Symantec Corporation v. Acronis, Inc

Filing 202

ORDER - Claim Construction Order - Symantec's Patents. Signed by Judge Edward M. Chen on 2/27/2013. (emcsec, COURT STAFF) (Filed on 2/27/2013)

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1 2 3 4 5 UNITED STATES DISTRICT COURT 6 NORTHERN DISTRICT OF CALIFORNIA 7 8 SYMANTEC CORPORATION, 9 Plaintiff, 10 v. CLAIM CONSTRUCTION ORDER – SYMANTEC’S PATENTS 11 For the Northern District of California United States District Court No. C-11-5310 EMC ACRONIS, INC., et al., 12 Defendants. ___________________________________/ 13 14 15 Plaintiff Symantec Corporation initiated this action against Defendants Acronis, Inc. and 16 Acronis International GmbH (collectively, “Acronis”). Under the current operative complaint, 17 Symantec charges Acronis with infringement of five patents – i.e., the ‘010 patent, the ‘365 patent, 18 the ‘086 patent, the ‘517 patent, and the ‘655 patent. In response, Acronis has filed counterclaims, 19 seeking a declaratory judgment that Symantec’s patents at issue are not infringed and further are 20 invalid. In addition, Acronis has asserted counterclaims for infringement of its own patents. This 21 order construes terms as used in the claims of Symantec’s patents only. A separate order shall 22 provide claim construction on Acronis’s patents. 23 24 25 I. A. DISCUSSION Legal Standard Claim construction is a question of law to be determined by the Court. See Markman v. 26 Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (“hold[ing] that in a case tried to a 27 jury, the court has the power and obligation to construe as a matter of law the meaning of language 28 used in the patent claim”). “The purpose of claim construction is to ‘determin[e] the meaning and 1 scope of the patent claims asserted to be infringed.’” O2 Micro Int’l Ltd. v. Beyond Innovation 2 Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). 3 Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention. “In some cases, the ordinary meaning of claim language . . . may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” However, in many cases, the meaning of a claim term as understood by persons of skill in the art is not readily apparent. 4 5 6 7 8 Id. Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to “those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” Those sources include “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” 9 11 For the Northern District of California United States District Court 10 12 13 14 Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). As a general matter, extrinsic 15 evidence such as dictionaries and expert testimony is considered less reliable than intrinsic evidence 16 (i.e., the patent and its prosecution history). See id. at 1317-19 (noting that “extrinsic evidence may 17 be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope 18 unless considered in the context of the intrinsic evidence”). 19 B. ‘010 Patent 20 1. 21 The parties seem to be in general agreement that “[t]he ‘010 patent discloses methods and Claims 22 systems for providing a user interface that facilitates computer restoration operations and the 23 automatic resource mapping between differing computer configurations of the computer that was 24 backed up and that to which the data is being restored.” Docket No. 110 (Symantec’s Op. Br. at 2). 25 “Prior to this invention, it was ‘difficult for the user to envision the effect of the changes on the 26 configuration prior to actually making the changes on the computer system.’” Docket No. 110 27 (Symantec’s Op. Br. at 2). 28 2 1 The claims in the ‘010 patent that are at issue in this litigation are as follows: 1 and 4-10. 2 The only independent claim is claim 1. Claim 1 provides as follows (with terms to be construed in 3 bold): 4 1. A computer accessible storage medium comprising a plurality of instructions which, when executed: 5 present a graphical view of a first computer system configuration comprising a first plurality of computer system resources; 6 7 concurrent with presenting the graphical view of the first computer system configuration, present a graphical view of a second computer system configuration comprising a second plurality of computer system resources; 8 9 provide a mechanism to capture data representing at least a first resource of the first plurality of computer system resources from the first computer system configuration and insert the data in the second computer system configuration; and 11 For the Northern District of California United States District Court 10 12 provide an automatic mapping of resources from the first computer system configuration to the second computer system configuration, wherein the first computer system configuration corresponds to a backed-up computer system and the second computer system configuration corresponds to a computer system that the backup is being restored to. 13 14 15 16 2. 17 Terms a. 18 graphical view of a first/second computer system configuration (‘010 patent, claim) 19 Symantec Acronis Court’s Construction 20 a pictorial or text a picture of a first/second a pictorial representation of a 21 representation of a first/second computer system configuration first/second computer system 22 computer system configuration configuration which can 23 include text 24 25 26 27 28 Here, the parties’ dispute centers on what is meant by the term “graphical.” Symantec argues that its construction is appropriate because, as stated in the specification, a graphical view of a configuration may refer to a representation of the configuration, where at least a portion of the representation is provided pictorially on a display device using one or more graphical elements. 3 1 Each graphical element may be a pictorial representation (that is, at least a portion of its meaning is derived from its appearance on the screen). Graphical views and graphical elements may contain text as well. 2 3 4 ‘010 patent, col. 6:38-45. In response, Acronis does not dispute that a graphical view can include 5 text but contends that text alone cannot constitute a graphical view. See Docket No. 121 (Acronis’s 6 Resp. Br. at 2) (arguing that “[a] picture is . . . – by definition – more than text”). Symantec takes 7 issue with Acronis’s position to the extent that text can be used to represent something – for 8 example, an “X” may be used not as text per se but as a representative of something. See Docket 9 No. 127 (Symantec’s Reply at 1-2). The Court finds problems with each party’s construction. Acronis’s construction, for 11 For the Northern District of California United States District Court 10 example, fails to acknowledge that text can be a part of the picture. Symantec’s construction, on the 12 other hand, causes some confusion to the extent it incorporates “text representation.” The Court 13 adopts the following construction, which effectively accommodates both party’s concerns and is 14 consistent with the specification of the ‘010 patent: “a pictorial representation of a first/second 15 computer system configuration which can include text.” 16 C. ‘365 Patent 17 1. 18 The parties are in general agreement that the invention in the ‘365 patent provides systems 19 20 21 22 Claims and methods for backing up data on a partition of a computer by storing an image of the data in the partition where the data is located. In other words, rather than taking an image of data on partition A and storing it in partition B, the ‘365 patent teaches that the image of partition A can be stored on partition A. 23 Docket No. 121 (Acronis’s Resp. Br. at 4); see also ‘365 patent, Abstract (describing “systems and 24 methods for storing and recovering images in a computer partition, and more particularly to tools 25 and techniques for placing and extracting images to and from the same partition that is imaged”). 26 The claims in the ‘365 patent that are at issue in this litigation are as follows: 34, 50, and 52. 