NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

U.S. ETHERNET INNOVATIONS, LLC,

Plaintiff-Appellant

v.

ACER, INC., ACER AMERICA CORPORATION, 

APPLE INC., ASUS COMPUTER INTERNATIONAL,

ASUSTEK COMPUTER INC., DELL INC., FUJITSU 

LIMITED, FUJITSU AMERICA, INC., GATEWAY,

INC., HEWLETT-PACKARD CO., SONY 

CORPORATION, SONY CORPORATION OF 

AMERICA, SONY ELECTRONICS INC., TOSHIBA 

CORPORATION, TOSHIBA AMERICA 

INFORMATION SYSTEMS, INC., J.C. PENNEY 

COMPANY, INC., RENT-A-CENTER, INC., 

MARVELL SEMICONDUCTOR, INC., 

INTEL CORPORATION,

Defendants-Appellees

______________________ 

2015-1640, 2015-1641

______________________ 

Appeals from the United States District Court for the 

Northern District of California in Nos. 4:10-cv-03724-CW, 

4:10-cv-05254-CW, Judge Claudia Wilken.

______________________ 

Decided: April 25, 2016

______________________ 
2 U.S. ETHERNET INNOVATIONS v. ACER, INC. 

JOHN C. HERMAN, Robbins Geller Rudman & Dowd 

LLP, Atlanta, GA, argued for plaintiff-appellant. Also 

represented by PETER M. JONES. 

GARLAND STEPHENS, Weil, Gotshal & Manges LLP, 

Houston, TX, argued for all defendants-appellees. Defendant-appellee Intel Corporation also represented by 

JUSTIN LILE CONSTANT, DOUGLAS WAYNE MCCLELLAN;

EDWARD R. REINES, Redwood Shores, CA.

KEVIN CHRISTOPHER JONES, TechKnowledge Law 

Group LLP, Redwood City, CA, for defendants-appellees 

Acer, Inc., Acer America Corporation, Gateway, Inc. Also 

represented by MICHAEL CHAOCHA TING. 

DANNY L. WILLIAMS, Williams Morgan, PC, Houston, 

TX, for defendant-appellee Apple Inc. Also represented by 

CHRISTOPHER NEEDHAM CRAVEY, KYUNG T. KIM.

MATTHEW J. BRIGHAM, Cooley LLP, Palo Alto, CA, for 

defendants-appellees ASUS Computer International, 

ASUSTeK Computer Inc.

KIMBALL RICHARD ANDERSON, Winston & Strawn LLP, 

Chicago, IL, for defendant-appellee Dell Inc. Also represented by KATHLEEN BRIDGET BARRY. 

RUDOLPH KIM, Morrison & Foerster LLP, Palo Alto, 

CA, for defendants-appellees Fujitsu Limited, Fujitsu 

America, Inc. Also represented by DANIEL CLAYTON 

HUBIN. 

DAVID T. MCDONALD, K&L Gates LLP, Seattle, WA, 

for defendant-appellee Hewlett-Packard Co. 

LIONEL M. LAVENUE, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, Reston, VA, for defendants-
U.S. ETHERNET INNOVATIONS v. ACER, INC. 3

appellees Sony Corporation, Sony Corporation of America, 

Sony Electronics Inc. Also represented by DANIEL CRAIG 

COOLEY, MICHAEL VINCENT YOUNG, SR. 

IRFAN A. LATEEF, Knobbe, Martens, Olson & Bear, 

LLP, Irvine, CA, for defendants-appellees Toshiba Corporation, Toshiba America Information Systems, Inc. Also 

represented by BRIAN CHRISTOPHER CLAASSEN. 

DIANE K. LETTELLEIR, JCPenney Corporation, Inc., 

Plano, TX, for defendant-appellee J.C. Penney Company, 

Inc.

JEFFREY K. JOYNER, Greenberg Traurig LLP, Los Angeles, CA, for defendant-appellee Rent-A-Center, Inc.

KEVIN P.B. JOHNSON, Quinn Emanuel Urquhart & 

Sullivan, LLP, Redwood Shores, CA, for defendantappellee Marvell Semiconductor, Inc.

______________________ 

Before TARANTO, LINN, and HUGHES, Circuit Judges.

LINN, Circuit Judge.

