Egenera, Inc. v. Cisco Systems, Inc.

Filing 51

Judge Richard G. Stearns: ORDER entered granting in part and denying in part #32 Motion to Dismiss for Failure to State a Claim. "For the forgoing reasons, Cisco's motion to dismiss is DENIED IN PART with respect to the '430 and '044 patents, and ALLOWED IN PART with respect to the '059 patent. The parties are requested to submit a joint proposed pre-trial schedule, consistent with L.R. 16.6, no later than Feb. 28, 2017." (RGS, int2)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 16-11613-RGS
EGENERA, INC.
v.
CISCO SYSTEMS, INC.
MEMORANDUM AND ORDER ON
DEFENDANT’S MOTION TO DISMISS
February 14, 2017
STEARNS, D.J.
The desire to economize time and mental effort in arithmetical
computations, and to eliminate human liability to error, is
probably as old as the science of arithmetic itself. This desire has
led to the design and construction of a variety of aids to
calculation, beginning with groups of small objects, such as
pebbles, first used loosely, later as counters on ruled boards, and
later still as beads mounted on wires fixed in a frame, as in the
abacus.
─ Howard Aiken, father of the Mark I IBM computer1
Beginning with the invention by Blaise Pascal of the mechanical
calculator, and culminating in our times with the integrated circuit-based
computer, the ability of modern computers to aid human beings in
performing tasks requiring the processing of large amounts of data has, as

In Zenon W. Pylyshyn & Liam J. Bannon, Perspectives on the
Computer Revolution (1989).
1

Gordon Moore predicted, grown exponentially as transistors have
miniaturized, while doubling in capacity roughly every eighteen months
since 1965. In 1874, Frank Stephen Baldwin was granted the first American
patent (No. 153,522) for a calculating machine, the arithmometer. The number
of “calculator patents” granted since is impossible to estimate accurately, but
certainly runs to the hundreds of thousands. Not all of these patents are valid.
Patents only protect inventions. They do not (or at least they are not supposed
to) vest intellectual property rights in patentees who stake claims to the
“building blocks of human ingenuity.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct.

2347, 2354 (2014) (internal quotation marks and citation omitted).
One of the challenges for the patent system, as laid out by the Supreme
Court in the recent Alice decision, is to separate out new and useful

applications of abstract ideas from impermissible attempts to monopolize
them.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Mayo [Collaborative Servs. v.
Prometheus Labs., Inc.,] 132 S. Ct. [1289,] 1294 [(2012)]. Nor is
limiting the use of an abstract idea “‘to a particular technological
environment.’” Bilski [v. Kappos, 561 U.S. 593,] 610-611
[(2010)]. Stating an abstract idea while adding the words “apply
it with a computer” simply combines those two steps, with the
same deficient result.
Alice, 134 S. Ct. at 2358.

2

In this intellectual property dispute, plaintiff Egenera, Inc., alleges that
defendant Cisco Systems, Inc., infringes three of Egenera’s patents – United
States Patent No. 6,971,044 (the ’044 patent), United States Patent No.
7,1178,059 (the ’059 patent), and United States Patent No. 7,231,430 (the
’430 patent), all of which set out claims to an improved enterprise computing
system. Cisco moves to dismiss the Complaint, contending that Egenera’s
patents do not assert viable claims to patentable subject matter as required
by 35 U.S.C. § 101. The court heard oral argument on the motion to dismiss
on February 8, 2017.
The Asserted Patents
The ’044 and the ’430 patents arise from two patent applications filed
on January 4, 2002. Both patents claim priority to the same provisional
application filed on April 20, 2001, and share virtually identical
specifications. The ’044 patent is entitled “Service Cluster and Method in a
Processing System with Failover Capability,” and was issued on November
29, 2005. It lists as its inventors Scott Geng, Pete Manca, Paul Curtis, Ewan
Milne, Max Smith, Alan Greenspan, Edward Duffy, and Peter Schulter. The
’430 patent is entitled “Reconfigurable, Virtual Processing System Cluster,
Network, and Method,” and was issued on June 12, 2007. The ’430 patent

