Case 8:13-cv-01537-ODW-JEM Document 192 Filed 10/08/15 Page 1 of 11 Page ID #:6431
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`United States District Court
`Central District of California
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`FARSTONE TECHNOLOGY, INC.,
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`Plaintiff,
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`v.
`APPLE INC.,
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`Defendant.
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`Case № 8:13-cv-1537-ODW(JEMx)
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`SUPPLEMENTAL CLAIM-
`CONSTRUCTION ORDER
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`I.
`INTRODUCTION
`This patent case involves computer backup and recovery technology. Plaintiff
`Farstone Technology, Inc. (“Farstone”) asserts U.S. Patent No. 7,120,835 (“the ’835
`Patent”), entitled “Computer Equipment Having a Prompt Access Function and
`Related Method,” against Defendant Apple Inc. (“Apple”). On December 10, 2014,
`the Court held a claim-construction hearing on nine disputed terms of which Apple
`argued that eight were indefinite under 35 U.S.C. § 112.1 The Court issued a Claim
`Construction Order on February 27, 2015 in large part disagreeing with Apple and
`finding none of the terms indefinite. Subsequently, the U.S. Court of Appeals for the
`Federal Circuit issued Williamson v. Citrix Online LLC, 792 F.3d 1339 (Fed. Cir.
`2015), which abrogated certain prior holdings regarding the presumption against
`applying 35 U.S.C. § 112, ¶ 6 to claim language that does not use the word “means.”
`
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`1 Because the patent in suit predates the effective date of the America Invents Act (AIA), all statutory
`citations herein are pre-AIA.
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`Case 8:13-cv-01537-ODW-JEM Document 192 Filed 10/08/15 Page 2 of 11 Page ID #:6432
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`In light of Federal Circuit’s opinion, the Court requested supplemental briefing from
`the parties regarding two terms: “backup/recovery module” (claim 1) and “processing
`system” (claim 9). For the reasons discussed below, the Court finds the terms
`indefinite under 35 U.S.C. § 112, ¶ 2.
`II. FACTUAL BACKGROUND
`Farstone is the owner of the ’835 Patent. (Compl. ¶ 8.) Farstone alleges that
`Apple’s Time Machine features in Apple Mac computers and MAC OS X operating
`systems infringe claims 1–7 and 9–13 of the ’835 Patent. (Id. ¶ 10.) The asserted
`claims are directed to technology that creates a backup of the data stored in or relating
`to a hardware resource, such as a hard disk, and enables a user to later restore that
`data.
` The alleged advantages of the patented invention over conventional
`backup/recovery software at the time are the ability to support unlimited recovery
`points and prompt access and economical use of system resources. Accordingly,
`representative claim 1 recites:
`
` A
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` computer equipment having a prompt access function, said computer
`equipment comprising:
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` a
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` processing system having at least one hardware resource with a
`backup/recovery module, said backup/recovery module creating at least
`one recovery unit to hold backup data; and
`
` a
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` displaying system for displaying backed up data of said processing
`system, said backed up data of said processing system corresponding to
`each of said at least one recovery unit, said displaying system having a
`selecting means, said selecting means selecting a status corresponding to
`said processing system at the time of creation of each of said at least one
`recovery unit, said displaying system displaying said selected status;
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`least one recovery unit respectively reflects a
`wherein said at
`corresponding status of said at least one hardware resource at the time of
`creation of each of said at least one recovery unit, said at least one
`hardware resource can be restored to status at the time of creation of each
`of said at least one recovery unit.
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`Case 8:13-cv-01537-ODW-JEM Document 192 Filed 10/08/15 Page 3 of 11 Page ID #:6433
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`’835 Patent at 8:62–9:14. A schematic block diagram of a preferred embodiment of a
`computer equipment is presented below:
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`’835 Patent at Fig. 1. The computer equipment has displaying system 20 and
`processing system 10.
