Case: 21-2263 Document: 67 Page: 1 Filed: 04/12/2023
United States Court of Appeals for the Federal Circuit ______________________
SEQUOIA TECHNOLOGY, LLC, Plaintiff-Appellant
v.
DELL, INC., DELL TECHNOLOGIES INC., EMC CORPORATION, AKA DELL EMC, HEWLETT- PACKARD ENTERPRISE CO., HITACHI VANTARA CORPORATION, SUPER MICRO COMPUTER, INC., HITACHI LTD., Defendants-Appellees ______________________
2021-2263, 2021-2264, 2021-2265, 2021-2266 ______________________
Appeals from the United States District Court for the District of Delaware in Nos. 1:18-cv-01127-LPS-CJB, 1:18- cv-01128-LPS-CJB, 1:18-cv-01129-LPS-CJB, 1:18-cv- 01307-LPS-CJB, Judge Leonard P. Stark.
-------------------------------------------------
RED HAT, INC., Plaintiff/Counterclaim Defendant-Appellee
SEQUOIA TECHNOLOGY, LLC, Defendant/Counterclaim Plaintiff-Appellant
ELECTRONICS AND TELECOMMUNICATIONS Case: 21-2263 Document: 67 Page: 2 Filed: 04/12/2023
RESEARCH INSTITUTE, Defendant-Appellant
INTERNATIONAL BUSINESS MACHINES CORPO- RATION, Counterclaim Defendant-Appellee ______________________
2021-2267 ______________________
Appeal from the United States District Court for the District of Delaware in No. 1:18-cv-02027-LPS-CJB, Judge Leonard P. Stark. ______________________
Decided: April 12, 2023 ______________________
ANDREI IANCU, Irell & Manella LLP, Los Angeles, CA, argued for Sequoia Technology, LLC, Electronics and Tele- communications Research Institute. Also represented by ALAN J. HEINRICH; PHILIP J. WARRICK, Washington, DC; JOHN E. LORD, Skiermont Derby, LLP, Los Angeles, CA; WILLIAM J. O'BRIEN, One LLP, Newport Beach, CA.
JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington, DC, argued for Dell, Inc., Dell Technologies Inc., EMC Cor- poration, Hewlett-Packard Enterprise Co., Hitachi Van- tara Corporation, Super Micro Computer, Inc., Hitachi Ltd., Red Hat, Inc., International Business Machines Cor- poration. Also represented by STEPHEN DESALVO; CHRIS- TOPHER DECORO, TODD M. FRIEDMAN, New York, NY; HERSH H. MEHTA, Benesch Friedlander Coplan & Aronoff LLP, Chicago, IL. Case: 21-2263 Document: 67 Page: 3 Filed: 04/12/2023
SEQUOIA TECHNOLOGY, LLC v. DELL, INC. 3
JACK B. BLUMENFELD, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, for Red Hat, Inc.
BRIAN P. EGAN, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, for International Business Machines Cor- poration. ______________________
Before LOURIE, DYK, and STOLL, Circuit Judges. STOLL, Circuit Judge. Sequoia Technology, LLC appeals from a stipulated judgment of noninfringement and invalidity of U.S. Patent No. 6,718,436 following an adverse claim construction rul- ing from the United States District Court for the District of Delaware. For the reasons below, we disagree with the dis- trict court’s claim construction for “computer-readable re- cording medium,” and thus we reverse the district court’s ineligibility determination under 35 U.S.C. § 101. In addi- tion, we agree with the district court’s claim construction for “disk partition” and “logical volume,” and thus we af- firm the district court’s noninfringement determination. BACKGROUND I The technology at issue is digital storage. The ’436 pa- tent explains that servers with important data can use “Re- dundant Array of Independent Disks” (RAID) to store the same data on multiple hard disks. See ’436 patent col. 1 ll. 26–32. The specification further notes how a virtual disk drive—also known as a logical volume—can encom- pass multiple physical disk drives. Id. at col. 1 ll. 24–28. A logical volume manager can implement the RAID tech- nique with software to construct a logical volume. Id. The specification teaches that these advances were known, but “conventional logical volume managers ha[d] problems in that metadata is too large to manage in huge storage Case: 21-2263 Document: 67 Page: 4 Filed: 04/12/2023
structures and processing speed is too slow when modifying metadata.” Id. at col. 3 ll. 42–64. Continuing, the specifi- cation explains that “for managing a logical volume, the huge size of metadata delays system booting time and uses too much memory.” Id. at col. 3 ll. 43–45. The ’436 patent purports to address these problems. The patent is directed to “a method for managing a logical volume for minimizing a size of metadata and supporting dynamic online resizing,” as well as “a computer-readable recording medium storing a program or data structure for embodying the method.” Id. at Title, Abstract, col. 1 ll. 10–14, col. 3 l. 66–col. 4 l. 6. The specification explains that “using a disk partition as a volume construction unit” for the logical volume minimizes metadata. Id. at col. 11 l. 66–col. 12 l. 2. The patent describes a preferred embodiment that has three storage virtualizations: extents, disk partitions, and the logical volume. Id. at col. 6 l. 55–col. 7 l. 20. Extents are the “minimum unit of space