Spex Technologies, Inc. v. Apricorn

Case: 20-2210 Document: 73 Page: 1 Filed: 10/14/2022

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

SPEX TECHNOLOGIES, INC.,
Plaintiff-Appellant

v.

APRICORN,
Defendant-Cross-Appellant
______________________

2020-2210, 2020-2253
______________________

Appeals from the United States District Court for the
Central District of California in No. 2:16-cv-07349-JVS-
AGR, Judge James V. Selna.
______________________

Decided: October 14, 2022
______________________

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

OLIVER RICHARDS, Fish & Richardson P.C., San Diego,
CA, argued for defendant-cross-appellant. Also repre-
sented by DAVID M. HOFFMAN, Austin, TX.
______________________
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2 SPEX TECHNOLOGIES, INC. v. APRICORN

Before MOORE, Chief Judge, DYK and PROST, Circuit
Judges.
PROST, Circuit Judge.
SPEX Technologies, Inc. (“SPEX”) sued Apricorn in the
U.S. District Court for the Central District of California for
infringing U.S. Patent No. 6,088,802 (“the ’802 patent”).
During claim construction, the district court held that
claims 6, 7, 23, and 25 of the ’802 patent were invalid as
indefinite. SPEX thereafter tried claims 11 and 12 to a
jury, and the jury found that Apricorn infringed those
claims. After the verdict, Apricorn moved for judgment as
a matter of law (“JMOL”) that it did not infringe. SPEX
opposed; it also argued that if the district court were to
grant the motion, it should at least give SPEX a new trial.
But the district court granted JMOL of noninfringement
and denied SPEX’s request for a new trial.
SPEX appeals the noninfringement JMOL, new-trial
denial, and indefiniteness ruling. Apricorn conditionally
cross-appeals. We affirm the noninfringement JMOL and
new-trial denial, reverse the indefiniteness ruling, dismiss
Apricorn’s conditional cross-appeal as moot, and remand
for proceedings consistent with this opinion.
BACKGROUND
I
The ’802 patent concerns a “single integral peripheral
device” that can perform (1) “security operations” on data
stored in (or provided by or to) a “host computing device”
and (2) a “defined interaction” with the host computing de-
vice, such as providing functionality like data storage, data
communication, or user identification—what the patent
calls “target functionality.” See ’802 patent col. 3 ll. 17–36,
col. 4 l. 49–col. 5 l. 4. In plain terms, the ’802 patent’s pe-
ripheral device can perform security operations and an-
other function—all in one device.
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SPEX TECHNOLOGIES, INC. v. APRICORN 3

As relevant here, the ’802 patent’s peripheral device
can perform security operations “in-line”—i.e., “between
the communication of data to or from the host computing
device and the performance of the target functionality.” Id.
at col. 6 ll. 2–7; accord id. at Abstract. An “interface control
device” ensures that data communicated between the host
computing device and the target functionality undergoes
security operations as appropriate.
Claim 11 contains a “means for mediating” element re-
lating to this in-line concept (emphasis added):
11. 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; 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.
II
A
During claim construction, the parties and district
court agreed that the “means for mediating” element was a
means-plus-function element subject to 35 U.S.C. § 112
¶ 6, 1 which allows expressing a claim element as a “means

1 Congress has redesignated § 112 ¶¶ 2 and 6 as, re-
spectively, § 112(b) and (f). See Leahy-Smith America
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4 SPEX TECHNOLOGIES, INC. v. APRICORN

or step for performing a specified function” but limits the
claim’s coverage to “the corresponding structure, material,
or acts described in the specification and equivalents
thereof.” Everyone also agreed that the function was “me-
diating communication of data between the host computing
device and the target means so that the communicated
data must first pass through the security means.” See
SPEX Techs., Inc. v. Kingston Tech. Corp., No. SACV 16-
01790, 2017 WL 5495149, at *13 (C.D. Cal. Oct. 18, 2017)
(“Claim Construction Order”).
The parties disagreed, however, as to whether the ’802
patent disclosed sufficient corresponding structure for per-
forming that function. Apricorn argued that the patent
failed to do so, rendering claim 11 (and its dependent claim
12) invalid as indefinite under § 112 ¶ 2. SPEX maintained
that the interface control device 910 as shown in Figure 9B
of the ’802 patent (“ICD 910”) supplied sufficient corre-
sponding structure. Figure 9B is reproduced below:

Invents Act (“AIA”), Pub. L. No. 112-29, sec. 4(c), 125 Stat.
284, 296 (2011). The pre-AIA designations apply to the ’802
patent, so this opinion refers to those.
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SPEX TECHNOLOGIES, INC. v. APRICORN 5

The district court agreed with SPEX that ICD 910 was
a corresponding structure with disclosure sufficient to sur-
vive Apricorn’s indefiniteness challenge. In making this
determination, the court relied heavily on a passage of the
specification concerning the “configuration registers” of
ICD 910. That passage states:
[ICD] 910 includes sets of configuration registers
911. The data stored in the configuration registers
911 establish operating characteristics of the
[ICD]: in particular, the content of the configuration
registers enables the [ICD] to present to the host
computing device a desired identification of the pe-
ripheral device[] and determines whether data
passing through the peripheral device must be sub-
jected to security operations.
A set of configuration registers is maintained for
the host computing device I/O interface, the cryp-
tographic processing device interface, and the tar-
get functionality interface.
’802 patent col. 17 ll. 25–36 (emphasis added). Aside from
Figure 9B, the district court cited this passage—and only
this passage—in rejecting Apricorn’s argument that ICD
910 had insufficient structural disclosure. Claim Construc-
tion Order, 2017 WL 5495149, at *15 (“Given the specific
details provided in this disclosure, [Apricorn has] not
proven by clear and convincing evidence that the structure
of [ICD 910] is inadequately disclosed by the patent speci-
fication.”).
The district court accordingly construed the “means for
mediating” element as a means-plus-function element sub-
ject to § 112 ¶ 6—the function being “mediating communi-
cation of data between the host computing device and the
target means so that the communicated data must first
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6 SPEX TECHNOLOGIES, INC. v. APRICORN

pass through the security means,” and the corresponding
structure being ICD 910. Id. 2
B
SPEX tried claims 11 and 12 to a jury. As to the “means
for mediating” element specifically, the district court in-
structed the jury consistent with its claim construction,
setting forth both the function and the corresponding struc-
ture—i.e., ICD 910. J.A. 11276. As to infringement of
means-plus-function elements generally, the court in-
structed the jury:
If you find that at least one of Apricorn’s accused
products [has] structure that performs the claimed
function, you must then determine whether that
structure is the same as or equivalent to the struc-
ture I have identified in the specification. If they
are the same or equivalent, the means-plus-func-
tion requirement is satisfied by that structure of
the accused products.
In order to prove that a structure in the accused
products is equivalent to the structure in the ’802
[p]atent, SPEX must show structure in the accused
device performs the claimed function in substan-
tially the same way to achieve substantially the
same result. The individual components, if any, of
an overall structure that corresponds to the
claimed function are not claim limitations. Rather,
the claim limitation is the overall structure

2 Separately, the district court determined that the
“means for providing” element in claims 6, 7, 23, and 25
was indefinite. Claim Construction Order, 2017 WL
5495149, at *15–17. We discuss this issue briefly in
Part III of the Discussion section.
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SPEX TECHNOLOGIES, INC. v. APRICORN 7

