NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

OYSTER OPTICS, LLC,

Plaintiff-Appellant

v.

ALCATEL-LUCENT USA, INC., CISCO SYSTEMS,

INC.,

Defendants-Appellees

______________________

2019-1255, 2019-1257

______________________

Appeals from the United States District Court for the 

Eastern District of Texas in Nos. 2:16-cv-01297-JRG, 2:16-

cv-01301-JRG, 2:16-cv-01302-JRG, Judge J. Rodney Gilstrap.

______________________

SEALED OPINION ISSUED: May 8, 2020

PUBLIC OPINION ISSUED: May 27, 2020*

______________________

REZA MIRZAIE, Russ August & Kabat, Los Angeles, CA, 

argued for plaintiff-appellant. Also represented by MARC 

AARON FENSTER, BAHRAD A. SOKHANSANJ. 

* This opinion was originally filed under seal and has 

been unsealed in full.

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2 OYSTER OPTICS, LLC v. ALCATEL-LUCENT USA, INC.

 MATTHEW S. STEVENS, Alston & Bird LLP, Charlotte, 

NC, argued for defendant-appellee Alcatel-Lucent USA, 

Inc. Also represented by KIRK T. BRADLEY, STEPHEN 

LAREAU, CHRISTOPHER CHARLES ZIEGLER; JOHN D. HAYNES, 

Atlanta, GA. 

 JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington, 

DC, argued for defendant-appellee Cisco Systems, Inc. 

Also represented by JASON M. WILCOX; MATTHEW 

CHRISTOPHER GAUDET, L. NORWOOD JAMESON, Duane Morris LLP, Atlanta, GA; JOHN MATTHEW BAIRD, Washington, 

DC. 

 ______________________

Before LOURIE, SCHALL, and CHEN, Circuit Judges.

SCHALL, Circuit Judge.

Oyster Optics, LLC (“Oyster”) is the owner of U.S. Patent No. 7,620,327 (“the ’327 patent”). The ’327 patent is 

directed to transceiver cards for sending and receiving data 

over a fiber optic network. In November of 2016, Oyster 

sued various fiber optic equipment manufacturers in the 

United States District Court for the Eastern District of 

Texas for infringement of the ’327 patent. Among the defendants were Alcatel-Lucent USA, Inc. (“ALU”) and Cisco 

Systems, Inc. (“Cisco”).1 On September 4, 2018, addressing 

the parties’ cross-motions for summary judgment, the district court granted partial summary judgment in favor of 

ALU and Cisco. The court did so because it found that a 

settlement agreement between Oyster and Fujitsu Limited 

(“Fujitsu”) and Fujitsu Network Communications, Inc. 

(“FNC”) (“the Oyster/Fujitsu Agreement” or “the Agreement”) had the effect of releasing ALU and Cisco from 

1 Where appropriate, we refer to ALU and Cisco collectively as “Appellees.”

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liability for infringement of the ’327 patent. See Order 

Granting Defs.’ Mot. for Partial Summ. J. Regarding Their 

Release Defense, Oyster Optics, LLC. v. Coriant (USA) Inc., 

No. 2:16-cv-01302 (E.D. Tex. Dec. 4, 2018), ECF No. 864

(redacted), J.A. 33–50 (“Summary Judgment Decision”).2 

For the reasons stated below, we affirm.

BACKGROUND

I.

In November of 2016, Oyster sued FNC for infringement of the ’327 patent. In its suit, Oyster alleged that 

FNC infringed the patent by “making, selling, using, offering for sale, and/or causing to be used” versions of Fujitsu’s 

100G/400G LN Modulator and 100G/400G Integrated Coherent Receiver, among other products. Summary Judgment Decision at 12–15.3 Separately, Oyster also sued 

ALU and Cisco for infringement of the ’327 patent. Oyster’s suits against ALU and Cisco were based upon their 

sales of various products, at least some of which contained

Fujitsu modulators and receivers. See id. at 5. Subsequently, Oyster’s suits against ALU and Cisco were consolidated with its suit against FNC. Id. at 1.4

2 The district court subsequently issued an order 

clarifying the scope of the Summary Judgment Decision. 