allocation to store infor- mation” and make up disk partitions. Id. at col. 7 ll. 1–3, col. 12 l. 42–43. Disk partitions are the “minimum unit of the logical volume.” Id. at col. 6 ll. 60–61. And “[t]he logi- cal volume is a union of disk partitions,” which can be resized in disk partition units. Id. at col. 6 ll. 64–67. Claims 1–3 and 8 are at issue on appeal. Claim 1 is representative and recites: 1. A method for managing a logical volume in order to support dynamic online resizing and minimizing a size of metadata, said method comprising steps of: a) creating the logical volume by gathering disk partitions in response to a request for creating the logical volume in a physical storage space; Case: 21-2263 Document: 67 Page: 5 Filed: 04/12/2023
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b) generating the metadata including infor- mation of the logical volume and the disk partitions forming the logical volume and storing the metadata to the disk partitions forming the logical volume, c) dynamically resizing the logical volume in response to a request for resizing, and modifying the metadata on the disk parti- tions forming the logical volume; and d) calculating and returning a physical ad- dress corresponding to a logical address of the logical volume by using mapping infor- mation of the metadata containing infor- mation of the physical address corresponding to the logical address, wherein the metadata includes, a disk partition table containing in- formation of a disk partition in which the metadata is stored; a logical volume table for maintain- ing the information of the logical volume by storing duplicated infor- mation of the logical volume onto all disk partitions of the logical vol- ume; an extent allocation table for indi- cating whether each extent in the disk partition is used or not used; and a mapping table for maintaining a mapping information for a physical address space corresponding to a logical address space which is a continuous address space equal in Case: 21-2263 Document: 67 Page: 6 Filed: 04/12/2023
size of storage space to an entirety of said logical volume. Id. at col. 12 ll. 17–48 (emphases added to highlight dis- puted limitations). Independent claim 8 mirrors claim 1 except for the preamble, which recites a “computer-reada- ble recording medium storing instructions for executing a method.” Id. at col. 13 ll. 30–33. II Sequoia is the exclusive licensee of the ’436 patent, which is owned by Electronics and Telecommunications Research Institute (ETRI). The accused product is Red Hat, Inc.’s software tool that can create and resize logical volumes with units smaller than a whole disk partition, such as extents. Initially, Sequoia filed complaints against certain Red Hat customers “that make or sell products or services in- corporating the accused products.” Appellees’ Br. 16 (citing Sequoia Tech., LLC v. Dell Inc., No. 18-cv-1127, 2020 WL 5835129, at *1 (D. Del. Oct. 1, 2020) (“Report”), report and recommendation adopted, No. 18-cv-1127, 2021 WL 2010448 (D. Del. May 20, 2021) (“Decision”)). Red Hat then filed a complaint against Sequoia, and later ETRI, seeking a declaratory judgment of noninfringement and invalidity. Report, 2020 WL 5835129, at *1. Sequoia counterclaimed against Red Hat and its parent company, International Business Machines Corp., for infringement. Sequoia Tech., LLC v. Dell Inc., No. 18-cv-1127, 2021 WL 3878937, at *1 (D. Del. Aug. 16, 2021), judgment entered, No. 18-cv-1127, 2021 WL 3878938 (D. Del. Aug. 16, 2021) (“Final Judg- ment”). The district court judge consolidated the cases and referred the claim construction disputes to a magistrate judge. Report, 2020 WL 5835129, at *1. During litigation, Red Hat filed two petitions for inter partes reviews (IPRs), and the U.S. Patent and Trademark Office denied institu- tion in both. Red Hat, Inc. v. Elecs. & Telecomms. Research Inst., Case No. IPR2019-00465, Paper No. 15 (P.T.A.B. Case: 21-2263 Document: 67 Page: 7 Filed: 04/12/2023
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June 13, 2019); Red Hat, Inc. v. Elecs. & Telecomms. Re- search Inst., Case No. IPR2019-00467, Paper No. 14 (P.T.A.B. July 10, 2019). Relevant to this appeal, the parties disputed the con- struction of several claim terms. Specifically, the parties disputed the construction of: “computer-readable record- ing medium”; “disk partition”; “logical volume”; and, re- lated to the latter two claim construction issues, construed the term “used or not used” in the context of an extent’s usage in an “extent allocation table.” The magistrate judge adopted Red Hat’s construction and construed “computer-readable recording medium” to include transitory media (i.e., signals or waves). Final Judgment, 2021 WL 3878937, at *2. He looked to the spec- ification, which discusses “computer readable medium” as “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. 1 Report, 2020 WL 5835129, at *14 (citing ’436 patent col. 11 ll. 36–39). He also relied on Red Hat’s expert’s analysis that a person of ordinary
