Case: 18-2338 Document: 73 Page: 1 Filed: 09/24/2020
`United States Court of Appeals
`for the Federal Circuit
`2018-2338, 2018-2339, 2018-2395, 2018-2396
`Appeals from the United States District Court for the
`Eastern District of Texas in Nos. 6:11-cv-00492-RWS, 6:13-
`cv-00072-RWS, Judge Robert Schroeder, III.
`Decided: September 24, 2020
`GREGORY S. DOVEL, Dovel & Luner, LLP, Santa Mon-
`ica, CA, argued for plaintiff-appellant. Also represented by
`LAMKEN, MoloLamken LLP, Washington, DC.
` MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP,
`Washington, DC, argued for defendants-cross-appellants.
`Also represented by OMAR FAROOQ AMIN; HERSH H. MEHTA,
`Morgan, Lewis & Bockius LLP, Chicago, IL; NATALIE A.
`BENNETT, Washington, DC.


`Case: 18-2338 Document: 73 Page: 2 Filed: 09/24/2020
` ANDREW M. MASON, Klarquist Sparkman, LLP, Port-
`land, OR, for amicus curiae T-Mobile USA, Inc. Also rep-
`LLP, Chicago, IL.
`Before PROST, Chief Judge, NEWMAN and BRYSON,
`Circuit Judges.
`PROST, Chief Judge.
`Network-1 Technologies, Inc. (“Network-1”) appeals a
`final judgment of the United States District Court for the
`Eastern District of Texas. Network-1 sued Hewlett-Pack-
`(“HP”), alleging
`infringement of U.S. Patent
`No. 6,218,930 (“the ’930 patent”). HP argued in response
`that the ’930 patent is invalid, and that HP did not in-
`fringe. The jury found the patent not infringed and invalid.
`Following post-trial motions, the district court denied Net-
`work-1’s request for a new trial on infringement but
`granted Network-1’s motion for judgment as a matter of
`law (“JMOL”) on validity.
`Network-1 appeals the district court’s final judgment
`that HP does not infringe the ’930 patent, arguing the dis-
`trict court erred in its claim construction. HP cross-ap-
`peals the district court’s determination that HP was
`estopped from raising certain validity challenges under
`35 U.S.C. § 315(e)(2) based on HP’s joinder to an inter
`partes review (“IPR”) before the Patent Trial and Appeal
`Board (“Board”). On cross-appeal, HP also argues that
`Network-1 improperly broadened claim 6 of the ’930 patent
`during reexamination.
`For the reasons explained below, we affirm-in-part, re-
`verse-in-part, vacate, and remand. Specifically, as to Net-
`work-1’s appeal, we affirm-in-part and reverse-in-part the
`district court’s claim construction and remand to the dis-
`trict court. As to HP’s cross-appeal, we vacate the district


`Case: 18-2338 Document: 73 Page: 3 Filed: 09/24/2020
`court’s JMOL on validity and remand. And finally, we af-
`firm the district court’s decision with respect to improper
`claim broadening.
`I. The ’930 Patent
`The ’930 patent is titled “Apparatus and Method for Re-
`motely Powering Access Equipment over a 10/100 Switched
`Ethernet Network.” It discloses an apparatus and methods
`for allowing electronic devices to automatically determine
`if remote equipment is capable of accepting remote power
`over Ethernet. See ’930 patent col. 1 ll. 13–17. According
`to the patented method, a “low level current” is delivered
`over a data signaling pair to an access device (also called
`remote equipment or remote access equipment). Id. at
`col. 2 ll. 8–10. After the low level current is sent, a network
`switch senses the resulting “voltage level” on the data sig-
`naling pair. Id. at col. 1 l. 65–col. 2 l. 14. If the device can
`accept remote power, the sensed voltage level will match a
`“preselected condition” of the voltage, such as a particular
`“varying voltage” level. Id. at col. 2 ll. 10–14, col. 3 ll. 2–
`17. Upon detecting the preselected condition, the network
`switch will increase the current from the low level to a
`higher level sufficient to allow the “remote equipment [to]
`become[] active.” Id. at col. 3 ll. 17–22. If the preselected
`condition of the voltage is not detected, the network switch
`will determine that the device cannot accept remote power
`and will not transmit a higher current. Id. at col. 3 ll. 3–
`The ’930 patent issued in April 2001 with 9 claims, in-
`cluding two independent claims: claims 1 and 6. Claim 6
`is representative of the issues on appeal. Claim 6 recites:
`6. Method for remotely powering access equipment
`in a data network, comprising,
`providing a data node adapted for data switching,
`an access device adapted for data transmission, at


