;
and one or more egress ports; characterized in that individual ones of the ingress ports comprise .
. . a second mechanism . . . returning a rule determination for the packet.” See ‘394 Patent at 7:114; ‘352 Patent at 7:15-24 (emphasis added). The language of the claims does not support the
limitation that the second mechanism return “all” rules or rule determinations for the packet. See
Phillips, 415 F.3d at 1312 (“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent
define the invention to which the patentee is entitled the right to exclude.’”); see also Vitronics
Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims
themselves . . . to define the scope of the patented invention.”).
Again, for the reasons discussed previously, the Court rejects HPE’s argument that the’394
and the ‘352 Patents mandate that all egress determinations occur at ingress. The specification
statements relied on by HPE do not show a “clear and unmistakable” disavowal of claim scope.
The specification is, at best, ambiguous as to whether all egress determinations must be made at
ingress and, therefore, does not provide a “clear and unmistakable” disavowal of claim scope. See
15
Thorner, 669 F.3d at 1366 (“The standard for disavowal of claim scope is . . . exacting.”); Home
Diagnostics, Inc., 381 F.3d at 1358 (“Absent a clear disavowal or contrary definition in the
specification or the prosecution history, the patentee is entitled to the full scope of its claim
language.”); Alloc, Inc., 342 F.3d at 1377 (“A specification may only be used to limit a claim if a
patentee has disavowed or disclaimed scope of coverage, by using words or expressions of
manifest exclusion or restriction, representing a clear disavowal of claim scope.”).
Therefore, the Court construes “ingress port[s] comprising/ comprise . . . a first
mechanism for noting header [field] combinations and values, and egress ports for
transmission . . . and a second mechanism returning a rule [determination] for the packet”
to have its plain and ordinary meaning. The court expressly rejects the addition of “all” to the
claim term and finds the preamble limiting.
IV.
Disputed Terms of the ‘844 Patent
The ‘844 Patent, filed on May 10, 2001, is entitled “Apparatus and Methods for Efficient
Multicasting of Data Packets,” and issued on March 22, 2005. The ‘844 Patent is a continuationin-part to U.S. patent application Ser. No. 09/800,678, entitled “An Improved System for Fabric
Packet Control,” filed on March 6, 2001. The Abstract states:
A multicast engine is provided in plurality within a router for replicating and/or
modifying packets identified as multicast packets. In preferred embodiments the
engine is integrated with one or more ports of a router, particularly with one or
more ports of fabric cards. In one implementation the multicast engine is associated
with a table having instructions for replicating or modifying multicast packets
received, and forwarding the packets accordingly.
16
a. “output to the ingress path into the [] port” (Claims 1, 10, 15, 20) / “output to
the ingress path via one or more of the first ports to one or more of the second
ports” (Claim 22)
Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Defendants’ Proposed
Construction
“output to the ingress path through the
[] port”
As an initial matter, Plaintiff states in its reply that “[it] is not necessarily opposed to HPE’s
construction in the narrow context of ‘output to the ingress path into the port’ and ‘output to the
ingress path via one or more of the first ports to one or more of the second ports[.]’” Doc. No. 76
at 11. At the Markman hearing, Plaintiff further indicated that it may be amenable to a narrow
construction of “output to the ingress path into the port” to mean “output to the ingress path through
the port,” but argued “into” should not be replaced with “through” in every instance. Hearing
Transcript (Doc. No. 96) at 53:4-23. However, Plaintiff did not agree with HPE’s proposed
construction of “output to the ingress path via one or more of the first ports to one or more of the
second ports.” See Hearing Transcript (Doc. No. 96) at 60:12-21.
At issue is whether the claim terms should be construed to require the ingress path be
“through” the port rather than simply “to” the port.
Initially, HPE frames the dispute as whether “a ‘path’ must go through the port.” Doc. No.
75 at 15. However, the word “path” appears in the claim terms “ingress path” and “egress path.”
