Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Fujitsu Limited v. Tellabs Operations

March 31, 2011

FUJITSU LIMITED, PLAINTIFF,
v.
TELLABS OPERATIONS, INC. AND TELLABS, INC., DEFENDANTS.
TELLABS OPERATIONS, INC. PLAINTIFF,
v.
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

Consolidated for Discovery

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 '418 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 ("Fujitsu's Mot.")). 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 Asserted Claims (1 and 6-9) of U.S. Patent No. 5,386,418" (Case No. 09-4530, Dkt. No. 165), is denied and Fujitsu's "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), is granted. In a separate opinion issued today, this court has granted Tellabs's "Motion for Summary Judgment of Invalidity Based on Indefiniteness of All Claims of U.S. Patent 5,533,006." The claim constructions for the '418, '163, '737, '681, and '772 Patents remain under advisement.

BACKGROUND

I. '418 Patent

The '418 Patent is titled "Method for Synchronizing Synchronous Data Communication Network and Communication Device Used in the Synchronous Data Communication Network." (See '418 Patent.) It issued on January 31, 1995, and is assigned to Fujitsu Limited. (See id.) Synchronous data communication networks, according to the '418 Patent, "include the one using an optical fiber cable for performing transmissions of high-speed digital signals." (Id. at col.1 ll. 19-22.) In these types of synchronous communication networks, "an oscillator for generating a main clock is provided in a system." (Id. at col.1 ll.22-24.) The prior art conventional synchronizing communication networks "allow[ed] only one synchronizing signal source" and were "merely capable of informing to the outside that a failure [had] occurred and the timing fail[ed] to be maintained." (Id. at col.2 ll.34-40.)

According to the '418 Patent, an object of the invention is to provide a synchronizing method of a synchronous data communication network in which a plurality of synchronizing signal sources are provided in a data communication network and data communication is maintained upon an occurrence of a failure by efficiently switching among the synchronizing signal sources in response to the failure that occurred, as well as to provide a communication apparatus used in such a synchronous data communication network. (Id. at col.2 ll.45-54.) To maintain synchronization in the event of a failure, the '418 Patent describes a method of switching from one synchronizing signal source to another in a synchronous data communication network comprising: a plurality of stations connected to each other via lines; and a plurality of synchronizing signal sources provided inside or outside the stations, the method comprising the steps of: (a) setting, in a signal transmitted via the line and including the synchronizing signal, flag bit data (S, S*) indicating whether or not the synchronizing signal transmitted via the lines is available; (b) allowing each station to refer, on the basis of the flag bit data, to a table provided in each station and specifying the order of priority for selection of a synchronizing signal source, upon occurrence of a failure in any of the plurality of synchronizing signal sources, and selecting a synchronizing signal source; and (c) allowing each station to switch from the currently selected synchronizing signal source to the synchronizing signal source selected in the step (b). (Id. at col.2 l.55-col.3 l.5 (emphasis added).) The specification further explains that the disclosed invention "allows the parent station A to send, during a normal operation, a flag bit data S, indicating that the synchronizing signal thereof is available, to all of its neighboring stations, and to send, when there is a failure in the synchronizing signal source, a flag bit data *S indicating that the same signal is not available." (Id. at col.5 ll.21-27 (emphasis added).)

II. Prosecution History for Claim 1 of the '418 Patent Claim 1, which is pertinent to the issues currently before the court, as issued originally recited:

A method of switching from one synchronizing signal source to another in a synchronous data communication network including a plurality of stations with at least one child station and at least one parent station connected to each other via lines, and a plurality of synchronizing signal sources provided for said stations, the method comprising, in combination, steps of:

(a) setting, in a signal transmitted via said lines and including synchronizing information related to one of said plurality of synchronized signal sources, and flag bit data indicative of whether or not a timing of said one of the plurality of synchronizing signal sources related to said synchronizing information transmitted via said lines can be used as a synchronizing signal source on each station which receives said information transmitted via said lines;

(b) referring each station, from among said plurality of stations on the basis of said flag bit data, to a table provided in each said station for specifying an order of priority for selection of a synchronizing signal source, upon occurrence of a predetermined event in any of said plurality of synchronizing signal sources, and for selecting a synchronizing signal source; and

(c) switching each station from the currently selected synchronizing signal source to the synchronizing signal source selected in said step (b). (Id. at col.18 l.51-col.19 l.9 (emphasis added).)*fn2

In November 2007, Fujitsu submitted a request for a certificate of correction to the U.S. Patent and Trademark Office ("PTO") pursuant to 35 U.S.C. § 255. Specifically, Fujitsu sought to replace the phrase "and flag bit data" in claim 1 at column 18, line 61 of the '418 Patent with the phrase "a flag bit data." (Tellabs's Mot., Ex. 2 at FJ002658.) In its request, Fujitsu argued to the examiner that claim 1 of the '418 Patent contained "an inadvertent and minor typographical error" and that the object of the "setting" step in claim 1 is "flag bit data." (Id. at FJ002660.) On January 15, 2008, the PTO issued a Certificate of Correction for the '418 Patent, which made the following correction proposed by Fujitsu: "In Claim 1, Col. 18, line 61, delete 'and' and insert --a--." ('418 Patent, Certificate of Correction.)

III. Person of Ordinary Skill in the Art

Based on the parties' proposals, the court finds that a person of ordinary skill in the art with respect to the '418 Patent had (1) at least four years of experience in synchronization techniques for synchronous optical networks, or (2) a bachelor's degree in systems engineering or electrical engineering with at least two years of experience either in synchronization techniques for synchronous optical networks or in researching and designing components for synchronous optical networks.

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). In ruling on a motion for summary judgment, the court "draw[s] all reasonable inferences in favor of the non-movant." Tokai ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.