3

lists the same inventors as the ’044 patent, with three additions – Vern
Brownell, Ben Sprachman, and Dan Busby.
The ’044 and ’430 patents are directed to solving problems in
configuring, deploying, and maintaining enterprise and application servers.
For example, when deploying 24 conventional servers, more
than 100 discrete connections may be required to configure the
overall system. Managing these cables is an ongoing challenge,
and each represents a failure point. Attempting to mitigate the
risk of failure by adding redundancy can double the cabling,
exacerbating the problem while increasing complexity and costs.
’044 patent, col. 1, ll. 41-47. Given that “personnel from multiple information
technology (IT) functions (electrical, networking, etc.) must participate to
deploy processing and networking resources . . . it can take weeks or months
to deploy a new computer server.” Id. col. 1, ll. 22-27. In addition, to ensure
high availability of server resources, “a failover server must be deployed for
every primary server . . . [requiring] complex management software and
professional services.” Id. col. 1, ll. 49-51. Finally, a post-deployment system
adjustment

“often

requires

a

‘forklift

upgrade,’

meaning

more

hardware/software systems are added, needing new connections and the
like.” Id. col. 1, ll. 56-58.
The ’044 and ’430 patents seek to improve on these limitations by
creating a “processing platform from which virtual systems may be deployed
through configuration commands.” Id. col. 2, ll.
4

The platform provides a large pool of processors from which a
subset may be selected and configured through software
commands to form a virtualized network of computers
(“processing area network” or “processor clusters”) that may be
deployed to serve a given set of applications or customer. The
virtualized processing area network (PAN) may then be used to
execute customer specific applications, such as Web-based
server applications.
The virtualization may include
virtualization of local area networks (LANs) or the virtualization
of I/O storage. By providing such a platform, processing
resources may be deployed rapidly and easily through software
via configuration commands, e.g., from an administrator, rather
than through physically providing servers, cabling network and
storage connections, providing power to each server and so forth.
Id. col. 2, l. 59 - col. 3, l. 7. Figure 1 illustrates the physical topography of a
prototypical platform.

5

As shown in FIG. 1, a preferred hardware platform 100 includes
a set of processing nodes 105a-n connected to a switch fabrics
115a,b via high-speed, interconnect 110a,b. The switch fabric
115a,b is also connected to at least one control node 120a,b that
is in communication with an external IP network 125 (or other
data communication network), and with a storage area network
(SAN) 130. A management application 135, for example,
executing remotely, may access one or more of the control nodes
via the IP network 125 to assist in configuring the platform 100
and deploying virtualized PANs.
Under certain embodiments, about 24 processing nodes 105a-n,
two control nodes 120, and two switch fabrics 115a,b are
contained in a single chassis and interconnected with a fixed,
pre-wired mesh of point-to-point (PtP) links. Each processing
node 105 is a board that includes one or more (e.g., 4) processors
106j-l, one or more network interface cards (NICs) 107, and local
memory (e.g., greater than 4 Gbytes) that, among other things,
includes some BIOS firmware for booting and initialization.
Here is no local disk for the processors 106; instead all storage,
including storage needed for paging, is handled by SAN storage
devices 130.
Each control node 120 is a single board that includes one or more
(e.g., 4) processors, local memory, and local disk storage for
holding independent copies of the boot image and initial file
system that is used to boot operating system software for the
processing nodes 105 and for the control nodes 106. Each control
node communicates with SAN 130 via 100 megabyte/second
fibre channel adapter cards 128 connected to fibre channel links
122, 124 and communicates with the Internet (or any other
external network) 125 via an external network interface 129
having one or more Gigabit Ethernet NICs connected to Gigabit
Ethernet links 121,123. (Many other techniques and hardware
may be used for SAN and external network connectivity.) Each
control node includes a low speed Ethernet port (not shown) as
a dedicated management port, which may be used instead of
remote, web-based management via management application
135.
6

The switch fabrics is composed of one or more 30-port Giganet
switches 115, such as the NIC-CLAN 1000 and clan 5300 switch,
and the various processing and control nodes use corresponding
NICs for communication with such a fabric module. Giganet
switch fabrics have the semantics of a Non-Broadcast Multiple
Access (NBMA) network. All inter-node communication is via a
switch fabric. Each link is formed as a serial connection between
a NIC 107 and a port in the switch fabric 115. Each link operates
at 112 megabytes/second.
’044 patent, col. 3, ll. 9-59.
The platform is designed to utilize virtual MAC addresses2 to respond
to failovers.
A plurality of computer processors are [sic] connected to an
internal communication network.
A virtual local area
communication network over the internal network is defined and
established. Each computer processor in the virtual local area
communication network has a corresponding virtual MAC
address and the virtual local area network provides
communication among a set of computer processors but excludes
the processors from the plurality not in the defined set. A virtual
storage space is defined and established with a defined
correspondence to the address space of the storage network. In
response to a failure by a computer processor, a computer
processor from the plurality is allocated to replace the failed
processor. The MAC address of the failed processor is assigned
to the processor that replaces the failed processor. The virtual
storage space and defined correspondence of the failed processor
is assigned to the processor that replaces the failed processor.
The virtual local area network is reestablished to include the
processor that replaces the failed processor and to exclude the
failed processor.