Id. Plaintiff responds that HPE is “improperly attempting to construe terms that it did not identify
for construction[ ]” by arguing that “both the claimed ‘egress path’ and ‘ingress path’ must go
through the port even though ‘egress path’ does not appear in the claim phrase HPE identified for
construction.” Doc. No. 76 at 10. However, at the Markman hearing HPE clarified that it only
submitted ingress path for construction. Hearing Transcript (Doc. No. 96) at 50:16-24, 55:5-8.
17
HPE argues that the intrinsic evidence “mandates that the ‘path’ go through the port.” Doc.
No. 75 at 15. HPE points to statements made during prosecution of the ‘844 Patent where the
patentee distinguished the Takahashi prior art reference:
The Examiner has further stated that port 110 a Takahashi has at least one ingress
path 109 into the port for receiving the data packets, and at least one egress path
121 out of the port for outputting data packets. Applicant points out to the
Examiner, however, that applicant’s ingress path is a path through the port . . . , not
simply to the port, as in Takahashi, and applicant’s egress path is also a path through
the port, not simply leading from the port, as in Takahashi.
Id. (quoting Doc. No. 75-5 at 13). HPE argues that “to overcome Takahashi, the applicant limited
its claimed invention to paths going through the port—not simply paths going to the port.” Id.
(emphasis in brief). HPE also points to the following statement from the same Response to Office
Action to support its construction:
To paraphrase for the Examiner, the multicast engine therefore receives (input)
multicast data packets for replication/readdressing from the egress path from the
crossbar switching facility, and transmits (output) the replicated/readdressed
multicast data packets to the ingress path through multicast port 325, and
ultimately to the crossbar switching facility along the ingress path.
Id. at 16 (citing Doc. No. 75-5 at 11) (emphasis in brief).
Accordingly, HPE argues “the patentee disclaimed any other possible construction” “[b]y
clearly and unmistakably limiting ‘ingress path’ and ‘egress path’ to paths going through the port
in order to overcome prior art rejections[.]” Id. at 16 (citing Omega Eng’g Inc. v. Raytek Corp.,
334 F.3d 1314, 1323-24 (Fed. Cir. 2003); Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570,
1576 (Fed. Cir. 1995)). HPE argues that Plaintiff “cannot now recapture the broader claim scope
that the patentee surrendered to the public.” Id. (citing Chimie v. PPG Indus., 402 F.3d 1371, 1384
(Fed. Cir. 2005); Omega Eng’g, 334 F.3d at 1323-24).
The patentee’s statements during prosecution of the ‘844 Patent clearly limit “ingress path”
to ingress paths going through the port rather than simply to the port. During prosecution of the
18
‘844 Patent, the examiner rejected claims 15-20 as being anticipated by the Takahashi prior-art
reference (U.S. Patent No. 6,240,075). Doc. No. 75-5 at 9, 12. In an attempt to overcome the
Takahashi reference, the patentee stated:
The Examiner has further stated that port 110 a Takahashi has at least one ingress
path 109 into the port for receiving the data packets, and at least one egress path
121 out of the port for outputting data packets. Applicant points out to the
Examiner, however, that applicant’s ingress path is a path through the port (refer
to applicant’s Fig. 5), not simply to the port, as in Takahashi, and applicant’s egress
path is also a path through the port, not simply leading from the port, as in
Takahashi.
Doc. No. 75-5 at 13 (emphasis added). The patentee clearly limited its ingress path to “a path
through the port . . . , not simply to the port. . . .” in an attempt to overcome the Takahashi priorart reference. Id. In the same Response to Office Action, the patentee, in an attempt to overcome
another rejection, explained that “the multicast engine therefore receives (input) multicast data
packets from replication/readdressing from the egress path from the crossbar switching facility,
and transmits (output) the replicated/readdressed multicast data packets to the ingress path
through multicast port 325 . . . .” Id. at 11. Based on the arguments made by Plaintiff to distinguish
the Takahashi prior-art reference along with the explanation of the invention in the prosecution
history, Plaintiff has clearly limited “ingress path” to ingress paths going through the port. See
Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“[W]here the patentee
has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution
disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the
surrender.”).
