DCT
5:18-cv-00229
Panduit Corp v. Corning Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Panduit Corp. (Delaware)
- Defendant: Corning Optical Communications LLC (North Carolina)
- Plaintiff’s Counsel: THARRINGTON SMITH, L.L.P.; Steptoe & Johnson LLP
- Case Identification: 5:18-cv-00229, W.D.N.C., 02/07/2018
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the judicial district, has a regular and established place of business in the district, and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s methods for manufacturing and selecting high-performance multimode optical fibers infringe patents related to a specific testing metric involving the measurement of pulse delay differentials.
- Technical Context: The technology concerns advanced metrology for multimode optical fiber, aiming to more accurately predict data transmission performance than conventional industry metrics, which is critical for high-speed networks.
- Key Procedural History: The complaint alleges that Defendant was made aware of the patents-in-suit and the alleged infringement during a meeting between the parties on December 20, 2017, which may form the basis for claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2009-06-15 | Priority Date for ’027 and ’115 Patents |
| 2013-01-08 | U.S. Patent No. 8,351,027 Issues |
| 2013 | Date of update for "Corning's Manufacturing Advantage" video |
| 2014-07-16 | U.S. Patent No. 8,488,115 Issues |
| 2017-12-20 | Alleged meeting between Plaintiff and Defendant |
| 2018-02-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,351,027 - Method and Metric For Selecting And Designing Multimode Fiber For Improved Performance (Issued Jan. 8, 2013)
The Invention Explained
- Problem Addressed: The patent asserts that standard industry metrics for multimode fiber (MMF), such as Effective Modal Bandwidth (EMB), are poor predictors of actual channel performance as measured by Bit Error Rate (BER). This means fibers with similar EMB values can have vastly different real-world performance, leading to unexpected network failures ('027 Patent, col. 1:60-col. 2:16).
- The Patented Solution: The invention proposes a new method for selecting higher-performing MMF. The method is based on a 'DMD Shift' metric, which is derived from Differential Mode Delay measurements. It involves measuring the peak delay of light pulses sent through the fiber at different radial offsets from the core's center, subtracting the delay at a smaller radius from the delay at a larger radius, and then selecting the fibers for which this calculated difference is a negative number ('027 Patent, Abstract; col. 4:16-30). A negative result, or 'left shift,' is taught to correlate with better BER performance ('027 Patent, col. 4:5-15, Fig. 5).
- Technical Importance: This selection method is presented as a way to more reliably identify MMF capable of supporting high-speed data transmission (e.g., 10 Gb/s Ethernet) over long distances, providing a more accurate performance predictor than prior art metrics ('027 Patent, col. 2:5-16).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶21).
- The essential elements of claim 1 are:
- A method for selecting multimode optical fiber comprising:
- measuring the peak delay for pulses traveling through different radii of a number of multimode optical fibers;
- subtracting the peak delay at a first radius from the peak delay at a second, larger radius; and
- choosing for use those optical fibers where the result of the subtraction is a negative number.
- The complaint reserves the right to assert other claims (Compl. ¶18).
U.S. Patent No. 8,488,115 - Method and Metric For Selecting And Designing Multimode Fiber For Improved Performance (Issued Jul. 16, 2013)
The Invention Explained
- Problem Addressed: The ’115 Patent, a continuation of the application that led to the ’027 Patent, addresses the same technical problem: the unreliability of conventional metrics like EMB in predicting the BER performance of multimode fiber in high-speed networks (’115 Patent, col. 1:12-col. 2:20).
- The Patented Solution: The solution is functionally identical to that of the ’027 Patent, proposing a selection method based on the 'DMD Shift' metric. The key linguistic difference in the asserted claim is the use of the term pulse delay instead of peak delay. The method still involves measuring this delay at two different radii, subtracting the inner-radius delay from the outer-radius delay, and selecting fibers that yield a negative result (’115 Patent, Abstract; col. 4:19-33).
