Case: 19-1255    Document: 77-2     Page: 1   Filed: 05/08/2020




         NOTE: This disposition is nonprecedential.


    United States Court of Appeals
        for the Federal Circuit
                   ______________________

                  OYSTER OPTICS, LLC,
                    Plaintiff-Appellant

                              v.

   ALCATEL-LUCENT USA, INC., CISCO SYSTEMS,
                     INC.,
              Defendants-Appellees
             ______________________

                    2019-1255, 2019-1257
                   ______________________

      Appeals from the United States District Court for the
  Eastern District of Texas in Nos. 2:16-cv-01297-JRG, 2:16-
  cv-01301-JRG, 2:16-cv-01302-JRG, Judge J. Rodney Gil-
  strap.
                   ______________________

            SEALED OPINION ISSUED: May 8, 2020
           PUBLIC OPINION ISSUED: May 27, 2020 *
                  ______________________

     REZA MIRZAIE, Russ August & Kabat, Los Angeles, CA,
  argued for plaintiff-appellant. Also represented by MARC
  AARON FENSTER, BAHRAD A. SOKHANSANJ.


     *   This opinion was originally filed under seal and has
  been unsealed in full.
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  2             OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.




      MATTHEW S. STEVENS, Alston & Bird LLP, Charlotte,
  NC, argued for defendant-appellee Alcatel-Lucent USA,
  Inc. Also represented by KIRK T. BRADLEY, STEPHEN
  LAREAU, CHRISTOPHER CHARLES ZIEGLER; JOHN D. HAYNES,
  Atlanta, GA.

      JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
  DC, argued for defendant-appellee Cisco Systems, Inc.
  Also represented by JASON M. WILCOX; MATTHEW
  CHRISTOPHER GAUDET, L. NORWOOD JAMESON, Duane Mor-
  ris LLP, Atlanta, GA; JOHN MATTHEW BAIRD, Washington,
  DC.
                   ______________________

      Before LOURIE, SCHALL, and CHEN, Circuit Judges.
  SCHALL, Circuit Judge.
       Oyster Optics, LLC (“Oyster”) is the owner of U.S. Pa-
  tent No. 7,620,327 (“the ’327 patent”). The ’327 patent is
  directed to transceiver cards for sending and receiving data
  over a fiber optic network. In November of 2016, Oyster
  sued various fiber optic equipment manufacturers in the
  United States District Court for the Eastern District of
  Texas for infringement of the ’327 patent. Among the de-
  fendants were Alcatel-Lucent USA, Inc. (“ALU”) and Cisco
  Systems, Inc. (“Cisco”). 1 On September 4, 2018, addressing
  the parties’ cross-motions for summary judgment, the dis-
  trict court granted partial summary judgment in favor of
  ALU and Cisco. The court did so because it found that a
  settlement agreement between Oyster and Fujitsu Limited
  (“Fujitsu”) and Fujitsu Network Communications, Inc.
  (“FNC”) (“the Oyster/Fujitsu Agreement” or “the Agree-
  ment”) had the effect of releasing ALU and Cisco from


      1    Where appropriate, we refer to ALU and Cisco col-
  lectively as “Appellees.”
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  OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.            3



  liability for infringement of the ’327 patent. See Order
  Granting Defs.’ Mot. for Partial Summ. J. Regarding Their
  Release Defense, Oyster Optics, LLC. v. Coriant (USA) Inc.,
  No. 2:16-cv-01302 (E.D. Tex. Dec. 4, 2018), ECF No. 864
  (redacted), J.A. 33–50 (“Summary Judgment Decision”). 2
  For the reasons stated below, we affirm.
                           BACKGROUND
                                 I.
       In November of 2016, Oyster sued FNC for infringe-
  ment of the ’327 patent. In its suit, Oyster alleged that
  FNC infringed the patent by “making, selling, using, offer-
  ing for sale, and/or causing to be used” versions of Fujitsu’s
  100G/400G LN Modulator and 100G/400G Integrated Co-
  herent Receiver, among other products. Summary Judg-
  ment Decision at 12–15. 3 Separately, Oyster also sued
  ALU and Cisco for infringement of the ’327 patent. Oys-
  ter’s suits against ALU and Cisco were based upon their
  sales of various products, at least some of which contained
  Fujitsu modulators and receivers. See id. at 5. Subse-
  quently, Oyster’s suits against ALU and Cisco were consol-
  idated with its suit against FNC. Id. at 1. 4



