NETWORK-1 TECHNOLOGIES, INC. v. HEWLETT-PACKARD COMPANY

NETWORK-1 TECHNOLOGIES, INC. v. HEWLETT-PACKARD COMPANY, Appeal No. 2018-2338 (Fed. Cir. September 24, 2020).  Before Prost, Newman and Bryson.  Appealed from E.D. Tex. (Judge Schroeder, III).  (Statutory Estoppel, Claim Broadening)

Background:

Network-1 sued Hewlett-Packard (HP) for infringement of its patent directed to an apparatus and method for providing power to remote equipment over Ethernet.  The jury found in favor of HP, finding that the patent was invalid and was not infringed.  In response to Network-1’s post-trial motions, the district court denied Network-1’s request for a new trial on the issue of infringement, but granted its motion for judgment as a matter of law (JMOL) on the issue of validity.  In further regards to the issue of validity, the district court found that HP was estopped from asserting certain invalidity challenges in view of an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB), to which HP was a joining party.

Network-1 appealed the district court’s holding of non-infringement, alleging that the district court’s claim construction was erroneous.  HP cross-appealed the district court’s JMOL on validity, asserting that the district court improperly precluded HP from raising invalidity challenges that were not raised in the IPR.  HP also cross-appealed on the issue of validity on grounds that the district court’s finding that claim 6 had not been improperly broadened during reexamination of the asserted patent was erroneous.

Issues/Holdings:

  • Did the district court err in finding that HP was estopped from raising new invalidity challenges other than those instituted in an IPR?
  • Did the district court err in finding that reexamined claim 6 was not broadened? (continue reading)

Summary byDonna Mason

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