                      NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit
                                      2007-1577

                  SOUTHWESTERN BELL TELEPHONE COMPANY,
                (formerly known as Southwestern Bell Telephone, L.P.),

                                                      Plaintiff-Appellee,

                                           v.

                             ARTHUR A. COLLINS, INC.,

                                                      Defendant-Appellant.

       Adam V. Floyd, Vinson & Elkins L.L.P., of Austin, Texas, argued for plaintiff-
appellee. With him on the brief were Willem G. Schuurman, Sandra G. Rodriquez,
H. Kenneth Prol, and Matthew S. Wermager.

       George C. Summerfield, Jr., Stadheim & Grear, Ltd., of Chicago, Illinois, argued
for defendant-appellant. With him on the brief were Joseph A. Grear, Rolf O. Stadheim,
Keith A. Vogt, and Steven R. Pedersen.

Appealed from: United States District Court for the Northern District of Texas

Judge Jane J. Boyle
                      NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                        2007-1577

                  SOUTHWESTERN BELL TELEPHONE COMPANY,
                (formerly known as Southwestern Bell Telephone, L.P.),

                                                 Plaintiff-Appellee,

                                            v.

                              ARTHUR A. COLLINS, INC.,

                                                 Defendant-Appellant.


Appeal from the United States District Court for the Northern District of Texas in case
no. 3:04-CV-0669, Judge Jane J. Boyle.

                           __________________________

                           DECIDED: May 27, 2008
                           __________________________


Before GAJARSA, Circuit Judge, CLEVENGER, Senior Circuit Judge, and MOORE,
Circuit Judge.

MOORE, Circuit Judge.

      Arthur A. Collins, Inc. (Collins) appeals on a multitude of grounds the judgment

entered by the United States District Court for the Northern District of Texas. We affirm-

in-part, vacate-in-part, and remand.

                                       BACKGROUND

      Southwestern Bell Telephone Company (Southwestern Bell) filed for a

declaratory judgment of noninfringement and invalidity of the claims of Collins’s U.S.

Patents Nos. 4,797,589 (’589 patent) and 4,701,907 (’907 patent).                  Collins

counterclaimed, asserting infringement and seeking damages and injunctive relief. In
November 2005, the district court ruled that the claim term “means for measuring,”

which is a limitation included in every claim of the ’907 patent, could not be construed.

In view of this ruling, Collins later stipulated to the invalidity of the ’907 patent claims for

indefiniteness, subject to its right to appeal the construction. On September 26, 2006,

the court granted Southwestern Bell’s motion for summary judgment that all the claims

of the ’589 patent were not literally infringed by Southwestern Bell’s network because it

lacked a “control store.” On November 2, 2006, the court ruled on summary judgment

that claims 4-14 of the ’589 patent were invalid for improper reexamination amendment.

The district court resolved Collins’s remaining ’589 patent infringement claims during

pretrial proceedings, when it ruled as a matter of law that Collins could not demonstrate

the presence of the “randomly receive” limitation, either literally or by equivalents.

Southwestern Bell dismissed its remaining claims without prejudice, the district court

entered judgment, and this appeal followed.

                                        DISCUSSION

       We review a grant of summary judgment without deference to the district court.

See Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401 F.3d 1367, 1370

(Fed. Cir. 2005) (citations omitted). We review claim construction de novo on appeal.

Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). We also

review a judgment on prosecution history estoppel de novo on appeal. Wang Lab., Inc.

v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1577 (Fed. Cir. 1997).

