SOUTHWESTERN BELL TELEPHONE COMPANY, (formerly known as Southwestern Bell Telephone,… v. Arthur A. Collins, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1577
SOUTHWESTERN BELL TELEPHONE COMPANY,
(formerly known as Southwestern Bell Telephone, L.P.),
Plaintiff-Appellee,
v.
ARTHUR A. COLLINS, INC.,
Defendant-Appellant.
Adam V. Floyd, Vinson & Elkins L.L.P., of Austin, Texas, argued for plaintiff-
appellee. With him on the brief were Willem G. Schuurman, Sandra G. Rodriquez,
H. Kenneth Prol, and Matthew S. Wermager.
George C. Summerfield, Jr., Stadheim & Grear, Ltd., of Chicago, Illinois, argued
for defendant-appellant. With him on the brief were Joseph A. Grear, Rolf O. Stadheim,
Keith A. Vogt, and Steven R. Pedersen.
Appealed from: United States District Court for the Northern District of Texas
Judge Jane J. Boyle

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NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1577
SOUTHWESTERN BELL TELEPHONE COMPANY,
(formerly known as Southwestern Bell Telephone, L.P.),
Plaintiff-Appellee,
v.
ARTHUR A. COLLINS, INC.,
Defendant-Appellant.
Appeal from the United States District Court for the Northern District of Texas in case
no. 3:04-CV-0669, Judge Jane J. Boyle.
__________________________
DECIDED: May 27, 2008
__________________________
Before GAJARSA, Circuit Judge, CLEVENGER, Senior Circuit Judge, and MOORE,
Circuit Judge.
MOORE, Circuit Judge.
Arthur A. Collins, Inc. (Collins) appeals on a multitude of grounds the judgment
entered by the United States District Court for the Northern District of Texas. We affirm-
in-part, vacate-in-part, and remand.
BACKGROUND
Southwestern Bell Telephone Company (Southwestern Bell) filed for a
declaratory judgment of noninfringement and invalidity of the claims of Collins’s U.S.
Patents Nos. 4,797,589 (’589 patent) and 4,701,907 (’907 patent). Collins
counterclaimed, asserting infringement and seeking damages and injunctive relief. In

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November 2005, the district court ruled that the claim term “means for measuring,”
which is a limitation included in every claim of the ’907 patent, could not be construed.
In view of this ruling, Collins later stipulated to the invalidity of the ’907 patent claims for
indefiniteness, subject to its right to appeal the construction. On September 26, 2006,
the court granted Southwestern Bell’s motion for summary judgment that all the claims
of the ’589 patent were not literally infringed by Southwestern Bell’s network because it
lacked a “control store.” On November 2, 2006, the court ruled on summary judgment
that claims 4-14 of the ’589 patent were invalid for improper reexamination amendment.
The district court resolved Collins’s remaining ’589 patent infringement claims during
pretrial proceedings, when it ruled as a matter of law that Collins could not demonstrate
the presence of the “randomly receive” limitation, either literally or by equivalents.
Southwestern Bell dismissed its remaining claims without prejudice, the district court
entered judgment, and this appeal followed.
DISCUSSION
We review a grant of summary judgment without deference to the district court.
See Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401 F.3d 1367, 1370
(Fed. Cir. 2005) (citations omitted). We review claim construction de novo on appeal.
Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). We also
review a judgment on prosecution history estoppel de novo on appeal. Wang Lab., Inc.
v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1577 (Fed. Cir. 1997).
Collins appeals: (1) the judgment that the claims of the ’907 patent are invalid for
indefiniteness; (2) the grant of summary judgment that claims 4-14 of the ’589 patent
are invalid for improper reexamination amendment; (3) the grant of summary judgment
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of no literal infringement of claims 1-14 of the ’589 patent for lack of a “control store”; (4)
the claim construction of the “randomly” terms in the ’589 patent claims; (5) the
judgment that the “randomly receive” limitation in the ’589 patent claims is not literally
present in the accused combination; and (6) the judgment that prosecution history
estoppel applies to exclude Collins from offering evidence of equivalents of certain claim
limitations for claims 1-3 of the ’589 patent. We consider each issue in turn.1
I. The ’907 Patent
We agree with the district court that the term “means for measuring,” which is a
limitation included in every claim of the ’907 patent, cannot be construed2 because
there is no clear link or association between (1) the “means for measuring” claim
language and (2) any corresponding structure in the specification. Collins has a duty to
link the claimed function of measuring the timing adjustment interval to a structure in the
specification as the price for being allowed to express the claim as a means-plus-
function claim under 35 U.S.C. § 112, ¶ 6. Budde v. Harley-Davidson, Inc., 250 F.3d
1369, 1377 (Fed. Cir. 2001); Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
344 F.3d 1205, 1211 (Fed. Cir. 2003). Collins identifies the “variable modulus counter”
as the structure for accomplishing the means for measuring. The “variable modulus
counter” “controls the value of the modulus used in the digital switch connection with the
feedback signal, access control word.” ’907 patent col.8 ll.33-37. But the specification
1 We need not address the other claim construction issues that Collins and
Southwestern Bell raise on appeal because our resolution of these six issues disposes
of the entire appeal.