Order, Oyster Optics, LLC. v. Coriant (USA) Inc., No. 2:16-

cv-01302 (E.D. Tex. Nov. 7, 2018), ECF No. 850, J.A. 26–28 

(“November 7th Order”). The November 7th Order also 

granted a joint motion to sever any claims not resolved by 

the Summary Judgment Decision into two new actions, one 

case for Oyster’s remaining claims against ALU and another for Oyster’s remaining claims against Cisco. Id. 3 We refer to these accused items as “Fujitsu modulators and receivers.” 4 The ALU, Cisco, and FNC litigations were member 

case Nos. 2:16-cv-01297-JRG, 2:16-cv-01301-JRG, and 

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Claim 25 of the ’327 patent, which the parties agree is 

illustrative, recites:

A transceiver card for a telecommunications box for 

transmitting data over a first optical fiber and receiving data over a second optical fiber, the card 

comprising:

a transmitter for transmitting data over the first 

optical fiber, the transmitter having a laser, a modulator and a controller receiving input data and 

controlling the modulator as a function of the input 

data, the transmitter transmitting optical signals 

for telecommunication as a function of the input 

data;

a fiber output optically connected to the laser for 

connecting the first optical fiber to the card;

a fiber input for connecting the second optical fiber 

to the card;

a receiver optically connected to the fiber input for 

receiving data from the second optical fiber; and

an energy level detector to measure an energy level 

of the optical signals, the energy level detector including a threshold indicating a drop in amplitude 

of a phase-modulated signal.

’327 patent col. 8 ll. 6–24. 

In May of 2018, Oyster settled its suit against FNC by 

entering into the Oyster/Fujitsu Agreement. Summary 

Judgment Decision at 1–2. To the extent relevant to this 

appeal, in Section 3.1 of the Agreement Oyster releases 

2:16-cv-01299-JRG, respectively. These member cases 

were consolidated into lead case No. 2:16-cv-01302-JRG, a 

suit Oyster originally filed against Coriant (USA) Inc. (“Coriant”). Coriant is not a party to this appeal. 

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“FNC, Fujitsu, and their Affiliates” from “any and all 

claims of infringement under any patent right within the 

Licensed Patents, on account of any product, process, or 

service exported or imported, made, had been made, used, 

distributed, offered to sell, sold, or otherwise disposed of by

FNC, Fujitsu, and their Affiliates.” Id. at 3–4. Section 3.1 

further states that Oyster’s release extends to “all customers . . . of FNC, [Fujitsu], and their Affiliates, but only to 

the extent such customers . . . exported or imported, made, 

have had made, used, distributed, offered to sell, sold, or 

otherwise disposed of Licensed Products or components of 

Licensed Products.” Id. at 4. In Section 4.1 of the Agreement, Oyster grants to “FNC, Fujitsu, and their Affiliates” 

a forward-looking license under the “Licensed Patents” 

with respect to “Licensed Products.” Id. The terms “Affiliate,” “Licensed Patents,” and “Licensed Products” are defined in Sections 1.1, 1.2, and 1.3 of the Agreement, 

respectively. Id. at 2–3. 

Section 1.3 of the Agreement states that “Licensed 

Products” means “any products, product lines, services, devices, systems, components, hardware, software and/or 

software algorithm and/or combination of any one or more 

of the foregoing, made, sold, imported, or distributed by or 

for FNC, [Fujitsu], or their Affiliates at any time, including 

those sold to, distributed to, or otherwise provided (directly 

or indirectly) to any customer by FNC, [Fujitsu], or their 

Affiliates.” Id. at 3. The “Licensed Products” definition 

contains two additional provisions. They are as follows: 

For clarity, this definition of Licensed Products 

does not prevent Oyster from exercising its patent 

rights in instances where its infringement allegations do not include or refer to a Licensed Product. 