1 Transitory media is “fleeting” and “devoid of any semblance of permanence during transmission.” In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007). It can be physical, like “radio broadcasts, electrical signals through a wire, and light pulses through a fiber-optic cable,” but does not possess concrete structure that would qualify as a device or machine. Id. at 1353, 1355. By contrast, non- transitory media can encompass a concrete structure like a “random-access memory” or “optical data storage device” and be a manufacture, matter, machine, or process. See Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1294 (Fed. Cir. 2017) (explaining that the challenged claim included patent-eligible embodiments, like “random-access memory” or “optical data storage device,” that—unlike a carrier wave—would not run afoul of Nuijten). Case: 21-2263 Document: 67 Page: 8 Filed: 04/12/2023
skill in the art would have understood “computer-readable recording medium” to include transitory media; a conclu- sion the expert reached based on express definitions in thirty-four contemporaneous patents and patent applica- tions. Id. In adopting the magistrate judge’s Report and Recommendation, the district court concluded that no clear language in the specification excluded transitory media, so the extrinsic evidence was persuasive, “particularly given the lack of any substantive rebuttal from Sequoia’s expert.” Decision, 2021 WL 2010448, at *3. Because transitory me- dia are ineligible statutory subject matter under 35 U.S.C. § 101, see In re Nuijten, 500 F.3d 1346, 1355, 1357 (Fed. Cir. 2007), the court entered a stipulated judg- ment of invalidity of claims 8–10 based on its construction of “computer-readable recording medium.” Final Judg- ment, 2021 WL 3878937, at *2. As for “disk partition” and “logical volume,” the district court agreed with Red Hat and construed a “disk partition” to mean a “section of a disk that is a minimum unit of a logical volume” and a “logical volume” to mean an “exten- sible union of more than one disk partition, the size of which is resized in disk partition units.” Id. at *1–2. The district court’s construction thus requires that a logical vol- ume is constructed by whole disk partitions, not subparts of disk partitions such as extents. Finally, the district court construed the phrase “used or not used” in the limitation “extent allocation table for indicating whether each extent in the disk partition is used or not used.” Decision, 2021 WL 2010448, at *1. Adopting Red Hat’s construction, the court held that “used or not used” means that an extent “is or is not storing infor- mation.” Id. Following claim construction, the parties stipulated to final judgment that, under the district court’s claim con- struction of “logical volume” and “disk partition,” the ac- cused products do not infringe the asserted claims and Case: 21-2263 Document: 67 Page: 9 Filed: 04/12/2023
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that, under the district court’s construction of “computer- readable recording medium,” claims 8–10 are ineligible un- der § 101. The district court entered judgment accordingly. The interpretation of the term “extent allocation table” was not subject to the stipulation, but its interpretation affects the construction of “disk partition” and “logical volume.” Sequoia appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). DISCUSSION We review claim construction based on intrinsic evi- dence de novo and review factual findings about extrinsic evidence for clear error. SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1378 (Fed. Cir. 2021) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015)). Factual findings are clearly erroneous when, although there is supporting evidence, “the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.” United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948). On appeal, Sequoia challenges the district court’s con- struction of (1) “computer-readable recording medium,” un- derlying the court’s judgment of ineligibility of claims 8–10 under § 101; and (2) “disk partitions,” “logical volumes,” and “used or not used,” underlying the court’s finding of noninfringement. We address each issue in turn. I We start with ineligibility and Sequoia’s argument that the district court erred in construing “computer-readable recording medium storing instructions” as including tran- sitory media. Appellant’s Br. 41–50. Because the intrinsic evidence supports Sequoia’s interpretation, we agree that the court erred. We start with the claim language. See Personalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336, 1340 Case: 21-2263 Document: 67 Page: 10 Filed: 04/12/2023