27 Each of these claims is an independent claim, except claim 52. The text of the claims is provided 28 below, with terms to be construed in bold. 4 1 a. 2 34. A method of utilizing a partition within a computer system, the method comprising the computer-aided steps of: Claim 34 3 obtaining a copy of user data which is stored in the partition; 4 and 5 6 creating an in-partition image by at least storing a copy of at least a portion of the user data in at least one image in the same partition. 7 b. 8 11 50. A computer program storage medium having a configuration that represents data and instructions which will cause at least a portion of the computer system to perform method steps for utilizing a partition within a computer system, the method steps comprising the steps of locating an image of the partition which is stored in the partition, and restoring selected user data from the image to the partition. 12 c. 13 52. The configured program storage medium of claim 50, wherein the method further comprises the step of verifying the consistency and integrity of the image before the restoring step. 9 For the Northern District of California United States District Court 10 14 15 2. 16 Claim 50 Claim 52 Terms a. “obtaining a copy of user data” (‘365 patent, claim 34) 17 Symantec Acronis Court’s Construction 18 plain and ordinary meaning reading data from a previously reading user data directly from created image of the partition the partition or from a 19 20 previously created image of 21 the partition 22 23 The parties disagree about what “a copy of user data” means. Acronis contends that there is 24 a difference between “user data” and “copy of user data” – i.e., “[w]hen referring to the original data 25 in the partition that is directly read, the term ‘user data’ is used, but when referring to the data in a 26 previously created image of the partition, the term ‘copy of user data’ is used.” Docket No. 121 27 (Acronis’s Resp. Br. at 5). In support of this position, Acronis cites to the specification which states 28 that “[t]he obtaining step 702 may read user data directly from the partition 300” and that, “[i]nstead 5 1 of reading user data from locations organized by the file system, the obtaining step 702 may read a 2 copy of user data from a previously created image 420 of the partition 300.” ‘365 patent, col. 1:19- 3 20, 24-27 (emphasis added). 4 The problem with Acronis’s position is that it takes the above statements from the 5 specification out of context. The above statements come from the following paragraph in the 6 specification: 7 During an obtaining step 702, an implementing program obtains a copy of user data which is stored in the partition 300. This may include all of the user data 614 or it may include selected user data, such as selected files and/or subdirectories. . . . The obtaining step 702 may read user data directly from the partition 300 . . . . Instead of reading user data from locations organized by the file system, the obtaining step 702 may read a copy of user data from a previously created image 420 of the partition 300. 8 9 11 For the Northern District of California United States District Court 10 12 ‘365 patent, col. 17:13-27 (emphasis added). The first sentence of the paragraph uses the term 13 “copy of user data.” This shows that “copy of user data” is a term that is loosely used – covering 14 both data read directly from the partition and data read from a previously created image of the 15 partition. 16 On the other hand, the Court also declines to adopt Symantec’s approach – i.e., that the Court 17 not provide any construction for the term at all. As Judge Seeborg has noted, where “it is not at all 18 self-evident from a lay perspective what the meaning of [a term] is, and furthermore, [where] there is 19 some disagreement between the parties as to [the] precise meaning [of a term],” it “cannot simply be 20 left for the jury” but rather “must be construed.” Rambus, Inc. v. LSI Corp., Nos. C 10-05446 RS, C 21 10-05449 RS, 2012 U.S. Dist. LEXIS 138632, at *26-27 (N.D. Cal. Sept. 26, 2012). The Court 22 adopts the following construction based on the above language from the specification: “reading user 23 data directly from the partition or from a previously created image of the partition.” 24 /// 25 /// 26 /// 27 /// 28 /// 6 1 b. 2 “in-partition image/image of the partition which is stored in the partition” (‘365 patent, claims 34, 50) 3 Symantec Acronis Court’s Construction 4 a sector-by-sector or cluster- a copy of data from the a copy of data from the 5 by-cluster copy of data from partition, excluding the image partition, excluding the image 6 the partition, excluding the itself, stored within the itself, created using sector-by- 7 image itself, stored within the partition; the copy is not sector or cluster-by-cluster 8 partition limited to a sector-by-sector or imaging tools and techniques cluster-by-cluster copy and stored within the partition 9 11 For the Northern District of California United States District Court 10 The parties agree that an in-partition image is a copy of data from the partition, excluding the 12 image itself, stored within the partition. See, e.g., ‘365 patent, col. 5:8-9 (noting that “‘in-partition 13 images’ are images of a partition stored within the imaged partition”). Their disagreement is 14 whether the copy is limited to a sector-by-sector or cluster-by-cluster copy or can include, e.g., a 15 file-by-file copy. Sectors and clusters are units smaller than files. See ‘365 patent, col. 3:14-20 16 (stating that “[t]wo basic approaches are used in conventional systems and methods to backup 17 computer data[;] one approach is generally file-oriented, while the other approach deals with files 18 but operates primarily on cluster, sectors, runs, or similar local allocation units which are smaller 19 than files”). 20 Acronis argues that the image may be file-by-file copy, and not just a sector-by-sector or 21 cluster-by-cluster copy, because the word “image” has a broad meaning – i.e., copy or backup – and 22 the ‘365 patent did not otherwise redefine the term. Acronis asserts that, in fact, the patent equates 23 “image” with “backup” as demonstrated by the following statement found in the specification: 24 “Manufacturers and vendors of computers would often like to provide users with a backup or image 25 of the information they originally loaded on a hard drive.” ‘365 patent, col 3:12-14. 26 The above statement does indicate that an image may be considered a backup. However, the 27 ‘365 patent also suggests that “image” and “backup,” and their related terms, are not always proxies 28 for one another. For example, the ‘365 patent makes clear that not all “backups” are done by 7 1 “imaging.” The patent notes that there are two ways to backup computer data: (1) a “file-oriented 2 backup approach,” in which “each file is backed up separately,” ‘365 patent, col. 3:20, 35, and (2) an 3 “imaging backup approach,” which “restores files but deals primarily in cluster or another file 4 allocation unit which is typically smaller than a file.” ‘365 patent, col. 3:51-55. Although Acronis 5 acknowledges these two means for backup, it conveniently leaves out the fact that the latter 6 approach is deemed an imaging backup approach. The question is whether an “image” – as used in 7 the ‘365 patent – is created through the imaging backup approach only or may be created through 8 the file-oriented backup approach as well. are created using sector-by-sector or cluster-by-cluster imaging tools and techniques, which may be 11 For the Northern District of California Symantec argues the former because the specification expressly states that “[t]he images 302 10 United States District Court 9 those already known or those hereafter developed.” ‘365 patent, col. 6:51-53. Acronis, however, 12 notes that, the specification states, in the sentence that immediately follows: “However, some 13 embodiments allow users to select specific subdirectories and/or specific files when creating or 14 restoring an image.”1 ‘365 patent, col. 6:54-46. According to Acronis, this establishes that an image 15 may be created through a file-oriented approach as well. 16 While Acronis’s argument is not unfounded, the Court is not persuaded. The sentence on 17 which Acronis relies simply reflects that a user is able to select, e.g., a file to be copied for backup, 18 but that does not necessarily mean that the copy is created through a file-by-file backup. As 19 Symantec notes, “while a user may interact with the imaging program and images at the level of 20 21 22 23 24 25 26 27 28 1 The full text for the relevant section is as follows: The present invention relates to computer systems, methods, and configured storage media for storing images onto an imaged partition and for later recovering the images, that is, using them to restore imaged data. The invention is illustrated generally in FIG. 3. Unlike the conventional imaged partition 100 of FIG. 2, the novel imaged partition 300 includes one or more images 302 of data 102, 104 from the imaged partition 300. The images 302 are created using sector-by-sector or cluster-by-cluster imaging tools and techniques, which may be those already known or hereafter developed. However, some embodiments allow users to select specific subdirectories and/or specific files when creating or restoring an image 302. ‘365 patent, col. 6:44-56. 