Intrinsic Evidence Supported Claim Construction Initially Based on Dictionary Definition
May 14, 2008
Last Month at the Federal Circuit - June 2008
Judges: Michel, Linn (author), Prost
[Appealed from: D.N.H., Judge McAuliffe]
In Mangosoft, Inc. v. Oracle Corp., No. 07-1250 (Fed. Cir. May 14, 2008), the Federal Circuit affirmed a district court’s finding of noninfringement. The only disputed issue was one of claim construction. Although the district court issued its claim construction ruling before the Federal Circuit’s decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), and relied on a definition from a technical dictionary for its construction of the relevant term, the Federal Circuit upheld the finding of noninfringement. The Federal Circuit, applying a full Phillips claim construction analysis, held the district court’s construction was correct, and as a result, the finding of noninfringement was proper.
Mangosoft, Inc. (“Mangosoft”) owns U.S. Patent No. 6,148,377 (“the ’377 patent”) relating to “computer networking systems and methods that provide shared memory systems and services.” The ’377 patent describes a technology that combines the memory capacity of multiple computers to create a pool of “virtual memory space” and to decentralize the storage of data on the network. Mangosoft sued Oracle Corporation (“Oracle”), alleging that Oracle’s Real Applications Clusters program infringed the ’377 patent. The district court granted SJ that Oracle’s product did not infringe the relevant claims.
On appeal, the Federal Circuit found no error in the district court’s construction of the claim term in dispute. The relevant claims referred to “local” memory storage devices with respect to individual computers comprising parts of a network. The district court held that “the word ‘local’ when used to modify a computer device means a computer device (e.g., a hard drive) that is directly attached to a single computer’s processor by, for example, the computer’s bus.” Slip op. at 2. Mangosoft argued that a “local memory device” with respect to a computer need not be limited by the requirement that it be “directly attached to a single computer’s processor.” A local device could, according to Mangosoft, be a memory device under the control of a node computer.
The Federal Circuit first rejected the argument that the district court had improperly relied on a dictionary in order to derive the claim construction. Citing Phillips, the Federal Circuit stated that “reference to such sources is not prohibited so long as the ultimate construction given to the claims in question is grounded in the intrinsic evidence and not based upon definitions considered in the abstract.” Id. at 4-5. Regardless of the district court’s methodology, the Federal Circuit found that the construction was consistent with the claims in question. Specifically, the Federal Circuit found that Mangosoft was advocating a construction that would read “local” to mean something beyond the breadth of anything in the claims or the specification by giving that term attributes of control, even though nothing in the intrinsic record described or supported such an expansive meaning. Moreover, the Federal Circuit found that the broader construction proffered by Mangosoft—“a memory device that . . . can be contributed to the shared addressable memory space by a particular node”—would render the claim term “local” superfluous. Mangosoft’s proposed construction would ascribe no meaning to the term “local” not already implicit
in the rest of the claim.
The Federal Circuit also found support for the district court’s conclusion in the summary of the invention, which stated that local memory devices would “each couple to a respective one of the plural computers.” Furthermore, the Court noted that the figures and descriptions included in the specification indicated that local memory devices are attached directly to individual computers. Looking to the prosecution history, the Court noted that a claim appearing in the original application had been cancelled. This claim had described “a plurality of local persistent memory devices each coupled to a respective one of said plural computers.” When this language was removed, Mangosoft had emphasized the use of the word “local” in the final form of the claims was key to distinguishing the ’377 patent from prior art.
Finally, the Federal Circuit found that the definition adopted by the lower court was consistent with a definition found in a technical dictionary. Concluding that the district court had correctly construed the term “local,” the Federal Circuit affirmed the award of SJ in Oracle’s favor.