`Case: 18-2338 Document: 73 Page: 4 Filed: 09/24/2020
`least one data signaling pair connected between
`the data node and the access device and arranged
`to transmit data therebetween, a main power
`source connected to supply power to the data node,
`and a secondary power source arranged to supply
`power from the data node via said data signaling
`pair to the access device,
`delivering a low level current from said main
`power source to the access device over said data sig-
`naling pair,
`sensing a voltage level on the data signaling pair in
`response to the low level current, and
`controlling power supplied by said secondary
`power source to said access device in response to
`a preselected condition of said voltage level.
`’930 patent claim 6 (emphases added to terms challenged
`on appeal).
`On appeal, Network-1 contends that the district court
`erroneously construed the claim terms “main power
`source” and “low level current.” On cross-appeal, HP con-
`tends that Network-1 improperly broadened the term “sec-
`ondary power source” during reexamination.
`II. The Reexamination Proceedings
`After it issued, and concurrent with the underlying dis-
`trict court action, the ’930 patent was reexamined twice be-
`fore the U.S. Patent and Trademark Office. The first
`reexamination, No. 90/012,401 (“the ’401 reexamination”),
`concluded in October 2014. See J.A. 333–35. It confirmed
`the patentability of claims 6, 8, and 9, and resulted in the
`issuance of claims 10–23. Relevant to HP’s cross-appeal,
`claims 15 and 16 were added depending from original
`claim 6.
`Claim 15 recites: “Method according to claim 6,
`wherein said secondary power source is the same source


`Case: 18-2338 Document: 73 Page: 5 Filed: 09/24/2020
`of power as said main power source.” ’930 patent, Ex Parte
`Reexamination Certificate, col. 1
`ll. 39–41
`Claim 16 recites: “Method according to claim 6,
`wherein said secondary power source is the same physi-
`cal device as the main power source.” Id. at col. 1 ll. 42–44
`(emphasis added).
`The second reexamination, No. 90/013,444, concluded
`in November 2015. It confirmed the patentability of claims
`6 and 8–23. See J.A. 336–37.
`This case has a long and complicated history, which be-
`gan in 2011 when Network-1 sued a number of defendants,
`including HP, for infringement of the ’930 patent in the
`U.S. District Court for the Eastern District of Texas. After
`several stays, the district court finally reached the under-
`lying final judgment in 2018. We discuss the relevant
`background here.
`I. The Avaya IPR
`After Network-1 filed its complaint in the district court,
`another defendant, Avaya Inc. (“Avaya”), petitioned for
`IPR of the ’930 patent. The district court stayed its pro-
`ceedings pending IPR. The Board partially instituted
`Avaya’s petition. See Avaya Inc. v. Network-1 Sec. Sols.,
`Inc., No. IPR2013-00071, Paper 18, 2013 WL 8595554
`(P.T.A.B. May 24, 2013) (“the Avaya IPR”). Specifically,
`the Board instituted review of claims 6 and 9 of the ’930
`patent based on two grounds: (1) anticipation under