8 1 files, this has not bearing whatsoever on how those images are created or managed, i.e.[,] at the 2 level of sectors and clusters.”2 Docket No. 166 (Symantec’s Supp. Br. at 2) (emphasis added). 3 To the extent that there is some ambiguity in the sentence pinpointed by Acronis, the 4 extrinsic evidence weighs in favor of Symantec.3 The specification for the ‘517 patent (see infra) 5 states that “[a]n ‘image’ is a blockwise image of computer storage, not a file-by-file backup of 6 computer storage. Sector-by-sector images and cluster-by-cluster images are examples of blockwise 7 images; they are not file-by-file backups.” ‘517 patent, col. 4:55-58. Notably, the application for 8 the ‘517 patent was filed in September 2004, i.e., only a year after the ‘365 patent was issued; 9 furthermore, the inventor for the ‘517 patent is also one of the inventors for the ‘365 patent.4 See Acumed LLC v. Stryker Corp., 483 F.3d 800, 816 (Fed. Cir. 2007) (Moore, J., dissenting) 11 For the Northern District of California United States District Court 10 (considering as extrinsic evidence of how those skilled in the art would understand a particular term 12 “another patent application filed within a year of the date of issue of the ‘441 patent,” with the 13 inventor being the same as the inventor in the ‘441 patent); see also IMRA Am., Inc. v. IPG 14 Photonics Corp., No. 06-15139, 2010 U.S. Dist. LEXIS 136394, at *34-35 (E.D. Mich. Dec. 27, 15 2010) (noting that “a patent from a different patent family cannot be considered ‘intrinsic evidence’ 16 for purposes of claim construction” but considering the patent – which had the same inventors – as 17 potential extrinsic evidence). 18 19 20 21 2 In its supplemental brief, Acronis points out that there are references in the specification as to how an image may be stored (e.g., contiguously or noncontiguously, as a system file or as an image container) but that does not necessarily speak to how the image was created. See, e.g., Docket No. 164 (Acronis’s Supp. Br. at 2-3). 3 22 23 24 The Court notes that, as extrinsic evidence, Symantec also offered – as a part of its supplemental brief – a declaration from an expert. Subsequently, Acronis moved to strike the expert declaration as well as “additional evidence” attached to a declaration from Symantec’s counsel. Docket No. 169 (Acronis’s Mot. at 1). Because the Court does not entertain any of this extrinsic evidence in its order, the motion to strike is denied as moot. 4 25 26 27 28 In its post-hearing motion to strike, Acronis points out that another of Symantec’s patents (‘the 664 patent) provides, in its specification, that a “‘backup image may be created using various types of backup techniques, such as block-level backups or file-by-file backups.’” Docket No. 169 (Acronis’s Mot. at 7). However, the application for that patent appears to have been filed in 2008 (and ultimately issued in 2012). Here, the Court is considering what one skilled in the art would understand “image” to mean several years earlier. In this regard, the ‘517 patent is informative because its temporal proximity to the ‘365 patent and identity of inventor; the ‘664 patent is not informative. 9 1 The Court therefore rejects Acronis’s construction and, for the most part, adopts Symantec’s 2 construction, although it modifies Symantec’s construction slightly to make clear that the creation of 3 the image is done on an imaging backup approach: “a copy of data from the partition, excluding the 4 image itself, created using sector-by-sector or cluster-by-cluster imaging tools and techniques and 5 stored within the partition.” 6 c. 7 “locating an image of the partition which is stored in the partition” (‘365 patent, claim 50) Acronis Court’s Construction plain and ordinary meaning; the implementing program finding the image of the 10 or finds the image in the partition which is stored in the 11 For the Northern District of California Symantec 9 United States District Court 8 finding the image of the partition; partition; a user may select an 12 partition which is stored in the or image but the computer 13 partition the implementing program system otherwise does the 14 finds the image of the partition finding 15 which is stored in the 16 partition; a user may select an 17 image so long as the 18 implementing program 19 automatically finds it 20 21 As indicated above “image of the partition which is stored in the partition” is an in-partition 22 image. Thus, the only question here is what is meant by the term “locating.” The parties’ main 23 dispute is “whether ‘locating’ the image requires the use of an ‘implementing program.’” Docket 24 No. 110 (Symantec’s Op. Br. at 8). 25 26 27 28 In its brief, Acronis argues that the locating step must be done by an implementing program as opposed to a user, as evidenced by the language of the claim: A computer program storage medium having a configuration that represents data and instructions which will cause at least a portion of the computer system to perform method steps for utilizing a partition 10 1 within a computer system, the method steps comprising the steps of locating an image of the partition which is stored in the partition, and restoring selected user data from the image to the partition. 2 3 ‘365 patent, claim 50. Acronis also points to the specification, which states in relevant part as 4 follows: 5 To begin restoration, one implementing program checks to see if the system 600 is bootable . . . . If it is, the implementing program tries to locate (image locator 620) at least one image 420. If no image 420 is found, the program returns an error. If more than one image 420 is found, the program returns the names of all images. 6 7 8 ‘365 patent, col. 21:20-27. 9 In response, Symantec does not dispute that, as a general matter, the locating step is not performed by a user. See Docket No. 166 (Symantec’s Supp. Br. at 6) (indicating that a user may 11 For the Northern District of California United States District Court 10 initiate the finding step but that the computer system ultimately carries it out). However, it argues 12 that 13 14 15 16 17 [t]he addition of a reference to the implementing program” where none previously exists creates numerous ambiguities. It is not clear whether the implementing program must perform just the “locating” step or whether it must perform the “restoring” step as well. Further, the bounds of the implementing program are unclear. The jury will not know whether the implementing program is limited to a particular subroutine or encompasses the entirety of the code that makes up a backup and recovery product. As Acronis’[s] construction does nothing to help clarify the term, it should be rejected. 18 Docket No. 127 (Symantec’s Reply at 4). In supplemental briefing, Symantec provides additional 19 arguments against inclusion of the term “implementing program” – e.g., at various points in the 20 specification, references are made to implementing programs that have functions unrelated to the 21 “locating” step. Docket No. 166 (Symantec’s Supp. Br. at 6). 