       Collins appeals: (1) the judgment that the claims of the ’907 patent are invalid for

indefiniteness; (2) the grant of summary judgment that claims 4-14 of the ’589 patent

are invalid for improper reexamination amendment; (3) the grant of summary judgment




2007-1577                                      2
of no literal infringement of claims 1-14 of the ’589 patent for lack of a “control store”; (4)

the claim construction of the “randomly” terms in the ’589 patent claims; (5) the

judgment that the “randomly receive” limitation in the ’589 patent claims is not literally

present in the accused combination; and (6) the judgment that prosecution history

estoppel applies to exclude Collins from offering evidence of equivalents of certain claim

limitations for claims 1-3 of the ’589 patent. We consider each issue in turn. 1

                                   I.     The ’907 Patent

       We agree with the district court that the term “means for measuring,” which is a

limitation included in every claim of the ’907 patent, cannot be construed 2 because

there is no clear link or association between (1) the “means for measuring” claim

language and (2) any corresponding structure in the specification. Collins has a duty to

link the claimed function of measuring the timing adjustment interval to a structure in the

specification as the price for being allowed to express the claim as a means-plus-

function claim under 35 U.S.C. § 112, ¶ 6. Budde v. Harley-Davidson, Inc., 250 F.3d

1369, 1377 (Fed. Cir. 2001); Med. Instrumentation & Diagnostics Corp. v. Elekta AB,

344 F.3d 1205, 1211 (Fed. Cir. 2003). Collins identifies the “variable modulus counter”

as the structure for accomplishing the means for measuring. The “variable modulus

counter” “controls the value of the modulus used in the digital switch connection with the

feedback signal, access control word.” ’907 patent col.8 ll.33-37. But the specification



       1
               We need not address the other claim construction issues that Collins and
Southwestern Bell raise on appeal because our resolution of these six issues disposes
of the entire appeal.
       2
               Two district courts have actually concluded that this very “means for
measuring” limitation was incapable of construction. See also Arthur A. Collins, Inc. v.
Northern Telecom Ltd., No. 98-380-A (E.D. VA May 23, 2005) (claim construction
opinion).


2007-1577                                     3
in no way associates the “variable modulus counter” with the claimed function of

measuring the timing adjustment interval.         See id.     When no structure in the

specification is linked to the function in a means-plus-function claim element, that claim

is indefinite. 35 U.S.C. § 112 ¶ 2. We affirm the district court’s determination that all

claims of the ’907 patent are invalid.

      II.    Claims 4-14 of the ’589 Patent—Reexamination for Improper Purpose

       The district court properly granted summary judgment that claims 4-14 of the

’589 patent are invalid for improper claim amendment under 35 U.S.C. § 305. Under 35

U.S.C. § 305, a patent owner may propose an amendment to its patent to distinguish

the claimed invention from the prior art or to respond to an adverse decision as to the

patentability of one of the claims. Claim amendments during reexamination are limited

to “amendment in light of prior art raising a substantial new question of patentability.” In

re Freeman, 30 F.3d 1459, 1468 (Fed. Cir. 1994). As in Freeman, Collins cannot use

reexamination for the purpose of amending its claims to address an adverse claim

construction. We agree with the district court that Collins “presented no evidence to

contradict its stated purpose for amending the claims of the ’589 patent,” which was “to

preclude any interpretation of the claims in accordance with the district court’s opinions .

. . in the litigation with Nortel.” We therefore affirm the grant of summary judgment that

claims 4-14 of the ’589 patent are invalid.

                  III.   Claims 1-3 of the ’589 Patent—“Control Store”

       We affirm the grant of summary judgment of no literal infringement of claims 1-3

of the ’589 patent because the accused combination lacks a “control store.” The district




2007-1577                                     4
court construed “control store” based upon the context of the claim and the intrinsic

record to mean:

       A control store is included within a single unified DRTST switching unit
       that includes a memory, processor and operating software that determines
       (1) which data circulating on the network loop is to be selected and
       diverted to the TST switch of a given switching node; (2) how that data
       passes through the TST switch; (3) which data is output from the TST
       switch back onto the network loop; (4) which data is to bypass the TST
       switch of that node.
Collins disagrees that at least one control store must perform all four functions, and

argues that the specification “show[s] the use of distributed, multiple control stores.”

Appellant Br. at 20-21.