`On December 10, 2014, the Court held a claim-construction hearing, which
`included testimony from the parties’ expert witnesses. After considering the
`arguments made by the parties at the hearing and in the parties’ claim construction
`briefing (ECF Nos. 43, 47, 48), the Court issued a Claim Construction Order on
`February 27, 2015. (ECF No. 69.) The Court found that none of the terms were
`indefinite under 35 U.S.C. § 112. (Id.)
`On July 2, 2015, Apple requested leave to move for summary judgment as to
`indefiniteness of all claims at issue in light of the Federal Circuit’s June 16, 2015
`decision in Williamson. (ECF No. 139.) Rather than granting Apple leave to file a
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`Case 8:13-cv-01537-ODW-JEM Document 192 Filed 10/08/15 Page 4 of 11 Page ID #:6434
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`motion for summary judgment, the Court directed the parties to file additional claim
`construction briefs for two terms: “backup/recovery module for creating at least one
`recovery unit” (claim 1) and “processing system creating at least one recovery unit”
`(claim 9). (ECF No. 144.) The parties filed simultaneous supplemental briefs on
`August 28, 2015 (ECF Nos. 175, 176) and simultaneous responses on September 18,
`2015. (ECF Nos. 182, 183). The supplemental claim construction issues as briefed
`by the parties are before the Court for consideration.
`III. LEGAL STANDARD
`Title 35 U.S.C. § 112 provides that “[t]he specification shall conclude with one
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`or more claims particularly pointing out and distinctly claiming the subject matter
`which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. When a claim is
`written in means-plus-function form, “the written description must clearly link or
`associate structure to the claimed function” to satisfy the definiteness requirement of
`§ 112 ¶ 2. Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376 (Fed. Cir.
`2010). Title 35 U.S.C. § 112, ¶ 62 specifically provides: “An element in a claim for a
`combination may be expressed as a means or step for performing a specified function
`without the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts described in
`the specification and equivalents thereof.”
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`It is well settled that [a] claim limitation that actually uses the word
`“means” invokes a rebuttable presumption that [35 U.S.C] § 112, ¶ 6
`applies. By contrast, a claim term that does not use “means” will trigger
`the rebuttable presumption that § 112, ¶ 6 does not apply. The term
`“means” is central to the analysis.
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`2 The Leahy–Smith America Invents Act (“AIA”) modified former 35 U.S.C. § 112, ¶ 6 such that the
`statute can now be found at 35 U.S.C. § 112(f). The pre-AIA version applies to the patent-in-suit,
`but regardless the amendment has no effect on the analysis.
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`Case 8:13-cv-01537-ODW-JEM Document 192 Filed 10/08/15 Page 5 of 11 Page ID #:6435
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`Apex Inc. v. Raritan Comput., Inc., 325 F.3d 1364, 1371–72 (Fed. Cir. 2003) (citations
`and internal quotation marks omitted); Lighting World, Inc. v. Birchwood Lighting,
`Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (“[A] claim term that does not use ‘means’
`will trigger [a] rebuttable presumption that [35 U.S.C.] § 112 ¶ 6 does not apply.”).
`Although Lighting World characterized this presumption against means-plus-
`function treatment as “a strong one,” the Federal Circuit recently abrogated Lighting
`World’s holding in this regard. See Williamson, 792 F.3d at 1349. Instead, “[t]he
`standard is whether the words of the claim are understood by persons of ordinary skill
`in the art to have a sufficiently definite meaning as the name for structure. When a
`claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para.
`6 will apply if the challenger demonstrates that the claim term fails to ‘recite
`sufficiently definite structure’ or else recites ‘function without reciting sufficient
`structure for performing that function.’” Id. (citations omitted). Thus, the
`presumption still stands, but it no longer is a “strong one.” See id.
