Network-1 Techs., Inc. v. Hewlett-Packard Co., 2018-2338, 2018-2339, 2018-2395, 2018-2396

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtProst, Chief Judge.
Citation981 F.3d 1015
Parties NETWORK-1 TECHNOLOGIES, INC., Plaintiff-Appellant v. HEWLETT-PACKARD COMPANY, Hewlett Packard Enterprise Company, Defendants-Cross-Appellants
Docket Number2018-2338, 2018-2339, 2018-2395, 2018-2396
Decision Date20 November 2020

981 F.3d 1015

NETWORK-1 TECHNOLOGIES, INC., Plaintiff-Appellant
v.
HEWLETT-PACKARD COMPANY, Hewlett Packard Enterprise Company, Defendants-Cross-Appellants

2018-2338, 2018-2339, 2018-2395, 2018-2396

United States Court of Appeals, Federal Circuit.

Opinion Issued: September 24, 2020
Opinion Modified: November 20, 2020*
November 20, 2020


Gregory S. Dovel, Dovel & Luner, LLP, Santa Monica, CA, argued for plaintiff-appellant. Also represented by Sean Luner, Richard Elgar Lyon, III ; Jeffrey A. Lamken, MoloLamken LLP, Washington, DC.

Mark Andrew Perry, Gibson, Dunn & Crutcher LLP, Washington, DC, argued for defendants-cross-appellants. Also represented by Omar Farooq Amin ; Hersh H. Mehta, Morgan, Lewis & Bockius LLP, Chicago, IL; Natalie A. Bennett, Washington, DC.

Andrew M. Mason, Klarquist Sparkman, LLP, Portland, OR, for amicus curiae T-Mobile USA, Inc. Also represented by Sarah Elisabeth Jelsema, John D. Vandenberg ; Sarah J. Kalemeris, Winston & Strawn LLP, Chicago, IL.

Before Prost, Chief Judge, Newman and Bryson, Circuit Judges.

Prost, Chief Judge.

Network-1 Technologies, Inc. ("Network-1") appeals a final judgment of the United States District Court for the Eastern District of Texas. Network-1 sued Hewlett-Packard ("HP"), alleging infringement of U.S. Patent No. 6,218,930 ("the ’930 patent"). HP argued in response that the ’930 patent is invalid, and that HP did not infringe. The jury found the patent not infringed and invalid. Following post-trial motions, the district court denied Network-1's request for a new trial on infringement but granted Network-1's motion for judgment as a matter of law ("JMOL") on validity.

Network-1 appeals the district court's final judgment that HP does not infringe the ’930 patent, arguing the district court erred in its claim construction. HP cross-appeals the district court's determination that HP was estopped from raising certain validity challenges under 35 U.S.C. § 315(e)(2) based on HP's joinder to an inter partes review ("IPR") before the Patent Trial and Appeal Board ("Board"). On cross-appeal, HP also argues that Network-1 improperly broadened claim 6 of the ’930 patent during reexamination.

For the reasons explained below, we affirm-in-part, reverse-in-part, vacate, and remand. Specifically, as to Network-1's appeal, we affirm-in-part and reverse-in-part the district court's claim construction and remand to the district court. As to HP's cross-appeal, we vacate the district court's JMOL on validity and remand. And finally, we affirm the district court's decision with respect to improper claim broadening.

FACTUAL BACKGROUND

I. The ’930 Patent

The ’930 patent is titled "Apparatus and Method for Remotely Powering Access Equipment over a 10/100 Switched Ethernet Network." It discloses an apparatus and methods for allowing electronic devices to automatically determine if remote equipment is capable of accepting remote power over Ethernet. See ’930 patent col. 1 ll. 13–17. According to the patented method, a "low level current" is delivered over a

981 F.3d 1019

data signaling pair to an access device (also called remote equipment or remote access equipment). Id . at col. 2 ll. 8–10. After the low level current is sent, a network switch senses the resulting "voltage level" on the data signaling pair. Id . at col. 1 l. 65–col. 2 l. 14. If the device can accept remote power, the sensed voltage level will match a "preselected condition" of the voltage, such as a particular "varying voltage" level. Id . at col. 2 ll. 10–14, col. 3 ll. 2–17. Upon detecting the preselected condition, the network switch will increase the current from the low level to a higher level sufficient to allow the "remote equipment [to] become[ ] active." Id . at col. 3 ll. 17–22. If the preselected condition of the voltage is not detected, the network switch will determine that the device cannot accept remote power and will not transmit a higher current. Id . at col. 3 ll. 3–11.