`Case: 18-2338 Document: 73 Page: 6 Filed: 09/24/2020
`35 U.S.C. § 102(b) by Matsuno1; and (2) obviousness under
`35 U.S.C. § 103(a) by De Nicolo2 and Matsuno. Id. at *16.
`Following institution, HP, together with other petition-
`ers, filed an IPR petition and motion to join the Avaya IPR.
`HP’s petition included grounds different from those that
`had already been instituted. The Board denied HP’s re-
`quest. HP, with others, thereafter filed a second IPR peti-
`tion and motion to join the Avaya IPR, this time including
`only the grounds already instituted. The Board granted
`HP’s request, and HP was joined as a party to the Avaya
`IPR. At the time that HP filed its second IPR petition,
`more than one year had passed since the district court com-
`plaint had been served, and therefore, HP was time-barred
`under 35 U.S.C. § 315(b) from having its own petition in-
`stituted. But because § 315(b) creates an exception from
`the time bar for joinder under 35 U.S.C. § 315(c), HP was
`nonetheless able to join.
`In its final written decision, the Board held that nei-
`ther claim 6 nor claim 9 was unpatentable over the insti-
`tuted grounds. We affirmed. See Avaya Inc. v. Network-1
`Techs., Inc., 612 F. App’x 613 (Fed. Cir. 2015).
`II. The District Court Action
`After more stays, Network-1 continued its suit in the
`district court. In 2017, the district court issued its con-
`struction of disputed claim terms, including “low level cur-
`rent” and “main power source.” See Network-1 Techs., Inc.
`v. Alcatel-Lucent USA, Inc., ET, No. 6:11-cv-492, Report
`and Recommendation of the Magistrate Judge, D.I. 693,
`at 12 (E.D. Tex. Nov. 4, 2016) (J.A. 24–48); see also Net-
`work-1 Techs., Inc. v. Alcatel-Lucent USA, Inc., ET, No.
`Japanese Unexamined Patent Application Publica-
`tion No. H10-13576, published Jan. 16, 1998 (“Matsuno”).
`2 U.S. Patent No. 6,115,468, filed Mar. 26, 1998,
`issued Sept. 5, 2000 (“De Nicolo”).


`Case: 18-2338 Document: 73 Page: 7 Filed: 09/24/2020
`6:11-cv-492, Order Adopting Report and Recommendation
`of U.S. Magistrate Judge, D.I. 860, at 1, 5–7 (E.D. Tex.
`May 2, 2017) (J.A. 49–68). Together with its claim con-
`struction, in relevant part, the district court denied HP’s
`summary judgment motion that argued claim 6 was imper-
`missibly broadened through the
`’401 reexamination.
`J.A. 40–42, 57–59.
`This case finally proceeded to trial in November 2017.
`At trial, Network-1 argued that HP infringed claims 6, 13,
`14, 17, 20, and 22 of the ’930 patent (“the asserted claims”)
`by selling particular Power over Ethernet (“PoE”) switches.
`HP argued that each of the asserted claims was rendered
`obvious by both public use of “the Fisher system,” which
`was a PoE system developed by David Fisher, and by the
`patents and printed publications referred to as “the Fisher
`patents,”3 Woodmas,4 and Chang.5 See J.A. 78.
`Using a general verdict form, the jury found that HP
`did not infringe any asserted claim of the ’930 patent.
`J.A. 70. The jury also found that HP had shown that all
`asserted claims of the ’930 patent are invalid. J.A. 71.
`Following the jury’s verdict, Network-1 filed, in rele-
`vant part, a motion for a new trial related to infringement,
`and a motion for JMOL and motion for a new trial related
`3 U.S. Patent No. 5,994,998, filed May 29, 1997, is-
`sued Nov. 20, 1999; U.S. Patent No. 6,710,704, filed Oct.
`28, 2002, issued Mar. 23, 2004; International Publication
`No. WO 98/54843, published Dec. 3, 1998 (collectively, “the
`Fisher patents”).
`4 U.S. Patent No. 5,345,592, filed Apr. 8, 1992, is-
`sued Sept. 6, 1994 (“Woodmas”).
`5 U.S. Patent No. 5,991,885, filed June 11, 1997, is-
`sued Nov. 23,
`No. WO 98/57248, published Dec. 17, 1998 (collectively,


`Case: 18-2338 Document: 73 Page: 8 Filed: 09/24/2020
`to validity. The district court denied the motion for a new
`trial on infringement. Applying its construction of the
`claim terms “low level current” and “main power source,”
`the district court concluded that the jury’s verdict was not
`against the great weight of the evidence that HP’s accused
`devices did not meet either limitation. See J.A. 92–97.
`As to the ’930 patent’s validity, however, the district
`court granted Network-1’s motion for JMOL. The district
`court concluded that because of HP’s joinder to the Avaya
`IPR, HP should have been estopped under 35 U.S.C.
`§ 315(e) from raising the remaining obviousness chal-
`lenges, which it determined “reasonably could have been
`raised” in the Avaya IPR. J.A. 91.6 The district court did
`not conditionally rule on HP’s motion for a new trial with
`respect to validity.
`Network-1 appealed. HP cross-appealed. We have ju-
`risdiction under 28 U.S.C. § 1295(a)(1).
`On appeal, Network-1 challenges the district court’s
`denial of a new trial on infringement based on its argument
`that the district court erred in its claim construction.
`On cross-appeal, HP challenges the district court’s
`JMOL on validity, arguing that the district court erred in
`concluding that HP is estopped from raising its obvious-
`ness challenges because it joined the Avaya IPR. HP fur-
`ther challenges the district court’s denial of summary
`6 With respect to the Fisher system, the district
`court concluded that HP failed to show that the Fisher sys-
`tem constitutes prior art. See J.A. 79–87. On cross-appeal,
`HP does not challenge the district court’s conclusion that
`the Fisher system does not constitute prior art. Appellee’s
`Br. 62 n.2.


