The patent statute requires that, to be patentable, the subject material of an invention should be at the least one in all a course of, machine, article of manufacture, or composition of matter.  It is tough to seek out examples of issues that don’t fall into these broad classes, although indicators in movement and knowledge at relaxation are two.  The former has been well-litigated at this level and it’s accepted that varied types of computer-readable medium (CRM) claims should recite that the medium is non-transitory.  Consider the 2007 Federal Circuit resolution of In re Nuijten as the usual bearer on this regard.

Nonetheless, disputes over the interpretation of CRM language do pop up on occasion, as was the state of affairs on this case.

Sequoia asserted U.S. Patent No. 6,718,436 towards Dell and a number of other different corporations (most notably, Red Hat, which is a subsidiary of IBM) within the District of Delaware.  The events butted heads over declare development points in district courtroom with Sequoia developing on the shedding finish.  Thus, they stipulated non-infringement beneath this development.  The District Court additionally discovered that claims 8-10 have been ineligible beneath § 101 because of development of the time period “computer-readable recording medium” to incorporate transitory media.  Sequoia appealed.

Claim 8 of the ‘436 patent reads:

8.    A pc-readable recording medium storing directions for executing a technique for managing a logical quantity in an effort to assist dynamic on-line resizing and minimizing a dimension of metadata, stated technique comprising the steps of:
    a) creating the logical quantity by gathering disk partitions in response to a request for creating the logical quantity in a bodily cupboard space;
    b) producing the metadata together with data of the logical quantity and the disk partitions forming the logical quantity and storing it the metadata to the disk partitions forming the logical quantity;
    c) dynamically resizing the logical quantity in response to a request for resizing, and modifying the metadata on the disk partitions forming the logical quantity; and
    d) calculating and returning a bodily tackle equivalent to a logical tackle of the logical quantity through the use of mapping data of the metadata containing data of the bodily tackle equivalent to the logical tackle;
    whereby the metadata consists of,
        a disk partition desk containing data of a disk partition during which the metadata is saved;
        a logical quantity desk for sustaining the knowledge of the logical quantity by storing duplicated data of the logical quantity onto all disk partitions of the logical quantity;
        an extent allocation desk for indicating whether or not every extent within the disk partition is used or not used; and
        a mapping desk for sustaining a mapping data for a bodily tackle area equivalent to a logical tackle area which is a steady tackle area equal in dimension of cupboard space to an entirety of stated logical quantity.

As famous, the primary a part of the § 101 dispute was over the interpretation of the time period “computer-readable recording medium.”  The Federal Circuit instantly famous that this time period explicitly recites a “recording medium storing instructions” and that “a person of ordinary skill would not understand transitory signals, such as carrier waves, to record or store instructions in memory systems.”  This understanding is supported by different declare parts, akin to “creating the logical volume in a physical storage space” and “storing [sic] the metadata to the disk partitions forming the logical volume.”  All of this establishes that the computer-readable recording medium of declare 8 doesn’t embody non-persistent or transient storage.

The Court discovered additional assist for its place within the specification.  Particularly, the specification gives a number of examples of hardware-only computer-readable media together with RAM, CDROM, and varied sorts of disk drives.

One of the defendants, Red Hat, argued that the specification doesn’t exclude transitory media.  But the Court pushed again, noting that the declare itself recites a “storage medium” and that Red Hat’s proposed interpretation would contradict the teachings of the specification and render the invention inoperable.

The Court additionally discovered that Red Hat’s skilled’s testimony was “inconsistent with the intrinsic evidence and also based on different express definitions of CRM in patent specifications directed to different inventions.”  Notably, the skilled appeared to 34 different patent purposes to assist outline the declare time period.  The Court was not amused:

This proof merely reveals that in thirty-four different specs, the inventors selected to be their very own lexicographers and expressly outlined CRM or like phrases to incorporate transitory media.  The inventors right here selected in any other case.  That different inventors selected to be their very own lexicographers and outline CRM to incorporate transitory indicators doesn’t reveal what CRM means within the context of the ‘436 patent.  Nor does it set up the plain and unusual which means of the declare time period “computer-readable recording medium for storing.”

In an identical method, Red Hat additionally relied on the Court’s resolution in Mentor Graphics Corp. v. EVE-USA, Inc., the place the Court discovered {that a} claimed “computer readable medium” included transitory indicators.  But this conclusion was primarily based on that specification expressly together with service waves in its definition of the time period.  Accordingly, the Court discovered that how a time period is outlined different patents and purposes can’t be used to contradict how it’s outlined within the specification at hand.  Specifically, the Court wrote “[s]imply put, extrinsic 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.”  Thus, the Court discounted the testimony of Red Hat’s skilled and the relevance of those extrinsic paperwork.

Finally, Red Hat pointed to the USPTO’s 2010 memo on computer-readable medium claims, alleging that it establishes that the time period in query must be interpreted broadly sufficient to incorporate transitory media.  But, because the Court identified, this memo merely states that the broadest affordable interpretation of a declare throughout prosecution could lead to claims being interpreted to cowl transitory media.  However, this doesn’t present the plain and unusual which means of the time period for use in litigation, nor does it imply that there’s a presumption that declare 8 reads on transitory media.

Given all of this, the Court concluded that the District Court erred, and reversed the discovering of invalidity beneath § 101.

A follow notice from all of that is that it’s best to explicitly recite in your CRM claims language that clearly establishes that the CRM is non-transitory.  This doesn’t must be the precise phrases “non-transitory” however nevertheless your language is outlined within the specification ought to make that time clear and unambiguous.

Unlike the claimed invention, this victory for Sequoia turned out to be transitory — it misplaced on different declare development points and the Court in the end affirmed the dedication of non-infringement.

Sequoia Technology LLC v. Dell Inc. (Fed. Cir. 2023)
Panel: Circuit Judges Lourie, Dyk, and Stoll
Opinion by Circuit Judge Stoll

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