Aten Int'l Co. v. Uniclass Tech. Co.
Decision Date | 06 August 2019 |
Docket Number | 2018-1606 |
Citation | 932 F.3d 1364 |
Parties | ATEN INTERNATIONAL CO., LTD., Plaintiff-Appellant v. UNICLASS TECHNOLOGY CO., LTD., Electronic Technology Co., Ltd., Airlink 101, Phoebe Micro, Inc., Broadtech International Co., Ltd., dba Linkskey, Black Box Corporation, Black Box Corporation of Pennsylvania, Defendants-Appellees |
Court | U.S. Court of Appeals — Federal Circuit |
Laurence M. Sandell, Mei & Mark LLP, Washington, DC, argued for plaintiff-appellant. Also represented by Lei Mei.
Joseph Pia, Pia Anderson Moss Hoyt, Salt Lake City, UT, argued for defendants-appellees. Also represented by Robert Aycock.
Before Moore, Wallach, and Taranto, Circuit Judges.
ATEN International Co., Ltd. ("ATEN") appeals the United States District Court for the Central District of California’s denial of judgment as a matter of law ("JMOL"), which declined to overturn the jury’s findings that the asserted claims of U.S. Patent No. 8,589,141 are invalid as anticipated under 35 U.S.C. § 102 and not infringed; and that the asserted claims of U.S. Patent No. 7,640,289 are not infringed. For the reasons discussed below, we reverse as to invalidity and affirm as to noninfringement.
Uniclass Technology Co., Ltd. ("Uniclass") and ATEN are involved in making and selling keyboard-video-mouse ("KVM") switch systems that allow a user to control multiple computers from a single keyboard, video device, and mouse. ATEN sued Uniclass as well as Electronic Technology Co., Ltd.; Airlink 101; Phoebe Micro, Inc.; Broadtech International Co., Ltd. d/b/a Linkskey; Black Box Corporation; and Black Box Corporation of Pennsylvania (collectively, the "customer defendants") alleging, as relevant here, infringement of claims 3, 8, and 10 of the ’141 patent and claims 1–20 of the ’289 patent. The ’141 patent is directed to technology for switching between computers that share a keyboard, monitor, and mouse through a KVM switch, such as a keyboard shortcut. ’141 patent at 2:51–61. Claim 3 depends from claims 1 and 2, and claim 8 depends from claim 1. Independent claim 1 recites:
The ’289 patent is directed to technology for stringing together several KVM switches. ’289 patent at 2:1–6. It provides that each KVM switch can detect whether it is a master or slave by, for example, detecting whether the port used to connect other KVM switches is occupied. Id. at 4:1–4. Independent claim 1 recites:
At trial, the jury found that Uniclass did not infringe the asserted claims of the ’141 or ’289 patents. It also found the asserted claims of the ’141 patent were invalid as anticipated without specifying which reference was the basis for its finding. ATEN moved for JMOL, which the district court denied in the aspects relevant to this appeal.
ATEN timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
We review denials of JMOL under the law of the regional circuit. TVIIM, LLC v. McAfee, Inc. , 851 F.3d 1356, 1362 (Fed. Cir. 2017). The Ninth Circuit reviews a denial of JMOL de novo. Harper v. City of Los Angeles , 533 F.3d 1010, 1021 (9th Cir. 2008). JMOL is proper when the evidence permits only one reasonable conclusion which is contrary to the jury’s verdict, but the jury’s verdict must be upheld if it is supported by substantial evidence. Id. Anticipation and infringement are questions of fact that we review for substantial evidence. Cordis Corp. v. Bos. Sci. Corp. , 561 F.3d 1319, 1330, 1335 (Fed. Cir. 2009). Whether a reference is prior art is a question of law based on underlying factual questions. TypeRight Keyboard Corp. v. Microsoft Corp. , 374 F.3d 1151, 1157 (Fed. Cir. 2004). Whether a reference is publicly accessible is a question of fact. In re NTP, Inc. , 654 F.3d 1279, 1296 (Fed. Cir. 2011).
At trial, Uniclass asserted anticipation of the claims of the ’141 patent based on two references (1) CS-1762, an earlier product by ATEN, and/or its user manual; and (2) Great Britain Patent No. 2,352,540 ("GB ’540"). The jury found that the asserted claims of the ’141 patent were invalid as anticipated, but there was no special verdict indicating whether one or both references formed the basis for the jury’s decision. J.A. 9769. The district court denied ATEN’s JMOL motion, upholding the jury’s finding of anticipation based on the first theory, that the CS-1762 reference anticipated the asserted claims. It did not address the second theory. Because the jury’s verdict of anticipation was not supported by substantial record evidence as to either reference, we reverse the denial of JMOL on anticipation.
To establish that an asserted reference is prior art under § 102(b), the patent challenger must prove, by clear and convincing evidence, that it predates the critical date. Mahurkar v. C.R. Bard, Inc. , 79 F.3d 1572, 1578 (Fed. Cir. 1996).
The undisputed critical date for the ’141 patent is July 24, 2006—one year prior to its filing date. J.A. 4; J.A. 24; J.A. 9302–9303 at 176:24–177:3. Uniclass’ expert Mr. Dezmelyk relied on his testing of a 2009 CS-1762 specimen to meet certain limitations of claim 1 of the ’141 patent. Uniclass argues the 2009 specimen qualifies as prior art because it uses firmware that was released in 2006 before the critical date of the ’141 patent. See Appellee’s Br. 20. But Mr. Dezmelyk testified merely that the firmware dated to 2006, without specifying a day or month. J.A. 9313 at 14–17 () .
To establish that the CS-1762 qualifies as prior art, Uniclass was required to prove by clear and convincing evidence that the firmware existed prior to July 24, 2006. Merely establishing that the firmware existed in the same year as the critical date is insufficient. This deficiency was highlighted on cross-examination:
J.A. 9338 at 18–22. Mr. Dezmelyk did not provide any additional date-related information, and Uniclass did not conduct re-direct examination on this issue.
With a critical date of July 24, 2006, testimony that the firmware running on the CS-1762 device existed in 2006 alone is not enough to support the jury’s finding that the firmware pre-dated the critical date and thus qualifies as prior art. We hold that the district court erred in denying JMOL because substantial evidence does not support the jury’s finding of anticipation based on the CS-1762 device.
A finding of anticipation requires clear and convincing evidence that "each and every element is found within a single prior art reference, arranged as claimed." Summit 6, LLC v. Samsung Elecs. Co. , 802 F.3d 1283, 1294 (Fed. Cir. 2015). Testimony concerning anticipation must typically Schumer v. Lab. Comput. Sys., Inc. , 308 F.3d 1304, 1315–16 (Fed. Cir. 2002).
The jury verdict of anticipation cannot be upheld with regard to the GB ’540 reference. The asserted claims of the ’141 patent require "emulating the input device to the first host." Uniclass’ expert Mr. Dezmelyk testified about the emulation described in GB ’540 in the context of other asserted patents and claim limitations. J.A. 9296 at 170:10–20 ( ); J.A. 9301–9302 at 175:20–176:6 ( ); J.A. 9285–9286 at 159:16–160:18 (...
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