      2    The district court subsequently issued an order
  clarifying the scope of the Summary Judgment Decision.
  Order, Oyster Optics, LLC. v. Coriant (USA) Inc., No. 2:16-
  cv-01302 (E.D. Tex. Nov. 7, 2018), ECF No. 850, J.A. 26–28
  (“November 7th Order”). The November 7th Order also
  granted a joint motion to sever any claims not resolved by
  the Summary Judgment Decision into two new actions, one
  case for Oyster’s remaining claims against ALU and an-
  other for Oyster’s remaining claims against Cisco. Id.
      3    We refer to these accused items as “Fujitsu modu-
  lators and receivers.”
      4    The ALU, Cisco, and FNC litigations were member
  case Nos. 2:16-cv-01297-JRG, 2:16-cv-01301-JRG, and
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  4             OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.



       Claim 25 of the ’327 patent, which the parties agree is
  illustrative, recites:
      A transceiver card for a telecommunications box for
      transmitting data over a first optical fiber and re-
      ceiving data over a second optical fiber, the card
      comprising:
      a transmitter for transmitting data over the first
      optical fiber, the transmitter having a laser, a mod-
      ulator and a controller receiving input data and
      controlling the modulator as a function of the input
      data, the transmitter transmitting optical signals
      for telecommunication as a function of the input
      data;
      a fiber output optically connected to the laser for
      connecting the first optical fiber to the card;
      a fiber input for connecting the second optical fiber
      to the card;
      a receiver optically connected to the fiber input for
      receiving data from the second optical fiber; and
      an energy level detector to measure an energy level
      of the optical signals, the energy level detector in-
      cluding a threshold indicating a drop in amplitude
      of a phase-modulated signal.
  ’327 patent col. 8 ll. 6–24.
      In May of 2018, Oyster settled its suit against FNC by
  entering into the Oyster/Fujitsu Agreement. Summary
  Judgment Decision at 1–2. To the extent relevant to this
  appeal, in Section 3.1 of the Agreement Oyster releases


  2:16-cv-01299-JRG, respectively. These member cases
  were consolidated into lead case No. 2:16-cv-01302-JRG, a
  suit Oyster originally filed against Coriant (USA) Inc. (“Co-
  riant”). Coriant is not a party to this appeal.
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  OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.             5



  “FNC, Fujitsu, and their Affiliates” from “any and all
  claims of infringement under any patent right within the
  Licensed Patents, on account of any product, process, or
  service exported or imported, made, had been made, used,
  distributed, offered to sell, sold, or otherwise disposed of by
  FNC, Fujitsu, and their Affiliates.” Id. at 3–4. Section 3.1
  further states that Oyster’s release extends to “all custom-
  ers . . . of FNC, [Fujitsu], and their Affiliates, but only to
  the extent such customers . . . exported or imported, made,
  have had made, used, distributed, offered to sell, sold, or
  otherwise disposed of Licensed Products or components of
  Licensed Products.” Id. at 4. In Section 4.1 of the Agree-
  ment, Oyster grants to “FNC, Fujitsu, and their Affiliates”
  a forward-looking license under the “Licensed Patents”
  with respect to “Licensed Products.” Id. The terms “Affil-
  iate,” “Licensed Patents,” and “Licensed Products” are de-
  fined in Sections 1.1, 1.2, and 1.3 of the Agreement,
  respectively. Id. at 2–3.
      Section 1.3 of the Agreement states that “Licensed
  Products” means “any products, product lines, services, de-
  vices, systems, components, hardware, software and/or
  software algorithm and/or combination of any one or more
  of the foregoing, made, sold, imported, or distributed by or
  for FNC, [Fujitsu], or their Affiliates at any time, including
  those sold to, distributed to, or otherwise provided (directly
  or indirectly) to any customer by FNC, [Fujitsu], or their
  Affiliates.” Id. at 3. The “Licensed Products” definition
  contains two additional provisions. They are as follows:
      For clarity, this definition of Licensed Products
      does not prevent Oyster from exercising its patent
      rights in instances where its infringement allega-
      tions do not include or refer to a Licensed Product.
      For further clarity, this definition of Licensed Prod-
      ucts also does not prevent Oyster from exercising
      its patent rights in instances where its infringe-
      ment allegations do include or refer to a Licensed
      Product, unless the only reasonable and intended
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  6              OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.



