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Fujitsu Limited v. Tellabs Operations

March 31, 2011

FUJITSU LIMITED, PLAINTIFF,
v.
TELLABS OPERATIONS, INC. AND TELLABS, INC., DEFENDANTS.
TELLABS OPERATIONS, INC. PLAINTIFF,
v.
CONSOLIDATED FOR DISCOVERY FUJITSU LIMITED AND FUJITSU NETWORK COMMUNICATIONS, INC., DEFENDANTS.
FUJITSU LIMITED, COUNTER CLAIMANT,
v.
TELLABS OPERATIONS, INC., TELLABS, INC., AND TELLABS NORTH AMERICA, INC., COUNTER DEFENDANTS.



The opinion of the court was delivered by: James F. Holderman, Chief Judge

MEMORANDUM OPINION AND ORDER

On January 29, 2008, Fujitsu Limited filed a complaint against Tellabs, Inc. and Tellabs Operations, Inc. in the United States District Court for the Eastern District of Texas ("Texas Action") alleging infringement of U.S. Patent Nos. 5,526,163 ("'163 Patent"); 5,521,737 ("'737 Patent"); 5,386,418 ("'418 Patent"); and 6,487,686 ("'686 Patent").*fn1 (Case No. 09-4530, Dkt. No. 1, Fujitsu's Compl. ¶¶ 1, 12-35.) Tellabs Operations, Inc. then filed suit against Fujitsu Limited and Fujitsu Network Communications, Inc. (collectively "Fujitsu") in the United States District Court for the Northern District of Illinois ("Illinois Action") on June 11, 2008, alleging infringement of U.S. Patent No. 7,369,772 ("'772 Patent"). (Case No. 08-3379, Dkt. No. 1, Tellabs's Compl. ¶ 1.) Both Fujitsu Limited and Fujitsu Network Communications, Inc. filed their amended answers, affirmative defenses, and counterclaims in the Illinois Action on April 1, 2009. (Dkt. Nos. 119, 120.) In its counterclaims, Fujitsu Limited alleged that Tellabs Operations, Inc., Tellabs, Inc., and Tellabs North America (collectively "Tellabs") infringed two additional patents assigned to Fujitsu Limited: U.S. Patent Nos. 7,227,681 ("'681 Patent") and 5,533,006 ("'006 Patent"). (Dkt. No. 119.)

On May 13, 2009, this court issued its preliminary claim constructions of certain disputed claim terms in the '772, '681, and '006 Patents. The Texas Action subsequently was transferred to the Northern District of Illinois on July 29, 2009, and the two cases were consolidated for purposes of discovery. (Case No. 08-3379, Dkt. No. 202.) After the cases were consolidated, this court held a technology tutorial related to the general technology underlying the six patents-in-suit, including the '006 Patent.

The parties identified additional claim terms for the court to construe and filed briefs related to those proposed constructions. Tellabs also filed two motions for summary judgment: Tellabs's "Motion for Summary Judgment of Invalidity Based on Indefiniteness of All Asserted Claims (1 and 6-9) of U.S. Patent No. 5,386,418" (Case No. 09-4530, Dkt. No. 165) and its "Motion for Summary Judgment of Invalidity Based on Indefiniteness of All Claims of U.S. Patent 5,533,006" (Case No. 08-3379, Dkt. No. 305). Fujitsu then filed its "Motion for Summary Judgment for Judicial Correction of 'And' to 'A' in Claim 1 of U.S. Patent 5,386,418" (Case No. 09-4530, Dkt. No. 202). On November 30 and December 1, 2, 3, and 7, 2010, the court held a Markman hearing, during which the parties' counsel addressed the respective claim construction positions as well as the pending motions for summary judgment.

For the reasons explained below, Tellabs's "Motion for Summary Judgment of Invalidity Based on Indefiniteness of All Claims of U.S. Patent 5,533,006" (Case No. 08-3379, Dkt. No. 305), is granted. In a separate opinion issue today, this court has denied Tellabs's "Motion for Summary Judgment of Invalidity Based on Indefiniteness of All Asserted Claims (1 and 6-9) of U.S. Patent No. 5,386,418," and granted Fujitsu's "Motion for Summary Judgment for Judicial Correction of 'And' to 'A' in Claim 1 of U.S. Patent 5,386,418." The claim constructions for the '418, '163, '737, '681, and '772 Patents remain under advisement.

