# United States **Court of Appeals**  **for the Federal Circuit**

______________________ AZURE NETWORKS, LLC AND TRI

- COUNTY EXCELSIOR FOU NDATION, Plaintiffs

- Appellants,

v.

CSR PLC AND CAMBRIDGE SILICON RADIO INTERNATIONAL, LLC, Defendants

- Appellees,

AND

ATHEROS COMMUNICATIO NS, INC. AND QUALCOMM INCORPORATE D, Defendants

- Appellees,

AND

BROADCOM CORPORATION , Defendant

- Appellee,

AND

MARVELL SEMICONDUCTO R, INC., RALINK TECHNOLOGY CO RPORATION (T aiwan)

AND RALINK TECHNOLOGY CO RPORATION (USA), Defendants

- Appellees.

______________________

2013

- 1459

______________________AZURE NETWORKS , LLC v. CSR PLC 2

Appeal from the United States District Court for the Eastern District of Texas in No. 11

- CV

- 0139, Judge Michael H. Schneider.

______________________
Decided: November 6, 2014

______________________

M ICHAEL E. J OFFRE , Kellogg, Huber, Hansen, Todd, Evans & Figel, P.L.L.C., of Washington, DC, argued for plaintiff s- appellants. With him on the brief was A NNA D. M AYERGOYZ

. Of coun sel on the brief were E RIC M. A LBRITTON and M ICHAEL B ENEFIELD , Albritton Law Firm, of Longview, Texas; and D ANNY L. W ILLIAMS and C HRISTOPHER N. C RAVEY , Williams, Morgan & Amerson, P.C., of Houston, Texas.

D OMINIC E. M ASSA , Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, Massachusetts, argued for all d efendant s-appellees . With him on the brief for defendant

appellee Broadcom Corporation were L OUIS W. T OMPROS , J ASON H. L ISS and D ANA O. B URWELL

. O n the brief for defendant s- appellee s Atheros Communications, Inc., et al., were T IMOTHY T ETER , L ORI R. M ASON and M ATTHEW J. B RIGHAM , Cooley LLP, of Palo Alto, California . On the brief for defendants -appellees CSR PLC, et al., were J EFFREY E. O STROW and J ONATHAN C. S ANDERS , Simpson Thacher & Bartlett LLP, o f Palo Alto, California ; and K ERRY L. K ONRAD , of New York, New York.

______________________
Before R EYNA , M AYER , AND C HEN , Circuit Judges

. Opinion for the court filed by Circuit Judge Chen

. Dissenting

- in

- part opinion filed by Circuit Judge Mayer.AZURE NETWORKS , LLC v. CSR PLC 3

C HEN , Circuit Judge.

Plaintiffs Azure Networks, LLC (Azure) and Tri

County Excelsior Foundation (Tri

- County) sued CSR PLC, Cambridge Silicon Radio International, LLC, Atheros Communications, Inc., Qualcomm Inc., Broadcom Corp., Marvell Semiconductor, Inc., Ralink Technology Corp. (Taiwan), and Ralink Technology Corp. (USA) (collectiv ely, Appellees) for alleged infringement of U.S. Patent No. 7,756,129 (the ’129 patent). The district court granted the Appellees’ motion to dismiss Tri

- County for lack of stan ding, finding that Tri

- County had effectively assigned Azure the ’129 patent. Because we agree that the agre ement between Tri

- County and Az ure constituted an effective assignment for purposes of standing, we affirm the dismissal of Tri

- County.

The district court also construed the term “MAC a ddress” in the ’129 patent as “a device identifier generated by the hub device” and not, as Azure and Tri

- County suggested , “an address that uniquely identifies a device or group of devices on a shared communica tion medium.” Azure stipulated to a judgment of noninfringement under the district court’s construction of “MAC address.” Because the district cour t improperly construed the term, we vacate the judgment of noninfringement and remand.

B ACKGROUND
A. The ’1 29 Patent The ’129 patent, entitled “Personal Area Network with Automatic Attachment and Detachment,” describes a network for wireless communications between a central hub device and a number of surrounding peripheral devices in close proximity with the hu b device

. The specification details the use of “a wireless personal area network [PAN] that permits a host device to communicate with a varying number of peripheral devices with min imal interference from neighboring networks .” ’129 p a-AZURE NETWORKS , LLC v. CSR PLC 4

tent, 2:66 –3: 3. To do so, the hub device “orchestrates all communication in the PAN,” including managing the timing of the network, allocating available bandwidth among the peripheral devices, and supporting the a ttachment, detachment, and reattachment of peripheral devices. Id. at 3 : 33

– 39. The hub and the peripheral devices communicate with one another over a predefined set of streams, or one

- way communication links. Id. at 3: 53

– 56. Claim 14 is representative of the accused claims to a hub device:

14. A hub device for use within a personal area network, comprising:
circuitry, and a transceiver in communication with the circuitry, the hub device configured to cause the transceiver
to i) send a message to indicate the availabi lity of the hub device for peripheral device
atta chment, ii) receive, from a first peripheral device, a message indicating the availability of the first peripheral device for communication with the hub device, iii) send, to the first peripheral device, a signal including a first peripheral device identif ier

, iv) receive, from the first peripheral d evice, a response, v) send a hub response to the first perip heral device, andAZURE NETWORKS , LLC v. CSR PLC 5

vi) receive, from the first peripheral d evice, a second peripheral response inclu ding the first peripheral device identifier.

Id. at claim 14 (emphasis added).
The parties agree that “peripheral device identifier” in the asserted claims mean s “an element that identifies the peripheral device.” Joint Appendix ( J.A. ) 1446. Claim 43 depends from claim 14 and introduces the disputed “MAC address” term : 43. The hub device according to claim 14, wherein the hub device is configured such that a plurality of MAC addresses is capable of being used for identification in association with the first perip heral device. ’129 patent, claim 43.

At the time of invention, the conventional meaning of “MAC address ,” i.e. , a Media or Medium Access Control address, was that it operated to uniquely identify a wir eless device and could be generated in two ways

— by the manufacturer of the device or by the local network. The district court concluded that the patentee acted as his own lexicographer by re defining the claimed “MAC a ddress

. ” In so doing, the district court relied on the specification in two ways . First, a statement in the specification allegedly co in ed a new “MAC address” term that differs from the traditional MAC address as known to a person of ordinary skill in the art. That statement provided: “Each device is identified by a Media Access (MAC) address.” ’129 patent, 3 : 31

– 32. And second, variou s statements in the specification discuss ed the generation and assignment of the MAC address by the hub device. See Azure Ne tworks, LLC v. CSR PLC , No. 6:11CV139 LED

- JDL, 2013 WL 173788, at *4 (E.D. Tex. Jan. 15, 2013). Based on these passages, it construed “MAC address” as “a device identifier generated by the hub device.” Id. at *5.AZURE NETWORKS , LLC v. CSR PLC 6

B. Tri

- County’s License to Azure The ’129 patent has passed through many hands of ownership, but it was eventually acquired by Azure, a Texas limited liability com pany located in the Eastern District of Texas