`Once a court finds that a term meets this threshold determination articulated in
`Williamson and is therefore subject to treatment under § 112 ¶ 6, the court construes
`such terms according to a two-step process. The court must first identify the claimed
`function. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012). Then,
`the court must determine what structure if any, disclosed in the specification
`corresponds to the claimed function. Id. at 1311–12. If the patentee fails to disclose
`adequate corresponding structure, the claim is indefinite. Id.
`IV. DISCUSSION
`“backup/recovery module”
`1.
`Functional Claiming
`The Court first turns to the disputed term in claim 1: “backup/recovery module
`creating at least one recovery unit to hold backup data.” Apple argues this term is
`fundamentally the same as the term “distributed learning control module” analyzed in
`Williamson, and therefore governed by § 112, ¶ 6. (ECF No. 176 at 3–4.) In
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`A.
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`Case 8:13-cv-01537-ODW-JEM Document 192 Filed 10/08/15 Page 6 of 11 Page ID #:6436
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`Williamson, the Federal Circuit held that the term “module” is a “well-known nonce
`word that can operate as a substitute for ‘means’ in the context of § 112, para. 6.” Id.
`at 1350. It further held that in the context of the patent-in-suit, “module” did not
`provide any structure because “it sets forth the same black box recitation of structure
`for providing the same specified function as if the term ‘means’ had been used.” Id.
`Farstone argues that Apple has not overcome the presumption against means-
`plus-function claiming because one of ordinary skill in the art would understand that
`“backup/recovery module” refers to sufficiently definite structure. (ECF No. 175 at
`5–6.) Farstone further contends that not all terms containing “modules” are
`automatically subject to § 112, ¶ 6. (Id. at 6–7 (citing Genband USA LLC v.
`Metaswitch Networks Ltd., No. 2:14-CV-33-JRG-RSP, 2015 WL 4722185, at *13
`(E.D. Tex. Aug. 7, 2015).)
`The Court agrees with Apple, and finds the analysis in Williamson controlling.
`As an initial matter, the claim limitation “backup/recovery module creating at least
`one recovery unit to hold backup data” is in a format consistent with traditional
`means-plus-function claim limitations. The limitation replaces “means” with
`“module” and recites the function performed by the “backup/recovery module.”
`Williamson, 792 F.3d at 1350. Furthermore, the prefix “backup/recovery” does not
`impart definite structure into the term “module.” Although the specification describes
`the “backup/recovery module” as within the hardware resource of the processing
`system, the specification fails to impart any structural significance to the term.
`In the context of claim 1, “backup/recovery module” is described as being part
`of the hardware resource of the processing system. However, the claim does not
`describe how the “backup/recovery module” creates a recovery unit to hold backup
`data in a way that informs the structural character of the limitation or otherwise impart
`structure to the “backup/recovery module” as recited in the claim. Nothing in the
`intrinsic evidence leads the Court to construe “backup/recovery module” as the name
`of a sufficiently definite structure as to take the claim limitation out of the scope of
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`Case 8:13-cv-01537-ODW-JEM Document 192 Filed 10/08/15 Page 7 of 11 Page ID #:6437
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`§ 112, ¶ 6.
`Furthermore, regarding the declaration by Farstone’s expert, Dr. Kaliski, that a
`person of ordinary skill in the art would understand the structure of “backup/recovery
`module,” Williamson reiterated that “the fact that one of skill in the art could program
`a computer to perform the recited functions cannot create structure where none
`otherwise is disclosed.” Id. at 1351. Dr. Kaliski’s declaration, like the claim language
`and specification, fails to describe how the backup/recovery module creates recovery
`units as part of the processing system. Instead, Dr. Kaliski tries to apply the structural
`elements of the processing system to the backup/recovery module. Therefore, the
`Court finds that this limitation is subject to the provisions of § 112, ¶ 6.
`2.
`Corresponding Structure
`The Court must next determine whether the specification discloses sufficient
`structure that corresponds to the claimed function. See Noah, 675 F.3d at 1311–12.