corresponding to the claimed function. Further de-
construction or parsing is incorrect.
J.A. 11279–80. Apricorn did not request a jury instruction
identifying configuration registers as necessary for in-
fringement—nor did it object to the given jury instructions
for lacking that explicit requirement.
After the jury found that Apricorn infringed claims 11
and 12, Apricorn moved under Rule 50(b) for JMOL of non-
infringement, which the district court granted. Apricorn
argued that the configuration registers of ICD 910 were
“indispensable” to that structure’s functioning and that, by
failing to show such configuration registers in the accused
products, SPEX failed to prove infringement—i.e., failed to
prove that the accused products included a structure that
performed the relevant function in “substantially the same
way” as ICD 910. The district court, citing precedent from
this court, agreed that the configuration registers were “in-
dispensable” or “central” components of ICD 910, meaning
that SPEX needed to show them (or their equivalent) in the
accused products to prove infringement. SPEX Techs., Inc.
v. Apricorn, No. CV 16-07349, 2020 WL 5491692, at *3–4
(C.D. Cal. Aug. 10, 2020) (“JMOL Order”) (first citing Toro
Co. v. Deere & Co., 355 F.3d 1313, 1324 (Fed. Cir. 2004);
and then citing Solomon Techs., Inc. v. ITC, 524 F.3d 1310,
1317 (Fed. Cir. 2008)). 3 And because the district court con-
cluded that there was no substantial evidence of configura-
tion registers presented at trial, it granted JMOL of

3 In making this determination, the district court in-
corporated and drew from its analysis in another case
where SPEX asserted infringement of the ’802 patent.
JMOL Order, 2020 WL 5491692, at *3 (citing SPEX Techs.
Inc v. Kingston Tech. Corp., No. SACV 16-01790, 2020 WL
4342254 (C.D. Cal. June 16, 2020) (“Kingston SJ Order”)).
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8 SPEX TECHNOLOGIES, INC. v. APRICORN

noninfringement. See JMOL Order, 2020 WL 5491692,
at *3–5.
In its JMOL-related filings, SPEX had also requested
a new trial if the district court were to grant JMOL of non-
infringement. SPEX maintained that because the district
court “did not adopt the construction” that configuration
registers were indispensable “until after trial,” it was “not
afforded the opportunity to present all the evidence regard-
ing configuration registers to the [j]ury.” J.A. 9712 (em-
phasis omitted) (identifying evidence SPEX would have
presented). The district court, however, considered all the
evidence SPEX said it would have presented, and it con-
cluded that such evidence likewise could not have sup-
ported an infringement verdict. JMOL Order, 2020 WL
5491692, at *4–5, *4 n.2. The court therefore denied
SPEX’s request for a new trial.
SPEX timely appealed the noninfringement JMOL,
new-trial denial, and indefiniteness ruling on the “means
for providing” element. Apricorn timely, conditionally
cross-appealed, arguing that if we were to conclude that
SPEX didn’t have to show configuration registers after all,
we should hold claims 11 and 12 invalid as indefinite for
lacking sufficient disclosure of corresponding structure.
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review a district court’s decisions on JMOL and
new-trial motions under regional circuit law. E.g., SSL
Servs., LLC v. Citrix Sys., Inc., 769 F.3d 1073, 1082
(Fed. Cir. 2014). The Ninth Circuit reviews a JMOL grant
de novo, affirming “if the evidence, construed in the light
most favorable to the nonmoving party, permits only one
reasonable conclusion, and that conclusion is contrary to
the jury’s verdict.” Pavao v. Pagay, 307 F.3d 915, 918
(9th Cir. 2002) (also observing that “[a] jury’s verdict must
be upheld if it is supported by substantial evidence”). It
reviews a new-trial denial for abuse of discretion. E.g.,
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SPEX TECHNOLOGIES, INC. v. APRICORN 9