2 Two district courts have actually concluded that this very “means for
measuring” limitation was incapable of construction. See also Arthur A. Collins, Inc. v.
Northern Telecom Ltd., No. 98-380-A (E.D. VA May 23, 2005) (claim construction
opinion).
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in no way associates the “variable modulus counter” with the claimed function of
measuring the timing adjustment interval. See id. When no structure in the
specification is linked to the function in a means-plus-function claim element, that claim
is indefinite. 35 U.S.C. § 112 ¶ 2. We affirm the district court’s determination that all
claims of the ’907 patent are invalid.
II. Claims 4-14 of the ’589 Patent—Reexamination for Improper Purpose
The district court properly granted summary judgment that claims 4-14 of the
’589 patent are invalid for improper claim amendment under 35 U.S.C. § 305. Under 35
U.S.C. § 305, a patent owner may propose an amendment to its patent to distinguish
the claimed invention from the prior art or to respond to an adverse decision as to the
patentability of one of the claims. Claim amendments during reexamination are limited
to “amendment in light of prior art raising a substantial new question of patentability.” In
re Freeman, 30 F.3d 1459, 1468 (Fed. Cir. 1994). As in Freeman, Collins cannot use
reexamination for the purpose of amending its claims to address an adverse claim
construction. We agree with the district court that Collins “presented no evidence to
contradict its stated purpose for amending the claims of the ’589 patent,” which was “to
preclude any interpretation of the claims in accordance with the district court’s opinions .
. . in the litigation with Nortel.” We therefore affirm the grant of summary judgment that
claims 4-14 of the ’589 patent are invalid.
III. Claims 1-3 of the ’589 Patent—“Control Store”
We affirm the grant of summary judgment of no literal infringement of claims 1-3
of the ’589 patent because the accused combination lacks a “control store.” The district
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court construed “control store” based upon the context of the claim and the intrinsic
record to mean:
A control store is included within a single unified DRTST switching unit
that includes a memory, processor and operating software that determines
(1) which data circulating on the network loop is to be selected and
diverted to the TST switch of a given switching node; (2) how that data
passes through the TST switch; (3) which data is output from the TST
switch back onto the network loop; (4) which data is to bypass the TST
switch of that node.
Collins disagrees that at least one control store must perform all four functions, and
argues that the specification “show[s] the use of distributed, multiple control stores.”
Appellant Br. at 20-21.
In claim 1 of the ’589 patent, “a control store [is] connected to said bypass for
receiving a variable number of dynamically selected channels from the plurality of
channels, one or more of said channels comprising a control channel.” ’589 patent
col.11 ll.35-38 (emphasis added). “[S]aid control store,” meaning the same control store
that is connected to the bypass, must respond to the “commands received through said
control channels” to orchestrate the functions recited in claim 1. Id. col.12 ll.23-35
(emphasis added). While the DRTST may include multiple control stores, as discussed
in the specification and acknowledged by the district court, the claims require that one of
the claimed control stores must be connected to the bypass and receive a control
channel. The claims further require that the same control store connected to the bypass
must also perform the recited functions in response to the received commands. There
is no dispute that under this construction the accused combination does not literally
infringe. Accordingly, we affirm the grant of summary judgment that the accused
combination does not literally infringe claims 1-3 of the ’589 patent.
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IV. Claims 1-3 of the ’589 Patent—Claim Construction of “Randomly Receive” and
“Randomly Transmit”
We agree with the district court’s construction of the “randomly receive” and
“randomly transmit” limitations, which are found in claim 1 of the ’589 patent and claims
2-3 by virtue of their dependence on claim 1. Claim 1 of the ’589 patent recites, among
other elements, “said inlet ports of said TST switch being connected to randomly
receive channels from said inlet line terminating units, said outlet ports of said TST
switch being connected to randomly transmit channels to said outlet line terminating
units for transferring data from said TST switch to said transmission media.” ’589 patent
col.12 ll.14-23 (emphasis added). The district court construed the terms “randomly
receive” and “randomly transmit” to: “refer only to the writing of data into random
positions of a memory, such as Random Access Memory (‘RAM’) and the reading out
from such random position of a RAM, under program control from the control store.”
