United States District Court, D. Massachusetts
CISCO SYSTEMS, INC.
FINDINGS OF FACT AND RULINGS OF LAW AFTER A BENCH
TRIAL ON INVENTORSHIP
RICHARD G. STEARNS UNITED STATES DISTRICT JUDGE.
court held a three-day bench trial confined to a single
issue: Is Peter Schulter an inventor of United States Patent
No. 7, 231, 430 (the '430 patent)? Based on the credible
testimony and exhibits offered at trial, and the stipulations
of the parties, I make the following findings of fact.
Plaintiff Egenera, Inc., is a Delaware corporation with its
principal place of business in Boxborough, Massachusetts.
Stipulated Facts (SF) ¶ 2.
September 6, 2000, Egenera made an employment offer to Peter
Schulter. SF ¶ 3. Schulter accepted and joined Egenera
on October 2, 2000. SF ¶ 5.
April 20, 2001, Egenera filed U.S. Provisional Application
No. 60/285, 296 (the '296 provisional). SF ¶ 13.
Schulter is listed as an inventor on the provisional
application. SF ¶ 14.
January 4, 2002, Egenera filed non-provisional U.S. Patent
Application No. 10/038, 353 (the '353 application). SF
¶ 15. The '353 application claims priority to the
'296 provisional. SF ¶ 16.
June 12, 2007, the '430 patent issued from the '353
application. SF ¶ 19.
issue, the '430 patent listed Vern Brownell, Pete Manca,
Ben Sprachman, Paul Curtis, Ewan Milne, Max Smith, Alan
Greenspan, Scott Geng, Dan Busby, Edward Duffy, and Schulter
as the inventors. SF ¶ 20.
'430 patent is directed to solving problems encountered
in the manual configuration, deployment, and maintenance of
enterprise and application servers, see '430
patent, col. 1, ll. 21-58, and discloses “a processing
platform from which virtual systems may be deployed through
configuration commands, ” id. col. 2, ll.
45-47. The patent sets out 4 system claims and 4 method
1. A platform for automatically deploying at least one
virtual processing area network, in response to software
commands, said platform comprising:
a plurality of computer processors connected to an internal
at least one control node in communication with an external
communication network and in communication with an external
storage network having an external storage address space,
wherein the at least one control node is connected to the
internal communication network and thereby in communication
with the plurality of computer processors, said at least one
control node including logic to receive messages from the
plurality of computer processors, wherein said received
messages are addressed to the external communication network
and to the external storage network and said at least one
control node including logic to modify said received messages
to transmit said modified messages to the external
communication network and to the external storage network;
configuration logic for receiving and responding to said
software commands, said software commands specifying (i) a
number of processors for a virtual processing area network
(ii) a virtual local area network topology defining
interconnectivity and switching functionality among the
specified processors of the virtual processing area network,
and (iii) a virtual storage space for the virtual processing
area network, said configuration logic including logic to
select, under programmatic control, a corresponding set of
computer processors from the plurality of computer
processors, to program said corresponding set of computer
processors and the internal communication network to
establish the specified virtual local area network topology,
and to program the at least one control node to define a
virtual storage space for the virtual processing area
network, said virtual storage space having a defined
correspondence to a subset of the external storage address
space of the external storage network; and
wherein the plurality of computer processors and the at least
one control node include network emulation logic to emulate
Ethernet functionality over the internal communication
Defendant Cisco Systems, Inc., is a California corporation
with its principal place of business in San Jose, California.
SF ¶ 1.
August 5, 2016, Egenera filed this Complaint against Cisco,
asserting infringement of three patents, including the
'430 patent. See Compl. (Dkt #1).
April 28, 2017, Cisco filed an IPR petition with the PTAB
objecting to the '430 patent. SF ¶ 22. In the
petition, Cisco argued, inter alia, that the
'430 patent was obvious over several references,
including U.S. Patent No. 7, 089, 293 (Grosner). SF ¶
23. According to Cisco, the Grosner patent is entitled to a
priority date of November 2, 2000. SF ¶ 24.