`Case: 18-2338 Document: 73 Page: 9 Filed: 09/24/2020
`judgment, arguing that the asserted claims of the ’930 pa-
`tent were improperly broadened during reexamination.
`We address these issues in turn.
`I. Claim Construction
`Network-1 argues that the district court incorrectly
`construed the claim terms “low level current” and “main
`power source,” and that this error entitles it to a new trial
`on infringement. HP argues in response that the district
`court’s claim construction should be affirmed, but that even
`if it is not, Network-1 was not prejudiced by the erroneous
`claim construction.
`For the below-described reasons, we conclude that the
`district court correctly construed “low level current” but
`erred in its construction of “main power source,” and as a
`result of that error, Network-1 is entitled to a new trial on
`infringement. We therefore vacate the district court’s judg-
`ment of non-infringement and remand for a new trial to
`determine whether HP infringes the asserted claims based
`on the correct construction of “main power source.”
`We review the district court’s ultimate construction of
`the claim language de novo. Teva Pharms. USA, Inc. v.
`Sandoz, Inc., 574 U.S. 318, 331 (2015). “[W]hen the district
`court reviews only evidence intrinsic to the patent (the pa-
`tent claims and specifications, along with the patent’s pros-
`ecution history), the judge’s determination will amount
`solely to a determination of law, and [we] will review that
`construction de novo.” Id. To the extent that subsidiary
`factfinding is required for claim construction analysis, we
`review such factfinding for clear error. Id. at 332.
`Claim terms “are generally given their ordinary and
`customary meaning,” which is “the meaning that the term
`would have to a person of ordinary skill in the art in ques-
`tion at the time of the invention.” Phillips v. AWH Corp.,


`Case: 18-2338 Document: 73 Page: 10 Filed: 09/24/2020
`415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (internal
`quotation marks and citations omitted). “[T]he claims
`themselves provide substantial guidance as to the meaning
`of particular claim terms” and “the specification is the sin-
`gle best guide to the meaning of a disputed term.” Id.
`at 1314–15 (internal quotation marks and citations omit-
`As the party seeking to disturb the non-infringement
`judgment, Network-1 “must establish that [the challenged
`jury] instructions were legally erroneous, and that the er-
`rors had prejudicial effect.” SSL Servs., LLC v. Citrix Sys.,
`769 F.3d 1073, 1085 (Fed. Cir. 2014) (quoting Ecolab Inc.
`v. Paraclipse, Inc., 285 F.3d 1362, 1373 (Fed. Cir. 2002)).
`“It is well established that when an incorrect jury in-
`struction—such as an incorrect claim construction—re-
`moves from the jury a basis on which the jury could
`reasonably have reached a different verdict, the verdict
`should not stand.” Cardiac Pacemakers, Inc. v. St. Jude
`Med., Inc., 381 F.3d 1371, 1383 (Fed. Cir. 2004); see also
`Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1042
`(Fed. Cir. 2016). An erroneous claim construction on one
`element is harmless “only if a reasonable jury would have
`been required by the evidence to find non-infringement
`even without the error.” Avid, 812 F.3d at 1047.
`The district court construed “low level current” as “a
`non-data-signal current that is sufficient to begin start up
`of the access device but that is not sufficient to sustain the
`start up.” J.A. 35; see also J.A. 53–55. The district court
`explained that it was construing the disputed phrase to
`give meaning to the constituent term “low.” See J.A. 34. It
`stated that while the current must be sufficient to “begin
`start up,” the current need not “cause start up,” and thus
`it construed the term to eliminate “any implication that the
`current must be sufficient to result in a completed start-
`up.” J.A. 34 (citing ’930 patent col. 3 ll. 12–17).