Optronic Techs., Inc. v. Ningbo Sunny Elec. Co., 20 F.4th
466, 476 (9th Cir. 2021).
We review a district court’s indefiniteness determina-
tion de novo and any underlying factual questions for clear
error. Rain Computing, Inc. v. Samsung Elecs. Am., Inc.,
989 F.3d 1002, 1007 (Fed. Cir. 2021).
I
We begin with SPEX’s appeal of the noninfringement
JMOL, a ruling it challenges in three primary ways. First,
SPEX argues that the district court shouldn’t have deemed
configuration registers indispensable to proving the
“means for mediating” element because Apricorn neither
requested—nor objected to the absence of—a claim con-
struction or jury instruction calling out configuration reg-
isters as such. Second, SPEX argues that on the merits,
configuration registers simply shouldn’t be deemed indis-
pensable. And third, SPEX argues that even if it had to
show configuration registers, the trial record contained
enough evidence of them to support the jury’s infringement
verdict. We address these arguments in turn.
A
SPEX initially argues that, because Apricorn didn’t re-
quest a claim construction or jury instruction explicitly re-
quiring configuration registers (or object to the given
instructions’ lack of such a requirement), the district court
improperly required them on JMOL. This argument (and
the one discussed in Part I.B) implicates what it means to
infringe a means-plus-function element having a multi-
component corresponding structure, so we briefly review
the relevant case law on this issue before turning to SPEX’s
particular contentions.
In Odetics, Inc. v. Storage Technology Corp., we reiter-
ated that “a claim limitation written in § 112[] ¶ 6 form,
like all claim limitations, must be met, literally or equiva-
lently, for infringement to lie” and that “such a limitation
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10 SPEX TECHNOLOGIES, INC. v. APRICORN

is literally met by structure, materials, or acts in the ac-
cused device that perform the claimed function in substan-
tially the same way to achieve substantially the same
result.” 185 F.3d 1259, 1268 (Fed. Cir. 1999). And we ex-
plained:
The individual components, if any, of an overall
structure that corresponds to the claimed function
are not claim limitations. Rather, the claim limita-
tion is the overall structure corresponding to the
claimed function. . . . Further deconstruction or
parsing is incorrect.
Id.
Since Odetics, we have instructed that greater weight
may nonetheless be given to components that are “central”
or “indispensable” to the corresponding structure. For ex-
ample, in Toro, the district court on summary judgment
concluded that (1) a claim element’s corresponding struc-
ture included a mechanical cam system and (2) an electri-
cal cam system did not infringe because, although it
seemed to perform an identical function, it failed to do so
in substantially the same way. 355 F.3d at 1323–24. In
particular, the district court concluded that because the al-
legedly infringing device lacked a mechanical cam—an “in-
dispensable” part of the claimed structure—no reasonable
factfinder could find infringement. Id. (cleaned up). On
appeal, the patentee argued that the district court had “im-
permissibly engaged in a component-by-component analy-
sis.” Id. at 1324. We rejected that argument, reasoning
that “the cam was not simply a minor component” of the
corresponding structure; rather, it was an “indispensable”
part of the structure. Id. (cleaned up). Accordingly, “[t]o
the extent the district court gave the cam greater weight in
considering [the corresponding] structure as a whole, this
was appropriate given the cam’s central role.” Id. We ap-
plied the principle again in Solomon, observing that, in as-
sessing infringement of means-plus-function claims, “our
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SPEX TECHNOLOGIES, INC. v. APRICORN 11

