Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Egenera, Inc. v. Cisco Systems, Inc., Case Nos. 2019-2015, 2019-2387 (Fed. Cir. Aug. 28, 2020), addressing 1) whether a claim that lacks “means” language can be interpreted as a means-plus-function claim; and 2) whether judicial estoppel arose from a petition to correct inventorship.
The Court analyzed the claim term “logic to modify,” which did not employ “means” language, to determine whether means-plus-function interpretation would be merited under 35 U.S.C. § 112(f). The absence of “means” language creates a rebuttable presumption that means-plus-function claiming does not apply. Upon a challenge that a claim term either fails to “recite sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function,” the presumption may be rebutted. The Court observed that Egenera did not explain how its “logic”—even assuming it connotes some possible structure in the general sense of software, firmware, or circuitry—amounts to “sufficient structure for performing [the modification] function.” Accordingly, the Court held that “logic to modify” was properly construed by the district court as a means-plus-function claim.
The judicial estoppel issue arose after Egenera filed a petition to correct inventorship with the PTO seeking to remove a named inventor from the patent-in-suit. Following the district court’s claim construction, Egenera asked the district court to add the removed inventor back to the patent. The district court determined that judicial estoppel prevented Egenera from relisting the inventor and held the patent invalid for failing to name all inventors. The Federal Circuit reversed. The test for judicial estoppel examines (1) whether a party’s earlier and later positions are “clearly inconsistent”—that is, “mutually exclusive”; (2) whether the party “succeeded in persuading a court to accept” the earlier position; and (3) whether the party would “derive an unfair advantage or impose an unfair detriment” on the other side if not estopped. The Court held Egenera’s positions were not clearly inconsistent because the district court’s intervening claim construction decision merited Egenera’s request to add back an inventor to the patent. The Court also held that a successful petition to correct inventorship brought before the PTO, without more, does not qualify as a “persuading a court” to accept a position. Finally, after considering the arguments of the parties, the Court found no unfair advantage or unfair detriment in the absence of estoppel.