22 The Court agrees with Symantec that inclusion of the term “implementing program” would 23 not be helpful to the jury and in fact might lead to confusion. However, a construction should be 24 given to make clear that the locating step, while it may be initiated by a user, is ultimately performed 25 by the computer system. The Court therefore adopts the following construction: “finding the image 26 of the partition which is stored in the partition; a user may select an image but the computer system 27 otherwise does the finding.” This is consistent with the overall language of the claim and 28 specification. The Court notes that reference to the “computer system” will not cause the same 11 1 confusion as “implementing program” since claim 50 already refers to a computer system. See ‘365 2 patent, claim 50 (providing for “[a] computer program storage medium having a configuration that 3 represents data and instructions which will cause at least a portion of the computer system to 4 perform method steps [including the step of locating]”). 5 d. “verifying the consistency and integrity of the image” (‘365 patent, claim 52) Acronis Court’s Construction plain and ordinary meaning; verifying the consistency . . . checking for errors in the 8 or of the image: verifying that the image, for example, by using 9 checking for errors in the data in the image was not error checking techniques such 10 image, for example, by using modified during the imaging as checksums, cyclic 11 For the Northern District of California Symantec 7 United States District Court 6 error checking techniques such process; and verifying the . . . redundancy checks, or other 12 as checksums, cyclic integrity of the image: means known in the art 13 redundancy checks or other verifying the contents of the 14 means known in the art image by utilizing error 15 checking techniques such as 16 checksums, cyclic redundancy 17 checks, or other means known 18 to the art; 19 or 20 verifying the consistency . . . 21 of the image: verifying that the 22 data has not been modified; 23 and verifying the . . . integrity 24 of the image: verifying that the 25 data has not been corrupted 26 27 As a preliminary matter, the parties have a dispute about whether “verifying the consistency” 28 of the image and “verifying the integrity” of the image should be separately construed – i.e., whether 12 1 “there are two distinct verifications.” Docket No. 164 (Acronis’s Supp. Br. at 6). Symantec argues 2 that they should not be; Acronis argues to the contrary. Symantec’s position is more persuasive. 3 First, other than the use of the two terms in the conjunctive, nothing about the claim language itself 4 suggests that the verification process must be broken into two separate steps. Second, the 5 specification indicates that the verification process is not broken into two separate steps. 6 In one embodiment, the file system data is verified when it is used, such as before an image is created or updated, after an image is created or updated, and when system data is stored in a separate location such as in a recovery disk or in a diagnostic and recovery partition. The consistency and integrity of the image itself is also verified when used, such as after it is created or updated, and before and after it has been used to restore user data. This can be performed by way of check codes such as checksums or CRC codes embedded in the image files and/or the image container. 7 8 9 11 For the Northern District of California United States District Court 10 12 13 ‘365 patent, col. 5:58-67 (emphasis added).5 Moreover, other parts of the specification do not clearly separate out consistency and integrity. For example: 14 The verifying step 706 verifies the integrity of the file system data which organizes the user data being placed in the image 420. Note that FIG. 7 shows two additional verifying steps, identified as 722 and 732. The three verifying steps perform the same general task, which is to detect inconsistencies in the data on which the system 600 relies and correct them or otherwise prevent image utilization based on the inconsistencies. 15 16 17 18 19 ‘365 patent, col. 17:48-55 (emphasis added). The parts of the specification on which Acronis relies do not much to advance its position. 20 For example, Acronis has construed “verifying the consistency” of the image as “verifying that the 21 data in the image was not modified during the imaging process” (emphasis added) based on a part of 22 the specification that discusses image creation as opposed to image verification. See ‘365 patent, 23 col. 18:43-50 (stating that “[t]he image 420 must be created when the computer has been put into a 24 state that allows exclusive disk 606 access[;] [t]his prevents inconsistencies in the data (modification 25 26 27 28 5 Notably, the language italicized above also indicates that Acronis’s original construction of “verifying the consistency” and “verifying the integrity” is problematic. In its original construction, Acronis defined only “verifying the integrity” to include check codes such as checksums and so forth. But clearly, based on the above language, verification of both consistency and integrity can be performed by way of check codes. 13 1 during the imaging process) and helps ensure that system information such as the Microsoft 2 Windows registry are closed . . . and so can be imaged”). Acronis’s constructions are not 3 persuasive. 4 Instead, the Court adopts the alternative construction proposed by Symantec. The alternative (noting that “[t]he consistency and integrity of the image itself is also verified when used” and that 7 “[t]his can be performed by way of check codes such as checksums or CRC does embedded in the 8 image files and/or the image container”); ‘365 patent, col. 16:6-9 (stating that “[t]he image verifier 9 622 may also check the integrity of the contents of an image file by utilizing error checking 10 techniques such as check sums, cyclic redundancy checks or other means known to the art”). 11 For the Northern District of California construction is consistent with the language of the specification. See ‘365 patent, col. 5:62-67 6 United States District Court 5 D. ‘086 Patent 12 1. 13 The parties are in general agreement that the invention in the ‘086 patent is directed to 14 “backup and disaster recovery mechanisms in computer systems,” particularly those involving 15 virtual machines. ‘086 patent, col. 1:9-10. 16 17 18 19 20 Claims The claims in the ‘086 patent that are at issue in this litigation are as follows: 11 and 22. Claim 11 is representative of both claims. Claim 11 is dependent on claim 1. Claim 1 provides as follows (with terms to be construed in bold): 1. A computer readable medium storing a plurality of instructions comprising instructions which, when executed: 21 22 23 24 (i) capture a state of a first virtual machine executing on a first computer system, the state of the first virtual machine corresponding to a point in time in the execution of the first virtual machine, wherein the first virtual machine comprises at least one virtual disk storing at least one file used by at least one application executing in the first virtual machine, and wherein the state of the first virtual machine comprises the at least one file; and 25 26 27 28 (ii) copy at least a portion of the state to a destination separate from a storage device to which the first virtual machine is suspendable, wherein suspending the first virtual machine is performed responsive to a suspend command. Claim 11 in turn provides as follows: 14 1 11. The computer readable medium as recited in claim 1 wherein (i) comprises creating a new log of uncommitted updates for each virtual disk in the first virtual machine and creating a memory area to capture writes to a memory of the first virtual machine, such that the first virtual machine can continue executing during (ii). 2 3 4 2. 