case law allows for greater weight to be given to individual
components that play a central role in the identified struc-
ture.” 524 F.3d at 1317–18 (citing Toro, 355 F.3d at 1324)
(affirming a finding that an accused product using rotor
shafts did not infringe a means-plus-function element in
which disks played a central role in the corresponding
structure).
1
Turning now to SPEX’s particular contentions, SPEX
maintains that Apricorn’s failure to request a claim con-
struction or jury instruction explicitly requiring configura-
tion registers (or object to the given instructions’ lack of
such a requirement) precluded the district court from re-
quiring them on JMOL. It’s true that “[w]hen issues of
claim construction have not been properly raised in connec-
tion with the jury instructions, it is improper for the dis-
trict court to adopt a new or more detailed claim
construction in connection with the JMOL motion.”
Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314,
1320 (Fed. Cir. 2003). But the configuration registers’ in-
dispensability is not properly viewed as a claim-construc-
tion issue. It is instead simply a question of
noninfringement: whether the accused product performs
the function in substantially the same way as the corre-
sponding structure. Indeed, the district court’s articulation
of the configuration registers’ indispensability straightfor-
wardly followed from applying the ordinary meaning of the
court’s claim construction in the test for means-plus-func-
tion infringement. And, in granting JMOL of noninfringe-
ment, the district court employed the same analysis we
approved of in Solomon—confirming that the absence of a
central or indispensable component in an accused device
precludes infringement. See 524 F.3d at 1317–18.
Accordingly, we conclude that, under the circum-
stances of this case, the district court’s articulation of the
configuration registers’ indispensability was not an
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12 SPEX TECHNOLOGIES, INC. v. APRICORN

impermissible new construction. It was simply an applica-
tion of the ordinary meaning of the court’s earlier claim
construction.
2
SPEX also argues that the district court erred because
its indispensability analysis on JMOL conflicted with jury
instructions that said: (1) “The individual components, if
any, of an overall structure that corresponds to the claimed
function are not claim limitations. Rather, the claim limi-
tation is the overall structure corresponding to the claimed
function,” and (2) “Further deconstruction or parsing is in-
correct.” Appellant’s Br. 40–41; see J.A. 11279–80.
We disagree that there was a conflict here. The in-
structions SPEX identifies appear to be lifted verbatim
from Odetics. 185 F.3d at 1268 (“The individual compo-
nents, if any, of an overall structure that corresponds to the
claimed function are not claim limitations. Rather, the
claim limitation is the overall structure corresponding to
the claimed function. . . . Further deconstruction or pars-
ing is incorrect.”). And, as we have explained, our case law
has held that the standard in Odetics is consistent with giv-
ing greater weight to components that are “central” or “in-
dispensable” to the corresponding structure. See Toro,
355 F.3d at 1323–24; Solomon, 524 F.3d at 1317–18. We
therefore struggle to see how an analysis that doesn’t con-
flict with Odetics nevertheless conflicts with jury instruc-
tions quoting Odetics.
B
SPEX next argues that, procedural issues aside, on the
merits the district court should not have deemed configu-
ration registers indispensable when assessing infringe-
ment of the “means for mediating” element.
The district court observed that the ’802 patent’s dis-
cussion of ICD 910 “describes just one structural compo-
nent: configuration registers 911,” thus “support[ing] the
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SPEX TECHNOLOGIES, INC. v. APRICORN 13

conclusion that the configuration registers play a central
role in [ICD] 910.” Kingston SJ Order, 2020 WL 4342254,
at *11–12. The court also observed that “one of the key
aspects of the invention disclosed in the ’802 [p]atent is
that it controls the flow of data between the host computing
device and peripheral device in a secure fashion”—and that
“[t]he configuration registers are described in the context
of [ICD] 910 as the way to do so for that embodiment.” Id.
at *12. These observations support the district court’s as-
sessment that performing the claimed function in “sub-
stantially the same way” as ICD 910 required using
configuration registers. See Solomon, 524 F.3d at 1317–18
(looking to a claim’s prosecution history to confirm a trial
tribunal’s decision to treat a component as indispensable
when assessing infringement).
SPEX’s main argument against configuration registers’
indispensability relies on the specification’s description of
various “modes” in which the peripheral device might op-
erate. Those modes include: (1) one in which only the se-
curity functionality is used; (2) one in which both the
security and target functionalities are used; and (3) one in
which only the target functionality is used. Appellant’s
Br. 47–48 (citing ’802 patent col. 10 ll. 13–18). SPEX main-
tains that the configuration registers of ICD 910 are used
to “switch” among these modes. And, it argues, because the
peripheral device of claim 11 is “fixed in one mode of oper-
ation”—i.e., that in which communication of data between
the host computing device and the target means must first
pass through the security means—there is no need for
switching, and thus no reason to deem configuration regis-
ters indispensable (at least as to this claim). Appellant’s
Br. 48.
The district court considered and rejected this argu-
ment. It reasoned that, “in the context of [ICD] 910, the
specification does not describe any other ways of achieving
the ‘mode’ required by [the ‘means for mediating’ element]
other than through the use of configuration registers.”
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14 SPEX TECHNOLOGIES, INC. v. APRICORN

