Federal Circuit Defines Local Storage in the Context of Networks to Be Limited to Storage at a Computer

In Mangosoft, Inc. v. Oracle Corp., 525 F3d 1327; 86 USPQ2d 1939 (Fed. Cir. May 14, 2008), Mangosoft, Inc. and Mangsoft Corporation (collectively, “Mangosoft”) appeal from the District Court’s summary judgment order holding that Oracle Corporation (“Oracle”) did not infringe Mangosoft’s U.S. Patent No. 6,148,377 (“the ‘377 patent”). The Federal Court affirmed this holding.

The ‘377 patent relates to “computer networking systems and methods that provide shared memory systems and services,” ‘377 patent col.1 II.4-6.  It creates a decentralized storage system that pools together and shares the storage capacities of individual computers (or nodes) on the network to form a “virtual memory space.” See id. col.2 II.21-28. In 2002, Mangosoft filed suit against Oracle, accusing Oracle’s Real Applications Clusters (“RAC”) software of infringing upon some 38 claims of the ‘377 patent and a related patent.

Upon a Markman hearing in 2004, the District Court distinguished “local” memory devices from “shared,” “networked,” or “remote” memory devices, and rejected Mangosoft’s request to construe “local” to “simply requir[e] a computer memory device that is somehow ‘linked’ to a computer (whether directly or indirectly).” Mangosoft, Inc. v. Oracle Corp., No. 02-CV-545, slip op. at 18-20 (D.N.H. Sept. 21, 2004). Based on this order, Mangosoft amended its list of asserted claims to include only three claims on the ‘377 patent. The District Court concluded that, as a matter of law, Oracle did not infringe any of the asserted claims, and in so holding, the District Court agreed with Oracle that “the memory space shared in RAC clusters does not span local persistent memory devices.” Summary Judgment Opinion at 8, 14-15.

The issue on appeal turns on what it means for a storage device to be “local” to a particular computer or node in a computer network. Mangosoft claimed that in construing the term “local,” the District Court improperly relied on a technical dictionary definition and incorrectly required that the connection be “direct” and “unique.” However, the Federal Court accepted Oracle’s claim that the District Court’s construction of “local” was supported by claim language, specification, prosecution history, and reliable extrinsic evidence.

First, the District Court’s construction of the term “local” was consistent with the language of claim 1, whereas Mangosoft’s construction gave it too much of an expansive meaning, unsupported by the intrinsic record. Further, Mangosoft’s proposed construction of a “local” memory device to mean one that “can be contributed to the shared addressable memory space by a particular node” rendered the word “local” superfluous as the language of claim 1 independent of the word “local” already required a connection of some sort between a computer and a hard disk. The District Court’s construction, on the other hand, gave “local” its ordinary meaning.

Second, the ‘377 patent’s specification disclosed that an “object of the invention is to provide computer network systems that… dynamically exploit[] distributed resources,” col.2 II.3-6 (emphasis added), in contrast to centralized storage, and several lines of the specification characterized local persistent memory devices as being unique to individual nodes on the network. Furthermore, the specification’s figures and descriptions consistently represented “local” persistent memory devices as being directly attached to individual computers, which specifically contrasted local devices with “network memory devices.”

Third, the prosecution history supported the District Court’s construction. Mangosoft contended that based on cancellations and amendments that it had made to the patent application, the ‘377 patent did not incorporate the limitation that local devices “each [be] coupled to a respective one of said plural computers.” However, Mangosoft had incorporated the term “local” in claim 2 of the original application and had represented to the examiner that in cancelling claim 2, it had generally incorporated those cancelled terms into claim 1. The doctrine of prosecution disclaimer… preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003), so Mangosoft could not argue that the subject matter incorporated from the cancelled claim 2 of the original application should be ignored.

Fourth, the District Court’s construction was also consistent with the extrinsic evidence of the technical dictionary definition offered by Oracle. Reference to dictionaries is not prohibited as long as the ultimate construction given to the claims in question is grounded in the intrinsic evidence and not based on definitions considered in the abstract. See Phillips v. AWH Corp., 415 F.3d 1303 at 1318 (Fed. Cir. 2005). The District Court’s use of the technical definition was simply a starting point, and its claim construction was fully consistent with and supported by the intrinsic record.

Based on the claim language, specification, prosecution history, and reliable extrinsic evidence of the ‘377 patent application and the term “local,” the District Court correctly construed the claim term. The Federal Circuit, thus, affirmed the grant of Oracle’s motion for summary judgment of non-infringement.

Significance to Patent Applicants

Mangosoft presents a reminder to patent applicants that, during the drafting of the application, the specification needs to provide evidence of broader interpretations than might otherwise be afforded a claim.  Such additional examples help to ensure that drawings and statements about objects of the invention are not used to unduly limit a claim feature.  However, as noted below in Helmsderfer v. Bobrick Washroom Equipment, Inc., No. 2008-1027 (Fed. Cir. June 4, 2008), such additional examples become more difficult to describe generically, thereby leading to further complications if the claim language is not chosen carefully.

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