Spex Technologies, Inc. v. Western Digital Corporation

S
Case: 20-1283    Document: 71     Page: 1   Filed: 05/28/2021




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                  ______________________

             SPEX TECHNOLOGIES, INC.,
                  Plaintiff-Appellant

                             v.

  WESTERN DIGITAL CORPORATION, WESTERN
   DIGITAL TECHNOLOGIES, INC., HGST, INC.,
              Defendants-Appellees
             ______________________

                        2020-1283
                  ______________________

    Appeal from the United States District Court for the
 Central District of California in No. 8:16-cv-01799-JVS-
 AGR, Judge James V. Selna.
                  ______________________

                  Decided: May 28, 2021
                  ______________________

     MARC AARON FENSTER, Russ August & Kabat, Los An-
 geles, CA, argued for plaintiff-appellant. Also represented
 by PAUL ANTHONY KROEGER, BENJAMIN T. WANG.

    FRANK P. COTE, Gibson, Dunn & Crutcher LLP, Irvine,
 CA, argued for defendants-appellees. Also represented by
 JESSICA A. HUDAK, WILLIAM C. ROOKLIDGE.
                 ______________________
Case: 20-1283     Document: 71     Page: 2    Filed: 05/28/2021




 2                                SPEX TECHNOLOGIES, INC. v.
                               WESTERN DIGITAL CORPORATION


     Before REYNA, CLEVENGER, and STOLL, Circuit Judges.
 CLEVENGER, Circuit Judge.
      SPEX Technologies, Inc. (“SPEX”) charged Western
 Digital Corporation, Western Digital Technologies, Inc.,
 and HGST, Inc. (collectively “Western Digital”) with in-
 fringing claims 1, 2, 6, 7, 11, 12, 23, and 25 of U.S. Patent
 No. 6,088,802 (“the ’802 Patent”). 1 In its claim construction
 order, the United States District Court for the Central Dis-
 trict of California held that claims 6, 7, 23, and 25 were
 indefinite because the specification failed to provide corre-
 sponding structure for a means-plus-function limitation.
 SPEX Techs., Inc. v. Kingston Tech. Corp., No. 8:16-cv-
 01799-JVS-AGR, 

2017 WL 5495149

, at *15–17 (C.D. Cal.
 Oct. 18, 2017). In a separate decision, the district court
 granted Western Digital’s motion for summary judgment
 of noninfringement of claims 1–2 and 11–12 because SPEX
 failed to identify an equivalent infringing structure in
 Western Digital’s accused products. SPEX Tech., Inc. v. W.
 Digital Corp., No. 8:16-cv-01799-JVS-AGR, 

2019 WL
8194736

, at *5–6 (C.D. Cal. Nov. 22, 2019). For the reasons
 set forth below, we affirm the district court’s grant of sum-
 mary judgment of noninfringement but reverse and re-
 mand the district court’s holding of indefiniteness.
                               I
     The ’802 Patent, entitled “Peripheral Device With In-
 tegrated Security Functionality,” discloses a peripheral de-
 vice, such as a portable hard drive, that is designed to
 perform security operations on data transmitted to a host
 computing device (i.e. computer) or from the host compu-
 ting device to the peripheral device. The peripheral device
 operates outside of the host computing device and includes
 security (e.g., encryption) and target (e.g., memory)


      1  SPEX had originally included claims 38 and 39 but
 those are not at issue in this appeal.
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 SPEX TECHNOLOGIES, INC. v.                                3
 WESTERN DIGITAL CORPORATION


 elements within it. The peripheral device may also take on
 various identities, for example a target functionality, so
 that the computer can interact with the device as though it
 were just a memory device without recognizing the security
 functionality.
     Claim 1 of the ’802 Patent recites a “means for mediat-
 ing” limitation and reads as follows:
    1. A peripheral device, comprising:
    security means for enabling one or more security
       operations to be performed on data;
    target means for enabling a defined interaction
       with a host computing device;
    means for enabling communication between the se-
      curity means and the target means;
    means for enabling communication with a host
      computing device;
    means for operably connecting the security means
      and/or the target means to the host computing
      device in response to an instruction from the
      host computing device; and
    means for mediating communication of data be-
      tween the host computing device and the target
      means so that the communicated data must first
      pass through the security means.
 ’802 Patent, 18:54–19:4 (emphasis added to highlight lan-
 guage of particular significance to the issues on appeal).
 Independent claim 11 is similar for the relevant issue and
 claims 2 and 12 depend from claims 1 and 11, respectively.
     Claim 6 recites the same limitations as claim 1, but in-
 stead of the “means for mediating” limitation, it includes a
 “means for providing” limitation and reads as follows:
    6. A peripheral device, comprising:
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 4                                 SPEX TECHNOLOGIES, INC. v.
                                WESTERN DIGITAL CORPORATION


     . . . . ; and
     means for providing to a host computing device, in
       response to a request from the host computing de-
       vice for information regarding the type of the pe-
       ripheral device, information regarding the
       function of the target means.
 