Kingston SJ Order, 2020 WL 4342254, at *12 (emphasis
added). In other words, even if configuration registers
were used for switching among various modes, they are
also the only disclosed way for setting, or “achieving,” a
mode in ICD 910. See Cross-Appellant’s Br. 47 (noting
that, as to ICD 910, the ’802 patent “discloses only a single
way that the device is configured: the configuration regis-
ters”); accord ’802 patent col. 17 ll. 26–33 (“The data stored
in the configuration registers 911 establish operating char-
acteristics of [ICD 910]: in particular, the content of the
configuration registers . . . determines whether data pass-
ing through the peripheral device must be subjected to se-
curity operations.”).
We see no error in the district court’s assessment that,
without configuration registers, substantial evidence could
not support the jury’s verdict that the accused products
performed the claimed function in “substantially the same
way” as ICD 910.
C
SPEX finally argues that, even if it had to show config-
uration registers, the trial record contained enough evi-
dence of them to support the jury’s infringement verdict.
Again we disagree.
Initially, as Apricorn notes (and as SPEX doesn’t dis-
pute), SPEX identifies no instance where its infringement
expert even uttered the phrase “configuration registers.”
While of course not dispositive by itself, it’s hardly an aus-
picious start.
As for the configuration-registers evidence that SPEX
does identify, we view it as insubstantial. For example,
SPEX directs us to a demonstrative that its infringement
expert showed at trial, which quotes a portion of a USB
specification in evidence that says, “Before a USB device’s
function may be used, the device must be configured.”
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SPEX TECHNOLOGIES, INC. v. APRICORN 15

J.A. 9743 (demonstrative) 4; see also J.A. 13743, 14013
(USB specification). SPEX also points to its infringement
expert’s testimony that “both devices need to be configured,
so there’s always configuration information that they can
be programmed with.” J.A. 10672. And it again references
the USB specification, which says that a USB device uses
a “SetConfiguration()” command for configuration.
J.A. 14013.
The district court considered all of these statements,
however, and deemed them insufficient to substantiate the
jury’s infringement verdict. The court reasoned: “[T]estify-
ing that the accused devices perform the function of ‘be[ing]
configured’ is not the same as saying the accused devices
have an equivalent structure to the configuration registers
disclosed in [ICD] 910.” JMOL Order, 2020 WL 5491692,
at *3 (second alteration in original) (emphasis added).
We agree with the district court, and we view SPEX’s
other cited evidence as insufficient to substantiate the
jury’s verdict of infringement (whether literal or under the
doctrine of equivalents) for essentially the same reason.
***
In sum: because the district court did not err on JMOL
in deeming configuration registers indispensable to prov-
ing infringement of the “means for mediating” element,
and because there was no substantial evidence of the

4 To the extent SPEX is independently seeking to
rely on the demonstrative’s heading—“[11d] Both USB and
PCMCIA Use Configuration Registers,” J.A. 9743—even if
we assumed that this constitutes evidence, we do not think
that it qualifies as, or could even contribute to, substantial
evidence that the accused products have the configuration
registers specifically contemplated by the “means for medi-
ating” element.
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16 SPEX TECHNOLOGIES, INC. v. APRICORN

