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Sycamore IP Holdings LLC v. AT&T Corp.

United States District Court, E.D. Texas, Marshall Division

February 16, 2018

AT&T CORP., et al., Defendants



         In these consolidated infringement actions, Plaintiff Sycamore IP Holdings LLC (“Sycamore”) filed suit against a number of defendants grouped into four cases: Case No. 2:16-cv-588, against AT&T Corp., AT&T Services, Inc., and Teleport Communications America, LLC (collectively, “AT&T”); Case No. 2:16-cv-589, against CenturyLink Communications, LLC, and Qwest Corporation (collectively, “CenturyLink”); Case No. 2:16-cv-590, against Level 3 Communications, LLC (“Level 3”); and Case No. 2:16-cv-591, against Verizon Business Global, LLC, and Verizon Services Corporation (collectively, “Verizon”). On February 15, 2018, the Court was informed that the parties in the Verizon case have entered into a settlement agreement. Accordingly, this order will not address any issues relating to that case. The Court has set trial in the action against Level 3 to begin on April 23, 2018, with the trials in each of the other two cases to follow.

         This order addresses a number of motions filed in advance of the Level 3 trial, some of which are filed by, or directed at, Level 3 alone, and some of which are filed by, or directed at, Level 3 and other defendants. This order will first address Sycamore's Motion for Partial Summary Judgment of Infringement by Performing the Accused Mappings Pursuant to the Accused Standards, Dkt. No. 185; Defendants' Motion for Summary Judgment of Noninfringement, No Direct Infringement, and No Willful Infringement, Dkt. No. 193; and Sycamore's Motion for Summary Judgment on the Scope of Level 3's Infringement, Dkt. No. 191. After construing the relevant claim terms, with the assistance of supplemental briefs, see Dkt. Nos. 418, 419, 420, 421, 512, and 514, and oral arguments by the parties at the motions hearing held on January 19, 2018, the Court DENIES Sycamore's motion for partial summary judgment of infringement (Dkt. No. 185), GRANTS the defendants' motion for summary judgment of non-infringement (Dkt. No. 193), and DENIES AS MOOT Sycamore's motion for summary judgment on the scope of Level 3's infringement (Dkt. No. 191).

         This order also addresses four motions for summary judgment relating to defenses raised by Level 3 and other defendants: Defendants' Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 102(f) and 35 U.S.C. § 102(a), Dkt. No. 179; Defendants' Motion for Summary Judgment of Invalidity Under 35 U.S.C. Section 101, Dkt. No. 180; Sycamore's Motion for Summary Judgment of No Inequitable Conduct, Dkt. No. 186; and Sycamore's Motion for Summary Judgment on Equitable Estoppel, Fraud, Patent Misuse, Laches, Unclean Hands, and Waiver, Dkt. No. 183. The Court DENIED the first three of those motions following argument at the motions hearing, with an explanation for the Court's ruling on each motion. The Court GRANTED the fourth motion in part and DENIED it in part. In this order, the Court will expand on the explanations given in open court for its rulings on each of those four motions. The reasons for the Court's rulings in each instance incorporate both the Court's remarks during the motions hearing and the written elaboration on those remarks set forth below.


         Sycamore alleges that the defendants have infringed claims 1 and 3-8 of U.S. Patent No. 6, 952, 405 (“the '405 Patent”).[1] The patent is directed to a problem that arises during the electronic communication of information over networks when different communication protocols are used for different portions of the communication path. Transmission protocols that are frequently used in local area networks (“LANs”), such as Gigabit Ethernet (“GbE”) or Fibre Channel, are inefficient for transmitting data over long-haul communication networks that are designed to carry data at high speeds and over long distances. Long-haul networks, sometimes referred to as wide area networks (“WANs”), therefore typically use different transmission protocols from those used in local networks; for example, long-haul networks often rely on optical communication protocols such as Synchronous Optical Networking (“SONET”). When multiple protocols are used, it is often desirable that messages transferred from a LAN system to a WAN system be transferred without the loss or corruption of information, a process known as “transparent transcoding.”

