UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN NETWORK DEVICES, Iny. No. 337-TA-944 RELATED SOFTWARE AND COMPONENTS THEREOF (1) Order No. 13, Pursuant to Commission Rule 210.18, respondent Arista Networks, Ine. (“Arista”) filed a Motion for Summary Determination That Claims 6-9 of U.S. Patent No. 6,741,592 (“the *592 patent”) Are Indefinite and Therefore Invalid Under 35 U.S.C. § 112 Because They Recite a Mixed Method-Apparatus Claim, and a memorandum in support thereof. Motion Docket No. 944-36. Complainant Cisco Systems, Inc. (“Cisco”) opposed the motion, and the Commission Investigative Staff (“Stafl”) filed a response opposing the motion. The Commission Rules provide that “[a]ny 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(2). 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 CPR. § 210.18(b). Under 35 U.S.C. § 112, a patent claim is invalid for indefiniteness if, when read in light of the specification and prosecution history, it “fail[s] to inform, with reasonable certainty, thoseskilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Ine., 134 S.Ct. 2120, 2124 (2014). A claim that recites both an apparatus and a method of using that apparatus is indefinite because it “is not sufficiently precise to provide competitors with an accurate determination of the ‘metes and bounds’ of protection involved.” /PXL Holdings, LLC. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (citation omitted). The use of a gerund (eg, transmitting, receiving) in claim language often indicates a method step, but that is not a hard and fast rule. Compare Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339 (Ped, Cir. 2011) (finding “transmitting the trellis encoded frames” to be a method step) with Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (finding that “determining” was functional language that did not render the claim indefinite), Moreover, if a claim is determined to be a mixed method-apparatus claim, a court may not rewrite the claim to preserve its validity. Rembrandt, 641 F.3d at 1339. Independent claim 6 of the $92 patent reads as follows: 6. A switch, comprising: a promiscuous port for receiving incoming packets from an external network, and for transmitting outgoing packets to said external network; and a plurality of isolated ports, a selected isolated port of said plurality of isolated ports connected to a selected private network, said selected isolated port receiving packets from said selected private network and transmitting packets onto said selected private network, said selected isolated port exchanging packets with said promiscuous port through a path inside said switch, and said isolated port not exchanging packets with another isolated port. Mot, Ex. 1 (°592 patent). ‘Arista argues that claim 6 of the °592 patent, as well as dependent claims 7-9, “are invalid as a matter of law because they claim both an apparatus and a method, contrary to established Federal Circuit precedent.” Mem. at 1. It is argued that “[eJlaim 6 requires a networking =device—a switch—having vatious required elements,” and that “it also requires using the switch to perform various steps, including ‘receiving,’ ‘transmitting’ and ‘exchanging’ packets.” Id. It is further argued: “In light of their facial deficiencies, Cisco should not have asserted claims 6-9 in the first place and should have withdrawn them . . ..” Id. In opposition, Cisco argues that “the challenged claims of the °592 Patent do not call for method steps to be performed by a user, but are instead like the claims at issue in the many cases rejecting IPXT. indefiniteness challenges directed at system ot apparatus claims describing capabilities or configuration of the claimed invention using functional language.” Opp’n at 8. It is argued that “{tJhe challenged claims do not require performance of a method step, and are easily understood by one of ordinary skill in the art.” Jd. Cisco references the claim 6 element “isolated port” as an example: The term “selected isolated port” . . . is a structural component of the claimed switch. The phrases “receiving packets from said sclected private network,” “transmitting packets onto said private network,” “exchanging packets with said promiscuous port,” and “not exchanging packets with another isolated port” describe the capability of the isolated port to receive and transmit packets to and from the private network and the promiscuous port but not exchange packets with other isolated ports. ‘The claim does not require that the port actually be actively engaged in receiving, transmitting or exchanging packets to infringe, and one of skill in the art would understand claim 6 to describe only the capabilities of the isolated port in the claimed switch, not that the port be actively receiving, transmitting or exchanging packets. In. these circumstances, the authorities uniformly confirm that such claim language—reciting structure and the function or capability of structure so configured using active language—does not suggest that a device or a user must actually perform such functions in order to infringe the claim, and is sufficiently definite under the demands of 35 U.S.C. § 112. Opp’n at 9 (citations omitted; emphasis original). Cisco further argues: “Although Arista cannot succeed on its motion as a matter of law ... . there is, at a minimum, a substantial issue of material fact as to whether one of ordinaryskill in the art would find the claims at issue to be indefinite.” Opp’n at 16. Indeed, Cisco offers ‘testimony from its technical expert, Dr. Keven Jeffay, in support of the proposition that one of ordinary skill in the art would understand that the claim elements at issue claim structures in terms of their capabilities, and are not method steps. See id. Ex. 1 (Jeffay Decl.). Cisco notes that “Arista has not provided any opposing expert opinion in connection with its motion,” and argues that “Arista’s motion should be denied for this additional reason.” Id. at 17. ‘The Staff argues: “All of the claims indisputably claim a ‘switch’ . .. the remaining issue is whether the claims also recite a method, and the answer, for purposes of summary determination, is that there is a genuine issue of material fact in dispute on this point.” Staff Resp. at 5. The Staff further argues: Perhaps claims 6-9 claim both a method and an apparatus and perhaps the use of “for” in one part of the claim but not another means Cisco was not claiming a capability. But the ultimate question posed by Rembrandt and IPXL is whether a person of ordinary skill in the art would understand when the claims were being inftinged. That is a factual issue to be resolved through expert testimony and so summary determination is not appropriate. Id. at 5-6. Inasmuch as there remains a genuine issue of material fact as to whether or not a person of ordinary skill in the art would find the claims at issue to be indefinite, it is the determination of the administrative law judge that Arista has failed to show it is entitled to summary determination as a matter of law. Motion No. 944-36 is denied, an David P. Shaw ‘Administrative Law Judge Issued: July 28, 2015CERTAIN NETWORK DEVICES, RELATED SOFTWARD AND- COMPONENTS, THEREOF (1): INV. NO. 337-TA-944 PUBLIC CERTIFICATE OF SERVICE I, Lisa R. Barton, hereby certify that the attached ORDER NO. 13 has been served by hand upon the Commission Investigative Attorney, Andrew Beverina, Esq., and the following parties as UL 29 208 indicated, on Lisa R. Barton, Secretary USS. International Trade Commission 500 E Street SW, Room 1124. Washington, DC 20436 FOR COMPLAINANT CISCO SYSTEMS, INC. D. Sean Trainor, Esq. (.) Via Hand Delivery KIRKLAND & ELLIS LLP (_ ) Express Delivery 655 15th Street, NW CW Wia 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 (9 Via First Class Mail 11th Floor (_) Other: Washington, DC 20005