Collins argues that the district court’s claim construction erroneously requires
writing data into non-sequential internal memory positions. Collins’s proposed
construction, in contrast, is that data is “random” if it is in an order different than on the
high speed transmission medium. Appellant Br. at 39; see also Oral Arg. at 12:42-52,
available at http://www.cafc.uscourts.gov/oralarguments/mp3/2007-1577.mp3
(“[B]ecause select data is being dropped from the high speed transmission medium, it is
necessarily in an order different than the order in which it was on the high speed
transmission medium, and therefore, it’s randomized.”).
Using the basic tenets of claim construction, the district court rejected Collins’s
proposed construction, and construed the “randomly” limitations to refer only to the
writing of data into random positions of the inlet memory, i.e., not sequential positions.
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In construing “randomly receive” and “randomly transmit,” the district court considered
the context of the surrounding claim language, which requires that the inlet ports must
be connected to receive channels of data into random locations in its memory. Id.
col.12 ll.14-16. The district court also considered the specification, which states:
“Another aspect of the present invention allows the order of writing to the inlet data store
and reading the outlet data store in a random order.” Id. col.3 ll.34-39 (emphasis
added). It continues:
In accordance with the present invention, data is dynamically written
randomly into the input memories and dynamically read randomly out from
the output memories with transfer between the memories taking place via
the middle space stage. This scheme is contrary to prior TST switches
where data is written to the inlet memory and read from the outlet memory
sequentially.
Id. col.5 ll.19-26 (emphasis added). Finally, the specification concludes: “Therefore,
the order of writing to the inlet memory . . . is done in a random order.” Id. col.5 ll.49-51
(emphasis added). In sum, the claim language and the specification confirm the district
court’s construction of “randomly receive” and “randomly transmit” in claim 1 of the ’589
patent.
V. Claims 1-3 of the ’589 Patent—The District Court’s Determination of
Noninfringement of the “Randomly Receive” Limitation
Collins asks us to vacate the district court’s pretrial judgment of noninfringement
because the district court did not give Collins proper notice. Appellant Br. at 22. At the
end of the pretrial hearing on July 20, 2007, the district court issued its claim
construction on the “randomly receive” limitation,3 and asked the parties what issues
3 While the court had not previously construed "randomly received," the
parties had presented their respective positions in claim construction in 2005 at the
Markman Hearing in 2005, and in summary judgment briefing in 2006.
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remained for the jury. On July 23, 2007, the district court again asked the parties what
issues remained outstanding, and requested the parties to submit briefing by the end of
that same day on the effect of prosecution history estoppel.4 The next day (July 24,
2007), in a telephone conference, the district court granted Southwestern Bell’s motion
in limine on prosecution history estoppel and also granted “judgment as a matter of law”
that the “randomly receive” limitation is not literally present in the accused combination,
later issuing its written order on August 1, 2007.
It is not entirely clear whether the district court’s pretrial order was a judgment as
a matter of law under Federal Rule of Civil Procedure Rule 50, a grant of summary
judgment under Federal Rule of Civil Procedure Rule 56, a grant of the motion in limine,
or some combination thereof. The order, which includes a section entitled “Judgment
as a Matter of Law,” grants the motion in limine to exclude evidence of equivalents, but
also goes on to state that “as a matter of law, the randomly receive claim limitation is
not literally present in the accused device. . . .” Collins argues that the district court
improperly ruled on noninfringement when it resolved the motion in limine on the limited
issue of prosecution history estoppel. We agree. The district court’s judgment “as a
matter of law” that the “randomly receive” limitation was not literally present in the
accused combination was improper.
The district court’s ruling cannot properly be considered one for judgment as a
matter of law under Rule 50. Rule 50 only applies when a “party has been fully heard
on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to
4 Southwestern Bell had previously filed a motion in limine to prevent Collins
from presenting evidence or argument of equivalents due to prosecution history
estoppel.
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find for that party on that issue.” Reeves v. Sanderson Plumbing Prods., 530 U.S. 133,
151 (2000). When the district court granted judgment “as a matter of law,” trial had not
even begun in this case. Collins had not been fully heard on the issue of the literal
presence of the “randomly receive” limitation in the accused combination.
Prior to trial, Rule 56, which pertains to summary judgment, governs. See Fed.
R. Civ. P. 56. In the Fifth Circuit, Rule 56(c) requires ten days notice to a non-moving
party, even when summary judgment is granted sua sponte. Powell v. United States,
849 F.2d 1576, 1579 (5th Cir. 1988); Fed. R. Civ. P. 56(c) (“The motion must be served
at least 10 days before the day set for the hearing. . . .”). This ten-day requirement is
intended to allow the non-moving party “to make every possible factual and legal
argument.” Id. at 1579. Nonetheless, a district court’s failure to provide a nonmoving
party ten days’ notice may be “harmless if the nonmoving party admits that he has no
additional evidence anyway or [if the] appellate court evaluates all of the nonmoving
party’s additional evidence and finds no genuine issue of material fact.” Powell, 849
F.2d at 1582.
