United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ATEN INTERNATIONAL CO., LTD.,
`Plaintiff-Appellant
`
`v.
`
`UNICLASS TECHNOLOGY CO., LTD.,
`ELECTRONIC TECHNOLOGY CO., LTD., AIRLINK
`101, PHOEBE MICRO, INC., BROADTECH
`INTERNATIONAL CO., LTD., DBA LINKSKEY,
`BLACK BOX CORPORATION, BLACK BOX
`CORPORATION OF PENNSYLVANIA,
`Defendants-Appellees
`______________________
`
`2018-1606
`______________________
`
`Appeal from the United States District Court for the
`Central District of California in No. 2:15-cv-04424-AG-
`AJW, Judge Andrew J. Guilford.
`______________________
`
`Decided: August 6, 2019
`______________________
`
`LAURENCE M. SANDELL, Mei & Mark LLP, Washington,
`DC, argued for plaintiff-appellant. Also represented by LEI
`MEI.
`
` JOSEPH PIA, Pia Anderson Moss Hoyt, Salt Lake City,
`UT, argued for defendants-appellees. Also represented by
`ROBERT AYCOCK.
`
`

`

`2
`
`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
` ______________________
`
`Before MOORE, WALLACH, and TARANTO, Circuit Judges.
`MOORE, Circuit Judge.
`ATEN International Co., Ltd. (“ATEN”) appeals the
`United States District Court for the Central District of Cal-
`ifornia’s denial of judgment as a matter of law (“JMOL”),
`which declined to overturn the jury’s findings that the as-
`serted claims of U.S. Patent No. 8,589,141 are invalid as
`anticipated under 35 U.S.C. § 102 and not infringed; and
`that the asserted claims of U.S. Patent No. 7,640,289 are
`not infringed. For the reasons discussed below, we reverse
`as to invalidity and affirm as to noninfringement.
`BACKGROUND
`Uniclass Technology Co., Ltd. (“Uniclass”) and ATEN
`are involved in making and selling keyboard-video-mouse
`(“KVM”) switch systems that allow a user to control multi-
`ple computers from a single keyboard, video device, and
`mouse. ATEN sued Uniclass as well as Electronic Technol-
`ogy Co., Ltd.; Airlink 101; Phoebe Micro, Inc.; Broadtech
`International Co., Ltd. d/b/a Linkskey; Black Box Corpora-
`tion; and Black Box Corporation of Pennsylvania (collec-
`tively, the “customer defendants”) alleging, as relevant
`here, infringement of claims 3, 8, and 10 of the ’141 patent
`and claims 1–20 of the ’289 patent. The ’141 patent is di-
`rected to technology for switching between computers that
`share a keyboard, monitor, and mouse through a KVM
`switch, such as a keyboard shortcut. ’141 patent at 2:51–
`61. Claim 3 depends from claims 1 and 2, and claim 8 de-
`pends from claim 1. Independent claim 1 recites:
`1. A method for controlling a resource sharing ap-
`paratus coupling at least one input device to a plu-
`rality of hosts including a first host, the method
`comprising:
`
`

`

`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
`3
`
`connecting the input device to the first
`host;
`while the input device is connected to the
`first host, acquiring a first input signal
`from the input device and determining
`whether the first input signal comprises a
`standby indication of a switch command
`and wherein the standby indication is for
`indicating that connection between the in-
`put device and the first host can be
`changed; and
`in response to a determination that the
`first input signal comprises the standby in-
`dication, disconnecting the input device
`from the first host without connecting the
`input device to any other host and starting
`emulating the input device to the first host;
`and
`acquiring a second input signal from the in-
`put device, wherein the second input signal
`is not transferred to the hosts when it is in-
`putted to the resource sharing apparatus.
`The ’289 patent is directed to technology for stringing
`together several KVM switches. ’289 patent at 2:1–6. It
`provides that each KVM switch can detect whether it is a
`master or slave by, for example, detecting whether the port
`used to connect other KVM switches is occupied. Id. at 4:1–
`4. Independent claim 1 recites:
`1. A computer switch comprising:
`a set of peripheral device ports for connect-
`ing to a set of peripheral devices;
`a first port;
`a second port;
`
`

