Case5:10-cv-03428-PSG Document571 Filed06/12/12 Page1 of 36
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`Case No.: 10-CV-03428-LHK
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`ORDER GRANTING IN PART AND
`DENYING IN PART A10’S MOTION
`FOR SUMMARY JUDGMENT
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`On May 3, 2012, Defendants Lee Chen, Rajkumar Jalan, Ron Szeto, and Steve Hwang
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`BROCADE COMMUNICATIONS SYSTEMS,
`INC., a Delaware corporation; and FOUNDRY
`NETWORKS, LLC, a Delaware limited liability
`company,
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` Plaintiffs and Counterclaim Defendants,
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`v.
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`A10 NETWORKS, INC., a California
`corporation; LEE CHEN, an individual;
`RAJKUMAR JALAN, an individual; RON
`SZETO, an individual; DAVID CHEUNG, an
`individual; LIANG HAN, an individual; and
`STEVE HWANG, an individual,
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` Defendants and Counterclaimants.
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`(collectively, the “Individual A10 Defendants”) and A10 Networks, Inc. (“A10”; collectively “A10
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`Defendants”) filed a motion for summary judgment (“A10’s Mot.”). Defendant David Cheung
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`joined that motion. On May 17, 2012, Plaintiffs Brocade Communications Systems, Inc. and
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`Foundry Networks, LLC (collectively, “Brocade”) filed an opposition to A10’s motion. On May
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`24, 2012, the A10 Defendants filed a reply. ECF No. 550. The Court held a hearing on A10’s
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`motion on June 8, 2012. The pretrial conference in this matter is set for June 27, 2012; the trial
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`will begin on July 16, 2012. Because the parties require a ruling on this motion on an expedited
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`basis, the Court will keep its analysis brief.
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`The parties are familiar with the factual and procedural background of this case, and the
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`Court will not repeat it here. The Court refers the unfamiliar reader to its Orders of January 6,
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`2012. See ECF Nos. 434, 438. In short, Brocade alleges that in 2004, Mr. Chen, a co-founder of
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`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
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`For the Northern District of California
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`United States District Court
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`Case5:10-cv-03428-PSG Document571 Filed06/12/12 Page2 of 36
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`Foundry (a wholly owned subsidiary of Brocade), secretly began to develop a new company,
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`Raksha Networks, while still working at Foundry. Mr. Chen left Foundry in August 2004, and
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`renamed his new company A10 Networks. Brocade alleges that Mr. Chen recruited Foundry’s
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`employees Jalan, Szeto, Han, and Hwang. Brocade further alleges that these former Foundry
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`employees (including Mr. Chen) took Brocade’s intellectual property with them to A10.
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`According to Brocade, A10 used this intellectual property to develop a competing product, the AX
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`Series, which allegedly infringes several Brocade patents. Additional facts are discussed below, as
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`necessary, in the Court’s analysis.
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`Brocade’s third amended complaint alleges the following claims: (a) patent infringement
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`(10 asserted claims from six patents); (b) trade-secret misappropriation (20 trade secrets); (c)
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`copyright infringement (5 copyrights); (d) breach of contract; (e) breach of fiduciary duty; (f)
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`breach of loyalty; (g) interference with contract and prospective economic advantage; and (h)
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`California’s Unfair Competition Law (“UCL”), Cal. Bus. & Prof. Code §§ 17200, et seq.
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`A10 moves for summary judgment on all of Brocade’s claims. A10 argues that Brocade
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`has adduced no evidence of patent infringement, copyright infringement, trade secret
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`misappropriation, or any of its other state law claims. Brocade has withdrawn its breach of
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`fiduciary duty, breach of loyalty, and UCL claims. See Opp’n 22. Accordingly, A10’s motion is
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`GRANTED as to Brocade’s breach of fiduciary duty, breach of loyalty, and UCL claims. The
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`Court sets forth the general standard for summary judgment and then discusses each of Brocade’s
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`remaining claims in turn.