MAC (media access control) addresses are unique identifiers
permanently assigned to network interface hardware components such as
Ethernet cards and routers.
7
2

Id. col. 2, ll. 1-22.
The ’430 patent lists 8 claims, of which claim 1 is asserted.
1. A platform for automatically deploying at least one virtual
processing area network, in response to software commands,
said platform comprising:
a plurality of computer processors connected to an internal
communication network;
at least one control node in communication with an external
communication network and in communication with an
external storage network having an external storage address
space, wherein the at least one control node is connected to
the internal communication network and thereby in
communication with the plurality of computer processors,
said at least one control node including logic to receive
messages from the plurality of computer processors,
wherein said received messages are addressed to the
external communication network and to the external
storage network and said at least one control node including
logic to modify said received messages to transmit said
modified messages to the external communication network
and to the external storage network;
configuration logic for receiving and responding to said
software commands, said software commands specifying (i)
a number of processors for a virtual processing area network
(ii) a virtual local area network topology defining
interconnectivity and switching functionality among the
specified processors of the virtual processing area network,
and (iii) a virtual storage space for the virtual processing
area network, said configuration logic including logic to
select, under programmatic control, a corresponding set of
computer processors from the plurality of computer
processors, to program said corresponding set of computer
processors and the internal communication network to
establish the specified virtual local area network topology,
and to program the at least one control node to define a
8

virtual storage space for the virtual processing area network,
said virtual storage space having a defined correspondence
to a subset of the external storage address space of the
external storage network; and
wherein the plurality of computer processors and the at least
one control node include network emulation logic to
emulate Ethernet functionality over the internal
communication network.
The ’044 patent lists 6 claims, of which claim 1 is asserted.
1. A platform for computer processing, connectable to an
external communication network and a storage network and
comprising:
a plurality of computer processors connected to an internal
communication network;
configuration logic to define and establish (a) a virtual local
area communication network over the internal network,
wherein each computer processor in the virtual local area
communication network has a corresponding virtual MAC
address and the virtual local area network provides
communication among a set of computer processors but
excludes the processors from the plurality not in the defined
set, and (b) a virtual storage space with a defined
correspondence to the address space of the storage network;
and
failover logic, responsive to a failure of a computer processor,
to allocate a computer processor from the plurality to
replace the failed processor, the failover logic including logic
to assign the virtual MAC address of the failed processor to
the processor that replaces the failed processor, logic to
assign the virtual storage space and defined correspondence
of the failed processor to the processor that replaces the
failed processor, and logic to reestablish the virtual local
area network to include the processor that replaces the
failed processor and to exclude the failed processor.
9

The ’059 patent derives from an application filed on May 7, 2003. It is
entitled “Disaster Recovery for Processing Resources Using Configurable
Deployment Platform,” and was issued on February 13, 2007.

It lists as

inventors Alan Greenspan, Borne Goodman-Mace, Michael Johnson, Siping
Liu, and Claude Keswani. The ’059 patent discloses a disaster recovery
system that can be configured to mimic the topology of a failed primary
system. Most modern enterprise computing systems have intricate internal
interconnections among computers and components that perform a host of
differentiated tasks. In the typical system,
[a] firewall acts as an interface to the Internet, for example, to
receive various requests therefrom. The firewall communicates
with a load balancer, which attempts to distribute the processing
load on the overall system among a multiplicity of processing
nodes. For example, the load balancer may distribute requests
among a multiplicity of Web servers. Each Web server, in turn,
may perform some analysis of a task it receives and invoke an
appropriate application server. Each application server may in
turn interact with database or file server. Each of the various
entities may be executing on its own respective processing or
server node. . . . Adding to the complication . . . are the various
hubs, switches, cabling, and the like necessary to create the
depicted processing network. Moreover, various versions of
software may be executing.
’059 patent, col. 2, ll. 36-55.
To date, processor-side aspects of disaster recovery have largely
been handled by requiring processing resources on the
secondary site to be identical to those of the first site and to wait
in standby mode. This is complicated and costly, as suggested by
10