HPE correctly points out that the ‘844 Patent’s specification also supports the argument
that the patentee limited the scope of the term “ingress path” to being “through the port” as opposed
to “simply to the port.” The ‘844 Patent contains a diagram of a multi-cast port 325 in Figure 5,
19
reproduced below. Figure 5 shows a path from the Crossbar (C-Bar) through the port 325 to an
Egress and a path from Ingress through the port 325 to the Crossbar (C-Bar). The ‘844 Patent
describes that “data packets not designated for multicasting may have ingress/egress through this
port.” ‘844 Patent at 9:2-4. Further, the ‘844 Patent effectively labels these paths as ingress/egress
paths, stating that the port “is illustrated with an egress path (from C-Bar to egress) and an ingress
path (from ingress to C-Bar).” ‘844 Patent at 9:13-14 (emphasis added). Thus, the “ingress path”
and the “egress path” are shown and described in the specification as paths “through the port” as
shown in Figure 5 of the ‘844 Patent
Therefore, in light of the prosecution history and the description in the specification, the
patentee has limited “ingress path” to paths going “through the port” and “not simply to the port.”
Accordingly, the Court construes “output to the ingress path into the [] port” to mean “output
to the ingress path through the [] port.” The Court construes “output to the ingress path via
one or more of the first ports to one or more of the second ports” to mean “output to the
ingress path through one or more of the first ports to one or more of the second ports.”
20
b. “[packets] are diverted” / “[packets] are delivered” / “[packets] are diverted” /
“[packets] are delivered” (Claims 1, 10, 15, 20)
Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Defendants’ Proposed
Construction
“[packets] are identified and
[delivered]” / “[diverted] from the
egress path”
At issue is (1) whether the packets must be diverted/delivered “from the egress path,” and
(2) whether the packets must be “identified” in order to be diverted/delivered.
1. Diverted/delivered “from the egress path”:
With respect to “where the data packets are diverted from,” Plaintiff argues that HPE is
improperly attempting “to add the limitation of ‘redirected from the output path.” Doc. No. 66 at
28. Plaintiff emphasizes that the claim language states where the packets arrive from—i.e., “the
data packets ‘arrive at the port on an egress path’ or ‘arrive at the multicast-capable fabric card[.]’”
Id. Plaintiff also points out that “the claims as written do not exclude the possibility that the packets
could reach another point than that which they arrived at before they are redirected or delivered,
yet HPE’s proposal would mandate that the packets must only be ‘redirected from the output
path.’” Id.
HPE argues that the packets that are “diverted / delivered to the multicast-capable engine”
“are on the egress path.” Doc. No. 75 at 18. HPE points to the prosecution history where statements
are made that packets “arrive at the port on the egress path” and that “packets assigned for
multicasting are diverted from the egress path to the multicast engine 339.” Id. (citing Doc. No.
75-5 at 11, ¶ 1) (emphasis in brief). HPE further points to the following prosecution history
statement as support: “To paraphrase for the examiner, the multicast engine therefore receives
21
(input) multicast data packages for replication/readdressing from the egress path from the crossbar
switching facility.” Id. at 19 (citing Doc. No. 75-5 at 10, ¶2). Thus, HPE concludes, “[m]ulticast
data packets are received (diverted or delivered) from the egress path.” Id.
Plaintiff replies that “HPE’s attempt to introduce a limitation on where the packets are
diverted or delivered” improperly narrows the claim scope because packets can “potentially [be]
diverted from another point than the point at which the packets arrived, i.e. (sic) the egress path.”