`I. Legal Standard
`Under Federal Rule of Civil Procedure 56(a), “the court shall grant summary judgment if
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`the movant shows that there is no genuine dispute as to any material fact and the movant is entitled
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`to judgment as a matter of law.” Material facts are those that may affect the outcome of the case.
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`See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is
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`“genuine” if the evidence is such that “a reasonable jury could return a verdict for the nonmoving
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`party.” See id. “[I]n ruling on a motion for summary judgment, the judge must view the evidence
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`presented through the prism of the substantive evidentiary burden.” Id. at 254. The question is
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`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
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`For the Northern District of California
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`United States District Court
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`“whether a jury could reasonably find either that the [moving party] proved his case by the quality
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`and quantity of evidence required by the governing law or that he did not.” Id. “[A]ll justifiable
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`inferences must be drawn in [the nonmovant’s] favor.” See United Steelworkers of Am. v. Phelps
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`Dodge Corp., 865 F.2d 1539, 1542 (9th Cir. 1989) (en banc) (citing Liberty Lobby, 477 U.S. at
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`255).
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`The moving party bears the initial responsibility for informing the district court of the basis
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`for its motion and identifying those portions of the pleadings, depositions, interrogatory answers,
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`admissions and affidavits, if any, that it contends demonstrate the absence of a genuine issue of
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`material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A party opposing a properly
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`supported motion for summary judgment “may not rest upon the mere allegations or denials of
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`[that] party’s pleading, but . . . must set forth specific facts showing that there is a genuine issue for
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`trial.” See Fed. R. Civ. P. 56(e); see also Liberty Lobby, 477 U.S. at 250. The opposing party need
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`not show the issue will be resolved conclusively in its favor. See Liberty Lobby, 477 U.S. at 248–
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`49. All that is necessary is submission of sufficient evidence to create a material factual dispute,
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`thereby requiring a jury or judge to resolve the parties’ differing versions at trial. See id.
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`As the Federal Circuit has noted, summary judgment of noninfringement is a two-step
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`analysis. “First, the claims of the patent must be construed to determine their scope. Second, a
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`determination must be made as to whether the properly construed claims read on the accused
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`device.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999)
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`(internal citation omitted). “[S]ummary judgment of non-infringement can only be granted if, after
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`viewing the alleged facts in the light most favorable to the non-movant, there is no genuine issue
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`whether the accused device is encompassed by the claims.” Id. at 1304.
`II. Patent Infringement against A10, Chen, and Jalan
`Brocade alleges that Defendants A10, Chen, and Jalan infringe eight apparatus claims and
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`two method claims from six patents through either: (1) direct infringement; (2) the doctrine of
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`equivalents; or (3) indirectly through inducement or contributory infringement. The parties
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`disagree as to the legal standard that should apply to these claims.
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`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
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`For the Northern District of California
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`United States District Court
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`As an initial matter, Brocade has submitted only argument without citing any evidence that
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`Messrs. Chen and Jalan engaged in any kind of patent infringement. See Opp’n 7-11. Federal Rule
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`of Civil Procedure 56 requires a party asserting that a fact is genuinely disputed to support the
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`assertion by: “citing to particular parts of materials in the record, including depositions, documents,
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`electronically stored information, affidavits or declarations, stipulations (including those made for
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`purposes of the motion only), admissions, interrogatory answers, or other materials.” Brocade has
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`not done so with regard to its patent infringement claims against Messrs. Chen and Jalan.
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`Although Brocade states the proposition of law that corporate officers who actively aid and abet
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`their corporation’s infringement may be personally liable for inducing infringement, Brocade does
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`not cite any facts, let alone sufficient facts to raise a genuine factual dispute as to whether this
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`proposition of law applies to Messrs. Chen and Jalan. Opp’n 11 (citing Orthokinetics, Inc. v.
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`Safety Travel Chairs, Inc., 806 F.2d 1565, 1579 (Fed. Cir. 1986). Accordingly A10’s motion for
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`summary judgment is GRANTED as to all patent infringement claims against Messrs. Chen and
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`Jalan.
