Avid Technology Inc. v. Harmonic Inc.

Filing 211

ORDER Construing the Terms of U.S. Patent Nos. 6,760,808 and 7,487,309. Signed by Judge Gregory M. Sleet on 6/29/2016. (mdb)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

AVID TECHNOLOGY, INC.,
Plaintiff.
v.

HARMONIC INC.,
Defendant.

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Civil Action No. 11-1040-GMS

ORDER CONSTRUING THE TERMS OF U.S. PATENT NOS. 6,760,808 and 7,487,309

After considering the submissions of the parties and hearing oral argument on the matter,
IT IS HEREBY ORDERED, ADJUDGED, and DECREED that, as used in the asserted claims of
U.S. Patent Nos. 6,760,808 ("the '808 patent") and 7,487,309 ("the '309 patent"):
1.

The "in files" limitation is construed to refer a client-perspective file system, in which
client files are stored on a plurality of storage units by distributing, for each file,
segments [and redundancy information for each segment] among the plurality of
storage units. 1

1 The court addresses the scope of this claim limitation on remand from the Federal Circuit. In its
review, the Federal Circuit framed the outstanding claim construction issue as follows:
"On its face, the 'file' language might refer to what the client treats as a 'file,' such as a
scene from a movie, to be broken up into segments that are then distributed among storage
units .... Alternatively, the word 'file' might refer to a feature of an organization system
of the storage units themselves, perhaps with a single 'file' at the storage-unit level
including segments coming from different client files, i.e., from different movies."
Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1048-49 (Fed. Cir. 2016). The plaintiff maintains that
this limitation refers to the client-perspective file, while the defendant argues that the proper construction
is the storage-unit file system.
According to defendant, the "in files" limitation is directed to a single embodiment that requires
each storage unit to include a file system. '808 patent at Figure 4; 10:37--60. The plaintiff agrees that the
claims cover a storage-unit file system, but argues that the invention is not limited to that embodiment.
Rather, the client-perspective file system is the main embodiment. The comi finds that the intrinsic record
better suppo1is the plaintiffs proposed construction. The specification refers to the client-perspective file

Dated: June

2!}_, 2016
STATES DISTRICT JUDGE

system as an aspect of "the present invention," '808 patent at 13 :20, but the storage-unit-side file system is
only an optional embodiment. '808 patent at 14: 1-5 ("The storage unit may have its own file system which
may be entirely separate from the client file system.")(emphasis added). Throughout the claims and
specification, the patent focuses on segments of data stored on the storage units, not in files. See '808 patent
at 6: 1-12; claim 1. The court agrees with the plaintiff that the defendant's construction would read out the
preferred embodiment.
The defendant also argues that the patentee disclaimed the client-perspective file system during
prosecution. The defendant has a high burden to prove prosecution disclaimer applies. Any disavowing
statements must be "both clear and unmistakable." Avid Tech. Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045
(Fed. Cir. 2016). This means that prosecution disclaimer does not apply to a statement that is ambiguous or
amenable to multiple reasonable interpretations. Id To support its argument, the defendant notes that the
examiner rejected the patentee's claims based on the Vahalia reference, explaining that Vahalia taught a
system "wherein segments of data and corresponding redundancy information ... are distributed among
the plurality of storage units." In response, the patentee explained that Vahalia had "nothing to do with how
data is distributed among the storage units," and distinguished Vahalia based on other claim amendments.
(D.I. 86-4 at 11.) In that same response, the patentee distinguished its invention from another prior art
reference, Boll, by noting "the present invention relates to a distributed storage system in which data for a
file is distributed among multiple independent storage units." (Id) This is far from an unmistakable
disclaimer of claim scope. Accordingly, the court adopts the plaintiff's construction.

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