Id. at 19:15

–33 (emphasis added to highlight language of
 particular significance to the issues on appeal). Independ-
 ent claim 23 is similar for the relevant issue and claims 7
 and 25 depend from claims 6 and 23, respectively.
     The district court held in its claim construction order
 that the “means for mediating” limitation in claim 1 and
 the “means for providing” limitation in claim 6 invoke 35
 U.S.C. § 112, ¶ 6. SPEX Tech., 

2017 WL 5495149

, at *13–
 17. With respect to the “means for mediating” limitation,
 the district court construed the function as “mediating com-
 munication of data between the host computing device and
 the target means so that the communicated data must first
 pass through the security means” and the corresponding
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 SPEX TECHNOLOGIES, INC. v.                                  5
 WESTERN DIGITAL CORPORATION


 structure as “Interface control device 910 (as shown in Fig.
 9B).” 

Id. at *15

. Figure 9B is shown below:




 ’802 patent, Fig. 9B. In Figure 9B, “the host computing de-
 vice communicates via a PCMCIA interface and the target
 functionality is embodied by a compact flash memory de-
 vice.” 

Id. at 17:18

–21. According to the district court’s con-
 struction, “Figure 9B is dedicated to setting out
 components of an exemplary interface control device 910
 and that device’s relationship to surrounding interfaces,”
 which include the PCMCIA, compact flash, and crypto pro-
 cessor interfaces. SPEX Tech., 

2017 WL 5495149

, at *14.
 Neither party disputes the district court’s construction
 with respect to this limitation.
    The parties also agreed that the function for the
 “means for providing” limitation is “providing to a host
 computing device in response to a request from the host
 computing device for information regarding the type of the
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 6                                SPEX TECHNOLOGIES, INC. v.
                               WESTERN DIGITAL CORPORATION


 peripheral device, information regarding the function of
 the target means,” and SPEX identified memory section
 612a in the peripheral device as the corresponding struc-
 ture. 

Id. at *15

. But the district court ultimately found that
 the term was indefinite under 35 U.S.C. § 112, ¶ 2 because
 the specification “does not provide that the memory section
 612a stores information about the function of the target
 means, let alone provides information about the function of
 the target means in response to a request from the host
 computing device.” 

Id. at *17

. The district court considered
 SPEX’s argument that U.S. Patent No. 6,003,135 (“the ’135
 patent”) was incorporated by reference into the ’802 pa-
 tent’s specification and also provided sufficient correspond-
 ing structure for the limitation, but ultimately rejected
 that argument finding that the ’135 patent was not
 properly incorporated. However, the district court noted
 that the ’135 patent sufficiently linked memory section
 612a to the function of storing target module identification
 data.
      After the district court entered its Markman ruling,
 Western Digital moved for summary judgment of nonin-
 fringement of claims 1–2 and 11–12 on the basis that SPEX
 failed to identify an overall equivalent structure in West-
 ern Digital’s accused products that met the “means for me-
 diating” limitation. The district court agreed, holding that
 no reasonable jury could find that Western Digital’s ac-
 cused products infringed because SPEX could not point to
 a single equivalent structure that met interface control de-
 vice 910, and instead selected various individual compo-
 nents spread out in the accused products’ interfaces that
 corresponded to other individual components in interface
 control device 910.
    SPEX timely appealed. We have jurisdiction under 28
 U.S.C. § 1295(a)(1).
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 SPEX TECHNOLOGIES, INC. v.                                   7
 WESTERN DIGITAL CORPORATION


                               II
     We review summary judgment decisions under the law
 of the regional circuit, which in this case is the Ninth Cir-
 cuit. Momenta Pharms., Inc. v. Teva Pharms. USA Inc., 

809
F.3d 610

, 614 (Fed. Cir. 2015). The Ninth Circuit reviews
 the district court’s grant of summary judgment de novo.
 Blight v. City of Manteca, 

944 F.3d 1061

, 1065–66 (9th Cir.
 2019). The district court’s decision will be upheld when the
 non-moving party fails to present evidence of a genuine dis-
 pute of material fact. Nissan Fire & Marine Ins. Co. v. Fritz
 Cos., 

