Egenera, Inc. v. Cisco Systems, Inc.

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

CIVIL ACTION NO. 16-11613-RGS

EGENERA, INC.

v.

CISCO SYSTEMS, INC.

MEMORANDUM AND ORDER ON

INVENTORSHIP

December 3, 2018

STEARNS, D.J.

A central dispute in the parties’ dispositive motions is whether Peter

Schulter is an inventor of the asserted ’430 patent. The salient events are as

follows.

Schulter joined Egenera on October 2, 2000. On April 20, 2001,

Egenera submitted to the United Statement Patent and Trademark Office

(PTO) the provisional application to which the ’430 patent claims priority,

listing Schulter amongst its eleven inventors. The utility application was

subsequently filed on January 4, 2002, and the ’430 patent issued in due

course on June 12, 2007. Egenera instituted this patent infringement action

against Cisco in August of 2016, identifying Schulter as an inventor of the

’430 patent in its initial and supplemental disclosures in March, May, and

June of 2017.

In April of 2017, Cisco petitioned the Patent Trial and Appeal Board

(PTAB) for inter partes review (IPR) of the ’430 patent, contending, inter

alia, that certain claims of the ’430 patent are obvious in view of prior art

(including a patent (Grosner) with a priority date of November 2, 2000). On

August 16, 2017, Egenera responded to the IPR petition, arguing, in part, that

Grosner did not constitute prior art because the ’430 patent was earlier

conceived. (The ’430 patent is governed by the first-to-invent rules

predating the America Invents Act.) In support, Egenera relied on a

document entitled “Egenera Interframe I/O Architecture,” dated September

29, 2000, and authored by inventor Max Smith, which according to Egenera,

fully described the patented invention.

The Interframe I/O Architecture document precedes Schulter’s

employment by Egenera. On September 11, 2017, Egenera petitioned the

PTO to remove Schulter as an inventor of the ’430 patent. In support,

Egenera offered a declaration signed by Schulter on August 15, 2017, stating

that he was erroneously named as an inventor. The remaining ten inventors

also declared that they either agreed with or did not disagree with Schulter’s

removal. The PTAB denied institution of the IPR on November 13, 2017,

without making any finding as to the priority of the ’430 patent. On January

15, 2018, the PTO approved Egenera’s petition to remove Schulter as an

inventor.

Cisco contends that Schulter is an inventor of the ’430 patent, and that

his exclusion invalidates the patent. See Checkpoint Sys., Inc. v. All-Tag Sec.

S.A., 412 F.3d 1331, 1338 (Fed. Cir. 2005) (“If nonjoinder of an actual

inventor is proved by clear and convincing evidence, a patent is rendered

invalid.”), quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998)

(citation omitted in Checkpoint). (While not at issue for the purposes of this

opinion, Cisco also alleges that Egenera submitted false affidavits to remove

Schulter in order to antedate critical prior art and avoid invalidation before

the PTAB.) For its part, Egenera maintains that Schulter was innocently

misnamed as an inventor on the ’430 patent applications, that it realized the

error in the process of responding to the IPR petition and has since corrected

it, and that further, should Schulter now prove to be a bona-fide inventor,

the remedy is correction, not invalidation. See id. (“If a patentee can

demonstrate that inventorship can be corrected as provided by [35 U.S.C. §

256], a district court must order correction of the patent, thus saving it from

being rendered invalid.”), quoting Pannu, 155 F.3d at 1350.

Putting aside allegations of inequitable conduct, the court agrees with

Cisco as a threshold matter that Egenera may not now seek to restore

Schulter as an inventor to rectify any nonjoinder. Under 35 U.S.C. § 256, a

certificate of correction may issue “[w]henever . . . through error an inventor

is not named in an issued patent . . . .” While as a general rule correction of

inventorship is liberally permitted, see Coleman v. Dines, 754 F.2d 353, 357

(Fed. Cir. 1985), the circumstances here are constrained by the doctrine of

judicial estoppel. “The doctrine of judicial estoppel prevents a party from

asserting a claim in a legal proceeding that is inconsistent with a claim taken

by that party in a previous proceeding.” New Hampshire v. Maine, 532 U.S.

742, 749 (2001), quoting 18 Moore’s Federal Practice § 134.30 (3d ed. 2000).

[S]everal factors typically inform the decision whether to apply

the doctrine in a particular case: First, a party’s later position

must be “clearly inconsistent” with its earlier position. Second,

courts regularly inquire whether the party has succeeded in

persuading a court to accept that party’s earlier position, so that

judicial acceptance of an inconsistent position in a later

proceeding would create “the perception that either the first or

the second court was misled[.]” . . . A third consideration is

whether the party seeking to assert an inconsistent position

would derive an unfair advantage or impose an unfair detriment

on the opposing party if not estopped.

