Intellectual Ventures I LLC v. Symantec Corp.

Filing 214

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 3/10/16. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

INTELLECTUAL VENTURES I LLC and
INTELLECTUAL VENTURES II LLC,
Plaintiffs,
Civil Action No. 13-cv-440-LPS

v.
SYMANTEC CORP.,
Defendant.

Joseph J. Farnan III and Brian E. Farnan, FARNAN LLP, Wilmington, DE
Parker C. Folse III, Brooke A. M . Taylor, Daniel J. Shih, and Jordan Talge, SUSMAN
GODFREY L.L.P ., Seattle, WA
Attorneys for Plaintiffs

Jack B. Blumenfeld, Thomas C. Grimm, Karen Jacobs, and Michael J. Flynn, MORRIS,
NICHOLS , ARSHT & TUNNELL LLP, Wilmington, DE
Dean G. Dunlavey, LATHAM & WATKINS LLP , Costa Mesa, CA
Andrew J. Fossum, LATHAM & WATKINS LLP, Houston, TX
Kathy Yu, LATHAM & WATKINS LLP, Los Angeles, CA
Yury Kapgan and Suong Nguyen, QUINN EMANUEL URQUHART & SULLIVAN, LLP, Los
Angeles, CA
Attorneys for Defendants

MEMORANDUM OPINION

March 10, 2016
Wilmington, Delaware

S~7.~s~c

Judge..._--:

Plaintiffs Intellectual Ventures I LLC and Intellectual Ventures II LLC (collectively, "IV"
or "Plaintiffs") filed this patent infringement action against Defendant Symantec Corp.
("Symantec" or "Defendant"). (D.I. 1) IV asserts U.S . Patent No. 5,537,533 1 ("the ' 533
patent"), U. S. Patent No. 6,598,131 2 ("the ' 131 patent"), and U. S. Patent No. 6,732,3593 ("the
' 359 patent") (collectively, the "patents-in-suit"). (Id. ) On May 28, 2015, the parties stipulated
to the dismissal of the '359 patent. (D.I. 187)
Pending before the Court is the issue of claim construction of various disputed terms of
the patents-in-suit. The parties completed briefing on claim construction on November 21 , 2014.
(D.I. 79, 82, 91 , 94) In addition to the briefing, the parties submitted technology tutorials. (D.I.
108, 109) The Court held a Markman hearing on February 9, 2015. (D.I. 130)("Tr.")
Thereafter, with the Court' s permission, the parties filed letter briefs on February 18 and 23 ,
2015. (D.I. 122, 123)
I.

LEGAL STAND ARDS

The ultimate question of the proper construction of a patent is a question of law. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 , 837 (2015) (citing Markman v. Westview
Instruments, Inc., 517 U.S. 370, 388-91 (1996)). " It is a bedrock principle of patent law that the

1

The ' 533 patent is entitled "System and Method for Remote Mirroring of Digital Data
from a Primary Network Server to a Remote Network Server." It was issued on July 16, 1996.
(D.I. 77, Ex. B)
2

The ' 131 patent is entitled "Data Image Management via Emulation of Non-Volatile
Storage Device." It was issued on July 22, 2003 . (D.I. 77, Ex. C)
3

The ' 359 patent is entitled "Application Process Monitor." It was issued on May 4,
2004. (D.I. 77, Ex. D)
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claims of a patent define the invention to which the patentee is entitled the right to exclude."
Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted).