U.S. Ethernet Innovations, LLC (“USEI”) appeals the 

decision of the United States District Court for the Northern District of California, granting Acer, Inc.’s and other 

appellees and intervenor Intel Corp.’s (collectively, “Appellees”) motion for summary judgment of invalidity of 

U.S. Patent Nos. 5,434,872 (“’872 patent”) and 5,732,094 

(“’094 patent”), directed to an apparatus for and process of 

Ethernet data transmission. U.S. Ethernet Innovations, 

LLC. v. Acer, Inc., No. 4:10-cv-3724 (N.D. Cal. Oct. 10, 

2014). Because the district court did not misconstrue the 

claim language, and because the parties agree on the 

disposition in light of this claim construction, we affirm.
4 U.S. ETHERNET INNOVATIONS v. ACER, INC. 

BACKGROUND1

USEI is the successor in interest to 3Com, which developed the Ethernet technology embodied in the ’872 and 

’094 patents.2 Ethernet technology was developed in the 

early 1980s and, much improved, is still the predominant 

form of wired communication between multiple computers 

on a local area network. Each computer is connected to 

the network via an Ethernet network adapter, also known 

as a network interface controller. The network adapter 

typically includes, inter alia, a transmit buffer, where 

data bound for the network from the host computer rests 

before being transferred to the network itself. The nature 

of the transmit buffer is the technology at issue in the 

instant appeal. 

According to the ’872 patent, the prior art included 

two basic types of transmit buffers. The first type, called 

a dedicated transmit buffer, downloads a frame of data 

from a computer, and “stor[es]” the frame until it is 

successfully transferred to the network, or the transmission is cancelled by other components of the network 

adapter. Id. at col. 1, ll. 39-43. An advantageous feature 

of the dedicated transmit buffer is the ability to store—

and, in the case of a failed transmission, re-transmit—an 

entire Ethernet frame of 64-bytes. Id. at col. 1, ll. 39-46. 

Dedicated transmit buffer systems have the disadvantage 

that the frame transmission from the buffer is delayed 

until all the data of the frame is first stored in the buffer 

 

1 Because we write for the parties, familiarity with 

the background of this case is assumed and presented 

herein only to the extent necessary to provide context for 

the analysis that follows.

2 The ’872 patent and the ’094 patent share a specification, with the ’872 patent directed to apparatus claims 

and the ’094 directed to method claims. All citations to 

the specification in this opinion are to the ’872 patent. 
U.S. ETHERNET INNOVATIONS v. ACER, INC. 5

before it is transmitted to the network. Id. at col. 1, ll. 58-

61. The ’872 patent distinguishes this type of buffer from 

a “first-in-first-out FIFO system, in which the sending 

system downloads data of a frame into the FIFO, while 

the network adapter unloads the FIFO during a transmission.” Id. at col. 1, ll. 47-50. The FIFO system has the 

advantage of high system throughput, id. at col. 1, ll. 62-

63, but the disadvantage that, in the case of a failed 

transmission, the buffer must restart receipt and transmission of the frame. The ’872 patent cites a systemsoriented network interface controller (SONIC), which all 

parties agree is a FIFO-type system, as representative 

prior art. Id. at col. 2, ll. 3-5.

The ’872 patent teaches the desirability of a hybrid 

system “to provide the advantages of a transmit data 

buffer, while maintaining the communications throughput 

available from the simpler FIFO based systems.” Id. at 

col. 2, ll. 7-10. To that end, “[t]he present invention 

provides for the early initiation of transmission of data in 

a network interface that includes a dedicated transmit 

buffer.” Id. at col. 2, ll. 13-15. USEI categorizes the 

subject matter of the ’872 and ’094 patents, as well as 

other formerly 3Com patents, as “parallel tasking” technology, a major aspect of which is “reducing the latency 

(i.e. delay) associated with transmission of data . . . by 

incorporating an early transmit feature,” effectively 

allowing the buffer to transmit data to the network before 

all the data in a frame is received by the buffer. 
6 U.S. ETHERNET INNOVATIONS v. ACER, INC. 

Representative claim 1 of the ’872 patent reads:3

1. For a system transmitting frames of 

data across a communications medium; an 

apparatus comprising:

buffer memory for storing data of frames

composed by the host computer for transmission on the communications medium;

means, having a host system interface, for 

transferring data of frames to the buffer 

memory; 

means, coupled with the buffer memory, for 

monitoring the transferring of data of a 

frame to the buffer memory to make a 

threshold determination of an amount of 

data of the frame transferred to the buffer 

memory; 

means, responsive to the threshold determination of the means for monitoring, for 

initiating transmission of the frame prior 

to transfer of all the data of the frame to 

the buffer memory from the host computer;

transmit logic, responsive to the means for 

initiating transmission, for retrieving data 

from the buffer memory and supplying re-

 

3 USEI does not separately argue the patentability 

of other claims in the ’872 patent or the ’094 patent. All 

asserted claims of both patents are thus analyzed together according to representative claim 1 in the ’872 patent.
U.S. ETHERNET INNOVATIONS v. ACER, INC. 7

trieved data for transmission on the communications medium;

underrun control logic, which detects a 

condition in which the means for transferring falls behind the transmit logic, and 

supplies a bad frame signal to the communications medium in response to the underrun condition.