5 Terms a. “a state of a first virtual machine” (‘086 patent, claims 11, 22) 6 Symantec Acronis Court’s Construction 7 plain and ordinary meaning a snapshot, at a specific point plain meaning 8 of time, of all of the 9 information required to recreate a first virtual machine 11 For the Northern District of California United States District Court 10 and restore the programs and 12 data running within the first 13 virtual machine at that specific 14 point of time 15 16 As Symantec argues, Acronis’s proposed construction is problematic because it contains 17 language contrary to or at least in tension with the language of the claims. For example, claim 1 18 states in relevant part as follows: 19 20 21 22 capture a state of a first virtual machine executing on a first computer system, the state of the first virtual machine corresponding to a point in time in the execution of the first virtual machine, wherein the first virtual machine comprises at least one virtual disk storing at least one file used by at least one application executing in the first virtual machine, and wherein the state of the first virtual machine comprises the at least one file . . . . 23 ‘086 patent, claim 1 (emphasis added). As indicated by the language italicized above, the first 24 virtual machine comprises at least one virtual disk storing at least one file used by at least one 25 application, and the state of the first virtual machine comprises the at least one file. Acronis’s use of 26 the word “all” (and the words that follow in its proposed construction) is therefore problematic. 27 28 15 1 2 Moreover, because the claim on its face already identifies what comprises the “state of the first virtual machine,” the Court declines to adopt any additional construction for the term. 3 b. 4 “suspending” (including the related term suspendable) (‘086 patent, claims 11, 22) 5 Symantec Acronis Court’s Construction 6 temporarily preventing from to pause the execution of a temporarily preventing from 7 executing system and capture its state so executing, until execution is 8 that execution can be resumed resumed 9 later 11 For the Northern District of California United States District Court 10 Symantec has two points of contention with Acronis’s construction: (1) that it requires a 12 pausing in the execution of the system (as opposed to the first virtual machine) and (2) that is 13 requires “capturing” (which is covered in step (i), not in step (ii)). Both of these criticisms have 14 merit. 15 First, the claims refer to a first virtual machine being suspended, not a computer system. 16 See, e.g., ‘086 patent, claim 1 (providing for “copy[ing] [of] at least a portion of the state to a 17 destination separate from a storage device to which the first virtual machine is suspendable, wherein 18 suspending the first virtual machine is performed responsive to a suspend command”). Notably, in 19 its responsive brief, Acronis concedes that it is the virtual machine that is being suspended. See 20 Docket No. 121 (Acronis’s Resp. Br. at 13) (stating that “[t]he term means to pause and also to 21 capture the state of the machine so that the machine may be resumed after the pause”; also stating 22 that “Symantec distinguished prior art that stored periodic ‘checkpoints’ to restore after a failure 23 from the claimed ‘suspending’ in which the patent system pauses the system (i.e., virtual machine) 24 and saves the state so it can resume again”) (emphasis added). 25 26 27 Second, suspension of the first virtual machine is discussed in the “copying” step and not the “capturing” step: 1. A computer readable medium storing a plurality of instructions comprising instructions which, when executed: 28 16 1 (i) capture a state of a first virtual machine executing on a first computer system, the state of the first virtual machine corresponding to a point in time in the execution of the first virtual machine, wherein the first virtual machine comprises at least one virtual disk storing at least one file used by at least one application executing in the first virtual machine, and wherein the state of the first virtual machine comprises the at least one file; and 2 3 4 5 (ii) copy at least a portion of the state to a destination separate from a storage device to which the first virtual machine is suspendable, wherein suspending the first virtual machine is performed responsive to a suspend command. 6 7 8 ‘086 patent, claim 1 (emphasis added). Acronis contends that suspending requires capturing, citing 9 in particular that part of the specification which provides as follows: “In another embodiment, the computer system may capture by the state by suspending each virtual machine to an image and 11 For the Northern District of California United States District Court 10 backing up the image of the virtual machine.” ‘086 patent, col. 2:62-65 (emphasis added). But the 12 very use of the word “may” indicates that suspension is not required. 13 While the Court rejects the above limitations proposed by Acronis, it does incorporate some 14 of the language suggested – i.e., the language related to resuming. Notably, Symantec’s opening 15 brief conceded that there is a “resume” component. See Docket No. 110 (Symantec’s Op. Br. at 14) 16 (stating that “the specification describes that suspending a virtual machine temporarily prevents it 17 from executing until it is resumed”). The Court therefore adopts the following construction: 18 “temporarily preventing from executing, until execution is resumed.” 19 /// 20 /// 21 /// 22 /// 23 /// 24 /// 25 /// 26 /// 27 /// 28 /// 17 1 c. 2 “a destination separate from the storage device to which the first virtual machine is suspendable” (‘086 patent, claims 11, 22) Acronis Court’s Construction a destination separate from a a location that is not on any a destination separate from the 5 storage device on which the storage device to which the storage device that is 6 state of the first virtual virtual machine is configured or would be 7 machine is stopped when the suspendable; configured to be the target of 8 first virtual machine is or the suspension at the time a 9 temporarily prevented from a location that is not on any state of the first virtual 10 executing; storage device to which the machine is captured 11 For the Northern District of California Symantec 4 United States District Court 3 or virtual machine is capable of 12 a destination separate from the being suspended; 13 storage device that is or 14 configured or would be a location that is not on any 15 configured to be the target of storage device where the 16 the suspension at the time a computer is able to save the 17 state of the first virtual state of a virtual machine in 18 machine is captured response to a suspend 19 command 20 21 Acronis argues that its construction is more appropriate because it gives weight to the 22 claim’s use of the word “suspendable,” which means capable of being suspended. According to 23 Acronis, because “suspendable” is used in the claim, any place where the state of the first virtual 24 machine may be saved is “off limits” for the backup copy. See Docket No. 164 (Acronis’s Supp. Br. 25 at 7); see also http://www.oed.com/view/Entry/195154?redirectedFrom=suspendible#eid (last 26 visited January 7, 2013) (defining “suspendible” as “[c]apable of being, or liable to be, suspended”). 27 In response, Symantec agrees that, in principle, the copy must be on a device different from that 28 where the state of the first virtual machine is stored. Symantec’s concern, however – as articulated 18 1 at the hearing and in its supplemental brief – is that, under Acronis’s construction, “any device could 2 theoretically be a device the computer system is ‘able to’ suspend the state of the virtual machine 3 to.” Docket No. 166 (Symantec’s Supp. Br. at 5-6) (emphasis in original). 4 The Court agrees with Symantec’s criticism. Although “suspendable” means capable of 5 being suspended, the term still needs to be taken in context. Claim 1 covers both a situation where 6 there is suspending and a situation where there is not suspending, and thus the patentee used the 7 term “suspendable.” Compare ‘086 patent, claim 11 (covering the situation where there is not 8 suspending only; providing that “the first virtual machine can continue executing during (ii)”). 