NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

SPEX TECHNOLOGIES, INC.,

Plaintiff-Appellant

v.

APRICORN,

Defendant-Cross-Appellant

______________________

2020-2210, 2020-2253

______________________

Appeals from the United States District Court for the 

Central District of California in No. 2:16-cv-07349-JVSAGR, Judge James V. Selna.

______________________

Decided: October 14, 2022

______________________

MARC A. FENSTER, Russ August & Kabat, Los Angeles, 

CA, argued for plaintiff-appellant. Also represented by 

PAUL ANTHONY KROEGER, BENJAMIN T. WANG.

 OLIVER RICHARDS, Fish & Richardson P.C., San Diego, 

CA, argued for defendant-cross-appellant. Also represented by DAVID M. HOFFMAN, Austin, TX.

______________________

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2 SPEX TECHNOLOGIES, INC. v. APRICORN

Before MOORE, Chief Judge, DYK and PROST, Circuit 

Judges.

PROST, Circuit Judge.

SPEX Technologies, Inc. (“SPEX”) sued Apricorn in the 

U.S. District Court for the Central District of California for 

infringing U.S. Patent No. 6,088,802 (“the ’802 patent”). 

During claim construction, the district court held that 

claims 6, 7, 23, and 25 of the ’802 patent were invalid as 

indefinite. SPEX thereafter tried claims 11 and 12 to a 

jury, and the jury found that Apricorn infringed those 

claims. After the verdict, Apricorn moved for judgment as 

a matter of law (“JMOL”) that it did not infringe. SPEX 

opposed; it also argued that if the district court were to 

grant the motion, it should at least give SPEX a new trial. 

But the district court granted JMOL of noninfringement 

and denied SPEX’s request for a new trial.

SPEX appeals the noninfringement JMOL, new-trial 

denial, and indefiniteness ruling. Apricorn conditionally 

cross-appeals. We affirm the noninfringement JMOL and 

new-trial denial, reverse the indefiniteness ruling, dismiss 

Apricorn’s conditional cross-appeal as moot, and remand 

for proceedings consistent with this opinion.

BACKGROUND

I

The ’802 patent concerns a “single integral peripheral 

device” that can perform (1) “security operations” on data 

stored in (or provided by or to) a “host computing device” 

and (2) a “defined interaction” with the host computing device, such as providing functionality like data storage, data 

communication, or user identification—what the patent 

calls “target functionality.” See ’802 patent col. 3 ll. 17–36, 

col. 4 l. 49–col. 5 l. 4. In plain terms, the ’802 patent’s peripheral device can perform security operations and another function—all in one device.

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SPEX TECHNOLOGIES, INC. v. APRICORN 3

As relevant here, the ’802 patent’s peripheral device 

can perform security operations “in-line”—i.e., “between 

the communication of data to or from the host computing 

device and the performance of the target functionality.” Id.

at col. 6 ll. 2–7; accord id. at Abstract. An “interface control 

device” ensures that data communicated between the host 

computing device and the target functionality undergoes 

security operations as appropriate.

Claim 11 contains a “means for mediating” element relating to this in-line concept (emphasis added):

11. A peripheral device, comprising:

security means for enabling one or more security 

operations to be performed on data;

target means for enabling a defined interaction 

with a host computing device;

means for enabling communication between the security means and the target means;

means for enabling communication with a host 

computing device; and

means for mediating communication of data between the host computing device and the target 

means so that the communicated data must first 

pass through the security means.

II

A

During claim construction, the parties and district 

court agreed that the “means for mediating” element was a 

means-plus-function element subject to 35 U.S.C. § 112 

¶ 6,1 which allows expressing a claim element as a “means 

1 Congress has redesignated § 112 ¶¶ 2 and 6 as, respectively, § 112(b) and (f). See Leahy-Smith America 

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4 SPEX TECHNOLOGIES, INC. v. APRICORN

or step for performing a specified function” but limits the 

claim’s coverage to “the corresponding structure, material, 

or acts described in the specification and equivalents 

thereof.” Everyone also agreed that the function was “mediating communication of data between the host computing 

device and the target means so that the communicated 

data must first pass through the security means.” See 

SPEX Techs., Inc. v. Kingston Tech. Corp., No. SACV 16-

01790, 2017 WL 5495149, at *13 (C.D. Cal. Oct. 18, 2017) 

(“Claim Construction Order”).