Id. at 750-751 (citations omitted). Egenera’s suggestion that Schulter may

be relisted as an inventor as circumstances may dictate is “clearly

inconsistent” with its September 2017 petition to the PTO, submitted with

affidavits from Schulter and the ten remaining inventors, that Schulter’s

name was erroneously listed. The PTO accepted these representations, and

in January of 2018, granted Egenera’s petition to modify the inventorship.

As is clear from the chronology, supra, disavowing Schulter enabled Egenera

to advance an earlier priority date before the PTAB (Egenera could not have

plausibly asserted a priority date prior to a joint inventor’s hire date). Having

persuaded the PTO that Schulter is not an inventor of the ’430 patent,

Egenera cannot now resurrect his inventorship.1 See Yeda Research and

Dev. Co. v. Imclone Sys. Inc., 443 F. Supp. 2d 570, 623-624 (S.D.N.Y. 2006)

(Having persuaded the PTO that a certain figure disclosed a certain claim

element in obtaining the patent, “[the court] will not permit defendants to

argue now that their assertions to the PTO were incorrect.”).

1 Egenera’s petition to remove Schulter as an inventor, sustained by

Schulter’s and the inventor affidavits, is also a considered act that is unlikely

to qualify as an omission “through error” under section 256. See Applied

Med. Res. Corp. v. U.S. Surgical Corp., 967 F. Supp. 867, 871 (E.D. Va. 1997)

(“[E]rror” is not specially defined in the context of section 256, and is

commonly understood to mean “an act involving an unintentional deviation

from truth or accuracy” and “an act that through ignorance, deficiency, or

accident departs from or fails to achieve what should be done.”), quoting

Webster’s Third International Dictionary Unabridged, at 772 (1993)

(emphasis added).

Turning to the substance of the dispute, “[i]nventorship is

a question of law.” Vapor Point LLC v. Moorhead, 832 F.3d 1343, 1348 (Fed.

Cir. 2016).

Conception is the touchstone of inventorship, the completion of

the mental part of invention. It is “the formation in the mind of

the inventor, of a definite and permanent idea of the complete

and operative invention, as it is hereafter to be applied in

practice.” Conception is complete only when the idea is so clearly

defined in the inventor’s mind that only ordinary skill would be

necessary to reduce the invention to practice, without extensive

research or experimentation.

Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-1228 (Fed.

Cir. 1994) (citations omitted).

The conceived invention must include every feature of the

subject matter claimed in the patent. Nevertheless, for the

conception of a joint invention, each of the joint inventors need

not “make the same type or amount of contribution” to the

invention. Rather, each needs to perform only a part of the task

which produces the invention. On the other hand, one does not

qualify as a joint inventor by merely assisting the actual inventor

after conception of the claimed invention. One who simply

provides the inventor with well-known principles or explains the

state of the art without ever having “a firm and definite idea” of

the claimed combination as a whole does not qualify as a joint

inventor. . . . Furthermore, a co-inventor need not make a

contribution to every claim of a patent. A contribution to one

claim is enough. Thus, the critical question for joint conception

is who conceived, as that term is used in the patent law, the

subject matter of the claims at issue.

Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)

(citations omitted). “Because [conception] is a mental act, courts require

corroborating evidence of a contemporaneous disclosure that would enable

one skilled in the art to make the invention.” Burroughs Wellcome, 40 F.3d

at 1228.

Cisco contends that Schulter conceived the virtual LAN proxy. The

virtual LAN proxy is not itself a claim element of the ’430 patent, however, it

is one of the structures underlying the claim term “logic to modify said

received messages to transmit said modified messages to the external

communication network and to the external storage network.”2 See

Winbond Elecs. Corp. v. Int’l Trade Comm’n, 262 F.3d 1363, 1372 (Fed.

Cir.), opinion corrected on unrelated grounds, 275 F.3d 1344 (Fed. Cir.

2001) (“The contributor of any disclosed means of a means-plus-

function claim element is a joint inventor as to that claim.”), quoting Ethicon,

135 F.3d at 1463. Cisco identifies an Egenera document entitled “Interframe

Network Architecture” as containing the earliest reference to the virtual LAN

proxy. The Interframe Network Architecture document, authored singly by

2 In its claim construction order, the court determined that the “logic

to . . .” terms of the ’430 patent were means-plus-function elements subject

to analysis under 35 U.S.C. § 112, para. 6. See Dkt # 80 at 10-18. The

structures that perform the modification and transmission functions for

messages to the external communication network are “virtual LAN server

335, virtual LAN proxy 430, and physical LAN driver 345” and equivalents.