        use of the component comprising the Licensed
        Product is to practice the claim and the component
        substantially embodies the patented invention by
        embodying its essential features.
  Id.
                               II.
                               A.
      In the wake of the Oyster/Fujitsu Agreement, ALU and
  Cisco moved for partial summary judgment in Oyster’s suit
  against them. ALU and Cisco argued that the Agreement
  released them from all claims of infringement with respect
  to their products containing Fujitsu modulators and receiv-
  ers that arose prior to May 22, 2018, the effective date of
  the Agreement. Defs.’ Mot. for Partial Summ. J. Regarding
  Their Release Defense, Oyster Optics, LLC. v. Coriant
  (USA) Inc., No. 2:16-cv-01302 (E.D. Tex. July 24, 2018),
  ECF No. 691 at 5–8 (redacted) (“Defendants’ Summary
  Judgment Motion on Release”). Oyster cross-moved, argu-
  ing that ALU and Cisco’s defenses of exhaustion, license,
  and release failed as a matter of law. Mot. for Summ. J. on
  Alcatel’s “New Defenses,” Oyster Optics, LLC. v. Coriant
  (USA) Inc., No. 2:16-cv-01302 (E.D. Tex. July 24, 2018),
  ECF No. 693 (redacted); Mot. for Summ. J. on Cisco’s “New
  Defenses,” Oyster Optics, LLC. v. Coriant (USA) Inc., No.
  2:16-cv-01302 (E.D. Tex. July 25, 2018), ECF No. 695 (re-
  dacted).
      For purposes of their cross-motions, the parties agreed
  that the following facts were undisputed: (1) The term “Li-
  censed Patents” in the Agreement includes the ’327 patent.
  (2) Fujitsu Optical Components (“Fujitsu Optical”) is an
  “Affiliate,” as defined in the Agreement, of Fujitsu.
  (3) ALU and Cisco each acquired Fujitsu modulators and
  receivers directly or indirectly from Fujitsu Optical. Thus,
  ALU and Cisco are customers of Fujitsu in accordance with
  the release provision of the Agreement. (4) The Fujitsu
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  OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.                7



  modulators and receivers are “products,” “devices,” “com-
  ponents,” and/or “hardware . . . made, sold, imported, or
  distributed by or for FNC, [Fujitsu], or their Affiliates . . . .”
  Summary Judgment Decision at 4–5.
       The district court heard oral argument on the parties’
  summary judgment motions on August 9, 2018. At the con-
  clusion of the hearing, the court stated that, because the
  parties agreed the Oyster-Fujitsu Agreement was unam-
  biguous, the court was construing the contract “pursuant
  to its four corners.” Tr. of Pre-Trial Hearing, Oyster Optics
  v. Coriant (USA) Inc., No. 2:16-cv-01302 (Aug. 9, 2018),
  ECF No. 824 at 14, 15, 70 (“Pre-Trial Hearing Transcript”).
  The court also stated that, based upon two alternate ap-
  proaches, it was holding that, under the Oyster/Fujitsu
  Agreement, ALU and Cisco were released from Oyster’s
  claims of infringement “as to the Fujitsu and its affiliates’
  products.” Id. at 72. The court informed the parties that
  it would issue a written opinion explaining its holdings. Id.
  at 70, 71.
       On September 4, 2018, the district court issued the
  Summary Judgment Decision. The court began its analysis
  by holding that the release of Section 3.1 applies to Fujitsu,
  Fujitsu Affiliates, including Fujitsu Optical, and customers
  of Fujitsu and its affiliates, where the customers have “ex-
  ported or imported, made, have had made, used, distrib-
  uted, offered to sell, sold, or otherwise disposed of Licensed
  Products or components of Licensed Products.” Summary
  Judgment Decision at 8. The district court stated, “[i]t is
  undisputed that [ALU and Cisco] are customers of Fujitsu’s
  affiliate Fujitsu Optical.” Id.
      The district court then turned to the question of
  whether, as customers of Fujitsu Optical, ALU and Cisco
  were released from liability for infringement by Section 3.1
  of the Oyster/Fujitsu Agreement. Id. In its motions for
  summary judgment, Oyster argued that ALU’s and Cisco’s
  products were not released from infringement by the
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  8             OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.