The parties disagreed, however, as to whether the ’802 

patent disclosed sufficient corresponding structure for performing that function. Apricorn argued that the patent

failed to do so, rendering claim 11 (and its dependent claim 

12) invalid as indefinite under § 112 ¶ 2. SPEX maintained 

that the interface control device 910 as shown in Figure 9B

of the ’802 patent (“ICD 910”) supplied sufficient corresponding structure. Figure 9B is reproduced below:

Invents Act (“AIA”), Pub. L. No. 112-29, sec. 4(c), 125 Stat. 

284, 296 (2011). The pre-AIA designations apply to the ’802 

patent, so this opinion refers to those.

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The district court agreed with SPEX that ICD 910 was 

a corresponding structure with disclosure sufficient to survive Apricorn’s indefiniteness challenge. In making this

determination, the court relied heavily on a passage of the 

specification concerning the “configuration registers” of 

ICD 910. That passage states:

[ICD] 910 includes sets of configuration registers 

911. The data stored in the configuration registers 

911 establish operating characteristics of the 

[ICD]: in particular, the content of the configuration 

registers enables the [ICD] to present to the host 

computing device a desired identification of the peripheral device[] and determines whether data 

passing through the peripheral device must be subjected to security operations.

A set of configuration registers is maintained for 

the host computing device I/O interface, the cryptographic processing device interface, and the target functionality interface.

’802 patent col. 17 ll. 25–36 (emphasis added). Aside from 

Figure 9B, the district court cited this passage—and only 

this passage—in rejecting Apricorn’s argument that ICD 

910 had insufficient structural disclosure. Claim Construction Order, 2017 WL 5495149, at *15 (“Given the specific 

details provided in this disclosure, [Apricorn has] not 

proven by clear and convincing evidence that the structure 

of [ICD 910] is inadequately disclosed by the patent specification.”).

The district court accordingly construed the “means for 

mediating” element as a means-plus-function element subject to § 112 ¶ 6—the function being “mediating communication of data between the host computing device and the 

target means so that the communicated data must first 

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6 SPEX TECHNOLOGIES, INC. v. APRICORN

pass through the security means,” and the corresponding 

structure being ICD 910. Id.2

B

SPEX tried claims 11 and 12 to a jury. As to the “means 

for mediating” element specifically, the district court instructed the jury consistent with its claim construction, 

setting forth both the function and the corresponding structure—i.e., ICD 910. J.A. 11276. As to infringement of 

means-plus-function elements generally, the court instructed the jury:

If you find that at least one of Apricorn’s accused 

products [has] structure that performs the claimed 

function, you must then determine whether that

structure is the same as or equivalent to the structure I have identified in the specification. If they 

are the same or equivalent, the means-plus-function requirement is satisfied by that structure of 

the accused products.

In order to prove that a structure in the accused

products is equivalent to the structure in the ’802 

[p]atent, SPEX must show structure in the accused 

device performs the claimed function in substantially the same way to achieve substantially the 

same result. The individual components, if any, of 

an overall structure that corresponds to the

claimed function are not claim limitations. Rather, 

the claim limitation is the overall structure 

2 Separately, the district court determined that the 

“means for providing” element in claims 6, 7, 23, and 25 

was indefinite. Claim Construction Order, 2017 WL 

5495149, at *15–17. We discuss this issue briefly in 

Part III of the Discussion section.

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SPEX TECHNOLOGIES, INC. v. APRICORN 7

corresponding to the claimed function. Further deconstruction or parsing is incorrect.

J.A. 11279–80. Apricorn did not request a jury instruction 

identifying configuration registers as necessary for infringement—nor did it object to the given jury instructions 

for lacking that explicit requirement. 

After the jury found that Apricorn infringed claims 11 

and 12, Apricorn moved under Rule 50(b) for JMOL of noninfringement, which the district court granted. Apricorn 

argued that the configuration registers of ICD 910 were 

“indispensable” to that structure’s functioning and that, by 

failing to show such configuration registers in the accused 

products, SPEX failed to prove infringement—i.e., failed to 

prove that the accused products included a structure that 

performed the relevant function in “substantially the same 

way” as ICD 910. The district court, citing precedent from 

this court, agreed that the configuration registers were “indispensable” or “central” components of ICD 910, meaning

that SPEX needed to show them (or their equivalent) in the 

accused products to prove infringement. SPEX Techs., Inc. 

v. Apricorn, No. CV 16-07349, 2020 WL 5491692, at *3–4 

(C.D. Cal. Aug. 10, 2020) (“JMOL Order”) (first citing Toro 

Co. v. Deere & Co., 355 F.3d 1313, 1324 (Fed. Cir. 2004); 

and then citing Solomon Techs., Inc. v. ITC, 524 F.3d 1310, 

1317 (Fed. Cir. 2008)).3 And because the district court concluded that there was no substantial evidence of configuration registers presented at trial, it granted JMOL of 

3 In making this determination, the district court incorporated and drew from its analysis in another case 

where SPEX asserted infringement of the ’802 patent. 