The ’930 patent issued in April 2001 with 9 claims, including two independent claims: claims 1 and 6. Claim 6 is representative of the issues on appeal. Claim 6 recites:

6. Method for remotely powering access equipment in a data network, comprising,

providing a data node adapted for data switching, an access device adapted for data transmission, at least one data signaling pair connected between the data node and the access device and arranged to transmit data therebetween, a main power source connected to supply power to the data node, and a secondary power source arranged to supply power from the data node via said data signaling pair to the access device,

delivering a low level current from said main power source to the access device over said data signaling pair,

sensing a voltage level on the data signaling pair in response to the low level current, and

controlling power supplied by said secondary power source to said access device in response to a preselected condition of said voltage level.

’930 patent claim 6 (emphases added to terms challenged on appeal).

On appeal, Network-1 contends that the district court erroneously construed the claim terms "main power source" and "low level current." On cross-appeal, HP contends that Network-1 improperly broadened the term "secondary power source" during reexamination.

II. The Reexamination Proceedings

After it issued, and concurrent with the underlying district court action, the ’930 patent was reexamined twice before the U.S. Patent and Trademark Office. The first reexamination, No. 90/012,401 ("the ’401 reexamination"), concluded in October 2014. See J.A. 333–35. It confirmed the patentability of claims 6, 8, and 9, and resulted in the issuance of claims 10–23. Relevant to HP's cross-appeal, claims 15 and 16 were added depending from original claim 6.

Claim 15 recites: "Method according to claim 6, wherein said secondary power source is the same source of power as said main power source."930 patent, Ex Parte Reexamination Certificate, col. 1 ll. 39–41 (emphasis added).

Claim 16 recites: "Method according to claim 6, wherein said secondary power source is the same physical device as the main power source." Id . at col. 1 ll. 42–44 (emphasis added).

The second reexamination, No. 90/013,444, concluded in November 2015. It confirmed the patentability of claims 6 and 8–23. See J.A. 336–37.

981 F.3d 1020

PROCEDURAL BACKGROUND

This case has a long and complicated history, which began in 2011 when Network-1 sued a number of defendants, including HP, for infringement of the ’930 patent in the U.S. District Court for the Eastern District of Texas. After several stays, the district court finally reached the underlying final judgment in 2018. We discuss the relevant background here.

I. The Avaya IPR

After Network-1 filed its complaint in the district court, another defendant, Avaya Inc. ("Avaya"), petitioned for IPR of the ’930 patent. The district court stayed its proceedings pending IPR. The Board partially instituted Avaya's petition. See Avaya Inc. v. Network-1 Sec. Sols., Inc. , No. IPR2013-00071, Paper 18, 2013 WL 8595554 (P.T.A.B. May 24, 2013) (" the Avaya IPR "). Specifically, the Board instituted review of claims 6 and 9 of the ’930 patent based on two grounds: (1) anticipation under 35 U.S.C. § 102(b) by Matsuno1 ; and (2) obviousness under 35 U.S.C. § 103(a) by De Nicolo2 and Matsuno. Id . at *16.

Following institution, HP, together with other petitioners, filed an IPR petition and motion to join the Avaya IPR. HP's petition included grounds different from those that had already been instituted. The Board denied HP's request. HP, with others, thereafter filed a second IPR petition and motion to join the Avaya IPR, this time including only the grounds already instituted. The Board granted HP's request, and HP was joined as a party to the Avaya IPR. At the time that HP filed its second IPR petition, more than one year had passed since the district court complaint had been served, and therefore, HP was time-barred under 35 U.S.C. § 315(b) from having its own petition instituted. But because § 315(b) creates an exception from the time bar for joinder under 35 U.S.C. § 315(c), HP was nonetheless able to join.

In its final written decision, the Board held that neither claim 6 nor claim 9 was unpatentable over the instituted grounds. We affirmed. See Avaya Inc. v. Network-1 Techs., Inc. , 612 F. App'x 613 (Fed. Cir. 2015).

