U.S. Ethernet Innovations, LLC v. Acer, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
U.S. ETHERNET INNOVATIONS, LLC,
Plaintiff-Appellant
v.
ACER, INC., ACER AMERICA CORPORATION,
APPLE INC., ASUS COMPUTER INTERNATIONAL,
ASUSTEK COMPUTER INC., DELL INC., FUJITSU
LIMITED, FUJITSU AMERICA, INC., GATEWAY,
INC., HEWLETT-PACKARD CO., SONY
CORPORATION, SONY CORPORATION OF
AMERICA, SONY ELECTRONICS INC., TOSHIBA
CORPORATION, TOSHIBA AMERICA
INFORMATION SYSTEMS, INC., J.C. PENNEY
COMPANY, INC., RENT-A-CENTER, INC.,
MARVELL SEMICONDUCTOR, INC.,
INTEL CORPORATION,
Defendants-Appellees
______________________
2015-1640, 2015-1641
______________________
Appeals from the United States District Court for the
Northern District of California in Nos. 4:10-cv-03724-CW,
4:10-cv-05254-CW, Judge Claudia Wilken.
______________________
Decided: April 25, 2016
______________________
2 U.S. ETHERNET INNOVATIONS v. ACER, INC.
JOHN C. HERMAN, Robbins Geller Rudman & Dowd
LLP, Atlanta, GA, argued for plaintiff-appellant. Also
represented by PETER M. JONES.
GARLAND STEPHENS, Weil, Gotshal & Manges LLP,
Houston, TX, argued for all defendants-appellees. De-
fendant-appellee Intel Corporation also represented by
JUSTIN LILE CONSTANT, DOUGLAS WAYNE MCCLELLAN;
EDWARD R. REINES, Redwood Shores, CA.
KEVIN CHRISTOPHER JONES, TechKnowledge Law
Group LLP, Redwood City, CA, for defendants-appellees
Acer, Inc., Acer America Corporation, Gateway, Inc. Also
represented by MICHAEL CHAOCHA TING.
DANNY L. WILLIAMS, Williams Morgan, PC, Houston,
TX, for defendant-appellee Apple Inc. Also represented by
CHRISTOPHER NEEDHAM CRAVEY, KYUNG T. KIM.
MATTHEW J. BRIGHAM, Cooley LLP, Palo Alto, CA, for
defendants-appellees ASUS Computer International,
ASUSTeK Computer Inc.
KIMBALL RICHARD ANDERSON, Winston & Strawn LLP,
Chicago, IL, for defendant-appellee Dell Inc. Also repre-
sented by KATHLEEN BRIDGET BARRY.
RUDOLPH KIM, Morrison & Foerster LLP, Palo Alto,
CA, for defendants-appellees Fujitsu Limited, Fujitsu
America, Inc. Also represented by DANIEL CLAYTON
HUBIN.
DAVID T. MCDONALD, K&L Gates LLP, Seattle, WA,
for defendant-appellee Hewlett-Packard Co.
LIONEL M. LAVENUE, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Reston, VA, for defendants-
U.S. ETHERNET INNOVATIONS v. ACER, INC. 3
appellees Sony Corporation, Sony Corporation of America,
Sony Electronics Inc. Also represented by DANIEL CRAIG
COOLEY, MICHAEL VINCENT YOUNG, SR.
IRFAN A. LATEEF, Knobbe, Martens, Olson & Bear,
LLP, Irvine, CA, for defendants-appellees Toshiba Corpo-
ration, Toshiba America Information Systems, Inc. Also
represented by BRIAN CHRISTOPHER CLAASSEN.
DIANE K. LETTELLEIR, JCPenney Corporation, Inc.,
Plano, TX, for defendant-appellee J.C. Penney Company,
Inc.
JEFFREY K. JOYNER, Greenberg Traurig LLP, Los An-
geles, CA, for defendant-appellee Rent-A-Center, Inc.
KEVIN P.B. JOHNSON, Quinn Emanuel Urquhart &
Sullivan, LLP, Redwood Shores, CA, for defendant-
appellee Marvell Semiconductor, Inc.
______________________
Before TARANTO, LINN, and HUGHES, Circuit Judges.
LINN, Circuit Judge.