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`A. Legal Standard
`1. Direct Infringement
`A10 argues that for the apparatus claims at issue here, Brocade is required to show more
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`than the capacity to perform a particular claim element; rather “Plaintiffs must show evidence of
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`direct infringement by showing that customers actually use the infringing features.” Mot. 5 (citing
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`Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1329 (Fed. Cir. 2010); Finjan, Inc. v. Secure
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`Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010)). Brocade, on the other hand, argues that
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`“[t]here is no requirement that [an] apparatus be used in a particular manner” to establish direct
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`infringement. Opp’n 7 (citing Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468
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`(Fed. Cir. 1990)).
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`The correct standard to apply to apparatus claims depends on the language of a particular
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`claim. As the Federal Circuit has cautioned, “‘in every infringement analysis, the language of the
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`claims, as well as the nature of the accused product, dictates whether an infringement has
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`occurred.’” Finjan, 626 F.3d at 1204 (quoting Fantasy Sports Props. v. Sportsline.com, Inc., 287
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`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
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`For the Northern District of California
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`United States District Court
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`Case5:10-cv-03428-PSG Document571 Filed06/12/12 Page5 of 36
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`F.3d 1108, 1118 (Fed. Cir. 2002)). Thus, “‘to infringe a claim that recites capability and not actual
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`operation, an accused device ‘need only be capable of operating’ in the described mode.’” Id.
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`(quoting Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991); citing Ball
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`Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 994 (Fed. Cir. 2009)).
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`In contrast, “[t]o infringe a method claim, a person must have practiced all steps of the
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`claimed method.” Finjan, 626 F.3d at 1206. “[A] method or process claim is directly infringed
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`only when the process is performed.” Joy Techs, Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir.
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`1993) (citing Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 836 (Fed. Cir. 1992)).
`2. Doctrine of Equivalents
`To prove infringement under the doctrine of equivalents, a plaintiff must show that the
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`allegedly infringing device and claimed limitation perform “substantially the same function in
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`substantially the same way to obtain substantially the same result.” Warner-Jenkinson Co. v.
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`Hilton Davis Chem. Co., 520 U.S. 17, 38 (1997); Lockheed Martin Corp. v. Space Sys./Loral, Inc.,
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`324 F.3d 1308, 1317 (Fed. Cir. 2003). Courts apply the function-way-result analysis to each
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`limitation of a claim, and there can be no infringement “if even one limitation of a claim or its
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`equivalent is not present in the accused device.” Lockheed Martin, 324 F.3d at 1321; see also
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`Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935-36 (Fed. Cir. 1987).
`3. Indirect Infringement
`In order to prove vicarious liability for indirect infringement, a plaintiff must prove that: (1)
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`“the defendant’s actions led to direct infringement”; and (2) “the defendant possessed the requisite
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`knowledge or intent to be held vicariously liable.” Dynacore Holdings Corp. v. U.S. Philips Corp.,
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`363 F.3d 1263, 1274-75 (Fed. Cir. 2004) (citing Hewlett–Packard Co., 909 F.2d at 1469; Met-Coil
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`Sys. v. Korners Unlimited, Inc., 803 F.2d 684, 687 (Fed. Cir. 1986)). A patentee may prove
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`indirect infringement through direct or circumstantial evidence. Metabolite Labs., Inc. v. Lab.
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`Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir. 2004).
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`A party who “actively induces infringement of a patent shall be liable as an infringer.” 35
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`U.S.C. § 271(b). Under this provision, “[t]he plaintiff has the burden of showing that the alleged
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`infringer’s actions induced infringing acts and that he knew or should have known his actions
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`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
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`For the Northern District of California
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`United States District Court
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`would induce actual infringements. Inducement requires evidence of culpable conduct, directed to
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`encouraging another’s infringement, not merely that the inducer had knowledge of the direct
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`infringer’s activities.” Lucent v. Gateway, 580 F.3d 1301, 1321-22 (Fed. Cir. 2009). A plaintiff
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`may prove the intent element through circumstantial evidence. Id. at 1322 (internal citations
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`omitted).