the complexity of the multi-tiered architecture. Moreover,
modern processor networks are often changed for a variety of
reasons. If such a network is a primary site network, then the
changes also need to be made to the secondary, or else the
enterprise risks that its disaster recovery system will not work as
expected.
Id. col. 1, l. 61 - col. 2, l. 3.
The ’059 patent eliminates the need for a standby secondary system
that is physically identical to the primary system by creating a configurable
PAN platform.
Processing resources and configuration at the primary site are
characterized into a specification with a defined set of variables,
and the specification is stored in a secure way. The set of
information that characterizes the resources (i.e., the resource’s
“personality”) includes information such as the number of
processing area networks (PANs) at the primary site, for each
such PAN the number of nodes that should be allocated, the
network connectivity among processors, storage mappings and
the like . . . . The failover site uses a software configurable
platform that allows one or more independent processing
networks to be deployed (or instantiated) in response to software
commands. . . . The configuration specification is accessed and
used to issue a set of commands on the configurable platform to
instantiate processing resources on the failover site consistent
with the specification.
Id. col. 3, ll. 24-42. The ’059 patent lists 10 claims, of which claim 10 is
asserted:
10. A system of providing processing resources to respond to
a fail-over condition in which a primary site includes a
configuration of processing resources, comprising:

11

a

computer-readable specification that describes a
configuration of processing resources of the primary site;

a configurable processing platform capable of deploying
processing area networks in response to software
commands;
logic to generate software commands to the configurable
platform to deploy processing resources corresponding to
the specification;
wherein the processing resources at the primary site include a
plurality of independent processing area networks and
wherein the specification describes all of the independent
processing area networks.
ANALYSIS
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.” Although the scope of
patentable subject matter is “expansive,” laws of nature, physical
phenomena, and abstract ideas have long been held to be patent-ineligible.
Diamond v. Chakrabarty, 447 U.S. 303, 308-309 (1980). More recently, in
addressing § 101 patentability, the Supreme Court has outlined a two-step
query to be used in analyzing subject matter eligibility.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S. Ct. at
1296-1297. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., [] 132 S. Ct., at 1297. To answer that question,
12

we consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patenteligible application. Id., [] 132 S. Ct., at 1298, 1297. We have
described step two of this analysis as a search for an “‘inventive
concept’”— i.e., an element or combination of elements that is
“sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself.” Id., [] 132 S. Ct., at 1294.
Alice Corp., 134 S. Ct. at 2355.
Cisco argues that Egenera’s asserted claims fail both prongs of the Alice
paradigm because they are directed to abstract ideas, and do not disclose any
inventive concepts. The arguments are heavily intertwined. “Recent cases
. . . suggest that there is considerable overlap between step one and step two
[of Alice], and in some situations this analysis could be accomplished without
going beyond step one.” Amdocs (Israel) Ltd. v. Openet Tel., Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016). Although the Federal Circuit has broadly stated
that “[t]he abstract idea exception prevents patenting a result where ‘it
matters not by what process or machinery the result is accomplished,’”
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir.
2016), quoting O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1854); there is
“no [] single, succinct, usable definition or test” to determine exactly what an
“abstract idea” encompasses. Amdocs (Israel), 841 F.3d at 1294. “Instead of
a definition, then, the decisional mechanism courts now apply is to examine
13

earlier cases in which a similar or parallel descriptive nature can be seen –
what prior cases were about, and which way they were decided.” Id. Claims
directed to “improvements in computer-related technology are [not]
inherently abstract.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). The most relevant inquiry is “whether the claims are
directed to an improvement to computer functionality versus being directed
to an abstract idea.” Id.
The ’430 and ’044 Patents
Cisco neatly sums up its argument by characterizing the ’430 and ’044
patents as being directed to “setting up a logical group of resources within a
physically connected group of resources” – “the archetypal abstract idea” of
“replacing manual functionality with software.” Cisco Br. at 17.
The [] claims purport to apply generic software “logic” (claimed
in purely generic functional terms) to accomplish tasks through
software that had long been accomplished through physical
cabling. Although network engineers have long connected
computers to each other and other network equipment with
physical cabling to form a group within a network, the patents
purport to use unspecified, functionally described “logic” to
replace manual functionality.
Id. Cisco likens the ’430 and ’044 patents to others that have failed the
patentability test because they offer no more than “an abstract idea
implemented in a particular technological environment.” Appistry, Inc. v.
Amazon.com, Inc., 2015 WL 4210890, at *2 (W.D. Wash. July 9, 2015)
14