For further clarity, this definition of Licensed Products also does not prevent Oyster from exercising 

its patent rights in instances where its infringement allegations do include or refer to a Licensed 

Product, unless the only reasonable and intended 

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use of the component comprising the Licensed 

Product is to practice the claim and the component 

substantially embodies the patented invention by 

embodying its essential features.

Id. 

II.

A.

In the wake of the Oyster/Fujitsu Agreement, ALU and 

Cisco moved for partial summary judgment in Oyster’s suit 

against them. ALU and Cisco argued that the Agreement 

released them from all claims of infringement with respect 

to their products containing Fujitsu modulators and receivers that arose prior to May 22, 2018, the effective date of 

the Agreement. Defs.’ Mot. for Partial Summ. J. Regarding 

Their Release Defense, Oyster Optics, LLC. v. Coriant 

(USA) Inc., No. 2:16-cv-01302 (E.D. Tex. July 24, 2018), 

ECF No. 691 at 5–8 (redacted) (“Defendants’ Summary 

Judgment Motion on Release”). Oyster cross-moved, arguing that ALU and Cisco’s defenses of exhaustion, license, 

and release failed as a matter of law. Mot. for Summ. J. on 

Alcatel’s “New Defenses,” Oyster Optics, LLC. v. Coriant 

(USA) Inc., No. 2:16-cv-01302 (E.D. Tex. July 24, 2018), 

ECF No. 693 (redacted); Mot. for Summ. J. on Cisco’s “New 

Defenses,” Oyster Optics, LLC. v. Coriant (USA) Inc., No. 

2:16-cv-01302 (E.D. Tex. July 25, 2018), ECF No. 695 (redacted). 

For purposes of their cross-motions, the parties agreed 

that the following facts were undisputed: (1) The term “Licensed Patents” in the Agreement includes the ’327 patent. 

(2) Fujitsu Optical Components (“Fujitsu Optical”) is an 

“Affiliate,” as defined in the Agreement, of Fujitsu. 

(3) ALU and Cisco each acquired Fujitsu modulators and 

receivers directly or indirectly from Fujitsu Optical. Thus, 

ALU and Cisco are customers of Fujitsu in accordance with 

the release provision of the Agreement. (4) The Fujitsu 

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modulators and receivers are “products,” “devices,” “components,” and/or “hardware . . . made, sold, imported, or 

distributed by or for FNC, [Fujitsu], or their Affiliates . . . .” 

Summary Judgment Decision at 4–5.

The district court heard oral argument on the parties’ 

summary judgment motions on August 9, 2018. At the conclusion of the hearing, the court stated that, because the 

parties agreed the Oyster-Fujitsu Agreement was unambiguous, the court was construing the contract “pursuant 

to its four corners.” Tr. of Pre-Trial Hearing, Oyster Optics 

v. Coriant (USA) Inc., No. 2:16-cv-01302 (Aug. 9, 2018), 

ECF No. 824 at 14, 15, 70 (“Pre-Trial Hearing Transcript”). 

The court also stated that, based upon two alternate approaches, it was holding that, under the Oyster/Fujitsu 

Agreement, ALU and Cisco were released from Oyster’s 

claims of infringement “as to the Fujitsu and its affiliates’ 

products.” Id. at 72. The court informed the parties that 

it would issue a written opinion explaining its holdings. Id.

at 70, 71.

On September 4, 2018, the district court issued the 

Summary Judgment Decision. The court began its analysis 

by holding that the release of Section 3.1 applies to Fujitsu, 

Fujitsu Affiliates, including Fujitsu Optical, and customers 

of Fujitsu and its affiliates, where the customers have “exported or imported, made, have had made, used, distributed, offered to sell, sold, or otherwise disposed of Licensed 

Products or components of Licensed Products.” Summary 

Judgment Decision at 8. The district court stated, “[i]t is 

undisputed that [ALU and Cisco] are customers of Fujitsu’s 

affiliate Fujitsu Optical.” Id.