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`Under 35 U.S.C. § 271(c), a party is liable for infringement if he “offers to sell or sells
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`within the United States or imports into the United States . . . a material or apparatus for use in
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`practicing a patented process, constituting a material part of the invention, knowing the same to be
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`especially made or especially adapted for use in an infringement of such patent, and not a staple
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`article or commodity of commerce suitable for substantial noninfringing use.” “In order to succeed
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`on a claim of contributory infringement, in addition to proving an act of direct infringement,
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`plaintiff must show that defendant ‘knew that the combination for which its components were
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`especially made was both patented and infringing’ and that defendant’s components have ‘no
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`substantial non-infringing uses.’” Lucent, 580 F.3d at 1320 (internal citations omitted).
`B. ’195 Patent: Claim 1
`The ’195 Patent teaches “systems and methods for providing route redundancy across Layer
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`2 devices, as well as selected ports on L2 devices.” ’195 Patent 1:38-40. Brocade asserts that
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`A10’s AX Series devices infringe Claim 1 of the ’195 Patent, an apparatus claim. Claim 1 recites:
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`A switch for use in a system of switches, the system of switches acting as a virtual
`switch, the switch comprising: a memory; and a plurality of ports, each for
`communicatively coupling the switch to a Layer 2 network, wherein the switch is
`configured to act in concert with one or more other switches in the system of
`switches to provide route redundancy for the Layer 2 network, and wherein the
`switch is configured to communicate its status to the one or more other switches by
`transmitting, via at least one of the plurality of ports, redundancy control packets for
`flooding throughout the Layer 2 network.
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`’195 Patent 21:22-33.
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`In its January 6, 2012 Order construing disputed claim terms, the Court construed
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`“transmitting . . . redundancy control packets for flooding throughout the Layer 2 network” to
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`mean “transmitting . . . redundancy control packets that are in some way configured to be flooded
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`throughout the Layer 2 network.”
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`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
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`6
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`For the Northern District of California
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`United States District Court
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`1. Direct Infringement
`A10 asserts it is entitled to summary judgment of no direct infringement of Claim 1 of the
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`’195 Patent because Brocade has not provided evidence that any AX Series device actually
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`configured a redundancy control packet to be flooded throughout the Layer 2 network. Brocade
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`argues that even if proof of use of the infringing feature was required, A10’s 30(b)(6) witness
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`admitted that the “standard implementation” of the AX Series device was to “broadcast heartbeat
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`messages at layer 2,” so “most customers would use it that way.” Opp’n 9 (citing McBride Decl.
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`Ex. 9 at 125:23-126:6; Ex. 1 (Ex. 7 at 22-23)). As A10 concedes, Brocade’s expert, Dr. Rubin,
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`opined that the heartbeat messages in AX Series devices are redundancy control packets because
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`they have multicast addresses. McBride Decl. Ex. 1 (Ex. 9 at ¶¶ 106-110). Dr. Rubin opined,
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`based on his analysis of the accused products’ source code and the AX Series Configuration Guide,
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`that when the AX Series device’s heartbeat message is received by a Layer 2 device, the heartbeat
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`message is flooded across the Layer 2 network (or in the designated Virtual Local Area Network
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`(VLAN), if one is defined). Id. at ¶ 107. Thus, contrary to A10’s position, Brocade has cited
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`evidence that the standard implementation of the accused products configures redundancy control
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`packets -- heartbeat messages -- to be flooded throughout the Layer 2 network. Therefore, Brocade
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`has raised a genuine issue of material fact as to whether the AX Series devices directly infringe
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`Claim 1 of the ’195 Patent. Accordingly, A10’s summary judgment motion is DENIED as to
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`Brocade’s claim that A10 directly infringes Claim 1 of the ’195 Patent.
