United States Court of Appeals
for the Federal Circuit
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COMMIL USA, LLC,
Plaintiff-Appellee
v.
CISCO SYSTEMS, INC.,
Defendant-Appellant
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2012-1042
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Appeal from the United States District Court for the
Eastern District of Texas in No. 07-CV-0341, Magistrate
Judge Charles Everingham.
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Decided: December 28, 2015
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RICHARD A. SAYLES, Sayles Werbner, P.C., Dallas, TX,
for plaintiff-appellee. Also represented by MARK S.
WERBNER, MARK STRACHAN, DARREN PATRICK NICHOLSON;
LESLIE V. PAYNE, Conley Rose, P.C., Houston, TX;
MIRANDA Y. JONES, Heim, Payne & Chorush, LLP, Hou-
ston, TX.
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, Boston, MA, for defendant-appellant. Also
represented by MARK CHRISTOPHER FLEMING, ERIC
FLETCHER; JONATHAN W. ANDRON, FELICIA H. ELLSWORTH,
2 COMMIL USA v. CISCO SYSTEMS
New York, NY; WILLIAM G. MCELWAIN, FRANCESCO
VALENTINI, SETH P. WAXMAN, Washington, DC; JEFFREY
ERIC OSTROW, HARRISON J. FRAHN IV, PATRICK E. KING,
JONATHAN SANDERS, Simpson Thacher & Bartlett LLP,
Palo Alto, CA; HENRY B. GUTMAN, New York, NY.
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Before PROST, Chief Judge, NEWMAN and O’MALLEY,
Circuit Judges.
PROST, Chief Judge.
This case returns to us on remand from the Supreme
Court. See Commil USA, LLC v. Cisco Sys., Inc., 135 S.
Ct. 1920 (2015). While our previous opinion had remand-
ed this case to the district court for a new trial, Commil
USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372 (Fed.
Cir. 2013), when we received the case back from the
Supreme Court we granted Cisco’s request to retain the
case and address Cisco’s remaining non-infringement
arguments which we had declined to address in our
previous opinion. ECF No. 101. We now conclude that
substantial evidence does not support the jury’s finding
that Cisco’s devices, when used, perform the “running”
step of the asserted claims. The district court’s judgment
is therefore reversed. 1
I
Because much of the relevant background is set forth
in our previous opinion, we summarize only briefly here
the facts and posture of this case.
1 We do not disturb, and therefore reinstate from
our original decision, everything other than (i) the portion
affected by the Supreme Court’s decision, Section II(B),
and (ii) our direction that the case be remanded for a new
trial.
COMMIL USA v. CISCO SYSTEMS 3
Commil owns U.S. Patent No. 6,430,395 (“’395 pa-
tent”), which relates to a method of providing faster and
more reliable handoffs of mobile devices from one base
station to another as a mobile device moves throughout a
network area. In 2007, Commil brought this action
against Cisco, which makes and sells wireless networking
equipment. In a first jury trial, Commil alleged that
Cisco directly infringed the ’395 patent by making and
using networking equipment, and also that Cisco induced
its customers to infringe by selling them the infringing
equipment. The jury concluded that Commil’s patent was
valid, that Cisco was liable for direct but not induced
infringement, and awarded $3.7 million in damages.
Commil then filed a motion for a new trial on induced
infringement and damages, which the district court
granted. The second jury concluded that Cisco was liable
for induced infringement and awarded $63.7 million in
damages.
Cisco thereafter appealed to us, raising a number of
issues. A split panel affirmed in part, vacated in part,
and remanded for a new trial. Commil, 720 F.3d at 1361.
Because we were remanding for a new trial, we did not
reach certain of Cisco’s arguments on non-infringement
and damages. Id. at 1372. Following that decision,
Commil sought certiorari on the limited question of
whether a defendant’s belief that a patent is invalid is a
defense to induced infringement. The Supreme Court
granted certiorari, reversed the majority’s decision on
that issue, and vacated and remanded back to us.
Upon return to this court, Cisco requested that we
address its non-infringement arguments that a majority
of this panel previously had declined to decide. Specifical-
ly, Cisco contends that Commil cannot prevail on its
infringement charges because neither Cisco nor its cus-
tomers directly infringe by performing both method steps.
