Petition for Writ of Certiorari — Infinity Computer Products, Inc., Petitioner v. Oki Data Americas, Inc.

APPENDIX

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APPENDIX A

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

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2020-1189

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INFINITY COMPUTER PRODUCTS, INC.,

Plaintiff-Appellant,

v.

OKI DATA AMERICAS, INC.,

Defendant- Appellee.

————

Appeal from the United States District Court

for the District of Delaware in

No. 1:18-cv-00463-LPS,

Chief Judge Leonard P. Stark.

————

Decided: February 10, 2021

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Before PROST, Chief Judge, CLEVENGER, and

TARANTO, Circuit Judges.

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OPINION

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PROST, Chief Judge.

Infinity Computer Products, Inc. (“Infinity”) appeals

the U.S. District Court for the District of Delaware’s

final judgment of invalidity. We agree with the district

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court that the patent claims asserted by Infinity

against Oki Data Americas, Inc. (“Oki Data”) are

indefinite. We therefore affirm.

BACKGROUND

I

Infinity sued Oki Data for infringing four related

patents: U.S. Patent Nos. 6,894,811 (“the ’811 patent”),

7,489,423, 8,040,574, and 8,294,915.1 The patents

share a specification and involve using a fax machine

as a printer or scanner for a personal computer. The

indefiniteness issues in this case revolve around the

connection between the fax machine and the computer,

termed a “passive link.” The parties agree that claim 1

of the ’811 patent is representative. That claim states:

1. A method of creating a scanning capability from

a facsimile machine to a computer, with scanned

image digital data signals transmitted through a

bi-directional direct connection via a passive link

between the facsimile machine and the computer,

comprising the steps of:

by-passing or isolating the facsimile machine and

the computer from the public network telephone

line;

coupling the facsimile machine to the computer;

conditioning the computer to receive digital

facsimile signals representing data on a scanned

document; and

conditioning the facsimile machine to transmit

digital signals representing data on a scanned

1 Infinity asserted claims 1–2, 4, 6–7, and 18–20 of the ’811

patent; claims 1–4 and 6 of U.S. Patent No. 7,489,423; claims 1–

2, 4–5, and 7–8 of U.S. Patent No. 8,040,574; and claims 1, 6–9,

and 14–15 of U.S. Patent No. 8,294,915.

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document to the computer, said computer being

equipped with unmodified standard protocol

send/receive driver communications software

enabling the reception of scanned image signals

from the facsimile machine, said transmitted

digital facsimile signals being received directly

into the computer through the bi-directional

direct connection via the passive link, thereafter,

said computer processing the received digital

facsimile signals of the scanned document as

needed.

’811 patent claim 1 (emphases added).

The ’811 patent is a continuation-in-part of U.S.

Patent App. No. 08/226,278 (“the ’278 application”),

which itself ultimately issued as U.S. Patent No.

5,530,558. The “principal object” of the claimed

invention is “to provide a circuit for interfacing a PC

and a facsimile to enable the facsimile to be utilized as

a scanner or a printer for a PC and to accomplish all of

the objectives of a scanner or a printer in a simple

straightforward manner through the use of a circuit of

highly simplified design and low cost.” ’811 patent col.

1 ll. 39–45; see id. Fig. 1 (circuit diagram).

Figures 2a–e of the ’811 patent depict this circuit

relative to a computer and a fax machine. They also

depict “facsimile modem circuitry,” which “may be

either internal or external” to the computer. Id. at col.

6 ll. 3–5. Figures 2b–d, for example, depict a fax

machine connected to a computer via an RJ-11 cable,

with fax modem circuitry located internal to the

computer.

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Fig. 2b

Id. Fig. 2b.

Figures 2f–h do not show fax modem circuitry

interposed between the fax machine and the computer.

Nor do they depict it as internal to the computer. The

arrangement of Figure 2f, for example, “is used with

PC’s which do not have a fax modem installed.” Id. at

col. 6 ll. 62–63. This figure depicts a fax machine

connected to a computer via an RS-232 cable, with

both the circuit of the invention and the fax modem

circuitry residing in the fax machine.

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Fig. 2f.

Id. Fig. 2f. Unlike Figures 2a–e, Figures 2f–h were not

disclosed in the parent ’278 application.

II

The term “passive link” does not appear in the ’811

patent specification. Nor does it appear in the parent

’278 application. Rather, Infinity first introduced the

term during prosecution of the ’811 patent to

distinguish an anticipating prior-art reference—U.S.

Patent No. 5,452,106 (“Perkins”). This reference, the

patent examiner noted, discloses using a fax machine

as a scanner or printer for a computer. J.A. 2129–30.

Infinity’s initial attempts at distinguishing Perkins

were unsuccessful. First, Infinity amended the claim

to recite (among other things) data transfer “between

the facsimile machine and the computer” that occurs

“without interruption.” J.A. 1227. Infinity also

distinguished Perkins at length in accompanying

remarks, on the ground that Perkins includes an

intervening component—“device 3”—between the fax

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machine and the computer. J.A. 1233–36. As Infinity

noted, one function of device 3 was to serve as a fax

modem. J.A. 1233.

Infinity asserted that, “[u]nlike Perkins,” the

claimed invention permits “the uninterrupted transfer

of scanning or printing signals between the facsimile

and the computer without the use of intervening

circuitry, and does not intercept the signals for

demodulation as Perkins does with device 3.” J.A.

1234. Later in the same response, Infinity reiterated

that its invention “does not require a microprocessor

or any circuitry or software to interrupt and intercept

the signals which occur in transmissions between a fax

machine and a computer.” J.A. 1235.

The examiner was not persuaded. Perkins’s device 3,

the examiner countered, “may be provided on a card

for location in the computer.” J.A. 3443. This internalcard embodiment, the examiner continued, represents

an “uninterrupted” connection between the fax

machine and the computer that defeats Infinity’s

distinction. J.A. 3443.

Infinity responded with further amendments and

remarks in several subsequent responses, including by

repeating the “intervening circuitry” distinction.

Eventually, Infinity overcame Perkins by amending

the claim to require a “passive link” between the fax

machine and the computer and by using this new term

as a hook for its intervening-circuitry distinction:

The Applicant creates a passive link between the

facsimile machine and the computer in order to

accommodate the signal transfer for printing or

scanning. Therefore, the Applicant does not

require any intervening apparatus as does

Perkins. The applicant therefore believes[ ]

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Perkins did not anticipate the methods used by

the Applicant.

J.A. 2196 (emphases added). In support, Infinity

emphasized that Perkins requires an intervening

modem:

Perkins’[s] device 3 or card design requires a

modem to be integrated into it in order to transfer

signals for scanning or printing as part of his

computer and facsimile transceiver interface. In

contrast, the Applicant can transfer digital

signals between the facsimile transceiver and the

computer without the need for a modem at the

computer interface.

J.A. 2197. In doing so, Infinity relied on its more recent

Figures 2f–h, which do not depict a fax modem

between the fax machine and the computer. J.A. 2198

(“[A] modem is not required at the computer in Figures

2F, 2G, and 2H.”).