’872 patent, col. 30, ll. 5-30 (disputed claim term underlined). The district court construed the term “buffer 

memory” as “a memory for temporary storage of data.” 

This construction is not directly on appeal here.

In 2009, USEI sued Appellee computer makers in the 

Eastern District of Texas for infringement of several 

patents, including the ’872 and 094 patents at issue in 

this appeal. Intel Corporation and Marvell Semiconductor, Inc. intervened. On motion by the Appellees, the case 

was transferred to the Northern District of California. 

USEI also sued several end-users of the Defendant’s 

computers, which was also transferred to the Northern 

District of California, and related to the first. 

Appellees motioned for summary judgment of anticipation of all asserted claims of the ’872 and ’094 patents 

over the SONIC reference, a FIFO-type system cited in 

the specification, and USEI motioned for summary judgment of no anticipation over SONIC, on the basis that the 

claims require capacity in the buffer to hold at least a fullsized 64-byte Ethernet frame, and SONIC indisputably 

does not.

The district court granted Appellees’ motion, holding 

that “the plain language of the claims says nothing about 

the buffer memory’s ability to hold a complete frame of 

data,” and explaining that adding such an ability would 

improperly import a limitation from the specification into 

the claims. U.S. Ethernet Innovations, LLC v. Acer, Inc., 
8 U.S. ETHERNET INNOVATIONS v. ACER, INC. 

No. 10-3724, at 5-10 (N.D. Cal. Nov. 7, 2014) (hereinafter, 

“Summary Judgment Op.”) 

USEI timely appealed. We have jurisdiction over an 

appeal from a final decision from a district court “related 

to patents” under 28 U.S.C. § 1295(a)(1).

DISCUSSION

We begin by addressing whether the district court 

erred in granting summary judgment of invalidity of all 

claims of the ’872 and ’094 patents as anticipated by 

SONIC.4 

Under Ninth Circuit law, we review the grant of 

summary judgment of invalidity here de novo, Jesinger v. 

Nevada Fed. Credit Union, 24 F.3d 1127, 1131 (9th Cir. 

1994), asking whether there is a genuine issue of material 

fact, Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986), 

while construing the evidence in the light most favorable 

to the nonmoving party. Matsushita Elec. Indus. Co. v. 

Zenith Radio Corp., 475 U.S. 574, 587 (1986).

Anticipation is an issue of fact, but reviewed de novo

when decided on summary judgment. OSRAM Sylvania, 

Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 704 (Fed. 

Cir. 2012). When there are no factual disputes, the 

anticipation issue collapses into an issue of claim construction, which we review de novo as an issue of law. 

 

4 USEI also argues that the district court erred by 

1) denying USEI’s motion for summary judgment of no 

laches due to Intel’s intentional copying of 3Com’s EtherLink III Ethernet adapter, and 2) granting partial summary judgment of failure to mark under 35 U.S.C. § 287 

on IBM and Intel licensed goods. Because we hold that all 

the claims of the ’872 and ’094 patents at issue are invalid 

as anticipated, we need not and do not address these 

additional issues.
U.S. ETHERNET INNOVATIONS v. ACER, INC. 9

Athletic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578 

(Fed. Cir. 1996) (“Where, as here, the parties do not 

dispute any relevant facts regarding the accused product 

but disagree over which of two possible meanings of Claim 

1 is the proper one, the question of literal infringement 

collapses to one of claim construction and is thus amenable to summary judgment.”); Gen. Mills, Inc. v. HuntWesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997) (same). 

As the district court correctly noted, the anticipation 

question here collapses into a question of claim construction. See Summary Judgment Op. at 9 (“In essence, USEI 

does not dispute any relevant facts regarding the alleged 

anticipating SONIC prior art, but only disagrees over an 

interpretation of the claim language. This renders the 

anticipation issue of claim construction, which is a question of law.”). Both parties agree that SONIC cannot hold 

a full-sized Ethernet frame, and cannot retransmit a 

packet of data to the network without retrieving it again 

from the host computer. Both parties agree that if the 

claims require the buffer to be capable of storing a fullsized Ethernet frame, then the claims do not read on 

SONIC, and summary judgment was improper. Similarly, both parties agree that if the claims do not require the 

buffer to be capable of storing a full-sized Ethernet frame, 

then SONIC anticipates the claims, and summary judgment was proper. This is a paradigmatic situation of 

anticipation collapsing into claim construction.