U.S. Ethernet Innovations, LLC (“USEI”) appeals the
decision of the United States District Court for the North-
ern District of California, granting Acer, Inc.’s and other
appellees and intervenor Intel Corp.’s (collectively, “Ap-
pellees”) motion for summary judgment of invalidity of
U.S. Patent Nos. 5,434,872 (“’872 patent”) and 5,732,094
(“’094 patent”), directed to an apparatus for and process of
Ethernet data transmission. U.S. Ethernet Innovations,
LLC. v. Acer, Inc., No. 4:10-cv-3724 (N.D. Cal. Oct. 10,
2014). Because the district court did not misconstrue the
claim language, and because the parties agree on the
disposition in light of this claim construction, we affirm.
4 U.S. ETHERNET INNOVATIONS v. ACER, INC.
BACKGROUND 1
USEI is the successor in interest to 3Com, which de-
veloped the Ethernet technology embodied in the ’872 and
’094 patents. 2 Ethernet technology was developed in the
early 1980s and, much improved, is still the predominant
form of wired communication between multiple computers
on a local area network. Each computer is connected to
the network via an Ethernet network adapter, also known
as a network interface controller. The network adapter
typically includes, inter alia, a transmit buffer, where
data bound for the network from the host computer rests
before being transferred to the network itself. The nature
of the transmit buffer is the technology at issue in the
instant appeal.
According to the ’872 patent, the prior art included
two basic types of transmit buffers. The first type, called
a dedicated transmit buffer, downloads a frame of data
from a computer, and “stor[es]” the frame until it is
successfully transferred to the network, or the transmis-
sion is cancelled by other components of the network
adapter. Id. at col. 1, ll. 39-43. An advantageous feature
of the dedicated transmit buffer is the ability to store—
and, in the case of a failed transmission, re-transmit—an
entire Ethernet frame of 64-bytes. Id. at col. 1, ll. 39-46.
Dedicated transmit buffer systems have the disadvantage
that the frame transmission from the buffer is delayed
until all the data of the frame is first stored in the buffer
1 Because we write for the parties, familiarity with
the background of this case is assumed and presented
herein only to the extent necessary to provide context for
the analysis that follows.
2 The ’872 patent and the ’094 patent share a speci-
fication, with the ’872 patent directed to apparatus claims
and the ’094 directed to method claims. All citations to
the specification in this opinion are to the ’872 patent.
U.S. ETHERNET INNOVATIONS v. ACER, INC. 5
before it is transmitted to the network. Id. at col. 1, ll. 58-
61. The ’872 patent distinguishes this type of buffer from
a “first-in-first-out FIFO system, in which the sending
system downloads data of a frame into the FIFO, while
the network adapter unloads the FIFO during a trans-
mission.” Id. at col. 1, ll. 47-50. The FIFO system has the
advantage of high system throughput, id. at col. 1, ll. 62-
63, but the disadvantage that, in the case of a failed
transmission, the buffer must restart receipt and trans-
mission of the frame. The ’872 patent cites a systems-
oriented network interface controller (SONIC), which all
parties agree is a FIFO-type system, as representative
prior art. Id. at col. 2, ll. 3-5.
The ’872 patent teaches the desirability of a hybrid
system “to provide the advantages of a transmit data
buffer, while maintaining the communications throughput
available from the simpler FIFO based systems.” Id. at
col. 2, ll. 7-10. To that end, “[t]he present invention
provides for the early initiation of transmission of data in
a network interface that includes a dedicated transmit
buffer.” Id. at col. 2, ll. 13-15. USEI categorizes the
subject matter of the ’872 and ’094 patents, as well as
other formerly 3Com patents, as “parallel tasking” tech-
nology, a major aspect of which is “reducing the latency
(i.e. delay) associated with transmission of data . . . by
incorporating an early transmit feature,” effectively
allowing the buffer to transmit data to the network before
all the data in a frame is received by the buffer.
6 U.S. ETHERNET INNOVATIONS v. ACER, INC.
Representative claim 1 of the ’872 patent reads: 3
1. For a system transmitting frames of
data across a communications medium; an
apparatus comprising:
buffer memory for storing data of frames
composed by the host computer for trans-
mission on the communications medium;
means, having a host system interface, for
transferring data of frames to the buffer
memory;
means, coupled with the buffer memory, for
monitoring the transferring of data of a
frame to the buffer memory to make a
threshold determination of an amount of
data of the frame transferred to the buffer
memory;
means, responsive to the threshold deter-
mination of the means for monitoring, for
initiating transmission of the frame prior
to transfer of all the data of the frame to
the buffer memory from the host computer;
transmit logic, responsive to the means for
initiating transmission, for retrieving data
from the buffer memory and supplying re-
3 USEI does not separately argue the patentability
of other claims in the ’872 patent or the ’094 patent. All
asserted claims of both patents are thus analyzed togeth-
er according to representative claim 1 in the ’872 patent.
