UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN NETWORK DEVICES, Inv. No. 337-TA-944 RELATED SOFTWARE AND COMPONENTS THEREOF (1) Order No. 17 Pursuant to Commission Rule 210.18, complainant Cisco Systems, Ine. (“Cisco”) filed a Motion for Summary Determination That Arista Should Be Precluded by the Doctrine of Assignor Estoppel From Invalidating the Patent (U.S. Pat. No. 7,340,597) That Its Founder, David Cheriton, Invented and Assigned While Employed by Cisco, and a memorandum in support thereof. Motion Docket No. 944-34. Respondent Arista Networks, Inc. (“Arista”) opposed the motion, and the Commission Investigative Staff (“Staff”) filed a response in support, of the motion. The Commission Rules provide that “[aJny party may move with any necessary supporting affidavits for a summary determination in its favor upon all or part of the issues to be determined in the investigation.” 19 C.F.R. § 210.18(a). Summary determination “shall be rendered if pleadings and any depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a summary determination as a matter of law.” 19 CFR § 210.18(b).The equitable doctrine of assignor estoppel “precludes a patent assignor and those in privity with the assignor from contending that the patent is a nullity.” Shamrock Techs., Inc. v. Medical Sterilization, Inc., 903 F.2d 789, 793 (Fed. Cir. 1990) (citing Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1224 (Fed. Cir. 1988), cert. dismissed, 487 U.S. 1265 (1988)). “What constitutes ‘privity’ varies, depending on the purpose for which privity is asserted.” Id. (iting American Mach, Co. v. Everedy Mach, Co., 35 F.2d 526, 528 (E.D. Pa. 1929)). More specifically, “[p]rivity, like the doctrine of assignor estoppel itself, is determined upon a balance of the equities.” Jd, It is “dictated by the relationship between the inventor and [the alleged infringer] in light of the act of inftingement. The closer that relationship, the more the equities will favor applying the doctrine to [the alleged infringer.|” Id. In support of the pending motion, Cisco argues as follows: David Cheriton, the sole named inventor of the °597 patent [U.S. Patent No. 7,340,597], assigned his rights to the °597 patent to Cisco for valuable consideration and with a pledge “generally to do everything possible to aid [Cisco] . . . in obtaining and enforcing patents for said invention.” ‘Three months later, Cheriton left Cisco and founded Arista. With his oversight and direction, Arista designed and sold competing network switches that infringe the "597 patent. Arista is in privity with Cheriton—its founder, former Chief Scientist, and one of its largest shareholders. Despite having sworn to the validity of the patents in his inventor’s oath to the United States Patent and Trademark Office, Arista now seeks to invalidate that very invention in order to justify its infringement. Assignor estoppel forbids such opportunistic positioning: Arista may not successfully contend that the *597 patent that Cheriton assigned to Cisco is invalid. Mot. at 2. The Staff takes a position similar to that of Cisco: Dr. Cheriton is the inventor of the *597 patent that he assigned to Cisco. He then founded Arista, contributing both his money and his expertise to develop products now accused of infringement. Under the equitable doctrine of assignor estoppel, Arista is barred from challenging the validity or the subject-matter eligibility, of the °597 patent.Staff Resp. at 11. Arista argues in opposition: No matter how Cisco tries to couch the issue, the reasoning in its motion is impossible to entertain as a matter of pure law. Cisco urges this Court to take an estoppel that exists arguendo against Dr. Cheriton as an individual{], and expand it for fact-based, equitable reasons to bind the entirety of Arista, which is today a publicly-traded, $5 billion company. As discussed infra, the facts of this case support no such expansion. But the very nature of the equitable inquiry makes the entire issue unfit for resolution for summary determination, According to the Federal Circuit, expansion of an estoppel to an inventor's employer may occur only upon a detailed factual inquiry, which a court undertakes in its role as weigher of equities. Opp'n at 14. Arista also argues: It is not enough to note, as Cisco's Motion does, that Dr. Cheriton left Cisco and subsequently founded Arista. It is necessary to closely evaluate the entire context of the alleged infringement, and to determine, from the full factual record, whether the inventors’ role in the accused infringing acts was so extensive as to place them in “privity” with their employer as to the infringement. In the words of the Federal Circuit, the question is whether the company “availed itself of the inventor's ‘knowledge and assistance’ to conduct infringement.” Opp’n at 15 (quoting Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821, 839 (Fed. Cir 1991). ‘Arista takes the position that there exist “myriad fact questions” precluding a grant of summary determination on the issue of assignor estoppel. See Opp’n at 17, 18-23. Specifically, Arista argues that “the facts surrounding the design process for the accused devices are hotly contested.” Id. at 17. Arista further argues: At the summary determination phase, Arista is entitled to have all evidence viewed in the light most favorable to it—ie., with an eye towards rejecting Cisco’s theorizing—and all inferences in its favor. Applying that standard, Arista has demonstrated that the evidence shows 3that Dr. Cheriton did not design ProcMgr or oversee its design, and thus that Arista did not avail itself of the inventors’ “knowledge and assistance” to conduct infringement. Id, at 18. Having considered the arguments of the parties, as well as the evidence submitted in conjunction with the pending motion, it is the determination of the administrative law judge that Cisco has failed to show it is entitled to summary determination as a matter of law. In particular, the parties’ conflicting evidence as to whether or not the relevant facts show Dr. Cheriton in privity with Arista for purposes of applying assignor estoppel demonstrates that summary determination is not warranted under the circumstances of this investigation, Inasmuch as ruling on the issue of assignor estoppel requires a balancing of the equities with the evidence viewed in the light most favorable to Arista, summary determination cannot be granted at this time. Accordingly, Motion No. 944-34 is denied. David P-Shaw Administrative Law Judge Issued: August 3, 2015CERTAIN NETWORK DEVICES, RELATED SOFTWARD AND COMPONENTS THEREOF (): INV. NO. 337-TA-944 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER NO. 17 has been served by hand upon the Commission Investigative Attorney, Andrew Beverina, Esq., and the following parties as FZ Lisa R. Barton, Secretary U.S. International Trade Commission: 500 E Street SW, Room 1124 Washington, DC 20436 indicated, on FOR COMPLAINANT CISCO SYSTEMS, INC. D. Sean Trainor, Esq. KIRKLAND & ELLIS LLP (_) Via Hand Delivery (_) Express Delivery 655 15th Street, NW ( Via First Class Mail Washington, DC 20005 (+) Other: FOR RESPONDENT ARISTA NETWORKS, INC. Lauren A. Degnan, Esq. () Via Hand Delivery FISH & RICHARDSON P.C. (_) Express Delivery 1425 K Street, NW (A Via Ze Class Mail Lth Floor ( ) Othe Washington, DC 20005