  Agreement because, on their own individually, the Fujitsu
  modulators and receivers contained in the accused prod-
  ucts could not satisfy essential claimed features of the ’327
  patent and thus did not “substantially embod[y]” the pa-
  tent claims. Therefore, Oyster maintained, it could exer-
  cise its patent rights under the “[f]or further clarity”
  provision of Section 1.3. Id. at 10; see also Appellant’s Br.
  13–14. In Defendants’ Summary Judgment Motion on Re-
  lease, ALU and Cisco argued that Section 3.1 of the Oys-
  ter/Fujitsu Agreement released them from liability for
  infringement of the ’327 patent for those products that con-
  tained Fujitsu modulators and receivers that ALU and
  Cisco purchased from a Fujitsu Affiliate. ALU and Cisco
  contended that the “[f]or further clarity” provision did not
  change the scope of the definition of “Licensed Products”
  set forth in Section 1.3 of the Agreement. Appellees’ Br.
  13; see generally Defendants’ Summary Judgment Motion
  on Release. In separate motions, they also argued that Oys-
  ter’s patent rights with respect to the accused products un-
  der the ’327 patent were exhausted as a result of Fujitsu
  Optical’s authorized sales of the modulators and receivers
  to ALU and Cisco. Appellees’ Br. 13.
      As to whether the “[f]or further clarity” provision of
  Section 1.3 limited the definition of “Licensed Products” in
  Section 3.1, the district court held that the clause only ap-
  plies to the Agreement’s license provision in Section 4.1,
  where the term “Licensed Products” appears, and not to the
  customer release provision in Section 3.1, where the term
  also appears. Summary Judgment Decision at 9–10. Re-
  ferring to the “[f]or further clarity” provision, the court
  stated: “[I]t means that the law of patent exhaustion is
  acknowledged by the Parties [to the Agreement] to apply to
  the Licensed Products identified within the [Agreement].
  The provision is a prospective preservation[] of rights under
  the forward-looking license of Section 4.1 alone, but it has
  no effect as to the retrospective release of Section [3.1].” Id.
  at 9 (bracketed revisions added).
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  OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.            9



      Concluding, the district court found that the Fujitsu
  modulators and receivers contained in ALU’s and Cisco’s
  products qualified as “Licensed Products” within the mean-
  ing of Section 1.3 for three reasons. First, the modulators
  and receivers were at least either “products,” “devices,”
  “components,” and/or “hardware.” Second, the modulators
  and receivers were “made, sold, imported, or distributed”
  by an Affiliate (Fujitsu Optical). And, third, the modula-
  tors and receivers were “sold to, distributed to, or otherwise
  provided (directly or indirectly) to any customer by FNC,
  Fujitsu Limited, or their Affiliates.” Id. at 10. The court
  thus held that the Fujitsu modulators and receivers quali-
  fied as “Licensed Products” within the meaning of Section
  1.3 of the Agreement. Id. at 10–11. Having determined
  that the Fujitsu modulators and receivers were “Licensed
  Products,” the district court ruled, “all of Oyster’s claims
  based upon the Licensed Patents against any accused prod-
  uct containing a Licensed Product or components of Li-
  censed Products have been released under the
  [Oyster/Fujitsu Agreement], specifically including accused
  products sold prior to May 22, 2018, that include a Fujitsu
  [modulator] or [r]eceiver.” Id. at 11–12. Accordingly, the
  court held that ALU and Cisco were released from Oyster’s
  claims for infringement of the ’327 patent for those prod-
  ucts containing Fujitsu modulators and receivers that were
  sold prior to the May 22, 2018 effective date of the Agree-
  ment.
                                B.
       In the second part of its summary judgment decision,
  the district court concluded that there was an alternative
  ground for concluding that the Oyster/Fujitsu Agreement
  released ALU and Cisco from liability under the ’327 pa-
  tent. Id. at 12. The court determined that, to the extent
  its holding with respect to the “[f]or further clarity” provi-
  sion of Section 1.3 was held on appeal to be incorrect, ALU
  and Cisco still would be released from liability. Specifi-
  cally, the court found that, in light of Oyster’s contentions
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  10            OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.



