Sequoia Technology, LLC v. Dell, Inc., et al. (Red Hat, IBM)
Docket No. 2021-2263-67 (https://cafc.uscourts.gov/opinions-orders/21-2263.OPINION.4-12-2023_2109603.pdf)
LOURIE, DYK, STOLL
April 12, 2023
Brief Summary: DC patent ineligibility decision regarding “computer-readable” medium limitation reversed; claim construction affirmed.
Summary: Sequoia appealed judgment of noninfringement and invalidity of US 6,718,436 based on adverse claim construction ruling regarding “computer-readable recording medium storing instructions for executing a method”, “disk partition”, and “logical volume” (e.g., “creating the logical volume by gathering disk partitions”). Sequoia initially file complaints against certain Red Hat (and its parent company being IBM) customers “that make or sell products or services incorporating the accused products”. Red Hat filed two IPRs during litigation that were denied (IPR2019-00465, -00467). The magistrate judge adopted Red Hat’s construction of “construed “‘computer-readable recording medium’ to include transitory media (i.e., signals or waves)”, and “including” a list of items—none of which are transitory— and interpreted that language as leaving the door open for media that could be transitory” based on specification and expert testimony. As “transitory media are ineligible statutory subject matter under 35 U.S.C. § 101” (In re Nuijten, FC 2007), the DC found claims 8-10 including “computer-readable recording medium” invalid. The DC also found “‘used or not used” in the limitation “‘extent allocation table for indicating whether each extent in the disk partition is used or not used” “means that an extent ‘is or is not storing information.’” The DC’s construction of “logical volume” and “disk partition” also contributed to its finding of non-infringement. The FC panel first considered the patentability question regarding the “computer-readable recording medium storing instructions” limitation and found error with the DC’s analysis. Beginning with the claim language (Pers. Media, FC 2020), it explained that “the claim language does not actually recite a ‘computer-readable medium’ or CRM” but the narrower “recording medium storing instructions” language, and that “[o]ther elements in the claim confirm that the claim is directed to hardware as opposed to transitory waves or signals.” The specification was found to support the FC’s construction (Phillips, FC 2005; Trs. Columbia, FC 2016) as it “discloses only non-transitory media”. Red Hat argued “that the specification states that CRM ‘includ[es]’ non-transitory media, and thus its definition is open-ended” but the FC panel found that not to “makes sense in the context of the disclosed invention” (Lucent, FC 2008; Netword, FC 2001; Phillips, FC 2005). It based its decision “solely on the intrinsic evidence” and was “unpersuaded by Red Hat’s arguments…which rest on extrinsic evidence”, and found the DC improperly relied on expert testimony (e.g., not supported by Mentor Graphics, FC 2017 (“[a] patentee is free to be his own lexicographer”); Phillips (“a court should discount any expert testimony ‘that is clearly at odds with the claim construction mandated by . . . the written record of the patent.’”)). The FC panel also disagreed that the USPTO Eligibility Guidelines suggest the claims should be presumed to “read on transitory media.” The FC panel agreed with the DC’s construction of “disk partition” and “logical volume” based on the claim language, specification (Kraken, FC 2020 (“patent’s express purpose”); (Teleflex, FC 2002 and Kaufman, FC 2022 (cannot limit claims to preferred embodiments); Vitronics, FC 1996 (exclusion of preferred embodiment rarely correct)), and prosecution history (Phillips; Aylus, FC 2017 (“statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction”) and CUPP, FC 2022; Collins, FC 2000 (“when a patentee cites prior art, it may ‘have particular value as a guide to the proper construction of the term, because it may indicate . . . that the patentee intended to adopt that meaning’”) and Boehringer, FC 2003). The DC decision was therefore reversed-in-part and affirmed-in-part.