Infinity also reprised its argument that Perkins’s

device 3 is intervening circuitry between the fax

machine and the computer—even when placed

internally. This is so, Infinity contended, because

device 3 intercepts data before it reaches the I/O bus

of the computer:

In [Perkins’s] internal configuration, facsimile

transmission data never enters the computer I/O

Bus until after it is processed by the device 3 card

circuits into digital data, thereafter, the flow of

data transfers to the I/O Bus and is processed by

the computer circuitry.

It is therefore evident that Perkins’[s] device 3

intercepts the flow of data before it is transmitted

to the computer circuits, in order to convert the

analog signal into a digital signal format

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acceptable to the computer. Hence, even though

circuitry of device 3 is placed in a card within the

box containing the computer it should be regarded

as a peripheral device to the computer which

processes data before it is transmitted to the I/O

bus of the computer.

J.A. 2201 (emphasis added).

Unlike Perkins’s internal-card embodiment, Infinity

argued, the claimed “passive link” conveys data

directly to the I/O bus of the computer without

intervening circuitry:

Contrary to the above, when the Applicant

transfers digital data from the facsimile

transceiver through a passive link for scanning to

the computer, the non-intercepted data enters

through the RS 232 type connector port of the

computer and passes directly to the I/O Bus and

is processed by the receiving circuits (i.e., UART,

CPU) of the computer, providing a true non

intercepted digital signal between the facsimile

transceiver and the computer.

In effect, the Applicant’s method does not use

intermediary peripheral circuitry for signal

interception, resulting in demodulation or

modulation which is required by Perkins with his

card or device 3.

J.A. 2201 (emphases added). This time, Infinity’s

argument was successful, and the ’811 patent issued

after further prosecution.

III

The ’811 patent was later the subject of three ex

parte reexaminations. In one of these, Infinity sought

to antedate a reference, U.S. Patent No. 5,900,947

(“Kenmochi”), by arguing that claim 1 of the ’811

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patent is entitled to the priority date of the ’278

application. Specifically, as Infinity recounted in

summarizing an examiner interview, Infinity asserted

that “the RJ-11 telephone cable shown in Figs. 2b, 2c

and 2d of the [’278 application] is the ‘direct’ and

‘passive link.’ ” J.A. 2500. Infinity made this argument

even though each of Figures 2b–d depicts internal fax

modem circuitry like Perkins’s internal-card

embodiment.

Likewise, in its written response to the Kenmochi

rejection, Infinity argued that “the RJ 11 telephone

cable and use thereof in communicating data between

the fax machine 30 and the PC computer 40 meets

the … definition of ‘passive link.’ ” J.A. 2377–78. “For

example, with respect to Figures 2b–2d” of the ’278

application, Infinity argued, “the RJ 11 telephone

cable connects the fax machine 30 to the PC computer

40 such that there is no intervening apparatus or

signal interception by a processing element or any

active component, along the path of an unbroken direct

connection between the PC and the facsimile

machine.” J.A. 2378 (internal quotation marks

omitted). Along the way, Infinity acknowledged that

“[t]he term ‘passive link’ was first introduced in an

amendment … to distinguish the invention of the [’811

patent] from Perkins.” J.A. 2377.

Infinity also submitted an expert declaration during

the reexamination. Without addressing the prior

distinction of Perkins, Infinity’s expert witness

likewise opined that Figures 2b–d of the ’278

application disclose a “passive link.” J.A. 1980. He

added that “the use of a modulation procedure within

the PC and facsimile machine as shown in the figures

does not insert an intervening apparatus or processing

element along the path, e.g. on the cable between the

PC’s RJ-11 and the fax’s RJ-11.” J.A. 1980.

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The examiner accepted Infinity’s argument without

expressly addressing Infinity’s prior distinction of

Perkins, J.A. 2525–29, despite recognizing in an

interview summary that “the ‘passive link’ limitation”

was a basis on which Infinity overcame “rejections

based on Perkins” during prosecution. J.A. 1992. After

further proceedings, including an appeal to the Patent

Trial and Appeal Board (“Board”), a reexamination

certificate ultimately issued noting the patentability of

the claims.

IV

In this case, Oki Data argued before the district

court that the terms “passive link” and “computer” are

indefinite because Infinity took conflicting positions on

the endpoint of the “passive link” during prosecution.

In particular, Oki Data argued that Infinity took one

position to overcome Perkins and a different position

to antedate Kenmochi—creating uncertainty as to

where the “passive link” ends and where the

“computer” begins. At the Markman hearing, Infinity

acknowledged that one of ordinary skill would need to

be reasonably certain where the passive link ends and

the computer begins in order for the claims to be

definite. Infinity Comput. Prods., Inc. v. Oki Data

Ams., Inc., No. 18-463, 2019 WL 2422597, at *4 (D.

Del. June 10, 2019), reconsideration denied, 2019 WL

5213250 (D. Del. Oct. 16, 2019).2

The district court agreed with Oki Data that

“passive link” and “computer” are indefinite. First, the

court explained that Infinity had taken materially

inconsistent positions regarding the extent of the

2 Markman Tr. 61:19–22, J.A. 3855 (The Court: “In order for

these claims to be definite, does one of skill in the art have to be

reasonably certain where the passive link ends and the computer

begins?” Mr. DiNovo: “Yes.”).

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claimed “passive link”—specifically, whether it ends at

the I/O bus inside the computer (as argued to

distinguish Perkins) or merely at the computer’s port

(as argued to antedate Kenmochi). Id. at *4–6.

Therefore, the court concluded, the endpoint of

“passive link” is not reasonably certain and the term is

indefinite. Id.

Second, the court reasoned that because there is not

reasonable certainty about where the “passive link”

ends, there also cannot be reasonable certainty about

where the “computer” begins. Id. at *6. “Specifically,

where the passive link ends at a computer port, the

computer begins at the port, and where the passive

link ends at the I/O bus, the computer begins at the

I/O bus.” Id. The court denied Infinity’s motion for

reconsideration and entered a final judgment of

invalidity. Infinity, 2019 WL 5213250, at *1–2; J.A. 22.

This appeal followed. We have jurisdiction under 28

U.S.C. § 1295(a)(1).

DISCUSSION

I

“The Patent Act requires that a patent specification

‘conclude with one or more claims particularly

pointing out and distinctly claiming the subject matter

which the applicant regards as [the] invention.’ ”

Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898,

901, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014) (alteration

in original) (quoting 35 U.S.C. § 112, ¶ 2 (2006)). “[A]

patent is invalid for indefiniteness if its claims, read in

light of the specification delineating the patent, and

the prosecution history, fail to inform, with reasonable

certainty, those skilled in the art about the scope of the

invention.” Id. This standard strikes the “delicate

balance” of accounting for both “the inherent

limitations of language” and the need to “afford clear

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notice of what is claimed, thereby apprising the public

of what is still open to them.” Id. at 909, 134 S.Ct. 2120

(cleaned up). It also serves as a “meaningful … check”

against “foster[ing] [an] innovation-discouraging ‘zone

of uncertainty.’ ” Id. at 910–11, 134 S.Ct. 2120 (quoting

United Carbon Co. v. Binney & Smith Co., 317 U.S.