`

`4
`
`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
`a control device coupled to the first port and
`the second port, the control device repeat-
`edly detecting whether the first port is oc-
`cupied to repeatedly determine a master or
`slave status of the computer switch,
`wherein
`if the first port is occupied, the control de-
`vice determines the computer switch to be
`a slave and provides data to a first external
`computer switch connected to the first port,
`and
`if the first port is unoccupied, the control
`device determines the computer switch to
`be a master and controls a second external
`computer switch connected to the second
`port and obtains data from the second ex-
`ternal computer switch; and
`a plurality of computer connection ports
`coupled to the control device for connecting
`to and controlling a plurality of computers,
`wherein the plurality of computers are con-
`trolled by the set of peripheral devices if the
`computer switch is determined to be a mas-
`ter, and are controlled by the first external
`computer switch connected to the first port
`if the computer switch is determined to be
`a slave.
`At trial, the jury found that Uniclass did not infringe
`the asserted claims of the ’141 or ’289 patents. It also found
`the asserted claims of the ’141 patent were invalid as an-
`ticipated without specifying which reference was the basis
`for its finding. ATEN moved for JMOL, which the district
`court denied in the aspects relevant to this appeal.
`ATEN timely appealed. We have jurisdiction under 28
`U.S.C. § 1295(a)(1).
`
`

`

`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
`5
`
`DISCUSSION
`We review denials of JMOL under the law of the re-
`gional circuit. TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356,
`1362 (Fed. Cir. 2017). The Ninth Circuit reviews a denial
`of JMOL de novo. Harper v. City of Los Angeles, 533 F.3d
`1010, 1021 (9th Cir. 2008). JMOL is proper when the evi-
`dence permits only one reasonable conclusion which is con-
`trary to the jury’s verdict, but the jury’s verdict must be
`upheld if it is supported by substantial evidence. Id. An-
`ticipation and infringement are questions of fact that we
`review for substantial evidence. Cordis Corp. v. Bos. Sci.
`Corp., 561 F.3d 1319, 1330, 1335 (Fed. Cir. 2009). Whether
`a reference is prior art is a question of law based on under-
`lying factual questions. TypeRight Keyboard Corp. v. Mi-
`crosoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004).
`Whether a reference is publicly accessible is a question of
`fact. In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011).
`I
`At trial, Uniclass asserted anticipation of the claims of
`the ’141 patent based on two references (1) CS-1762, an
`earlier product by ATEN, and/or its user manual; and (2)
`Great Britain Patent No. 2,352,540 (“GB ’540”). The jury
`found that the asserted claims of the ’141 patent were in-
`valid as anticipated, but there was no special verdict indi-
`cating whether one or both references formed the basis for
`the jury’s decision. J.A. 9769. The district court denied
`ATEN’s JMOL motion, upholding the jury’s finding of an-
`ticipation based on the first theory, that the CS-1762 refer-
`ence anticipated the asserted claims. It did not address the
`second theory. Because the jury’s verdict of anticipation
`was not supported by substantial record evidence as to ei-
`ther reference, we reverse the denial of JMOL on anticipa-
`tion.
`
`

`

`6
`
`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
`A
`To establish that an asserted reference is prior art un-
`der § 102(b), the patent challenger must prove, by clear and
`convincing evidence, that it predates the critical date. Ma-
`hurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir.
`1996).
`The undisputed critical date for the ’141 patent is July
`24, 2006—one year prior to its filing date. J.A. 4; J.A. 24;
`J.A. 9302–9303 at 176:24–177:3.
` Uniclass’ expert
`Mr. Dezmelyk relied on his testing of a 2009 CS-1762 spec-
`imen to meet certain limitations of claim 1 of the ’141 pa-
`tent. Uniclass argues the 2009 specimen qualifies as prior
`art because it uses firmware that was released in 2006 be-
`fore the critical date of the ’141 patent. See Appellee’s Br.
`20. But Mr. Dezmelyk testified merely that the firmware
`dated to 2006, without specifying a day or month. J.A.
`9313 at 14–17 (“I then looked on the wayback machine to
`find when that firmware update came out and the last time
`it was changed, and that was in 2006. So this firmware is
`prior art firmware operating on this, the test hardware.”).
`To establish that the CS-1762 qualifies as prior art,
`Uniclass was required to prove by clear and convincing ev-
`idence that the firmware existed prior to July 24, 2006.
`Merely establishing that the firmware existed in the same
`year as the critical date is insufficient. This deficiency was
`highlighted on cross-examination:
`Q. Yes or no, you did not testify to a particular
`month in 2006?
`A. No, I don’t believe I mentioned that in my testi-
`mony.
`Q. And you did not testify to a specific date in 2006?
`A. I don’t believe I testified to a particular day ei-
`ther.
`
`