Manca, Egenera's then-CEO, contacted Schulter in June and
July of 2017. SF ¶ 25. Manca told Schulter that, upon
review, he had concluded that the '296 provisional
application was based solely on an Egenera document dated
September 29, 2000. Tr. Day 1 (Schulter) at 105:17-20.
Because this document predated Schulter's October 2,
2000, start date with Egenera, Manca told Schulter that he
had not contributed to and was therefore not an inventor of
the claims of the '430 patent. Tr. Day 1 (Schulter) at
104:7-105:20; see also Tr. Day 3 (Manca) at 91:12-24
(describing the conception analysis).
August 15, 2017, Schulter signed a declaration agreeing to
remove himself as an inventor of the '430 patent, stating
that he “[had] been erroneously named.” SF ¶
26; JX 7 at 14.
Schulter did not review any documents before signing the
declaration; his decision to withdraw as an inventor of the
'430 patent was based solely on Manca's
representations. Tr. Day 1 (Schulter) at 107:8-24.
Egenera responded to Cisco's IPR petition on August 16,
2017. SF ¶ 27. In its response, Egenera maintained that
the claims of the '430 patent were not obvious over the
alleged prior art. SF ¶ 28. Egenera also contended that
Grosner was not prior art to the '430 patent because the
claims of the '430 patent had been conceived by September
29, 2000 - before Grosner (and before Schulter's
employment by Egenera). SF ¶ 29.
September 8, 2017, all of the other inventors of the '430
patent had also signed declarations agreeing or not
disagreeing with removing Schulter as an inventor of the
'430 patent. SF ¶ 30. One of the inventors, Max
Smith, spoke to Schulter prior to giving his assent to the
removal because of his unease “related to being sure we
did the right thing.” Tr. Day 3 (Smith) at 61:9-20.
Smith did not independently review the relevant documents.
Id. at 61:21-24. Brownell, Busby, and Greenspan
spoke only to Manca prior to agreeing to remove Schulter, and
did not review any documents. Tr. Day 3 (Manca) at
109:23-110:20 (clip from Brownell deposition), 111:4-22 (clip
from Busby deposition), 112:2-23 (clip from Greenspan
that time, all of the '430 inventors (including Schulter)
were represented by Egenera's counsel at Egenera's
expense, and almost all were either employed by Egenera or
were paid consultants for Egenera and Egenera's counsel.
Tr. Day 2 (Geng) at 146:20-23 (CTO and EVP of engineering at
Egenera); JX 39-40, 42 (Busby, Duffy, Greenspan were still
employed by Egenera), 65-66 (Schulter joint representation
and consulting agreements), 72-73 (Smith joint representation
and consulting agreements), 79-84 (Brownell joint
representation agreement, Sprachman joint representation and
consulting agreements, Milne joint representation agreement,
and Curtis joint representation and consulting agreements).
At the time of the trial, Schulter still owned Egenera stock.
Tr. Day 1 (Schulter) at 149:25-150:3. Smith believed that a
surviving term of his employment agreement with Egenera bound
him in perpetuity to assist Egenera in defending the
‘430 patent. Tr. Day 3 (Smith) at 63:7-17.
Egenera petitioned the Patent and Trademark Office (PTO) on
September 11, 2017, to remove Schulter as an inventor of the
'430 patent. SF ¶ 31.
January 16, 2018, the PTO granted Egenera's petition and
removed Schulter as an inventor of the '430
patent. SF ¶ 32.
court issued its claim construction rulings on February 5,
2018. See Dkt # 85. The court construed “logic
to modify said received messages to transmit said modified
messages to the external communication network and to the
external storage network” as a means-plus-function
limitation. Id. at 11-17. The function of the
limitation is to “modify said received messages to
transmit said modified received messages to the external
communication network and to the external storage
network.” Id. at 17. The structure is
“virtual LAN server 335, virtual LAN proxy 340, and
physical LAN driver 345” and equivalents for messages
to the external communications network, and “storage
configuration logic 605” and equivalents for messages
to the external storage network. Id. at 18-19. The
excerpted portion of figure 3B is illustrative. Id.