. Azure then sought local charities to join in its patent enforcement activities. Ultimately, it par tnered with Court Appointed Special Advocates ( CASA ) of Harrison County, 1 which formed Tri

- County, a Texas no nprofit corporation with its principal place of business in the Eastern District of Texas

. In 2010, Azure donated multiple patents and patent applications, including the application that would issue as the ’129 patent, to Tri

County. 2

A few weeks after the donation, Tri

- County and Azure entered into an “Exclusive Patent License Agreement” (hereinafter, Agreement), which transferred back to Azure a number of rights in the ’129 patent. In particular, the Agreement granted Azure the exclusive

, worldwide, transferable right to (i) make, have made, use, sell, offer to sell, import, and lease any products, (ii) use and pe rform any method, process, and/or services, and (iii) othe rwise practice any invention in any manner under the ’129 patent. It also granted Azure the “full right to enforce or and/or sublicense ” the ’129 patent

, J.A. 1201 § 1.2, inclu d1 CASA of Harrison County is a member of the N ational Court Appointed Special Advocate Association and provides court

- appointed advocacy for neglected and abused children in Harrison County. J.A. 454.

2 The Appellees allege that Azure was motivated to donate the patents and patent applications to Tri

- County in order in order to further establish venue in the Eastern District of Texas and to deduct from Azure’s tax liability the value of its donation and portions of li tigation pr oceeds owed to Tri

- County. Appellees ’ Br. 8, 19; see also 26 U.S.C. § 170(m).AZURE NETWORKS , LLC v. CSR PLC 7

ing the authority to reach settlements without Tri

County’s consent . Specifically, the Agreement provided that “Azure will have the exclusive right, but not the obligation, to maintain, enforce, or defend” the ’129 p atent, but has the “ obligation to exercise good faith bus iness judgment to monetize” the ’129 patent, “ including but not limited to licensing [it] to third parties.” J.A. 1204 § 4.4. Azure also r eceived the right to assign the entire Agreement or any of Azure’s rights under the Agreement

, without Tri

- County’s consent, to any Azure affiliate in connection with the sale of a material portion of any Azure business unit

. And , finally, the Agreement g ave Azure, not Tri

- County, the exclusive right, but not the obligation, to control future prosecution or pay maint enance fees related to the ’129 patent family.
In exchange, Tri

- County retained t he right to receive 33% of the proceeds from Azure’s litiga tion or licensing activities for the first five years and 5% thereafter

. Azure must pay Tri

- County the respective percentages within thirty days after each calendar quarter in which Azure receives the proceeds. Tri

- County also reserved “a roya lty

- free, personal, non

- transferable, non

- exclusive right” to practice the ’129 patent and make Tri

- County branded products

. J.A. 1201

– 02 § 2.3. Additionally, Tri

- County retained a right to terminate the Agreement if Azure breached its obligation s or if T ri

- County’s obligations under the Agreement placed Tri

- County’s tax -exempt status at risk. Tri

- County also reserved reversionary rights in the ’129 patent once the Agreement expires

. In particular, the Agreement automatically expires on March 27, 2018, w ith two years remaining on the patent term, but Tri

- County has the option to renew in one

- year i ncrements if it notifies Azure at least thirty days in a dvance

. In addition

, Tri

- County is obligated not to encumber the ’129 patent in any way and to particip ate in litigation at Azure’s request and in Azure’s sole discretion.AZURE NETWORKS , LLC v. CSR PLC 8

Tri

- County and Azure filed suit together against the Appellees

, who thereafter sought to dismiss Tri

- County from the case . They argu ed that the significant rights transferred to Azure under the Agreement constituted an effective assignment for purposes of standing, leaving Tri

County with no rights to sue as co

- plaintiff. The district court agreed, finding that Tri

- County’s title in the patent and financial and reversionary in terests therein were not sufficient to confer standing upon Tri

- County. J.A. 34

– 35. On the district court’s dismissal of Tri

- County, Azure and Tri

- County appealed, and we have jurisdiction under 28 U.S.C. § 1295(a)(1)

. D ISCUSSION

I . Standing Standing is a matter of law that we review de novo

. Evident Corp. v. Church & Dwight Co., Inc. , 399 F.3d 1310, 1313 (Fed. Cir. 2005). The Patent Act governs standing to sue for infringement, and it provides that only the patentee and his successors in title are enti tled to bring a civil action for infringement. Propat Int’l Corp. v. RP ost, Inc. , 473 F.3d 1187, 1189 (Fed. Cir. 2007) (citing 35 U.S.C. § 281 ); Speedplay, Inc. v. Bebop, Inc. , 211 F.3d 1245, 1249

– 50 (Fed. Cir. 2000); Prima Tek II, L.L.C. v. A

Roo Co. , 22 2 F.3d 1372, 1376

– 77 (Fed. Cir. 2000)

. A party is a patentee if it holds legal title to the patent , either by issuance or assignment

. Propat , 473 F.3d at 1189 ; Speedplay , 211 F.3d at 1249

– 50

. Even if a patentee does not transfer legal title

, it may transfer significant rights to the patent. When the p atentee transfers rights, the “ party that has been granted all substantial rights under the patent is considered the owner regardless of how the parties characterize the transaction that conveyed th ose rights. ” Speedplay , 211 F.3d at 1250. “In that event, the transferee is treated as the patentee and has standing to sue in its own name.” Propat , 473 F.3d at 1189. And whichever party has all

, orAZURE NETWORKS , LLC v. CSR PLC 9

substantially all

, rights in the patent “ alone has s ta nding to sue for infringement.” Morrow v. Microsoft Corp. , 499 F.3d 1332, 1340 (Fed. Cir. 2007) ; see also Alfred E. Mann Found. for Scientific Research v. Cochlear Corp. , 604 F.3d 1354, 1358

– 59 (Fed. Cir. 2010) (“ A patent owner may transfer all substantial rights in the patents

- in

- suit, in which case the transfer is tantamount to an assignment of those patents to the exclusive licensee , conferring stan ding to sue solely on the licensee. ”). Therefore, when all rights or all substantial rights hav e been transferred, the transferee

— and not the transferor

— is the effective owner for purposes of standing

. See Speedplay , 211 F.3d at 1250. In patent licensor

- licensee standing cases, we are ty pically confronted with one of two scenari os: (1) cases in whi ch the exclusive licensee brings suit alone, requiring
us to decide whether the license agreement conferred sufficient rights on the licensee for standing ; or (2) cases in which the licensor brings suit alone, and we decide whether the licensor has transfe rred away enough rights
to divest it of the right to sue

. This is not the typical case

. Here , b oth the licensor and the licensee have brought the suit together, and the accused infringer seeks dismissal of the licensor. Therefore, our inquiry in this ca se is two

fold: (1) whether Tri

- County transferred all substantial rights under the ’129 patent to Azure, making Azure the effective owner ; and if so

, (2) whether Tri

- County may nevertheless join in an infringement suit brought by the licensee , but now effective owner , Azure

. A

“ To determine whether an exclusive license is tant amount to an assignment, we ‘ must ascertain the intention of the parties [to the license agreement] and examine the substance of what was granted. ’” Mann , 604 F.3d at 13 59 (quoting Mentor H/S, Inc. v. Med. Device Alliance, Inc.