(Fed. Cir. 2020) (explaining how we first, and primarily, rely on intrinsic evidence like claim language when con- struing claim terms). At the outset, we note that the claim language does not actually recite a “computer-readable me- dium” or CRM. Instead, it more narrowly recites “com- puter-readable recording medium storing instructions.” ’436 patent col. 13 ll. 29–30 (emphases added). As Sequoia asserts, a person of ordinary skill would not understand transitory signals, such as carrier waves, to record or store instructions in memory systems. This is because transitory signals, by their very nature, are fleeting and do not persist over time. Other elements in the claim confirm that the claim is directed to hardware as opposed to transitory waves or signals. 2 For example, the claim recites “creating the logical volume . . . in a physical storage space,” id. at col. 13 ll. 33–35, and “storing [sic] metadata to the disk partitions,” id. at col. 13 ll. 38–39. The claim language thus demonstrates that claim 8 is not directed to a transi- ent signal, but rather to a non-transient storage medium. In our view, the specification further supports this con- struction. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (characterizing the specification as highly relevant and “the single best guide to the mean- ing of a disputed term”) (citation omitted); Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1365 (Fed. Cir. 2016). The specification discloses only non-transitory me- dia. The specification states: “[T]he present invention can be stored in a computer readable medium including com- pact disc read only memory (CDROM), random access memory (RAM), floppy disk, hard disk, and magneto-
2 The specification states that the invention “can be embodied in hardware or software.” Id. at col. 3 l. 1. Even if the recording and storage were implemented in software, this is not the same as a transitory signal. Case: 21-2263 Document: 67 Page: 11 Filed: 04/12/2023
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optical disk.” ’436 patent col. 11 ll. 36–39. Every example is hardware. On appeal, Red Hat emphasizes, as it did before the district court, that the specification states that CRM “in- clud[es]” non-transitory media, and thus its definition is open-ended and could include transitory media. Appellees’ Br. 73–74. It is true that we have held that the term “in- cluding” is open-ended. See, e.g., Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1214 (Fed. Cir. 2008). But this does not mean that “computer-readable recording me- dium storing instructions” as used in claim 8 and the spec- ification is fairly understood to include transitory signals. “[C]laims . . . do not have meaning removed from the con- text from which they arose.” Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001); see Phillips, 415 F.3d at 1313 (explaining the importance of reading a claim in the context of the entire patent). Here, not only is the claim term narrower—including the phrases “record- ing” and “storing”—but also Red Hat’s proposed construc- tion hardly makes sense in the context of the disclosed invention, which relates to hardware storage and says nothing about signals. Indeed, it is hard to imagine how the invention would be implemented as a signal. The spec- ification states that an object of the invention is to provide “a computer-readable recording medium storing a program or data structure”—which seems irreconcilable with a tran- sitory signal. See ’436 patent col. 1 ll. 12–13, 19–20, col. 4 ll. 5–6, 25–26. In short, the use of a term denoting a non- exhaustive list does not eviscerate our obligation to con- strue terms in the context of the entire patent. The context here makes clear that the term “computer-readable record- ing medium” cannot encompass transitory media. Our decision rests solely on the intrinsic evidence. We are unpersuaded by Red Hat’s arguments to the contrary, which rest on extrinsic evidence. See Appellees’ Br. 69–72. To this end, we find that the district court clearly erred in considering Red Hat’s expert testimony, which is both Case: 21-2263 Document: 67 Page: 12 Filed: 04/12/2023
