66 F.4th 1317
Fed. Cir.2023Background
- The patent (U.S. No. 6,718,436) claims methods and a "computer-readable recording medium storing instructions" for managing logical volumes to minimize metadata and support dynamic online resizing; preferred embodiment uses disk partitions as the volume construction unit and extents as subunits.
- Sequoia (licensee) accused Red Hat's software that can create/resize logical volumes using units smaller than whole disk partitions (e.g., extents).
- The magistrate and district court adopted Red Hat's constructions: (a) "computer-readable recording medium" includes transitory media (signals) — rendering claims 8–10 ineligible under 35 U.S.C. § 101; and (b) a logical volume is composed of whole disk partitions (not portions), leading to a stipulated judgment of noninfringement for the accused products.
- The district court relied in part on extrinsic evidence (Red Hat expert and contemporaneous patent definitions) to construe CRM to include transitory media; it also adopted constructions that a logical volume is an "extensible union of more than one disk partition" and that an extent is "used" when storing information.
- On appeal, the Federal Circuit reviewed claim construction de novo and intrinsic/extrinsic evidence under Phillips and Teva standards, reversed the § 101 invalidity (holding CRM excludes transitory media in this patent), and affirmed the constructions of "disk partition" and "logical volume," affirming noninfringement.
Issues
| Issue | Sequoia's Argument | Red Hat's Argument | Held |
|---|---|---|---|
| Whether "computer-readable recording medium storing instructions" includes transitory media | CRM does not include fleeting/transitory signals; claim language ("recording/storing") and specification point to non-transitory hardware | CRM is open-ended ("including") and contemporaneous patents show POA would include transitory media | CRM, in context of this patent, excludes transitory media; district court erred — reverse §101 invalidity for claims 8–10 |
| Whether a logical volume can be formed from parts of a disk partition (extents) | Claims don’t require the word "whole"; extents can be individually allocated to volumes, enabling finer-grained resizing | Claims and specification repeatedly state logical volumes are formed by disk partitions; preferred embodiment and prosecution history treat partitions as the minimum unit | "Disk partition" is the minimum construction unit and logical volumes are unions of whole disk partitions — affirm noninfringement |
| Meaning of "used or not used" in the extent allocation table | "Used" means allocated to the logical volume (supports Sequoia’s extent-based construction) | "Used" means storing information (in-storage use), not membership in a logical volume | "Used" refers to storage usage; extent allocation table tracks storage use, consistent with partitions as construction unit |
Key Cases Cited
- In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (transitory signals are not statutory subject matter for patent eligibility)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim construction relies primarily on intrinsic evidence)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (U.S. 2015) (review standard for subsidiary factual findings in claim construction)
- Mentor Graphics Corp. v. EVE‑USA, Inc., 851 F.3d 1275 (Fed. Cir. 2017) (patentee may be lexicographer; express specification definition can require inclusion of carrier waves)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (specification is the primary guide; excluding a preferred embodiment is rarely correct)
- Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir. 2001) (claims must be read in the context in which they arose)
- Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353 (Fed. Cir. 2017) (statements by patent owner during IPR can inform claim construction)