(Appistry I). In Appistry, the court found the disputed claims unpatentable
because they
recite the abstract idea of distributed processing akin to the
military’s command and control system, a longstanding and
intuitive practice used by many large hierarchical organizations
that value speed, efficiency, reliability, and accountability. The
patents describe systems and methods of using a network of
multiple actors to efficiently and reliably process information
and/or complete a task by breaking down the job into small
pieces, each handled by a different actor organized within an
internal hierarchy.
Id.; see also Appistry, Inc. v. Amazon.com Inc., 2016 WL 3906905, at *3
(W.D. Wash. July 19, 2016) (Appistry II) (concluding that “virtually identical
claims” are also directed to the same unpatentable abstract concept).
Likewise, in Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1367 (Fed. Cir. 2015), the Federal Circuit found claims
directed to the computerized “tracking of financial transactions to determine
whether they exceed a pre-set spending limit (i.e., budgeting)” to be
unpatentably abstract. In another similar case, In re TLI Communications
LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016), although the disputed
claim referenced tangible computer components, the Court found it invalid
where “the recited physical components merely provide a generic
environment in which to carry out the abstract idea of classifying and storing
digital images in an organized manner.” Id. at 611.
15

It is well-settled that mere recitation of concrete, tangible
components is insufficient to confer patent eligibility to an
otherwise abstract idea. Rather, the components must involve
more than performance of “‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).
Id. at 613.
Egenera, for its part, maintains that the claims of the ’430 and ’044
patents are directed to concrete enhancements of computer functionality.
[C]laim 1 [of the ’430 patent] recites a specific computing
platform for deploying PANs – which are further described in the
specification – that includes, among other elements, pools of
processors, interfaces and/or connections to internal and
external communication networks, control nodes with specific
capabilities, and configuration logic for receiving and responding
to software commands that specify “a virtual local area network
topology defining interconnectivity and switching functionality
among the specified processors of the virtual processing area
network.”
Egenera Opp’n at 8. According to Egenera, the asserted claims are near
relations of the patentable claims described in Enfish and McRO. In Enfish,
the Federal Circuit rejected the district court’s conclusion that claims
directed to self-referential data tables are unpatentably abstract. 822 F.3d
at 1337-1339.
In sum, the self-referential table recited in the claims on appeal
is a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory. The
specification’s disparagement of conventional data structures,
combined with language describing the “present invention” as
including the features that make up a self-referential table,
16

confirm that our characterization of the “invention” for purposes
of the § 101 analysis has not been deceived by the “draftsman’s
art.” Cf. Alice, 134 S. Ct. at 2360. In other words, we are not faced
with a situation where general-purpose computer components
are added post-hoc to a fundamental economic practice or
mathematical equation. Rather, the claims are directed to a
specific implementation of a solution to a problem in the
software arts.
Id. at 1339. In McRO, the Federal Circuit determined that claims setting out
a specific set of rules to improve computer animation of facial expressions
were not unpatentably abstract. 837 F.3d at 1313-1316.
[T]he automation goes beyond merely “organizing [existing]
information into a new form” or carrying out a fundamental
economic practice. Digitech [Image Techs., LLC v. Elecs. For
Imagine, Inc.], 758 F.3d [1344,] 1351 [(Fed. Cir. 2014)]; see also
Alice, 134 S. Ct. at 2356. The claimed process uses a combined
order of specific rules that renders information into a specific
format that is then used and applied to create desired results: a
sequence of synchronized, animated characters. While the result
may not be tangible, there is nothing that requires a method “be
tied to a machine or transform an article” to be patentable. Bilski
[v. Kappos], 561 U.S. [593,] 603 [(2010)] (discussing 35 U.S.C. §
100(b)). The concern underlying the exceptions to § 101 is not
tangibility, but preemption. Mayo, 132 S. Ct. at 1301.
Id. at 1315.
It takes no great leap of imagination to grasp that the ’430 and ’044
patents, like the patents in Enfish and McRO, are directed to the solution of
a real problem by the creation of an innovative processing platform with a
positive result, namely an improved enterprise computing system. The
Federal Circuit has cautioned judges “‘[to] be careful to avoid
17

