By Brian Craig, J.D.
The district court erred in construing "main power source" in a trial where the jury found HP did not infringe the patent.
After a federal jury in Tyler, Texas, found that Hewlett-Packard Company did not infringe Network-1 Technologies, Inc.’s patent for remotely powering access equipment in a data network, the U.S. Court of Appeals for the Federal Circuit has ordered a new trial because the federal district court erred in construing certain patent claims. The Federal Circuit held that the district court erred in its construction of "main power source" in the patent claims because the term includes both AC and DC power sources, rather than just a DC power source. Network-1 showed prejudice by the district court’s erroneous claim construction to receive a new trial (Network-1 Technologies, Inc. v. Hewlett-Packard Co., September 24, 2020, Prost, S.).
Network-1 owns U.S. Patent No. 6,218,930 (the ’930 patent), issued on April 1, 2001, and entitled "Apparatus And Method For Remotely Powering Access Equipment Over A 10/100 Switched Ethernet Network." The ’930 Patent relates to an apparatus and method for remotely powering access equipment in a data network. In 2013, Network-1 filed suit against Hewlett-Packard Company, Hewlett Packard Enterprise Company (together, "HP"), along with other technology companies, accusing them of infringing the ’903 patent. The other companies settled with Network-1, leaving HP as the sole defendant at trial. The court stayed the case pending inter partes review of the’903 patent. Following the Patent Trial and Appeal Board’s resolution of proceedings in favor of Network-1, the company filed a second amended complaint against HP alone in 2016. In November 2017, the jury found that HP did not infringe the ’930 patent and that the asserted claims were 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 on validity. Both parties appealed.
Claim construction. The Federal Circuit held that the district court erred in its construction of "main power source" in the patent claims resulting in prejudice to Network-1 to warrant a new trial. Claim terms are generally given their ordinary and customary meaning, which is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention. While the district court properly construed "low level current" in the patent claims, the district court improperly construed "main power source." The district court construed "main power source" as "a DC power source," and thereby excluded AC power sources from its construction. The Federal Circuit concluded that the correct construction of "main power source" includes both AC and DC power sources.
Prejudice. The Federal Circuit also concluded that Network-1 established prejudice by the district court’s erroneous claim construction of "main power source" and is entitled to a new trial on infringement. HP argued that the erroneous claim construction was harmless because HP presented conclusive evidence that no accused product meets the claim limitation "delivering a low level current from said main power source." The Federal Circuit ruled that Network-1 presented evidence at trial showing that HP’s products practice this claim limitation, and that Network-1 was prejudiced. Therefore, the Federal Circuit reversed the district court’s construction of "main power source" and remanded to the district court for a new trial.
Statutory estoppel. The Federal Circuit also concluded that the district court erred in granting judgment as a matter of law of validity for Network-1 on the basis that HP was statutorily estopped from raising certain invalidity challenges. A party is only estopped from challenging claims in the final written decision based on grounds that it "raised or reasonably could have raised" during the inter partes review (IPR). The Federal Circuit ruled that HP was not statutorily estopped from challenging the asserted claims of the ’930 patent which were not raised in the IPR and which could not have reasonably been raised by HP.
Following trial, the district court granted Network-1’s motion for judgment as a matter of law on validity of the ’930 patent without considering the merits of HP’s invalidity arguments. HP argued that substantial evidence supports the jury’s verdict of invalidity, and thus the jury’s verdict should be reinstated. In response, Network-1 argued that the issue cannot be resolved on appeal because there is an outstanding new-trial motion that the district court must decide. The Federal Circuit ruled that the district court failed to conditionally rule on Network-1’s motion for a new trial on validity even though it was required to do so under the Federal Rules of Civil Procedure. Therefore, the Federal Circuit vacated the district court’s judgment as a matter of law decision on validity with respect to estoppel and remanded to the district court on that issue.
Claim broadening. Finally, the Federal Circuit affirmed the district court’s judgment that the asserted claims were not improperly broadened. HP argued that claim 6 and the other asserted claims are invalid under 35 U.S.C. § 305 because Network-1 improperly broadened claim 6 through the addition of claim 15 and 16 in the reexamination.A patentee is not permitted to enlarge the scope of apatent claim during reexamination. The broadening inquiry under involves two steps: (1) analyzing the scope of the claim prior to reexamination and(2) comparing it with the scope of the claim subsequentto reexamination. The appeals court found that the scope of claim 6 was not changed as a result of the reexamination. Where the scope of claim 6 has not changed, there has not been improper claim broadening. Dependent claims cannot broaden an independent claim from which they depend. Accordingly, the Federal Circuit affirmed the district court’s conclusion that claim 6 and the other asserted claims are not invalid due to improper claim broadening.
Therefore, the Federal Circuit reversed, in part, and affirmed, in part, the district court’s decision and remanded to the district court for further proceedings.
This case is No. 18-2338.
Attorneys: Gregory S. Dovel (Dovel & Luner LLP) for Network-1 Technologies, Inc. Mark Andrew Perry (Gibson, Dunn & Crutcher LLP) for Hewlett-Packard Co. and Hewlett Packard Enterprise Co.
Companies: Network-1 Technologies, Inc.; Hewlett-Packard Co.; Hewlett Packard Enterprise Co.
MainStory: TopStory Patent GCNNews FedCirNews
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