`2. Doctrine of Equivalents
`A10 argues that it is entitled to summary judgment of non-infringement of Claim 1 of the
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`’195 Patent under the doctrine of equivalents because Brocade relies solely upon conclusory and
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`unsupported testimony of its experts, Drs. Bestavros and Rubin, to support its claim of
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`infringement under the doctrine of equivalents. In response to A10’s doctrine of equivalents
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`arguments, Brocade merely states that Brocade’s experts identified the function, way, and result to
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`prove that there is no substantial difference between the AX Series device and the asserted claims.
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`Opp’n 10. Rather than apply the function-way-result analysis to each limitation of Claim 1 of the
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`’195 Patent, Brocade merely points the Court to one example of Dr. Rubin’s doctrine of
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`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
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`For the Northern District of California
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`United States District Court
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`equivalents analysis, which only discusses the ’833 Patent, and does not apply to the ’195 Patent.
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`Opp’n 10 (“See, e.g., [McBride Decl.] Ex. 1 at Ex. 13 at 37-38”). This vague citation is wholly
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`inadequate to raise an issue of material fact sufficient to survive A10’s motion for summary
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`judgment. See Forsberg v. Pac. N.W. Bell Tel. Co., 840 F.2d 1409, 1417-18 (9th Cir. 1998) (“The
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`district judge is not required to comb the record to find some reason to deny a motion for summary
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`judgment.”); Fed. R. Civ. P. 56 (“A party asserting that a fact . . . is genuinely disputed must
`support the assertion by citing to particular parts of materials in the record . . . .”).1 At the June 8,
`2012 hearing on the motion for summary judgment, Brocade cited no other evidence. Tr. 80:15-
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`85:15. Accordingly, A10’s summary judgment motion is GRANTED as to Brocade’s claim that
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`the accused products infringe Claim 1 of the ’195 Patent based on the doctrine of equivalents.
`3. Indirect Infringement
`A10 argues that it is entitled to summary judgment on Brocade’s claim of indirect
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`infringement of Claim 1 of the ’195 Patent on the sole ground that Brocade cannot prove or
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`quantify acts of direct infringement by customers. Mot. 8 (citing Dynacore, 363 F.3d at 1274).
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`However, as discussed above, Brocade has raised a genuine issue of material fact as to whether the
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`accused products directly infringe. Thus, it is reasonable to infer that customers using these
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`devices at all in their standard mode would directly infringe Claim 1of the ’195 Patent. As the
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`Federal Circuit has held, “the sale of a device may induce infringement of a method claim, even if
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`the accused device is capable of non-infringing modes of operation in unusual circumstances.”
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`Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed. Cir. 2001). Given that A10 raises
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`no other arguments in support of its motion for summary judgment, A10’s summary judgment
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`motion is DENIED as to Brocade’s claim that A10 indirectly infringes Claim 1 of the ’195 Patent.
`C. ’427 Patent: Claims 4 & 5
`The ’427 Patent teaches “providing redundancy support for network address translation
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`(NAT) devices (such as routers or switches) in the event of a failover.” ’427 Patent 1:10-12.
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`Brocade claims that A10’s AX Series devices infringe Claims 4 and 5 of the ’427 Patent.
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`1 See also Shum v. Intel Corp., 633 F.3d 1067, 1076 (Fed. Cir. 2010) (applying regional circuit law
`to summary judgment procedural issues).
`8
`
`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
`
`For the Northern District of California
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`United States District Court
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`Case5:10-cv-03428-PSG Document571 Filed06/12/12 Page9 of 36
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`Claim 1, from which Claims 4 and 5 depend, recites:
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`An article of manufacture, comprising: a storage medium having instructions stored
`thereon that are executable by a back-up device to: share, by said back-up device
`with a master device, a base address corresponding to a first pool of first addresses
`that are owned by said master device; perform network address translation (NAT)
`and routing, by said back-up device, for a second pool of second addresses while
`said master device is active; detect, by said back-up device, a failure of said master
`device; and assert ownership, by said back-up device, of all of said first addresses of
`said first pool corresponding to said base address, in response to detection by said
`back-up device of said failure.