- Technical Importance: As with the parent patent, this method is positioned as a superior technique for selecting or designing MMF to ensure high performance and reliability in data center and enterprise networks (’115 Patent, col. 2:5-15).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶33).
- The essential elements of claim 1 are:
- A method for selecting multimode optical fiber comprising:
- measuring the pulse delay for pulses traveling through different radii of a number of multimode optical fibers;
- subtracting the pulse delay at a first radius from the pulse delay at a second, larger radius; and
- choosing for use those optical fibers where the result of the subtraction is a negative number.
- The complaint reserves the right to assert other claims (Compl. ¶30).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are not end-user products but rather the methods that Defendant allegedly uses to "manufacture, use, offer for sale, or sell" multimode optical fibers (Compl. ¶¶14, 18). The complaint specifically identifies the selection processes for "at least Defendant’s OM4+ fiber" as infringing (Compl. ¶¶26, 38).
Functionality and Market Context
- The complaint alleges that Defendant, as part of its manufacturing and quality control, uses measurements to select and/or classify its optical fibers (Compl. ¶16). It is alleged that these processes involve measuring the "peak delay and/or pulse delay" for light pulses traveling at different radii within the fibers to "determine the design of, and to select, the fiber optic materials" (Compl. ¶16). The complaint cites a Corning marketing video stating that "optical and physical parameters are measured to verify performance against specifications" as evidence of this testing (Compl. ¶16). The OM4+ designation suggests these are high-performance fibers intended for demanding, high-bandwidth applications.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’027 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for selecting multimode optical fiber for use in a communications network comprising: | Defendant is alleged to select fiber optic materials, including multimode optical fibers (Compl. ¶22). | ¶22 | col. 4:16-17 |
| measuring the peak delay for pulses traveling through different radii of a number of multimode optical fibers; | Defendant is alleged to measure the peak delay for pulses traveling through different radii of a number of multimode optical fibers (Compl. ¶23). | ¶23 | col. 4:17-19 |
| subtracting the peak delay at a first radius of each multimode optical fiber from the peak delay at a second, larger radius of each multimode fiber; | After measuring, Defendant is alleged to subtract the peak delay at a first radius from the peak delay at a second, larger radius (Compl. ¶24). | ¶24 | col. 4:20-23 |
| and choosing for use in a communications network those optical fibers in which the result of subtracting...is a negative number. | Defendant is alleged to choose fibers where the subtraction results in a negative number. Specifically, its OM4+ fiber is alleged to exhibit this negative p-shift profile (Compl. ¶¶25-26). | ¶25-26 | col. 4:24-30 |
’115 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for selecting multimode optical fiber for use in a communications network comprising: | Defendant is alleged to select fiber optic materials, including multimode optical fibers (Compl. ¶34). | ¶34 | col. 4:19-20 |
| measuring the pulse delay for pulses traveling through different radii of a number of multimode optical fibers; | Defendant is alleged to measure the pulse delay for pulses traveling through different radii of a number of multimode optical fibers (Compl. ¶35). | ¶35 | col. 4:20-22 |
| subtracting the pulse delay at a first radius of each multimode optical fiber from the pulse delay at a second, larger radius of each multimode fiber; | After measuring, Defendant is alleged to subtract the pulse delay at a first radius from the pulse delay at a second, larger radius (Compl. ¶36). | ¶36 | col. 4:23-26 |
| and choosing for use in the communications network those optical fibers in which the result of subtracting...is a negative number. | Defendant is alleged to choose fibers where the subtraction results in a negative number. Specifically, its OM4+ fiber is alleged to exhibit this negative p-shift profile (Compl. ¶¶37-38). | ¶37-38 | col. 4:27-33 |
Identified Points of Contention
- Evidentiary Questions: A central issue will be whether Plaintiff can produce evidence that Defendant’s internal processes perform the specific "subtracting" and "choosing" steps as claimed. The complaint relies on general statements about performance verification (Compl. ¶16), and the case may depend on what is revealed in discovery about Defendant’s actual quality control algorithms and selection criteria.