Collins did not receive ten days to make every possible factual and legal
argument with respect to whether the accused combination literally satisfies the
“randomly receive” limitation in claims 1-3 of the ’589 patent. And in this case, the
district court’s error was not harmless because there is a potential dispute over material
facts. See id. (concluding it was harmful error when party contended there was genuine
issue of material fact but had no opportunity to submit evidence to support the
contention). The district court based its determination that judgment as a matter of law
was appropriate on a single piece of evidence—the deposition of Collins’s expert Dr.
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Wayne Grover. The district court concluded that Dr. Grover admitted that in the
accused combination, the inlet port was “sequentially receiving [channels].” Collins
argues that Dr. Grover’s testimony did not pertain to the accused combination, but was
actually in response to questions about the scope of the claims of the ’589 patent. This
is a potential dispute over a genuine issue of material fact regarding Dr. Grover’s
testimony—a dispute that Collins was not afforded time to address. This is precisely the
situation for which the rules regarding adequate notice exist. See Powell, 849 F.2d at
1582. Therefore, we vacate the portion of the judgment that holds that as a matter of
law, the accused combination does not satisfy the “randomly receive” limitation in claims
1-3 of the ’589 patent.
Collins argues the district court improperly issued its judgment “under the guise
of resolving an in limine motion on the narrow issue of prosecution history estoppel.”
Appellant Br. at 23. But Collins does not appeal the propriety of the district court’s
ability to rule on the motion in limine to exclude equivalents based on prosecution
history estoppel. Collins does not make a “notice” argument regarding the grant of the
motion in limine to exclude evidence of equivalents due to prosecution history estoppel.
See Appellee Br. at 42. And Collins cites no missing evidence regarding a lack of notice
with respect to prosecution history estoppel, in either its appeal or reply brief. Collins
does appeal the merits of the ruling on prosecution history estoppel, which we now
address.
VI. Claims 1-3 of the ’589 Patent—Prosecution History Estoppel
The district court excluded evidence of equivalents with respect to the “randomly
receive” and “randomly transmit” claim limitations added during prosecution and
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included in claims 1-3 of the ’589 patent because prosecution history estoppel bars the
application of the doctrine of equivalents for those limitations. Collins argues that the
“randomly receive” and “randomly transmit” limitations were not added in response to a
prior art rejection and that therefore, the district court erred in concluding that
prosecution history estoppel bars application of the doctrine of equivalents for these
limitations. We disagree. During prosecution of the ’589 patent, the patent examiner
rejected claim 1 as anticipated by one of Collins’s prior patents, U.S. Patent No.
3,925,621 (’621 patent.) Collins amended the claims of the ’589 patent to distinguish
the TST memory configuration of the ’621 patent, in which “input words are written
sequentially into the inlet memory, and read sequentially from the outlet memories.”
’621 patent col.6 ll.14-16 (emphasis added). With respect to inlet port memories,
Collins narrowed the original language from “said inlet ports connected to receive” to
“said inlet ports of said TST switch being connected to randomly receive.” Collins
similarly narrowed the claim language relating to the outlet port memories from simply
being connected for “transferring,” to connected to “randomly transmit.”
Collins’s decision to narrow claims through amendment during prosecution
creates a presumption that bars a finding of equivalents. Festo Corp. v. Shoketsu
Kinzuko Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 734, 740 (2002). Collins has not met
its burden of establishing that the reason for the amendment was unrelated to
patentability. Festo Corp. v. Shoketsu Kinzuko Kogyo Kabushiki Co., Ltd., 493 F.3d
1368, 1377 (Fed. Cir. 2007). Collins’s amendment specifically addressed the prior art
memory configurations found in the ’621 patent. In response to the examiner’s
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2007-1577 12
rejection, Collins stated that claim 1 was amended “to more particularly define the
present invention and distinguish over the ’621 reference.”
Collins argues that the amendments to “randomly receive” and “randomly
transmit” were somehow tangential to the issue of patentability and were merely
intended to “clarify” the claim. This argument lacks merit. An amendment is directly,
and not tangentially, related to patentability when an applicant’s narrowing additions to a
claim along with an applicant’s own statements in the prosecution history indicate that
the amendment was made to distinguish over a reference. We conclude that the district
court correctly determined that prosecution history estoppel bars the application of the
doctrine of equivalents for the “randomly receive” and “randomly transmit” claim
limitations added during prosecution and included in claims 1-3 of the ’589 patent.
CONCLUSION
For the foregoing reasons, we affirm-in-part, vacate-in-part, and remand for
further proceedings consistent with this opinion.

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