oversimplifying the claims’ by looking at them generally and failing to
account for the specific requirements of the claims,” McRO, 837 F.3d at 1313
(citation omitted), lest “the exceptions to § 101 swallow the rule.” Enfish, 822
F.3d at 1337. While a virtual computer network may be seen from twenty
thousand feet as simply “a logical group of resources within a physically
connected group of resources,” the ’430 and ’044 patents do not claim virtual
networks and do not monopolize the underlying idea.3 Rather, the’430
patent is directed to a computing platform that is capable of “automatically
deploying at least one virtual processing area network” with a specified
topology. See ’430 patent, claim 1 (“configuration logic for receiving and
responding to . . . a virtual area network topology defining interconnectivity
and switching functionality”).
Claim 1 of the ’430 patent describes the physical composition of the
platform. In addition to “a plurality of processors connected to an internal

Cisco’s other generalization – that the claimed platform replaces the
conventional manual activity of cabling computers with unspecified software
logic – is also inaccurate. As the claim language and the recited portion of
the specification makes clear, the claimed system depends on extensive
physical connections between its component processors. See ’044 patent,
col. 3, ll. 9-59; see also Amdocs (Israel), 841 F.3d at 1299 (§ 101 subject
matter eligibility to be considered in light of the specification). Claim 2 of
the ’430 patent, specifying a point-to-point switch fabric as the internal
communication network, is further evidence that the specific configuration
of hardware components is essential to the functionality of the platform.
3

18

communication network,” the platform has “at least one control node in
communication with an external communication network[,] . . . an external
storage address space, [and] the internal communication network.” Unlike
the claims found unpatentable in Appistry, Intellectual Ventures, and TLI,
the recitation of hardware components and their connections is not “a
situation where general-purpose computer components are added post-hoc
to a fundamental economic practice or mathematical equation.” Enfish, 822
F.3d at 1339. Claim 1 requires the components of the system to perform
certain specialized functions to accomplish the stated goal. The “at least one
control node” must facilitate modified messaging between the processors
and the external networks. See ’430 patent, claim 1 (“said at least one control
node including logic to receive messages from the plurality of computer
processors . . . addressed to the external communication [and] storage
network[s] . . . [and] logic to modify said received messages to transmit . . .
to the external . . . network[s]”). The platform must map physical processors
to emulate the members of a virtual network with a particular topology, and
map physical external storage to virtual storage. See id. (“logic to select . . .
a corresponding set of computer processors . . . , to program said
corresponding set of computer processors and the internal communication
network to establish the specified virtual local area network topology, and to
19

program at least one control node to define a virtual storage space for the
virtual processing area network”). Finally, the processors and the control
node(s) must be capable of “emulat[ing] Ethernet functionality over the
internal communication network.” Id.
The ’044 patent is directed to a computer platform that can substitute
for a failed processor of a virtual network without having to physically
replace the processor itself. Claim 1 of the ’044 patent requires a plurality of
connected processors to establish a virtual network with a virtual storage
space; and, by using virtual MAC addresses, to replace a failed processor by
remapping the assigned address and storage. See ’044 patent, claim 1 (“logic
to assign the virtual MAC address of the failed processor to the processor that
replaces the failed processor, logic to assign the virtual storage space and
defined correspondence of the failed processor to the processor that replaces
the failed processor”).
That certain aspects of the functionality of the claimed platforms is
specified through programming logic is not an impediment to subject matter
eligibility. In McRO, in approving claims directed to a software method for
the improved computer animation of facial expressions, the Federal Circuit
noted that there was no tangibility requirement for patent eligibility. 837
F.3d at 1315. Nor is it a bar if the individual elements of the claimed systems
20