Id. at 19.

Schulter, was created on October 9, 2000, and subsequently revised on

October 17 and November 7, 2000. See Cisco Ex. 45 (Dkt # 154-45) at

EGENERA01836866. Cisco points out that that the specification of the ’430

patent retains almost verbatim much of Schulter’s original description of the

virtual LAN proxy. The similarities are highlighted below.

’430 Patent Interframe Network

Architecture

Virtual LAN Proxy 5.2 The LAN Proxy

The virtual LAN Proxy 430 The LAN Proxy performs the basic

performs the basic coordination of co-ordination of the physical

the physical network resources network resources among all the

among all the processors that have application processors that have

virtual interfaces to the external virtual interfaces to the physical

physical network 125. It bridges network. It’s primary function is to

virtual LAN server 335 to the bridge the internal VLANs to the

external network 125. When the external network by converting

external network 125 is running in MAC addresses between those of the

filtered mode the Virtual LAN Proxy internal (Giganet based MACs) and

430 will convert the internal virtual the external (Gigabit Ethernet

MAC addresses from each node to MAC). It will also serialize access to

the single external MAC assigned to the physical device through a

the system 100. When the external transmission queue, and co-

network 125 is operating in ordinate the allocation and removal

unfiltered mode no such MAC of MAC addresses, especially

translation is required. The Virtual multicast addresses, on the physical

LAN Proxy 430 also performs network device. For packets

insertion and removal of IEEE arriving from the outside world, it

802.lQ Virtual LAN ID tagging will work along with the packet filter

information, and demultiplexing to move packets to the appropriate

packets based on their VLAN Ids. It ARP server for relay to the correct

also serializes access to the physical internal node(s).

Ethernet interface 129 and co-

ordinates the allocation and removal When the LAN Proxy receives any

outgoing ARP packet from a VLAN

of MAC addresses, such as multicast ARP server, it replace [sic] the

addresses, on the physical network. internal Giganet based MAC address

with the MAC address of the

When the external network 125 is physical Ethernet device as the

running in filtered mode and the source MAC address. The source IP

virtual LAN Proxy 430 receives address of the internal node will not

outgoing packets (ARP or be changed. It will then send this

otherwise) from a virtual LAN server packet to the physical Ethernet

335, it replace [sic] the internal device for transmission.

format MAC address with the MAC

address of the physical Ethernet When the VLAN Proxy receives any

device 129 as the source MAC incoming ARP packet it hand the

address. When the External packet to the VLAN ARP server to

Network 125 is running in which it is attached. The VLAN ARP

unfiltered mode no such Server will then perform normal

replacement is required. ARP processing on the packet.

When the VLAN Proxy receives an

When the virtual LAN Proxy 430 outgoing packet, it will replace the

receives incoming ARP packets, it source MAC address with that of the

moves the packet to the virtual LAN physical Ethernet interface. It will

server 335 which handles the packet then queue the packet to the

and relays the packet on to the physical Ethernet driver.

correct destination(s). If the ARP

packet is a broadcast packet then the When an IP packet arrives, the IP

packet is relayed to all internal address will be extracted and the

nodes on the Virtual LAN. If the packet will be given to the

packet is a unicast packet the packet appropriate VLAN ARP server to

is sent only to the destination node. relay to the correct internal node.

The destination node is determined

by the IP address in the ARP packet Cisco Ex. 45 at

when the External Network 125 is EGENERA07836885-886.

running in filtered mode, or by the

MAC address in the Ethernet header

of the ARP packet (not the MAC

address is the ARP packet).

’430 Patent, col. 18, l. 35 - col. 19, l.

3.

Likewise, the two documents illustrate the relationship of the virtual LAN

proxy to other networking architecture components with substantially the

same figures.°

The ’430 patent Interframe Network

Architecture

Switch (2) pes a

Driver Driver |

g25a 825b, ee earliest ern ee □□□ :

RCLAN

| 330

Virtual Cluster Proxy Titel CG [Uist Cor a og nap.

360

ADIN aati aici

LL Physical LAN Physical LAN

Driver Driver ia het fers oe ee Ve ibisiel el ere

345a, | 345b pence iarou

FIG. 3B

Cisco Ex. 45 at EGENERA01836896

Egenera, while acknowledging that Schulter contributed to the

reduction to practice of the virtual LAN proxy, denies that he conceived it.