  and representations “in the prior Fujitsu litigation,” the
  Fujitsu products identified in that litigation “embody the
  essential features of the patented invention,” as required
  by the “[f]or further clarity” provision of Section 1.3. Sum-
  mary Judgment Decision at 12–17. 5 “Therefore,” the court
  stated, “in the event that the ‘for further clarity’ provision
  in Section 1.3 of the [Oyster/Fujitsu Agreement] limits the
  definition of Licensed Products, the Court holds that Sec-
  tion 3.1’s release still applies to the Defendants as to any
  claim of infringement relating to the ’327 Patent where the
  accused products contain one of the Accused Instrumental-
  ities of the Fujitsu litigation.” Id. at 17.
       The parties sought clarification of what products were
  encompassed by the Summary Judgment Decision. Oyster
  interpreted “Accused Instrumentalities of the Fujitsu liti-
  gation” to mean only those specific model numbers named
  in infringement contentions referenced in the Summary
  Judgment Decision. In other words, according to Oyster,
  under the court’s alternative ruling, in order to be covered
  by the release of Section 1.3 as a “Licensed Product” a Fu-
  jitsu modulator or receiver contained in an accused ALU or
  Cisco product had to have the same model number as a
  modulator or receiver listed in the infringement conten-
  tions Oyster served on FNC in case No. 2:16-cv-01299-JRG.
  For their part, ALU and Cisco interpreted the phrase to
  include the “category” of Fujitsu products named in the in-
  fringement contentions, “‘i.e., 100G/400G LN Modulator’



       5  In referring to the “prior Fujitsu litigation,” the
  court appears to have been referencing both case No. 2:16-
  cv-01299-JRG and a subsequent short-lived suit Oyster
  filed against FNC, Fujitsu, and Fujitsu Optical, case No.
  2:18-cv-0153-JRG. Oyster stipulated to the dismissal of
  the latter nine days after filing its complaint. We adopt the
  same convention, referring to both actions collectively as
  the “prior Fujitsu litigation.”
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  OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.          11



  and ‘100G/400G Integrated Coherent Receiver’ products.”
  Further, ALU and Cisco urged that the model numbers
  were “exemplary.” In its November 7th Order, the court
  held that ALU and Cisco’s interpretation of the relevant
  part of the Summary Judgment Decision was correct. No-
  vember 7th Order at 2.
      Following the entry of judgment, Oyster timely ap-
  pealed. We have jurisdiction pursuant to 28 U.S.C.
  § 1295(a)(1).
                           DISCUSSION
                                 I.
      We review a grant of summary judgment in accordance
  with the law of the regional circuit. Profectus Tech. LLC v.
  Huawei Techs. Co., 823 F.3d 1375, 1379 (Fed. Cir. 2016).
  The Fifth Circuit reviews a grant of summary judgment de
  novo. Kinsale Ins. v. Georgia-Pacific, L.L.C., 795 F.3d 452,
  454 (5th Cir. 2015). Summary judgment is appropriate
  when “there is no genuine dispute as to any material fact
  and the movant is entitled to judgment as a matter of law.”
  FED. R. CIV. P. 56(a). “By its very terms, this standard pro-
  vides that the mere existence of some alleged factual dis-
  pute between the parties will not defeat an otherwise
  properly supported motion for summary judgment; the re-
  quirement is that there be no genuine issue of material
  fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–
  48 (1986). A dispute is genuine only “if the evidence is such
  that a reasonable jury could return a verdict for the non-
  moving party.” Id. at 248.
      We also review the interpretation of contract terms un-
  der regional circuit law. DePuy Spine, Inc. v. Medtronic
  Sofamor Danek, Inc., 469 F.3d 1005, 1013 (Fed. Cir. 2006).
  The Fifth Circuit reviews a district court’s interpretation
  of a contract de novo. Dallas/Fort Worth Int’l Airport Bd.
  v. INet Airport Sys., Inc., 819 F.3d 245, 248 (5th Cir. 2016)
  (“The contract in this case is governed by Texas law, under
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  12            OYSTER OPTICS, LLC    v. ALCATEL-LUCENT USA, INC.