are, as Cisco contends, routine and conventional in the art. In Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), the Federal Circuit found claims for an internet content filtering
system patent-eligible despite being directed to the abstract concept of
content filtering and being composed of generic computer components and
conventional methods. Id. at 1349-1350.
The inventive concept inquiry requires more than recognizing
that each claim element, by itself, was known in the art. As is the
case here, an inventive concept can be found in the nonconventional and non-generic arrangement of known,
conventional pieces.
The inventive concept described and claimed in the ’606 patent
is the installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features specific
to each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter
on the ISP server. BASCOM explains that the inventive concept
rests on taking advantage of the ability of at least some ISPs to
identify individual accounts that communicate with the ISP
server, and to associate a request for Internet content with a
specific individual account. . . . According to BASCOM, the
inventive concept harnesses this technical feature of network
technology in a filtering system by associating individual
accounts with their own filtering scheme and elements while
locating the filtering system on an ISP server. See Research
Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir.
2010) (“[I]nventions with specific applications or improvements
to technologies in the marketplace are not likely to be so abstract
that they override the statutory language and framework of the
Patent Act.”). On this limited record, this specific method of
filtering Internet content cannot be said, as a matter of law, to
have been conventional or generic.
21

Id. at 1350.
Like the claims in Bascom, claim 1 of the ’430 patent offers a useful,
non-conventional, and non-generic arrangement of components and
functionality, namely, a unique arrangement of networked processors and
control nodes with the specified messaging, mapping, and Ethernet
emulation functions, see id., that is “directed to a specific implementation of
a solution to a problem.” Enfish, 822 F.3d at 1339; see also McRO, 837 F.3d
at 1515. At this early stage of the litigation, Cisco has not shown at the time
of invention that the combination of hardware and functionality taught by
the ’430 and ’044 patents was either conventional or generic.4 See Bascom,
827 F.3d at 1350.
Although there is some overlap between the § 101 eligibility analysis
and an anticipation or obviousness analysis under 35 U.S.C. §§ 102 & 103 in
determining whether claim elements are “routine and conventional,”
4

the concept of inventiveness is distinct from that of novelty.
Novelty is the question of whether the claimed invention is new.
Inventiveness is the question of whether the claimed matter is
invention at all, new or otherwise. The inventiveness inquiry
of § 101 should therefore not be confused with the separate
novelty inquiry of § 102 or the obviousness inquiry of § 103.
Accordingly, the Supreme Court has cautioned that “[t]he
obligation to determine what type of discovery is sought to be
patented must precede the determination of whether that
discovery is, in fact, new or obvious.”
Amdocs (Israel), 841 F.3d at 1311. To the extent that the subject matter
eligibility inquiry requires assessing the state of the art, that assessment, as
in the §§ 102 and 103 context, must be conducted from the perspective of a
22

Like the self-referential data table of Enfish and the animation rules of
McRO, the claimed processing platform presents an improvement in
computer functionality. In addition to expediting system deployment, the
platform removes a system’s dependence on specific physical connections
between processors while maintaining the desired performance. The ability
to automatically deploy a virtual processing area network also provides
efficiency, flexibility, and scalability not available in a manually cabled
system. See, e.g., ’430 patent, col. 3, ll. 53-54 (“Under software control, the
platform supports multiple, simultaneous and independent processing area
networks.”); col. 28, ll. 50-55 (“It will be appreciated that deployment may
be based on programmatic control. For example, more processors may be
deployed under software control during peak hours of operation for the PAN,
or corresponding more or less storage space for a PAN may be deployed
under software algorithmic control.”).
Similarly, the ’044 patent discloses a network of processors that
establishes a virtual network utilizing reassignable virtual MAC addresses to
support the event of a node failure. Although Cisco argues that virtual MAC
addresses do no more than conventional MAC addresses in identifying a

person of ordinary skill in the art at the time of the invention to avoid the
usual temptations of hindsight.
23

specific node on a network, see Cisco Reply at 15, there is a crucial difference.
Conventional MAC addresses are unique and fixed to a specific component
of network hardware. In a physical world, if the system fails, in addition to
replacing the failed processor, the address resolution protocol (ARP5) tables
have to be updated to reflect the new MAC address of the replacement
hardware.

The ’044 patent removes the necessity of other computers

relearning the new MAC address.
When in filtered mode, there will be one externally visible MAC
address to which external nodes transmit packets for a set of
virtual network interfaces. If that adapter goes down, then not
only do the virtual network interfaces have to fail over to the
other control node, but the MAC address must fail over too so
that external nodes can continue to send packets to the MAC
address already in the ARP caches. Under one embodiment of
the invention, when a failed control node recovers, a single MAC
address is manipulated and the MAC address does not have to be
remapped on recovery.
’044 patent, col. 19, l. 61 - col. 20, l. 4. Whether at Alice step 1 or step 2,
because the ’430 and ’044 patents are directed to systems that improve
computer functionality, they claim patent-eligible subject matter.