The dispute centers on the element, “buffer memory 

for storing data of frames . . . for transmission.” According to USEI, that element, when read in light of the 

specification and other claim elements, requires the buffer 

to have capacity to store an entire Ethernet frame. USEI 

supports its understanding with numerous statements in 

the specification indicating the nature of the invention 

and describing preferred embodiments. See ’872 patent, 

Abstract (“Early initiation of transmission of data in a 
10 U.S. ETHERNET INNOVATIONS v. ACER, INC. 

network interface that includes a dedicated transmit 

buffer is provided. . . .”); id. at col. 2, ll. 7-10 (“It is desirable to provide the advantages of a transmit data buffer, 

while maintaining the communications throughput available from the simpler FIFO based systems.”); id. at col. 2, 

ll. 13-15 (“The present invention provides for the early 

initiation of transmission of data in a network interface 

that includes a dedicated transmit buffer.”); id. at col. 18, 

ll. 31-35 (“The actual frame transmission onto the network will commence when two conditions are met: (1) the 

XMIT [transmit] START THRESH[hold] (described below) 

condition has been met, or, if XMIT START THRESH is 

zero, when the entire frame has been copied to the adapter’s RAM, and (2) when there are no previously queued 

transmit requests.”); id. at col. 29, ll. 28-31 (“If, however, 

the threshold value is greater than or equal to the frame 

length, then transmission will commence once the entire 

frame is resident on the adapter.”). USEI argues that 

persons of ordinary skill would read the claim language, 

“storing data of frames. . . for transmission” to incorporate 

the full-frame storage capability from the specification.

USEI’s arguments are unconvincing. While we certainly read the claims in light of the specification, Phillips 

v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en 

banc), “[i]t is a bedrock principle of patent law that the 

claims of a patent define the invention to which the 

patentee is entitled the right to exclude,” id. at 1312 

(internal quotes omitted). Here, all that the claims require is that the buffer memory “stor[e] data of 

frames . . . for transmission.” On its face, the claim says 

nothing about a buffer’s minimum storage capacity. The 

statements in the specification cited above purporting to 

define the invention are inapposite without language in 

the claims indicating a desire to claim the teachings

disclosed.

The claims do not say that the buffer must “store all

the data of frames,” or “store entire frames of data,” or, 
U.S. ETHERNET INNOVATIONS v. ACER, INC. 11

tellingly, that the buffer even “store frames of data.” The 

distinction between “data of frames” and “frames of data” 

is important in the context of the ’872 patent because 

when the patent uses the phrase “data of frames,” it is 

consistently referring to less than an entire Ethernet

frame of data, while entire Ethernet frames of data are 

referred to as “frames of data” or “all of the data of the 

frame.” ’872 patent, col. 1, ll. 36-49 (“Some network 

adapter interfaces included dedicated transmit buffers, 

into which a frame of data . . . can be downloaded by the 

sending system. . . . Transmit data buffers are to be 

distinguished from first-in-first-out FIFO systems, in 

which the sending system downloads data of a frame into 

the FIFO.”); id. at col. 2, ll. 15-22 (“The system includes 

logic for transferring frames of data composed by the host 

computer into the transmit buffer. Also, the amount of 

data of a frame which is downloaded by the host to the 

transmit buffer is monitored to make a threshold determination of an amount of data of the frame resident in the 

transmit buffer.”); id. at col. 2, ll. 22-27 (“The network 

interface controller includes logic for initiating transmission of the frame . . . prior to the transfer of all of the data 

of the frame into the transmit buffer.”); id. at col. 4, ll. 41-

45 (“[A] threshold store which stores a threshold value 

which indicates an amount of data of a frame that must 

be resident in the frame buffer before transmission of that 

frame may be initiated.”). The claims say only “data of 

frames,” indicating that the buffer need not be capable of 

storing an entire Ethernet frame of data.

USEI also argues that a buffer with a capacity less 

than a full Ethernet frame cannot “stor[e]” data of frames. 

USEI made and explained this position during oral argument: “Our view is, the claim language ‘storing data . . . 

for transmission’ requires the element of the transmit 

data buffer to have that data locally to ensure transmission, so it doesn’t have to go back to the host computer 

and interrupt it.” Oral Argument at 6:20-6:36, USEI v. 
12 U.S. ETHERNET INNOVATIONS v. ACER, INC. 

Acer, Inc., No. 2015-1640, -1641 (Fed. Cir., argued Mar. 