The district court then turned to the question of 

whether, as customers of Fujitsu Optical, ALU and Cisco 

were released from liability for infringement by Section 3.1 

of the Oyster/Fujitsu Agreement. Id. In its motions for 

summary judgment, Oyster argued that ALU’s and Cisco’s 

products were not released from infringement by the 

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Agreement because, on their own individually, the Fujitsu 

modulators and receivers contained in the accused products could not satisfy essential claimed features of the ’327 

patent and thus did not “substantially embod[y]” the patent claims. Therefore, Oyster maintained, it could exercise its patent rights under the “[f]or further clarity” 

provision of Section 1.3. Id. at 10; see also Appellant’s Br. 

13–14. In Defendants’ Summary Judgment Motion on Release, ALU and Cisco argued that Section 3.1 of the Oyster/Fujitsu Agreement released them from liability for 

infringement of the ’327 patent for those products that contained Fujitsu modulators and receivers that ALU and 

Cisco purchased from a Fujitsu Affiliate. ALU and Cisco 

contended that the “[f]or further clarity” provision did not 

change the scope of the definition of “Licensed Products” 

set forth in Section 1.3 of the Agreement. Appellees’ Br. 

13; see generally Defendants’ Summary Judgment Motion

on Release. In separate motions, they also argued that Oyster’s patent rights with respect to the accused products under the ’327 patent were exhausted as a result of Fujitsu 

Optical’s authorized sales of the modulators and receivers 

to ALU and Cisco. Appellees’ Br. 13.

As to whether the “[f]or further clarity” provision of 

Section 1.3 limited the definition of “Licensed Products” in 

Section 3.1, the district court held that the clause only applies to the Agreement’s license provision in Section 4.1, 

where the term “Licensed Products” appears, and not to the 

customer release provision in Section 3.1, where the term 

also appears. Summary Judgment Decision at 9–10. Referring to the “[f]or further clarity” provision, the court 

stated: “[I]t means that the law of patent exhaustion is 

acknowledged by the Parties [to the Agreement] to apply to 

the Licensed Products identified within the [Agreement]. 

The provision is a prospective preservation[] of rights under 

the forward-looking license of Section 4.1 alone, but it has 

no effect as to the retrospective release of Section [3.1].” Id.

at 9 (bracketed revisions added).

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Concluding, the district court found that the Fujitsu 

modulators and receivers contained in ALU’s and Cisco’s 

products qualified as “Licensed Products” within the meaning of Section 1.3 for three reasons. First, the modulators 

and receivers were at least either “products,” “devices,” 

“components,” and/or “hardware.” Second, the modulators 

and receivers were “made, sold, imported, or distributed” 

by an Affiliate (Fujitsu Optical). And, third, the modulators and receivers were “sold to, distributed to, or otherwise 

provided (directly or indirectly) to any customer by FNC, 

Fujitsu Limited, or their Affiliates.” Id. at 10. The court 

thus held that the Fujitsu modulators and receivers qualified as “Licensed Products” within the meaning of Section 

1.3 of the Agreement. Id. at 10–11. Having determined 

that the Fujitsu modulators and receivers were “Licensed 

Products,” the district court ruled, “all of Oyster’s claims 

based upon the Licensed Patents against any accused product containing a Licensed Product or components of Licensed Products have been released under the 

[Oyster/Fujitsu Agreement], specifically including accused 

products sold prior to May 22, 2018, that include a Fujitsu 

[modulator] or [r]eceiver.” Id. at 11–12. Accordingly, the 

court held that ALU and Cisco were released from Oyster’s 

claims for infringement of the ’327 patent for those products containing Fujitsu modulators and receivers that were 

sold prior to the May 22, 2018 effective date of the Agreement.