         A. The '405 Patent

         A problem that engineers in the industry encountered during their efforts to devise transparent transcoding schemes was that differences in the bandwidth used by the LAN and WAN systems resulted in the inefficient use of the available WAN bandwidth. '405 patent, col. 1, line 52, through col. 2, line 11. The objective of the '405 patent was to create a transcoding protocol that would, for example, compress a GbE signal into fewer bits, thus enabling two GbE signals to be sent at once over a SONET link. Id., col. 2, ll. 53-59. To achieve that objective, the inventors of the '405 patent devised a transcoding system in which, for example, an 80-bit information group from the GbE transmission is converted into a 65-bit information stream for transmission over the SONET link without the loss of any information. Id., col. 7, ll. 41-48; see also id., Fig. 6. The 65-bit stream includes not only data, but also bits that indicate the locations and identities of any control characters that were contained in the information group. Id., col. 2, ll. 41-52; see also id., col. 3, ll. 37-45.

         The '405 patent refers to the input for the claimed encoding methods as an “information group.” An “information group” is a series of bits comprising data words, control characters, or a combination of both data words and control characters. Dkt. No. 104, at 2. The output of the encoding methods is called the “encoded information stream.” The parties agree that each “information group” is encoded into a single “encoded information stream, ” and that the two correspond one-to-one. See Dkt. No. 419, at 1 (Defendants: “‘Encoded information stream' refers only to the data corresponding to a single incoming ‘information group.'”); Dkt. No. 420, at 1 (Sycamore: “The parties agree that each ‘encoded information stream' corresponds to a single ‘information group' and vice versa.”).

         Claim 1 recites a method in which the encoding occurs through one of two processes, depending on whether the information group includes control characters. Claim limitation 1(a). If the information group contains only data words and no control characters, the first process is used. The first step is to generate a “data indicator.” Claim limitation 1(b). The data indicator consists of one or more bits indicating whether the information group includes any control characters. Dkt. No. 104. The data indicator is combined with the data words, and both are included in the encoded information stream. The parties agree that the data indicator and the data words must be combined as part of the same encoded information stream. Dkt. No. 419, at 10 (Defendants: “The limitations require that the recited claim components [i.e., the data indicator and data words] . . . be combined/included in one encoded information stream.”); Dkt. No. 420, at 1 n.1 (Sycamore: “Sycamore agrees the referenced fields are contained within the same ‘encoded information stream.'”).

         If the information group contains one or more control characters, the encoding method uses the second process, which consists of four steps. First, the control characters are encoded to form “control codes.” Claim limitation 1(c)(i). Second, a transition indicator is generated based on the number of control codes that are present in the information group. Claim limitation 1(c)(ii). A “transition indicator, ” which consists of one or more bits, indicates the occurrence of the last control code in the encoded information stream. Dkt. No. 110. Third, a location pointer is generated for each control code; the location pointer indicates the sequential position of the corresponding control character within the information group. Claim limitation 1(c)(iii). Finally, the control codes, data words, location pointers, and transition indicator are all combined to form the encoded information stream. Claim limitation 1(c)(iv).

         Claim 8, the only other independent claim asserted in this action, teaches a nearly identical method for encoding a multi-word information group. If the information group does not include control characters, the data words and a data indicator are encoded into an encoded information stream. Claim limitation 8(a). If the information group includes control characters, then: (i) the control characters are encoded into control codes; (ii) a transition indicator is generated; (iii) a location pointer is generated; and (iv) the control codes, the transition indicator, the location pointers, and any data words are combined into an encoded information stream. Claim limitation 8(b).

         B. The Accused Mapping Standards

         Sycamore accuses the defendants' networks of infringing the '405 patent to the extent that they use one of four transcoding methods, or “mappings, ” for which the Telecommunication Standardization Sector of the International Telecommunications Union (“ITU-T”) has issued standards. Sycamore's theory of infringement is that those standardized transcoding methods are covered by the claims of the '405 patent and that the defendants' use of those standardized methods in their communication systems infringes the patent. For ease of reference, the Court adopts the defendants' nomenclature of referring to the four accused mappings as Mappings A through D. See Dkt. No. 193.

         Mapping A: In 2005, the ITU-T released a standard for what it called the Transparent Generic Framing Procedure (“GFP-T”) in a document entitled ITU-T Recommendation G.7041/Y.1303. That standard, referred to as ITU G.7041, described a process for mapping LAN signals, such as Gigabit Ethernet or Fibre Channel signals, onto a transport network. Dkt. No. 185-2.

