fs.com Inc. v. Itc

Case: 22-1228 Document: 93 Page: 1 Filed: 04/20/2023
United States Court of Appeals
for the Federal Circuit
______________________
FS.COM INC.,
Appellant
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
CORNING OPTICAL COMMUNICATIONS LLC,
Intervenor
______________________
2022-1228
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-1194.
______________________
Decided: April 20, 2023
______________________
DARLENE GHAVIMI, K&L Gates LLP, Austin, TX, ar-
gued for appellant. Also represented by GEORGE C.
SUMMERFIELD, JR., Chicago, IL.
CATHY CHEN, Office of the General Counsel, United
States International Trade Commission, Washington, DC,
argued for appellee. Also represented by WAYNE W.
HERRINGTON.
GREGORY G. RAPAWY, Kellogg, Hansen, Todd, Figel &
Frederick, PLLC, Washington, DC, argued for intervenor.
Case: 22-1228 Document: 93 Page: 2 Filed: 04/20/2023
2 FS.COM INC. v. ITC
Also represented by HANNAH CARLIN, DONALD CHANSLOR
GALLENSTEIN, ANDREW GOLDSMITH, EVAN TODD LEO, JOHN
THORNE.
NICHOLAS R. GRENNAN, Suiter Swantz PC LLO,
Omaha, NE, for amicus curiae Diversified Material Spe-
cialists, Inc.
______________________
Before MOORE, Chief Judge, PROST and HUGHES, Circuit
Judges.
MOORE, Chief Judge.
FS.com Inc. (FS) appeals from an International Trade
Commission final decision determining FS violated 19
U.S.C. § 1337 (Section 337). We affirm.
BACKGROUND
Corning Optical Communications LLC (Corning) filed
a complaint with the Commission alleging FS was violating
§ 337 by importing high-density fiber optic equipment that
infringed U.S. Patent Nos. 9,020,320; 10,444,456;
10,120,153; and 8,712,206. Those patents generally relate
to fiber optic technology commonly used in data centers.
The ’320, ’456, and ’153 patents disclose fiber optic appa-
ratuses including a chassis that houses fiber optic equip-
ment (e.g., modules, trays, and adapters) to support fiber
optic connections. ’320 patent at 4:58–5:44. For example,
claim 1 of the ’320 patent recites:
1. A fiber optic apparatus, comprising:
a chassis; and
a fiber optic connection equipment provided in the
chassis;
the fiber optic connection equipment configured to
support a fiber optic connection density of at least
ninety-eight (98) fiber optic connections per U space,
Case: 22-1228 Document: 93 Page: 3 Filed: 04/20/2023
FS.COM INC. v. ITC 3
based on using at least one simplex fiber optic com-
ponent or at least one duplex fiber optic component.
The ’206 patent is directed to fiber optic modules. ’206
patent at 1:52–57. For example, claim 14 of the ’206 patent
recites:
14. A fiber optic module, comprising:
a main body defining an internal chamber disposed
between a front side and a rear side;
a plurality of optical fibers disposed in the internal
chamber;
a front opening disposed along a longitudinal axis
in the front side;
a first plurality of fiber optic components optically
connected to the plurality of optical fibers, the first
plurality of fiber optic components disposed
through the front opening providing a fiber optic
connection density of at least one fiber optic con-
nection per 7.0 millimeters (mm) of width of the
front opening; and
at least one second fiber optic component optically
connected to at least one of the plurality of optical
fibers to provide optical connection between the at
least one second fiber optic component and at least
one of the first plurality of fiber optic components.
After investigating Corning’s complaint, the ALJ is-
sued an initial determination finding FS’ importation of
high-density fiber optic equipment violated § 337. The ALJ
found FS induced infringement of claims 1 and 3 of the ’320
patent; claims 11, 12, 14–16, 19, and 21 of the ’456 patent;
Case: 22-1228 Document: 93 Page: 4 Filed: 04/20/2023
4 FS.COM INC. v. ITC
and claims 9, 16, 23, and 26 of the ’153 patent. 1 The ALJ
further found FS’ accused modules directly infringed
claims 22 and 23, which depend from claim 14, of the ’206
patent. In reaching this finding, the ALJ adopted the Of-
fice of Unfair Import Investigations’ construction of “a front
opening” as recited in the claims. Finally, the ALJ rejected
FS’ various invalidity challenges, including its argument
that certain claims of the ’320 and ’456 patents were not
enabled.