B.

In the second part of its summary judgment decision, 

the district court concluded that there was an alternative 

ground for concluding that the Oyster/Fujitsu Agreement 

released ALU and Cisco from liability under the ’327 patent. Id. at 12. The court determined that, to the extent 

its holding with respect to the “[f]or further clarity” provision of Section 1.3 was held on appeal to be incorrect, ALU 

and Cisco still would be released from liability. Specifically, the court found that, in light of Oyster’s contentions 

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and representations “in the prior Fujitsu litigation,” the 

Fujitsu products identified in that litigation “embody the 

essential features of the patented invention,” as required 

by the “[f]or further clarity” provision of Section 1.3. Summary Judgment Decision at 12–17.5 “Therefore,” the court 

stated, “in the event that the ‘for further clarity’ provision 

in Section 1.3 of the [Oyster/Fujitsu Agreement] limits the 

definition of Licensed Products, the Court holds that Section 3.1’s release still applies to the Defendants as to any 

claim of infringement relating to the ’327 Patent where the 

accused products contain one of the Accused Instrumentalities of the Fujitsu litigation.” Id. at 17.

The parties sought clarification of what products were 

encompassed by the Summary Judgment Decision. Oyster 

interpreted “Accused Instrumentalities of the Fujitsu litigation” to mean only those specific model numbers named 

in infringement contentions referenced in the Summary 

Judgment Decision. In other words, according to Oyster, 

under the court’s alternative ruling, in order to be covered 

by the release of Section 1.3 as a “Licensed Product” a Fujitsu modulator or receiver contained in an accused ALU or 

Cisco product had to have the same model number as a 

modulator or receiver listed in the infringement contentions Oyster served on FNC in case No. 2:16-cv-01299-JRG. 

For their part, ALU and Cisco interpreted the phrase to 

include the “category” of Fujitsu products named in the infringement contentions, “‘i.e., 100G/400G LN Modulator’ 

5 In referring to the “prior Fujitsu litigation,” the 

court appears to have been referencing both case No. 2:16-

cv-01299-JRG and a subsequent short-lived suit Oyster 

filed against FNC, Fujitsu, and Fujitsu Optical, case No. 

2:18-cv-0153-JRG. Oyster stipulated to the dismissal of 

the latter nine days after filing its complaint. We adopt the 

same convention, referring to both actions collectively as 

the “prior Fujitsu litigation.” 

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and ‘100G/400G Integrated Coherent Receiver’ products.” 

Further, ALU and Cisco urged that the model numbers 

were “exemplary.” In its November 7th Order, the court 

held that ALU and Cisco’s interpretation of the relevant 

part of the Summary Judgment Decision was correct. November 7th Order at 2.

Following the entry of judgment, Oyster timely appealed. We have jurisdiction pursuant to 28 U.S.C. 

§ 1295(a)(1).

DISCUSSION

I.

We review a grant of summary judgment in accordance 

with the law of the regional circuit. Profectus Tech. LLC v. 

Huawei Techs. Co., 823 F.3d 1375, 1379 (Fed. Cir. 2016). 

The Fifth Circuit reviews a grant of summary judgment de 

novo. Kinsale Ins. v. Georgia-Pacific, L.L.C., 795 F.3d 452, 

454 (5th Cir. 2015). Summary judgment is appropriate 

when “there is no genuine dispute as to any material fact 

and the movant is entitled to judgment as a matter of law.” 

FED. R. CIV. P. 56(a). “By its very terms, this standard provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise 

properly supported motion for summary judgment; the requirement is that there be no genuine issue of material

fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–

48 (1986). A dispute is genuine only “if the evidence is such 

that a reasonable jury could return a verdict for the nonmoving party.” Id. at 248.

