NEC Corp v. Xtera Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: NEC Corporation (Japan)
  • Defendant: Xtera, Inc. (Delaware); MC Assembly LLC (Delaware)
  • Plaintiff’s Counsel: Fish & Richardson P.C.
• Case Identification: 1:18-cv-00608, D. Del., 04/22/2018
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because both Defendants are Delaware corporations and therefore reside in the district. The complaint also notes that Defendant Xtera has previously availed itself of the forum by filing its own patent infringement lawsuits in the district.
• Core Dispute: Plaintiff alleges that Defendants’ submarine telecommunication systems, specifically the Nu-Wave Optima product line, infringe a patent related to dynamically controllable optical band-pass filters.
• Technical Context: The technology concerns optical wavelength multiplexing systems used in high-capacity fiber-optic networks, particularly for long-haul submarine telecommunications, a critical infrastructure for global data transport.
• Key Procedural History: The complaint notes that Defendant Xtera has previously litigated its own patents in the District of Delaware, which may be used to support arguments for personal jurisdiction.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,244,131 - Optical Wavelength Multiplexing Device, Optical Wavelength Dividing Device, Optical Wavelength Dividing Multiplexing Device, and Method of Controlling Optical Band-pass Filter, issued August 14, 2012

The Invention Explained

• Problem Addressed: The patent’s background section describes a limitation in conventional optical communication systems where optical band-pass filters had a fixed center wavelength and band width ('131 Patent, col. 2:58-60). This rigidity made it impossible to optimize the filter's properties for different transmission distances or fiber characteristics and could allow improper signals from non-conforming network components to pass through, potentially disrupting the entire system ('131 Patent, col. 2:10-22).
• The Patented Solution: The invention is an optical device featuring a tunable optical band-pass filter whose characteristics can be changed dynamically. The device includes a "storage portion" that holds "wavelength band control information" and a "control portion" that uses this information to set the filter's center wavelength and band width ('131 Patent, Abstract). This allows the filter to be adapted for specific deployment scenarios and to block signals that do not conform to the system's required parameters, as illustrated in system diagrams for both multiplexing (transmitting) and dividing (receiving) applications ('131 Patent, FIG. 1, FIG. 2).
• Technical Importance: This technology provided greater design flexibility for optical networks, enabling performance optimization and enhancing system reliability by preventing errors caused by mismatched equipment (Compl. ¶15; '131 Patent, col. 9:36-45).

Key Claims at a Glance

• The complaint asserts independent claims 1 (an optical wavelength multiplexing device), 13 (an optical wavelength dividing device), and 19 (a method of controlling an optical band-pass filter) (Compl. ¶20).
• Independent Claim 1 recites the core elements of the device:
  • A multiplexing portion that outputs an optical multiplex signal.
  • An optical band-pass filter that receives the signal and is capable of changing its center wavelength and band width.
  • A storage portion that stores "wavelength band control information" specifying the center wavelength and band width.
  • A control portion that controls the filter’s center wavelength and band width based on the stored information.
• Independent Claim 13 recites a similar device for dividing optical signals, comprising the tunable filter, storage portion, and control portion, along with a "dividing portion" that receives the output from the filter (Compl. ¶21).
• Independent Claim 19 recites a method comprising the steps of determining the "wavelength band control information" and controlling the filter based on that information (Compl. ¶21).

III. The Accused Instrumentality

Product Identification

The complaint identifies Defendants' "submarine telecommunication systems" generally, and the "Nu-Wave Optima" product specifically, as the Accused Products (Compl. ¶18, ¶20).

Functionality and Market Context

The complaint alleges that the Accused Products are used for optical wavelength multiplexing in submarine telecommunications (Compl. ¶18). It asserts that these products incorporate the functionality of the patented invention, including a controllable optical band-pass filter, a storage portion for control information, and a control portion to dynamically adjust the filter (Compl. ¶21). The complaint positions the dispute in the context of a competitive market for high-reliability broadband communications, in which it alleges Plaintiff NEC is a recognized leader (Compl. ¶16).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'131 Patent Infringement Allegations

The complaint alleges that the Accused Products, such as the Nu-Wave Optima, meet every limitation of at least claims 1, 13, and 19 of the ’131 patent (Compl. ¶20). The complaint’s narrative theory for Claim 1 asserts that the accused systems include (1) a multiplexing portion, (2) an optical band-pass filter capable of changing its center wavelength and band width, (3) a storage portion for control information, and (4) a control portion that uses the information to adjust the filter (Compl. ¶21). The complaint references an "exemplary claim chart" as Exhibit E demonstrating this infringement; however, this exhibit was not included with the publicly filed complaint and is therefore unavailable for analysis (Compl. ¶21). Without this exhibit, the complaint itself does not specify which particular hardware or software components of the Nu-Wave Optima are alleged to perform the functions of each claim element.