228, 236, 63 S.Ct. 165, 87 L.Ed. 232 (1942)).

Indefiniteness is ultimately a question of law that

we review de novo. Teva Pharms. USA, Inc. v. Sandoz,

Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015). “[W]e look

to the patent record—the claims, specification, and

prosecution history—to ascertain if they convey to one

of skill in the art with reasonable certainty the scope

of the invention claimed.” Id. “The prosecution history

‘consists of the complete record of the proceedings

before

the

PTO,’ ”

including

reexamination

proceedings. InTouch Techs., Inc. v. VGO Commc’ns,

Inc., 751 F.3d 1327, 1341 (Fed. Cir. 2014) (quoting

Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir.

2005) (en banc)); see also Krippelz v. Ford Motor Co.,

667 F.3d 1261, 1266 (Fed. Cir. 2012) (“A patentee’s

statements during reexamination can be considered

during claim construction.”). And “[a] statement made

during prosecution of related patents may be properly

considered in construing a term common to those

patents.” Teva, 789 F.3d at 1343.

Indefiniteness may result from inconsistent

prosecution history statements where the claim

language and specification on their own leave an

uncertainty that, if unresolved, would produce

indefiniteness. In Teva, for example, we concluded

that the term “molecular weight” was indefinite. The

parties had agreed that the term could refer to any of

three different measures that are calculated in

different ways and that typically yield materially

different results. Id. at 1341. Neither the claim

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language nor the specification indicated which

measure the claims covered. Id. The prosecution

history did not answer the question. To the contrary,

in the prosecution histories of two continuation

applications with nearly identical specifications, the

patentee defined the term in two different ways—in

each case to successfully overcome a rejection. Id. at

1343–45. On that record, we concluded that the term

was indefinite. Id. at 1345. The record here is similar.

As with the term “molecular weight” in Teva, the claim

language and specification do not provide reasonable

certainty about a crucial aspect of “passive link,”

namely, where it ends. And far from resolving the

uncertainty during prosecution, Infinity took

conflicting positions during prosecution regarding the

scope of “passive link.”

At first, Infinity argued that a “passive link” does not

allow for intervening circuitry, like a fax modem,

between the fax machine and the I/O bus of the

computer. At the time, Infinity asserted that even

circuitry “within the box containing the computer,”

like Perkins’s device 3, “should be regarded as a

peripheral device to the computer which processes

data before it is transmitted to the I/O bus of the

computer.” J.A. 2201. Unlike Perkins, Infinity argued,

data transmitted “through a passive link … passes

directly to the I/O Bus and is processed by the

receiving circuits … of the computer.” J.A. 2201. On its

own, this position would lead one of ordinary skill to

believe a passive link does not end at the computer’s

port but rather reaches to the I/O bus of the

computer—especially “[g]iven the role of the statement

in gaining allowance of the claims,” Teva, 789 F.3d at

1344.

Later,

Infinity

reversed

course.

During

reexamination, Infinity contended that the passive

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link was coextensive with the RJ-11 cable in the

embodiments of Figures 2b–d—embodiments which do

include intervening circuitry (such as fax modems)

between the fax machine and the computer’s I/O bus—

indeed, within the “box containing the computer” like

Perkins’s device 3. On its own, this argument would

lead one of ordinary skill to believe a “passive link”

ends at the computer’s port.

The public-notice function of a patent and its

prosecution history requires that we hold patentees to

what they declare during prosecution. Teva, 789 F.3d

at 1344. But holding Infinity to both positions results

in a flat contradiction, providing no notice to the public

of “what is still open to them.” Nautilus, 572 U.S. at

909, 134 S.Ct. 2120. Here, one of ordinary skill cannot

determine with any reasonable certainty, for instance,

whether or not the claims cover arrangements like the

internal-card embodiment of Perkins and the internalmodem embodiments of Figures 2b–d. On the record

before us, therefore, we agree with the district court

that the intrinsic evidence leaves an ordinarily skilled

artisan without reasonable certainty as to where the

passive link ends and where the computer begins.

II

Infinity’s contrary arguments are unavailing. Before

the district court and on appeal, Infinity advanced its

reexamination interpretation—i.e., that the passive

link ends (and the computer begins) at the computer’s

port. But as the district court recognized, such an

interpretation contradicts Infinity’s distinction of

Perkins—in which Infinity called Perkins’s device 3 an

intervening apparatus even though it was internal to

the computer. Infinity, 2019 WL 5213250, at *1 (“Thus,

if the ‘passive link’ ends at a computer port and not at

the computer’s I/O bus, as Infinity now suggests,

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Perkins would include a ‘passive link,’ rendering the

patentee’s distinction from Perkins nugatory.”).

Infinity argues that the court misinterpreted its

statements distinguishing Perkins. According to

Infinity, the passive link is the physical cable spanning

the fax machine and the computer and Infinity’s

prosecution statements should be interpreted to mean

that the data flowing through the passive link, rather

than the passive link itself, proceeds uninterrupted to

the I/O bus. But “we hold patentees to the actual

arguments made, not the arguments that could have

been made” during prosecution. Tech. Props. Ltd. LLC

v. Huawei Techs. Co., 849 F.3d 1349, 1359 (Fed. Cir.

2017). And the Supreme Court has warned us against

“viewing matters post hoc” to “ascribe some meaning

to a patent’s claims.” Nautilus, 572 U.S. at 911–12, 134

S.Ct. 2120. Here, Infinity stated that the passive link

is the reason why its invention requires no intervening

apparatus. J.A. 2196 (“The Applicant creates a passive

link …. Therefore, the Applicant does not require any

intervening apparatus as does Perkins.”). To

distinguish Perkins’s internal-card embodiment, the

passive link could not be merely a cable that ends at

the computer’s port.

Infinity has also at various points relied on an

express definition of “passive link” that it presented to

the Patent Office. Infinity first offered this definition

in response to a rejection that came after Perkins was

withdrawn, and later again through its expert witness

during reexamination and before the Board.3 The

definition provides:

3 Infinity’s appeal to the Board concerned whether the ’278

application supports claims reciting digital-signal transmission.

J.A. 3281. In passing, the Board described Figures 2b–d of the

’811 patent as depicting a passive link—i.e., “the RJ-11 telephone

cable”—based on the definition that Infinity’s expert witness

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[A] “passive link” is one where the initiation of

data flow is activated from a set-up procedure

within the PC and/or the facsimile machine, and

said data is transferred, with no intervening

apparatus or signal interception by a processing

element or any active component, along the path

of an unbroken direct connection between the PC

and the facsimile machine, for purposes of

providing both scanning or printing data.

J.A. 1784. This is no help. According to this definition,

a passive link is “one” characterized by the properties

described. The definition, therefore, does not resolve

the point in question: the extent of the “link.”

Additionally, Infinity emphasizes that it submitted

“unrebutted expert testimony” to the district court. Yet

the testimony Infinity submitted merely states that

“passive link” needs no construction and, in the

alternative, that it should be construed according to

the unhelpful definition above. J.A. 2975–76. And, as

Oki Data notes, that testimony repeats the very same

statements made during reexamination that gave rise

to the inconsistency in the first place. Infinity’s

contradictory positions are plain from the patent

record. The district court therefore saw no need for

extrinsic evidence, and neither do we. See Teva, 789

F.3d at 1342 (“The internal coherence and context

assessment of the patent, and whether it conveys

claim meaning with reasonable certainty, are

questions of law.”).