BACKGROUND

I. '006 Patent

The application for the '006 Patent was filed with the U.S. Patent and Trademark Office ("PTO") on February 14, 1994, and claims priority from a related foreign application filed on September 13, 1993. The patent issued to Fujitsu Limited on July 2, 1996, and is titled "Control System for a Ring Type Network System." The '006 Patent discloses a method for arranging a synchronous optical network, i.e., a SONET network, that allows the network to transmit data to users despite a problem in the network. (See '006 Patent, col.1 ll.5-15; col.2 ll.45-61.)

In a SONET network, nodes drop and pass-through signals to other nodes within the network. (Id. at col.1 ll.13-45.) Prior art nodes in the SONET network would transmit data on a first optical fiber and also send a redundant copy of that data on a second optical fiber. (See 2/23/10 Tutorial Hr'g Tr. 352:20-353:14 ("So node C is receiving, in principle, two copies of the same signal, and the point is to select one.").) If the first optical fiber is cut or otherwise interrupted, an alarm signal ("AI signal") is generated. ('006 Patent, col.1 l.60-col.2 l.4.) The controlling unit for the node receiving the data detects the AI signal and "switches the connection of the reception path R to the normally functioning side . . . opposite to the side . . . from which the AI signal is received." (Id. at col.1 ll.60-64.) Consequently, despite a failure in the network, a data recipient can still receive the data from the second optical fiber carrying the redundant data. (Id. at col.2 ll.2-4.)

SONET networks use time division multiplexing ("TDM") to place multiple data paths on a single optical fiber. (2/23/10 Tutorial Hr'g Tr. 313:25-316:18.) In the SONET network, the TDM multiplexer organizes customer data into frames; each frame is a matrix having exactly 810 elements arranged in 90 columns and 9 rows. (Id. at 315:11-25; 330:17-22.) The first three columns of each SONET frame contain "overhead" which includes "framing bytes" used to manage the network. (Id. at 329:18-25;Fujitsu's Tutorial Slides at 15-18 (attached as Ex. C-1 to Case No. 08-3379, Dkt. No. 327 ("Fujitsu's Opp.").) The remaining 87 columns are referred to as the "synchronous payload envelop" and consist of an additional column of overhead ("path overhead") and up to 86 columns of data for the customer. (2/23/10 Tutorial Hr'g Tr. 332:24-333:2.)

As was known in the prior art, human technicians program the nodes in the SONET network to perform cross connections to forward incoming signals to the correct outputs. (Id. at 353:24-354:16.) For those paths in the network that are intentionally not being used to transmit customer data, the node transmits an unequipped code signal, i.e., SONET's standardized UNEQ signal, to indicate that the path is unused. ('006 Patent, col.2 ll.5-8.) Based on SONET standards, the UNEQ signal is always contained in the C2 byte of the frame, which is the third byte of the path overhead. (2/23/10 Tutorial Hr'g Tr. 333:2-11.) An UNEQ signal is transmitted when the C2 byte contains the value "00000000." (Id.)

Human technicians can incorrectly program the cross connections in the node to designate a certain path as being intentionally unused even though the path actually is carrying customer data. (Id. at 354:17-24; '006 Patent, col.2 ll.15-27.) In that situation, the downstream node receives the UNEQ signal and treats the path as an intentionally unused path, forwarding the UNEQ signal but not any customer data carried on the path. ('006 Patent, col.2 ll.15-27.) The receiving node, therefore, does not receive the data. (Id.)

According to the '006 Patent, the prior art controlling units would "recognize that the path via which the UNEQ signal is received is a path which [did] not require a cross connection with other nodes" and would "not control the path switching units . . . when the UNEQ signal [was] received." ('006 Patent, col.2 ll.10-14.) As a result, if the UNEQ signal was erroneously transmitted, the customer data was lost because, unlike an AI signal, the UNEQ signal did not trigger a path switch to a second optical fiber carrying redundant data. (Id.; 2/23/10 Tutorial Hr'g Tr. 354:17-357:2.)

The invention disclosed in the '006 Patent purports to improve on the prior art by presenting a system to control path switching when an UNEQ signal is received. ('006 Patent, col. 3 ll.14-33.) According to the '006 Patent, an "object of the present invention is to provide a node . . . which . . . can continue to communicate, when a transmission path is interrupted, with another node located on the opposite side to the interrupted transmission path" and additionally "provide a node . . . which . . . can communicate, if there is an erroneous setting of a cross connection in one of the other nodes provided in the optical system, with another node located on the opposite side to that of the node having the erroneous setting of the cross connection." (Id. at col.2 ll.50-61.)