inconsistent with the intrinsic evidence and also based on different express definitions of CRM in patent specifica- tions directed to different inventions. First, Red Hat relies on its expert’s analysis of thirty- four contemporaneous patents and patent applications to support its argument that a person of ordinary skill under- stood “computer-readable recording medium” to encompass transitory media. Appellees’ Br. 69–71 (citing J.A. 551–59). This evidence merely shows that in thirty- four other specifications, the inventors chose to be their own lexicographers and expressly defined CRM or like terms to include transitory media. The inventors here chose otherwise. That other inventors chose to be their own lexicographers and define CRM to include transitory signals does not demonstrate what CRM means in the con- text of the ’436 patent. Nor does it establish the plain and ordinary meaning of the claim term “computer-readable re- cording medium for storing.” Red Hat also relies on our decision in Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1294 (Fed. Cir. 2017). But Mentor Graphics does not support Red Hat’s construction. There, we affirmed the district court’s con- struction of “computer readable medium” as including transitory signals based on the specification’s express defi- nition, which included “carrier waves.” Id. Our holding rested on the fundamental principle that “[a] patentee is free to be his own lexicographer.” Id. We emphasized that “[e]ven though carrier waves differ greatly from the other disclosed mediums (such as CD-ROMs or magnetic tape), we are bound by the patentee’s lexicography.” Id. We did not address the situation where, as here, the patentee did not expressly define CRM to include carrier waves or other transitory signals. And that is why Red Hat’s reliance on Mentor Graphics and thirty-four other patents and patent applications is misplaced. Those thirty-four other patents and patent applications expressly defined CRM to include Case: 21-2263 Document: 67 Page: 13 Filed: 04/12/2023
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transitory media. The ’436 patent does not, and our hold- ing relies on this absence. Further, “a court should discount any expert testimony ‘that is clearly at odds with the claim construction man- dated by . . . the written record of the patent.’” Phillips, 415 F.3d at 1318 (quoting Key Pharms. v. Hercon Lab’ys Corp., 161 F.3d 709, 716 (Fed. Cir. 1998)). Simply put, ex- trinsic evidence of what other inventors chose to do cannot surmount the intrinsic evidence of what the inventors chose here; context is key in claim construction. See id. at 1313; see also id. at 1317 (extrinsic evidence is “less sig- nificant” than intrinsic evidence in determining the legally operative meaning of claim terms); id. at 1321 (explaining how one of the main problems with elevating extrinsic evi- dence is that the inquiry is in the abstract, rather than within the context of the patent); Netword, 242 F.3d at 1352 (“[C]laims . . . do not have a meaning removed from the context in which they arose.”). Thus, the district court clearly erred in considering Red Hat’s expert’s analysis, which is at odds with the written record of the patent. 3 Red Hat next argues that a memorandum from the U.S. Patent and Trademark Office compels a different con- struction of “computer-readable storage medium” in this case. Appellees’ Br. 71–72 (citing J.A. 549 (Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“Kappos Memo”))). But the Kappos Memo merely recognizes that the broadest reason- able interpretation—which is not the standard that applies in district court—may in some instances result in some
3 We do not disturb the district court’s finding that Sequoia’s expert did not provide a substantial rebuttal to Red Hat’s extrinsic evidence. Decision, 2021 WL 2010448, at *3 (citing Report, 2020 WL 5835129, at *14 (describing Sequoia’s expert’s opinion as “fairly brisk and conclu- sory”)). Case: 21-2263 Document: 67 Page: 14 Filed: 04/12/2023
claims in some patents being interpreted to cover transi- tory media and then rejected under § 101. J.A. 549. To overcome this problem, the Kappos Memo suggests that a so rejected claim may be amended to add the phrase “non- transitory” to overcome the ineligibility determination. Id. Contrary to Red Hat’s contention, however, this mem- orandum does not create a presumption that the claim term “computer-readable recording medium storing in- structions” in claim 8 reads on transitory media. Nor does it provide the plain and ordinary meaning of CRM. Where, as here, the intrinsic record demonstrates that the term computer-readable recording medium storing instructions (or the like) does not reasonably include transitory media and the specification’s examples are all non-transitory, we will not require the addition of the words “non-transitory” in the claims or specification. 4 In sum, the limitation “computer-readable recording medium storing instructions”—read in the context of this patent—does not encompass transitory media. We are left with a definite and firm conviction that the district court erred in relying on extrinsic evidence that was clearly at odds with the intrinsic evidence. Thus, we disagree with the district court’s claim construction and, consequently, reverse the district court’s holding that claims 8–10 are in- eligible under § 101. II We turn next to the terms “disk partition” and “logical volume.” At issue is whether the claimed invention can al- locate less than an entire disk partition to a logical volume.