We also reject Infinity’s argument that the district

court should not have held the claims indefinite based

on a “single statement.” E.g., Appellant’s Br. 50–53. As

proffered. J.A. 3284. The Board’s only mention of Perkins related

to Infinity’s prosecution argument that Perkins disclosed an

analog-only configuration. J.A. 3287.

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an initial matter, we disagree that the court did so. As

discussed above, Infinity repeatedly made the

distinction that was eventually successful in

overcoming Perkins. Moreover, as Oki Data points out,

a single contradictory statement was sufficient in

Teva. Indeed, we noted there that we hold patentees

even to erroneous prosecution statements. Teva, 789

F.3d at 1344.

Further, it is immaterial that Infinity also

distinguished Perkins on another ground—i.e., that

Perkins discloses an analog-only arrangement. See,

e.g., Andersen Corp. v. Fiber Composites, LLC, 474

F.3d 1361, 1374 (Fed. Cir. 2007) (“An applicant’s

invocation of multiple grounds for distinguishing a

prior art reference does not immunize each of them

from being used to construe the claim language.”).

Infinity admits that it made both distinctions during

prosecution. Reply Br. 20. And, for what it’s worth,

Infinity commented in an interview during

reexamination that “the examiner did not find the

analog versus digital signal argument persuasive.”

Reply Br. 20; J.A. 1992.

We also disagree that the presence of the term

“computer interface” in the claim at the time of the

Perkins distinction somehow harmonizes Infinity’s

inconsistent statements. As the district court

explained, the claim at the time also recited “a passive

link … from the facsimile machine to the computer.”

Infinity, 2019 WL 5213250, at *2 (alteration in

original). And Infinity “did not make any mention of,

let alone place any material significance on, the phrase

‘computer interface’ in its distinction of the claimed

invention’s ‘passive link’ from the connection in

Perkins.” Id.

Last, Infinity argues that “computer” is a familiar

term with a well-understood ordinary meaning. We

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recognize that, in a vacuum, it might seem odd to hold

“computer” indefinite. We also recognize that the

specification identifies examples of commercial

computers, such as an “Apple Macintosh” and an “IBM

PC.” ’811 patent col. 4 ll. 64–66. Yet the indefiniteness

here does not reside in the term “passive link” or

“computer” on its own but rather in the relationship

between the two in the context of these claims.4 And

any resulting strangeness stems from Infinity’s own

statements. See, e.g., J.A. 2201 (“[E]ven though

circuitry of device 3 is placed in a card within the box

containing the computer[,] it should be regarded as a

peripheral device to the computer.”). As already noted,

Infinity agrees that one of ordinary skill would need to

be reasonably certain where the passive link ends and

where the computer begins. There is no reasonable

certainty as to that boundary. We therefore agree with

the district court that both terms are indefinite.

III

We have considered Infinity’s remaining arguments

and find them unpersuasive. The district court

correctly concluded that the asserted claims are

invalid for indefiniteness. We affirm.

AFFIRMED

4 See Markman Tr. 49:19–25, J.A. 3843 (Mr. Labgold: “[W]e all

know what a computer is. That is not what the issue is. It’s the

way that it is being used and how it has been differentiated with

regard to the passive link.”).

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APPENDIX B

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

————

C.A. No. 18-463-LPS

————

INFINITY COMPUTER PRODUCTS, INC.,

Plaintiff,

v.

OKI DATA AMERICAS, INC.,

Defendant.

————

Signed 10/16/2019

————

MEMORANDUM ORDER

————

LEONARD P. STARK, UNITED STATES DISTRICT

JUDGE

At Wilmington this 16th day of October, 2019:

Pending before the Court is Plaintiff Infinity

Computer Products, Inc.’s (“Infinity”) motion for

reargument or reconsideration of the Court’s holding,

in its June 10, 2019 claim construction Opinion (D.I.

172) and Order (D.I. 173), that the claim terms

“passive link” and “computer” are indefinite. (D.I. 177)

Having reviewed the parties’ submissions (D.I. 178,

184, 186-1 Ex. A), IT IS HEREBY ORDERED that

Infinity’s motion for reconsideration (D.I. 177) is

DENIED for the following reasons:

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1. Pursuant to Local Rule 7.1.5, a motion for

reconsideration should be granted only “sparingly.”

The decision to grant such a motion lies squarely

within the discretion of the district court. See Dentsply

Int’l, Inc. v. Kerr Mfg. Co., 42 F. Supp. 2d 385, 419 (D.

Del. 1999); Brambles USA, Inc. v. Blocker, 735 F.

Supp. 1239, 1241 (D. Del. 1990). These types of

motions are granted only if the Court has patently

misunderstood a party, made a decision outside the

adversarial issues presented by the parties, or made

an error not of reasoning but of apprehension. See

Schering Corp. v. Amgen, Inc., 25 F. Supp. 2d 293, 295

(D. Del. 1998); Brambles, 735 F. Supp. at 1241. A

motion for reconsideration may be granted only if the

movant can show at least one of the following: (i) there

has been an intervening change in controlling law; (ii)

the availability of new evidence not available when the

court made its decision; or (iii) there is a need to correct

a clear error of law or fact to prevent manifest

injustice. See Max’s Seafood Café by Lou-Ann, Inc. v.

Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). However,

in no instance should reconsideration be granted if it

would not result in amendment of an order. See

Schering Corp., 25 F. Supp. 2d at 295.

2. Here, Infinity does not contend that there has

been an intervening change in law or that new

evidence is available. (See generally D.I. 178)

Therefore, Infinity has the burden to demonstrate a

clear error of law or fact in the Court’s reasoning.

Infinity has not met its burden.

3. Infinity fails to show a clear error of law or fact

with respect to its first contention: that the Court’s

interpretation of the patentee’s September 26, 2002

Office Action Response (“Office Action Response”) is

incorrect. (See id. at 2-6) After a review of that Office

Action Response, the Court concluded that the

21a

patentee had, in distinguishing a prior art reference

(U.S. Patent No. 5,452,106 to Perkins), taken the

position that the patentee’s claimed “passive link” was

passive from a fax machine to a computer’s

input/output (I/O) bus. (D.I. 172 at 8-9) Infinity now

argues that the Court’s conclusion was in error; to

Infinity, the patentee characterized the passive link as

ending at a computer port. (See D.I. 178 at 3-4) (“[T]he

passive link spans the facsimile machine to the

computer . . . and the computer begins at the RS 232

port . . . .”) The Court is unpersuaded. For reasons

explained at length in the Court’s claim construction

opinion (D.I. 172 at 8-11), Infinity’s characterization of

the patentee’s argument is simply inconsistent with

the Office Action Response itself, which repeatedly

mentions the “I/O Bus” as the endpoint of the link

between the “facsimile transceiver” and the

“computer.”1 (See D.I. 148-29 at 15 (Infinity37915))

Moreover, Infinity’s position that the “passive link”

ends at a computer port would not serve to distinguish

Perkins. As the patentee noted (see id.), Perkins

discloses embodiments in which a “facsimile device 3,”

which sits between a fax machine and a computer I/O

bus, can be placed inside a computer, such that a fax

machine is connected to the device via a port on the

computer. (See Perkins, 3:59-68, 9:24-32) Thus, if the

“passive link” ends at a computer port and not at the

computer’s I/O bus, as Infinity now suggests, Perkins

1 Infinity argues that the Court “conflat[es] the discussion of

the data flow which permissibly continues past the passive link

connection to the I/O bus – and potentially on to the CPU – with

the passive link’s endpoint.” (D.I. 178 at 4) (emphasis in original)

To the extent that the Court does so, it is because the patentee

did the same in the Office Action Response. See Tech. Properties

Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1359 (Fed. Cir.