JMOL Order, 2020 WL 5491692, at *3 (citing SPEX Techs. 

Inc v. Kingston Tech. Corp., No. SACV 16-01790, 2020 WL 

4342254 (C.D. Cal. June 16, 2020) (“Kingston SJ Order”)).

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8 SPEX TECHNOLOGIES, INC. v. APRICORN

noninfringement. See JMOL Order, 2020 WL 5491692, 

at *3–5.

In its JMOL-related filings, SPEX had also requested 

a new trial if the district court were to grant JMOL of noninfringement. SPEX maintained that because the district 

court “did not adopt the construction” that configuration 

registers were indispensable “until after trial,” it was “not 

afforded the opportunity to present all the evidence regarding configuration registers to the [j]ury.” J.A. 9712 (emphasis omitted) (identifying evidence SPEX would have 

presented). The district court, however, considered all the 

evidence SPEX said it would have presented, and it concluded that such evidence likewise could not have supported an infringement verdict. JMOL Order, 2020 WL 

5491692, at *4–5, *4 n.2. The court therefore denied 

SPEX’s request for a new trial.

SPEX timely appealed the noninfringement JMOL, 

new-trial denial, and indefiniteness ruling on the “means 

for providing” element. Apricorn timely, conditionally 

cross-appealed, arguing that if we were to conclude that 

SPEX didn’t have to show configuration registers after all, 

we should hold claims 11 and 12 invalid as indefinite for 

lacking sufficient disclosure of corresponding structure. 

We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

We review a district court’s decisions on JMOL and 

new-trial motions under regional circuit law. E.g., SSL 

Servs., LLC v. Citrix Sys., Inc., 769 F.3d 1073, 1082 

(Fed. Cir. 2014). The Ninth Circuit reviews a JMOL grant 

de novo, affirming “if the evidence, construed in the light 

most favorable to the nonmoving party, permits only one

reasonable conclusion, and that conclusion is contrary to 

the jury’s verdict.” Pavao v. Pagay, 307 F.3d 915, 918 

(9th Cir. 2002) (also observing that “[a] jury’s verdict must 

be upheld if it is supported by substantial evidence”). It 

reviews a new-trial denial for abuse of discretion. E.g., 

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SPEX TECHNOLOGIES, INC. v. APRICORN 9

Optronic Techs., Inc. v. Ningbo Sunny Elec. Co., 20 F.4th 

466, 476 (9th Cir. 2021).

We review a district court’s indefiniteness determination de novo and any underlying factual questions for clear 

error. Rain Computing, Inc. v. Samsung Elecs. Am., Inc., 

989 F.3d 1002, 1007 (Fed. Cir. 2021).

I

We begin with SPEX’s appeal of the noninfringement 

JMOL, a ruling it challenges in three primary ways. First, 

SPEX argues that the district court shouldn’t have deemed 

configuration registers indispensable to proving the 

“means for mediating” element because Apricorn neither

requested—nor objected to the absence of—a claim construction or jury instruction calling out configuration registers as such. Second, SPEX argues that on the merits, 

configuration registers simply shouldn’t be deemed indispensable. And third, SPEX argues that even if it had to

show configuration registers, the trial record contained 

enough evidence of them to support the jury’s infringement 

verdict. We address these arguments in turn.

A

SPEX initially argues that, because Apricorn didn’t request a claim construction or jury instruction explicitly requiring configuration registers (or object to the given 

instructions’ lack of such a requirement), the district court

improperly required them on JMOL. This argument (and 

the one discussed in Part I.B) implicates what it means to 

infringe a means-plus-function element having a multicomponent corresponding structure, so we briefly review

the relevant case law on this issue before turning to SPEX’s 

particular contentions.

In Odetics, Inc. v. Storage Technology Corp., we reiterated that “a claim limitation written in § 112[] ¶ 6 form, 

like all claim limitations, must be met, literally or equivalently, for infringement to lie” and that “such a limitation 

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10 SPEX TECHNOLOGIES, INC. v. APRICORN

is literally met by structure, materials, or acts in the accused device that perform the claimed function in substantially the same way to achieve substantially the same 

result.” 185 F.3d 1259, 1268 (Fed. Cir. 1999). And we explained:

The individual components, if any, of an overall

structure that corresponds to the claimed function 

are not claim limitations. Rather, the claim limitation is the overall structure corresponding to the 

claimed function. . . . Further deconstruction or 

parsing is incorrect.