Independent claim 1 of the '006 Patent recites: A node provided in a ring type network having a plurality of nodes coupled to each other via ring type transmission path means having signal receiving paths and signal transmitting paths for respectively receiving and transmitting multiplexed signals in mutually opposite directions between said nodes, the node comprising: cross connecting means, coupled to said ring type transmission path means, for cross connecting the paths of the ring type transmission path means by dropping signals in time slots of the node and passing through signals in time slots of other nodes of the network; path switching means, coupled to said cross connecting means, for switching only signal receiving paths of said ring type transmission path means to connect the node to one of two signal receiving paths from which said node is to receive a signal; said two signal receiving paths transmitting signals in two mutually opposite directions; and controlling means, coupled to said path switching means, for controlling a switching operation of said path switching means to connect the node to one of the two signal receiving paths in response to at least one unequipment code signal received via another of said two signal receiving paths from an arbitrary node coupled to said node and indicating an unused path which is not cross-connected in said arbitrary node. (Id. at col.6 l.44-col.7 l.2.)

Independent claims 5, 6, and 11 all contain a similar "controlling means" claim element. ('006 Patent, col.7 ll.37-44; col.8 ll.40-48; col.9 ll.26-34.) Claims 5 and 11 additionally recite in pertinent part:

said controlling means also controlling switching of said path switching means to connect the node to one of the two signal receiving paths in response to an alarm indication signal received via said another of said two signal receiving paths from another arbitrary node coupled to said node and indicating a connection failure between said node and said one arbitrary node coupled to said node, wherein said controlling means comprises: a first alarm indication signal detecting means, coupled to said cross connecting means, for detecting a first alarm indication signal received from a first signal receiving path of said two signal receiving paths and outputting a first detection result signal; a first unequipment code signal detecting means, coupled to said cross connecting means, for detecting a first unequipment code signal received from said first signal receiving path and outputting a second detection result signal; a second alarm indication signal detecting means, coupled to said cross-connecting means, for detecting a second alarm indication signal received from a second signal receiving path of said two signal receiving paths and outputting a third detection result signal; a second unequipment code signal detecting means, coupled to said cross-connecting means, for detecting a second unequipment code signal received from said second signal receiving path and outputting a fourth detection result signal; and a determining means, coupled to said first and second alarm indication signal detecting means and to said first and second unequipment signal detecting means, for comparing the first and third detection result signals received from said first and second alarm indication signal detecting means and the second and fourth detection result signals received from said first and second unequipment code signal detecting means, respectively, and for controlling the switching of said path switching means based on the comparison. ('006 Patent, col.7 l.45-col.8 l.17; col.9 l.26-col.10 l.36 (emphasis added).)

II. Person of Ordinary Skill in the Art

The parties were unable to reach an agreement as to the level of skill required to be a person of ordinary skill in the art with respect to the '006 Patent. Having reviewed the parties' submissions, the court finds that a person of ordinary skill in the art at the time of the invention--in this case, 1993--had (1) at least four years of experience in systems engineering for synchronous optical networks (including network design) and network equipment, or (2) a bachelor's degree in either systems engineering or electrical engineering and at least two years of experience either (a) in systems engineering for synchronous optical networks (including network design) and network equipment or (b) researching or designing components for synchronous optical network rings and ring type networks using electrical signal transmission paths. Under this definition, the court finds that both Dr. John Eaves (Fujitsu's expert witness) and Dr. Andrew Singer (Tellabs's expert witness) qualify as persons of ordinary skill in the art. (See Eaves Decl. ¶¶ 3-10 (attached as Ex. B to Fujitsu's Opp.); Singer Resume (attached at Ex. I to Case No. 09-4530, Dkt. No. 93); Singer Dep. 25:17-27:13 (attached as Ex. G. to Case No. 09-4530, Dkt. No. 272.)

Tellabs has moved for summary judgment of invalidity, arguing that the '006 Patent is invalid for indefiniteness. Specifically, Tellabs identifies three claim elements appearing in all the independent claims of the '006 Patent which it contends are indefinite under § 112, paragraph 2: "controlling means," "cross connecting means," and "path switching means." Tellabs additionally argues that the claim elements "[first/second] alarm indication signal detecting means," "[first/second] UNEQ signal detecting means" and "determining means" appearing in independent claims 5 and 11 are invalid under § 112, paragraph 6. Because the court finds that the "controlling means" element is indefinite, the court limits its analysis to that claim term.