2017) (noting that scope of patent disclaimer is commensurate

with “actual arguments made”).

22a

would include a “passive link,” rendering the

patentee’s distinction from Perkins nugatory. See

Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239

F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not,

like a ‘nose of wax,’ be twisted one way to avoid

anticipation and another to find infringement.”).

4. Infinity also fails to demonstrate that the Court

made a clear error of law or fact with respect to

Infinity’s second contention: that the discussion in the

Office Action Response is inapposite to the claims at

issue in this case, as the Response concerned a

different version of the claims.2 (See D.I. 178 at 6-9)

Infinity contends that claim 27, as it existed at the

time of the Office Action Response, had an “additional

requirement” over the current claims: “that the

endpoint of the passive link lead directly to the

‘computer interface.’” (Id. at 8) To Infinity, this

requirement renders the Office Action Response’s

distinction from Perkins inapplicable to the

interpretation of the asserted claims, which do not

recite a “computer interface” but instead recite a

“passive link” that extends to a “computer.” (Id. at 8-9)

Infinity’s argument is unpersuasive. Although Claim

27 recites sending data through a “passive link” to a

“computer interface,” it also recites “a passive link . . .

from the facsimile machine to the computer,” which is

essentially the same limitation as appears in the

asserted claims. (See D.I. 148-29 at 20 (Infinity37920))

Moreover, the patentee in the Office Action Response

did not make any mention of, let alone place any

material significance on, the phrase “computer

interface” in its distinction of the claimed invention’s

2 The Court notes that Infinity did not raise this argument in

its original briefing (see generally D.I. 149, 159), and first

mentioned it during the claim construction hearing (Tr. at 63-66,

76-77). The Court will nevertheless consider the argument.

23a

“passive link” from the connection in Perkins. (See id.

at 15) Therefore, a person of ordinary skill would find

the patentee’s discussion of the endpoint of the

“passive link” in the Office Action Response to indicate

the endpoint of the “passive link” in the asserted

claims. See Fonar Corp. v. Johnson & Johnson, 821

F.2d 627, 632 (Fed. Cir. 1987) (holding that meaning

of claim term must be consistent throughout patent);

see also Acromed Corp. v. Sofamor Danek Grp., Inc.,

253 F.3d 1371, 1382 (Fed. Cir. 2001); Tr. at 76-77

(Infinity agreeing that “a [POSA] can, and should, rely

on” “any discussion in the prosecution” of “passive

link,” as long as Patent Office agrees with discussion).

5. Infinity’s third and final contention – that the

Court applied the wrong standard for patent

disclaimer – also lacks merit. (See D.I. 178 at 9-10)

Infinity seems to find a conflict between “the

proposition that surrender can exceed that which is

required by the prior art” (which Infinity contends the

Court adopted) and the standard that disavowal must

be “clear and unmistakable” (which Infinity contends

the Court did not). (Id.) Contrary to Infinity’s

contention, these two points of law are not in conflict

here; the patentee’s distinction from Perkins on the

basis of the claimed “passive link” was not ambiguous

or “amenable to multiple reasonable interpretations.”

(See id. at 10) Instead, in the Office Action Response,

the patentee took the clear and unmistakable position

that the claimed “passive link” extends from a fax

machine to the I/O bus of a computer. Even if the

alternative distinctions from Perkins that Infinity has

made in this litigation (see id. at 2-9) were persuasive

(they are not), Infinity cannot negate the impact of the

patentee’s clear and unmistakable position during

prosecution. See Tech Properties Ltd. v. Huawei Techs.

Co., 849 F.3d 1349 (Fed. Cir. 2017).

24a

6. For these reasons, the Court denies Infinity’s

motion for reconsideration of the Court’s holding that

“passive link” and “computer”3 are indefinite.

/s/ Leonard P. Stark

HONORABLE LEONARD P. STARK

UNITED STATES DISTRICT COURT

3 Infinity does not provide any additional arguments with

respect to the Court’s finding that the term “computer” is

indefinite (D.I. 178 at 10), so Infinity’s motion with respect to that

term fails for the reasons explained above for “passive link.”

25a

APPENDIX C

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

————

C.A. No. 18-463-LPS

————

INFINITY COMPUTER PRODUCTS, INC.,

Plaintiff,

v.

OKI DATA AMERICAS, INC.,

Defendant.

————

June 10, 2019

Wilmington, Delaware

————

MEMORANDUM OPINION

————

STARK, U.S. District Judge:

Plaintiff Infinity Computer Products, Inc.

(“Infinity”) sued Defendant Oki Data Americas, Inc.

(“Oki Data”), alleging that Oki Data infringes

Infinity’s U.S. Patent Nos. 6,894,811 (“the ’811

patent”), 7,489,423 (“the ’423 patent”), 8,040,574 (“the

’574 patent”), and 8,294,915 (“the ’915 patent”). (D.I. 1)

The asserted patents relate to systems for connecting

a fax machine to a computer so that the fax machine

can be used as a printer or scanner. (See ’811 patent,

Abstract) Oki Data makes devices that Infinity

contends infringe the patents. (D.I. 1 ¶¶ 17-20)

26a

Presently before the Court are the parties’ disputes

over the meaning of certain claim terms in the

asserted claims. The parties submitted claim

construction briefs. (D.I. 149, 151, 159, 162) Infinity

submitted a technology tutorial (D.I. 150), to which

Oki Data submitted objections (D.I. 161). The Court

held a claim construction hearing on February 4, 2019.

(See D.I. 170 (“Tr.”))

I.

LEGAL STANDARDS

A.

Claim Construction

The ultimate question of the proper construction of

a patent is a question of law. See Teva Pharm. USA,

Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015) (citing

Markman v. Westview Instruments, Inc., 517 U.S. 370,

388-91 (1996)). “It is a bedrock principle of patent law

that the claims of a patent define the invention to

which the patentee is entitled the right to exclude.”

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.

2005) (citation and internal quotation marks omitted).

“[T]here is no magic formula or catechism for

conducting claim construction.” Id. at 1324. Instead,

the court is free to attach the appropriate weight to

appropriate sources “in light of the statutes and

policies that inform patent law.” Id.