, 240 F.3d 1016, 1017 (Fed. Cir. 2001)). The parties’ intentAZURE NETWORKS , LLC v. CSR PLC 10

alone is not dispositive. See Vaupel Textilmaschinen KG v. Meccanica Euro Italia S .P.A. , 944 F.2d 870, 87 6 (Fed. Cir. 1991) (finding ag reement amounted to an assig nment , even though entitled “exclusive license,” because it
trans ferred substantial rights to licensee) ; see also Speedplay , 211 F.3d at 1250.

We must also consider a non

- exhaustive list of rights for determining whether a licensor has transferred “all substantial rights” to the licensee , including : (1) the nature and scope of the right to bring suit; (2 ) the excl usive right to make, use, and sell products or services under the patent; ( 3 ) the scope of the licensee’s right to sublicense; ( 4 ) the reversionary rights to the licensor following termination or expiration of the license; ( 5 ) the right of the licensor to receive a portion of the proceeds from litigating or licensing the patent ; ( 6 ) the duration of the license rights; ( 7 ) the ability of the licensor to supe rvise and control the licensee’s activities; ( 8 ) the obligation of the licensor to continue paying maintenance fees; and (9 ) any limits on the licensee’s right to assign its interests in the patent

. Mann , 604 F.3d at 1360

– 61. The parties do not dispute that the Agreement tran sferred to Azure an exclusive license to practice the ’129 patent. “[T] ransfer of the exclusive right to make, use, and sell products or services under the patent is vitally i mportant to an assignment.” Id. at 1360. Also critical to our inquiry is that the Agreement granted Azure the exclusive right to enforce and defend the ’129 patent. In determining the nature of a transfer of rights, we have repeatedly recognized that a “key factor has often been where the right to sue for infringement lies.” Aspex Eyewear , Inc. v. Miracle Optics, Inc. , 434 F.3d 1336, 1342 (Fed. Cir. 2006) ; see also Mann , 604 F.3d at 1361 ( reco gnizing that the “ the most important considera tion” in the

an alysis is “ the nature and scope of the exclusive lice nsee’s purported right to bring suit, together with theAZURE NETWORKS , LLC v. CSR PLC 11

nature and scope of any right to sue purportedly retained b y the licensor ” ).

It is not uncommon for a licensor to transfer to its l icensee the exclusive right to enforce the patent. But significant to this case, T ri

- County reserved no right to have control over, to veto, or to be notified of any of A zure’s licensing or litigation activities

. Retaining control of these activities is a lso critical to demonstrating that the patent has not been effectively assigned to the licensee

. See , e.g. , Propat , 473 F.3d at 1192 (noting that retention of right to veto, be consulted about, or give consent to litigation decisions weighs in favor of fi nding agreement a license, not an assignment) ; Mann , 604 F.3d at 1362

– 63 (noting that right to have joint control over litigation or right to bring suit against alleged infringer if licensee refuses to bring suit would also indicate that licensor retained substantial rights); Vaupel

, 944 F.2d at 875 (patentee retained only right to be informed about litig ation and no right to control litigation decisions , suggesting an assignment of the patent ); Speedplay , 211 F.3d at 1251 ( holding that licensor retained no veto rights over lice nsee’s litigation activities and licensee ’s complete control over litigation suggested that licensee obtained substa ntial rights ).

Rather than retaining any control over litigation a ctivities, Tri

- County has a strict duty under the Agreement to “join Azure as a party and cooperate with Azure in any patent infringement suit, if, desirable to address a legal issue,” such as standing. J.A. 1204 § 4.4. Tri

- County must join “at Azure’s request ,” and after joinder, “Azure would maintain full and absolute control over any such patent infringement suit, including settlement of any related claims or causes of action.” Id. Tri

- County’s joinder “would be limited solely to cooperation and that which is necessary to address the legal issue.” Id. As the district court recognized, n othing about this relationship structure indicates that Tri

- County has control over anyAZURE NETWORKS , LLC v. CSR PLC 12

aspect of litigation involving the ’129 patent

. Rather, i t is clear that Azure is holding all the strings

. In sum, A zure’s exclusive right to sue, exclusive license, and freedom to sublicense are factors that strongly suggest that the Agreement constitutes an effective assignment.

Tri

- County argues that other factors demonstrate that it retained enough rights such that whatever was tran sferred to Azure was something less than “all substantial rights.” First , it points out that it has a right to receive a portion of the proceeds from the enforcement of the ’129 patent. But that economic interest alone does not defeat a transfer of substantial rights in the face of the factors above that strongly indicate Azure’s ownership

. See Propat , 473 F.3d at 1191 (“ To be sure, the fact that a patent owner has retained a right to a portion of the proceeds of the commercial exploitation of the p atent

. . . does not necessarily defeat what would otherwise be a transfer of all substantial rights in the patent. ”) (citing Rude v. Westcott , 130 U.S. 152, 162

– 63 (1889) )

. Second , it argues that it retained the right to practice th e ’129 patent, including the right to make, sell, and use Tri

- County

- branded products covered by the patent. See Fieldturf, Inc. v. Sw. Recreational Indus., Inc. , 357 F.3d 1266, 1269 (Fed. Cir. 2004) (“[L]icensor’ s retention of a limited right to develop and market the patented inve ntion indicates that the licensee failed to acquire all su bstantial rights

. ”)

. But in this case, this factor has little force as Tri

- County does not make or sell any products

, J.A. 8976

– 81, and the evidence on record suggests t hat Tri

- County will not make or sell any products in the future

. While Tri

- County continues to retain this right under the Agreement

, its right is nonexclusive. We have held tha t a nonexclusive license confers no standing on the licensee because the licensee does not have a legally protected interest conferred by the Patent Act

. See Propat , 473 F.3d at 1193

– 94 (holding that party has standing to sue if it “ has a legally protected interest in theAZURE NETWORKS , LLC v. CSR PLC 13

pa tent created by the Patent Act ,” and that bare li censee has no standing)

. That same logic applies even if it is the patent owner holding the nonexclusive right and the licensee hold s the exclusionary rights. I t is the licensee

, Azure, who may freely sub license other parties or , i nstead

, tolerate infrin gement. So while infringement may

c ause Tri

- County pecuniary loss, the Patent Act confers Azure, not Tri

- County, with standing to bring suit for the infringement

. See Ortho Pharm

. Corp. v. Genetics Inst.

