Use of the Term “Including” in Description of Disputed Term Cannot Override Remainder of the Intrinsic Record

In Sequoia Technology, LLC v. Dell, Inc., No. 2021-2263 (Fed. Cir. April 12, 2023), the Federal Circuit reversed a District of Delaware finding certain claims of U.S. Patent No. 6,718,436 ineligible under 35 U.S.C. § 101 while affirming the district court’s finding of non-infringement.

Sequoia sued several defendants for infringement of the ’436 patent, which is directed to “a method for managing a logical volume for minimizing a size of metadata and supporting dynamic online resizing” and “a computer-readable recording medium storing a program or data structure for embodying the method.”  During claim construction, the court was tasked with construing several phrases, including “computer-readable recording medium,” which the court construed to include transitory media. In light of the district court’s claim construction, the parties stipulated that claims 8-10 are ineligible under 35 U.S.C. § 101.

On appeal, the Federal Circuit found the district court erred in its construction of “computer-readable recording medium.” The Court explained that the language of the claims and the specification demonstrate that the claims are not directed to a transitory media, but rather, only to a non-transient storage medium.  In doing so, the court rejected the appellee’s reliance on the use of the term “including” to argue that the description in the specification is open-ended and could include transitory media. The Court explained that

the use of a term denoting a non-exhaustive list does not override the requirement that claims be construed in the context of the entire patent. Finally, the Court found that the district court erred in relying on extrinsic expert evidence that was inconsistent with the intrinsic evidence. Thus, the Court reversed the district court’s judgment that claims 8-10 are ineligible under 35 U.S.C. § 101.