210 F.3d 1099

, 1103 (9th Cir. 2000).
     The issue of whether an accused device infringes under
 § 112, ¶ 6 as an equivalent is a question of fact. On appeals
 from grants of summary judgment of noninfringement, “we
 determine whether, after resolving reasonable factual in-
 ferences in favor of the patentee, the district court correctly
 concluded that no reasonable jury could find infringement.”
 Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc., 

731
F.3d 1271

, 1275–76 (Fed. Cir. 2013). “The district court
 may find the absence of an equivalent where no reasonable
 jury could have found that the accused device has an equiv-
 alent to the disclosed structure.” Frank’s Casing Crew &
 Rental Tools, Inc. v. Weatherford Int’l, Inc., 

389 F.3d 1370

,
 1378 (Fed. Cir. 2004) (internal quotations omitted).
     On issues of claim construction, we review the district
 court’s claim construction de novo, with factual findings
 based on extrinsic evidence reviewed for substantial evi-
 dence. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 

574
U.S. 318

, 331–33 (2015). Once we determine whether
 § 112, ¶ 6 is invoked, we also review a determination that
 the claim complies with the definiteness requirement un-
 der § 112, ¶ 2 de novo. Noah Sys., Inc. v. Intuit Inc., 

675
F.3d 1302

, 1311 (Fed. Cir. 2012).
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 8                                 SPEX TECHNOLOGIES, INC. v.
                                WESTERN DIGITAL CORPORATION


                               III
      There are two issues on this appeal: whether the dis-
 trict court properly found (1) that there was no genuine dis-
 pute of material fact that the accused products did not
 infringe the “means for mediating” limitation, and (2) that
 the “means for providing” limitation is indefinite because
 the ’802 patent’s specification lacks sufficient disclosure
 clearly linking memory section 612a to the claimed func-
 tion. We address each in turn.
                               A
      According to SPEX, the district court erred because
 there was a genuine dispute as to whether Western Digi-
 tal’s accused products literally infringed the “means for
 mediating” limitation as equivalents under § 112, ¶ 6 or
 infringed under the doctrine of equivalents. We disagree
 with SPEX on both theories. As the district court correctly
 found, SPEX failed to raise a genuine dispute that any of
 the accused products had an equivalent overall structure
 to interface control device 910.
      Literal infringement of § 112, ¶ 6 requires that the “rel-
 evant structure in the accused device perform the identical
 function recited in the claim and be identical or equivalent
 to the corresponding structure in the specification.” Odet-
 ics, Inc. v. Storage Tech. Corp., 

185 F.3d 1259

, 1267 (Fed.
 Cir. 1999). The assertedly equivalent structure must also
 perform the same function in substantially the same way
 to achieve substantially the same result. 

Id. at 1268

. The
 doctrine of equivalents standard is similar but requires
 that the function, way, and result are substantially similar.
 

Id. at 1267

. “Because the ‘way’ and ‘result’ prongs are the
 same under both the section 112, paragraph 6 and doctrine
 of equivalents tests, a structure failing the section 112, par-
 agraph 6 test under either or both prongs must fail the doc-
 trine of equivalents test for the same reason(s).” Kemco
 Sales, Inc. v. Control Papers Co., 

208 F.3d 1352

, 1364 (Fed.
 Cir. 2000).
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 SPEX TECHNOLOGIES, INC. v.                                9
 WESTERN DIGITAL CORPORATION


     SPEX failed to provide any genuine dispute that the
 accused products have an equivalent overall structure to
 interface control device 910. Dr. Rhyne, SPEX’s expert,
 simply provided a component-by-component analysis for
 each accused product in which he identified a few physi-
 cally separate elements throughout the accused products’
 complex integrated circuit, and then compared each of
 those individual components with its allegedly equivalent
 component in interface control device 910. For instance, in
 the Gannett system-on-a-chip (“SoC”), which is present in
 at least one of the accused products, Dr. Rhyne identified
 components that corresponded to the PCMCIA interface
 and identified other separate components that corre-
 sponded to the Compact Flash Interface in interface control
 device 910. See J.A. 3190–92, ¶¶ 104–110; see also J.A
 3217–21, ¶¶ 236–249. 2 Yet, he never identified an equiva-
 lent overall structure; instead, he stated that he “pick[ed]
 out specific hardware elements within the Gannet SoC ra-
 ther than the whole thing.” J.A. 2350 at 13:21–24. “The in-
 dividual components, if any, of an overall structure that
 corresponds to the claimed function are not claim limita-
 tions. Rather, the claim limitation is the overall structure
 corresponding to the claimed function.” Odetics, 