FS petitioned for Commission review. The Commission
decided to review the initial determination in part, includ-
ing the ALJ’s construction of “a front opening” in the ’206
patent. It adopted Corning’s proposed construction and af-
firmed the ALJ’s resulting infringement finding. It de-
clined to review the ALJ’s enablement determination and
adopted the ALJ’s analysis. The Commission ultimately
affirmed the ALJ’s determination that FS violated § 337
and issued a general exclusion order prohibiting the impor-
tation of infringing high-density fiber optic equipment and
components thereof and a cease-and-desist order directed
to FS.
FS appeals the Commission’s determination that the
claims of the ’320 and ’456 patents are enabled and its
claim construction of “a front opening” in the ’206 patent.
We have jurisdiction under 28 U.S.C. § 1295(a)(6).
DISCUSSION
I. Enablement
FS challenges the Commission’s determination that
claims 1 and 3 of the ’320 patent and claims 11, 12, 15, 16,
and 21 of the ’456 patent are enabled. These claims recite
1 FS did not dispute the importation requirement
was satisfied with respect to its accused products. See 19
U.S.C. § 1337(a)(1)(B)(i).
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FS.COM INC. v. ITC 5
“a fiber optic connection density of at least ninety-eight (98)
fiber optic connections per U space” or “a fiber optic connec-
tion of at least one hundred forty-four (144) fiber optic con-
nections per U space.” See, e.g., ’320 patent at 19:56–57
(claim 1); 19:65–67 (claim 3). FS argues these open-ended
density ranges are not enabled because the specification
only enables up to 144 fiber optic connections per U space. 2
A patent’s specification must describe the invention
and “the manner and process of making and using it, in
such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains . . . to make
and use the same.” 35 U.S.C. § 112(a). To enable, “the
specification of a patent must teach those skilled in the art
how to make and use the full scope of the claimed invention
without undue experimentation.” MagSil Corp. v. Hitachi
Glob. Storage Techs., Inc., 687 F.3d 1377, 1380 (Fed. Cir.
2012) (internal quotation marks omitted). Enablement is
a question of law based on underlying factual findings.
Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs.,
Inc., 996 F.3d 1342, 1350 (Fed. Cir. 2021). We review the
Commission’s legal conclusions de novo and any underly-
ing findings of fact for substantial evidence. Ajinomoto Co.
v. Int’l Trade Comm’n, 597 F.3d 1267, 1272 (Fed. Cir.
2010).
In determining enablement, the Commission applied
the two-part standard set forth in Anderson Corp. v. Fiber
Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007):
[O]pen-ended claims are not inherently improper;
as for all claims their appropriateness depends on
2 The ALJ construed “U space” to have its “plain and
ordinary meaning, an example of which is a rack unit,
which is a standardized measurement of 1.75 inches
(44.45mm) in height within a standardized 19-inch rack or
23-inch rack.” J.A. 152–56; see also ’320 patent at 5:1–5.
Case: 22-1228 Document: 93 Page: 6 Filed: 04/20/2023
6 FS.COM INC. v. ITC
the particular facts of the invention, the disclosure,
and the prior art. They may be supported if there
is an inherent, albeit not precisely known, upper
limit and the specification enables one of skill in
the art to approach that limit.
Id. at 1376–77 (quoting Scripps Clinic & Rsch. Found. v.
Genentech, Inc., 927 F.2d 1565, 1572 (Fed. Cir. 1991)). Alt-
hough this language from Andersen is infrequently applied,
the parties agree this legal test governs their dispute. Ap-
plying this standard, the Commission determined the chal-
lenged claims were enabled because skilled artisans would
understand the claims have an inherent upper limit and
that the specification enables skilled artisans to approach
that limit. The question of whether a skilled artisan would
understand there is an upper limit is a question of law
based on underlying factual findings.
FS argues the Commission erred in concluding the
claims have an inherent upper limit. FS faults the Com-
mission for simply stating that “some inherent limit exists”
without identifying the exact upper limit—i.e., without de-
termining the scope of the claimed ranges. Read as a
whole, however, we understand the Commission’s opinion
as determining there is an inherent upper limit of about
144 connections per U space. See Appellant’s Opening Br.
at 51 (“The only potential finding by the Commission of an
inherent upper limit to the open-ended claims is approxi-
mately 144 connections per 1U space.”). That determina-
tion was based on the Commission’s finding that skilled
artisans would have understood, as of the ’320 and ’456 pa-
tent’s shared priority date (August 2008), that densities
substantially above 144 connections per U space were tech-
nologically infeasible.