         Mapping B: In 2009, the ITU-T released a standard for mapping Gigabit Ethernet signals onto networks that use an ODU0 signal (an optical data transport protocol). The document containing that standard is entitled ITU-T Recommendation G.709/Y.1331, and the standard is referred to as ITU G.709 or the G.709 standard. Dkt. No. 185-3. The 2009 version states: “The mapping of the 1000BASE-X signal into GFP-T is performed as specified in [ITU G.7041] . . . .” Id. at 84 (brackets in original).

         Mapping C: In 2012, the ITU-T released a new revision to ITU G.709 that, among other things, set out a standard for mapping 10 Gigabit Ethernet Fibre Channel signals onto networks that use an ODU2 signal (another optical data transport protocol). Dkt. No. 185-4.

         Mapping D: The 2012 version of ITU G.709 also described a standard for mapping 40 Gigabit Ethernet signals onto ODU3 (another optical data transport protocol). Id.


         I. Claim Construction

         Following summary judgment briefing, the Court identified several infringement disputes that the Court considered to be predicated on disagreements regarding claim construction. The Court therefore directed the parties to file briefs on the newly identified claim construction issues. Dkt. No. 389. The parties filed briefs addressing those issues, Dkt. Nos. 418-421, and the Court heard oral argument on those issues at the January 19, 2018, motions hearing. The Court will address two of those issues here: the meaning of the term “encoded information stream, ” and the meaning of the term “control characters” in the phrases “encoding the control characters, ” claim limitation 1(c)(1), and “encoding control characters, ” claim limitation 8(b). The Court does not address the “data words” claim construction issue raised only by CenturyLink. See Dkt. No. 419, at 20-23.

         A. “Encoded Information Stream”

         With respect to the term “encoded information stream, ” the parties disagree about two interrelated issues: (1) whether an encoded information stream must be a continuous series of bits, such that when a data indicator is “combin[ed]” with the data words the data indicator bits and the data words are physically contiguous; and (2) whether the bits in an encoded information stream may be logically connected but physically separate in the outgoing data signal, such that the data indicator bits may be separated from the data words by bits from other, unrelated encoded information streams.

         Sycamore argues (1) that the '405 patent requires only that there be a “logical relationship” between the bits in an encoded information stream, and (2) that the word “combining” does not require physical contiguity. Sycamore notes that the specification permits the user to “arrange the fields . . . as desired, ” so long as the fields are sent in “prearranged sequential locations in the encoded information stream.” '405 patent, col. 6, ll. 12-19. Sycamore also emphasizes a sentence in the specification that reads: “It is not necessary to have these fields [i.e., the control codes, the data words, and the transition indicator] be physically contiguous within the encoded information stream as long as the fields can be found according to predetermined logic.” Id., col. 6, ll. 20-22; see also id., col. 4, ll. 56-60 (“It is understood that the data indicator field . . . and the data fields . . . may be arranged in many other predetermined orders within the encoded information stream.”); id., col. 5, ll. 65-67 (“Again it should be appreciated that the first and second fields 414 and 418 and the sub-fields 418z may be arranged in other predetermined orders.”); id., col. 8, ll. 18-21 (“These fields can be arranged in any of a variety of different orders, as desired by the user, within the constraints as described above.”). From these descriptions in the specification, Sycamore concludes that the bits of an encoded information stream need not be contiguous in the outgoing signal.

         Sycamore's position, however, begs the question. The quoted excerpts from the specification make clear that the various fields may be rearranged within the encoded information stream in any predetermined order, so long as those fields all appear within the same encoded information stream. Thus, it does not matter whether the control codes are transmitted first or last, or whether a control code is physically contiguous to its corresponding location pointer, so long as their positioning within the encoded information stream is predetermined. That much is beyond dispute. But that does not answer the question whether the encoded information stream itself consists of a continuous series of bits. That is, the specification does not unambiguously answer the question whether all of the bits belonging to a particular encoded information stream need to be physically contiguous, or whether the bits belonging to each encoded information stream can be intermingled with bits belonging to other information streams.

         While the specification is not explicit as to that issue, both intrinsic and extrinsic evidence supports the construction that an encoded information stream consists of a continuous series of bits. Both of the examples of encoded information streams depicted in the specification, Figures 3(a) and 3(b), depict a single block of contiguous bits. Figure 6, which “illustrates one example of the configurations for the encoded information stream 400 that may be generated according to the present encoding algorithm, ” '405 patent, col. 7, ll. 43-46, labels the bits in a 64B/65B encoded information stream sequentially, from bit 1 to bit 65.[2] See also id., col. 7, line 41, through col. 8, line 21 (describing a preferred embodiment of the encoding method in a sequential, bit-by-bit process).