, Inc. , 52 F.3d 1026, 1031 (Fed. Cir. 1995) ( holdin g that

“ [p] ractice of the invention by others may indeed cause [the nonexclusive licensee] pecuniary loss, ” but “economic injury alone does not provide standing to sue under the patent statute” ) (internal citations omitted)

. Third , Tri

- County contends that it has termination rights that limit whatever rights Azure has received under the Agreement. In particular, each party has the right to terminate the Agreement if the other party “su bstantially fails to perform or otherwise mate rially breac hes any of the material terms, covenants or provisions of [the] Agreement.” J.A

. 1207 § 7.8. Tri

- County maintains that Azure must exercise good

- faith judgment in moneti zing the patents and report its efforts to Tri

- County ann ually. Appellant s’ Br. 27. Tri

- County argues that it can then exercise its right to terminate the Agreement, and regain all rights conferred to Azure, if it determines that Azure ’s performance under this “ good faith” provision is unsatisfactory

. Because Azure must enfor ce and license the ’129 patent and share any proceeds with Tri

- County, Tri

- County contends that its termination right enables it to monitor

— and, thus, control

— Azure’s fulfillment of its obligations. Reply Br. 6

– 7. According to Tri

- County, this terminatio n right indicate s that it retained significant ownership interest s in the ’129 patent. We do not agree. We have held that termination rights conditioned u pon the licensee’s “failure to perform up to the specified benchmarks” provide some indication that t he licensorAZURE NETWORKS , LLC v. CSR PLC 14

retained ownership in the patent. See Propat , 473 F.3d at 1191

– 92. But the discussion of the termination right in Propat must be read in context. We explained that the Propat termination right, by itself, was not sufficient to show ownership; rather, we were persuaded by the sho wing of additional rights retained by the licensor

, including one of the most crucial ones— the right to control the litigation and licensing decisions:
In addition, [the licensor] re tains an economic i nterest in the patent and a substantial measure of control over decisions affecting the patent rights. It enjoys an equity interest in the proceeds of l icensing and litigation activities, a right to notice of licensing and litigation dec isions and the right to veto such decisions as long as the veto power was not exercised unreasonably, and the unr estricted pow er to bar [the licensee] from transfe rring its interest in the patent to a third party. In no case has this court held that a pate ntee who r etains such broad and wide

- ranging powers with respect to a patent has nonetheless transferred “all substantial rights” in the patent.

Id. at 1191. In Propat , the licensor retained the respons ibility to maintain the patent, the right to notice of the licensee’s decision

- making, the right to veto licensing and litigation decisions, the right to veto any transfer of the licensee’s rights, in addition to the right to terminate the license if the licensee failed to meet certain benchmarks. Id. at 1190

– 91. T hat is not the case here.

Tri

- County’s right to monitor whether Azure breaches any of its obligations does not amount to the type of control that we have found indicative of ownership in prior cases. Tri

- County does not have the right to veto

a ny of Azure’s decisions, and Azure is not obligated to obtain Tri

- County’s consent before acting. In fact, Tri

County does not even have the right to receive noticeAZURE NETWORKS , LLC v. CSR PLC 15

before Azure acts. Nor does Tri

- County have the oblig ation to maintain the patent; mainte nance lies with Azure, at Azure’s option. It is true that Tri

- County may term inate the Agreement if Azure breaches its obligations, but Tri

- County does not explain

— nor can we envision

— how a general good

- faith requirement that inures to the fina ncial benef it of both parties , with nothing more, would allow Tri

- County to trump Azure’s express and unilateral rights and exert control over Azure’s licensing or litigation decision s. As an additional argument, Tri

- County points to its right to terminate the Agreement if it incurs unwanted tax liabili ties as a basis for demonstrating that it retained ownership

. But if Tri

- County terminates the Agreement for this reason , Azure has the option to re

- acquire the ’129 patent for $ 305,000

. J. A

. 1207

– 08. Therefore , Tri

County ’s termination under this provision does not ou tright deprive Azure of controlling the patent

. Tri

County’s termination right under this provision loses force as a factor suggesting it has substantial rights over the ’129 patent

. Fourth , Tri -C ounty contends that

, in addition to its termination rights, the Agreement automatically term inates on March 27, 2018

— two years before the patent expires

— leaving Tri

- County a two

- year reversionary interest in the patent. Although Tri

- County may optio nally extend the Agreement in one

- year increments , it argues that, in general, agreements that terminate before patent expiration leave the licensor with a substantial interest in the patent.

In Aspex Eyewear

, we ad dress ed the effect of a hard termination date

, i.e. , a date beyond which the license cannot be renewed and all rights revert back to the lice n-AZURE NETWORKS , LLC v. CSR PLC 16

sor

. 3 The termination clause in that case provided that the license would expire in 2003, but it gave the licensee

one option to extend the term another three years

. 434 F.3d at 1338 n.2. T he license would finally terminate in 2006
, still leaving eleven more years remaining on the patent term , which was to expire in 2017

. Id. at 1338 & n.4

. The rights distributed between the licensee and lice nsor in Aspex Eyewear were similar to the distribution of rights between Tri

- County and Azure. Like Azure, the licensee in Aspex Eyewear held the exclusive right to practice the invention, the right to bring suit for i nfringement, and the unrestricted right to sublicen se, while the licensor, like Tri

- County, retained no right to make litigation or licensing decisions. We acknowledged that this distribution strongly suggested the license was an effective assignment for purposes of standing. Id. at 1342. Yet the hard termination date confirmed to us that the licensor retained ownership of the patent because the licensor would regain all the rights transferred to the licensee with a majority of the patent term remaining:

It was not a situation in which [the l icensee] had an exclusive license with all substantial rights that was only defeasible in the event of a default

3 Tri

- County and the Appellees dispute whether the discussion of a hard termination date in Prima Tek II should guide the analysis. In that case, however, we declin ed to express any opinion on the significance of hard termination dates. See 222 F.3d at 1378 (“Significantly, the agreement does not specify a ‘hard’ termination date beyond which the license cannot be renewed, and we express no opinion as to the effect of such a provision on a licensee’s standing to sue .”) (emphasis added) (internal citation omitted). Prima Tek II ’s discussion of reversio nary rights therefore is inapplicable.AZURE NETWORKS , LLC v. CSR PLC 17

or bankruptcy, or s ome other condition subs equent. By having rights for only a limited portion of the patent term, it simply did not own the p atent. It was merely an exclusive licensee without all substantial rights. The ‘747 patent was never assigned; it was exclusively licensed for only a fixed period of years, which does not meet the all substantial rights standard. Thus, we hold that the Cont our/Chic agreement was a license, not an assignment, and [the licensor] was the owner of the patent when the complaint was filed and ent itled to sue.

Id. at 1342

– 43 (footnote omitted)

. We distinguished clauses, like the one in Prima Tek II

, that lacked a definite termination date because “ the term of the agreement existed potentially for the life of the respective patents, and it was presumable that the transferred patent would never return to the assignor. ” Id. at 1343.