`

`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
`7
`
`J.A. 9338 at 18–22. Mr. Dezmelyk did not provide any ad-
`ditional date-related information, and Uniclass did not con-
`duct re-direct examination on this issue.
`With a critical date of July 24, 2006, testimony that the
`firmware running on the CS-1762 device existed in 2006
`alone is not enough to support the jury’s finding that the
`firmware pre-dated the critical date and thus qualifies as
`prior art. We hold that the district court erred in denying
`JMOL because substantial evidence does not support the
`jury’s finding of anticipation based on the CS-1762 device.
`B
`A finding of anticipation requires clear and convincing
`evidence that “each and every element is found within a
`single prior art reference, arranged as claimed.” Summit 6,
`LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1294 (Fed. Cir.
`2015). Testimony concerning anticipation must typically
`“explain in detail how each claim element is disclosed in
`the prior art reference. The testimony is insufficient if it is
`merely conclusory.” Schumer v. Lab. Comput. Sys., Inc.,
`308 F.3d 1304, 1315–16 (Fed. Cir. 2002).
`The jury verdict of anticipation cannot be upheld with
`regard to the GB ’540 reference. The asserted claims of the
`’141 patent require “emulating the input device to the first
`host.” Uniclass’ expert Mr. Dezmelyk testified about the
`emulation described in GB ’540 in the context of other as-
`serted patents and claim limitations. J.A. 9296 at 170:10–
`20 (regarding “emulating the console devices according to the
`industry standard”); J.A. 9301–9302 at 175:20–176:6 (de-
`scribing that the reference “has USB device emulators in it”);
`J.A. 9285–9286 at 159:16–160:18 (describing the “USB host
`emulator”). But Uniclass offered no testimony explaining
`how this emulation described in GB ’540 meets claim 1’s
`requirement of “emulating . . . to the first host.” We also
`cannot identify any place in the three pages of GB ’540 pro-
`vided in the joint appendix that would support Uniclass’
`theory that GB ’540 discloses this limitation. J.A. 9789;
`
`

`

`8
`
`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
`J.A. 9790; J.A. 9793. We see no record evidence that GB
`’540 discloses “emulating the input device to the first host.”
`To the extent that the jury finding of anticipation was
`based on the GB ’540 reference, that finding lacks substan-
`tial evidence in this record.
`The district court erred in its denial of JMOL because
`the jury’s finding of anticipation was not supported by sub-
`stantial evidence as to either reference.
`II
`On appeal, ATEN challenges the district court’s denial
`of JMOL as to infringement of the ’141 and ’289 patents.
`ATEN argued in its motion for JMOL that the evidence
`compels a finding of infringement, but the jury was con-
`fused due to Uniclass’ expert Mr. Dezmelyk’s testimony on
`the scope of the claim terms. E.g., J.A. 8–12; J.A. 7937–
`7938. The district court denied the motion, holding ATEN
`waived any right to contest Mr. Dezmelyk’s claim construc-
`tion testimony because it failed “to raise concerns regard-
`ing the proper construction of claim terms at trial itself.”
`J.A. 10.
`The record below indicates that Mr. Dezmelyk offered
`trial testimony regarding the construction of the terms
`“disconnecting” and “connecting” in the ’141 patent. At the
`claim construction stage, the district court gave the term
`“disconnecting the input device from the first host without
`connecting the input device to any other host and starting
`emulating the input device to the first host” its plain and
`ordinary meaning. ATEN did not object, nor did it proffer
`a different construction. In fact, it was ATEN who urged
`the court to adopt the plain and ordinary meaning. At trial,
`Mr. Dezmelyk opined that the accused devices “never con-
`nect the input device to the host computer” based on his
`interpretation of the plain and ordinary meaning of the
`term “connected” as requiring a direct communication
`pathway. J.A. 9237 at 15–16; see also J.A. 9240 at 16–18;
`J.A. 9241 at 15–21. To inform his interpretation, Mr.
`
`