`Case: 18-2338 Document: 73 Page: 11 Filed: 09/24/2020
`On appeal, Network-1 argues that the district court
`erred by construing the phrase “low level current” to have
`a lower bound. Network-1 agrees that, in the context of the
`’930 patent, the phrase “low level current” describes cur-
`rent that cannot “sustain start up” but argues that it was
`error for the district court to additionally require that the
`current be sufficient to begin start up. See Appellant’s
`Br. 27. Relying on extrinsic evidence related to the word
`“low,” including dictionary definitions, grammar refer-
`ences, and claim constructions adopted for unrelated pa-
`tents, Network-1 argues that the term points in one
`direction and should be construed to have a single refer-
`ence point. Network-1 asserts that the correct reference
`point with respect to the ’930 patent is the upper boundary
`requiring that the current not exceed the level needed to
`operate the device. We disagree.
`We conclude that the district court correctly construed
`“low level current.” As an initial matter, there is no dispute
`that the word “low” in the claim phrase “low level current”
`operates to limit the upper boundary of the current level.
`See Appellant’s Br. 26–29; Appellee’s Br. 36–37. Indeed,
`the ’930 patent explicitly describes a low level current with
`an upper boundary that is “unable to sustain start up.” See
`’930 patent col. 3 ll. 14–16; see also id. at col. 3 ll. 2–13. But
`the claim phrase is not limited to the word “low,” and the
`claim construction analysis should not end just because one
`reference point has been identified. To be sure, the claim
`phrase “low level current” does not preclude a lower bound
`by use of the word “low.” Rather, in the same way the
`phrase should be construed to give meaning to the term
`“low,” the phrase must also be construed to give meaning
`to the term “current.”
`The intrinsic record of the ’930 patent confirms that the
`district court correctly construed the phrase to require a
`lower boundary of current. See Phillips, 415 F.3d at 1315.
`Claim 6 recites “delivering a low level current” to an access
`device to detect whether the device can accept remote


`Case: 18-2338 Document: 73 Page: 12 Filed: 09/24/2020
`power. ’930 patent col. 4 ll. 49–67 (emphasis added); see
`also id. at col. 2 ll. 8–14. The express language of the claim
`thus requires that at least some level of current be deliv-
`ered. Even Network-1 admits that the term “current” nec-
`essarily requires some flow of electric charge because “[i]f
`there is no flow, there is no ‘current.’” See Appellant’s Br.
`The specification of the ’930 patent discloses the lower
`boundary of current. It explains that an access device ca-
`pable of accepting remote power will signal a varying volt-
`age level and teaches “[t]he varying level is created by the
`remote power supply beginning to start up but the low cur-
`rent level is unable to sustain the start up.” ’930 patent
`col. 3 ll. 14–16 (emphasis added); see also id. at col. 3 ll. 2–
`13. Thus, consistent with the district court’s construction,
`the ’930 patent teaches that the delivered “low level cur-
`rent” is current that is sufficient to begin start-up.
`Accordingly, we conclude that the district court did not
`err in its construction of “low level current.”
`The district court construed “main power source” as “a
`DC power source,” and thereby excluded AC power sources
`from its construction. J.A. 50–51.7 In reaching its decision,
`the court relied on HP’s expert testimony that a network
`device would either fail to function or would be damaged if
`it received AC power. J.A. 50–51. The court therefore con-
`cluded that embodiments using AC power are inoperable
`and construed “main power source” to exclude such embod-
`iments. J.A. 50–51 (“A construction that renders the
`claimed invention inoperable should be viewed with ex-
`treme skepticism.” (quoting Talbert Fuel Sys. Pats. Co. v.
`“DC” refers to direct current and “AC” refers to al-
`ternating current.