         Although the defendants concede that the specification does not expressly define the term “encoded information stream” to be limited to a continuous series of bits, they argue persuasively that a person of ordinary skill in the art would understand the term “stream” to impose a requirement of contiguity. For example, although dictionary definitions of the term “stream, ” including those cited by the defendants, are not identical, nor all equally relevant, they are consistent in suggesting that the term “stream, ” as of the date of the '405 patent application, was understood to refer to a continuous or sequential series of bits. See, e.g., Alan Freedman, The Computer Desktop Encyclopedia (2d. ed. 1999) (Stream: “A contiguous group of data.” Streaming data: “Data that is structured and processed in a continuous flow, such as digital audio and video.”); IEEE Standard Dictionary of Electrical and Electronics Terms (6th ed. 1997) (Stream: “An ordered sequence of characters, as described by the C Standard.”); McGraw-Hill Dictionary of Scientific and Technical Terms (Sybil P. Parker, ed., 5th ed. 1994) (Stream: “A collection of binary digits that are transmitted in a continuous sequence, and from which extraneous data such as control information or parity bits are excluded.”); Microsoft Computer Dictionary (5th ed. 2002) (Stream: “Any data transmissions, such as the movement of a file between disk and memory, that occurs in a continuous flow.”); Official Internet Dictionary (Russ Bahorsky, ed. 1998) (Streaming: “A technique for transferring data in a continuous stream to allow large multimedia files to be viewed before the entire file has been downloaded to a client's computer.”); U.S. Dep't of Commerce, Nat'l Tech. Info. Serv., Telecommunications: Glossary of Telecommunication Terms (1991) (Bit stream transmission: “The transmission of characters at fixed time intervals without stop and start elements. Note: The bits that make up the characters follow each other in sequence without interruption.” Data stream: “A sequence of digitally encoded signals used to represent information for transmission.”); Webster's New World Dictionary of Computer Terms (6th ed. 1997) (Stream: “A continuous flow of data through a channel.”); Martin H. Weik, Communications Standard Dictionary (2d ed. 1989) (Bit stream: “An uninterrupted sequence of pulses representing binary digits transmitted in a transmission medium. For example, a continuous sequence of bits in a wireline or optical fiber.” Data stream: “A sequence of characters or pulses used to represent information during transmission.”).

         Although the Court does not adopt any single one of those definitions as the sole proper construction of the term “encoded information stream, ” as that term is used in the '405 patent, the dictionary definitions as a whole indicate that a person of skill in the art at the time of the invention would have understood that the word “stream” indicates contiguity, continuousness, or sequential ordering. Indeed, even Sycamore's expert, Dr. Scott Nettles, appears to have agreed with the thrust of those definitions when he testified in his deposition that “stream is a term of art and streams are sequences of things of indefinite extent.” Dkt. No. 421-1, at 74:6-8.

         Sycamore argues that a person of ordinary skill in the art would understand that the encoded information stream could be “further encoded, encrypted, or scrambled prior to transmission over the network.” Dkt. No. 420, at 4. For example, Dr. Nettles explained that a person of ordinary skill in the art would know that the outgoing signal would be multiplexed for transmission and de-multiplexed at the receiver. Dkt. No. 418-3 ¶¶ 22-23. That may be so. But the patent does not address whether the stream might be further encoded, encrypted, scrambled, or multiplexed once it is sent to the network; it merely requires that the outgoing signal be encoded into a stream before it is sent to the network. See '405 patent, col. 4, ll. 38-41 (describing that, when no control characters are present, the indicator bit and data words are “sent to the serializer 280 which generates the encoded information stream to be sent to the network 290”); id., col. 6, ll. 10-12 (describing that, when control characters are present, the data and control fields “are sent to the serializer 280 for generating the encoded information stream 400 to be sent to the network 290”); id., col. 6, ll. 27-28 (“At the receiving end 300, a deserializer 311 receives the encoded information stream 400 from the network 290.”). That the stream may undergo additional encodings does not detract from the requirement that a stream be generated as part of the claimed methods.

