Court: District Court, District of Columbia; December 2, 2018; Federal District Court
Egenera is precluded from restoring Schulter as an inventor due to judicial estoppel, as it previously asserted that Schulter was erroneously listed in a September 2017 petition to the PTO, which was accepted and led to a modification of inventorship. Judicial estoppel applies because Egenera’s current position contradicts its earlier claim, potentially misleading the PTO and creating an unfair advantage. Inventorship, determined by conception, requires a definitive and complete idea of the invention, where each joint inventor need not contribute equally but must play a role in producing the invention. Assistance to an inventor post-conception does not qualify one as a joint inventor; merely providing known principles without a comprehensive understanding of the invention does not meet the criteria for joint inventorship.
A co-inventor of a patent does not need to contribute to every claim; contributing to just one claim suffices for joint conception. The pivotal issue in joint conception is identifying who conceived the subject matter of the relevant claims. Courts require corroborative evidence of a contemporaneous disclosure to establish conception, as it is a mental act. Cisco asserts that Schulter conceived the virtual LAN proxy, which is not a claim element of the '430 patent but is integral to the claim term related to modifying messages for external networks. Cisco cites an Egenera document titled "Interframe Network Architecture," authored by Schulter on October 9, 2000, as the earliest reference to the virtual LAN proxy, which was revised later that year. The specification of the '430 patent closely mirrors Schulter's original description. The virtual LAN Proxy coordinates physical network resources among processors with virtual interfaces, bridging internal VLANs to the external network by converting MAC addresses. It serializes access through a transmission queue, manages MAC address allocation, and processes packets for routing. For outgoing ARP packets, it replaces internal MAC addresses with the external MAC address, while preserving the source IP. Incoming ARP packets are processed accordingly, relaying broadcast packets to all nodes and unicast packets to specific destinations based on the IP address.
The two documents detail the relationship of the virtual LAN proxy within a broader networking architecture. Egenera acknowledges Schulter's role in reducing the virtual LAN proxy to practice but disputes his claim of conception. They assert that mere authorship of an article does not imply inventorship, referencing *In re Katz*, and cite three prior documents that support earlier conception of the virtual LAN proxy.
The first document, "Egenera Interframe: A New Architecture for Internet Application Processing," authored by Ewan Milne and Paul Curtis, describes Interframe™ Controller (IFC) modules, which handle I/O processing and system management but do not run application software. Application Processor (AP) modules execute application software without direct I/O interfaces, relying instead on a message-passing interface to communicate with the IFC modules. The IFC modules manage TCP/IP traffic routing to the AP modules, necessitating multiplexing and demultiplexing of network traffic among multiple AP nodes. Some packet filtering logic is required, which could be adapted for basic application load balancing.
Egenera's expert, Dr. Mark Jones, noted that the inventors recognized by August 2000 the need for the IFC to proxy external communications and storage network traffic for AP nodes. The second document, the September 29, 2000 Interframe I/O Architecture, allows administrators to configure simulated Ethernet interfaces and connections among application nodes or to a simulated router for external connectivity. Packets intended for other application nodes are sent directly via the Giganet switch, while external packets are routed to IFC nodes for forwarding to the external network. Inbound external packets are similarly routed through the Giganet switch to the appropriate application node. The document also discusses the use of simulated MAC addresses and routers, emphasizing that all external traffic must pass through the IFC nodes, with application nodes requiring specific configuration to access the external network.
The administrator is responsible for configuring routing rules on the router that dictate the handling of incoming and outgoing network traffic. Expert Dr. H. Jonathan Chao asserts that the claims of the '430 patent are supported by the Egenera Interframe I/O Architecture document. Additionally, a corroborating document titled "Egenera Interframe Architecture," authored by Max Smith and dated October 1, 2000, explains that all application node I/O is routed through two Interframe controller nodes that connect to external Ethernet and storage networks. The node's configuration also includes virtual Ethernet network interfaces for external access upon booting.
The court identifies a genuine dispute regarding the conception of the VLAN proxy, emphasizing that a party must demonstrate possession of every feature of the claimed invention during the alleged conception. The relevant claim limitation requires both message modification and transmission functions for external networks. The VLAN proxy serves to bridge the virtual LAN server to the external network, converting internal virtual MAC addresses to a single external MAC address. It modifies outgoing messages by replacing internal MAC addresses with the physical Ethernet device’s MAC address before transmission.
The documents describe "Controller modules" or "controller nodes" that connect internal application nodes to the external communication network, forwarding packets through a Giganet switch. Although the priority documents do not explicitly disclose the modification of messages before transmission, there is uncertainty over whether they sufficiently corroborate the message modification function for the external communication network. For the external storage network, the documents discuss the use of "local device numbers" and I/O server logic in the Interframe controller node, which translates device numbers into the appropriate partitions on the external storage network. Cisco contends that the priority documents fail to disclose the structures necessary to perform the claimed message modification function for the external communication network.
The court addresses the scope of means-plus-function claim limitations, stating they are confined to the structures disclosed in the specification and their equivalents. The '430 patent and Schulter's Interframe Architecture illustrate a virtual LAN proxy that connects the virtual LAN driver and physical LAN driver. Egenera's priority documents mention connections between controller nodes and the Internet but lack detail on specific components for message modification and transmission. No analysis is provided to determine if using a virtual LAN server and LAN proxy for these functions constitutes well-known principles that would impact inventor status. The court, adhering to a clear and convincing standard for patent validity challenges, will postpone judgment until it hears from the parties and evaluates witness credibility. Consequently, the court denies cross-motions regarding inventorship and schedules a bench trial for January 2, 2019, while also denying other dispositive motions without prejudice, pending the outcome of the inventorship dispute. Egenera's attempt to remove Schulter as an inventor is deemed unlikely to qualify as an error under section 256, which lacks a specific definition for "error" but generally refers to unintentional deviations from truth or accuracy. In prior claim construction, the court identified certain elements of the '430 patent as means-plus-function components requiring analysis under 35 U.S.C. § 112, para. 6, specifically naming the virtual LAN server, virtual LAN proxy, and physical LAN driver as the structures performing the relevant functions. The court recognizes that although different terms are used, the virtual LAN proxy and LAN proxy essentially refer to the same structure.