185 F.3d
at 1268

. Thus, his approach to infringement fails to raise
 any genuine dispute that would allow a reasonable jury to
 conclude the accused products have an equivalent overall
 structure.
     Dr. Rhyne further failed to explain how the accused
 products perform the claimed function in substantially the
 same way to achieve substantially the same result, or why
 the differences between the accused products and interface




     2    Citations to “J.A. ___” refer to the joint appendix
 filed by the parties to this appeal.
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 10                                SPEX TECHNOLOGIES, INC. v.
                                WESTERN DIGITAL CORPORATION


 control device 910 were insubstantial. 3 “The proper test
 [for determining whether an accused product meets the
 means-plus-function limitation] is whether the differences
 between the structure in the accused device and any dis-
 closed in the specification are insubstantial.” Chiuminatta
 Concrete Concepts, Inc. v. Cardinal Indus., Inc., 

145 F.3d
1303

, 1309 (Fed. Cir. 1998). For the same reasons above,
 SPEX also fails to present a genuine dispute under its doc-
 trine of equivalents theory because it could not identify an
 overall equivalent structure or explain why the differences
 in the structures were insubstantial. See Chiuminatta, 

145
F.3d at 1310

 (“[A] finding of a lack of literal infringement
 for lack of equivalent structure under a means-plus-func-
 tion limitation may preclude a finding of equivalence under
 the doctrine of equivalents.”).
      SPEX’s attorney-annotated diagrams attempt to rem-
 edy the flaw in Dr. Rhyne’s testimony by drawing a box
 around the components it believes form the overall equiva-
 lent structure in the accused products. However, this is un-
 availing as this characterization of the overall equivalent
 structure is unsupported by Dr. Rhyne’s testimony. It also
 fails to account for any of the differences between the ac-
 cused products’ interfaces and interface control device 910
 or explain why those differences are insubstantial.
    SPEX cites to Odetics as support for Dr. Rhyne’s com-
 ponent-by-component analysis, but SPEX misinterprets


      3    The integrated circuits in the accused products con-
 tain intervening components between the relevant compo-
 nents that are not in interface control device 910. Dr.
 Rhyne did not address these intervening components in his
 equivalence analysis. See Enfish, LLC v. Microsoft Corp.,
 

822 F.3d 1327

, 1346 (Fed. Cir. 2016) (finding that accused
 products are not equivalent under § 112, ¶ 6 because plain-
 tiff failed to explain how differences between accused prod-
 uct and claims were insubstantial).
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 SPEX TECHNOLOGIES, INC. v.                                  11
 WESTERN DIGITAL CORPORATION


 Odetics. In Odetics, the expert had first clearly identified
 an equivalent overall structure and only then did the ex-
 pert look to particular components in order to explain why
 any differences between the equivalent accused product
 and the claims were insubstantial. 

185 F.3d at 1269

–70.
 Indeed, Odetics rejected an isolated component-by-compo-
 nent analysis that pays no regard to an equivalent overall
 structure. 

Id. at 1268

 (“The component-by-component anal-
 ysis used by the district court finds no support in the law.”).
 For these reasons, we affirm the district court’s grant of
 summary judgment of noninfringement.
                               B
     We now turn to the district court’s indefiniteness de-
 termination. SPEX argues that the ’802 patent sufficiently
 links memory section 612a as the corresponding structure
 to the recited function in the “means for providing” limita-
 tion. In the alternative, SPEX contends that if the ’802 pa-
 tent does not recite sufficient structure, then the ’135
 patent, which is alleged to be properly incorporated by ref-
 erence, provides the necessary structure. However, we do
 not reach the issue of whether the ’135 patent was properly
 incorporated as we hold that the ’802 patent sufficiently
 links memory section 612a to the function recited in the
 “means for providing” limitation.
     A structure qualifies as “corresponding structure” if the
 specification clearly links the structure to the claimed func-
 tion. Noah Sys., Inc., 

675 F.3d at 1311

. In order to deter-
 mine whether the specification adequately links a
 structure that corresponds to the claimed function, we
 must look at the disclosure from the perspective of a person
 of ordinary skill in the art. “Under 35 U.S.C. § 112 ¶ 2 and
 ¶ 6, a means-plus-function clause is indefinite if a person
 of ordinary skill in the art would be unable to recognize the
 structure in the specification and associate it with the cor-
 responding function in the claim.” AllVoice Computing PLC
 v. Nuance Commc’ns, Inc., 

504 F.3d 1236

, 1241 (Fed. Cir.
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 12                                SPEX TECHNOLOGIES, INC. v.
                                WESTERN DIGITAL CORPORATION