- Technical Questions: The complaint alleges that for Defendant's OM4+ fiber, a negative delay is observed when comparing the "low radial region 1-3 microns and high radial region 15-17 microns" (Compl. ¶¶26, 38). While the claims are not limited to these exact radii, a potential dispute may arise over whether Defendant's specific test parameters and methods map onto the claimed steps.
- Divided Infringement Questions: The complaint frequently alleges infringement by "Defendant, and/or others under Defendant's direction and control or who are in a joint enterprise" (e.g., Compl. ¶15, ¶16). This language suggests the possibility that not all steps of the claimed methods are performed by Corning itself, which could raise questions of divided infringement and the need to prove direction or control.
V. Key Claim Terms for Construction
The Term: "peak delay" (’027 Patent, claim 1) vs. "pulse delay" (’115 Patent, claim 1)
Context and Importance: The distinction, or lack thereof, between these two terms is fundamental, as they are the only substantive difference between the asserted independent claims of the two patents. The construction will determine if the patents have different scopes and whether evidence of measuring one type of delay infringes a claim directed to the other.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "pulse delay" in the ’115 Patent could be interpreted more broadly to encompass any temporal measurement of a pulse, with "peak delay" being just one specific example. The specification for the ’115 patent itself refers to "maximum peak pulse delays" (’115 Patent, col. 4:21-22), which could suggest "peak delay" is a species of the genus "pulse delay."
- Evidence for a Narrower Interpretation: A party could argue the terms are distinct and mutually exclusive. Alternatively, it could be argued that in the context of the specification, the terms are used interchangeably to refer to the same concept. Both patents describe determining delay from "DMD waveforms" (’027 Patent, Fig. 2; ’115 Patent, Fig. 2) and discuss measuring the delay of the pulse peak, suggesting that "pulse delay" in this context implicitly means "peak delay."
The Term: "choosing for use in a communications network" (’027 and ’115 Patents, claim 1)
Context and Importance: This active step is the final limitation of the method claims. Proving infringement requires showing that Defendant not only performs the measurement and calculation but also uses that specific negative result as a basis for a "choosing" action. Practitioners may focus on this term because it links the technical measurement to a commercial decision.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue this term covers any act of sorting, binning, or classifying fibers based on the test result, such as designating certain fibers as "OM4+" or otherwise suitable for high-performance networks. The abstract notes the metric can be used to "select, sort, or verify fiber performance" (’027 Patent, Abstract).
- Evidence for a Narrower Interpretation: Defendant may argue that this requires a more direct act of selection for a specific network application or sale, rather than a general internal quality control or classification step. The argument could be that a general sorting process is not "choosing for use in a communications network" until a specific use is contemplated.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both active inducement and contributory infringement (Compl. ¶¶19-20, 31-32). The factual basis for the knowledge element of these claims is an alleged meeting on December 20, 2017, where Plaintiff "explained to Defendant" the patents and the alleged infringement (Compl. ¶19, ¶31).
- Willful Infringement: Willfulness is alleged based on the same pre-suit knowledge from the December 20, 2017 meeting. The complaint asserts that infringement has continued despite this notice, and the prayer for relief requests a declaration of an exceptional case and an award of enhanced damages and attorneys' fees (Compl. ¶¶D, E, Prayer for Relief).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of process verification: what factual evidence can Plaintiff obtain to prove that Defendant’s internal manufacturing and quality control systems perform the specific "subtracting" and "choosing" steps required by the claims, and that this choice is based on the calculated negative result?
- The case will involve a critical issue of claim construction: how will the court define "peak delay" from the ’027 Patent and "pulse delay" from the ’115 Patent? The determination of whether these terms are synonymous or have distinct technical meanings will be central to the infringement analysis for both patents.
- A potential legal hurdle will be the question of single-actor infringement: given the complaint's broad language about actions by Defendant "and/or others," the case may turn on whether all steps of the claimed method are performed by a single entity. If not, Plaintiff will face the challenge of proving that Defendant directs or controls the actions of any third parties to a degree sufficient to establish liability for divided infringement.