Court Corrects Constructions of Five Claim Limitations
February 12, 2003
Last Month at the Federal Circuit - March 2003
Judges: Michel (author), Lourie, and Linn
In Altiris, Inc. v. Symantec Corp., No. 02- 1137 (Fed. Cir. Feb. 12, 2003), the Federal Circuit vacated a SJ that U.S. Patent No. 5,764,593 (“the ‘593 patent”) was not infringed after finding error in the district court’s constructions of five claim limitations germane to the SJ.
The ‘593 patent relates to methods and systems for controlling the normal startup (or “booting”) process of a computer and putting the computer through an alternate “automation boot sequence” to execute commands that, for example, update or install software on the computer.
Claim 1 recites a method for gaining control of a computer prior to the normal boot sequence. The computer operates in a digitalcomputer system that includes, among other things, a “means for connecting” the digitalcomputer system to an external source of commands. The method of claim 1 comprises testing automatically for “automation boot sequence data.” If the testing indicates an automation-boot sequence, the computer transfers control to “automation code,” the digital-computer system is connected to an external source of commands, and the computer performs external commands. The method of claim 1 further recites setting a “boot selection flag” and booting normally, if the testing indicates a normal boot sequence.
Claim 8 recites a digital-computer system programmed to perform a method of gaining control of the boot procedure of a digital computer. The digital computer comprises, among other things, a “means of booting” the computer. Claim 8 recites that the means of booting includes a first set of commands that reside on a storage device of the digital computer for booting the digital computer, and a second set of commands that reside on a storage device external to the digital computer for also booting the digital computer.
The system of claim 8 performs a method that comprises testing automatically for a source of the means of booting; transferring control of the computer system to the source of the means of booting; performing external commands, if the testing indicates a boot sequence stored external to the digital computer; setting a boot-selection flag; and booting normally, if the testing indicates a boot sequence stored internal to the digital computer.
In January 1999, Altiris, Inc. (“Altiris”) sued Symantec Corporation (“Symantec”) for infringement of the ‘593 patent. In August 2001, the district court issued an order construing the claims of the ‘593 patent. In view of that order, the parties stipulated to Symantec’s noninfringement and the district court entered a SJ of noninfringement. Altiris then appealed and Symantec cross-appealed.
On appeal, the Federal Circuit reviewed the district court’s construction of: (1) whether claims 1 and 8 required a specific order of steps; (2) whether the preamble of claim 1 was a limitation that imposed a specific order of steps; (3) the “boot selection flag” in claims 1 and 8; (4) the “automated boot sequence data” in claim 1; (5) the “automation code” in claim 1; (6) the “means of booting” in claim 8; and (7) the “means for connecting” in claim 1.
The district court had held that the steps recited in claims 1 and 8 must occur in the specific order described in the preferred embodiment. On appeal, Altiris argued that the setting step can occur at any time, because the language of claims 1 and 8 did not impose an order. The Federal Circuit agreed and noted that steps recited in a claim can be performed in any order unless the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written.
As to the significance of the preamble of claim 1, in its claim-construction order, the district court had held that the preamble was a limitation that imposed a specific order of steps in the method of claim 1. The Federal Circuit disagreed, however, finding that the preamble of claim 1 merely recited a purpose for the claim and did not give life or meaning to the claim.
As to the interpretation of “boot selection flag,” the district court had held that this feature was limited to the preferred embodiment described in the specification because the phrase “boot selection flag” lacked a common meaning. The Federal Circuit noted, however, that even if a phrase as a whole lacks a common meaning, the common meaning of individual words in the phrase must still be considered. The Court ruled that the district court had improperly limited “boot selection flag” to the preferred embodiment and construed “boot selection flag” to mean one or more bits of data or information indicating which boot cycle has been selected.
As to “automation boot sequence data,” the district court had also held that this feature was limited to what was described in the preferred embodiment, i.e., a particular value assigned to a system ID byte. The Federal Circuit found that “automation boot sequence data” was not described in the specification, and thus, the specification did not support the district court’s construction. The Federal Circuit instead found that “automation boot sequence data” referred to one or more bits of data in a boot-selection flag that indicates the computer should boot in automation mode.
As to the claim term “automation code,” the Federal Circuit agreed that the district court had properly resorted to the specification to construe this feature. The Federal Circuit found that an analysis of “automation code” as individual words failed to provide a clear meaning, and, therefore, resorting to the specification was necessary.
Concerning the phrase “means of booting,” the district court had construed this feature as a means-plus-function limitation. Altiris argued on appeal that this was not a means-plus-function limitation because claim 8 also included language referring to first and second sets of commands as the corresponding structure in the form of software. The Federal Circuit agreed that this was a meansplus- function limitation, but, when reviewing the specification, found that the district court had improperly limited the range of structures that correspond to the claimed “means of booting.”
As to the phrase “means for connecting,” the Federal Circuit disagreed with the district court that this limitation excluded network interface cards with bootROMs.