U.S. ETHERNET INNOVATIONS v. ACER, INC. 7
trieved data for transmission on the com-
munications medium;
underrun control logic, which detects a
condition in which the means for transfer-
ring falls behind the transmit logic, and
supplies a bad frame signal to the commu-
nications medium in response to the un-
derrun condition.
’872 patent, col. 30, ll. 5-30 (disputed claim term under-
lined). The district court construed the term “buffer
memory” as “a memory for temporary storage of data.”
This construction is not directly on appeal here.
In 2009, USEI sued Appellee computer makers in the
Eastern District of Texas for infringement of several
patents, including the ’872 and 094 patents at issue in
this appeal. Intel Corporation and Marvell Semiconduc-
tor, Inc. intervened. On motion by the Appellees, the case
was transferred to the Northern District of California.
USEI also sued several end-users of the Defendant’s
computers, which was also transferred to the Northern
District of California, and related to the first.
Appellees motioned for summary judgment of antici-
pation of all asserted claims of the ’872 and ’094 patents
over the SONIC reference, a FIFO-type system cited in
the specification, and USEI motioned for summary judg-
ment of no anticipation over SONIC, on the basis that the
claims require capacity in the buffer to hold at least a full-
sized 64-byte Ethernet frame, and SONIC indisputably
does not.
The district court granted Appellees’ motion, holding
that “the plain language of the claims says nothing about
the buffer memory’s ability to hold a complete frame of
data,” and explaining that adding such an ability would
improperly import a limitation from the specification into
the claims. U.S. Ethernet Innovations, LLC v. Acer, Inc.,
8 U.S. ETHERNET INNOVATIONS v. ACER, INC.
No. 10-3724, at 5-10 (N.D. Cal. Nov. 7, 2014) (hereinafter,
“Summary Judgment Op.”)
USEI timely appealed. We have jurisdiction over an
appeal from a final decision from a district court “related
to patents” under 28 U.S.C. § 1295(a)(1).
DISCUSSION
We begin by addressing whether the district court
erred in granting summary judgment of invalidity of all
claims of the ’872 and ’094 patents as anticipated by
SONIC. 4
Under Ninth Circuit law, we review the grant of
summary judgment of invalidity here de novo, Jesinger v.
Nevada Fed. Credit Union, 24 F.3d 1127, 1131 (9th Cir.
1994), asking whether there is a genuine issue of material
fact, Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986),
while construing the evidence in the light most favorable
to the nonmoving party. Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 587 (1986).
Anticipation is an issue of fact, but reviewed de novo
when decided on summary judgment. OSRAM Sylvania,
Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 704 (Fed.
Cir. 2012). When there are no factual disputes, the
anticipation issue collapses into an issue of claim con-
struction, which we review de novo as an issue of law.
4 USEI also argues that the district court erred by
1) denying USEI’s motion for summary judgment of no
laches due to Intel’s intentional copying of 3Com’s Ether-
Link III Ethernet adapter, and 2) granting partial sum-
mary judgment of failure to mark under 35 U.S.C. § 287on IBM and Intel licensed goods. Because we hold that all
the claims of the ’872 and ’094 patents at issue are invalid
as anticipated, we need not and do not address these
additional issues.
U.S. ETHERNET INNOVATIONS v. ACER, INC. 9
Athletic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578
(Fed. Cir. 1996) (“Where, as here, the parties do not
dispute any relevant facts regarding the accused product
but disagree over which of two possible meanings of Claim
1 is the proper one, the question of literal infringement
collapses to one of claim construction and is thus amena-
ble to summary judgment.”); Gen. Mills, Inc. v. Hunt-
Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997) (same).
As the district court correctly noted, the anticipation
question here collapses into a question of claim construc-
tion. See Summary Judgment Op. at 9 (“In essence, USEI
does not dispute any relevant facts regarding the alleged
anticipating SONIC prior art, but only disagrees over an
interpretation of the claim language. This renders the
anticipation issue of claim construction, which is a ques-
tion of law.”). Both parties agree that SONIC cannot hold
a full-sized Ethernet frame, and cannot retransmit a
packet of data to the network without retrieving it again
from the host computer. Both parties agree that if the
claims require the buffer to be capable of storing a full-
sized Ethernet frame, then the claims do not read on
SONIC, and summary judgment was improper. Similar-
ly, both parties agree that if the claims do not require the
buffer to be capable of storing a full-sized Ethernet frame,
then SONIC anticipates the claims, and summary judg-
ment was proper. This is a paradigmatic situation of
anticipation collapsing into claim construction.