We also review the interpretation of contract terms under regional circuit law. DePuy Spine, Inc. v. Medtronic 

Sofamor Danek, Inc., 469 F.3d 1005, 1013 (Fed. Cir. 2006). 

The Fifth Circuit reviews a district court’s interpretation 

of a contract de novo. Dallas/Fort Worth Int’l Airport Bd. 

v. INet Airport Sys., Inc., 819 F.3d 245, 248 (5th Cir. 2016)

(“The contract in this case is governed by Texas law, under 

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12 OYSTER OPTICS, LLC v. ALCATEL-LUCENT USA, INC.

which contract interpretation and whether a contract is 

ambiguous are questions of law.”). Under Texas law, the 

intent of the parties is to be determined from the agreement itself, not from a party’s later interpretation of it. See 

Las Colinas Obstetrics-Gynecology-Infertility Ass’n P.A. v. 

Villalba, 324 S.W.3d 634, 639–40 (Tex. App. 2010). 

II.

Oyster makes three main arguments on appeal. First, 

it contends that the district court erred when it construed 

the “[f]or further clarity” provision to not apply to the release of Section 3.1. Appellant’s Br. 20–38. Second, even 

if the “[f]or further clarity” provision does not apply to Section 3.1, Oyster urges, the plain language of that Section 

does not provide a release for a customer to buy Fujitsu’s 

components and then incorporate them into an infringing 

product. Id. at 38–40; Reply Br. 4–11. Third, Oyster contends that the district court’s alternative ruling is incorrect 

because the Fujitsu modulators and receivers do not “substantially embody” the claims of the ’327 patent. This is so, 

Oyster alleges, because the claims of the ’327 patent are 

directed to a transceiver card and require components in 

addition to a modulator and a receiver. Appellant’s Br. at 

42–46. In the Fujitsu litigation, Oyster argues, Oyster consistently accused only Fujitsu’s transceiver card and module of direct infringement, not the Fujitsu modulators and 

receivers, which Oyster states it accused only of indirect 

infringement. Id. at 46–54. Oyster further argues that the 

court’s alternative ruling is incorrect because Oyster’s

statements in the prior Fujitsu litigation pertained only to 

specific models of Fujitsu modulators and receivers and 

“many of ALU’s and Cisco’s products [currently] accused of 

infringement utilize Fujitsu modulators and/or receivers 

with model numbers that do not appear in the lists in Oyster’s contentions [in the prior Fujitsu litigation].” Id. at 54–

57. In addition, Oyster contends the district court erroneously construed Oyster’s statements from the prior Fujitsu 

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litigation to be legally binding judicial admissions. Id. at 

50–54.

In response, Appellees argue that the district court 

properly found that the“[f]or further clarity” provision of 

Section 1.3 does not limit the scope of the term “Licensed 

Products.” Rather, it serves to acknowledge the law of patent exhaustion and clarifies that Fujitsu’s customers have 

not been awarded a prospective license. Appellees’ Br. 22–

23, 34–40. Appellees contend that Oyster waived its second 

argument by not raising it before the district court. Even 

if we were to consider the argument, Appellees argue, the 

language of Section 3.1’s release applies to “any and all 

claims of infringement under any patent right” and thus 

encompasses Appellees’ use of Fujitsu components in their

products. Appellees’ Br. 43–45.

Appellees also urge us to affirm the district court’s alternative ruling. Appellees assert that “[u]ndisputed evidence—Oyster’s contentions, pleadings, and expert reports 

in the Fujitsu litigation—shows that the Fujitsu components in Cisco’s and ALU’s products substantially embody 

the ’327 patent’s claimed invention under the [Agreement].” Appellees’ Br. 26, 45–65. Oyster and its experts 

have admitted that the Fujitsu components in this case 

perform in materially the same way as the Fujitsu modulators and receivers named in the prior Fujitsu litigation, 

Appellees state. 

For the reasons that follow, we affirm the decision of 

the district court on the basis of its alternative ruling. We 

express no view with respect to the court’s primary ruling.