“[T]he words of a claim are generally given their

ordinary and customary meaning . . . . [which is] the

meaning that the term would have to a person of

ordinary skill in the art in question at the time of the

invention, i.e., as of the effective filing date of the

patent application.” Id. at 1312-13 (internal citations

and quotation marks omitted). “[T]he ordinary

meaning of a claim term is its meaning to the ordinary

artisan after reading the entire patent.” Id. at 1321

(internal quotation marks omitted). The patent

“specification is always highly relevant to the claim

27a

construction analysis. Usually, it is dispositive; it is

the single best guide to the meaning of a disputed

term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d

1576, 1582 (Fed. Cir. 1996).

While “the claims themselves provide substantial

guidance as to the meaning of particular claim terms,”

the context of the surrounding words of the claim also

must be considered. Phillips, 415 F.3d at 1314.

Furthermore, “[o]ther claims of the patent in question,

both asserted and unasserted, can also be valuable

sources of enlightenment . . . . [b]ecause claim terms

are normally used consistently throughout the

patent.” Id. (internal citation omitted).

It is likewise true that “[d]ifferences among claims

can also be a useful guide . . . . For example, the

presence of a dependent claim that adds a particular

limitation gives rise to a presumption that the

limitation in question is not present in the

independent claim.” Id. at 1314-15 (internal citation

omitted). This “presumption is especially strong when

the limitation in dispute is the only meaningful

difference between an independent and dependent

claim, and one party is urging that the limitation in

the dependent claim should be read into the

independent claim.” SunRace Roots Enter. Co., Ltd. v.

SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).

It is also possible that “the specification may reveal

a special definition given to a claim term by the

patentee that differs from the meaning it would

otherwise possess. In such cases, the inventor’s

lexicography governs.” Phillips, 415 F.3d at 1316. It

bears emphasis that “[e]ven when the specification

describes only a single embodiment, the claims of the

patent will not be read restrictively unless the

patentee has demonstrated a clear intention to limit

the claim scope using words or expressions of manifest

28a

exclusion or restriction.” Hill-Rom Servs., Inc. v.

Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014)

(quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358

F.3d 898, 906 (Fed. Cir. 2004)) (alteration in original)

(internal quotation marks omitted).

In addition to the specification, a court “should also

consider the patent’s prosecution history, if it is in

evidence.” Markman v. Westview Instruments, Inc., 52

F.3d 967, 980 (Fed. Cir. 1995), aff’d, 517 U.S. 370

(1996). The prosecution history, which is “intrinsic

evidence,” “consists of the complete record of the

proceedings before the [Patent and Trademark Office]

and includes the prior art cited during the

examination of the patent.” Phillips, 415 F.3d at 1317.

“[T]he prosecution history can often inform the

meaning of the claim language by demonstrating how

the inventor understood the invention and whether

the inventor limited the invention in the course of

prosecution, making the claim scope narrower than it

would otherwise be.” Id.

“In some cases, . . . the district court will need to look

beyond the patent’s intrinsic evidence and to consult

extrinsic evidence in order to understand, for example,

the background science or the meaning of a term in the

relevant art during the relevant time period.” Teva,

135 S. Ct. at 841. “Extrinsic evidence consists of all

evidence external to the patent and prosecution

history, including expert and inventor testimony,

dictionaries, and learned treatises.” Markman, 52 F.3d

at 980. For instance, technical dictionaries can assist

the court in determining the meaning of a term to

those of skill in the relevant art because such

dictionaries “endeavor to collect the accepted

meanings of terms used in various fields of science and

technology.” Phillips, 415 F.3d at 1318. In addition,

expert testimony can be useful “to ensure that the

29a

court’s understanding of the technical aspects of the

patent is consistent with that of a person of skill in the

art, or to establish that a particular term in the patent

or the prior art has a particular meaning in the

pertinent field.” Id. Nonetheless, courts must not lose

sight of the fact that “expert reports and testimony

[are] generated at the time of and for the purpose of

litigation and thus can suffer from bias that is not

present in intrinsic evidence.” Id. Overall, while

extrinsic evidence “may be useful to the court,” it is

“less reliable” than intrinsic evidence, and its

consideration “is unlikely to result in a reliable

interpretation of patent claim scope unless considered

in the context of the intrinsic evidence.” Id. at 1318-19.

Where the intrinsic record unambiguously describes

the scope of the patented invention, reliance on any

extrinsic evidence is improper. See Pitney Bowes, Inc.

v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir.

1999) (citing Vitronics, 90 F.3d at 1583).

Finally, “[t]he construction that stays true to the

claim language and most naturally aligns with the

patent’s description of the invention will be, in the end,

the correct construction.” Renishaw PLC v. Marposs

Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.

1998). It follows that “a claim interpretation that

would exclude the inventor’s device is rarely the

correct interpretation.” Osram GmbH v. Int’l Trade

Comm’n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (quoting

Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d

1545, 1550 (Fed. Cir. 1996)).

B.

Indefiniteness

A patent claim is indefinite if, “viewed in light of the

specification and prosecution history, [it fails to]

inform those skilled in the art about the scope of the

invention with reasonable certainty.” Nautilus, Inc. v.

Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).

30a

A claim may be indefinite if the patent does not convey

with reasonable certainty how to measure a claimed

feature. See Teva Pharm. USA, Inc. v. Sandoz, Inc.,

789 F.3d 1335, 1341 (Fed. Cir. 2015). But “[i]f such an

understanding of how to measure the claimed [feature]

was within the scope of knowledge possessed by one of

ordinary skill in the art, there is no requirement for

the specification to identify a particular measurement

technique.” Ethicon Endo–Surgery, Inc. v. Covidien,

Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).

II.

CONSTRUCTION OF DISPUTED TERMS

A.

“facsimile machine” and “fax machine”1

Infinity

No construction necessary

or

“a device that is capable of sending and receiving a fax,

including associated scan and print functionality”

Oki Data

“a standard facsimile machine”

or

“a conventional facsimile machine”

Court

“a device that is capable of sending and receiving a

fax over a phone line and includes associated scan

and print functionality”

The parties agree that a “fax machine” or “facsimile

machine” must be capable of sending and receiving a

fax over a phone line. (Tr. 11, 35 (Infinity: “in our view,

I think a person of ordinary skill in the art would

1 The terms “facsimile machine” or “fax machine” appear in

claims 1, 2, 4, 6, 7, and 18-20 of the ’811 patent, claims 1-4 and 6

of the ’423 patent, claims 1, 2, 4, 5, 7, and 8 of the ’574 patent, and

claims 1, 6-9, 14, and 15 of the ’915 patent.

31a

understand that a fax machine has a phone line

sending capability”); id. at 17 (Oki Data: “fax

machine . . . would normally only communicate with

the outside world through a telephone line”))

The parties’ central dispute regarding this term is

whether, as Oki Data contends (D.I. 151 at 10-14), the

“fax machine” and “facsimile machine”2 must be

standard or conventional, or whether, as Infinity

contends (D.I. 149 at 13-16), the terms may include

non-standard and non-conventional machines.