  which contract interpretation and whether a contract is
  ambiguous are questions of law.”). Under Texas law, the
  intent of the parties is to be determined from the agree-
  ment itself, not from a party’s later interpretation of it. See
  Las Colinas Obstetrics-Gynecology-Infertility Ass’n P.A. v.
  Villalba, 324 S.W.3d 634, 639–40 (Tex. App. 2010).
                                II.
       Oyster makes three main arguments on appeal. First,
  it contends that the district court erred when it construed
  the “[f]or further clarity” provision to not apply to the re-
  lease of Section 3.1. Appellant’s Br. 20–38. Second, even
  if the “[f]or further clarity” provision does not apply to Sec-
  tion 3.1, Oyster urges, the plain language of that Section
  does not provide a release for a customer to buy Fujitsu’s
  components and then incorporate them into an infringing
  product. Id. at 38–40; Reply Br. 4–11. Third, Oyster con-
  tends that the district court’s alternative ruling is incorrect
  because the Fujitsu modulators and receivers do not “sub-
  stantially embody” the claims of the ’327 patent. This is so,
  Oyster alleges, because the claims of the ’327 patent are
  directed to a transceiver card and require components in
  addition to a modulator and a receiver. Appellant’s Br. at
  42–46. In the Fujitsu litigation, Oyster argues, Oyster con-
  sistently accused only Fujitsu’s transceiver card and mod-
  ule of direct infringement, not the Fujitsu modulators and
  receivers, which Oyster states it accused only of indirect
  infringement. Id. at 46–54. Oyster further argues that the
  court’s alternative ruling is incorrect because Oyster’s
  statements in the prior Fujitsu litigation pertained only to
  specific models of Fujitsu modulators and receivers and
  “many of ALU’s and Cisco’s products [currently] accused of
  infringement utilize Fujitsu modulators and/or receivers
  with model numbers that do not appear in the lists in Oys-
  ter’s contentions [in the prior Fujitsu litigation].” Id. at 54–
  57. In addition, Oyster contends the district court errone-
  ously construed Oyster’s statements from the prior Fujitsu
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  OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.           13



  litigation to be legally binding judicial admissions. Id. at
  50–54.
      In response, Appellees argue that the district court
  properly found that the“[f]or further clarity” provision of
  Section 1.3 does not limit the scope of the term “Licensed
  Products.” Rather, it serves to acknowledge the law of pa-
  tent exhaustion and clarifies that Fujitsu’s customers have
  not been awarded a prospective license. Appellees’ Br. 22–
  23, 34–40. Appellees contend that Oyster waived its second
  argument by not raising it before the district court. Even
  if we were to consider the argument, Appellees argue, the
  language of Section 3.1’s release applies to “any and all
  claims of infringement under any patent right” and thus
  encompasses Appellees’ use of Fujitsu components in their
  products. Appellees’ Br. 43–45.
      Appellees also urge us to affirm the district court’s al-
  ternative ruling. Appellees assert that “[u]ndisputed evi-
  dence—Oyster’s contentions, pleadings, and expert reports
  in the Fujitsu litigation—shows that the Fujitsu compo-
  nents in Cisco’s and ALU’s products substantially embody
  the ’327 patent’s claimed invention under the [Agree-
  ment].” Appellees’ Br. 26, 45–65. Oyster and its experts
  have admitted that the Fujitsu components in this case
  perform in materially the same way as the Fujitsu modu-
  lators and receivers named in the prior Fujitsu litigation,
  Appellees state.
      For the reasons that follow, we affirm the decision of
  the district court on the basis of its alternative ruling. We
  express no view with respect to the court’s primary ruling.
                                III.
      As noted, Section 3.1 of the Oyster/Fujitsu Agreement
  provides a release to “all customers . . . of FNC, Fujitsu
  Limited, and their Affiliates,” with respect to “Licensed
  Products or components of Licensed Products.” Section 1.3
  of the Agreement defines “Licensed Products” broadly.
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  14             OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.