III.

As noted, Section 3.1 of the Oyster/Fujitsu Agreement 

provides a release to “all customers . . . of FNC, Fujitsu 

Limited, and their Affiliates,” with respect to “Licensed 

Products or components of Licensed Products.” Section 1.3 

of the Agreement defines “Licensed Products” broadly. 

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Then, in the “[f]or further clarity” provision, it states that,

when the “only reasonable and intended use of the component comprising the Licensed Product is to practice the 

claim and the component substantially embodies the patented invention by embodying its essential features,” Oyster is “prevent[ed] from exercising its patent rights” under 

the Agreement. Summary Judgment Decision at 12–15. 

The question presented by the district court’s alternative 

ruling is a narrow one. The parties do not dispute that “the 

only reasonable and intended use” of the Fujitsu modulators and receivers contained in Appellees’ accused products 

is to practice the asserted claims of the ’327 patent. Thus, 

the only issue to be decided is whether the Fujitsu modulators and receivers “substantially embod[y] the patented invention by embodying its essential features.” 

In addressing this issue at the conclusion of the August 

9 hearing, the district court stated:

[T]he claims, positions, assertions, contentions, 

and other positions of [Oyster] in this litigation are 

such that they would fall within the language of the 

“for further clarity” provision, which I think is undisputedly lifted from language addressing the concept of patent exhaustion, such that even if it were 

a limitation on licensed products, in this case, 

[ALU and Cisco] would be within that limitation 

based on what [Oyster has] alleged and how [it]

ha[s] pursued the litigation in this case heretofore, 

such that they would meet that limitation and

would also be released.

Pre-Trial Hearing Transcript at 71–72. Thus, the district 

court reasoned that Oyster’s infringement contentions 

served to satisfy ALU’s and Cisco’s burden of establishing 

that the Fujitsu modulators and receivers contained in 

ALU’s and Cisco’s products substantially embody the patented invention by embodying its essential features. See

Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366–67 

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(Fed. Cir. 2000) (holding the plaintiff-patentee’s allegations of infringement satisfied the defendants’ burden to 

prove the accused products were infringing for purposes of 

the on-sale bar under pre-American Invents Act 35 U.S.C. 

§ 102(b)); Evans Cooling Sys., Inc. v. Gen. Motors Corp., 

125 F.3d 1448, 1451 (Fed. Cir. 1997) (same). We think evidence in the record clearly supports the district court’s 

conclusion. 

In its suit against FNC, Oyster accused the Fujitsu 

modulators and receivers of directly infringing the ’327 patent. This is evident from the following: (1) In case No. 

2:16-cv-01299-JRG, Oyster defined “Accused Instrumentalities” to include the Fujitsu modulators and receivers in 

its infringement contentions and accompanying claim 

charts. See, e.g., Summary Judgment Decision at 13 (quoting Oyster’s infringement contentions which state “the Fujitsu 100G/400G LN Modulator . . . is a transceiver card 

with a transmitting and receiving interface”). (2) Oyster’s 

expert on infringement in case No. 2:16-cv-01299-JRG included the Fujitsu modulators and receivers in his definition of “Accused Products” that he analyzed for 

infringement. (3) In the short-lived complaint filed in case 

No. 2:18-cv-0153-JRG, Oyster defined “Accused Instrumentalities” to include the Fujitsu modulators and receivers. (4) Finally, in the present case, Oyster’s expert on 

exhaustion confirmed that Oyster’s infringement contentions in case No. 2:16-cv-01299-JRG and its complaint in 

case No. 2:16-cv-01299 accused the Fujitsu modulators and 

receivers of directly infringing the ’327 patent. Id. at 15–

16. 