The Commission’s finding is supported by substantial
evidence. The shared written description of the ’320 and
’456 patents and the expert testimony credited by the Com-
mission show that a skilled artisan would understand the
Case: 22-1228 Document: 93 Page: 7 Filed: 04/20/2023
FS.COM INC. v. ITC 7
maximum fiber optic connection density technologically
feasible as of August 2008 was about 144 connections per
U space. The written description discloses the maximum
density achievable using the LC-type simplex and duplex
adapters available as of August 2008 was 144 connections
per U space. See ’320 patent at 14:5–24; 15:29–47; cols. 19–
20 (table showing the “Max Fibers per 1 RU” using “Du-
plexed LC” adapters is 144 connections). Corning’s expert
Dr. Prucnal testified that, despite market pressure, no
commercial product has achieved a greater density than
144 connections using the LC-type simplex and duplex
adapters. 3 J.A. 95,848–49; see also J.A. 134,192 at 181:1–
8. He also testified that a skilled artisan may achieve a
density slightly above 144 connections by adding another
adapter. J.A. 151,974–75. In light of this evidence, the
Commission properly held the open-ended claims have an
inherent upper limit of about 144 connections per U space.
In other words, the Commission properly construed the
claim limitations to cover only connection densities up to
about 144 connections per U space and to exclude higher
densities. FS does not dispute that the claims are enabled
if they do not encompass densities above about 144 connec-
tions per U space. See Appellant’s Opening Br. at 51–52.
3 FS also argues the Commission improperly ex-
cluded evidence that MDC-type duplex adapters developed
in 2019 have made it possible for skilled artisans to achieve
densities up to 432 connections per U space. FS contends
this evidence shows no upper limit exists. If admitted, this
evidence would confirm our determination of claim scope.
Such evidence can be permitted to prove the state of the art
at the relevant time—2008. The evidence demonstrates
that as of August 2008, a skilled artisan was unable to
achieve densities above approximately 144 connections.
The MDC-type adapters that allowed skilled artisans to
achieve higher densities were not developed until 2019.
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8 FS.COM INC. v. ITC
We therefore affirm the Commission’s enablement deter-
mination.
II. “A Front Opening”
The Commission construed “a front opening” in claim
14 of the ’206 patent as “an opening located in the front side
of a fiber optic module, e.g., the opening depicted in Figure
13 of the ’206 patent as having dimensions H1 and W1.”
The Commission concluded this term encompasses one or
more openings. FS argues the proper construction of “a
front opening” is limited to a single front opening and
therefore its modules, which contain multiple openings
separated by material or dividers, do not infringe claims 22
and 23. We do not agree.
“We review claim construction de novo and review any
subsidiary factual findings based on extrinsic evidence for
substantial evidence.” Kyocera Senco Indus. Tools Inc. v.
Int’l Trade Comm’n, 22 F.4th 1369, 1378 (Fed. Cir. 2022).
Generally, the terms “a” or “an” in a patent claim mean
“one or more,” unless the patentee evinces a clear intent to
limit “a” or “an” to “one.” 01 Communique Lab’y, Inc. v.
LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012).
The claim language and written description do not
demonstrate a clear intent to depart from this general rule.
FS argues the recitation of “front openings” in unasserted
claim 63 evinces the patentee’s clear intent to limit “a front
opening” in claim 14 to a single opening. That the patentee
limited claim 63 to multiple openings does not show an in-
tent to limit claim 14 to one opening. Indeed, the written
description discloses embodiments with one or more front
openings. Figures 14 and 15 of the ’206 patent, shown be-
low, depict the same module as in Figure 13 with front
opening 126. ’206 patent at 11:54–59, 12:54–58.
Case: 22-1228 Document: 93 Page: 9 Filed: 04/20/2023
FS.COM INC. v. ITC 9
II
These figures show front opening 126 further subdi-
vided into multiple openings with structural material sep-
arating the adapters. We see no reason to depart from the
genera l rule tha t "a front opening'' encompasses on e 01·
more opemngs.
CONCLUSION
We have considered the pa1·ties' 1·emaining a r gumen ts
and find them unpersu asive. F or the reason s given a bove,
we affirm the Commission's decision.
AFFIRMED