       In claim 1 of the ’589 patent, “a control store [is] connected to said bypass for

receiving a variable number of dynamically selected channels from the plurality of

channels, one or more of said channels comprising a control channel.” ’589 patent

col.11 ll.35-38 (emphasis added). “[S]aid control store,” meaning the same control store

that is connected to the bypass, must respond to the “commands received through said

control channels” to orchestrate the functions recited in claim 1. Id. col.12 ll.23-35

(emphasis added). While the DRTST may include multiple control stores, as discussed

in the specification and acknowledged by the district court, the claims require that one of

the claimed control stores must be connected to the bypass and receive a control

channel. The claims further require that the same control store connected to the bypass

must also perform the recited functions in response to the received commands. There

is no dispute that under this construction the accused combination does not literally

infringe.   Accordingly, we affirm the grant of summary judgment that the accused

combination does not literally infringe claims 1-3 of the ’589 patent.




2007-1577                                    5
 IV.    Claims 1-3 of the ’589 Patent—Claim Construction of “Randomly Receive” and
                                 “Randomly Transmit”

       We agree with the district court’s construction of the “randomly receive” and

“randomly transmit” limitations, which are found in claim 1 of the ’589 patent and claims

2-3 by virtue of their dependence on claim 1. Claim 1 of the ’589 patent recites, among

other elements, “said inlet ports of said TST switch being connected to randomly

receive channels from said inlet line terminating units, said outlet ports of said TST

switch being connected to randomly transmit channels to said outlet line terminating

units for transferring data from said TST switch to said transmission media.” ’589 patent

col.12 ll.14-23 (emphasis added).      The district court construed the terms “randomly

receive” and “randomly transmit” to:      “refer only to the writing of data into random

positions of a memory, such as Random Access Memory (‘RAM’) and the reading out

from such random position of a RAM, under program control from the control store.”

       Collins argues that the district court’s claim construction erroneously requires

writing data into non-sequential internal memory positions.              Collins’s proposed

construction, in contrast, is that data is “random” if it is in an order different than on the

high speed transmission medium. Appellant Br. at 39; see also Oral Arg. at 12:42-52,

available      at       http://www.cafc.uscourts.gov/oralarguments/mp3/2007-1577.mp3

(“[B]ecause select data is being dropped from the high speed transmission medium, it is

necessarily in an order different than the order in which it was on the high speed

transmission medium, and therefore, it’s randomized.”).

       Using the basic tenets of claim construction, the district court rejected Collins’s

proposed construction, and construed the “randomly” limitations to refer only to the

writing of data into random positions of the inlet memory, i.e., not sequential positions.



2007-1577                                     6
In construing “randomly receive” and “randomly transmit,” the district court considered

the context of the surrounding claim language, which requires that the inlet ports must

be connected to receive channels of data into random locations in its memory. Id.

col.12 ll.14-16.   The district court also considered the specification, which states:

“Another aspect of the present invention allows the order of writing to the inlet data store

and reading the outlet data store in a random order.”         Id. col.3 ll.34-39 (emphasis

added). It continues:

       In accordance with the present invention, data is dynamically written
       randomly into the input memories and dynamically read randomly out from
       the output memories with transfer between the memories taking place via
       the middle space stage. This scheme is contrary to prior TST switches
       where data is written to the inlet memory and read from the outlet memory
       sequentially.

Id. col.5 ll.19-26 (emphasis added). Finally, the specification concludes: “Therefore,

the order of writing to the inlet memory . . . is done in a random order.” Id. col.5 ll.49-51

(emphasis added). In sum, the claim language and the specification confirm the district

court’s construction of “randomly receive” and “randomly transmit” in claim 1 of the ’589

patent.