9 Symantec’s alternative construction is more consistent with this concept of “suspendable” when viewed in context. 11 For the Northern District of California United States District Court 10 E. ‘517 Patent 12 1. 13 The ‘517 patent provides for “[m]ethods . . . for retargeting captured images to new 14 hardware. An image taken from a computer having hardware drivers and other system operation in 15 one hardware configuration can be modified to adapt it for use on a computer having different 16 hardware requiring different drivers.” ‘517 patent, abstract. 17 Claims The claims in the ‘517 patent that are at issue in this litigation are as follows: 1, 7, 39, and 18 41. Claims 1 and 39 (both independent) are exemplary of the claims asserted by Symantec. The text 19 of these claims is provided below, with terms to be construed in bold. 20 a. 21 1. A computer-implemented method for retargeting a captured image for new hardware, comprising: Claim 1 22 identifying an image captured from a source computer; 23 24 obtaining target computer information, the target computer information identifying new hardware for a target computer that is not presently installed on the source computer; and 25 26 while in a pre-boot environment, modifying the image to match the new hardware identified in the target computer information. 27 b. Claim 39 28 39. A system comprising: 19 1 a new hardware computer; 2 a computerized source of hardware information about the new hardware computer; 3 a local storage device of the new hardware computer which contains an image captured from an old hardware computer, the image not presently deployed on the new hardware computer; 4 5 system support information for new hardware of the new hardware computer, the system support information corresponding to at least a portion of the hardware information about the new hardware; and 6 7 8 a retargeting program which is capable of retargeting the image in a pre-boot environment to make the image include at least a portion of the system support information. 9 2. 11 For the Northern District of California United States District Court 10 Terms a. “[while] in a pre-boot environment” (‘517 patent, claims 1, 7, 39) 12 Symantec Acronis Court’s Construction 13 while a pre-boot program is a computer, before it has while in an environment on a 14 running that permits only booted, running a program that computer during execution of 15 limited operation of the permits only limited operation a pre-boot program, a pre-boot 16 computer and limited device of the computer program being one that 17 support permits only limited operation 18 of the computer and limited 19 device support 20 21 The specification expressly defines what a “pre-boot environment” means – i.e., “an 22 environment on a computer during execution of a pre-boot program.” ‘517 patent, col. 5:7-8. What 23 a pre-boot program is is also explained by the specification: 24 25 26 27 “Pre-boot programs” permit only limited operation of the computer, and are used to perform operations such as diagnostics or boot image downloads. Pre-boot programs provide only limited device support, e.g., by providing device drivers only for the display, network, and local storage devices. Full operation of the computer requires more functionality than the pre-boot program supplies; the increased functionality can be provided by fully booting an image of a complete operating system, for instance. 28 20 1 ‘516 patent, col. 5:8-17. Given the specification excerpts above, a construction more along the lines 2 of Symantec’s is warranted. 3 In its brief, Acronis points out that the specification states as follows with respect to booting: 4 6 “Booting” a computer means causing the computer to at least begin running low-level software, such as a system diagnostic, a pre-boot program, or an operating system. A booted environment is one in which booting ends by passing control to users through a command interface, or to application programs through a script or the like. 7 ‘516 patent, col. 4:26-31. But nothing in the above makes Symantec’s construction, as a general 8 matter, erroneous or problematic. Moreover, Acronis’s construction does not make clear that the 9 booting process has started but simply has not yet been completed yet. 5 The Court adopts the following construction which is similar to Symantec’s but which more 11 For the Northern District of California United States District Court 10 closely adheres to the language used in the specification: “while in an environment on a computer 12 during execution of a pre-boot program, a pre-boot program being one that permits only limited 13 operation of the computer and limited device support.” 14 b. 15 “the image not presently deployed on the new hardware computer” (‘517 patent, claim 39) 16 Symantec Acronis SBW Proposed Construction 17 not presently running an plain meaning not presently running an 18 operating system obtained operating system from inside 19 from inside the image of the the image on the new 20 old hardware computer on the hardware computer 21 new hardware computer; 22 or 23 not presently running an 24 operating system obtained 25 from inside the image on the 26 new hardware computer 27 28 The specification states as follows regarding the term “deploying”: 21 1 “[D]eploying” an image on a given computer means running an operating system obtained from inside the image. Merely copying an image into a computer’s local storage does not deploy the image, although the image must be on the computer before it can be deployed. . . . One way to deploy an image onto a computer is to copy the image onto the computer and to then boot into the image, which passes control of the computer to the image’s operating system. 2 3 4 5 ‘517 patent, col. 4:32-43. 6 Based on its brief, Acronis seems to have objected to Symantec’s construction because it 7 uses “extraneous language” and “unnecessary . . . verbiage.” Docket No. 121 (Acronis’s Resp. Br. 8 at 17). Acronis asserts: “Were Symantec genuinely interested in preserving the integrity of its 9 definition, it would have simply defined the phrase as ‘the image not presently running an operating system from inside the image on the new hardware computer.’” Docket No. 121 (Acronis’s Resp. 11 For the Northern District of California United States District Court 10 Br. at 17) (emphasis in original). It appears that, thereafter, Symantec tried to see if the parties could 12 compromise by proffering the following construction: “‘not presently running an operating system 13 obtained from inside the image on the new hardware computer.’” Horan Reply Decl., Ex. A (e- 14 mail). Symantec explained that “[w]e deleted ‘the image’ from Acronis’[s] proposed construction 15 because, after reflection, we do not believe that it is accurate to state that the image runs an 16 operating system.” Horan Reply Decl., Ex. A (e-mail). Acronis rejected the compromise, however, 17 simply sticking to its position that the plain meaning should be adopted. But where “it is not at all 18 self-evident from a lay perspective what the meaning of [a term] is, and furthermore, [where] there is 19 some disagreement between the parties as to [the] precise meaning [of a term],” it “cannot simply be 20 left for the jury” but rather “must be construed.” Rambus, 2012 U.S. Dist. LEXIS 138632, at *26- 21 27. 22 Because Symantec’s compromise construction is reasonable and entirely consistent with the 23 specification, the Court hereby adopts it. 24 F. ‘655 Patent 25 1. 26 The parties are in general agreement that “[t]he ‘655 patent is directed to a backup system Claims 27 that utilizes a ‘catalog’ containing information as to where the backed-up data objects are located.” 28 Docket No. 121 (Acronis’s Resp. Br. at 17); see also ‘655 patent, Abstract (describing 22 1 “[s]ynthesized backup set catalogs,” which are “created to more efficiently create synthetic full 2 backups of a data volume or to more efficiently restore a data object of the data volume”). 