11, 2016), available at http://1.usa.gov/1UBeBP3 (hereinafter, “Acer Oral Argument”); see also id. at 6:01-6:15 (“I 

believe the patent language, ‘to successfully transmit’ it 

would have to have the first 64 bytes so it didn’t have to 

go back to the host to re-download the data.”). USEI 

argues that FIFOs do not and cannot “store” data, but 

merely “unload” the bytes. This argument, too, lacks 

merit. First, and most clearly, the claims do not include 

the element, “transmit data buffer.” Instead, the claims 

use the notably broader phrase, “buffer memory.” There

is no basis, therefore, to adopt USEI’s argument to incorporate the characteristics of transmit data buffers into the 

claims. Second, there is no claim requirement that the 

buffer “successfully transmit” the data in the sense of 

requiring local storage of the data. That functionality is 

contained in the specification in the description of the 

prior art, see ’872 patent at col. 1, ll. 39-43, and not in any 

of the asserted claims. Third, as USEI admitted during

oral argument in the companion Texas Instruments case, 

it is undisputed that SONIC holds onto some amount of 

data of frames until a threshold amount of data enters the 

buffer, at which point SONIC unloads that data without 

retaining any of it. Oral Argument at 24:52-25:20 and 

26:20-26:35, U.S. Ethernet Innovations, LLC v. Texas 

Instruments, Inc., No. 2015-1510 (Fed. Cir., argued March 

11, 2016), available at http://1.usa.gov/1UBeBP3 (hereinafter, “Texas Instrument Oral Argument”). The data

waiting to be transferred before this threshold is reached

is “stored,” by any natural reading of the word. USEI 

argues that this is not enough, because “the language in 

column 1 requires storage for successful transmission. 

Under the Ethernet standard, that’s 64 bytes.” Oral 

argument at 10:58-11:08. Similar to the problem with 

USEI’s other arguments, nothing in the claims requires a 

special type of storage where all the data of the frame is 

stored until after it is transmitted. 
U.S. ETHERNET INNOVATIONS v. ACER, INC. 13

Next, USEI argues that constructing the claim to allow buffers without full frame storage capacity would 

render superfluous the claim limitation “means . . . for 

initiating transmission of the frame prior to transfer of all 

of the data of the frame to the buffer memory from the 

host computer.” That phrase does not necessarily require 

the capability of transferring all of the data of the frame 

to the buffer memory—a buffer that can store 32 bytes of 

data, but can begin transmission when 16 bytes are 

written to the buffer would meet the limitation. Indeed, 

this limitation actually undermines USEI’s argument, 

because it shows that where the patent intended to indicate all the data of the frame in the claim, it said so. The 

failure to say “all the data of the frame” in the claim 

element “storing data of frame . . . for transmission” again 

indicates that that element does not require a full frame 

of data.

Finally, USEI spends much of its brief and its oral argument discussing the testimony of several experts with 

respect to the interpretation of the claims. USEI argues 

that nine of the ten experts understood the claims as 

requiring a buffer with full Ethernet frame capability. 

Setting aside the accuracy of USEI’s characterization of 

the expert testimony, the expert opinions do not answer 

the claim construction issue before us. Though we look at 

the claims from the perspective of those of ordinary skill 

in the art, Multiform Desiccants, Inc. v. Medzam, Ltd., 

133 F.3d 1473, 1477 (Fed. Cir. 1998) (cited in Phillips, 415 

F.3d at 1313), experts “cannot be used to prove the proper 

or legal construction of any instrument of writing,” Teva 

Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 

(2015) (citing Winans v. New York & Erie R. Co., 21 How. 

88, 100-101 (1859)), and “in the actual interpretation of 

the patent the court proceeds upon its own responsibility, 

as an arbiter of the law, giving to the patent its true and 

final character and force,” id. (citing Markman v. 

Westview Instruments, Inc., 517 U.S. 370, 388 (1996)). 
14 U.S. ETHERNET INNOVATIONS v. ACER, INC. 

Contrary to USEI’s contentions, this case cannot be 

decided by reading the first column and a half of the 

patent and ignoring what the claims actually recite. See 

Acer Oral Argument, at 1:30-1:36. USEI has failed to 

bridge the significant gap between the claim language 

and the teachings of the specification.

CONCLUSION

For the foregoing reasons, we affirm the district 

court’s determination that nothing in the claims requires 

the buffer memory to be capable of storing 64 bytes of 

data. Because there is no factual dispute that the remaining elements of the asserted claims of the ’872 and ’094 

patents are contained in the SONIC prior art, we affirm 

the determination of the district court that all asserted 

claims of the ’872 and ’094 patents are invalid as anticipated over the SONIC reference.

AFFIRMED