`Case: 18-2338 Document: 73 Page: 13 Filed: 09/24/2020
`Unocal Corp., 275 F.3d 1371, 1376 (Fed. Cir. 2002))); see
`also J.A. 30–31.
`On appeal, Network-1 argues that the claim phrase
`“main power source” should be construed consistent with
`the ordinary meaning of “power source” to include both AC
`and DC power sources. See Appellant’s Br. 46. Network-1
`acknowledges that certain embodiments with AC power
`sources require power from the main power source to be
`converted to DC power before being received by the net-
`work device, but Network-1 argues that nothing in the
`’930 patent precludes such embodiments. To the contrary,
`Network-1 asserts that the intrinsic record supports a con-
`struction that includes both types of power sources. We
`agree and reverse the district court’s construction of main
`power source.
`We conclude that the correct construction of “main
`power source” includes both AC and DC power sources.
`There is no dispute that the ordinary meaning of “power
`source” includes both AC and DC power sources. Appel-
`lant’s Br. 45–49; see Appellee’s Br. 47. And neither the
`claims nor the specification of the ’930 patent require a de-
`parture from this ordinary meaning. Starhome GmbH v.
`AT & T Mobility LLC, 743 F.3d 849, 857 (Fed. Cir. 2014)
`(“In the absence of an express intent to impart a novel
`meaning to claim terms, an inventor’s claim terms take on
`their ordinary meaning.”).
`Claim 6 recites a “main power source” that is “con-
`nected to supply power to the data node” and that “de-
`liver[s] a low level current . . . to the access device.”
`’930 patent col. 4 ll. 56–57, ll. 60–61; see also id. at col. 1
`ll. 64–65, col. 2 ll. 8–9. Nowhere do the claims suggest that
`the “main power source” should be limited to DC power
`The specification likewise never expresses a preference
`for DC power sources, much less a suggestion that DC
`power is an “essential” feature of the main power source.


`Case: 18-2338 Document: 73 Page: 14 Filed: 09/24/2020
`See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d
`1304, 1309–10 (Fed. Cir. 2014). Indeed, far from limiting
`the plain language of the claims to a DC power source, the
`specification states that the power source may be a “con-
`ventional main power supply,” which according to the ordi-
`nary meaning would include both AC and DC power
`sources. ’930 patent col. 2 ll. 52–53. This reading of the
`specification is further confirmed by the ’930 patent’s dis-
`closure of a preferred embodiment, which is shown in Fig-
`ures 1 and 3. See MBO Labs., Inc. v. Becton, Dickinson &
`Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) (“A claim inter-
`pretation that excludes a preferred embodiment from the
`scope of the claim is rarely, if ever, correct.” (internal cita-
`tion omitted)). In Figure 1, power source 16 is identified as
`a “conventional” power supply, and in Figure 3, main power
`supply 70 is specifically depicted as a traditional AC power
`outlet. ’930 patent col. 2 ll. 52–53, Fig. 3.
`Despite the express disclosures of the ’930 patent, the
`district court construed “main power source” to exclude AC
`power sources on the basis of expert testimony that receipt
`of AC power by a network device would render it inopera-
`ble. J.A. 30–31, 50–51. This is error for two reasons. First,
`even though the network device cannot receive AC power,
`the record establishes that “data nodes” or network
`switches were commonly used to convert AC power to DC
`power as needed to power the network device. Indeed, we
`need not look beyond the specification of the ’930 patent.
`In the preferred embodiment, as shown in Figure 1, a data
`node exists between main power source 16 and the remote
`equipment. And in Figure 3, an 8-port switch is shown con-
`nected to the AC power outlet such that the AC power is
`converted to DC power before reaching the network device.
`’930 patent col. 2 l. 29, col. 3 ll. 59–60, Figs. 1 & 3. Even
`HP’s expert Dr. Neikirk explained that Figure 3 illustrates
`“‘the main power supply 70’ receiving power from a typical
`AC wall socket, and in turn suppl[ying] operational power
`via the ‘Main Power Distribution Bus’ to the data


`Case: 18-2338 Document: 73 Page: 15 Filed: 09/24/2020
`switches.” J.A. 1049 ¶ 35. Nothing in the claims of the
`’930 patent precludes the conversion of AC power to DC
`power, and it was error for the district court to add such a
`Second, the district court erred by adding a limitation
`to the claims to carve out certain inoperable embodiments.
`To be sure, we have stated that we skeptically view a con-
`struction that renders all embodiments inoperable, but we
`have instructed that it is nonetheless improper to add lim-
`itations to constructions to exclude only certain inoperable
`embodiments. Cordis Corp. v. Medtronic AVE, Inc.,
`511 F.3d 1157, 1174 (Fed. Cir. 2008). In this case, the dis-
`trict court’s construction not only excluded inoperable em-
`bodiments that do not convert AC to DC power, but also
`excluded operable embodiments, like the preferred embod-
`iment. See MBO Labs., 474 F.3d at 1333.
`Accordingly, we conclude that the district court erred
`in its construction of “main power source.”
`We now consider the effect of the district court’s erro-
`neous construction of “main power source” on the jury’s ver-
`dict of non-infringement. Network-1 argues that if the
`district court erred in its construction of either claim term,
`that error was prejudicial, and it is entitled to a new trial
`on infringement. HP argues in response that to the extent
`either term was misconstrued, such error was harmless
`and the judgment of non-infringement should not be dis-
`turbed. We conclude that Network-1 established that it
`was prejudiced by the district court’s erroneous claim con-
`struction of “main power source” and is entitled to a new
`trial on infringement.
`At trial, HP contested infringement based on the ele-
`ments “low level current” and “main power source.” With
`respect to “main power source,” the record shows that the
`jury was instructed to apply the erroneous construction,