         This construction of the term “encoded information stream” is harmonious with the patent's use of the term “combine.” The patent makes clear that certain fields are combined to generate the encoded information stream. See, e.g., '405 patent, claim 1(b), col. 9, ll. 28-30 (“combining said data indicator with the data words of the information group to generate an encoded information stream”); id., claim 11, col. 11, ll. 16-17 (“generating an encoded information stream by combining said data indicator and the data words”); id., col. 2, ll. 33-36 (“[T]he control codes, the data words, the location pointers, and the transition indicator are combined for each information group to form the encoded information stream.”). Under Sycamore's construction of “encoded information stream, ” the term “combin[ed]” would mean merely “logically connected” in some manner. That interpretation of the term “combine” is not supported by the '405 patent or any of the extrinsic evidence cited by Sycamore. If, however, “encoded information stream” means a contiguous set of bits such that the various fields are put together in a continuous stream, the term “combine” can assume its natural and ordinary meaning. See, e.g., Webster's Third New Int'l Dictionary of the English Language (2002) (Combine: “[T]o bring into close relationship.”). The Court therefore construes “encoded information stream” to mean “a continuous series of encoded bits that is to be sent or received over the network and that corresponds to its respective information group.”

         B. “Encoding Control Characters”

         The defendants argue that two of the accused mappings, Mappings C and D, do not satisfy the limitations of claims 1 and 8 that provide for encoding control characters into control codes. The defendants' argument raises two related claim construction issues: what it means to “encode, ” and what types of information can be included in a “control character.”

         As for the term “encode, ” the parties agree that “encoding” control characters to control codes means that the control characters must be converted into a different form. Dkt. No. 418, at 11; Dkt. No. 419, at 18. The parties' agreed-upon construction of “control codes” as “encoded control characters, ” Dkt. No. 104, at 2, indicates that each control character must be encoded in some fashion. Furthermore, the specification provides that the encoding of the information stream results in a reduction in “the necessary bandwidth for transporting the information, ” '405 patent, col. 2, ll. 36-37, and that “[t]he control codes have fewer bits than the control characters contained in the information group, ” id., col. 4, ll. 24-25. Therefore, it is clear that each control character must be converted in some way that results in a reduction in the number of bits. Accordingly, the Court construes “encoding control characters” to mean “converting at least a portion of each present control character into a form that comprises fewer bits.”

         Second, the parties dispute whether “control characters” consist exclusively of bits that represent system control information, or whether “control characters” can contain non-control information, including data information or block-type information. Although the parties previously agreed that “control characters” should be construed to mean “bits in an information group representing control information, ” Dkt. No. 104, at 2, Sycamore now argues for a construction that permits control characters to “include information relating to non-control information, so long as when considered in their entirety, they represent control information, ” Dkt. No. 418, at 9.

         The defendants contend that the patent draws a clear distinction between “control characters” and “data, ” such that “control characters” must include only bits representing control information and may not include data. Dkt. No. 419, at 14-16. The defendants note that the asserted claims recite two distinct elements, “control characters” and “data words, ” and that the claims treat information groups that contain control characters differently from those that do not. Id. at 14-15. Based on that observation, the defendants conclude that “control characters and data words can't be the same thing.” Id. at 15.

         The Court agrees that the distinction between data information and control information is fundamental to the patent and its claimed encoding scheme. However, the defendants' construction of “control characters” limits that term in a way that is not supported by the specification.

         The '405 patent does not explicitly define the term “control character, ” except to say that the term is used “in place of the more conventionally used term control code.” '405 patent, col. 3, ll. 39-40. As an example, the patent refers to the 1 Gigabit Ethernet standard in which there are 12 possible control codes. Id., col. 3, ll. 37-45; id., col. 6, ll. 61-62. The patent explains that the coding scheme it teaches is applicable to a variety of networking formats, including Gigabit Ethernet, Fibre Channel, and “other data formats that have been encoded using block line codes, ” id., col. 3, ll. 33-37; id., col. 4, ll. 53-57, such as “256B/257B, 128B/129B, 16B/17B, [and] 8B/9B, ” id., col. 2, ll. 66-67; see also id., col. 7, ll. 32-36. The patent is therefore not limited to a single encoding scheme or a single conception of control character, but states that it is applicable to a variety of “long-established Ethernet standard[s].” Id., col. 1, ll. 18-38.

