CAFC Affirms ITC Enablement Ruling Under ‘Infrequently Applied’ Anderson Test

On April 20, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion in FS.com v. International Trade Commission affirming the ITC’s determination that fiber optic cable distributor FS.com violated 19 U.S.C. § 1337 by importing goods infringing upon patent claims owned by Corning Optical Communications. This relatively short Federal Circuit decision dealt mainly with FS.com’s enablement arguments on appeal, which the appellate court nixed after finding that skilled artisans would understand an inherent upper limit to allegedly open-ended claims on fiber optic connection densities.

Section 337 Proceeding Leads to CDO Against FS.com’s Fiber Optic Imports

Corning’s Section 337 complaint alleged that FS.com had infringed upon Corning’s patents through the importation of high-density fiber optic equipment into the U.S. for sale. Of the four patents originally asserted by Corning, the ITC rebuffed FS.com’s arguments that claims of two patents were insufficiently enabled under 35 U.S.C. § 112: U.S. Patent No. 9020320, High Density and Bandwidth Fiber Optic Apparatuses and Related Equipment and Methods; and U.S. Patent No. 8712206, High-Density Fiber Optic Modules and Module Housings and Related Equipment. Both patents relate generally to fiber optic technology used in data centers, and the ‘320 patent claims a chassis housing fiber optic equipment that supports “a fiber optic density of at least ninety-eight (98) fiber optic connections per U space.” After finding a Section 337 violation, the ITC entered a cease-and-desist order (CDO) against FS.com’s importation of the accused products.

On appeal, FS.com renewed its lack of enablement arguments against the above claim language and another claim in the ‘320 patent reciting “at least one hundred forty-four (144) fiber optic connections per U space.” As construed by the administrative law judge (ALJ) conducting the Section 337 investigation at the ITC, the plain and ordinary meaning of “U space” is a rack unit of a standardized measurement of 1.75 inches in height within standardized racks measuring either 19 inches or 23 inches. Because the claim language is open-ended, FS.com argued that the challenged claims were not enabled by the specification, which only disclosed a chassis supporting up to 144 fiber optic connections.

Open-Ended Claims with Inherent Upper Limit Can Be Enabled Under Anderson

The Federal Circuit reviewed the ITC’s analysis of FS.com’s enablement arguments under the two-part test set out by the appellate court’s 2007 decision in Anderson Corp. v. Fiber Composites LLC. Although the appellate court acknowledged that the Anderson test is infrequently applied, both FS.com and Corning agreed that the test governed their legal dispute. Under Anderson, “[o]pen-ended claims are not inherently improper” and “they may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit.” (emphasis added)

FS.com’s appeal focused on the ITC’s bare statement in its Section 337 ruling that “some inherent limit exists” to Corning’s fiber optic chassis claims without expressly identifying that upper limit concretely. However, the Federal Circuit found substantial evidence supporting the ITC’s finding that densities above 144 fiber optic connections per U space would have been technologically infeasible as of the August 2008 priority date of the ‘320 patent. The written description of the ‘320 patent includes a table disclosing 144 fiber optic connections as the maximum achievable density for Lucent Connector-type (LC) simplex and duplex adapters as of the priority date. While FS.com had introduced evidence of Mini Duplex Connectors-type (MDC) duplex adapters capable of achieving densities up to 432 connections per U space, such adapters were not developed until 2019 and do not prove lack of enablement as of the August 2008 priority date, the Federal Circuit held.

Also supporting the ITC’s finding that the ‘320 patent’s claims were enabled was expert testimony offered by Corning during the Section 337 proceeding. While Corning’s expert acknowledged that LC-type adapters can support more than 144 fiber optic connections when used in conjunction with another adapter, he further testified that no commercial product using LC-type adapters alone has been able to achieve greater than 144 fiber optic connections.

CAFC Affirms Claim Construction Encompassing Multiple Module Front Openings

The Federal Circuit also rejected FS.com’s appeal of the ITC’s construction of the claim term “a front opening” from claim 14 of Corning’s ‘206 patent reciting a fiber optic module. FS.com had argued that the claim term was limited to a single front opening, which would have caused its own multiple-opening modules to evade Corning’s infringement allegations based on claim 14. However, the Federal Circuit did not credit FS.com’s argument that the recitation of multiple “front openings” in an unasserted claim from the ‘206 patent did not show the patentee’s clear intent to limit claim 14 to a single module opening. Further, diagrams attached to the ‘206 patent’s specification depicted a front opening subdivided into multiple openings, giving the appellate court “no reason to depart from the general rule that ‘a front opening’ encompasses one or more openings.”

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