       V.     Claims 1-3 of the ’589 Patent—The District Court’s Determination of
                 Noninfringement of the “Randomly Receive” Limitation

       Collins asks us to vacate the district court’s pretrial judgment of noninfringement

because the district court did not give Collins proper notice. Appellant Br. at 22. At the

end of the pretrial hearing on July 20, 2007, the district court issued its claim

construction on the “randomly receive” limitation, 3 and asked the parties what issues



       3
             While the court had not previously construed "randomly received," the
parties had presented their respective positions in claim construction in 2005 at the
Markman Hearing in 2005, and in summary judgment briefing in 2006.


2007-1577                                    7
remained for the jury. On July 23, 2007, the district court again asked the parties what

issues remained outstanding, and requested the parties to submit briefing by the end of

that same day on the effect of prosecution history estoppel. 4 The next day (July 24,

2007), in a telephone conference, the district court granted Southwestern Bell’s motion

in limine on prosecution history estoppel and also granted “judgment as a matter of law”

that the “randomly receive” limitation is not literally present in the accused combination,

later issuing its written order on August 1, 2007.

       It is not entirely clear whether the district court’s pretrial order was a judgment as

a matter of law under Federal Rule of Civil Procedure Rule 50, a grant of summary

judgment under Federal Rule of Civil Procedure Rule 56, a grant of the motion in limine,

or some combination thereof. The order, which includes a section entitled “Judgment

as a Matter of Law,” grants the motion in limine to exclude evidence of equivalents, but

also goes on to state that “as a matter of law, the randomly receive claim limitation is

not literally present in the accused device. . . .” Collins argues that the district court

improperly ruled on noninfringement when it resolved the motion in limine on the limited

issue of prosecution history estoppel. We agree. The district court’s judgment “as a

matter of law” that the “randomly receive” limitation was not literally present in the

accused combination was improper.

       The district court’s ruling cannot properly be considered one for judgment as a

matter of law under Rule 50. Rule 50 only applies when a “party has been fully heard

on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to



       4
            Southwestern Bell had previously filed a motion in limine to prevent Collins
from presenting evidence or argument of equivalents due to prosecution history
estoppel.


2007-1577                                    8
find for that party on that issue.” Reeves v. Sanderson Plumbing Prods., 530 U.S. 133,

151 (2000). When the district court granted judgment “as a matter of law,” trial had not

even begun in this case. Collins had not been fully heard on the issue of the literal

presence of the “randomly receive” limitation in the accused combination.

      Prior to trial, Rule 56, which pertains to summary judgment, governs. See Fed.

R. Civ. P. 56. In the Fifth Circuit, Rule 56(c) requires ten days notice to a non-moving

party, even when summary judgment is granted sua sponte. Powell v. United States,

849 F.2d 1576, 1579 (5th Cir. 1988); Fed. R. Civ. P. 56(c) (“The motion must be served

at least 10 days before the day set for the hearing. . . .”). This ten-day requirement is

intended to allow the non-moving party “to make every possible factual and legal

argument.” Id. at 1579. Nonetheless, a district court’s failure to provide a nonmoving

party ten days’ notice may be “harmless if the nonmoving party admits that he has no

additional evidence anyway or [if the] appellate court evaluates all of the nonmoving

party’s additional evidence and finds no genuine issue of material fact.” Powell, 849

F.2d at 1582.

      Collins did not receive ten days to make every possible factual and legal

argument with respect to whether the accused combination literally satisfies the

“randomly receive” limitation in claims 1-3 of the ’589 patent. And in this case, the

district court’s error was not harmless because there is a potential dispute over material

facts. See id. (concluding it was harmful error when party contended there was genuine

issue of material fact but had no opportunity to submit evidence to support the

contention). The district court based its determination that judgment as a matter of law

was appropriate on a single piece of evidence—the deposition of Collins’s expert Dr.