         The meaning of “control character” in the '405 patent is therefore not limited to the definition of control characters contained in the 1 Gigabit Ethernet standard that the patent describes as a preferred embodiment, nor is it limited to a series of bits that consist exclusively of system control information. The '405 patent designates certain bits as “control characters” based on the designation assigned by the LAN line encoding scheme. That is to say, the patented scheme relies on the input signal protocol to define the distinction between data words and control characters. The encoding protocol simply reduces the number of bits in each control character so as to transport the communication more efficiently over an optical network. As Sycamore's expert explained, in the 8B/10B encoding specification “there are clear definitions as to what the control and what the data is” and “the definition of 8b/10b says these are the control and these are the data.” Dkt. No. 419-8, at 105:6-107:7; see also id. at 105:18-20 (“[W]hat is control and what is data is something that you have to look at contextually.”); id. at 106:1-2 (“This applies to other transcodings besides 8b/10b.”). For purposes of the '405 patent, a control character can therefore contain whatever the incoming line encoding scheme provides in the portions of the signal that it designates as control characters, even if the control characters also include data information.

         Finally, although the claims use the terms “data words” and “control characters, ” which could suggest that each field is limited to a single word or character, the specification makes clear that each field could also be a block, consisting of multiple words or characters. See '405 patent, col. 5, ll. 50-55 (“For example, if 5-8 blocks or words are included in the information group, a sub-field 418z of 3-bits is preferably selected to represent the eight different positions where a control character may be found within the information group.” (emphasis added)). The term “control character” can therefore refer to a block of multiple characters or words and is not limited to a single character. For the foregoing reasons, the Court construes “control characters” as “bits in an information group designated as related to control by the input encoding scheme.”

         II. Motions Relating to Infringement

         A. Infringement: Accused Mappings A and B

         1. The ITU G.7041 Standard (Mapping A)

         Like the '405 patent, the G.7041 standard describes a method for encoding information. The G.7041 standard receives eight characters of 8B/10B information and maps them onto a 64B/65B block. Dkt. No. 185-2, at 30. In each 65-bit block, the “leading bit” or “flag bit” indicates whether “that block contains only 64B/65B 8-bit data characters or whether client control characters are also present in that block.” Id. If the 65-bit block does not contain control characters, the flag bit is set as 0; otherwise it is set as 1. Id. If the 65-bit block contains control characters, the control characters are placed at the beginning of the block, and each control character is encoded into eight bits. The first of those eight bits is a Last Control Character flag bit, which indicates whether that control character is the last control character in the block. The next three bits constitute the Control Code Locator, which indicates the original location of the control code character within the sequence of the eight characters contained in the block. The last four bits in the 8-bit group constitute the Control Code Indicator, which represents the 8B/10B control code character and is coded in 4 bits. Id. Figure 8-2 illustrates how the input is encoded:

         (Table Omitted)

         Figure 8-2/G.7041/Y.1303 - Transparent GFP 64B/65B code components (See Figure 8-3 for actual superblock structure)

         The eight characters that compose the 64B/65B block are not transmitted over the network as a discrete block. Rather, eight 64B/65B code blocks are combined into a “superblock, ” which is described in Figure 8-3 of the standard. Dkt. No. 185-2, at 32. The entire superblock is 536 bits in size and consists of the following components: First, the payloads from each of the eight 64B/65B blocks are grouped into a superblock-i.e., 64 characters of eight bits each; next, the “leading (Flag) bits of each of the eight 64B/65B codes are grouped together into a first trailing octet”; finally, 16 additional bits are sent, which are used “for a CRC-16 error check over the bits of this superblock.” Id. The superblock has the following structure, in which each row is eight bits:

         (Table Omitted)

         Figure 8-3/G.7041/Y.1303 - Superblock structure for mapping 64B/65B code components into the GFP frame

         The G.7041 standard notes that “[t]o minimize latency, the transparent GFP mapper can begin transmitting data as soon as the first 64B/65B code in the group has been formed rather than waiting for the entire superblock to be formed.” Id.

         2. The 2009 Version of the ITU G.709 Standard (Mapping B)

         As noted, in 2009 the ITU-T issued a standard for mapping Gigabit Ethernet signals onto certain types of optical transport networks. This standard was designated as ITU G.709, but it stated that the mapping “is performed as specified in [ITU G.7041], ” that is, Mapping A. Dkt. No. 185-5, at 84 (brackets in original). The infringement analysis is therefore identical for Mappings A and B.