  Then, in the “[f]or further clarity” provision, it states that,
  when the “only reasonable and intended use of the compo-
  nent comprising the Licensed Product is to practice the
  claim and the component substantially embodies the pa-
  tented invention by embodying its essential features,” Oys-
  ter is “prevent[ed] from exercising its patent rights” under
  the Agreement. Summary Judgment Decision at 12–15.
  The question presented by the district court’s alternative
  ruling is a narrow one. The parties do not dispute that “the
  only reasonable and intended use” of the Fujitsu modula-
  tors and receivers contained in Appellees’ accused products
  is to practice the asserted claims of the ’327 patent. Thus,
  the only issue to be decided is whether the Fujitsu modula-
  tors and receivers “substantially embod[y] the patented in-
  vention by embodying its essential features.”
      In addressing this issue at the conclusion of the August
  9 hearing, the district court stated:
       [T]he claims, positions, assertions, contentions,
       and other positions of [Oyster] in this litigation are
       such that they would fall within the language of the
       “for further clarity” provision, which I think is un-
       disputedly lifted from language addressing the con-
       cept of patent exhaustion, such that even if it were
       a limitation on licensed products, in this case,
       [ALU and Cisco] would be within that limitation
       based on what [Oyster has] alleged and how [it]
       ha[s] pursued the litigation in this case heretofore,
       such that they would meet that limitation and
       would also be released.
  Pre-Trial Hearing Transcript at 71–72. Thus, the district
  court reasoned that Oyster’s infringement contentions
  served to satisfy ALU’s and Cisco’s burden of establishing
  that the Fujitsu modulators and receivers contained in
  ALU’s and Cisco’s products substantially embody the pa-
  tented invention by embodying its essential features. See
  Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366–67
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  OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.           15



  (Fed. Cir. 2000) (holding the plaintiff-patentee’s allega-
  tions of infringement satisfied the defendants’ burden to
  prove the accused products were infringing for purposes of
  the on-sale bar under pre-American Invents Act 35 U.S.C.
  § 102(b)); Evans Cooling Sys., Inc. v. Gen. Motors Corp.,
  125 F.3d 1448, 1451 (Fed. Cir. 1997) (same). We think ev-
  idence in the record clearly supports the district court’s
  conclusion.
       In its suit against FNC, Oyster accused the Fujitsu
  modulators and receivers of directly infringing the ’327 pa-
  tent. This is evident from the following: (1) In case No.
  2:16-cv-01299-JRG, Oyster defined “Accused Instrumen-
  talities” to include the Fujitsu modulators and receivers in
  its infringement contentions and accompanying claim
  charts. See, e.g., Summary Judgment Decision at 13 (quot-
  ing Oyster’s infringement contentions which state “the Fu-
  jitsu 100G/400G LN Modulator . . . is a transceiver card
  with a transmitting and receiving interface”). (2) Oyster’s
  expert on infringement in case No. 2:16-cv-01299-JRG in-
  cluded the Fujitsu modulators and receivers in his defini-
  tion of “Accused Products” that he analyzed for
  infringement. (3) In the short-lived complaint filed in case
  No. 2:18-cv-0153-JRG, Oyster defined “Accused Instru-
  mentalities” to include the Fujitsu modulators and receiv-
  ers. (4) Finally, in the present case, Oyster’s expert on
  exhaustion confirmed that Oyster’s infringement conten-
  tions in case No. 2:16-cv-01299-JRG and its complaint in
  case No. 2:16-cv-01299 accused the Fujitsu modulators and
  receivers of directly infringing the ’327 patent. Id. at 15–
  16.
      We recognize that in Vanmoor and Evans Cooling the
  contentions that served to establish the accused products
  were infringing for purposes of the on-sale bar were set
  forth in the plaintiffs’ complaints. In this case, the evi-
  dence to which the district court pointed, except for the con-
  tentions in the complaint in case No. 2:18-cv-0153-JRG,
  consisted of infringement contentions and expert
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  16            OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.



