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Arista Networks, Inc. v. Cisco Systems, Inc.

No Assignor Estoppel in IPR

Arista Networks, Inc. v. Cisco Systems, Inc., __ F.3d __, 2018 WL 5851331 (Fed. Cir. Nov. 9, 2018) (PROST, Schall, Chen) (PTAB) (3 of 5 stars)

Fed Cir reverses/remands IPR confirmation of patentability as to certain claims, affirms cancellation of others. As to the confirmed claims, the PTAB erred in its claim interpretation. The opinion notes that the Board adopted a construction neither party had proposed, and which failed to cover one of the patent’s primary embodiments. Though the claim term “broadcast” might, in usage beyond the patent, have required distribution of a message to every destination on the network, the specification universally used the term in such a way as to make clear that “multicasting”—distribution to some, but not necessarily all, network destinations—was a species of “broadcasting.” Per Abbott Diabetes Care, 696 F.3d 1142 (Fed. Cir. 2012), and Homeland Housewares, 865 F.3d 1372 (Fed. Cir. 2017), this was an example of a patent defining a term “by implication.” The opinion criticizes other aspects of the “broadcast” construction by both Arista and Cisco, and construes the term to require transmission to one or more devices via multicasting. Remand is necessary for the PTAB to apply this construction.

As to the canceled claims, the PTAB did not err in declining to hold Arista’s IPR challenge barred by the doctrine of assignor estoppel. The opinion discusses the judicial history of assignor estoppel, and notes that some doubt has surrounded the doctrine since Lear, 395 U.S. 653 (1969), abrogated the related doctrine of licensor estoppel. Regardless, § 311(a)’s provision that IPR is available to any person “who is not the owner of a patent” unambiguously leaves no room for assignor estoppel. The opinion reasons that the resulting discrepancy between forums (assignor estoppel continues to apply in district courts and the ITC) is evidence of an intentional choice by Congress, and that related policy concerns about forum-shopping are best addressed there.

KEYWORDS: INTER PARTES REVIEW; CLAIM CONSTRUCTION; ASSIGNOR ESTOPPEL