         3. Infringement of Claim Limitations 1(b) and 8(a)

         Sycamore's theory of infringement is that the defendants practice the two mapping standards at issue in this case, ITU G.7041 and ITU G.709, and that any party that practices those mapping standards will necessarily infringe the asserted claims of the '405 patent. The defendants respond that a party that practices the G.7041 mapping standard does not necessarily infringe claim limitations 1(b) and 8(a) of the '405 patent, and that proof that the defendants practice those mapping standards therefore does not constitute proof of infringement.

         Sycamore's infringement theory is based on the principles set out by the Federal Circuit in Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010). There, the Circuit held that a district court “may rely on an industry standard in analyzing infringement.” Id. at 1327. Specifically, the court held that “[i]f a district court construes the claims and finds that the reach of the claims includes any device that practices a standard, then this can be sufficient for a finding of infringement.” Id. However, the court cautioned that “in many instances, an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement.” Id. The court emphasized that in such cases the patent owner cannot establish infringement simply by “arguing that the product admittedly practices the standard, therefore it infringes.” Id. at 1328. Rather, “the patent owner must compare the claims to the accused products or, if appropriate, prove that the accused products implement any relevant optional sections of the standard.” Id. It is only in the situation in which a patent covers “every possible implementation of a standard” that it will be “enough to prove infringement by showing standard compliance.” Id. Applying the test set forth in Fujitsu, this Court agrees with the defendants that the evidence does not show that practicing the G.7041 standard would necessarily infringe the '405 patent, and that the defendants are therefore entitled to summary judgment of non-infringement.

         The parties do not disagree that the “information group” referred to in the G.7041 mapping standard consists of the eight incoming characters of the 8B/10B signal-that is, 80 bits of information that comprise some combination of eight data words and/or control characters. The “encoded information group” in the G.7041 standard is therefore the 64B/65B encoding of those eight data words and/or control characters, consisting of a single flag bit and eight bits for each of the eight data words or control characters. See Dkt. No. 159-1, at A-1 (Sycamore's infringement contentions regarding the G.7041 standard, dated September 12, 2016, identify the “Input client characters” in Figure 8-2 as the multi-word information group for claim 1 and describe the information group as containing eight data words, eight control characters, or a mixture of eight data words and control characters); id. at A-20 (stating, for claim 3, “Each of the information groups comprises 8 words . . . . Each of the words of the information group comprises 10 bits (i.e., an 8B/10B character).”); id. at A-22 (stating, for claim 4, “Each of the information groups comprises 80 bits (8 10-bit 8B/10B characters).”); see also Dkt. No. 185, at 10; Dkt. No. 245, at 3; Dkt. No. 418, at 9 (“In the G.7041 GFP-T standard, a ‘block' is defined as a 64b/65b portion of the outgoing signal that corresponds to 80 bits of an incoming 8b/10b signal (or 64 bits of an incoming 8-bit signal). If those 80 (or 64) bits are the ‘information group', then each 64b/65b block is a single ‘encoded information stream.'” (citation omitted)).[3] The “data indicator” is the “flag bit” in the G.7041 standard. Dkt. No. 159-1, at A-6 through A-7.

         Under the Court's claim constructions, Sycamore has not presented evidence that the G.7041 mapping standard necessarily satisfies either claim limitation 1(b) or claim limitation 8(a) of the '405 patent. Claim limitation 1(b) requires that the data indicator and data words be combined to generate an encoded information stream that includes the data indicator and data words. Similarly, claim limitation 8(a) requires that the data words be encoded with a data indicator to generate an encoded information stream. The G.7041 standard does neither. Although the G.7041 standard generates a flag bit for each 64-bit information group, the data words and the corresponding flag bit are not combined, but are transmitted separately. The superblock structure transmits the data words and control characters first, followed by an octet of eight flag bits. Because the eight separate information groups-i.e., eight separate encoded information streams-are transmitted first, and the data indicators for all eight are combined and transmitted later, the data indicator is never put into a contiguous stream of encoded information with the data words. For that reason, the transmission of the superblocks under the G.7041 standard does not infringe the '405 patent.

         In its opposition to the defendants' motion for summary judgment of non-infringement, Sycamore made an alternative argument in favor of infringement. It argued that superblock encoding is a two-part process, and that “the data indicator and data words are first combined before the data indicator is separated into a trailing octet.” Dkt. No. 245, at 7. As support for that proposition, Sycamore cited two White Papers on the G.7041 and G.709 standards prepared by Dr. Steve Gorshe, an engineer with PMC-Sierra and one of the principal architects of the standards. See Dkt. Nos. 245-12 and ...

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