The ARP is a network protocol that maps network (IP) addresses to a
physical (MAC) hardware address to ensure that messages are delivered to
the appropriate and intended recipient computer.
24
5

The ’059 Patent
Cisco contends that the ’059 patent is directed to the abstract idea of
“using a ‘disaster plan’ to set up a backup site,” and discloses nothing more
than “a generic primary site, a generic configurable platform located at a
backup site, and a generic specification made available (via storage system)
to the backup site.” Cisco Br. at 7. According to Cisco, claim 10 of the ’059
patent is “highly analogous” to the claim found ineligible in Tranxition v.
Lenovo (United States) Inc., 2016 WL 6775967 (Fed. Cir. Nov. 16, 2016). In
Tranxition, the disputed claim “instruct[ed] a practitioner to (1) provide
configuration information, (2) generate an extraction plan, (3) extract the
configuration settings, (4) generate a transition plan, and (5) transition those
settings to a new computer.” Id., at *3. The Federal Circuit held the claim to
be directed to the abstract idea of data migration.
Put another way, the stated aim of the patent is to automate the
migration of data between two computers. This is not sufficient
under step one of Alice. Contrary to Tranxition’s argument, the
claim is not directed to an improvement to computer
functionality. There is nothing in the claim to suggest that, once
settings have been transitioned, the target computer will be any
more efficient.
Id., at *3. Further, although a computer was able to accomplish the task
more quickly and thoroughly, the claimed method applied the abstract idea

25

no differently than one would apply it manually. Consequently, the Court
held that the claim did not disclose an inventive concept.
[I]t is not relevant that a human may perform a task differently
from a computer. It is necessarily true that a human might apply
an abstract idea in a different manner from a computer. What
matters is the application. “Stating an abstract idea while adding
the words ‘apply it with a computer’” will not render an abstract
idea non-abstract. See [Alice, 134 S. Ct.] at 2359. There must be
more.
Id., at *3.
In response, Egenera maintains that the ’059 patent claims eligible
subject matter because the ’059 patent discloses a system for launching a
secondary backup site on “a configurable processing platform capable of
deploying processing area networks in response to software commands”
corresponding to a “specification describ[ing] all of the independent
processing area networks” of the primary site. See ’059 patent, claim 10.
Emphasizing the ’059 patent’s extensive discussions of the platform and the
specifications, Egenera argues that, like the self-referential data table of
Enfish and animation rules of McRO, the ’059 patent claims offer an
improvement in computer functionality.
I do not think so. The claims of the ’059 patent are set out at a level of
generality that is indistinguishable from the underlying abstract idea.

In

Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed.
26

Cir. 2015), the Federal Circuit invalidated a claim directed to retaining userentered information that is often lost in navigating online forms because the
critical “maintaining state” limitation is “dissociated from any method by
which maintaining the state is accomplished.”

Similarly, the key

functionality of claim 10 of the ’059 patent – “logic to generate software
commands to the configurable platform to deploy processing resources
corresponding to the specification” – is claimed in functional terms that
restate the goal of the invention and “contains no restriction on how the
result is accomplished.” Id.
Moreover, the inclusion of the processing area network limitations
does not, as Egenera argues, serve to impart the necessary inventive concept.
While the court agrees with Egenera that the processing area network
platform of the ’430 and ’044 patents is patentable subject matter, unlike the
claims of those two patents, the claim limitations of the ’059 patent do not
correspond to any physical or functional aspect of the described system. The
coupling of a generic step of setting up a disaster recovery backup site with a
system capable of deploying processing area networks does no more than
implement “an abstract idea [] in a particular technological environment.”
Appistry (I), 2015 WL 4210890, at *2. This does not satisfy § 101.

27

ORDER
For the forgoing reasons, Cisco’s motion to dismiss is DENIED IN
PART with respect to the ’430 and ’044 patents, and ALLOWED IN PART
with respect to the ’059 patent. The parties are requested to submit a joint
proposed pre-trial schedule, consistent with L.R. 16.6, no later than Feb. 28,
2017.
SO ORDERED.
/s/ Richard G. Stearns
__________________________
UNITED STATES DISTRICT JUDGE

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