The Court agrees with Infinity because the plain

meaning of “fax machine” does not exclude nonstandard machines, and the specification further

supports this broad construction. Generally, a

construction should depart from plain and ordinary

meaning only when a patentee acts as its own

lexicographer or disavows claim scope during

prosecution. See Poly-Am, L.P. v. API Indus., Inc., 839

F.3d 1131, 1136 (Fed. Cir. 2016). To narrow the scope

of an otherwise broad term, the specification must

demonstrate a “clear intention . . . using words or

expressions of manifest exclusion or restriction.” HillRom, 755 F.3d at 1372. Here, the specification does not

show any clear intention to require a fax machine to

be standard or conventional. To the contrary, Figures

2c, 2f, and 2h show the inventive “interface circuit 10”

inside the fax machine. A fax machine including

interface circuit 10 would not be standard or

conventional. Such a fax machine would also be

excluded from the claims under Oki Data’s

construction, a result that is disfavored. See Broadcom

Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed. Cir.

2 The claims use “fax machine” and “facsimile machine”

interchangeably. For clarity, the Court will refer to both terms as

fax machines.

32a

2013) (“[A]n interpretation which excludes a disclosed

embodiment from the scope of the claim is rarely, if

ever, correct.”) (internal alterations and quotation

marks omitted).

The specification suggests that the use of a

conventional fax machine may be a preferred

embodiment (’811 patent, Abstract), and that a

“principal object” of the invention is to allow a

conventional fax machine to be used as a scanner or

printer using “a circuit of highly simplified design and

low cost” (id., 1:25-40). Still, nothing in the

specification establishes that the fax machine used in

the invention must be conventional. See Northrop

Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1355

(Fed. Cir. 2003) (holding claims not limited to certain

context even though inventor conceived that invention

“would be used principally, if not exclusively,” in that

context, even when specification “refers repeatedly to

the advantages of the invention in that context”).

Oki Data contends that the patentee’s arguments

distinguishing U.S. Patent No. 5,598,533 to Yokota

(“Yokota”) limit the claims to conventional fax

machines. (D.I. 151 at 12-13) However, the patentee

merely argued that the claimed invention, unlike

Yokota, could be used with a standard fax machine.

(D.I. 148-10 Ex. 6 at 20) (distinguishing Yokota as

requiring “a complex memory and interrupt service

routine based interface between PC-like and Fax-like

components that were integrated into a single box”)

33a

B.

“passive link”3

Infinity

No construction necessary

or

“a link where the initiation of data flow is activated

from a setup procedure within the PC and/or the

facsimile machine, and the data is transferred, with

no intervening apparatus or signal interception by a

processing element or any active component, along

the path of an unbroken direct connection between

the PC and facsimile machine, for purposes of

providing scanning and/or printing data”

Oki Data

Indefinite

or

“a link where the initiation of data flow is activated

from a set-up procedure within the PC and/or the

facsimile machine, and said data is transferred, with

no intervening apparatus or signal interception by a

processing element or any active component, along

the path of an unbroken direct connection between

the PC and the facsimile machine”

Court

Indefinite

Each of the asserted independent claims recites

connecting a fax machine to a computer “via a passive

link.” Oki Data contends that “passive link” is

indefinite because, during prosecution of the ’811

patent, the patentee took contradictory positions as to

whether a passive link must extend (i) all the way to

3 The term “passive link” appears in claims 1, 6, 7, and 18-20 of

the ’811 patent, claims 1, 2, and 6 of the ’423 patent, claims 1, 7,

and 8 of the ’574 patent, and claims 1 and 9 of the ’915 patent.

34a

the I/O bus of a computer, or (ii) only to a port on the

housing of the computer, such that an “intervening

apparatus” (such as a fax modem) may be located

between the passive link and the I/O bus. (D.I. 151 at

15) Infinity agrees that in order for the Court not to

find “passive link” indefinite, one of skill in the art

would have to be reasonably certain as to where the

passive link ends and the computer begins (Tr. 61-62),

and further agrees that one of skill in the art would

look to the prosecution history in determining the

meaning of “passive link” (id. at 67).

During prosecution of the ’811 patent, the patentee

maintained that a passive link must extend to a

computer’s I/O bus without any intervening devices. In

response to an obviousness rejection, the patentee

distinguished U.S. Patent No. 5,452,106 to Perkins

(“Perkins”) on the basis that Perkins did not include a

passive link as recited by the claims. (D.I. 148-29 Ex.

25) Perkins discloses a system for connecting a fax

machine to a computer via a “facsimile device 3” that

connects to the fax machine via a phone line and to the

computer via a serial cable. (Perkins 3:59-68) The

facsimile device might be a standalone device or,

alternatively, be located on a card inside a computer.

(Id. 3:59-68,9:24-32) The patentee argued that Perkins

lacked a passive link because, in Perkins’

configuration, the “facsimile transmission never

enters the computer I/O bus until after it is

processed by device 3 . . . . Contrary to the above, [in

the claimed invention], the non-intercepted data

enters through the [serial] type connector port of

the computer and passes directly to the I/O

bus . . . providing a true non-intercepted signal

between the facsimile transceiver and the computer.”

(D.I. 148-29 Ex. 25 at 12) (emphasis added)

35a

However, during a later ex parte reexamination of

the ’811 patent, the patentee argued that a passive

link need only extend to a computer port without any

intervening device. During reexamination, the claims

were rejected as anticipated by U.S. Patent No.

5,900,947 to Kenmochi et al. (“Kenmochi”). (D.I. 151-5

Ex. 52 at 14) The patentee responded that Kenmochi

was not prior art because the effective priority date of

the claims was not the filing date of the ’056

application, but rather the filing date of the ’278

application, of which the ’056 application was a

continuation-in-part. (D.I. 148-18 Ex. 14 at 7) The

patentee argued that written description for the

“passive link” term could be found in Figures 2b, 2c,

and 2d, which were present in the ’278 application.

(Id.) Specifically, the patentee argued that passive link

in each of Figs. 2b-2d was the RJ-11 (phone line) cable

from the fax machine to the RJ-11 port on the

computer’s fax modem. (Id.) On this understanding, a

passive link need only be uninterrupted from the fax

machine to a port on the computer; it may be further

processed in the computer before it passes to the I/O

bus. (See id.; U.S. Patent App. No. 90/013,208, Final

Office Action dated 2/11/2015 at 20-25 (concluding,

based on patentee’s arguments, that “the claimed

‘passive link’ . . . constitutes the direct physical

connection between the facsimile machine and the

computer, regardless of whether the PC included

an internal modem”) (emphasis added).

Oki Data’s diagrams characterizing the prosecution

history, reproduced below, accurately depict the

understanding a person of ordinary skill would have

when reading the prosecution history.

(D.I. 151 at 8)

36a

(D.I. 151 at 8)

Oki Data has met its burden to show indefiniteness

by clear and convincing evidence. During prosecution,

the patentee distinguished prior art references by

characterizing “passive link” as requiring the link to

be entirely passive from the fax machine to the

computer’s I/O bus (in the patentee’s words, “a true

non-intercepted digital signal”). (D.I. 128-29 Ex. 25 at

12) This is depicted in the first diagram above. Then,

however, in order to claim the filing date of the ’278

application, the patentee characterized “passive link”

as only requiring the link to be passive from the fax

machine to a port on the computer. (D.I. 148-18 Ex. 14

at 7) This is depicted in the second diagram above.