In its preliminary construction, the court construed the claimed function of the "controlling means" element to be "to control the switching operation of the path switching means to connect the node to one of the two signal receiving paths in response to at least one unequipment code signal received via another of said two signal receiving paths from an arbitrary node coupled to said node and indicating an unused path which is not cross-connected in said arbitrary node." (Case No. 08-3379, Dkt. No. 145 at 35-36.) The court, however, was unable to identify the structure corresponding to that claimed function from the intrinsic evidence, and the parties have presented extrinsic evidence, including expert declarations, to the court to assist in this undertaking. Tellabs's expert, Dr. Andrew Singer, also testified on this issue during the technology tutorial on February 23, 2010. (2/23/10 Tutorial Hr'g Tr. 401-44.)

LEGAL STANDARD

Under Federal Rule of Civil Procedure 56(a), summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a).

Title 35 U.S.C. § 112 provides that "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." § 112, paragraph 2. When a claim is written in means-plus-function form, "the written description must clearly link or associate structure to the claimed function" to satisfy the definiteness requirement of § 112, paragraph 2. Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376 (Fed. Cir. 2010); see also 35 U.S.C. § 112 ¶ 6 ("An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.").

"A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as a construer of patent claims." Telcordia, 612 F.3d at 1376 (quoting Personalized Media Commc'ns, L.L.C. v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed.Cir. 1998)). The court must consider "[w]hether the written description adequately sets forth the structure corresponding to the claimed function," viewing the specification "from the perspective of a person skilled in the art." Id. Moreover, "[a]ny fact critical to a holding on indefiniteness . . . must be proven by the challenger by clear and convincing evidence." Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003). Thus, when moving for invalidity based on § 112, paragraph 6, the moving party must prove "by clear and convincing evidence[] that the specification lacks adequate disclosure of structure to be understood by one skilled in the art as able to perform the recited functions." Id.

Assessing whether a means-plus-function claim element is indefinite involves a two-step analysis: "1) the court must first identify the function of the limitation; and 2) the court must then look to the specification and identify the corresponding structure for that function." Biomedino, L.L.C. v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). If the specification does not disclose the corresponding structure, "the claim will be found invalid as indefinite." Id.

ANALYSIS

The parties do not dispute that "controlling means" is a means-plus-function claim term subject to § 112, paragraph 6. Tellabs argues that the "controlling means" element is indefinite under § 112, paragraph 2 because the '006 Patent fails to disclose adequate structure corresponding to that claim term but instead describes "controlling means" using "only black boxes, functional language, and abstractions." (Tellabs's Mot. 8-15.) Fujitsu, on the other hand, argues that the '006 Patent discloses processors running algorithms, detectors, and/or comparators as the structures corresponding to the "controlling means" elements in claims 1, 5, 6, and 11. (Fujitsu's Opp. viii.)

I. "Controlling Means" Function

As the first step in the means-plus-function indefiniteness inquiry, the court must identify the claimed function corresponding to the "controlling means" limitation. Biomedino, 490 F.3d 946 at 950. As discussed above, this court previously construed the function associated with "controlling means" in independent claims 1, 5, 6, and 11 to be "to control the switching operation of the path switching means to connect the node to one of the two signal receiving paths in response to at least one unequipment code signal received via another of said two signal receiving paths from an arbitrary node coupled to said node and indicating an unused path which is not cross-connected in said arbitrary node." (Case No. 08-3379, Dkt. No. 145 at 35-36.) Tellabs agrees that this function is correct. Fujitsu, however, argues that the claimed function instead should be "for controlling a switching operation of said path switching means to connect the node to one of the two signal receiving paths in response to at least one unequipment code signal received via another of said two signal receiving paths" (see Fujitsu's Opp. viii), but has not explained why the court should alter its previous construction of the "controlling means" function.

Nevertheless, based on the parties' presentations to the court, both Tellabs and Fujitsu appear to agree that the "controlling means" recited in all independent claims 1, 5, 6, and 11 at least performs the function of "controlling a switching operation of said path switching means . . . in response to at least one unequipment code signal." (See Case No. 09-4530, Dkt. No. 269 ("Fujitsu's '006 ...


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