We recognize that in Vanmoor and Evans Cooling the 

contentions that served to establish the accused products 

were infringing for purposes of the on-sale bar were set 

forth in the plaintiffs’ complaints. In this case, the evidence to which the district court pointed, except for the contentions in the complaint in case No. 2:18-cv-0153-JRG, 

consisted of infringement contentions and expert 

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testimony, not complaint allegations. That said, in the circumstances of this case, we do not think it was error for the 

district court to rely on this material, especially infringement contentions, which served to flesh out the infringement allegations in the prior Fujitsu litigation.6

In sum, in the face of its repeated and consistent statements alleging infringement of the ’327 patent by the Fujitsu modulators and receivers themselves, Oyster’s 

present argument that the modulators and receivers are 

merely claim components and do not practice the claim or 

substantially embody the invention of the ’327 patent is not 

persuasive. In other words, we do not believe the district 

court erred when it found, for purposes of the Oyster/Fujitsu Agreement: (i) that the Fujitsu modulators and receivers at issue embody the essential features of the patented 

invention in view of “what [Oyster] alleged and how [it] 

. . . pursued the litigation”; and (ii) that the Fujitsu modulators and receivers thus fall under the release of liability 

for directly infringing devices. Pre-Trial Hearing 

6 Oyster’s argument that its statements made in connection with the prior Fujitsu litigation were made in a different case are unavailing, particularly with respect to the 

statements and testimony from case No. 2:16-cv-01299-

JRG, which Oyster originally filed against FNC. As noted, 

Oyster’s suits against ALU, Cisco, and FNC were consolidated into case No. 2:16-cv-01302-JRG. After the cases 

were consolidated, Oyster filed a motion for leave to amend 

its infringement contentions with respect to FNC, to which 

it attached its updated contentions defining the Accused 

Instrumentalities to include the Fujitsu modulators and receivers. Pl.’s Mot. for Leave to Amend its P.R. 3–1 Infringement Contentions with Regard to Fujitsu Network 

Communications, Inc., Oyster Optics, LLC. v. Coriant 

(USA) Inc., No. 2:16-cv-01302 (E.D. Tex. Dec. 6, 2017), ECF 

No. 193 (redacted). 

Case: 19-1255 Document: 77-2 Page: 16 Filed: 05/08/2020
OYSTER OPTICS, LLC v. ALCATEL-LUCENT USA, INC. 17

Transcript at 71–72; see High Point SARL v. T-Mobile 

USA, Inc., 640 F. App’x 917, 929–30 (Fed. Cir. 2016) (“TMobile persuasively established that, in view of High 

Point’s own infringement contentions, the accused [products] substantially embodied every purportedly inventive 

element of the claimed inventions.”). Accordingly, we agree 

with the district court that the release of Section 3.1 of the

Agreement applies to ALU and Cisco as to “any claim of 

infringement relating to the ’327 patent where the accused 

products contain one of the Accused Instrumentalities of 

the Fujitsu litigation.” See Summary Judgment Decision

at 12–15. 

Nor do we find the district court’s ruling in the November 7th Order clarifying the scope of its alternate ground in 

the Summary Judgment Decision to be in error. Appellees 

provided evidence that Oyster based its infringement allegations in the Fujitsu litigation on compliance with a 

standard that encompasses the category of 100G/400G LN 

Modulators and 100G/400G Integrated Coherent Receivers

comprising the Fujitsu modulators and receivers contained 

in Appellees’ accused products. See Complaint, Oyster Optics, LLC v. Fujitsu Network Comms., Inc., No. 2:16-cv01299-JRG (E.D. Tex. Nov. 23, 2016), ECF No. 1 at 3–7, 

J.A. 2215–19. Oyster has not rebutted this showing with, 

for example, evidence of any differences between the model 

numbers recited in the prior Fujitsu litigation and those 

model numbers used in Appellees’ products. 

CONCLUSION

For the foregoing reasons, we affirm the Summary 

Judgment Decision.

AFFIRMED

COSTS

No costs.

Case: 19-1255 Document: 77-2 Page: 17 Filed: 05/08/2020