Capella Photonics, Inc. v. Ciena Corporation

Background

Capella sued Ciena on two counts of patent infringement involving optical switching technologies used in optical transmission networks. The patents at issue were U.S. Patent Nos. RE 45,905 and RE 45,906, which had been reissued on March 17, 2020 from earlier patents, U.S. Patent Nos. RE 42,368 and RE 42,678. Capella alleged that Ciena sold, offered to sell, and imported infringing optical-network products.

Ciena moved under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal for failure to state a legally sufficient claim. Ciena sought dismissal of all infringement claims based on products made, purchased, offered for sale, used, or imported before March 17, 2020. It argued that Capella could not recover damages for that period and sought to limit damages to the period from March 17, 2020, through the patents’ expiration on August 23, 2021.

Absolute Intervening Rights

Under 35 U.S.C. § 252, a reissued patent generally cannot support damages for earlier conduct when the reissued claims have been substantively changed. The statute provides an exception when the reissued claims are substantially identical to claims in the original patent. “Substantially identical” means without substantive change in claim scope, not necessarily using exactly the same words.

The court relied on its prior claim-construction order in a related case involving the same reissued patents. In that order, the court held that “port” was not limited to “fiber collimator port” and that a fiber collimator that provides a port was not necessarily itself a fiber collimator port. The court also held that Capella had not clearly disclaimed all ports other than fiber collimator ports during earlier patent proceedings.

Based on that prior construction, the court found that adding the terms “fiber collimator” and “fiber collimated” changed the scope of the reissued patent claims. The reissued patents therefore were not substantially identical to the original patents. The court concluded that Ciena had absolute intervening rights for its use of the optical switching technologies before March 17, 2020. The court rejected Capella’s argument that this issue had to wait for another claim-construction process or a formal hearing in this case, reasoning that its earlier claim-construction findings resolved the issue.

Collateral Estoppel

The court also applied its earlier reasoning about collateral estoppel, a rule that can prevent a party from relitigating an issue already finally decided. The Patent Trial and Appeal Board had canceled relevant claims of the original patents as obvious over prior art, and the Federal Circuit had affirmed those decisions.

The court stated that if the reissued claims had been substantially identical to the original claims, the earlier invalidity determination would have barred Capella from asserting them under collateral-estoppel principles. The court found that the claim-scope issue had been actually litigated before the Patent Trial and Appeal Board and was essential to that agency’s decisions. Thus, under either possible characterization—substantially changed claims or substantially identical claims—Capella could not recover damages for the period before reissuance.

Disposition

The court concluded that “under no scenario” was Capella entitled to pre-issuance damages. Judge Edward M. Chen granted Ciena’s Partial Motion to Dismiss, and Capella may not seek pre-issuance damages in this case. The order disposed of Docket No. 22; it did not state that the entire patent-infringement case was dismissed.