Court Reverses Part of Cisco’s Summary Judgment of Noninfringement Against Storage Tek
May 13, 2003
Last Month at the Federal Circuit - June/July 2003
Judges: Plager (author), Schall, and Gajarsa
In Storage Technology Corp. v. Cisco Systems, Inc., No. 02-1232 (Fed. Cir. May 13, 2003), the Federal Circuit affirmed a SJ of noninfringement with respect to a first patent, but vacated the judgment with respect to a second patent because of an error in the claim construction.
Storage Technology Corporation (“Storage Tek”) owns U.S. Patent Nos. 5,842,040 (“the ‘040 patent”) and 5,566,170 (“the ‘170 patent”), both relating to data communication networks. Storage Tek sued Cisco Systems, Inc. and Cisco Technology, Inc. (collectively “Cisco”), alleging infringement of both patents. The claims of the ‘040 patent concern a method for caching data in a communication device. The claims of the ‘170 patent recite a protocol data unit processor for forwarding data packets in a communication network.
The Federal Circuit ruled that the district court had improperly relied on certain preamble terms to limit the scope of other terms used in the body of the claim, which was overly restrictive. The Court found that the district court had also improperly relied on the single embodiment in the specification and improperly interpreted statements during the prosecution history to limit the scope of the invention. Finally, the Federal Circuit ruled that the district court had improperly relied on a declaration by Cisco’s expert to support its construction of claim 1.
Having broadened the district court’s claim construction, the Federal Circuit vacated SJ of noninfringement and remanded for further proceedings.
With respect to the ‘170 patent, the Federal Circuit found that a certain phrase in the preamble of the asserted claims was an effective limitation based on applicant’s statements made during the prosecution history and the remaining claim language.
Having confirmed the district court’s claim construction, the Federal Circuit affirmed the district court’s SJ of noninfringement.