4 Red Hat also relies on district court and U.S. Pa- tent and Trademark Office decisions to support its position that the term “computer-readable recording medium” in- cludes transitory media. See Appellees’ Br. 72, 75. These non-binding decisions do not impact our holding. Case: 21-2263 Document: 67 Page: 15 Filed: 04/12/2023
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We conclude that it cannot. The intrinsic evidence sup- ports constructing a logical volume using only entire disk partitions. We again begin with the claim language. See Person- alized Media Commc’ns, 952 F.3d at 1340. The language of the relevant claims recites “creating the logical volume by gathering disk partitions.” ’436 patent col. 12 l. 20 (claim 1), col. 13 l. 33 (claim 8). In addition, the claims re- peatedly identify “disk partitions” as the construction unit for a logical volume—i.e., “forming the logical volume.” See id.; see also id. at col. 12 ll. 24–25 (“disk partitions forming the logical volume”); id. at col. 12 ll. 51 (same); id. at col. 13 ll. 37–38 (same). The claims do not recite extents or groups of extents as forming the logical volume. Sequoia argues otherwise because the claims do not include the word “whole” in front of “disk partition.” Appellant’s Br. 30. But neither do they include the words “parts” or “portions.” Ap- pellees’ Br. 30; see J.A. 1098 (Sequoia admitting “portion of a partition” appears nowhere in the intrinsic evidence). This claim language thus more reasonably suggests that the logical volume is constructed by disk partitions, not portions of disk partitions. The specification further supports this construction. We have explained that a patent’s express purpose of the invention “informs the proper construction of claim terms.” Kaken Pharm. Co. v. Iancu, 952 F.3d 1346, 1352 (Fed. Cir. 2020). Here, an expressed purpose of the invention is min- imizing metadata. 5 See, e.g., id. at col. 1 ll. 10–12, col. 4
5 The patent’s other expressed purpose is dynamic resizing. See, e.g., ’436 patent col. 1 ll. 10–12. “By provid- ing flexibility of mapping, volume size can be dynamically increas[ed] and decreas[ed] effectively[.]” Id. at col. 4 ll. 47–49. Sequoia argues that if only entire disk partitions form logical volumes, that would reduce flexibility and run afoul of the patent’s stated purpose. See Appellant’s Case: 21-2263 Document: 67 Page: 16 Filed: 04/12/2023
ll. 7–10. To achieve this goal, the specification explains that “[t]he present invention constructs a logical volume by using a disk partition as a volume construction unit so the present invention can minimize the size of metadata.” Id. at col. 11 l. 66–col. 12 l. 1. Sequoia argues that metadata is minimized even if portions of the disk partition are used to construct logical volumes. Appellant’s Br. 36. But Se- quoia’s argument is untethered to the language of the pa- tent. The only explanation in the patent for how metadata is minimized is the quoted language above, which credits constructing logical volumes with disk partitions, not por- tions of disk partitions. Further, the specification explains that the preferred embodiment requires that “[t]he disk partition is a mini- mum unit of the logical volume.” ’436 patent col. 6 ll. 60–61. Also, it states that “the logical volume is resized in disk partition units”; “[t]he logical volume is a union of disk partitions”; and “a logical volume is constructed with several disk partitions.” Id. at col. 6 ll. 63–65, col. 7 ll. 8–9. We are mindful to not limit claims to a preferred embodi- ment. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002). But we also recognize that “[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.” Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (cleaned up). Here, we do not limit the claim language based on the preferred em- bodiment. Instead, we recognize that it aligns with, and
Br. 35–36. For support, Sequoia cites to a portion of its ex- pert’s report, which is devoid of explanation. Id. (citing J.A. 1464–65, ¶ 36). The district court did rely on this ex- trinsic evidence, see Decision, 2021 WL 2010448, at *3, and, in any event, conclusory expert testimony suggesting that dynamic resizing cannot be accomplished with disk partitions is inconsistent with the preferred embodiment, which only resizes based on disk partitions. Case: 21-2263 Document: 67 Page: 17 Filed: 04/12/2023