August of 2018, Cisco moved for summary judgment, asserting,
inter alia, that the '430 patent is invalid
because of the omission of Schulter as an inventor.
See Dkt # 141. According to Cisco's motion,
Schulter conceived of the VLAN Proxy, one of the structures
underlying the “logic to modify said received messages
to transmit said modified messages to the external
communication network” limitation. See Dkt #
143 at 9-13.
Egenera cross-moved for summary judgment, contending,
inter alia, that Schulter was not an inventor of the
'430 patent. See Dkt # 135. In the alternative,
Egenera argued that the remedy for nonjoinder of an inventor
is a correction of the patent, not its invalidation.
See Dkt # 162 at 18-19.
court denied the cross motions on inventorship, and held that
under the doctrine of judicial estoppel, having successfully
persuaded the PTO to remove Schulter, Egenera could not now
reinstate Schulter as an inventor of the '430 patent.
See Egenera, Inc. v. Cisco Sys., Inc., 348 F.Supp.3d
99, 101-102 (D. Mass. 2018). This bench trial followed in
January of 2019.
Egenera was founded in March of 2000 to develop a product
called the Interframe platform, later renamed Bladeframe. Tr.
Day 2 (Geng) at 149:2-22, 151:18-24.
Development of the Interframe/BladeFrame, Egenera's sole
product at the time, was a highly collaborative effort based
on regular meetings throughout the summer and fall of 2000.
Tr. Day 2 (Geng) at 154:11-17; Tr. 3 (Manca) at 74:6-18; Tr.
Day 1 (Schulter) at 84:9-17.
June of 2000, Egenera had hired Sprachman, Busby, Brownell,
Milne, Manca, Curtis, and Geng. JX 74.
June of 2000, Milne and Curtis co-authored a document
entitled “The Egenera Interframe: A New
Architecture” (the June Specification). SF ¶ 6;
see also JX 13.
June Specification disclosed a system with “two basic
modules.” JX 13 at 2.
Interframe Controller modules (IFC modules) perform I/O
processing and system management functions, but do not run
application software. All of the external I/O
[(Input/Output)] interfaces are connected to the IFC modules.
Application Processor modules (AP modules) run application
software, but do not contain any I/O interfaces other than
the interface card for the system interconnect. Application
Processors are able to perform I/O operations via a
message-passing interface to the Interframe Controllers.
External network interfaces on the Interframe Controllers
forward incoming TCP/IP traffic to the Application Processors
by examining the fields in the packet header to route the
packet to the appropriate destination.
Id. (trademark designations omitted). The IFC
modules connect to the outside world through “2
redundant external network interface cables (Gigabit Ethernet
or equivalent) and  2 redundant SAN cables (Fiber
Channel).” Id. at 5.
June Specification lists as a “Functional
[a] distributed network implementation that allows AP nodes
with no physical network interface to utilize the network
interfaces on the IFC nodes. The IFC nodes must be able to
multiplex network traffic from several AP nodes onto one
physical network interface, and demultiplex the incoming
network traffic and send it to the appropriate AP nodes. Some
packet filtering logic will be required.
Id. at 9.
July of 2000, Egenera hired Greenspan, Duffy, and Smith. JX
74. At that time, with the exception of Schulter, all of the
inventors of the '430 patent had been recruited. See
Smith, in his role as the Chief Architect, see Tr.
Day 3 (Smith) at 33:8-10, authored a document entitled
“Egenera Interframe I/O Architecture” (The
September Specification), dated September 29, 2000. SF ¶
7; see also JX 15.
September Specification memorialized the then-current state
of the Interframe architecture and set out working goals for
the team during Smith's upcoming month-long vacation. JX
23 at 12, Tr. ...