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`’427 Patent 9:12-26 (emphasis added).
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`Claim 4 recites:
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`The article of manufacture of claim 1 wherein said storage medium further includes
`instructions stored thereon that are executable by said back-up device to: receive, by
`said back-up device from said master device, heartbeat messages while said master
`device is active, said heartbeat messages being received by said back-up device on a
`separate virtual local area network (VLAN) connection different from a VLAN
`connection used to carry traffic.
`’427 Patent 9:39-47 (emphasis added).
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`Claim 5 recites:
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`The article of manufacture of claim 1 wherein said storage medium further includes
`instructions stored thereon that are executable by said back-up device to: receive, by
`said back-up device from said master device, session synchronization information
`while said master device is active, said session synchronization information being
`received by said back-up device on a separate virtual local area network (VLAN)
`connection different from a VLAN connection used to carry traffic.
`’427 Patent 9:48-56 (emphasis added).
`1. Direct Infringement
`A10 argues it is entitled to summary judgment of no direct infringement of Claims 4 and 5
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`of the ’427 Patent because Brocade fails to submit evidence that any A10 product has been
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`configured to have a “back-up device on a separate virtual local area network (VLAN) connection
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`different from a VLAN connection used to carry traffic,” as required by Claims 4 and 5 of the ’427
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`Patent. A10 also argues that Claims 4 and 5 require that a master device be configured to provide
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`heartbeat messages and synchronization information, citing the prosecution history. However, the
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`Court need not consider A10’s prosecution history argument because it is in direct conflict with the
`
`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
`
`9
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`For the Northern District of California
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`United States District Court
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`Case5:10-cv-03428-PSG Document571 Filed06/12/12 Page10 of 36
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`express claim language. Unlike Claim 1 of the ’195 Patent, the express language of Claims 4 and 5
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`of the ’427 do not include any “configuration” language that could arguably require “actual
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`operation.” Finjan, 626 F.3d at 1204. Rather, both claims recite “instructions” that are
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`“executable,” the plain meaning of which recites “capability” to execute. Id.; see also Intel v. ITC,
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`946 F.2d 821, 832 (Fed. Cir. 1991) (“Because the language of claim 1 refers to ‘programmable
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`selection means’ . . . the accused device, to be infringing, need only be capable of operating in the
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`infringing mode.”) (emphasis added). Although A10 states that Dr. Rubin admitted in his
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`deposition that he failed to identify any instructions that receive heartbeat messages or
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`synchronization information, A10 omits a section of Dr. Rubin’s testimony stating that the source
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`code shows “[the instruction] is being received because it has the destination address of the
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`counterpart.” Mosko Decl. Ex. 7 at 203:12-204:19. Thus, even if Brocade were required to show
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`actual operation -- which it is not under the claim language here -- Brocade has raised a genuine
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`issue of material fact as to whether the AX Series devices directly infringe Claims 4 and 5 of the
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`’427 Patent. Accordingly, A10’s motion as to direct infringement of Claims 4 and 5 of the ’427
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`Patent is DENIED.
`2. Doctrine of Equivalents
`Brocade merely points the Court to one example of Dr. Rubin’s doctrine of equivalents
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`analysis, which only discusses the ’833 Patent and does not apply to the ’427 Patent. Opp’n 10
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`(“See, e.g., [McBride Decl.] Ex. 1 at Ex. 13 at 37-38”). Accordingly, A10’s motion for summary
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`judgment as to Claims 4 and 5 of the ’427 Patent is GRANTED for the reasons set forth in Section
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`II.B.2.
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`3. Indirect Infringement
`A10 argues that it is entitled to summary judgment on Brocade’s claim of indirect
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`infringement of Claims 4 and 5 of the ’427 Patent on the sole ground that Brocade cannot prove or
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`quantify acts of direct infringement by customers. Mot. 8 (citing Dynacore, 363 F.3d at 1274).