The termination clause in Tri

- Coun ty’s Agreement does not have the same kind of hard termination date as in Aspex Eyewear

. Instead , the Agreement states that it “shall end

. . . on the termination date of 03/27/2018 or at the end of each year thereafter, unless [Tri

- County] notifies Azure at least 30 days in advance of its intent to renew the agreement for an additional year.” J. A

. 1207 § 7.8. We expressly noted in Aspex Eyewear that this type of renewal cycle presumes that the patent “would never return to the assignor.” 434 F.3d at 1343. We also note that eleven years remained on the patent’s term in Aspex Eyewear following the expiration date of the agreement with no indication of the likelihood of extending or rene wing the license after the first option to extend. In co ntrast, on ly two years remain on the ’129 patent term following the March 27, 2018 termination date. Such short patent term life following expiration, coupled with the rolling renewal cycle that can extend to the end of the patent’s term, provides another indicator that Tri

- CountyAZURE NETWORKS , LLC v. CSR PLC 18

transferred all substantial rights to the patent

. Ther efore, the district court was correct in concluding that the reversionary right in the Agreement does not suggest, as Tri

- County contends, that Tri

- County retained ownership of the pat ent. After weighing all the factors

, we agree with the di strict court that Azure acquired significant rights under the ’129 patent , including the right to enforce, to license, to control the licensing and litigation, to sublicense, to practice exclusivel y , and to maintain the patent. Tri

County’s economic interests, limited termination right s, and unfixed reversionary interest with only a very limited amount of time remaining on the patent do not demo nstrate that it retained ownership. As the district c ourt found, t he balance of factors establish es that Tri

- County transferred all substantial rights in the ’129 patent to Azure , making Azure the effective owner for purposes of standing

. B

Azure and Tri

- County argue that even if the Agre ement constitutes an assignment for purposes of standing, Tri

- County would still be able to join suit with Azure. They maintain that Tri

- County still has interests in the ’129 patent that are in jeopardy, including its reversio nary interest and its interest in receiving pr oceeds from enforcing the patent. Appellants ’ Br. 35

– 36. Having an interest in the litigation, however, does not confer stan ding. To bring or join suit , Tri

- County must have “ excl usionary rights and interest s created by the patent statutes.” Morrow , 49 9 F.3d at 1340 (emphasis added)

. Parties who “hold less than all substantial rights to the patent and lack exclusionary rights under the patent
statute ” do not have standing. Id. at 1340

– 41 (emphasis added)

. This lack of standing “ cannot be cured by adding the patent title owner to the suit.” Id. at 1341; Propat

, 473 F.3d at 1193

– 94 (“By contrast, a bare lice n-AZURE NETWORKS , LLC v. CSR PLC 19

see

. . . lacks standing to sue third parties for infring ement

. . . . A bare licensee cannot cure its lack of standing by j oining the patentee as a party.”)

. As discussed above, Tri

- County transferred all su bstantial rights in the ’129 patent to Azure, including all exclusion ary rights. Tri

- County serves effectively as a nonexclusive licensee

. The district court properly co ncluded that Tri

- County lacks standing to bring suit, but more importantly, to even join the suit. Because Tri

County does not have any exclusionary rights under the ’129 patent, it lacks standing to join the suit as a co

plaintiff. Tri

- County’s standing deficiency cannot be cured by adding Azure to the suit. See Morrow , 499 F.3d at 1343 (“To demonstrate entitlement to join as a co

plaintiff [a party] must have the right to exclude others from making, using or selling the invention in the United States.”)

. We therefore affirm the district court’s dismi ssal of Tri

- County.

II . “MAC Address”

Claim construction is a matter of law that we review de novo

. Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp. , 744 F.3d 1272 (Fed. Cir. 2014) (en banc). There is a “ heavy presumption ” that claim terms “ carry their accustomed meaning i n the relevant community at the relevant time.” Home Diagnostics, Inc. v. LifeScan, Inc. , 381 F.3d 1352, 1355 (Fed. Cir. 2004). The district court, however, construed “MAC address” narrowly as a local address generated by the hub, even though the ordinary and customary meaning included either local or universal MAC addresses. Departure from the ordinary and customary meaning is permissible only when the patentee has acted as his own lexicographer or disavowed claim scope in the specification or during the prosecution history. Phillips v. AWH Corp. , 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) . The heavy presumption that “MACAZURE NETWORKS , LLC v. CSR PLC 20

address” carries its well

- established meaning i n the relevant industry has not been overcome here.
The parties d o not meaningfully dispute the ordinary and customary meaning of a “Media Ac cess Control ” or “Medium Access Control” address (commonly referred to as a MAC address) to the relevant communit y at the time of invention

. MAC addresses have long been used to identify various wireless devices. I ndustry literature and dictionaries at the time of inven tion , which are not di sputed, consistently define MAC addresses as unique identifiers . For example , the dictionary of the Institute of Electrical and Electronic Engineers (IEEE) defined “MAC address” as “[a]n address that identifies a particular medium access control (MAC) sublayer service access point (SAP). ” T HE N EW IEEE S TANDARD D ICTIONARY O F E LECTRICAL AND E LECTRONICS T ERMS 755 (5th ed. 1993) ; S TEVEN M. K APLAN , W ILEY E LECTRICAL & E LECTRONICS E NGINEERING D ICTIONARY 459 ( John Wiley & Sons 2004) (defining MAC address as “Media Access Control a ddress,” that is, “a hardware address which uniquely identifies each physical connection”)

. The Appellees’ own construction acknowledges that MAC addresses are “device identifiers.”

T he claims use “MAC address” consistently with the well- understood industry meaning: to identify a unique device. Claim 2 recites that the “first peripheral device identifier is based at least in part on a MAC address of the first peripheral device.” Claim 43 recites that the “plurality of MAC addresses [are] capable of being used for identification in association with the fir st peripheral device.” N othing in the claims displaces the customary meaning of “MAC address .” The specification also refers
to the term as an identifier for a device . ’129 patent, 3:60

– 64 (“ The Hub 110 uses MAC addresses to identify itself and the PEAs [ Personal Electronic Accessory ] 120

. The Hub 110 uses its own MAC address to broadcast to all PEAs 120. The Hub 110 might also use MAC addres s-AZURE NETWORKS , LLC v. CSR PLC 21

es to identify virtual PEAs within any one physical PEA 120 .”)

. A t the time of invention, MAC addresses could be a ssigned either universally

, i.e.

, the manufacturer of the device creates the unique identifier for the device

, or locally

, i.e. , a network device, like the hub device of the ’129 patent, creates the unique identifier for a given device, like the peripheral devices in the ’129 patent

. J.A. 1605, IEEE Standard for Local and Metropolitan Area Networks: Overview and Architecture 21 (IEEE Mar. 8, 2002) (within the 48

- bit MAC address there is a “Unive rsally or Locally administered (U/L) address bit

. . . [which] indicates whether the address has been assigned by a local or universal administrator ”) (emphasis added)

. 4 The

4 See , e.g. , F RANK H ARGRAVE , H ARGRAVE ’ S C OMMC ’ NS D ICTIONARY 313 (IEEE Press 2001) (defining MAC as an “acronym for Medium Access Control” and MAC address as a “48 bit number unique to each network interface card (NIC). Generally, the number is pr ogrammed into the NIC at the time of manufacture ; hence, it is LAN and location indep endent.