"[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324.
Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the
statutes and policies that inform patent law." Id.
" [T]he words of a claim are generally given their ordinary and customary meaning . ..
[which is] the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the patent application."
Id. at 1312-13 (internal citations and quotation marks omitted). " [T]he ordinary meaning of a

claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321
(internal quotation marks omitted). The patent specification "is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of
a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular
claim terms," the context of the surrounding words of the claim also must be considered.
Phillips, 415 F .3d at 1314. Furthermore, "[ o]ther claims of the patent in question, both asserted

and unasserted, can also be valuable sources of enlightenment . . . [b ]ecause claim terms are
normally used consistently throughout the patent . . . ." Id. (internal citation omitted).
It is likewise true that "[d]ifferences among claims can also be a useful guide . .. . For

example, the presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim." Id. at 131415 (internal citation omitted). This "presumption is especially strong when the limitation in

2

dispute is the only meaningful difference between an independent and dependent claim, and one
party is urging that the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co. , Ltd. v. SRAM Corp. , 336 F.3d 1298, 1303 (Fed. Cir. 2003).

It is also possible that "the specification may reveal a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor' s lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that " [e]ven
when the specification describes only a single embodiment, the claims of the patent will not be
read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction." Hill-Rom Servs. , Inc. v. Stryker

Corp. , 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 906 (Fed. Cir. 2004)) (internal quotation marks omitted).
In addition to the specification, a court "should also consider the patent' s prosecution

history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995), ajj"d, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence,"
"consists of the complete record of the proceedings before the PTO [Patent and Trademark
Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d
at 1317. "[T]he prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be." Id.
In some cases, "the district court will need to look beyond the patent' s intrinsic evidence

and to consult extrinsic evidence in order to understand, for example, the background science or

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the meaning of a term in the relevant art during the relevant time period." Teva , 135 S. Ct. at
841. Extrinsic evidence "consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d
at 980. For instance, technical dictionaries can assist the court in determining the meaning of a
term to those of skill in the relevant art because such dictionaries "endeavor to collect the
accepted meanings of terms used in various fields of science and technology." Phillips, 415 F .3d
at 1318. In addition, expert testimony can be useful "to ensure that the court' s understanding of
the technical aspects of the patent is consistent with that of a person of skill in the art, or to
establish that a particular term in the patent or the prior art has a particular meaning in the
pertinent field. " Id. Nonetheless, courts must not lose sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from
bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be
useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely
to result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the
scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney

Bowes, Inc. v. Hewlett-Packard Co. , 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics , 90
F.3d at 1583).
Finally, "[t]he construction that stays true to the claim language and most naturally aligns
with the patent's description of the invention will be, in the end, the correct construction."

Renishaw PLC v. Marposs Societa ' p er Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
that "a claim interpretation that would exclude the inventor' s device is rarely the correct

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interpretation." Osram GmbH v. Int'l Trade Comm 'n, 505 F.3d 1351 , 1358 (Fed. Cir. 2007)
(quoting Modine Mfg. Co. v. U S Int '! Trade Comm 'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).

11.

CONSTRUCTION OF AGREED UPON TERMS
The parties have no dispute regarding the following terms. Accordingly, the Court will

adopt these agreed-to constructions.

Patent-in-suit

Claim Term

Agreed Construction

' 533

bandwidth

rate at which data may be transferred within a
particular communication channel or link

' 533

claim 23 (as used in
claim 27)

claim 25

' 131

non-data request

request other than a read or write request

III.

CONSTRUCTION OF DISPUTED TERMS
A.

The '533 Patent
1.

"data transfer unit" I "DTU" (claims 25, 27, 29, 33)

IV
a combination of hardware and software, including a nonvolatile data buffer, with the ability to
communicate with the operating system of a network server and to communicate across the
communication link
Symantec
a physical unit, separate and distinct from both the primary network server and the remote
network server, that includes a server interface for communicating with a network server, and
a link interface for communicating over a communication link with another data transfer unit
Court
a combination of hardware and software, including a nonvolatile data buffer, with the ability to
communicate with the operating system of a network server and to communicate across the
communication link
The parties disagree about whether the data transfer unit ("DTU") must be physically
separate and distinct from the network servers. IV contends that Symantec seeks to improperly
5

limit the claimed invention to a preferred embodiment which depicts the DTUs as physically
separate from the servers to which they are connected. (See '533 patent at Fig. 1) The Court
agrees with IV.
Symantec argues that " [w]here the claim lists elements separately, the clear implication of
the claim language is that those elements are distinct components of the patented invention."

Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)
(internal quotation marks and brackets omitted). However, Becton involved physical
components, whereas the DTU in the present invention undisputedly involves both hardware and
software. Here, the claims involve digital, rather than physical separation. For example, claim 1
provides for a component of the data transfer unit - a primary server interface - being "digitally
connectable to the primary network server." ('533 patent at col. 15 11. 23-24) Other claims
provide for "a data transfer unit which is digitally connected to the primary network server." (Id.
at col. 1711. 30-31 , 55-59, 63-64) Similarly, the specification explains that "[t]he primary DTU
includes a primary server interface . .. [which] is digitally connectable to the primary network
server .. .. " (Id. at col. 5 11. 54-56)
Contrary to Symantec' s arguments, the claim language indicating that data is copied

''from a primary network server to ... a data transfer unit" (id. at col. 17 11. 29-30; see also id. at
col. 18 11. 1-2, 24-25, 27-28, 30-31 ) does not preclude a DTU being merely a component within
the primary network server. Similarly, that in a preferred embodiment, "[e]ach of the DTUs
includes at least one microprocessor and a block of RAM which is accessible by the
microprocessor" (id. at col. 6 11. 46-48), does not necessarily mean that the DTUs are physically
incapable of relying on the network server for these basic features.

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2.

"substantially concurrent copy of data" (claim 25)

IV
Plain and ordinary meaning, where "substantially concurrent" means "not separated in time
except as a result of processing delays." 4

Symantec
Indefinite under 35 U.S .C. § 112.
Court
Plain and ordinary meaning, where "substantially concurrent" means "not separated in time
except as a result of processing delays."
Claim 25 recites "a substantially concurrent copy of data which is being stored by the
operating system in the nonvolatile server store." (Id. at col. 17 11. 34-37) Symantec argues that
this term is indefinite because it is a temporal limitation lacking any intrinsic evidence regarding
how long a delay would be too long to be substantially concurrent. IV responds that the term is
not indefinite because it is a causal limitation, intended to distinguish between delays that are
designed into the system and delays that merely reflect the time needed to process the data being
copied. Both parties offer expert declarations in support of their respective views. (See D.I. 83
at ifif 40-44, 46; D.I. 80 at ifif 18-26; D.I. 93 at ifif 4-9)
The Court need not decide which expert is correct, as the intrinsic evidence supports IV 's
position. See Vitronics Corp., 90 F.3d at 1585 (explaining that expert testimony on claim
construction "may only be relied upon if the patent documents, taken as a whole, are insufficient
to enable the court to construe disputed claim terms"). The specification clearly distinguishes
copying data substantially concurrently through one method, mirroring, which is the subject of

4

This proposed construction is different from IV' s position in the Joint Claim
Construction Statement, in which IV proposed that "substantially concurrent" means "separated
in time only as a result of communication and processing delays." (D.I. 77, Ex. A at 2)
(emphasis added)
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the invention, described as, inter alia, "a further advancement to provide such a system and
method which maintain a substantially current copy of data as that data is committed for storage
in open files on disk" ('533 patent at col. 4 11. 39-42), from copying data through another method,

shadowing, in which "critical data added after the backup software finishes is not protected until
the next backup or shadowing file copy, which may be minutes or hours later" (id. at col. 411. 2831). Symantec's reliance on Federal Circuit cases indicating that "substantially" is a term of
degree and therefore indefinite (see D.I. 122 at 2-3) is unpersuasive, as here the intrinsic evidence
suggests that although substantial concurrence refers to length of delay, whether the length of
delay meets the limitation can be ascertained by reference to the cause of delay. As IV points
out, interpreting "substantially" as necessarily limited to being either a term of degree only or a
term of cause only is a false dichotomy. (See D.I. 123 at 2)
Accordingly, Symantec has failed to present clear and convincing evidence that the claim
term fails to inform one of ordinary skill in the art of the scope of the term with reasonable
certainty. See Nautilus, Inc. v. Biosig Instruments, Inc. , 134 S. Ct. 2120 (2014).

