• Aug 28 2020
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  • Category: CAFC Updates

Egenera sued Cisco alleging that Cisco’s enterprise server systems infringe various claims of U.S. Patent No. 7,231,430 which claims a platform for automatically deploying a scalable and reconfigurable virtual network. Prior to claim construction, and alongside an ongoing inter partes review (“IPR”) proceeding, Egenera separately petitioned the U.S. Patent Office to remove one inventor from the ’430 patent, in part to facilitate swearing behind art asserted against Egenera in the IPR. Following the district court’s claim construction and a trial on inventorship, Egenera asked the district court to add the removed inventor back to the patent. The district court determined that judicial estoppel prevented Egenera from relisting the inventor and held the ’430 patent invalid for failing to name all inventors. Egenera appealed, challenging both the district court’s claim construction and the application of judicial estoppel. Egenera contends that the district court’s claim construction was wrong with the “logic to modify” limitation, which the district court construed as a means-plus-function element. Noting that the question of whether a claim term is subject to § 112(f) is not whether a claim term recites any structure but whether it recites sufficient structure, the CAFC finds that “logic” is no more than a “black box recitation of structure” that is simply a generic substitute for “means” and that § 112(f) applies. With respect to correcting inventorship, the CAFC holds that because the AIA did not narrow the meaning of “error,” § 256 does not exclude “considered acts,” or even “deceptive intention,” from the meaning of “error,” but that “error” is simply the incorrect listing of inventors.  With respect to judicial estoppel, the CAFC finds that: 1) at least due to the intervening claim construction, it was not “mutually exclusive,” as judicial estoppel requires, to again request formal correction of inventorship; 2) a § 256 petition, without more, does not count as “persuasion” of a “court” for judicial-estoppel purposes; and 3) Egenera would gain no unfair advantage, and Cisco would suffer no unfair prejudice, if judicial estoppel were not applied. Thus, the CAFC affirms the district court’s claim construction, vacates the district court’s invalidity judgment and the accompanying cost award, and remands for further proceedings.

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