. . . Also called a hardware address, MAC name, physical address, or universal address. ”) (emphasis added); N EWTON ’ S T ELECOM D ICTIONARY 450 (CMP Books Feb. 2002) ( equa ting MAC address with Medium Access Control Address and defining as “a 48

- bit num ber, formally known as an EUI

- 48 (Extended Unique Identifier

- 48)

. . . . The MAC Address is programmed into the card, usually at the time of manufacture ”) (emphasis added)

. From these refe rences, the dissent gleans inconsisten t definitions , which do not e xist. See Dissenting Op. 5– 6. That MAC addres ses were usually programmed into a device at the time of manufacture means that sometimes they were not. The IEEE Standard for Local and Metropolitan Area Ne tworks specification simply buttresses that point. TheAZURE NETWORKS , LLC v. CSR PLC 22

relevant dispute here is whether the claimed “MAC address” should be read narrowly, as a device identifier that can only be generated locally by the hub device, thereby excluding the “universal” type MAC address created by the manufacturer of the device

. We see no reason to limit this established term of art to only hub

generated addresses

. The claims of the ’129 patent do not specify whether the “MAC address” is generated locally or universally. T he specification refers to the phrase “Media Access (MAC) address,” and not “Media Access Control (MAC) address .” Based on this single reference , t he district court concluded that the patent ee “coin[ed] a new term” distinct from a standard MAC address, which in
turn was limited to hub

- generated addresses. Azure

, 2013 WL 173788, at *4. We disagree. For a patentee to act as his own lexicographer and give a term something other than its well -established meaning , he must “clearly set forth a definition of the disputed term .” CCS Fitness, Inc. v. Brunswick Corp. , 288 F.3d 1359, 1366 (Fed. Cir. 2002)

. The lexicography must appear with “reasonable clarity, deliberateness, and precision sufficient to narrow the definition of the claim term in the manner urged.” Abbott Labs. v. Syntron Bioresearch, Inc. , 334 F.3d 1343, 1355 (Fed. Cir. 2003).
Through the single, cursory use of “Media Access (MAC) address”

— dropping the word “C ontrol”— the
spec ification did not re

- coin an established term of art by redefining it to have a narrower definition than the trad ition al MAC address. Dropping the word “Control” was

prior art cited on the face of the ’129 patent uses MAC addresses consistently with the IEEE specification , as either universal or local addresses

. See , e.g. , PCT Appl ication WO 00/68811, 5:7

– 10 (published Nov. 16, 2000) (describing a universal MAC a ddress ); U.S. Patent No. 6,570,857, 4:30

– 35 (describing a local MAC address).AZURE NETWORKS , LLC v. CSR PLC 23

not unknown to those of ordinary skill in the art, based on other technical literature. See, e.g. , J.A. 1970

– 71, S USAN Y OUNG & D AVE A ITEL , T HE H ACKER ’ S H ANDBOOK , T HE S TRATEGY BEHIND B REAKING INTO AND D EFENDING N ETWORKS (CRC Press 2004) (referring to “Media Access (MAC) address” as a “unique address assigned to a ne tworking device upon its cre ation by the manufacturer”); J.A. 1978, Im plementing QoS, available at http://vonage.nmhoy.net/qos.html (last visited Oct. 7, 2014) (“ MAC Address prioritizes network devices by their Media ACcess Address (MAC Address). ”). This one ind icium therefore is simply not a strong enough suggestion that the inven tor intended to displace a well

- established term of art. See Ancora Techs., Inc. v. Apple, Inc.

, 744 F.3d 732, 738 (Fed. Cir. 2014) (holding that specification does not set out redefinition for “volatile memory” term and its clear ordinary meaning cannot be overcome “by a few passing references that do not amount to a redefin ition or disclaimer”). This is especially so because “MAC address” has a “clear, settled, and objective” meaning to a person of ord inary skill in the art. See id. at 737 (finding that term “volatile memory” has a “clear, settled, and objective” meaning that leaves relevant public with firm understanding of scope “unless something exceptional sufficiently supplants that understanding” ). And when read in context, it becomes clear that that “Media Access (MAC) address” in the specification has the same meaning

as that of a traditional MAC address : it is a device ident ifier. ’129 patent, 3:31

– 32 (“Each device is identified by a Media Access (MAC) address.”) (emphasis added)

. In reading the hub -generation- only limitation into the claims, t he district court also pointed to the parts of the specification referring to the hub device generating and assigning the newly coined “ MAC address ” to the perip heral devices. Azure

, 2013 WL 173788, at *4

– 5; s ee, e.g. , ’129 patent, 11 :2– 3 (“The Hub 110 then assigns a MAC address to the PEA

. . . .”). Failing to find a reference inAZURE NETWORKS , LLC v. CSR PLC 24

the specification to manufacturer

- generated MAC a ddresses , it conclud ed that the claimed “MAC address” must be hub

- generated. Although there is no specific reference to universally generated MAC addresses in the specification, using a term the same way in all disclosed embodiments is not by itself sufficient to redefine a term of art

. See Aventis Pharma S.A. v. Hospira, Inc. , 675 F.3d 1324, 1330 (Fed. Cir. 2012) ; CCS Fitness , 288 F.3d at 1366 . The specific ation “must have sufficient clarity to put one reasonably skilled in the art on notice that the inventor intended to redefine the claim term.” Merck & Co. v. Teva Pharms. USA, Inc. , 395 F.3d 1364, 1370 (Fed. Cir. 2005); see also Innova/Pure Water, Inc. v. Safari Water Filtration Sys.

, 381 F.3d 1111, 1117 (Fed. Cir. 2004) (“[E]ven where a patent describes only a single e mbodiment, claims will not be read restrictively unless the patentee has demonstra ted a clear intention to limit the claim scope.”) (internal quotation omitted)

. T he statements in the specification relied upon by the district court neither define “MAC address” nor exclude universal addresses. The specification does not state that a hub

- generated MAC address is the actual invention itself or that hub

- generation is a critical feature

. See SunRace Roots Enter. Co. v. SRAM Corp. , 336 F.3d 1298, 1305 (Fed. Cir. 2003) (discussing cases limiting claim language because feature “described as essential to the invention” but declining to do so when the specification “does not state that the cam is the actual invention i tself”).
Moreover, nothing in the specific ation or the prosec ution history shows an attempt to distinguish over prior art for lacking a hub

- generated MAC address. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc. , 242AZURE NETWORKS , LLC v. CSR PLC 25

F.3d 1337, 1343

– 44 (Fed. Cir. 2001) ; Alloc, Inc. v. Int’l Trade Comm’n , 342 F.3d 1361, 1371 (Fed. Cir. 2003)

. 5
For these reasons, we adopt Azure’s proposed co nstruction of “MAC address” as “an address that uniquely identifies a device or group of devices on a shar ed co mmunication medium.” Accordingly, we vacate the ju d gment of noninfringement and remand for further proceedings, consistent with this opinion.