2007-1577                                   9
Wayne Grover.      The district court concluded that Dr. Grover admitted that in the

accused combination, the inlet port was “sequentially receiving [channels].”       Collins

argues that Dr. Grover’s testimony did not pertain to the accused combination, but was

actually in response to questions about the scope of the claims of the ’589 patent. This

is a potential dispute over a genuine issue of material fact regarding Dr. Grover’s

testimony—a dispute that Collins was not afforded time to address. This is precisely the

situation for which the rules regarding adequate notice exist. See Powell, 849 F.2d at

1582. Therefore, we vacate the portion of the judgment that holds that as a matter of

law, the accused combination does not satisfy the “randomly receive” limitation in claims

1-3 of the ’589 patent.

       Collins argues the district court improperly issued its judgment “under the guise

of resolving an in limine motion on the narrow issue of prosecution history estoppel.”

Appellant Br. at 23. But Collins does not appeal the propriety of the district court’s

ability to rule on the motion in limine to exclude equivalents based on prosecution

history estoppel. Collins does not make a “notice” argument regarding the grant of the

motion in limine to exclude evidence of equivalents due to prosecution history estoppel.

See Appellee Br. at 42. And Collins cites no missing evidence regarding a lack of notice

with respect to prosecution history estoppel, in either its appeal or reply brief. Collins

does appeal the merits of the ruling on prosecution history estoppel, which we now

address.

           VI.    Claims 1-3 of the ’589 Patent—Prosecution History Estoppel

       The district court excluded evidence of equivalents with respect to the “randomly

receive” and “randomly transmit” claim limitations added during prosecution and




2007-1577                                  10
included in claims 1-3 of the ’589 patent because prosecution history estoppel bars the

application of the doctrine of equivalents for those limitations. Collins argues that the

“randomly receive” and “randomly transmit” limitations were not added in response to a

prior art rejection and that therefore, the district court erred in concluding that

prosecution history estoppel bars application of the doctrine of equivalents for these

limitations. We disagree. During prosecution of the ’589 patent, the patent examiner

rejected claim 1 as anticipated by one of Collins’s prior patents, U.S. Patent No.

3,925,621 (’621 patent.) Collins amended the claims of the ’589 patent to distinguish

the TST memory configuration of the ’621 patent, in which “input words are written

sequentially into the inlet memory, and read sequentially from the outlet memories.”

’621 patent col.6 ll.14-16 (emphasis added).      With respect to inlet port memories,

Collins narrowed the original language from “said inlet ports connected to receive” to

“said inlet ports of said TST switch being connected to randomly receive.”        Collins

similarly narrowed the claim language relating to the outlet port memories from simply

being connected for “transferring,” to connected to “randomly transmit.”

      Collins’s decision to narrow claims through amendment during prosecution

creates a presumption that bars a finding of equivalents. Festo Corp. v. Shoketsu

Kinzuko Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 734, 740 (2002). Collins has not met

its burden of establishing that the reason for the amendment was unrelated to

patentability. Festo Corp. v. Shoketsu Kinzuko Kogyo Kabushiki Co., Ltd., 493 F.3d

1368, 1377 (Fed. Cir. 2007). Collins’s amendment specifically addressed the prior art

memory configurations found in the ’621 patent.         In response to the examiner’s




2007-1577                                  11
rejection, Collins stated that claim 1 was amended “to more particularly define the

present invention and distinguish over the ’621 reference.”

       Collins argues that the amendments to “randomly receive” and “randomly

transmit” were somehow tangential to the issue of patentability and were merely

intended to “clarify” the claim. This argument lacks merit. An amendment is directly,

and not tangentially, related to patentability when an applicant’s narrowing additions to a

claim along with an applicant’s own statements in the prosecution history indicate that

the amendment was made to distinguish over a reference. We conclude that the district

court correctly determined that prosecution history estoppel bars the application of the

doctrine of equivalents for the “randomly receive” and “randomly transmit” claim

limitations added during prosecution and included in claims 1-3 of the ’589 patent.

                                     CONCLUSION

       For the foregoing reasons, we affirm-in-part, vacate-in-part, and remand for

further proceedings consistent with this opinion.




2007-1577                                   12
