Radware, Ltd., v. A10 Networks, Inc., Case No. C-13-02021, Radware, Ltd., v. F5 Networks, Inc., Case No. C-13-02024 RMW (related cases)
If you file a complaint for patent infringement, and the defendant brings declaratory judgment non-infringement counterclaims, you better not abandon any of your claims, or else risk summary judgment of non-infringement. That's exactly what happened to Radware, Ltd and Radware, Inc. ("Radware") recently in Radware, Ltd. v. A10 Networks, Inc.
The case involved three related patents for a device or system for the "management of networks that have multiple connections to the Internet through multiple Internet Services Providers." The technology is a method and device or system for choosing the quickest route from the user's computer to other computers when there are multiple Internet routes available. The defendants, A10 Networks, Inc. and F5 Networks, Inc. ("defendants") sought summary judgment of both invalidity of Radware's patents, and of non-infringement.
Turning first to defendants' non-infringement counterclaims, Radware had initially asserted infringement as to every claim of the three patents, and defendants had responded with declaratory judgment counterclaims as to every claim. But then Radware "silently abandoned" some of its claims. Defendants argued they were entitled to summary judgment on all claims Radware no longer asserted. Radware argued that since it removed these claims from its infringement contentions there was no longer a controversy as to these claims. Judge Whyte held that the justiciable controversy did not end when Radware abandoned these claims because as the Supreme Court recently affirmed in Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843 (2014), Radware bore the burden of proving infringement even with respect to defendants' declaratory judgment non-infringement counterclaims. Since Radware presented no evidence of infringement, defendants' motions were granted as to all these claims.
However, defendants' motions were denied as to other counterclaims. For instance, they argued they could not be liable for direct infringement of certain other claims because these claims' preambles included the limitation "a computer network connected to the Internet . . . ." Defendants argued they were entitled to summary judgment as to direct infringement because their devices did not include a computer network, and were not connected to the Internet until after sale. Judge Whyte held that while these preambles limited the claims, they did not contemplate that the Internet or a computer network were structural components of the device. Rather, these preambles stated the intended use of the device. Thus, he denied defendants' motions as to these claims.
Turning to Defendants' invalidity counterclaims, they argued they were entitled to summary judgment based on several theories, all of which Judge Whyte denied. For example, defendants argued that some of the claims were invalid because they comprised both an apparatus and a method. They argued functional language like "receiving" and "selecting" in the body of these claims meant they included methods. Judge Whyte disagreed, finding the functional language merely described the function of the claimed device or system, not an affirmative step for the device or system to carry out, and it was clear that it was the device or system being claimed. Defendants also argued that since the claims did not include modifiers like "for receiving," "capable of receiving," or "configured to receive" they must necessarily recite method steps. Judge Whyte rejected this argument, holding that the Federal Circuit does not employ a strict test for separating functional language from improper method-step language. Rather, the essential question is whether the claims place the public on notice of when infringement occurs. He held that functional language can be employed to limit claims without employing a means-plus-function format or "means for" language as long as the claim clearly indicates the scope of the subject matter embraced. Judge Whyte again found that there was no confusion as to what these claims covered or when infringement of the system or device would occur.
Defendants' other grounds for invalidity were that the written descriptions were inadequate, the claims were indefinite, and the claims contained terms lacking an antecedent basis. Judge Whyte found defendants had failed to present clear and convincing evidence of invalidity on any of these bases. Thus, defendants' motions were denied as to their invalidity claims.
What's the central take-away here? If the defendant in a patent infringement matter brings declaratory judgment counterclaims of non-infringement, the patent-holder bears the burden of proving infringement even on the counterclaims. Once the defendant has brought these counterclaims, a patent-holder can no longer safely drop its infringement contentions without risking summary judgment on non-infringement.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