Doc. No. 76 at 9. Plaintiff appears to agree with HPE that the packets arrive from “the egress path,”
but contends that packets may be “diverted from another point than the point at which the packets
arrived . . . .” Id. Plaintiff argues that the statements in the prosecution history do not amount to a
“clear disavowal of claim scope.” Id.
The varied statements in the specification and in the prosecution history do not amount to
an unambiguous disavowal of claim scope. For example, the specification for the ‘844 Patent
describes that multicast packets are received “from the Crossbar Switching Facility.” See ‘844
Patent at 9:13-29 (“Basic functionality in the present embodiment of the invention involves
incoming multicast packets destined for port 325 (identified herein as Incoming Packets) entering
port 325 from the Crossbar Switching Facility (327, FIG. 4) and delivered to engine 339 by an
input line 341 for packet replication.”). However, as HPE points out, statements in the prosecution
history describe that multicast packets are “diverted from the egress path” and are received “from
the egress path from the crossbar switching facility.” See Doc. No. 75-5 at 10. The specification
statements and the statements in the prosecution are varied and do not amount to a clear disavowal
of claim scope. See Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)
(stating the court has “declined to apply the doctrine of prosecution disclaimer where the alleged
disavowal of claim scope is ambiguous.”).
22
The plain language of the claims also specifies how the packets “arrive” and to where they
are “diverted” or “delivered.” Claim 1, for example, provides that “data packets assigned for
multicasting arrive at the port on the egress path and are diverted to the multicast-capable
component . . . .” ‘844 Patent at 11:41-43. Claim 10 provides that “data packets assigned for
multicasting arrive at the multicast-capable fabric card and are delivered to the multicast engine
. . . .” Id. at 12:11-13. Claim 15 provides that “data packets assigned for multicasting arrive at the
port on the egress path and are diverted to the multicast-capable component . . . .” Id. at 12:37-39.
Likewise, Claim 20 provides that “data packets assigned for multicasting arrive at the fabric card
and are delivered to the multicast engine . . . .” Id. at 12:60-62. Accordingly, because the claims
already specify how the packets arrive and to where they are diverted or delivered, an additional
limitation of “from the egress path” would not clarify these claim terms and would improperly
narrow the claim scope.
Accordingly, the Court rejects the added limitation that the packets are “delivered” or
“diverted” “from the egress path.”
2.
“Identified”:
With respect to whether the packets must be “identified” as multicast packets to be
delivered/diverted, Plaintiff argues that “‘redirected’ and ‘delivered’ do not necessarily involve
identification.” Doc. No. 66 at 27-28. Plaintiff argues that construing those terms to include
identification would improperly add a claim limitation that is not supported by the intrinsic or
extrinsic evidence.” Id. at 27-28.
In response, HPE argues that “in order to be diverted or delivered, the multicast packets
must first be identified as multicast packets.” Doc. No. 75 at 19. HPE argues “the egress port can
handle other types of packets at the same time.” Id. (citing the ‘844 Patent at 9:10-12). Therefore,
23
HPE contends, “it is inherent that there be some way to identify or distinguish packets designated
as multicast as they travel from the crossbar through the port so that they can be diverted or
delivered to the multicast-capable component.” Id.
In reply, Plaintiff argues that the “identification” limitation improperly narrows the scope
of the claim “by limiting the way the diversion or delivery of the packets is achieved.” Doc. No.
76 at 8. HPE, by way of example, argues “HPE’s construction forecloses the potential for the
diversion or delivery to alternatively be achieved by identification of packets that are not to be
diverted or delivered to the multicast-capable component or multicast engine.” Id. at 8-9.
The language of Claims 1, 10, 15, and 20 provide that “data packets assigned for
multicasting” arrive and are then diverted or delivered. See ‘844 Patent at 11:41-43,
12:11-13,
12:37-39, 12:60-62 (emphasis added). The language of the claims implies that it is already known
which packets are multicasting packets because the claims specifically state the “data packets
assigned for multicasting” arrive and are then delivered or diverted. Thus, the claim language
already contemplates that some type of identification occurred because the data packets are already
“assigned” for multicasting when they arrive and are diverted or delivered.