3.

"spoof packet" (claims 25, 26, 27)

IV
a message created by a data transfer unit that is in the form of an acknowledgment to the
operating system of a successfully completed write request

Symantec
a packet in the format of an acknowledgment that would be sent by a conventional hard disk
drive controller when an operating system writes data to the hard disk
Court
a message created by a data transfer unit that is in the format of an acknowledgment to the
operating system of a successfully completed write request
The parties disagree about whether this term must precisely track its description in the

8

specification. The specification provides:
(t]he present invention optionally includes the task of sending a
"spoof packet" as an acknowledgment to the primary server 10
indicating that the data has been received. The spoof packet is in
the format of an acknowledgment that would be sent by a
conventional hard disk drive controller when the operating system
writes data to the hard disk.
(' 533 patent at col. 1311. 19-26)
IV argues that here the patentees did not intend to act as lexicographers, unlike in four
instances in the specification where the patentees use definitional phrases such as "as used
herein, [the term] means" and " (the terms] are synonymous herein." (See id. at col. 411. 61-63 ,
col. 5 11. 5-6, col. 5 11. 42-45 , col. 9 11. 43-46) The Court agrees that the patentees are not in this
portion of the specification defining "spoof packets" and, hence, it would be inappropriate to
import limitations from this portion of the specification into the claims.
Accordingly, the Court adopts IV' s proposed construction, with the modification that
"form" is changed to "format," consistent with the portion of the specification quoted above, in
the absence of any intrinsic evidence supporting the use of "form. " (Id. at col. 13 11. 23-26)

4.

"the group consisting of ... and ... " (claim 27)

IV
Plain and ordinary meaning; the requirement is satisfied if the triggering event is any one of
the options described in the claim.

Symantec
The limitation is satisfied by a prior art reference or an accused product if the triggering event
is any of the options described in the claim.
Court
No construction necessary.
The parties are in agreement about the meaning of this term, and their dispute only

9

concerns whether the Court' s construction should specify that it applies equally to the contexts of
invalidity and infringement. The Court agrees with IV that "points of law should not be injected
into claim construction." (D.I. 82 at 20) Accordingly, the Court need not construe this claim
term.

B.

The '131 Patent
1. "local persistent storage device" ("LPSD") I "remote persistent storage

device located remotely from the device" ("RPSD") (claims 11, 14, 21, 22, 24)

IV
Plain and ordinary meaning; alternatively, "a nonvolatile storage device, such as a device
including one or more hard disks, connected to the computer."

Symantec
a physical device that is physically attached to a local computer and that contains a permanent
medium for storing a persistent, consistent cache of a master data image stored on a remote
device where "master data image" means "the physical data image against which cached data
is compared to determine whether it is up-to-date" I a physical device that is physically
attached to a remote computer and that contains a permanent medium for storing a master data
image where "master data image" means "the physical data image against which cached data is
compared to determine whether it is up-to-date"
Court
a physical device that is physically attached to a local computer and that contains a permanent
medium for storing a persistent, consistent cache of a master data image stored on a remote
device where "master data image" means "the physical data image against which cached data
is compared to determine whether it is up-to-date" I a physical device that is physically
attached to a remote computer and that contains a permanent medium for storing a master data
image where "master data image" means "the physical data image against which cached data is
compared to determine whether it is up-to-date"
Symantec' s proposed construction is firmly grounded in the intrinsic evidence. The
Background of the Invention states that:
[a] persistent storage device can be defined as follows: (a) it is a
physical device that is physically attached to a computer using a
standard physical interface . . . (b) it contains a local permanent
medium ... for storing a sequence of bits . .. (c) it has the ability
to selectively read and write any part of the data image; and (d) it
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allows the computer to which the device is attached to selectively
read and write any part of the data image through a standard set of
interface protocols.
(See '131 patent at col. 1 11. 40-67) (emphasis added) " [T]he inventor's written description of the

invention ... is relevant and controlling insofar as it provides clear lexicography." C.R. Bard,
Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004).