Egenera notes that “authorship of an article by itself does not raise a

3 Although the Interframe Network Architecture document uses the

term “LAN proxy” and the ’430 patent recoins it “virtual LAN proxy,” in light

of the substantial correspondence between the disclosures, there is no doubt

that the two refer to the same structure.

10

presumption of inventorship with respect to the subject matter disclosed in

the article,” In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982), and identifies

three earlier documents as supporting prior conception of the virtual LAN

proxy. “The Egenera Interframe: A New Architecture for Internet

Application Processing” is authored by inventors Ewan Milne and Paul

Curtis, and dated June 1, 2000. See Egenera Ex. 35 (Dkt # 164-39). The

Egenera Interframe document describes

Interframe™ Controller modules (IFC modules) [that] perform

I/O processing and system management functions, but do not

run application software. All of the external I/O interfaces are

connected to the IFC modules. Application Processor modules

(AP modules) run application software, but do not contain any

I/O interfaces other than the interface card for the system

interconnect. Application Processors are able to perform I/O

operations via a message-passing interface to the Interframe™

Controllers. External network interfaces on the Interframe™

Controllers forward incoming TCP/IP traffic to the Application

Processors by examining the fields in the packet header to route

the packet to the appropriate destination.

Id. at EGENERA00006421.

A distributed network implementation [] allows AP nodes with

no physical network interface to utilize the network interfaces on

the IFC nodes. The IFC nodes must be able to multiplex network

traffic from several AP nodes onto one physical network

interface, and demultiplex the incoming network traffic and send

it to the appropriate AP nodes. Some packet filtering logic will

be required. This could be extended for simple application load-

balancing.

Id. at EGENERA00006428. According to Egenera’s expert witness, Dr.

Mark Jones, the disclosures of the Egenera Interframe document “indicated

that the inventors knew by August 2000 that the IFC . . . would need to proxy

external communication and storage network traffic to and from AP nodes.”

Egenera Ex. 3 (Dkt # 164-5) ¶ 375.

Egenera’s second corroborating document is the September 29, 2000

Interframe I/O Architecture documents cited in its IPR response.

[T]the Interframe administrator can configure simulated

Ethernet interfaces on specific application nodes, together with

simulated connections among them or to a simulated router for

interconnecting to the external network. When an application

node requests transmission of a network packet, the network

driver in the node’s operating system kernel determines whether

the packet is destined for another application node within the

Interframe or for the external network. Packets destined for

another application node are sent directly to that node through

the Interframe’s Giganet switch. Packets destined for the

external network are forwarded through the Giganet switch to

one of the Interframe controller nodes, where I/O logic forwards

the packet out onto the actual external network interface.

Inbound packets arriving from the external network are routed

by I/O logic on the Interframe controller node through the

Interframe’s Giganet switch to the proper application node,

where the network driver in that node’s operating system kernel

in turn delivers them to their ultimate recipient.

Egenera Ex. 19 (Dkt 164-21) at EGENERA00006805-6806. The Interframe

I/O Architecture document further discloses the use of unique “simulated

MAC addresses . . . within a single Egenera Interframe system,” id. at

EGENERA00006810, and the use of simulated routers.

All the external network traffic generated by the application

nodes must be routed through the four Gigabit Ethernet

interfaces on the Interframe controller nodes. Application nodes

have no other access to the external network. In order for an

application node to access the external network, the Egenera

administrator must configure a simulated network interface card

on the node and configure simulated cabling between that card

and a simulated router on an Interframe controller node. The

administrator must then configure routing rules for that router

which will determine how incoming and outgoing network traffic

applicable to that node is handled by the router.

Id. at EGENERA00006812. Dr. H. Jonathan Chao, another of Egenera’s

expert witnesses, opined that that “all of the limitations of the claims of the

’430 patent are supported by the [Egenera Interframe I/O Architecture

document as incorporated in] the [(provisional)] Application.” Egenera Ex.

22 (Dkt # 164-24) ¶¶ 4-5.

Egenera’s third corroborating document is entitled “Egenera

Interframe Architecture,” dated October 1, 2000, and is also authored by

Max Smith. The Interframe Architecture document discloses that “[a]ll

application node I/O is routed indirectly through two Interframe controller

nodes that actually interface to the external Ethernet and storage area

network. Application nodes communicate with the Interframe controller

nodes and among themselves via pre-wired connections through two high-

speed switch nodes.” Egenera Ex. 36 (Dkt # 164-40) at

EGENERA00006788. Further, “[t]he node’s configuration also expresses

the virtual Ethernet network interfaces that will be simulated for the node

when it boots. This permits the node to be reached from the external high-

speed Ethernet network.” Id. at EGENERA00006799.