II. The District Court Action

After more stays, Network-1 continued its suit in the district court. In 2017, the district court issued its construction of disputed claim terms, including "low level current" and "main power source." See Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc., ET , No. 6:11-cv-492, Report and Recommendation of the Magistrate Judge, D.I. 693, at 12 (E.D. Tex. Nov. 4, 2016) (J.A. 24–48); see also Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc., ET , No. 6:11-cv-492, Order Adopting Report and Recommendation of U.S. Magistrate Judge, D.I. 860, at 1, 5–7 (E.D. Tex. May 2, 2017) (J.A. 49–68). Together with its claim construction, in relevant part, the district court denied HP's summary judgment motion that argued claim 6 was impermissibly broadened through the ’401 reexamination. J.A. 40–42, 57–59.

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    ...Contrary to L'Oréal's suggestion, the timing issue was not decided by this court in Network-1 Technologies, Inc. v. Hewlett-Packard Co., 981 F.3d 1015 (Fed. Cir. 2020), in which no dispute about untimeliness was presented. As relevant here, this court in Network-1 held only that the estoppe......
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    ...“[T]he specification is the single best guide to the meaning of a disputed term.” Network-1 Techs., Inc v. Hewlett-Packard Co., 981 F.3d 1015, 1022 (Fed. Cir. 2020) (quoting Phillips, 415 F.3d at 1315). For example, while courts “normally do not interpret claim terms in a way that excludes ......
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    • 9 Marzo 2021
    ...language of § 315(c) ... does not authorize joinder of new issues ...."); see also Network-1 Techs., Inc. v. Hewlett-Packard Co. , 981 F.3d 1015, 1027 (Fed. Cir. 2020) ("Thus, according to the statute, [ § 315(e),] a party is only estopped from challenging claims in the final written decisi......
  • Zeta Global Corp. v. Maropost Marketing Cloud, Inc., 20 Civ. 3951 (LGS)
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    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • 6 Julio 2021
    ...art (“POSITA”) as of the patent's priority date, considering the entirety of the patent. Network-1 Techs., Inc. v. Hewlett-Packard Co., 981 F.3d 1015, 1022 (Fed. Cir. 2020). “When the ordinary meaning of the claim language is ‘readily apparent even to lay judges,' claim construction ‘involv......
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10 cases
  • Olaplex, Inc. v. L'Oréal USA, Inc., 2020-1382
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • 6 Mayo 2021
    ...Contrary to L'Oréal's suggestion, the timing issue was not decided by this court in Network-1 Technologies, Inc. v. Hewlett-Packard Co., 981 F.3d 1015 (Fed. Cir. 2020), in which no dispute about untimeliness was presented. As relevant here, this court in Network-1 held only that the estoppe......
  • DuraSystems Barriers, Inc. v. Van-Packer Co., 1:19-cv-01388-SLD-JEH
    • United States
    • U.S. District Court — Central District of Illinois
    • 3 Septiembre 2021
    ...“[T]he specification is the single best guide to the meaning of a disputed term.” Network-1 Techs., Inc v. Hewlett-Packard Co., 981 F.3d 1015, 1022 (Fed. Cir. 2020) (quoting Phillips, 415 F.3d at 1315). For example, while courts “normally do not interpret claim terms in a way that excludes ......
  • Uniloc 2017 LLC v. Facebook Inc., 2019-1688
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • 9 Marzo 2021
    ...language of § 315(c) ... does not authorize joinder of new issues ...."); see also Network-1 Techs., Inc. v. Hewlett-Packard Co. , 981 F.3d 1015, 1027 (Fed. Cir. 2020) ("Thus, according to the statute, [ § 315(e),] a party is only estopped from challenging claims in the final written decisi......
  • Zeta Global Corp. v. Maropost Marketing Cloud, Inc., 20 Civ. 3951 (LGS)
    • United States
    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • 6 Julio 2021
    ...art (“POSITA”) as of the patent's priority date, considering the entirety of the patent. Network-1 Techs., Inc. v. Hewlett-Packard Co., 981 F.3d 1015, 1022 (Fed. Cir. 2020). “When the ordinary meaning of the claim language is ‘readily apparent even to lay judges,' claim construction ‘involv......
  • Request a trial to view additional results

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