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thus bolsters, what the plain claim language indi- cates: that the disk partition is a logical volume’s mini- mum construction unit. We next turn to the prosecution history, which can in- form how the inventor understood the invention and whether the inventor limited the invention during prosecu- tion, thereby clarifying the scope of a claim. See Phillips, 415 F.3d at 1317. In Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017), we held that “state- ments made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be con- sidered for claim construction.” See also CUPP Computing AS v. Trend Micro Inc., 53 F.4th 1376, 1384 (Fed. Cir. 2022). Here, statements by the patent owner, ETRI, fur- ther support a construction of disk partition as a logical volume’s smallest construction unit. In its preliminary response to Red Hat’s IPR petition, ETRI distinguished two prior art references, Bridge and Williams, by highlighting that instead of disk partitions, “extents in Bridge or physical partitions in Williams, both subsets of disk drives[,] . . . are gathered to form a logical volume.” J.A. 1027 (quoting D.I. 178, Ex. K, at 2); see J.A. 936 (similarly explaining that “the extents of Bridge or the physical partitions of Williams,” not disk partitions, are gathered to form the logical volume). Separately, ETRI stated that “[w]hile the logical volume [in the ’436 patent] is formed from extents, extents are added or removed from the logical volume at the level of the disk partitions.” J.A. 921 (emphasis added). These statements are con- sistent with the understanding that a logical volume in the present invention is only constructed at the level of disk partitions, not sub-portions of disk partitions. Sequoia disagrees. It argues that the distinction ETRI drew between the prior art and the claimed invention was that Bridges and Williams lack any disk partitions (a nec- essary component of the claim). Appellant’s Br. 38–40. We Case: 21-2263 Document: 67 Page: 18 Filed: 04/12/2023
disagree. ETRI’s statements during prosecution distin- guish the prior art based on what element is removed or added to form the logical volume—either disk partitions or subparts of disk partitions. Sequoia argues that ETRI’s second statement above is consistent with “permit[ting] ex- tents to be individually allocated (or not) to the logical vol- ume.” Id. at 38. But ETRI’s reference to removing or adding extents “at the level of the disk partitions” is clear. See J.A. 921. It does not reasonably support a construction that would allow extents—which are sub-portions of disk partitions—to build logical volumes. Finally, Sequoia argues that another limitation in claim 1, directed to an “extent allocation table for indicat- ing whether each extent in the disk is used or not used,” supports its construction of disk partition and logical vol- ume. Appellant’s Br. 27–29. According to Sequoia, “used or not used” in the extent allocation table means used or not used for constructing the logical volume. Accordingly, if Sequoia is correct, then extents—not partitions—are the minimum unit forming the logical volume, and the district court’s construction of “disk partition” and “logical volume” are incorrect. Red Hat, on the other hand, contends that “used or not used” means used or not used for storage. As such, under Red Hat’s construction, this claim language does not undermine the district court’s construction of “disk partition” and “logical volume.” The claim language read in isolation does not clearly support either parties’ construction. Rather, the plain lan- guage of the claim limitation “used or not used” begs the question—used for what? Here, in light of the intrinsic ev- idence that logical volumes are constructed from entire disk partitions, the extent allocation table must point to whether extents are used or not used for storage. The spec- ification in other respects also sheds some light on the term. It discloses that, in the preferred embodiment, “[t]he disk partition is a minimum unit of the logical volume”; yet, the preferred embodiment also has an “extent allocation Case: 21-2263 Document: 67 Page: 19 Filed: 04/12/2023