AFFIRMED

- IN

- PART, VACATED

- IN

- PART, AND REMANDED

C OSTS Each party shall bear their own costs.

5 The district court’s construction would also result in the hub device generating its own MAC address, in addition to generating the MAC addresses for the perip heral devices. Although the specification discusses embo diments where the hub generates the MAC address for each peripheral device, it is entirely silent on the source of the hub device’s own MAC address.

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ AZURE NETWORKS, LLC AND TRI

- COUNTY EXCELSIOR FOU NDATION, Plaintiffs

- Appellants,

v.

CSR PLC AND CAMBRIDGE SILICON RADIO INTERNATIONAL, LLC, Defendants

- Appellees,

AND

ATHEROS COMMUNICATIO NS, INC. AND QUALCOMM INCORPORATE D, Defendants

- Appellees,

AND

BROADCOM CORPORATION , Defendant

- Appellee,

AND

MARVELL SEMICONDUCTO R, INC., RALINK TECHNOLOGY CO RPORATION (T aiwan)

AND RALINK TECHNOLOGY CO RPORATION (USA), Defendants

- Appellees.

_____________________

2013

- 1459

______________________AZURE NE TWORKS , LLC v. CSR PLC 2

M AYER , Circuit Judge , dissenting

- in

- part. I agree with the court’s thorough and well -reasoned analysis of the standing question, but respectfully dissent from Section II of the court’s opinion. The specification of U.S. Patent No. 7,756,129 (the “’129 patent”) repeatedly and unambiguously indicates that the term “Media Access (MAC) address” refers to an address that is assigned to a peripheral device by a hub device. The patent neither contemplates nor enables any other method of network communication. The court offers no plausible justification for disregarding the unequivocal disclosure in the specification and dramatically expa nding the definition of “Media Access address” to cover any address that uniqu ely identifies a device on a shared communication system. The decision to jettison the trial court’s claim construction is predicated almost exclusively on a purported industry definition of the term “Media Access Control address,” but that term is found nowhere in the ’129 patent.

I. Over and over again, the ’129 patent makes clear that a “Media Access (MAC) address” is an address assigned to a peripheral device by a hub device. The patent explains that “a single [h]ub device” communicates with multiple peripheral devices, id. col.3 l.28, and “orchestrates all communication in the [Personal Area Network],” id. col.3 l.33. Each peripheral device is assigned a “Media Access (MAC) address,” id. col.3 l.32, by the hub device when it becomes part of the communications network, id. col.11 ll.50

- 52. The Summary of the Invention describes a single method by which peripheral devices are attached to the network, a method that requires th at the hub device assign a Media Access address to each peripheral device. Id. col.1 ll.57

- 61 (explaining that “[t]he unattached p eripheral device .

. . receives a new address from the hub device

. . . and communicates with the hub device using the new ad dress”); id. col.2 ll.8

- 14 (explaining that theAZURE NETWORKS , LLC v. CSR PLC 3

unattached peripheral device “receiv[es] a new address from the hub device” and is “attach[ed] to the network using the new address”). The specification goes on to repeatedly describe a system in which the hub device assigns an address to each peripheral device. Id. col.11 ll.2

- 4 (“[T]he [h]ub .

. . assigns a MAC address to the [peripheral device].”); id. col.11 ll.50

- 54 (“When the [h]ub successfully receives the attach

- request from the [perip heral device], it assigns a MAC address to the [peripheral device].”); id. col.11 ll.55

- 60 (“The [h]ub sends the new MAC address in an attach

- assignment message to the

now

- identified [peripheral device].” (diagram reference numbers omitted)); id. col.12 ll.31

- 34 (“The [p eripheral device] waits for an attach confirmation from the [h]ub using the new MAC address .

. . and, upon receiving it, sends a final acknowledgement to the [h]ub.” (diagram reference numbers omitted)). Without exception, the ’129 patent uses the term “ MAC address” to refer to an a ddress that is generated by the hub device. Nothing in the specification contemplates that a Media Access address will be assigned to a peripheral device at the time it is manufactured. Instead, as the district court correctl y concluded, “what is defined and consistently disclosed” in the ’129 patent “is a MAC address that originates with the hub device.” Azure Networks, LLC v. CSR PLC , No. 11

- CV

- 0139, slip op. at 2 (E.D. Tex. May 17, 2013). The specification typically provides “the primary guide to claim interpretation.” ArcelorMittal France v. AK Steel Corp. , 700 F.3d 1314, 1320 (Fed. Cir. 2012); see also Retractable Techs., Inc. v. Becton, Dickinson & Co. , 653 F.3d 1296, 1305 (Fed. Cir. 2011) (“It is axiomatic that the cla im construction process entails more than viewing the claim language in isolation. Claim language must always be read in view of the written description.”). Here, b ecause the specification repeatedly makes clear that the term “Media Access (MAC) address” refers to an address assigned by a hub device

— and discloses no other methodAZURE NE TWORKS , LLC v. CSR PLC 4

for network communication

— the court has no warrant to vastly expand the term to cover any address that uniquely identifies a device on a network. See Saffran v. Johnson & Johnso n , 712 F.3d 549, 560 (Fed. Cir. 2013) (explaining that a claim term should be construed in accordance with its “[e]xtensive, consistent usage in the specification”); Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc. , 554 F.3d 1010, 1019 (Fed. Cir. 2009) ( refusing to construe the term “wound” to cover fistulae because such a constru ction would “expand the scope of the claims far beyond anything described in the specification”). “Although the specification need not present every embodiment or permutation of the invention and the claims are not limited to the preferred embodiment of the invention, neither do the claims enlarge what is patented beyond what the inventor has described as the invention.” Ne tword, LLC v. Centraal Corp. , 242 F.3d 1347, 1352 (Fed. Cir. 2001) (citation omitted).

II.