required configuration registers (or their equivalent), we
affirm the JMOL of noninfringement.
II
We turn next to SPEX’s appeal of the new-trial denial.
SPEX argues that, in view of the district court’s indispen-
sability analysis on JMOL, we should order a new trial
“based on the new construction.” Appellant’s Br. 54; id.
at 55 (“At the least, a new trial should have been ordered
in light of the . . . new construction.”). But as we explained,
the district court’s articulation of the configuration regis-
ters’ indispensability was not an impermissible new con-
struction. It was simply an application of the ordinary
meaning of the court’s earlier claim construction. That be-
ing so, this argument does not persuade us that the district
court abused its discretion by denying SPEX a new trial.
SPEX also says that it had additional configuration-
registers evidence it would have presented to the jury had
it understood they were indispensable. Appellant’s
Br. 55–56. But SPEX identified such evidence for the dis-
trict court. And, after considering what SPEX identified,
the court determined that it—like the evidence at trial—
was “insufficient to show that the accused products have
configuration registers as part of the alleged structure cor-
responding to the ‘means for mediating’ claim limitation.”
JMOL Order, 2020 WL 5491692, at *4 (emphasis added).
We see no error in that determination—nor anything else
that would lead us to conclude that the district court
abused its discretion here. Accordingly, we affirm the dis-
trict court’s denial of SPEX’s request for a new trial.
III
We turn now to SPEX’s appeal of the district court’s
indefiniteness determination regarding the “means for
providing” element of claims 6, 7, 23, and 25 of the ’802 pa-
tent.
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SPEX TECHNOLOGIES, INC. v. APRICORN 17

SPEX appealed this very same indefiniteness ruling in
SPEX Technologies, Inc. v. Western Digital Corp., 859 F.
App’x 557 (Fed. Cir. 2021) (“Western Digital”). 5 We re-
versed because we agreed with SPEX that the ’802 patent
“sufficiently links memory section 612a to the function re-
cited in the ‘means for providing’ limitation.” Id. at 562–63.
Apricorn did not have occasion to address our Western
Digital opinion in its briefing, given that the opinion issued
after it filed its principal and response brief. But at oral
argument, it wisely conceded that our analysis and conclu-
sion on this issue in Western Digital control here and ne-
cessitate reversal. Oral Arg. at 20:39–22:10. 6 Therefore,
following Western Digital, we reverse the district court’s
determination that the “means for providing” element of
claims 6, 7, 23, and 25 of the ’802 patent is indefinite and
remand for proceedings consistent with this opinion.
IV
We lastly dispose of Apricorn’s cross-appeal. Apricorn
conditioned its cross-appeal on our concluding that SPEX
didn’t have to show configuration registers (or their equiv-
alent) to prove infringement of the “means for mediating”

5 The same indefiniteness ruling applied across
these two cases because they were consolidated for pre-trial
purposes at the time of the ruling. Indeed, Apricorn and
the defendants in Western Digital made the same indefi-
niteness arguments to the district court, having jointly
filed their claim-construction briefs in advance of the rul-
ing.
6 No. 20-2210, https://oralarguments.cafc.uscourts.
gov/default.aspx?fl=20-2210_05052022.mp3.
Case: 20-2210 Document: 73 Page: 18 Filed: 10/14/2022

18 SPEX TECHNOLOGIES, INC. v. APRICORN

element. Because we’ve concluded otherwise, supra
Part I.B, we dismiss Apricorn’s cross-appeal as moot. 7
CONCLUSION
We have considered the parties’ remaining arguments
but find them unpersuasive. For the foregoing reasons, we
affirm the noninfringement JMOL and new-trial denial, re-
verse the indefiniteness ruling, dismiss Apricorn’s condi-
tional cross-appeal as moot, and remand for proceedings
consistent with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART,
DISMISSED-IN-PART, AND REMANDED
COSTS
No costs.

7 Because we dismiss Apricorn’s cross-appeal as
moot, we likewise deny as moot SPEX’s motion to strike
portions of Apricorn’s reply brief (ECF No. 48).