`

`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
`9
`
`Dezmelyk testified about the import of the prosecution his-
`tory. J.A. 9242 at 13–23 (“I look at the prosecution history
`to understand what ATEN . . . was telling the patent office
`. . . . In this case one of the statements they made to the
`examiner was the applicant’s invention . . . has a funda-
`mental difference in comparison to the teaching of [a refer-
`ence] with regard to the concepts of connected and
`disconnected between the input device and the host de-
`vices.”). According to ATEN, this expert was testifying as
`to the proper claim construction to be given to these terms.
`The record also indicates that Mr. Dezmelyk offered
`trial testimony regarding the meaning of “detecting
`whether the first port is occupied” in the ’289 patent.
`Mr. Dezmelyk opined that he believed “the ordinary mean-
`ing of the phrase, that is what an engineer would think
`when they read this patent, what was meant by that
`phrase when he says detecting the first port is occupied, is
`detecting if a cable was plugged into the port.” J.A. 9223
`at 1–5; see also J.A. 9223 at 17–18; J.A. 9221 at 20–24. To
`inform his interpretation, Mr. Dezmelyk again referred to
`the prosecution history. J.A. 9228 at 7–12 (“[T]he con-
`nector is occupied in the [reference], but notice there is no
`discussion of messages . . . . In fact, . . . the [reference] does
`meet the messages test. So it has to be a determination
`based on the connector itself actually having a plug in it.”);
`see also J.A. 9226 at 13–14.
`Mr. Dezmelyk’s testimony on both patents amounts to
`claim construction testimony before the jury. ATEN did
`not object to any of this testimony during the trial, nor did
`ATEN move for the district court to resolve these claim con-
`struction disputes. The only objection to the expert’s testi-
`mony came after the close of evidence when ATEN orally
`moved for a “post-testifying Daubert on Mr. Dezmelyk’s
`testimony on invalidity with respect to anything that
`
`

`

`10
`
`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
`required an ATEN claim construction.”1 J.A. 9357–9358 at
`231:23–232:1 (italics added). ATEN now argues its objec-
`tion regarding invalidity should be broadened to apply to
`claim construction for infringement purposes. We do not
`agree. Even if ATEN’s oral motion was timely, we agree
`with the district court that ATEN did not object to
`Mr. Dezmelyk’s claim construction testimony with respect
`to infringement. J.A. 9–10. By failing to object, ATEN has
`waived any challenge to the jury’s finding of infringement
`based on this testimony.
`It is beyond dispute that claim construction issues are
`to be decided by the court. It is thus improper for an expert
`witness to testify before the jury regarding claim construc-
`tion. CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d
`1168, 1172 (Fed. Cir. 2005). In CytoLogix, the parties
`agreed to present expert witness testimony regarding
`claim construction to the jury and counsel argued conflict-
`ing claim constructions to the jury. Id. We noted the dis-
`trict court should have refused to allow such testimony,
`despite the agreement of the parties, because the risk of
`confusing the jury was high. Id. But here, as in CytoLogix,
`“there is no ground for reversal since there was no objection
`to the expert testimony as to claim construction.” Id. at
`1173. We do not fault the district court here for allowing
`claim construction to go to the jury. It is the parties’ obli-
`gation to raise a dispute regarding the proper scope of
`claims to the court. O2 Micro Int’l Ltd. v. Beyond Innova-
`tion Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“When
`the parties present a fundamental dispute regarding the
`
`
`1 ATEN also filed a motion for JMOL on the final day
`of trial that briefly discussed the term “occupied” of the ’289
`patent. J.A. 7937. ATEN did not raise this issue at the
`hearing. J.A. 10–11. We agree with the district court that
`ATEN failed to preserve its claim construction challenge
`via this motion. J.A. 11.
`
`

`

`ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY
`CO., LTD.
`
`11
`
`scope of a claim term, it is the court’s duty to resolve it.”).
`We therefore affirm the district court’s denial of JMOL as
`to noninfringement.
`
`CONCLUSION
`For the reasons discussed above, we reverse as to inva-
`lidity and affirm as to noninfringement. Because we affirm
`as to noninfringement, we need not reach lost profits.
`AFFIRMED-IN-PART, REVERSED-IN-PART
`COSTS
`
`No costs.
`
`