4 COMMIL USA v. CISCO SYSTEMS
We granted Cisco’s request, and now address those argu-
ments. We review the jury’s determinations of infringe-
ment for substantial evidence. ACCO Brands, Inc. v. ABA
Locks Mfrs. Co., 501 F.3d 1307, 1311 (Fed. Cir. 2007).
II
Claim 1, the sole independent claim of the ’395 patent,
contains two steps: a “dividing” step and a “running” step.
Specifically, Claim 1 reads:
In a wireless communication system comprising at
least two Base Stations, at least one Switch in
communication with the Base Stations, a method
of communicating between mobile units and the
Base Stations comprising:
dividing a short-range communication protocol in-
to a low-level protocol for performing tasks that
require accurate time synchronization and a high-
level protocol which does not require accurate
time synchronization; and
for each connection of a mobile unit with a Base
Station, running an instance of the low-level pro-
tocol at the Base Station connected with the mo-
bile unit and running an instance of the high-level
protocol at the Switch.
’395 patent col. 39 ll. 16-29.
We begin with the running step. 2 The district court
construed the running step as requiring “for each connec-
tion of a mobile unit with a Base Station, running at the
Base Station a copy of the low-level protocol supporting
only that connection and running at the Switch a corre-
2 Because we find the running step is not performed
by either Cisco or its customers, we need not reach the
party’s additional arguments on the dividing step.
COMMIL USA v. CISCO SYSTEMS 5
sponding separate copy of the high level protocol support-
ing only that connection.” J.A. 2 (emphasis added). Cisco
contends that this step is never performed when its
system is used, because its system employs a single copy
of the protocol to support all the connected devices.
We agree with Cisco. First, Cisco’s engineer testified
that Cisco’s system runs only one copy of the protocol to
support multiple connected mobile devices. Specifically,
he testified that Cisco’s system “needs and uses only one
copy of the protocol to support all 2,000 of those mobile
devices . . . . The standard was written in a fashion that
only one copy of the protocol is necessary to implement
the standard.” J.A. 6268.
Although Commil sought to establish otherwise
through expert testimony, that testimony falls far short of
supporting the jury verdict here. Specifically, Commil’s
expert testified that, at most, Cisco’s devices track sepa-
rate state information for each connected device. He
opined that: “[T]he instructions, the protocol . . . it’s a
state machine. So this communication state that it is
invoking in that communication represents a copy of the
protocol that’s unique to that one device that it’s com-
municating with.” J.A. 6176; see also id. (“[A]ll of that
information, with regard to that state that it’s using for
the communication, is its own copy of the protocol that’s
unique to that one communication path . . . . ”). But
tracking separate state information for each device does
not provide substantial evidence to satisfy a limitation
that requires running a separate protocol copy for each
device. Moreover, when pressed, Commil’s expert conced-
ed that Cisco’s system supports multiple connected devic-
es at the same time, but only runs one copy of the protocol
at any one time. J.A. 6204, 6018. In light of this testimo-
ny, a reasonable jury could not have found that Cisco’s
6 COMMIL USA v. CISCO SYSTEMS
devices run a separate copy of the protocol for each con-
nected device.
Nor is the jury’s verdict supported by Commil’s addi-
tional contentions. Commil argues that overturning the
verdict requires reading a “simultaneity requirement”
into the claims that is not there. Not so. In finding for
Cisco, we do not require simultaneity; rather, we simply
adhere to the construction of the district court, which
requires a separate copy of the protocol to be run for each
connected device. Commil also contends that discarding
its expert’s testimony about state information requires
improperly presuming that “protocol” and “information”
are mutually exclusive. But in making this argument, it
is Commil who departs from the governing constructions
in this case. Specifically, the district court construed
“short-range communication protocol” to mean “a set of
procedures required to initiate and maintain short-range
communication between two or more devices.” J.A. 1. In
all of Commil’s expert testimony, nowhere does Commil’s
expert provide evidence or reasonable support for his
opinion that tracking separate state information for each
device is the same as running, for each connected device,
a separate “set of procedures required to initiate and
maintain short-range communication between two or
more devices.”
Because we find none of Commil’s other arguments
persuasive, we conclude that substantial evidence does
not support the jury’s necessary finding that Cisco’s
devices, when used, perform the “running” step of the
claims. Because this conclusion precludes liability under
either of Commil’s direct or inducement theories, we
reverse the judgment of the district court.
REVERSED