  testimony, not complaint allegations. That said, in the cir-
  cumstances of this case, we do not think it was error for the
  district court to rely on this material, especially infringe-
  ment contentions, which served to flesh out the infringe-
  ment allegations in the prior Fujitsu litigation. 6
        In sum, in the face of its repeated and consistent state-
  ments alleging infringement of the ’327 patent by the Fu-
  jitsu modulators and receivers themselves, Oyster’s
  present argument that the modulators and receivers are
  merely claim components and do not practice the claim or
  substantially embody the invention of the ’327 patent is not
  persuasive. In other words, we do not believe the district
  court erred when it found, for purposes of the Oyster/Fu-
  jitsu Agreement: (i) that the Fujitsu modulators and receiv-
  ers at issue embody the essential features of the patented
  invention in view of “what [Oyster] alleged and how [it]
  . . . pursued the litigation”; and (ii) that the Fujitsu modu-
  lators and receivers thus fall under the release of liability
  for directly infringing devices.           Pre-Trial Hearing



       6   Oyster’s argument that its statements made in con-
  nection with the prior Fujitsu litigation were made in a dif-
  ferent case are unavailing, particularly with respect to the
  statements and testimony from case No. 2:16-cv-01299-
  JRG, which Oyster originally filed against FNC. As noted,
  Oyster’s suits against ALU, Cisco, and FNC were consoli-
  dated into case No. 2:16-cv-01302-JRG. After the cases
  were consolidated, Oyster filed a motion for leave to amend
  its infringement contentions with respect to FNC, to which
  it attached its updated contentions defining the Accused
  Instrumentalities to include the Fujitsu modulators and re-
  ceivers. Pl.’s Mot. for Leave to Amend its P.R. 3–1 Infringe-
  ment Contentions with Regard to Fujitsu Network
  Communications, Inc., Oyster Optics, LLC. v. Coriant
  (USA) Inc., No. 2:16-cv-01302 (E.D. Tex. Dec. 6, 2017), ECF
  No. 193 (redacted).
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  OYSTER OPTICS, LLC   v. ALCATEL-LUCENT USA, INC.           17



  Transcript at 71–72; see High Point SARL v. T-Mobile
  USA, Inc., 640 F. App’x 917, 929–30 (Fed. Cir. 2016) (“T-
  Mobile persuasively established that, in view of High
  Point’s own infringement contentions, the accused [prod-
  ucts] substantially embodied every purportedly inventive
  element of the claimed inventions.”). Accordingly, we agree
  with the district court that the release of Section 3.1 of the
  Agreement applies to ALU and Cisco as to “any claim of
  infringement relating to the ’327 patent where the accused
  products contain one of the Accused Instrumentalities of
  the Fujitsu litigation.” See Summary Judgment Decision
  at 12–15.
       Nor do we find the district court’s ruling in the Novem-
  ber 7th Order clarifying the scope of its alternate ground in
  the Summary Judgment Decision to be in error. Appellees
  provided evidence that Oyster based its infringement alle-
  gations in the Fujitsu litigation on compliance with a
  standard that encompasses the category of 100G/400G LN
  Modulators and 100G/400G Integrated Coherent Receivers
  comprising the Fujitsu modulators and receivers contained
  in Appellees’ accused products. See Complaint, Oyster Op-
  tics, LLC v. Fujitsu Network Comms., Inc., No. 2:16-cv-
  01299-JRG (E.D. Tex. Nov. 23, 2016), ECF No. 1 at 3–7,
  J.A. 2215–19. Oyster has not rebutted this showing with,
  for example, evidence of any differences between the model
  numbers recited in the prior Fujitsu litigation and those
  model numbers used in Appellees’ products.
                           CONCLUSION
     For the foregoing reasons, we affirm the Summary
  Judgment Decision.
                           AFFIRMED
                              COSTS
      No costs.