Id.

Since Odetics, we have instructed that greater weight 

may nonetheless be given to components that are “central” 

or “indispensable” to the corresponding structure. For example, in Toro, the district court on summary judgment 

concluded that (1) a claim element’s corresponding structure included a mechanical cam system and (2) an electrical cam system did not infringe because, although it 

seemed to perform an identical function, it failed to do so 

in substantially the same way. 355 F.3d at 1323–24. In 

particular, the district court concluded that because the allegedly infringing device lacked a mechanical cam—an “indispensable” part of the claimed structure—no reasonable 

factfinder could find infringement. Id. (cleaned up). On 

appeal, the patentee argued that the district court had “impermissibly engaged in a component-by-component analysis.” Id. at 1324. We rejected that argument, reasoning 

that “the cam was not simply a minor component” of the 

corresponding structure; rather, it was an “indispensable” 

part of the structure. Id. (cleaned up). Accordingly, “[t]o 

the extent the district court gave the cam greater weight in 

considering [the corresponding] structure as a whole, this 

was appropriate given the cam’s central role.” Id. We applied the principle again in Solomon, observing that, in assessing infringement of means-plus-function claims, “our 

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case law allows for greater weight to be given to individual 

components that play a central role in the identified structure.” 524 F.3d at 1317–18 (citing Toro, 355 F.3d at 1324) 

(affirming a finding that an accused product using rotor 

shafts did not infringe a means-plus-function element in 

which disks played a central role in the corresponding 

structure).

1

Turning now to SPEX’s particular contentions, SPEX 

maintains that Apricorn’s failure to request a claim construction or jury instruction explicitly requiring configuration registers (or object to the given instructions’ lack of 

such a requirement) precluded the district court from requiring them on JMOL. It’s true that “[w]hen issues of 

claim construction have not been properly raised in connection with the jury instructions, it is improper for the district court to adopt a new or more detailed claim 

construction in connection with the JMOL motion.” 

Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 

1320 (Fed. Cir. 2003). But the configuration registers’ indispensability is not properly viewed as a claim-construction issue. It is instead simply a question of 

noninfringement: whether the accused product performs 

the function in substantially the same way as the corresponding structure. Indeed, the district court’s articulation 

of the configuration registers’ indispensability straightforwardly followed from applying the ordinary meaning of the 

court’s claim construction in the test for means-plus-function infringement. And, in granting JMOL of noninfringement, the district court employed the same analysis we 

approved of in Solomon—confirming that the absence of a 

central or indispensable component in an accused device 

precludes infringement. See 524 F.3d at 1317–18.

Accordingly, we conclude that, under the circumstances of this case, the district court’s articulation of the 

configuration registers’ indispensability was not an 

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12 SPEX TECHNOLOGIES, INC. v. APRICORN

impermissible new construction. It was simply an application of the ordinary meaning of the court’s earlier claim 

construction.

2

SPEX also argues that the district court erred because 

its indispensability analysis on JMOL conflicted with jury 

instructions that said: (1) “The individual components, if 

any, of an overall structure that corresponds to the claimed

function are not claim limitations. Rather, the claim limitation is the overall structure corresponding to the claimed 

function,” and (2) “Further deconstruction or parsing is incorrect.” Appellant’s Br. 40–41; see J.A. 11279–80.

We disagree that there was a conflict here. The instructions SPEX identifies appear to be lifted verbatim

from Odetics. 185 F.3d at 1268 (“The individual components, if any, of an overall structure that corresponds to the 

claimed function are not claim limitations. Rather, the 

claim limitation is the overall structure corresponding to 

the claimed function. . . . Further deconstruction or parsing is incorrect.”). And, as we have explained, our case law 

has held that the standard in Odetics is consistent with giving greater weight to components that are “central” or “indispensable” to the corresponding structure. See Toro, 

355 F.3d at 1323–24; Solomon, 524 F.3d at 1317–18. We

therefore struggle to see how an analysis that doesn’t conflict with Odetics nevertheless conflicts with jury instructions quoting Odetics. 

B

SPEX next argues that, procedural issues aside, on the 

merits the district court should not have deemed configuration registers indispensable when assessing infringement of the “means for mediating” element.