The dispute centers on the element, “buffer memory
for storing data of frames . . . for transmission.” Accord-
ing to USEI, that element, when read in light of the
specification and other claim elements, requires the buffer
to have capacity to store an entire Ethernet frame. USEI
supports its understanding with numerous statements in
the specification indicating the nature of the invention
and describing preferred embodiments. See ’872 patent,
Abstract (“Early initiation of transmission of data in a
10 U.S. ETHERNET INNOVATIONS v. ACER, INC.
network interface that includes a dedicated transmit
buffer is provided. . . .”); id. at col. 2, ll. 7-10 (“It is desira-
ble to provide the advantages of a transmit data buffer,
while maintaining the communications throughput avail-
able from the simpler FIFO based systems.”); id. at col. 2,
ll. 13-15 (“The present invention provides for the early
initiation of transmission of data in a network interface
that includes a dedicated transmit buffer.”); id. at col. 18,
ll. 31-35 (“The actual frame transmission onto the net-
work will commence when two conditions are met: (1) the
XMIT [transmit] START THRESH[hold] (described below)
condition has been met, or, if XMIT START THRESH is
zero, when the entire frame has been copied to the adapt-
er’s RAM, and (2) when there are no previously queued
transmit requests.”); id. at col. 29, ll. 28-31 (“If, however,
the threshold value is greater than or equal to the frame
length, then transmission will commence once the entire
frame is resident on the adapter.”). USEI argues that
persons of ordinary skill would read the claim language,
“storing data of frames. . . for transmission” to incorporate
the full-frame storage capability from the specification.
USEI’s arguments are unconvincing. While we cer-
tainly read the claims in light of the specification, Phillips
v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
banc), “[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. at 1312(internal quotes omitted). Here, all that the claims re-
quire is that the buffer memory “stor[e] data of
frames . . . for transmission.” On its face, the claim says
nothing about a buffer’s minimum storage capacity. The
statements in the specification cited above purporting to
define the invention are inapposite without language in
the claims indicating a desire to claim the teachings
disclosed.
The claims do not say that the buffer must “store all
the data of frames,” or “store entire frames of data,” or,
U.S. ETHERNET INNOVATIONS v. ACER, INC. 11
tellingly, that the buffer even “store frames of data.” The
distinction between “data of frames” and “frames of data”
is important in the context of the ’872 patent because
when the patent uses the phrase “data of frames,” it is
consistently referring to less than an entire Ethernet
frame of data, while entire Ethernet frames of data are
referred to as “frames of data” or “all of the data of the
frame.” ’872 patent, col. 1, ll. 36-49 (“Some network
adapter interfaces included dedicated transmit buffers,
into which a frame of data . . . can be downloaded by the
sending system. . . . Transmit data buffers are to be
distinguished from first-in-first-out FIFO systems, in
which the sending system downloads data of a frame into
the FIFO.”); id. at col. 2, ll. 15-22 (“The system includes
logic for transferring frames of data composed by the host
computer into the transmit buffer. Also, the amount of
data of a frame which is downloaded by the host to the
transmit buffer is monitored to make a threshold deter-
mination of an amount of data of the frame resident in the
transmit buffer.”); id. at col. 2, ll. 22-27 (“The network
interface controller includes logic for initiating transmis-
sion of the frame . . . prior to the transfer of all of the data
of the frame into the transmit buffer.”); id. at col. 4, ll. 41-
45 (“[A] threshold store which stores a threshold value
which indicates an amount of data of a frame that must
be resident in the frame buffer before transmission of that
frame may be initiated.”). The claims say only “data of
frames,” indicating that the buffer need not be capable of
storing an entire Ethernet frame of data.
USEI also argues that a buffer with a capacity less
than a full Ethernet frame cannot “stor[e]” data of frames.
USEI made and explained this position during oral argu-
ment: “Our view is, the claim language ‘storing data . . .
for transmission’ requires the element of the transmit
data buffer to have that data locally to ensure transmis-
sion, so it doesn’t have to go back to the host computer
and interrupt it.” Oral Argument at 6:20-6:36, USEI v.
12 U.S. ETHERNET INNOVATIONS v. ACER, INC.
Acer, Inc., No. 2015-1640, -1641 (Fed. Cir., argued Mar.