`Case: 18-2338 Document: 73 Page: 16 Filed: 09/24/2020
`that Network-1 elicited testimony showing that the main
`power source for certain HP products originates at an AC
`input, J.A. 2291, 2056, and that HP relied on evidence of
`non-infringement, at least in part, based on the fact that
`these products are not within the scope of the ’930 patent
`because they use an AC input, J.A. 2056–57, 2065–66. The
`jury found that HP did not infringe the asserted claims of
`the ’930 patent. Because the general verdict form does not
`indicate the basis for the jury’s decision, where the evi-
`dence shows that HP relied on the district court’s erroneous
`construction for its argument that it does not infringe the
`asserted claims, we conclude that Network-1 has estab-
`lished that it was prejudiced by the claim construction.
`J.A. 69–70.
`HP argues that the erroneous claim construction was
`harmless because HP presented conclusive evidence that
`no accused product meets the claim limitation “delivering
`a low level current from said main power source.” Appel-
`lee’s Br. 25–26 (emphases in original). More particularly,
`HP argues that the record shows that its products deliver
`detection current from a PoE chip, not an AC or DC power
`source. But HP’s argument relies on an element that is not
`in the claims—namely, that current be delivered directly
`from the main power source to the access device. Indeed,
`the district court expressly rejected HP’s attempt to import
`such a limitation during claim construction. See J.A 39–40.
`And in any case, Network-1 presented evidence at trial
`showing that HP’s products practice this claim limitation.
`See, e.g., J.A. 1790–95, 2480–81, 2724. We therefore reject
`HP’s argument that the non-infringement verdict may be
`affirmed on appeal.
`Accordingly, we affirm the district court’s construction
`of “low level current,” reverse the district court’s construc-
`tion of “main power source,” and remand to the district
`court for proceedings consistent with this opinion.


`Case: 18-2338 Document: 73 Page: 17 Filed: 09/24/2020
`II. Statutory Estoppel
`We now turn to HP’s cross-appeal. HP argues that the
`district court erroneously granted JMOL with respect to
`the ’930 patent’s validity based on its determination that
`HP was estopped under 35 U.S.C. § 315(e) from presenting
`obviousness challenges as a consequence of its joinder to
`the Avaya IPR. We agree that HP is not estopped. We
`therefore vacate the district court’s judgment and remand
`to the district court for proceedings consistent with this
`We review “decisions on motions for JMOL, motions for
`a new trial, and evidentiary rulings under the law of the
`regional circuit.” SSL Servs., 769 F.3d at 1082. The Fifth
`Circuit reviews decisions on motions for JMOL “de novo,
`reapplying the JMOL standard.” Summit 6, LLC v. Sam-
`sung Elecs. Co., 802 F.3d 1283, 1293 (Fed. Cir. 2015) (citing
`Ford v. Cimarron Ins. Co., 230 F.3d 828, 830 (5th Cir.
`2000)). In the Fifth Circuit, a jury verdict may only be re-
`versed by JMOL if substantial evidence does not support
`the verdict. Versata Software, Inc. v. SAP Am., Inc.,
`717 F.3d 1255, 1261 (Fed. Cir. 2013). “Thus, a JMOL may
`only be granted when, ‘viewing the evidence in the light
`most favorable to the verdict, the evidence points so
`strongly and overwhelmingly in favor of one party that the
`court believes that reasonable jurors could not arrive at
`any contrary conclusion.’” Id. (quoting Dresser–Rand Co.
`v. Virtual Automation, Inc., 361 F.3d 831, 838 (5th Cir.
`Following trial, the district court granted Network-1’s
`motion for JMOL on validity of the ’930 patent. The distr

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