3 4 The only claim in the ‘655 patent that is at issue in this litigation is claim 7. Claim 7 provides as follows (with terms to be construed in bold): 5 7. A computer readable medium storing instructions executable by a computer system, wherein the computer system implements a method in response to executing the instructions, the method comprising: 6 7 creating a first backup of a data volume, wherein the data volume comprises first and second data objects; 8 9 creating a second backup of the data volume after modification of the second data object but before modification of the first data object; 11 For the Northern District of California United States District Court 10 creating a catalog after modification of the second data object but before modification of the first data object, wherein the catalog contains information indicating that backup copies of the first and second data objects are contained in the first and second backups, respectively. 12 13 14 /// 15 /// 16 /// 17 /// 18 /// 19 /// 20 /// 21 /// 22 /// 23 /// 24 /// 25 /// 26 /// 27 /// 28 /// 23 1 2. 2 Terms a. “catalog” (‘655 patent, claim 7) Acronis SBW Proposed Construction data structure identifying the a list containing a separate plain meaning 5 locations of backed-up data entry for each file in the data 6 objects enabling synthesis of a volume; 7 full backup; or 8 or a list containing a separate 9 data structure identifying the entry for each data object in 10 locations of backed-up data the data volume; 11 For the Northern District of California Symantec 4 United States District Court 3 objects used to synthesize a or 12 full backup a list containing a separate 13 entry for each file in the data 14 volume and identifying the 15 location of each file in the data 16 volume6 17 18 There are various disputes between the parties over the construction of the term “catalog.” 19 The critical ones boil down to (1) whether a catalog must be a list and (2) whether a catalog must 20 have a separate entry for each data object. 21 The Court agrees with Symantec that there is nothing about the invention that suggests that a 22 catalog must be in the form of a list – i.e., being a list is not an essential feature. See Docket No. 23 127 (Symantec’s Reply at 11-12). Notably, Acronis has pointed to only one part of the specification 24 that is suggestive of the word “list”: “When the backup server 18 creates the full backup set 1, 25 backup server 18 also creates catalog 36(1) listing the files copied to tape 32(1).” ‘655 patent, col. 26 27 6 28 Symantec has objected to the second alternative construction offered by Acronis as part of its supplemental brief. See Docket No. 166 (Symantec’s Supp. Br. at 7-8). 24 1 3:21-23. Even if this statement were enough to equate the term “catalog” with “list,” “list” in and of 2 itself is hardly more illuminating than the word “catalog.” 3 The slightly harder question is whether a catalog must have a separate entry for each data 4 object. Acronis contends that there must be separate entries in order for the invention claimed to be 5 practiced: “[H]aving a list containing a separate entry for each file permits the system to avoid using 6 multiple catalogs (the goal of the patent) and access ‘only one synthesized catalog to learn the 7 location within the backup sets of all files needed to create the synthetic full backup.” Docket No. 8 121 (Acronis’s Resp. Br. at 19) (emphasis added). Acronis also points to places in the specification 9 where a catalog is composed of “n entries corresponding to the n files [or data objects].” ‘655 patent, col. 7:18-19; see also ‘655 patent, col. 3:23-24 (stating that, “[a]s shown in FIG. 3, catalog 11 For the Northern District of California United States District Court 10 36(1) includes n entries corresponding to the n files [or data objects]”). But nowhere does Symantec 12 point to anywhere in the specification which states that the invention or the present invention 13 consists of a catalog composed of n entries corresponding to the n files. See American Med. Sys., 14 Inc. v. Biolitec, Inc., 618 F.3d 1354, 1366 (Fed. Cir. 2010) (noting that “we have repeatedly held that 15 ‘the use of the words “the present invention” can be read to limit the invention to what is described 16 as such’”); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (noting 17 that “a fuel filter was not merely discussed as a preferred embodiment”; rather, “[o]n at least four 18 occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present 19 invention’”). In fact, as Symantec points out, the specification actually states in the “Summary of 20 the Invention” section, that, “[i]n one embodiment, the synthesized backup set catalog comprises n 21 entries corresponding to n data objects.” ‘655 patent, col. 5:16-17 (emphasis added). To the extent 22 Acronis argues that the fact of only one embodiment suggests that limitations in that embodiment 23 are inherent in the invention, that argument is without merit. The Federal Circuit has expressly 24 rejected the assertion that, “where only one embodiment is disclosed in the specification, claim 25 terms are [necessarily] limited to the embodiment disclosed.” Teleflex, Inc. v. Ficosa N. Am. Corp., 26 299 F.3d 1313, 1326 (Fed. Cir. 2002). Indeed, the Federal Circuit has stated that, “even where a 27 patent describes only a single embodiment, claims will not be read restrictively unless the patentee 28 has demonstrated a clear intention to limit the claim scope using words or expressions of manifest 25 1 exclusion or restriction.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 2 1117 (Fed. Cir. 2004) (internal quotation marks omitted); see also Teleflex, 299 F.3d at 1328 (Fed. 3 Cir. 2002) (noting that “[t]he record is devoid of ‘clear statements of scope’ limiting the term 4 appearing in claim 1 to having ‘a single pair of legs’”). No such intention is established here. 5 Finally, it is worth noting that Acronis could have, but did not, offer any expert evidence to support 6 its contention that a catalog must have n entries corresponding to n file in order for the invention to 7 work. 8 9 Accordingly, the Court declines to adopt any of the constructions offered by Acronis. The Court, however, also declines to adopt either of Symantec’s constructions. The term “data structure” as used by Symantec is not a helpful definition; as for Symantec’s description of what the catalog 11 For the Northern District of California United States District Court 10 does, that is essentially covered in the language of the claim. See Atser Research Techs., Inc. v. 12 Raba-Kistner Consultants, Inc., No. SA-07-CA-93-H, 2009 U.S. Dist. LEXIS 25294, at *31-32 13 (W.D. Tex. Mar. 2, 2009) (rejecting defendant’s construction of the term “client computer” because 14 it “includ[ed] the surrounding words of the claim” which was “redundant and unnecessary”). 15 16 Accordingly, the Court declines to provide a construction for the term “catalog” other than to reject the limitations proposed by Acronis. 17 b. “creating a catalog” (‘655 patent, claim 7) 18 Symantec Acronis Court’s Construction 19 plain and ordinary meaning generating a new catalog plain meaning 20 21 Here, the parties’ dispute is whether Acronis’s inclusion of the word “new” is appropriate. 22 Symantec argues that it is not. According to Symantec, it is “contrary to the teachings of the 23 specification, which explicitly contemplates creating a catalog by modifying a previously existing 24 catalog.” Docket No. 110 (Symantec’s Op. Br. at 21). In support, Symantec cites the following part 25 of the specification: 26 27 28 Information from a previously created synthesized catalog is carried forward or copied to create the newest synthesized catalog. For example, synthetic catalog 116(2) may be created by copying the contents of synthetic catalog 116(1) and then overwriting entry 2 with the new entry 2 shown in catalog 116(2). 26 1 2 ‘655 patent, col. 7:61-66. In response, Acronis does not dispute that generation of a catalog can be related to a 3 previously existing catalog. “The term ‘new’ simply means that the catalog did not exist 4 previously.” Docket No. 121 (Acronis’s Resp. Br. at 20). Acronis also points out that the 5 specification above also uses “new” language – i.e., “carried forward or copied to create the newest 6 synthesized catalog.” ‘655 patent, col. 7:62-63 (emphasis added). 