On this record, the court finds a genuine dispute of material fact as to

the conception of the VLAN proxy. “It is settled that in establishing

conception a party must show possession of every feature recited in the

count, and that every limitation of the count must have been known to the

inventor at the time of the alleged conception.” Coleman, 754 F.2d at 359

(emphasis added). The relevant claim limitation – “logic to modify said

received messages to transmit said modified messages to the external

communication network and to the external storage network” – requires

both message modification and message transmission functions for each of

the two external networks. The VLAN proxy “bridges the virtual LAN server

335 to the external network 125[,] . . . [and] convert[s] the internal virtual

MAC addresses from each node to the single external MAC assigned to the

system 100.” ’430 patent, col. 18, ll. 40-44. According to Schulter’s

Interframe Architecture document, this is the VLAN proxy’s “primary

function.” Cisco Ex. 45 at EGENERA01836885. The VLAN proxy modifies

outgoing messages before transmitting to the external communication

network – “it replace [sic] the internal format MAC address with the MAC

address of the physical Ethernet device 129 as the source MAC address.” ’430

patent, col. 18, ll. 56-58; see also Cisco Ex. 45 at EGENERA01836886 (the

VLAN proxy “replace [sic] the internal Giganet based MAC address with the

MAC address of the physical Ethernet device as the source MAC address.”).

Egenera’s priority documents, in sum, describe “Controller modules”

(the Egenera Interframe document) or “controller nodes” (the Interframe

I/O Architecture and Interframe Architecture documents) that interface

between internal application nodes/processors and the external

communication network. “Packets destined for the external network are

forwarded through the Giganet switch to one of the Interframe controller

nodes, where I/O logic forwards the packet out onto the actual external

network interface.” Egenera Ex. 19 at EGENERA00006805. The priority

documents do not explicitly disclose modifying messages before transmitting

them to the external communication network. Nevertheless, a question

remains whether the priority documents sufficiently corroborate the

conception of the message modification function for messages going to the

external communication network. For the parallel functions of message

modification and transmission to the external storage network (which are

covered by the same claim limitation), the Interframe I/O document

describes the use of “local device numbers,” and that “I/O server logic in the

Interframe controller node is aware of which node sent the request and is

able to translate that node’s device number into the proper actual partition

on the external storage area network or on an Interframe controller hard

drive.” Id. at EGENERA00006807 (emphasis added). While there is no

discussion of address translation for messages going to the external

communication network, the Interframe I/O document describe the

assignment and use of internal “simulated MAC addresses.” Id. at

EGENERA00006810.

Accepting arguendo that Egenera’s priority documents corroborate

the claimed modification function for messages bound for the external

communication network, Cisco argues that they do not disclose the

structures for performing this function. See Greenberg v. Ethicon Endo-

Surgery, Inc., 91 F.3d 1580, 1582 (Fed. Cir. 1996) (The scope of a means-

plus-function claim limitation is “restrict[ed] to the structure disclosed in the

specification and equivalents thereof.”). The ’430 patent and Schulter’s

Interframe Architecture describe and illustrate that virtual LAN proxy

connects the virtual LAN driver and physical LAN driver. While Egenera’s

priority documents indicate that “each controller nodes is connected . . . by

. . . Gigabit Ethernet links to the Internet or whatever exterior network

supports the Interframe,” Egenera Ex. 19 at Egenera00006805, they do not

specify any subcomponents for performing the message modification and

transmission functions. Neither party offers any analysis of whether the use

of a LAN server and a LAN proxy (albeit in their virtual forms) to perform

the stated message modification and transmission functions are “well-known

principles or [] the state of the art” that would not entitle the contributor to

inventor status. Ethicon, 135 F.3d at 1460. In light of the clear and

convincing standard governing challenges to patent validity, the court will

reserve judgment until it has had the opportunity to hear from the parties

and assess the credibility of any testifying witnesses.

ORDER

For the foregoing reasons, the court will DENY the cross-motions

regarding inventorship and set the issue for a bench trial commencing

January 2, 2019. The court will also DENY without prejudice the remaining

dispositive motions and will take them up, if necessary, after the resolution

of the inventorship dispute.

SO ORDERED.

/s/ Richard G. Stearns

UNITED STATES DISTRICT JUDGE