11, 2016), available at http://1.usa.gov/1UBeBP3 (herein-
after, “Acer Oral Argument”); see also id. at 6:01-6:15 (“I
believe the patent language, ‘to successfully transmit’ it
would have to have the first 64 bytes so it didn’t have to
go back to the host to re-download the data.”). USEI
argues that FIFOs do not and cannot “store” data, but
merely “unload” the bytes. This argument, too, lacks
merit. First, and most clearly, the claims do not include
the element, “transmit data buffer.” Instead, the claims
use the notably broader phrase, “buffer memory.” There
is no basis, therefore, to adopt USEI’s argument to incor-
porate the characteristics of transmit data buffers into the
claims. Second, there is no claim requirement that the
buffer “successfully transmit” the data in the sense of
requiring local storage of the data. That functionality is
contained in the specification in the description of the
prior art, see ’872 patent at col. 1, ll. 39-43, and not in any
of the asserted claims. Third, as USEI admitted during
oral argument in the companion Texas Instruments case,
it is undisputed that SONIC holds onto some amount of
data of frames until a threshold amount of data enters the
buffer, at which point SONIC unloads that data without
retaining any of it. Oral Argument at 24:52-25:20 and
26:20-26:35, U.S. Ethernet Innovations, LLC v. Texas
Instruments, Inc., No. 2015-1510 (Fed. Cir., argued March
11, 2016), available at http://1.usa.gov/1UBeBP3 (herein-
after, “Texas Instrument Oral Argument”). The data
waiting to be transferred before this threshold is reached
is “stored,” by any natural reading of the word. USEI
argues that this is not enough, because “the language in
column 1 requires storage for successful transmission.
Under the Ethernet standard, that’s 64 bytes.” Oral
argument at 10:58-11:08. Similar to the problem with
USEI’s other arguments, nothing in the claims requires a
special type of storage where all the data of the frame is
stored until after it is transmitted.
U.S. ETHERNET INNOVATIONS v. ACER, INC. 13
Next, USEI argues that constructing the claim to al-
low buffers without full frame storage capacity would
render superfluous the claim limitation “means . . . for
initiating transmission of the frame prior to transfer of all
of the data of the frame to the buffer memory from the
host computer.” That phrase does not necessarily require
the capability of transferring all of the data of the frame
to the buffer memory—a buffer that can store 32 bytes of
data, but can begin transmission when 16 bytes are
written to the buffer would meet the limitation. Indeed,
this limitation actually undermines USEI’s argument,
because it shows that where the patent intended to indi-
cate all the data of the frame in the claim, it said so. The
failure to say “all the data of the frame” in the claim
element “storing data of frame . . . for transmission” again
indicates that that element does not require a full frame
of data.
Finally, USEI spends much of its brief and its oral ar-
gument discussing the testimony of several experts with
respect to the interpretation of the claims. USEI argues
that nine of the ten experts understood the claims as
requiring a buffer with full Ethernet frame capability.
Setting aside the accuracy of USEI’s characterization of
the expert testimony, the expert opinions do not answer
the claim construction issue before us. Though we look at
the claims from the perspective of those of ordinary skill
in the art, Multiform Desiccants, Inc. v. Medzam, Ltd.,
133 F.3d 1473, 1477 (Fed. Cir. 1998) (cited in Phillips, 415
F.3d at 1313), experts “cannot be used to prove the proper
or legal construction of any instrument of writing,” Teva
Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841
(2015) (citing Winans v. New York & Erie R. Co., 21 How.
88, 100-101 (1859)), and “in the actual interpretation of
the patent the court proceeds upon its own responsibility,
as an arbiter of the law, giving to the patent its true and
final character and force,” id. (citing Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388 (1996)).
14 U.S. ETHERNET INNOVATIONS v. ACER, INC.
Contrary to USEI’s contentions, this case cannot be
decided by reading the first column and a half of the
patent and ignoring what the claims actually recite. See
Acer Oral Argument, at 1:30-1:36. USEI has failed to
bridge the significant gap between the claim language
and the teachings of the specification.
CONCLUSION
For the foregoing reasons, we affirm the district
court’s determination that nothing in the claims requires
the buffer memory to be capable of storing 64 bytes of
data. Because there is no factual dispute that the remain-
ing elements of the asserted claims of the ’872 and ’094
patents are contained in the SONIC prior art, we affirm
the determination of the district court that all asserted
claims of the ’872 and ’094 patents are invalid as antici-
pated over the SONIC reference.
AFFIRMED