 2007). Thus, from the perspective of a person of ordinary
 skill in the art, the ’802 patent’s specification must clearly
 link memory section 612a to the claimed function of (1)
 providing to the host computing device information regard-
 ing the function of the target means in response to (2) a
 request from the host computing device for information re-
 garding the type of peripheral device. In other words,
 memory section 612a must both store data regarding the
 target functionality and provide that data to a host compu-
 ting device when the host computing device requests infor-
 mation regarding the type of peripheral device it is
 connected to. The ’802 patent’s specification clearly dis-
 closes this as discussed below.
      First, it is clear that memory section 612a is used to
 store information regarding the target functionality. The
 specification teaches that memory section 612a stores data
 referred to as “peripheral device identification data.” ’802
 patent, 8:9–14. The peripheral device “can take a variety of
 identities,” 

id. at 7:43,

 and can “assume[] the identity of the
 target functionality,” which “enables the host computing
 device 601 to interact with the peripheral device 602 as
 though the peripheral device 602 were a device of the type
 of the target functionality . . . ,” 

id. at 8:15

–24. The host
 computing device is able to “identify the type of a periph-
 eral device” that it is connected to by “access[ing] a known
 memory section of a memory device of the peripheral de-
 vice” referenced as memory section 612a. 

Id. at 7:62

–8:14.
 Therefore, the specification links memory section 612a be-
 cause that component is responsible for storing identifica-
 tion data that the host computing device accesses, and one
 type of identity that the host computing device accesses is
 the target functionality data. This is further supported by
 SPEX’s expert, Mr. Gomez, who provided the only cited ex-
 pert testimony and stated that “[a] person having ordinary
 skill in the art would understand ‘peripheral device identi-
 fication data’ to be information identifying the functional-
 ity of the ‘target means.’” J.A. 983, ¶ 69.
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 SPEX TECHNOLOGIES, INC. v.                                  13
 WESTERN DIGITAL CORPORATION


      Second, it is clear that memory section 612a provides
 the target functionality identity to the host computer when
 the host computer requests information about the identity
 of the peripheral device. As discussed previously, “the host
 computing device can identify the type of peripheral de-
 vice” by accessing memory section 612a via “an interface
 standard developed for that type of peripheral device.” ’802
 patent, 8:1–8. One such standard is PCMCIA. Mr. Gomez
 testified that “in protocols such as PCMCIA . . . the com-
 puter asks a connected device to identify itself.” J.A. 983–
 984, ¶ 70. He further testified that “[m]emory section 612a
 provides this information by making information about the
 target means available to the computer.” 

Id.

 Western Dig-
 ital does not reference any rebuttal expert testimony or dis-
 pute Mr. Gomez’s conclusion as to this portion of the recited
 function. And the portion of the ’802 patent specification
 referenced by Mr. Gomez for this aspect of the claimed
 function is virtually identical to the disclosure in the ’135
 patent’s specification, which Western Digital references as
 an example of sufficient disclosure. 4 Compare ’802 patent,
 7:62–8:14 with ’135 patent, 10:26–49.
     Here, there is a clear footprint in the specification link-
 ing memory section 612a to the claimed function, and un-
 rebutted persuasive testimony from the vantage point of a
 person of ordinary skill further supporting the sufficiency



     4   Western Digital contrasts the ’135 patent’s specifi-
 cation with that of the ’802 patent to highlight the alleged
 deficiencies in the ’802 patent. It asserts that the ’135 pa-
 tent properly links corresponding structure to the recited
 function, but none of the cited disclosures unique to the
 ’135 patent relate to the function of providing the target
 functionality information in response to a request from a
 host computing device. Yet Western Digital does not ap-
 pear to take issue with the ’135 patent’s disclosure linking
 the structure to this function.
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 14                               SPEX TECHNOLOGIES, INC. v.
                               WESTERN DIGITAL CORPORATION


 of the disclosure. See AllVoice, 

504 F.3d at 1246

 (holding
 that the specification contained sufficient structure be-
 cause the plaintiff’s expert provided “the only assessment”
 on record of the specification’s adequacy and the record
 contained no contradictory evidence). For these reasons, we
 reverse the district court’s finding that the “means for
 providing” limitation is indefinite and remand the case for
 the district court to proceed in a manner consistent with
 this opinion.
                             IV
     For the reasons discussed above, the judgment of the
 district court regarding summary judgment of noninfringe-
 ment is affirmed, and the judgment regarding indefinite-
 ness is reversed and remanded for further proceedings
 consistent with this opinion.
   AFFIRMED-IN-PART, REVERSED-IN-PART AND
                 REMANDED
                           COSTS
 No costs.

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