Three fundamental errors infect the court’s decision to expand the ’129 patent to cover an invention that the patentees neither claimed nor described. First, the court states that “[t]he parties do not meaningfully dispute the ordinary and customary meaning of a ‘Media Access Control’ or ‘Medium Access Control’ address (commonly referred to as a MAC address) to the relevant community at the time of the invention.” Ante at 2 0

. This is inco rrect. The Defendants

- Appellees vigorously

— and persu asively —conten d that Azure Networks, LLC (“Azure”) never established that, at the time of the claimed inve ntion, there was a standard industry definition of the term “MAC address” which necessarily encompassed both addresses assigned locally and at the time of manufa ctu re. To the contrary, Azure, in its opening claim co nstruction brief, “cited and quoted two references that make clear that one of ordinary skill would understand MAC addresses as pre

- programmed identifiers, not locallyAZURE NETWORKS , LLC v. CSR PLC 5

assigned addresses.” Br. of Defenda nts

- Appellees at 39

- 40. Azure’s problem is one of proof. If it wanted to e nlarge its claims far beyond anything described in the specification, it had the burden of coming forward with evidence demonstrating not only that there was a co mmon industry definition of the term “MAC address,” but that that definition necessarily encompassed both a ddresses assigned at the time of manufacture and by a local network. The simple fact, however, is that Azure failed to adduce any such evidence. Indeed, its reference s provide divergent definitions of the term. Azure relies heavily on an Institute of Electrical and Electronics Engineers (“IEEE”) specification which indicates that MAC addresses can be assigned either locally or at the time of manufacture. See J.A. 160 4- 07. Other references Azure provided to the trial court, however, indicate that a MAC address is typically a 48

- bit number assigned to a network interface card at the time of manufacture, not an address assigned to a peripheral device by a local hub devi ce as described in the ’129 patent. See H ARGRAVE ’ S C OMMC ’ NS D ICTIONARY 313 (2001) ( A “MAC address” is “[a] 48

- bit number unique to each network interface card (NIC). Generally, the number is programmed into the NIC at the time of manufacture ; hence, it i s LAN and location independent.” (emphasis added)); N EWTON ’ S T ELECOM D ICTIONARY 450 (2002) ( A “MAC address” is a “Medium Access Control Address” or a “MAC name” that “traditionally is in the form of a 48

- bit number, formerly known as an EUI

- 48 (Extended Un ique Indentifier

- 48), which is unique to each LAN (Local Area Network) NIC (Network Interface Card). The MAC address is pr ogrammed into the card, usually at the time of manufa cture .” (emphasis added)). The fact that Azure’s own references provide inconsistent definitions of the term “MAC address” belies its contention that there was a “standard industry definition,” Br. of Plaintiffs

- AppellantsAZURE NE TWORKS , LLC v. CSR PLC 6

at 43, of the term sufficient to overcome its “[e]xtensive, consistent usage,” Saffran , 712 F.3d at 560, in the specification. See Renishaw PLC v. Marposs Societa’ Per Azioni

, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (emphasizing that “a common meaning, such as one expressed in a relevant dictionary, that flies in the face of the patent disclosure is undeserving of fealty”). Apparently recognizing that Azure’s claim constru ction ar gument rests on a very feeble evidentiary found ation, the court creates out of whole cloth its own definition of “Media Access address.” In the court’s view, a Media Access address is anything that identifies a device on a network, and it has ferreted out two dictionary definitions that it believes support its definition of the term. See ante at 2 0 . These dictionary definitions are not part of the record, however, and the Defendants

- Appellees have had no opportunity to challenge them. Even more fundame ntally, the one cited definition that could even arguably support this court’s exceedingly broad claim constru ction— the one stating that a “Media Access Control a ddress” is “a hardware address which uniquely identifies each physical connection,” ante at 2 0— pertains to a term found nowhere in the ’129 patent.

L anguage matters. The definition upon which the court’s claim construction is predicated is a definition of a “Media Access Control address,” not a “Media Access address,” the term used in the ’129 pate nt. See ’129 patent col.3 ll.31

- 32 (“Each device is identified by a Media Access (MAC) address.”). The fact that the patentees dropped the word “control” from their definition of the acronym “MAC” is highly significant. It indicates that they were not r elying on any purported industry defin ition of the acronym, but were instead using the term “M edia Access (M AC ) address” consistently with the disclosure in the specification to refer to an address assigned to a peripheral device by a hub device.AZURE NETWORKS , LLC v. CSR PLC 7

Indeed, a ny doubt as to whether the meaning of the term “MAC address” as used in the ’129 patent was intended to be different from any purported industry understanding of the term is resolved by reference to documents the inventors themselves provided. The ’129
pa tent was developed in the course of the inventors’ work on a project known as “BodyLAN.” On six separate occ asions, the BodyLAN specification uses the phrase “Media ACcess,” capitalizing both the “A” and the first “C” in “Access.” See J.A. 1664, 1686, 1691, 1701. The fact that the inventors capitalized the “M,” the “A,” and the “C,” in the term “Media ACcess” indicates that the letter “C” in the acronym “MAC” refers to the second letter in the word “access” and not to the word “control” in a media access control address. See Computer Docking Station Corp. v. Dell, Inc. , 519 F.3d 1366, 1374 (Fed. Cir. 2008) (emphasi zing that “repeated and definitive remarks in the written description” can restrict a particular claim term); Re nishaw

, 158 F.3d at 1250 (“[W] here there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meaning.”). Significantly, the BodyLAN specification, just like the specification of the ’129 patent, make s clear that a “Media ACcess” address originates with the hub device. See J.A. 1701.
Finally, even assuming arguendo that the term “MAC address” is ambiguous and could potentially be construed to cover addresses assigned to a device at the time of manufacture, such a construction would render the a sserted claims invalid. See Free Motion Fitness, Inc. v. Cybex Int’l, In c. , 423 F.3d 1343, 1349 n.4 (Fed. Cir. 2005) (explaining that a court can “construe claims to preserve their validity when after applying all the available tools of claim construction .

. . the claim is still ambiguous” (cit ations and internal quotation ma rks omitted)). The ’129 patent describes a system in which a hub “orchestrates all communication” in the network, ’129 patent col.3 l.33, byAZURE NE TWORKS , LLC v. CSR PLC 8

creating MAC addresses and assigning them to peripheral devices, id. col.11 ll.2

- 4. The patent does not describe any other way for the hub device to perform the attachment and communication steps required by the asserted claims. It contains no disclosure of how the claimed network would function if the hub had to communicate with p eripheral devices using unspecified and potentially propr ietary addresses which had been assigned to those devices at the time of manufacture. To expand the definition of MAC address to include addresses assigned at the time of manufacture would permit the ’129 patent to encompass a
networ k that the inventors neither contemplated nor adequately described. See Nautilus, Inc. v. Biosig Instruments, Inc. , 134 S. Ct. 2120, 2124 (2014) (“[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the p atent, and the prosec ution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”); MagSil Corp. v. Hitachi Global Storage Techs., Inc. , 687 F.3d 1377, 1381 (Fed. Cir. 2012) (“The specification must contain sufficient disclosure to enable an ordinarily skilled artisan to make and use the entire scope of the claimed invention at the time of filing.”). Azure cannot have it both ways. If the term “MAC address” is properly construed to refer only to addr esses assigned to peripheral devices by a hub device, then the accused products do not infringe. If, on the other hand, the term is broadly and unreasonably expanded to cover addresses assigned at the time of manufacture, then the asserted claims are inva lid. See MagSil

, 687 F.3d at 1381 (“[A] patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage.”); Liebel

–

Flarsheim Co. v. Medrad, Inc.

, 481 F.3d 1371, 1380 (Fed. Cir. 2007) (“The ir ony of this situation is that [the patentee] successfully pressed to have its claims include a jacketless system, but, havingAZURE NETWORKS , LLC v. CSR PLC 9

won that battle, it then had to show that such a claim was fully enabled, a challenge it could not meet.”).