Identified Points of Contention

• Technical Questions: A primary factual question for discovery will be to identify the specific components within the Nu-Wave Optima that allegedly correspond to the claimed "storage portion" and "control portion." The complaint does not provide public-facing evidence (such as datasheets or technical manuals) to substantiate how the accused system implements the claimed control loop.
• Scope Questions: The dispute may raise the question of whether the accused system's method for determining filter settings falls within the patent's scope. For example, does the accused system's functionality align with the patent's teaching that "wavelength band control information" is based on the "type of the installed multiplexing portion," or does it operate based on different principles that may fall outside a reasonable construction of that term? ('131 Patent, col. 4:45-49).

V. Key Claim Terms for Construction

"wavelength band control information"

• Context and Importance: This term is foundational to the invention, as it defines the input that enables the filter's dynamic control. Its construction will be critical to determining the boundary between the patented invention and other methods of controlling optical components. Practitioners may focus on this term because its scope—whether it is limited to pre-set data or includes real-time network commands—will likely be a central point of the infringement analysis.
• Intrinsic Evidence for a Broader Interpretation: The specification functionally describes the term as "information to control the center wavelength and the band width of the band-pass filter" ('131 Patent, col. 4:37-40). This language could support a broad construction covering any data that achieves the specified control function.
• Intrinsic Evidence for a Narrower Interpretation: An embodiment in the specification states the information is "determined based on the multiplexing portion 3 (e.g., based on the type of the installed multiplexing portion 3)" ('131 Patent, col. 4:45-49). This language could be used to argue for a narrower construction, limiting the term to information derived from the device's specific hardware configuration.

"storage portion"

• Context and Importance: The existence and nature of a "storage portion" is a required element of the asserted device claims. The infringement question will hinge on whether any component in the Accused Products can be properly characterized as such.
• Intrinsic Evidence for a Broader Interpretation: The claims do not limit the "storage portion" to a specific type of memory (e.g., persistent vs. volatile). This could support a reading that covers any memory, including RAM or registers that temporarily hold control parameters.
• Intrinsic Evidence for a Narrower Interpretation: The specification describes the "storage portion" as being "within the device," either as part of the control circuit or in a "different area within the optical wavelength multiplexing device" ('131 Patent, col. 4:41-45). This could support an argument that the term requires a distinct, dedicated storage element within the physical device, potentially excluding transient data held in a general-purpose processor.

VI. Other Allegations

Indirect Infringement

The complaint alleges active inducement, asserting that Defendant Xtera encourages and instructs infringement through product documentation, training, and technical support (Compl. ¶25). It also alleges that Xtera directs its contract assembler, Defendant MCA, to build the infringing systems (Compl. ¶24). Contributory infringement is alleged on the basis that the infringing technology is a material part of the invention, is specially adapted for infringement, and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶27).

Willful Infringement

Willfulness is primarily alleged based on post-suit knowledge, stating that Defendants’ infringement continues despite notice provided by the service of the complaint (Compl. ¶22). The complaint also alleges on "information and belief" that Defendants knew or should have known of the patent pre-suit, citing Defendants' "great familiarity" with NEC and its market leadership (Compl. ¶28).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of claim construction: can the term "wavelength band control information," which the patent links to the device’s hardware type in an exemplary embodiment, be broadly construed to cover dynamic control parameters that may be generated or transmitted by a separate network management system in the accused product?
• A key evidentiary question will be one of technical mapping: what proof will emerge in discovery to show that the accused Nu-Wave Optima system contains discrete components that function as the claimed "storage portion" and "control portion" that operate on the "wavelength band control information" in the manner required by the claims? The complaint's lack of public-facing technical evidence makes this a central factual hurdle for the plaintiff.