The district court observed that the ’802 patent’s discussion of ICD 910 “describes just one structural component: configuration registers 911,” thus “support[ing] the 

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conclusion that the configuration registers play a central 

role in [ICD] 910.” Kingston SJ Order, 2020 WL 4342254, 

at *11–12. The court also observed that “one of the key 

aspects of the invention disclosed in the ’802 [p]atent is 

that it controls the flow of data between the host computing 

device and peripheral device in a secure fashion”—and that 

“[t]he configuration registers are described in the context 

of [ICD] 910 as the way to do so for that embodiment.” Id.

at *12. These observations support the district court’s assessment that performing the claimed function in “substantially the same way” as ICD 910 required using 

configuration registers. See Solomon, 524 F.3d at 1317–18 

(looking to a claim’s prosecution history to confirm a trial 

tribunal’s decision to treat a component as indispensable 

when assessing infringement).

SPEX’s main argument against configuration registers’ 

indispensability relies on the specification’s description of

various “modes” in which the peripheral device might operate. Those modes include: (1) one in which only the security functionality is used; (2) one in which both the 

security and target functionalities are used; and (3) one in 

which only the target functionality is used. Appellant’s 

Br. 47–48 (citing ’802 patent col. 10 ll. 13–18). SPEX maintains that the configuration registers of ICD 910 are used 

to “switch” among these modes. And, it argues, because the 

peripheral device of claim 11 is “fixed in one mode of operation”—i.e., that in which communication of data between 

the host computing device and the target means must first 

pass through the security means—there is no need for 

switching, and thus no reason to deem configuration registers indispensable (at least as to this claim). Appellant’s 

Br. 48.

The district court considered and rejected this argument. It reasoned that, “in the context of [ICD] 910, the 

specification does not describe any other ways of achieving

the ‘mode’ required by [the ‘means for mediating’ element]

other than through the use of configuration registers.” 

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14 SPEX TECHNOLOGIES, INC. v. APRICORN

Kingston SJ Order, 2020 WL 4342254, at *12 (emphasis 

added). In other words, even if configuration registers 

were used for switching among various modes, they are 

also the only disclosed way for setting, or “achieving,” a 

mode in ICD 910. See Cross-Appellant’s Br. 47 (noting 

that, as to ICD 910, the ’802 patent “discloses only a single 

way that the device is configured: the configuration registers”); accord ’802 patent col. 17 ll. 26–33 (“The data stored 

in the configuration registers 911 establish operating characteristics of [ICD 910]: in particular, the content of the 

configuration registers . . . determines whether data passing through the peripheral device must be subjected to security operations.”).

We see no error in the district court’s assessment that, 

without configuration registers, substantial evidence could 

not support the jury’s verdict that the accused products 

performed the claimed function in “substantially the same 

way” as ICD 910.

C

SPEX finally argues that, even if it had to show configuration registers, the trial record contained enough evidence of them to support the jury’s infringement verdict. 

Again we disagree.

Initially, as Apricorn notes (and as SPEX doesn’t dispute), SPEX identifies no instance where its infringement 

expert even uttered the phrase “configuration registers.” 

While of course not dispositive by itself, it’s hardly an auspicious start.

As for the configuration-registers evidence that SPEX 

does identify, we view it as insubstantial. For example, 

SPEX directs us to a demonstrative that its infringement 

expert showed at trial, which quotes a portion of a USB 

specification in evidence that says, “Before a USB device’s 

function may be used, the device must be configured.” 

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J.A. 9743 (demonstrative)4; see also J.A. 13743, 14013 

(USB specification). SPEX also points to its infringement 

expert’s testimony that “both devices need to be configured, 

so there’s always configuration information that they can 

be programmed with.” J.A. 10672. And it again references

the USB specification, which says that a USB device uses 

a “SetConfiguration()” command for configuration. 

J.A. 14013.

The district court considered all of these statements, 

however, and deemed them insufficient to substantiate the 

jury’s infringement verdict. The court reasoned: “[T]estifying that the accused devices perform the function of ‘be[ing] 

configured’ is not the same as saying the accused devices 

have an equivalent structure to the configuration registers

disclosed in [ICD] 910.” JMOL Order, 2020 WL 5491692, 

at *3 (second alteration in original) (emphasis added). 

We agree with the district court, and we view SPEX’s 

other cited evidence as insufficient to substantiate the 

jury’s verdict of infringement (whether literal or under the 

doctrine of equivalents) for essentially the same reason.