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table.” See ’436 patent col. 6 ll. 60–61, col. 12 ll. 42–43. This suggests that “used” does not mean used in the logical volume; rather, it means used for storage. Were it other- wise, the extent allocation table in the preferred embodi- ment would be superfluous. 6 While not dispositive, we find it unlikely that an inventor would define an invention such that an element of a preferred embodiment is superfluous. Cf. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (explaining that interpreting a claim such that a preferred embodiment is excluded is “rarely, if ever, correct” because it is unlikely an inventor would de- fine the invention in such a way). The district court also relied on a paper written by the inventors of the ’436 patent (and cited in the ’436 patent) to support its understanding of “used or not used.” See Kim, et al., Volume Management in SAN Environment, PROC. OF THE EIGHTH INT’L CONF. ON PARALLEL AND DIS- TRIBUTED SYS., 500, 500–05 (2001). We have held that when a patentee cites prior art, it may “have particular value as a guide to the proper construction of the term, be- cause it may indicate . . . that the patentee intended to adopt that meaning.” Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1045 (Fed. Cir. 2000). Here, neither party disputes that the inventors’ paper, albeit directed to an earlier system, indicates that an extent is “used” when it is storing information—either storing normal data (as in- dicated by the value 11) or metadata (as indicated by the values 01 or 10). See Appellant’s Br. 24–26; Appellees’
6 The preferred embodiment uses “one bit per each extent in the disk partition and [the extent allocation map] represents usage of a corresponding extent.” ’436 patent col. 7 ll. 65–67 (emphasis added). Thus, extents are allo- cated to a single disk partition. If “usage” means alloca- tion, then the extent allocation table would nonsensically record the same value for each extent. Case: 21-2263 Document: 67 Page: 20 Filed: 04/12/2023
Br. 67; Reply Br. 10. An extent is “not used” when it is not storing data (indicated by the value 00). The paper ex- plains: An extent may be used for both normal data and metadata. The SANtopia [system, an earlier em- bodiment of the patent’s claims] gives two bits to the allocation bitmap for an extent in order to dis- tinguish these usages of an extent. The value 00 is given to an extent for the free space, 01 is for an inode, 10 is for a directory entry and 11 is for a data extent. J.A. 796. The district court reasonably found that this de- scription is consistent with Red Hat’s proposed construc- tion, in that it “indicate[s] that ‘an extent is “used” when it is storing information.’” Decision, 2021 WL 2010448, at *1 (quoting Report, 2020 WL 5835129, at *10). Sequoia challenges the district court’s reliance on this paper, stressing the differences between the present inven- tion and the SANtopia system, and explaining that “a pa- tentee does not renounce the ordinary meaning of a term merely by submitting a reference that employs a different meaning.” Appellant’s Br. 24–27 (quoting Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1347 (Fed. Cir. 2003)). We agree that the claimed invention and the SANtopia system differ. We also agree that the paper does not dictate the meaning of “us- age.” Instead, like the district court, we simply conclude that the paper shows that an extent’s “use” can refer to its use for storage, rather than its use in constructing a logical volume. In other words, this paper aligns with the specifi- cation because it supports interpreting an extent’s usage as usage for storage. In sum, we agree with the district court’s claim con- structions for “disk partition” and “logical volume.” We thus affirm the district court’s determination of nonin- fringement. Case: 21-2263 Document: 67 Page: 21 Filed: 04/12/2023
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CONCLUSION We have considered the parties’ remaining arguments and find them unpersuasive. For the reasons above, we disagree with the district court’s construction of “computer- readable recording medium,” and we thereby reverse the district court’s judgment that claims 8–10 are ineligible un- der § 101. In addition, because we agree with the district court’s construction of “disk partition” and “logical vol- ume,” we affirm the district court’s judgment of nonin- fringement. REVERSED-IN-PART, AFFIRMED-IN-PART COSTS No costs.