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Judge Robinson issues claim construction and summary judgment rulings

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In Juniper Networks, Inc. v. Palo Alto Networks, Inc., C.A. No. 11-1258-SLR (D. Del. Feb. 6, 2014), Judge Sue L. Robinson construed several disputed terms and issued summary judgment rulings with respect to the patents-in-suit: United States Patent Nos. 8,077,723 (“the ‘723 patent”); 7,779,459 (“the ‘459 patent”); 7,650,634 (“the ‘634 patent”); 7,302,700 (“the ‘700 patent”); 6,772,347 (“the ‘347 patent”); 7,734,752 (“the ‘752 patent”); and 7,107,612 (“the ‘612 patent”). The patents-in-suit are related to “computer network and systems using hardware, software, or combinations thereof.” Id. at 13. Specifically, Judge Robinson construed the following terms:

The ‘634 Patent
– “[T]wo or more security devices” means “at least two physical devices, each of which performs a security function.”
– Judge Robinson concluded that with respect to the following limitation, the “plain meaning of ‘forwarding’ does not compel the conclusion that the ‘extraction’ step must be performed first”: “[E]xtracting flow instructions, a session ID and flow information, for the two or more security devices, from the single flow record and forwarding the flow instructions, the session ID and the flow information to the respective ones of the two or more security devices to facilitate processing of the data packet.” Judge Robinson found further support for the construction from the specification, which explained that “the steps of the invention can be performed in a different order and still achieve desirable results.” Id. at 17.

The ‘612 Patent
-“[R]ules” means “actions to be applied against packets, as distinct from a look-up table, which is a data structure that stores information.”
The ‘752 Patent
– “[A] primary portion that stores information associated with the operation of the first device-implemented session module, when the primary security system is operating in a primary security mode” means “the portion of the flow table that stores information for processing packets when all security devices are operational.”
-“[A] secondary portion that stores information associated with the operation of the first device-implemented session module, when the primary security system is functioning in a failover mode” means “a separate portion of the same flow table that stores information for processing packets if there is a failover event.”

The ‘723 Patent
-“[F]irst engine” and “second engine” mean “a first processor” and “a second processor,” respectively.
-“[A] tag” and “associat[e] … a tag” mean “a structure for holding data” and “form a connection with a
tag,” respectively.

The ‘700 and ‘459 Patents
-“[S]ecurity screening” means “inspection by applying one or more security policies.”
-“[W]ithout performing the security screening” means “without inspection.”
Judge Robinson granted plaintiff’s motion for summary judgment of assignor estoppel, which negated defendant’s invalidity defenses. Moa and Zuk – two individuals who previously worked for the plaintiff corporation – left the plaintiff corporation to found and work for the defendant corporation (“PAN”). Judge Robinson explained that Mao and/or Zuk are “listed as inventors on each of the ‘723, ‘459, ‘700, ‘347, and ‘612 patents,” and each “assigned ‘entire right, title and interest’ of each of the claimed inventions to either NetScreen or Juniper for ‘valuable consideration.’” Id. at 5. Judge Robinson explained that “Mao requested the title of sole founder when he joined PAN, [and] he and PAN have consistently held him out to be at least a founder.” Id. at 6. Judge Robinson concluded that “this fact is dispositive of the issue of privity.” Id. However, “[f]or completeness,” Judge Robinson also considered the “balance of the equities and the relationship of Moa and PAN.” Id. Judge Robinson explained that in this regard the relevant “query is whether Moa was closely involved in the development of products and with the company,” and found that “Mao testified to his involvement in the product’s development (including specific examples of product features) and his critical role with PAN.” Id. at 7. Judge Robinson thus held that the Moa was in privity with PAN, and the patents at issue were subject to assignor estoppel. Id. Further, Judge Robinson found the ‘723 patent was subject to assignor estoppel despite the fact that Zuk declined to execute an assignment and oath. Id. at 7-8. As Judge Robinson explained, Zuk’s “employment contract properly assigned the patent to Juniper.” Id. at 8. Having granted plaintiff’s motion for summary judgment of assignor estoppel, Judge Robinson denied the competing motions for summary judgment of validity as moot. Id. at 8 n.9.

Finding genuine issues of material fact to exist, Judge Robinson denied plaintiff’s motion for summary judgment of infringement. Id. at 41. Judge Robinson also denied defendant’s motion for summary judgment of non-infringement, with a few exceptions. Applying the doctrine of prosecution history estoppel to the ‘634 patent, Judge Robinson held that based on amendments made during reexamination and court’s construction of “two or more security devices,” plaintiff was precluded “from arguing at trial that a single security device satisfies the ‘two or more security devices’ claim limitations using the doctrine of equivalents.” Id. at 20. Similarly, with respect to the ‘752 patent, Judge Robinson held that an amendment and the court’s construction “requiring that the secondary portion be separate from the primary portion, prevents Juniper from arguing at trial that a flow table without portions satisfies the claim language under the doctrine of equivalents.” Id. at 30. Judge Robinson also granted defendant’s motion for summary judgment of non-infringement of the ‘459 and ‘700 patent under the doctrine of equivalents, since “[t]he prosecution history . . . and the court’s construction forecloses argument by Juniper that intra-zone packets may be inspected and still meet these claim limitations under the doctrine of equivalents.” Id. at 39.

Juniper Networks, Inc. v. Palo Alto Networks, Inc., C.A. No. 11-1258-SLR (D. Del. Feb. 6, 2014),

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