Dependent Claims Cannot Broaden an Independent Claim from Which They Depend
| December 4, 2020
Network-1 Technologies, Inc. v. Hewlett-Packard Company, Hewlett-Packard Enterprise Company
Before PROST, Chief Judge, NEWMAN and BRYSON, Circuit Judges.
Summary
The Federal Circuit reversed, in part, and affirmed, in part, the district court’s decision and ordered a new trial on infringement. Because the district court erred in construing one patent claim, the Federal Circuit concluded that the district court’s erroneous claim construction established prejudice towards Network-1. The Federal Circuit also affirmed the district court’s judgment that the dependent claims did not improperly broaden one of the asserted claims.
Background
Network-1 Technologies, Inc. (“Network-1”) owns U.S. Patent 6,218,930 (the ‘930 patent), entitled “Apparatus and Method for Remotely Powering Access Equipment over a 10/100 Switched Ethernet Network,” which sued Hewlett-Packard (“HP”) for infringement in the United States District Court for the Eastern District of Texas. The jury found the patent not infringed and invalid. But the district court granted Network-1’s motion for judgment as a matter of law (“JMOL”) on validity following post-trial motions.
Network-1 appealed the district court’s final judgment that HP does not infringe the ’930 patent, arguing the district court erred in its claim construction on “low level current” and “main power source.” HP cross-appealed the district court’s estoppel determination in 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 (“the Board”). Also, HP argued that Network-1 improperly broadened claim 6 of the ’930 patent by adding two dependent claims 15 and 16.
Discussion
The ’930 patent discloses an apparatus and methods for allowing electronic devices to automatically determine if remote equipment is capable of accepting remote power over Ethernet. On appeal, the arguments on the alleged infringement are drawn towards claim 6 as follows.
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.
Network-1 argued that the district court erroneously construed the claim terms “low level current” and “main power source” in claim 6. About “low level current,” the district court imposed both an upper bound (the current level cannot be sufficient to sustain start up) … and a lower bound (the current level must be sufficient to begin startup). Network-1 admitted that the term “low level current” describes current that cannot “sustain start up” but disagreed with the district court’s construction that the current has a lower bound at a level sufficient to begin start up.
The Federal Circuit reviewed the arguments and made it clear that “[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms” and “the specification is the single best guide to the meaning of a disputed term.” It has been pointed out that the claim phrase is not limited to the word “low,” and the claim construction analysis should not end just because one reference point has been identified. The Federal Circuit further explained that the claim phrase “low level current” does not preclude a lower bound by using the word “low.” Rather, in the same way the phrase should be construed to give meaning to the term “low,” the phrase must also be construed to give meaning to the term “current.” The term “current” necessarily requires some flow of electric charge because “[i]f there is no flow, there is no ‘current.’” Therefore, the Federal Circuit confirms that the district court correctly construed the phrase “low level current.”
However, the Federal Circuit held that the district court erred in its construction of “main power source” in the patent claims resulting in prejudice towards Network-1. The district court construed “main power source” as “a DC power source,” thereby excluding 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. Although HP argued that the erroneous claim construction was harmless and no accused product meets the claim limitation “delivering a low level current from said main power source,” the Federal Circuit confirmed that Network-1 has established that the claim construction prejudiced it because the evidence shows that HP relied on the district court’s erroneous construction for its argument. The district court’s erroneous claim construction of “main power source” is entitled Network-1 to a new trial on infringement.
On cross-appeal, HP argued that the district court erred in concluding that HP was statutorily estopped from raising certain invalidity. In this case, HP did not petition for IPR but relied on the joinder exception to the time bar under § 315(b). HP first filed a motion to join the Avaya IPR with a petition requesting review based on grounds not already instituted. The Board correctly denied HP’s first request but later granted HP’s second joinder request, which petitioned for only the two grounds already instituted. The Federal Circuit reasoned that “HP, however, was not estopped from raising other invalidity challenges against those claims because, as a joining party, HP could not have raised with its joinder any additional invalidity challenges.” A party is only estopped from challenging claims in the final written decision based on the grounds that it “raised or reasonably could have raised” during the inter partes review (IPR). Hence, 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 could not have reasonably been raised by HP.
Prior to reexamination, claim 6 of the ’930 patent was construed to require the “secondary power source” to be physically separate from the “main power source.” But during the reexamination, Network-1 added claims 15 and 16, which depended from claim 6 and respectively added the limitations that the secondary power source “is the same source of power” and “is the same physical device” as the main power source. 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 by adding claim 15 and 16 in the reexamination. However, the Federal Circuit does not agree that claim 6 is invalid for improper broadening based on the addition of claims 15 and 16. First, a patentee is not permitted to enlarge the scope of a patent claim during reexamination. The broadening inquiry involves two steps: (1) analyzing the scope of the claim prior to reexamination and (2) comparing it with the scope of the claim subsequent to reexamination. The Federal Circuit’s broadening inquiry begins and ends with claim 6. Because claim 6 was not itself amended, 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.
Takeaway
- 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).
- Dependent claims cannot broaden an independent claim from which they depend.