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`However, as discussed above, Brocade has raised a genuine issue of material fact as to whether the
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`accused products directly infringe Claims 4 and 5 of the ’427 Patent by being capable of executing
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`the instructions required by the claims. Thus, using these devices at all, even if in modes not
`10
`
`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
`
`For the Northern District of California
`
`United States District Court
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`Case5:10-cv-03428-PSG Document571 Filed06/12/12 Page11 of 36
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`executing the required instructions, would still directly infringe Claims 4 and 5 of the ’427 Patent.
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`Given that Brocade has rebutted the sole ground upon which A10 sought summary judgment as to
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`indirect infringement, the motion is DENIED as to Brocade’s claim that A10 indirectly infringes
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`Claims 4 and 5 of the ’427 Patent.
`D. ’370 Patent: Claims 18 & 32
`The ’370 Patent and the ’427 Patent are related and share a common specification. Like the
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`’427 Patent, the ’370 Patent teaches “providing redundancy support for network address translation
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`(NAT) devices (such as routers or switches) in the event of a failover.” Brocade asserts that A10’s
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`AX series devices infringe Claims 18 and 32 of the ’370 Patent.
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`Claim 18 recites:
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`An apparatus, comprising: a first network device adapted to be associated to a base
`address corresponding to a first pool of first addresses that are not owned by said
`first network device, said first network device being further adapted to perform,
`while said first network device does not said [sic] own said first pool of first
`addresses, network address translation (NAT) for a second pool of second
`addresses, and said first network device further being adapted to detect a failure of a
`second network device and assert ownership of a plurality of said first addresses of
`said first pool corresponding to said base address, in response to detection of said
`failure.
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`’370 Patent 11:48-60 (emphasis added).
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`Claim 32 recites: “The apparatus of claim 27 wherein said device is further adapted to
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`perform routing for said first pool of first addresses.” ’370 Patent 14:8-10. Claim 27, from which
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`Claim 32 depends, recites:
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`An apparatus, comprising: a device adapted to own a base address corresponding to
`a first pool of first addresses, said first pool of first addresses being associated to but
`not owned by another device, said device further being adapted to perform network
`address translation (NAT) for said first pool of first addresses, wherein ownership of
`said first pool of first addresses changes from said device to said another device if
`there is a failure of said device, wherein if there is said failure of said device, with
`respect to any individual one of said first addresses: said ownership, of a plurality of
`said first addresses of said first pool corresponding to said base address, changes
`from said device to said another device.
`
`’370 Patent 12:50-64 (emphasis added).
`1. Direct Infringement
`
`Case No.: 10-CV-03428-LHK
`ORDER GRANTING IN PART AND DENYING IN PART A10’S MOTION FOR SUMMARY JUDGMENT
`
`11
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`For the Northern District of California
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`United States District Court
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`Case5:10-cv-03428-PSG Document571 Filed06/12/12 Page12 of 36
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`A10 argues that the language of Claim 32, as interpreted by Dr. Rubin, requires “a device
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`that will be able to detect the failure of another device with respect to an individual address.” Id.
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`(citing Mosko Decl. Ex. 11 ¶ 209). According to A10, Dr. Rubin cited no evidence that an AX
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`Series device has ever detected this type of failure in the United States. However, the plain
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`language of Claim 32 does not require the detection of device failure -- the language merely
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`requires the ability to perform certain functions in the event that there is a failure. Moreover, to the
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`extent A10 defers to Dr. Rubin’s understanding of Claim 32’s language, Dr. Rubin states that the
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`device only needs to be “able to detect” the failure. Mosko Decl. Ex. 11 ¶ 209 (emphasis added).
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`Finjan, 626 F.3d at 1204 (“[T]o infringe a claim that recites capability and not actual operation, an
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`accused device ‘need only be capable of operating’ in the described mode.”) (emphasis added).
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`Thus, the Court construes “adapted to” in the context of the ’370 Patent to mean “capable of.”
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`Therefore, Brocade is not required to show “actual operation” of the elements of Claims 18 and 32
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`of the ’370 Patent. Id.
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`According to A10, the