UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN NETWORK DEVICES, Iny. No. 337-TA-944
RELATED SOFTWARE AND
COMPONENTS THEREOF (1)
Order No. 13,
Pursuant to Commission Rule 210.18, respondent Arista Networks, Ine. (“Arista”) filed a
Motion for Summary Determination That Claims 6-9 of U.S. Patent No. 6,741,592 (“the *592
patent”) Are Indefinite and Therefore Invalid Under 35 U.S.C. § 112 Because They Recite a
Mixed Method-Apparatus Claim, and a memorandum in support thereof. Motion Docket No.
944-36. Complainant Cisco Systems, Inc. (“Cisco”) opposed the motion, and the Commission
Investigative Staff (“Stafl”) filed a response opposing the motion.
The Commission Rules provide that “[a]ny party may move with any necessary
supporting affidavits for a summary determination in its favor upon all or part of the issues to be
determined in the investigation.” 19 C.F.R. § 210.18(2). Summary determination “shall be
rendered if pleadings and any depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no genuine issue as to any material fact and
that the moving party is entitled to a summary determination as a matter of law.” 19 CPR.
§ 210.18(b).
Under 35 U.S.C. § 112, a patent claim is invalid for indefiniteness if, when read in light
of the specification and prosecution history, it “fail[s] to inform, with reasonable certainty, thoseskilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Ine., 134
S.Ct. 2120, 2124 (2014). A claim that recites both an apparatus and a method of using that
apparatus is indefinite because it “is not sufficiently precise to provide competitors with an
accurate determination of the ‘metes and bounds’ of protection involved.” /PXL Holdings,
LLC. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (citation omitted). The use of
a gerund (eg, transmitting, receiving) in claim language often indicates a method step, but that
is not a hard and fast rule. Compare Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331,
1339 (Ped, Cir. 2011) (finding “transmitting the trellis encoded frames” to be a method step)
with Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1375 (Fed.
Cir. 2008) (finding that “determining” was functional language that did not render the claim
indefinite), Moreover, if a claim is determined to be a mixed method-apparatus claim, a court
may not rewrite the claim to preserve its validity. Rembrandt, 641 F.3d at 1339.
Independent claim 6 of the $92 patent reads as follows:
6. A switch, comprising:
a promiscuous port for receiving incoming packets from an external
network, and for transmitting outgoing packets to said external
network; and
a plurality of isolated ports, a selected isolated port of said plurality of
isolated ports connected to a selected private network, said selected
isolated port receiving packets from said selected private network and
transmitting packets onto said selected private network, said selected
isolated port exchanging packets with said promiscuous port through a
path inside said switch, and said isolated port not exchanging packets
with another isolated port.
Mot, Ex. 1 (°592 patent).
‘Arista argues that claim 6 of the °592 patent, as well as dependent claims 7-9, “are invalid
as a matter of law because they claim both an apparatus and a method, contrary to established
Federal Circuit precedent.” Mem. at 1. It is argued that “[eJlaim 6 requires a networking
=device—a switch—having vatious required elements,” and that “it also requires using the switch
to perform various steps, including ‘receiving,’ ‘transmitting’ and ‘exchanging’ packets.” Id. It
is further argued: “In light of their facial deficiencies, Cisco should not have asserted claims 6-9
in the first place and should have withdrawn them . . ..” Id.
In opposition, Cisco argues that “the challenged claims of the °592 Patent do not call for
method steps to be performed by a user, but are instead like the claims at issue in the many cases
rejecting IPXT. indefiniteness challenges directed at system ot apparatus claims describing
capabilities or configuration of the claimed invention using functional language.” Opp’n at 8. It
is argued that “{tJhe challenged claims do not require performance of a method step, and are
easily understood by one of ordinary skill in the art.” Jd. Cisco references the claim 6 element
“isolated port” as an example:
The term “selected isolated port” . . . is a structural component of the
claimed switch. The phrases “receiving packets from said sclected private
network,” “transmitting packets onto said private network,” “exchanging
packets with said promiscuous port,” and “not exchanging packets with
another isolated port” describe the capability of the isolated port to receive
and transmit packets to and from the private network and the promiscuous
port but not exchange packets with other isolated ports. ‘The claim does
not require that the port actually be actively engaged in receiving,
transmitting or exchanging packets to infringe, and one of skill in the art
would understand claim 6 to describe only the capabilities of the isolated
port in the claimed switch, not that the port be actively receiving,
transmitting or exchanging packets. In. these circumstances, the
authorities uniformly confirm that such claim language—reciting structure
and the function or capability of structure so configured using active
language—does not suggest that a device or a user must actually perform
such functions in order to infringe the claim, and is sufficiently definite
under the demands of 35 U.S.C. § 112.
Opp’n at 9 (citations omitted; emphasis original).
Cisco further argues: “Although Arista cannot succeed on its motion as a matter of
law ... . there is, at a minimum, a substantial issue of material fact as to whether one of ordinaryskill in the art would find the claims at issue to be indefinite.” Opp’n at 16. Indeed, Cisco offers
‘testimony from its technical expert, Dr. Keven Jeffay, in support of the proposition that one of
ordinary skill in the art would understand that the claim elements at issue claim structures in
terms of their capabilities, and are not method steps. See id. Ex. 1 (Jeffay Decl.). Cisco notes
that “Arista has not provided any opposing expert opinion in connection with its motion,” and
argues that “Arista’s motion should be denied for this additional reason.” Id. at 17.
‘The Staff argues: “All of the claims indisputably claim a ‘switch’ . .. the remaining issue
is whether the claims also recite a method, and the answer, for purposes of summary
determination, is that there is a genuine issue of material fact in dispute on this point.” Staff
Resp. at 5. The Staff further argues:
Perhaps claims 6-9 claim both a method and an apparatus and perhaps the
use of “for” in one part of the claim but not another means Cisco was not
claiming a capability. But the ultimate question posed by Rembrandt and
IPXL is whether a person of ordinary skill in the art would understand
when the claims were being inftinged. That is a factual issue to be
resolved through expert testimony and so summary determination is not
appropriate.
Id. at 5-6.
Inasmuch as there remains a genuine issue of material fact as to whether or not a person
of ordinary skill in the art would find the claims at issue to be indefinite, it is the determination
of the administrative law judge that Arista has failed to show it is entitled to summary
determination as a matter of law. Motion No. 944-36 is denied,
an
David P. Shaw
‘Administrative Law Judge
Issued: July 28, 2015CERTAIN NETWORK DEVICES, RELATED SOFTWARD AND- COMPONENTS,
THEREOF (1):
INV. NO. 337-TA-944
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached ORDER NO. 13 has been served by hand upon
the Commission Investigative Attorney, Andrew Beverina, Esq., and the following parties as
UL 29 208
indicated, on
Lisa R. Barton, Secretary
USS. International Trade Commission
500 E Street SW, Room 1124.
Washington, DC 20436
FOR COMPLAINANT CISCO SYSTEMS, INC.
D. Sean Trainor, Esq. (.) Via Hand Delivery
KIRKLAND & ELLIS LLP (_ ) Express Delivery
655 15th Street, NW CW Wia First Class Mail
Washington, DC 20005 (_) Other:
FOR RESPONDENT ARISTA NETWORKS, INC.:
Lauren A. Degnan, Esq. (_) Via Hand Delivery
FISH & RICHARDSON P.C. (_ )/Express Delivery
1425 K Street, NW (9 Via First Class Mail
11th Floor (_) Other:
Washington, DC 20005