The specification further provides that "[t]he data image stored on the RPSD is referred to
as the ' master data image ' and the data image cached on the LPSD is referred to as the 'local data
image ' or 'cached data image. "' (' 131 patent at col. 3 11. 54-57) Symantec' s proposed
construction draws directly from these descriptions, merely adding "local" or "remote" to the
term "computer" depending on whether the persistent storage device being referred to is the
local, as opposed to remote, persistent storage device.

2.

"device driver for the LPSD" I "the device driver" (claims 11, 12, 15)

IV
Plain and ordinary meaning based on construction of "device driver" as "a software
component that permits a system to control and communicate with a device."

Symantec
component of the operating system installed on a computer for communicating with the LPSD,
which receives read or write requests from the operating system and issues the read or write
request to the computer's BIOS or disk adapter
Court
Plain and ordinary meaning based on construction of "device driver" as "a software
component that permits a system to control and communicate with a device."
IV opposes Symantec' s proposed construction due to IV' s concern that its adoption
would require the device driver to be a structural, as opposed to functional, component of the
operating system. The Court agrees with IV that the device driver need not necessarily be a
component of the operating system. The specification' s parenthetical reference to device drivers
11

as components of the operating system - "the operating system and all of its components
(including device drivers)" (id. at col. 5 ll. 32-33) - refers to a possibility, not a rigid requirement
of the claims. The treatise incorporated by reference into the patent does not require a different
conclusion, as it merely states that the device drivers are "separate module[s] of the operating
system .. . [which] present a uniform I/O interface to the main line OS [operating system]." (See
id. at col. 5 11. 22-25) (incorporating by reference, inter alia, D.I. 77, Ex. Q at 352)
The parties also disagree about whether the term should be construed to function in the
precise manner proposed by Symantec, which is one of several objectives of the invention.
(Compare '131 patent at col. 611. 27-34) ("It is an object of the present invention to implement
the LDIM to intercept the request from the disk adapter so that the controller of the local
persistent storage device will not receive it. Alternatively, it is an object of the invention to
implement the LDIM to intercept the request from the device driver (or BIOS) so that the disk
adapter does not receive it.") with id. at col. 611. 40-67 (explaining additional objects of the
present invention, such as "to provide a transparent mechanism for upgrading software and
hardware drivers")) "[I]t is generally not appropriate to limit claim language to exclude
particular devices because they do not serve a perceived purpose of the invention." Praxair, Inc.
v. ATML Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (internal quotation marks omitted).

3.

"performed substantially concurrently" (claims 14, 24)

IV
performance not separated in time except as a result of processing delays 5

5

This proposed construction is different from IV's position in the Joint Claim
Construction Statement, in which IV proposed ''performance separated in time only as a result
of communication and processing delays." (See D.I. 77, Ex. A at 5) (emphasis added)
12

Symantec
Indefinite under 35 U.S.C. § 112.
Court
performance not separated in time except as a result of processing delays

This term presents largely the same dispute with respect to the ' 131 patent as the Court
previously addressed in the context of the '533 patent. Here, the specification also supports IV ' s
position that this term refers to a causal rather than a temporal limitation. It distinguishes
substantially concurrent performance from that which is intended to "wait until some later time
(e.g., ifthe computer is not currently connected to the network or if the network is heavily
loaded)" (' 131 patent at col. 4 ll. 44-48), or "at some later time (e.g., when network traffic is
low)" (id. at col. 9 11. 44-47). For similar reasons as explained above, the Court adopts IV ' s
proposed construction of this term.

IV.

CONCLUSION
The Court will construe the disputed claim terms of the patents-in-suit consistent with this

Memorandum Opinion. An appropriate Order follows.

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