To show some type of identification must occur, HPE points to an embodiment of the
invention where “both normal traffic and multicast traffic . . . utilize port 325 simultaneously.”
‘844 Patent 9:10-12. HPE argues that “it is inherent that there be some way to identify . . . packets
designated as multicast . . . .” Doc. No. 75 at 19. However, the specification of the ‘844 Patent also
describes an embodiment of the invention where “normal traffic cannot use port 325 during active
multicasting.” ‘844 Patent at 9:6-9. For this embodiment of the invention, all packets flowing to
the multicast port would be multicast packets while the port is actively multicasting. Thus, no
identification would be needed in this embodiment because all packets going to the multicast port
24
would be multicast packets. Accordingly, the simultaneous use embodiment of the invention relied
on by HPE does not mandate the addition of an “identification” limitation to the claims. Adopting
such a limitation would ignore the embodiment of the invention where “normal traffic cannot use
port 325 during active multicasting” and identification is clearly not needed. ‘844 Patent at 9:6-9.
Even assuming there is an “identification” in all embodiments of the ‘844 Patent, this alone is not
necessarily enough to read a limitation of “identification” into the claims from the specification.
See Arlington Indus. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir. 2011) (“[E]ven
where a patent describes only a single embodiment, claims will not be read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using words of expressions of
manifest exclusion or restriction.”). Additionally, the ‘844 Patent also appears to provide an
explanation for how packets are identified and routed to the multicast port, for example, by using
the virtual output queues (VOQs) positioned outside of the multicast port. See ‘844 Patent at 7:498:13, FIG. 6. In sum, HPE’s argument that a packet “identification” requirement must be added to
the claim terms as an inherent requirement falls short.
Therefore, the Court construes “[packets] are diverted” / “[packets] are delivered” /
“[packets] are diverted” / “[packets] are delivered” to have their plain and ordinary meaning.
CONCLUSION
For the foregoing reasons, the Court hereby ADOPTS the above claim constructions for
the patents-in-suit. For ease of reference, the Court’s claim interpretations are set forth in a table
in Appendix A.
So ORDERED and SIGNED this 28th day of January, 2019.
25
APPENDIX A
Terms, Phrases, or Clauses
‘287 and ‘978 Patent
Court’s Construction
“using the second header portion, selecting
one of a plurality of paths on the second
subnetwork for forwarding of the packet”
“using at least the derived value in the second
header portion, selecting one of a plurality of
paths on the second subnetwork for
forwarding of the packet”
“uses the second header portion, selecting one
of a plurality of paths on the second
subnetwork for forwarding of the packet”
“uses at least the derived value in the second
header portion, selecting one of a plurality of
paths on the second subnetwork for
forwarding of the packet”
Preamble is limiting
‘394 and ‘352 Patent
“a system implemented at an ingress port for
egress pass/drop determination for packets”
‘394 and 352 Patent
“ingress port[s] comprising/comprise . . . a
first mechanism for noting header [field]
combinations and values, and egress ports for
transmission . . . and a second mechanism . . .
returning a rule [determination] for the
packet”
Plain and ordinary meaning
No further construction needed, and expressly
rejecting the addition of “all” to the claim term.
Preamble is limiting
Plain and ordinary meaning
No further construction needed, and expressly
rejecting the addition of “all” to the claim
term.
‘844 Patent
“output to the ingress path into the []
port”
“output to the ingress path via one or
more of the first ports to one or more of
the second ports”
“output to the ingress path through the []
port”
‘844 Patent
“output to the ingress path through one or
more of the first ports to one or more of the
second ports”
Plain and ordinary meaning
“[packets] are diverted”
No further construction needed.
“[packets] are delivered”
“[packets] are diverted”
“[packets] are delivered”
26
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