7 At the end, the issue is really whether the term “new” can be misleading. The Court agrees 8 with Symantec that it could be. Indeed, Symantec has pointed out that at least one dictionary 9 definition for “new” (admittedly, the fifth definition) is “different from one of the same category that has existed previously.” Horan Decl., Ex. B (definition from Merriam-Webster’s Collegiate 11 For the Northern District of California United States District Court 10 Dictionary). 12 Accordingly, the Court declines to construe the term “creating a catalog,” other than to 13 indicate that Acronis’s construction is not proper. The Court need not define “creating” as the 14 parties do not appear to have a dispute as to what that term means. 15 c. “information indicating that backup copies of the first and second data objects 16 are contained in the first and second backups, respectively” (‘655 patent, 17 claim 7) 18 Symantec Acronis Court’s Construction 19 plain and ordinary meaning information specifying the plain meaning 20 location of the backup copy of 21 the first data object within the 22 first backup and specifying the 23 location of the backup copy of 24 the second data object within 25 the second backup 26 27 28 Claim 7 provides that the catalog contains “the information indicating that backup copies of the first and second data objects are contained in the first and second backups, respectively.” ‘655 27 1 patent, claim 7. As Symantec argues, it appears that “[t]he only change that Acronis’[s] construction 2 provides is to add the requirement that the information must ‘specify the location’ within the 3 respective backups where the information is located. But the plain language only requires that the 4 information identifies that the first backup contains the first data object and the second backup 5 contains the second data object.” Docket No. 127 (Symantec’s Reply at 13) (emphasis in original). 6 “[T]here is no reason why the location information could not be included in another location, such as 7 within the backup itself.” Docket No. 127 (Symantec’s Reply at 14). 8 The cites that Acronis provides to the specification do not establish otherwise. While a create the synthetic full backup,” ‘655 patent, cols. 8:67-9:1 (emphasis added), as Symantec argues, 11 For the Northern District of California catalog may contain information providing “the location within the backup sets of all files needed to 10 United States District Court 9 it need not. 12 13 Accordingly, the Court does not construe the term, other than to indicate that Acronis’s construction is not proper. 14 d. “backup of [a/the] data volume” (‘655 patent, claim 7) 15 Symantec Acronis Court’s Construction 16 collection of data from a data a copy of all the files in the collection of data from a data 17 volume for purposes of data volume; volume for purposes of 18 recovery or recovery 19 a copy of all the data objects in 20 the data volume 21 22 Acronis takes the position that a backup must include all the files or data objects in the data 23 volume. In contrast, Symantec takes the position that a backup can include all the files or data 24 objects or it can include less than all the files or data objects. In other words, Symantec’s contention 25 is that the generic term “backup” broadly includes all backups – full backups as well as partial or 26 incremental backups. 27 28 Symantec’s argument is more persuasive. Its assertion that backups includes all backups, whether full or partial/incremental, is supported by the specification: 28 1 Backup operations create backup sets (i.e., copies of one or more files of the data volume) that may be either full or incremental. A full backup set means that all of the files in the data volume are copied, regardless of how recently they have been modified or whether a previous backup set exists. An incremental backup means that only files of the data volume that have been changed since some previous event (e.g., a prior full backup or incremental backup) are copied. 2 3 4 5 ‘655 patent, col. 1:57-64. Given that “full backup” is specifically defined as a copy of all files (or 6 data objects), the generic term “backup” means something different. Cf. Phillips, 415 F.3d at 1314 7 (noting that “the context in which a term is used in the asserted claim can be highly instructive – 8 e.g., the use of the term “steel baffles” “strongly implies that the term ‘baffles’ does not inherently 9 mean objects made of steel”). Accordingly, the Court rejects Acronis’s construction and adopts Symantec’s instead. 11 For the Northern District of California United States District Court 10 e. 12 “computer readable medium storing instructions executable by a computer system” (‘655 patent, claim 7) 13 Symantec Acronis Court’s Construction 14 plain and ordinary meaning hardware storage elements, [construing only the term 15 such as RAM and disk “computer readable medium”] 16 memory, containing the hardware storage elements, 17 instructions that are executed such as (but not limited to) 18 by a computer system, but RAM and disk memory 19 does not include transmission 20 medium, carrier waves or the 21 like 22 23 Here, the parties’ basic dispute is over what “computer readable medium” means. Acronis 24 takes its construction from a statement that the patent examiner made during prosecution – i.e., that 25 “‘computer readable medium’ is taken to mean hardware storage elements such as RAM, Disk 26 memory, etc. The ‘computer readable medium’ would not include ‘transmission medium,’ ‘carrier 27 waves,’ or the like.” Docket No. 121 (Acronis’s Resp. Br., Ex. A at 5)). Acronis emphasizes that 28 the patent applicant was silent in response to the examiner’s statement which leads to a presumption 29 1 that it agreed with the examiner’s understanding of the term. See Docket No. 121 (Acronis’s Resp. 2 Br. at 23 & nn.17-18). 3 In response, Symantec does not dispute that Acronis’s definition is technically correct, see, 4 e.g., Docket No. 127 (Symantec’s Reply at 15) (agreeing that “‘computer readable medium’ does not 5 include transmission media such as carrier waves”), but argues that it will only end up confusing the 6 jury, in particular, by providing new terms such as “transmission medium” and “carrier waves.” 7 Symantec also argues that the Acronis has provided a “non-exclusive list of computer-readable 8 media that could be used” which could further be confusing. See Cisco Sys. v. Teleconference Sys., 9 LLC, No. C 09-01550 JSW, 2011 U.S. Dist. LEXIS 136328, at *26-27 (N.D. Cal. Nov. 23, 2011) (agreeing with Defendants that “Plaintiffs’ construction to the extent it includes an unexhausted list 11 For the Northern District of California United States District Court 10 of examples of . . . subscriber-specific settings [is] unnecessary and confusing to the jury”; 12 “therefore reject[ing] Plaintiffs’ proposed construction to the extent they include examples of such 13 settings”). 14 The Court is sympathetic to Symantec’s first argument. “Transmission medium” and 15 “carrier waves” are undefined terms, and they do not appear to be anywhere in the patents. 16 However, the Court does not see a jury being confused if some examples of computer storage media 17 are provided, especially if it is made clear that these are nonexhaustive examples. At the very least, 18 a jury might find it helpful to know that a “computer readable medium” is a hardware storage 19 element. The Court therefore adopts the following construction for the term “computer readable 20 medium” only (which is the only portion of the above that is in dispute): “hardware storage 21 elements, such as (but not limited to) RAM and disk memory.” 22 II. CONCLUSION 23 The disputed claim terms of the patents-in-suit are hereby construed as set forth above. 24 IT IS SO ORDERED. 25 26 Dated: February 27, 2013 _________________________ EDWARD M. CHEN United States District Judge 27 28 30

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