Under the patentee’s first definition, the ’278

application lacks written description for a passive link

because the ’278 application does not disclose a link

that was passive until the computer’s I/O bus. Rather,

37a

under that definition, each embodiment disclosed in

the ’278 application includes an intervening

apparatus – a modem – between the fax machine and

the I/O bus. (See ’811 patent, Figs. 2b-2d) Conversely,

the patentee’s second definition, used to overcome the

written description rejection, would not distinguish

the Perkins patent because Perkins teaches

connecting a fax machine to a computer a via an

intervening device: a “facsimile device” inside the

computer.

(Perkins

9:24-32)

The

patentee’s

contentions regarding “passive link” have been

materially inconsistent. Hence, a person of ordinary

skill in the art would not be reasonably certain as to

which of the patentee’s two inconsistent definitions of

“passive link” is used in the claims, rendering the

claims indefinite. See Teva, 789 F.3d at 1345 (holding

claim term indefinite where patentee used two

inconsistent definitions of term during prosecution).

Infinity is not correct that the PTAB’s construction

during reexamination is “the definitive outcome of the

prosecution history.” (D.I. 159 at 5) The PTAB’s

construction of a claim term is not binding on a district

court. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,

1359-60 (Fed. Cir. 2007). Moreover, the PTAB did not

consider the argument now before this Court. (See

generally D.I. 149-9 Ex. 3) The issue before the PTAB

was whether there was written description for both

analog and digital signals in the ’278 patent, and the

PTAB only rejected the contention that the patentee,

in distinguishing Perkins, limited the claims to “solely

analog transmission.” (D.I. 149-9 Ex. 3 at 12)

(emphasis in original). The PTAB’s conclusion is not

relevant to the question before this Court: whether the

patentee took inconsistent positions with respect to

the endpoint of the passive link.

38a

Infinity’s argument that its construction does not, in

fact, conflict with Perkins also misses the mark. (See

D.I. 159 at 7-9) Infinity’s post hoc distinction of

Perkins does not negate the patentee’s far more

specific arguments during prosecution. See Tech.

Properties, 849 F.3d at 1359 (holding that “the scope of

surrender is not limited to what is absolutely

necessary to avoid a prior art reference” but rather to

“the actual arguments made”). Moreover, Infinity’s

distinction fails on its merits: Perkins contemplates

the facsimile device being inside a PC and, so,

envisions embodiments with a direct, passive

connection between a fax machine and a PC port.

(Perkins, 9:24-32)

C.

“computer”4

Infinity

No construction necessary

Oki Data

Indefinite

Court

Indefinite

The parties’ dispute over “computer” mirrors their

dispute over “passive link.” Infinity contends that the

term is a “straightforward word” that is “readily

understood by a person of skill in the art, the Court

and jury without construction.” (D.I. 149 at 20) Oki

Data argues that “computer” is indefinite for

essentially the same reasons as it provided for “passive

link.” (D.I. 151 at 20)

4 The term “computer” appears in claims 1, 2, 4, 6, 7, and 18-20

of the ’811 patent, claims 1-4, and 6 of the ’423 patent, claims 1,

2, 4, 5, 7, and 8 of the ’574 patent, and claims 1 and 9 of the ’915

patent.

39a

The Court agrees with Oki Data for the same

reasons as provided above for “passive link.” Each

claim that recites “passive link” states that the passive

link connects a “facsimile machine” and a “computer.”

(See, e.g., ’811 patent. cl. 12) (reciting “transferring

data signals . . . via a passive link between the

facsimile machine and the computer”)) Given that the

two definitions for “passive link” vary in their end

point – one connects the fax machine to a port on a

computer, and another connects the fax machine to the

I/O bus of the computer – it follows that the scope of

“computer” changes depending on the definition.

Specifically, where the passive link ends at a computer

port, the computer begins at the port, and where the

passive link ends at the I/O bus, the computer begins

at the I/O bus. Accordingly, a person of ordinary skill

in the art would not be reasonably certain as to what

the claims mean by “computer.” See Teva, 789 F.3d at

1345.

Infinity provides several arguments as to why

“computer” is not indefinite, but none are persuasive.

(See D.I. 149 at 20-21; D.I. 159 at 10) Infinity points to

the statement in the specification that “[t]he PC . . .

may be any type of computer (including but not limited

to an Apple Macintosh, IBM PC, PCAT or PCXT).”

(D.I. 149 at 20) Infinity also notes that “computer” has

been construed or given its plain meaning in many

unrelated patents. (Id.) Infinity further points out that

defendants in related cases have not suggested that

“computer” is indefinite. (D.I. 159 at 10) Yet neither

the specification nor any case cited by Infinity resolves

the ambiguity created by the prosecution history of the

patents-in-suit. The fact that an indefiniteness

argument was not made by defendants in other cases

does not render the argument being made here less

meritorious.

40a

III. CONCLUSION

The Court will construe the disputed terms as

explained above. An appropriate Order follows.

41a

APPENDIX D

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

————

C.A. No. 18-463-LPS

————

INFINITY COMPUTER PRODUCTS, INC.,

Plaintiff,

v.

OKI DATA AMERICAS, INC.,

Defendant.

————

ORDER

————

At Wilmington, this 10th day of June, 2019:

For the reasons set forth in the Memorandum

Opinion issued this date,

IT IS HEREBY ORDERED that the claim terms in

this case are construed as follows:

Court’s Construction

“a device that is capable of sending

“facsimile

and receiving a fax over a phone

machine”

line and includes associated scan

and print functionality”

“a device that is capable of sending

and receiving a fax over a phone

“fax machine”

line and includes associated scan

and print functionality”

“passive link” Indefinite

“computer”

Indefinite

Claim Term

42a

/s/ Leonard P. Stark

UNITED STATES DISTRICT JUDGE

43a

APPENDIX E

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

————

2020-1189

————

INFINITY COMPUTER PRODUCTS, INC.,

Plaintiff-Appellant,

v.

OKI DATA AMERICAS, INC.,

Defendant- Appellee.

————

Appeal from the United States District Court

for the District of Delaware in

No. 1:18-cv-00463-LPS,

Chief Judge Leonard P. Stark.

————

ON PETITION FOR PANEL REHEARING

AND REHEARING EN BANC

————

NOTE: This order is nonprecedential.

————

Before PROST, Chief Judge, NEWMAN, LOURIE,

CLEVENGER*, DYK, MOORE, O’MALLEY, REYNA,

WALLACH, TARANTO, CHEN, HUGHES, and STOLL,

Circuit Judges.

* Circuit Judge Clevenger participated only in the decision on

the petition for panel rehearing.

44a

————

PER CURIAM.

————

ORDER

————

Infinity Computer Products, Inc. filed a combined

petition for panel rehearing and rehearing en banc.

The petition was referred to the panel that heard the

appeal, and thereafter the petition for rehearing en

banc was referred to the circuit judges who are in

regular active service.

Upon consideration thereof,

IT IS ORDERED THAT:

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

The mandate of the court will issue on April 21, 2021.

FOR THE COURT

April 14, 2021

Date

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court