***

In sum: because the district court did not err on JMOL 

in deeming configuration registers indispensable to proving infringement of the “means for mediating” element, 

and because there was no substantial evidence of the 

4 To the extent SPEX is independently seeking to 

rely on the demonstrative’s heading—“[11d] Both USB and 

PCMCIA Use Configuration Registers,” J.A. 9743—even if 

we assumed that this constitutes evidence, we do not think 

that it qualifies as, or could even contribute to, substantial 

evidence that the accused products have the configuration 

registers specifically contemplated by the “means for mediating” element. 

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16 SPEX TECHNOLOGIES, INC. v. APRICORN

required configuration registers (or their equivalent), we 

affirm the JMOL of noninfringement.

II

We turn next to SPEX’s appeal of the new-trial denial. 

SPEX argues that, in view of the district court’s indispensability analysis on JMOL, we should order a new trial 

“based on the new construction.” Appellant’s Br. 54; id. 

at 55 (“At the least, a new trial should have been ordered 

in light of the . . . new construction.”). But as we explained,

the district court’s articulation of the configuration registers’ indispensability was not an impermissible new construction. It was simply an application of the ordinary 

meaning of the court’s earlier claim construction. That being so, this argument does not persuade us that the district 

court abused its discretion by denying SPEX a new trial.

SPEX also says that it had additional configurationregisters evidence it would have presented to the jury had 

it understood they were indispensable. Appellant’s 

Br. 55–56. But SPEX identified such evidence for the district court. And, after considering what SPEX identified, 

the court determined that it—like the evidence at trial—

was “insufficient to show that the accused products have 

configuration registers as part of the alleged structure corresponding to the ‘means for mediating’ claim limitation.” 

JMOL Order, 2020 WL 5491692, at *4 (emphasis added). 

We see no error in that determination—nor anything else 

that would lead us to conclude that the district court 

abused its discretion here. Accordingly, we affirm the district court’s denial of SPEX’s request for a new trial.

III

We turn now to SPEX’s appeal of the district court’s 

indefiniteness determination regarding the “means for 

providing” element of claims 6, 7, 23, and 25 of the ’802 patent. 

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SPEX appealed this very same indefiniteness ruling in 

SPEX Technologies, Inc. v. Western Digital Corp., 859 F. 

App’x 557 (Fed. Cir. 2021) (“Western Digital”).5 We reversed because we agreed with SPEX that the ’802 patent 

“sufficiently links memory section 612a to the function recited in the ‘means for providing’ limitation.” Id. at 562–63.

Apricorn did not have occasion to address our Western 

Digital opinion in its briefing, given that the opinion issued 

after it filed its principal and response brief. But at oral 

argument, it wisely conceded that our analysis and conclusion on this issue in Western Digital control here and necessitate reversal. Oral Arg. at 20:39–22:10.6 Therefore, 

following Western Digital, we reverse the district court’s 

determination that the “means for providing” element of 

claims 6, 7, 23, and 25 of the ’802 patent is indefinite and 

remand for proceedings consistent with this opinion.

IV

We lastly dispose of Apricorn’s cross-appeal. Apricorn 

conditioned its cross-appeal on our concluding that SPEX 

didn’t have to show configuration registers (or their equivalent) to prove infringement of the “means for mediating” 

5 The same indefiniteness ruling applied across 

these two cases because they were consolidated for pre-trial 

purposes at the time of the ruling. Indeed, Apricorn and 

the defendants in Western Digital made the same indefiniteness arguments to the district court, having jointly 

filed their claim-construction briefs in advance of the ruling. 

6 No. 20-2210, https://oralarguments.cafc.uscourts.

gov/default.aspx?fl=20-2210_05052022.mp3.

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18 SPEX TECHNOLOGIES, INC. v. APRICORN

element. Because we’ve concluded otherwise, supra 

Part I.B, we dismiss Apricorn’s cross-appeal as moot.7

CONCLUSION

We have considered the parties’ remaining arguments 

but find them unpersuasive. For the foregoing reasons, we

affirm the noninfringement JMOL and new-trial denial, reverse the indefiniteness ruling, dismiss Apricorn’s conditional cross-appeal as moot, and remand for proceedings 

consistent with this opinion.

AFFIRMED-IN-PART, REVERSED-IN-PART, 

DISMISSED-IN-PART, AND REMANDED

COSTS

No costs.

7 Because we dismiss Apricorn’s cross-appeal as 

moot, we likewise deny as moot SPEX’s motion to strike 

portions of Apricorn’s reply brief (ECF No. 48).

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