`The parties do not dispute that the function associated with “backup/recovery module”
`is to create at least one recovery unit. Thus, the Court must determine whether
`adequate structure corresponding to this function is disclosed in the specification.
`“[S]tructure disclosed in the specification is ‘corresponding’ structure only if
`the specification or prosecution history clearly links or associates that structure to the
`function recited in the claim.” Med. Instrumentation & Diagnostics Corp. v. Elekta
`AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003) (internal quotations omitted). One who
`seeks to take advantage of § 112, ¶ 6 must therefore disclose the structure that carries
`out each function. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 (Fed.
`Cir. 2007). “‘If the specification is not clear as to the structure that the patentee
`intends to correspond to the claimed function, then the patentee has not paid the price
`but is rather attempting to claim in functional terms unbounded by any reference to
`structure in the specification.’” Id. (quoting Elekta AB, 344 F.3d at 1211). Therefore,
`“‘[i]f an applicant fails to set forth an adequate structure, the applicant has in effect
`failed to particularly point out and distinctly claim the invention as required by the
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`Case 8:13-cv-01537-ODW-JEM Document 192 Filed 10/08/15 Page 8 of 11 Page ID #:6438
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`second paragraph of § 112.’” Id. (quoting In re Donaldson Co., 16 F.3d 1189, 1195
`(Fed. Cir. 1994) (en banc)).
`The written description of the ’835 Patent supports that the backup/recovery
`module must be implemented in a special purpose computer and cannot be
`implemented in a general purpose computer. A special purpose computer is a general
`purpose computer programmed
`to perform particular functions pursuant
`to
`instructions from program software. Williamson, 792 F.3d at 1352. Here, a special
`purpose computer is required because the backup/recovery module has specialized
`functions described in the specification.3 See, e.g., ’835 Patent at 5:11–18.
`Consequently, when a claim limitation subject to § 112, ¶ 6 must be implemented in a
`special purpose computer, the Federal Circuit has consistently held that the structure
`disclosed in the specification must be more than a general purpose computer or
`microprocessor. E.g., Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d
`1328, 1333 (Fed. Cir. 2008) (citing WMS Gaming, Inc. v. In’l Game Tech., 184 F.3d
`1339 (Fed. Cir. 1999)). Specifically, the specification must disclose an algorithm for
`performing the claimed function. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
`1367 (Fed. Cir. 2008). The algorithm may be expressed as a mathematical formula, in
`prose, or as a flow chart, or in any other manner that provides sufficient structure.
`Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
`1340 (Fed. Cir. 2008)).
`Farstone argues that “backup/recovery module” creates a recovery unit by
`“storing” a collection of file backup data and configuration information reflecting the
`state of a computer hardware resource at a point in time in a storage device, such as a
`hard disk drive, CD-RW, or a tape. (See ECF No. 175 at 7–8 (citing ’835 Patent at
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`3 The specification also describes “conventional” backup/recovery software that creates recovery
`points when describing the prior art. See, e.g., ’835 Patent at 1:14–27. This implies that the backup/
`recovery module of the claimed invention has a software component and that even if
`backup/recovery is normally implemented in a general purpose computer, the invention practices a
`new or specialized function distinct from “conventional” backup/recovery software.
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`7:41–50, 6:26–29, 6:9–15).) Farstone also argues that the function of “storing” has
`previously been found to be one a general purpose computer can execute such that an
`algorithm does not need to be disclosed. (Id. 8 (citing In re Katz Interactive Call
`Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)).) Thus, the function
`of “creating at least one recovery unit to hold backup data,” which involves “storing,”
`does not necessitate a disclosure of an algorithm. (Id.)
`The Court agrees with Apple that “storing” is an oversimplification of the
`backup/recovery module’s function. (ECF No. 182 at 5.) Creating a recovery unit
`must include steps to collect and process “the data in the recovery unit [to] allow[] the
`user to recover a computer equipment back to a previous state.” (ECF No. 69 at 10.)
`Therefore, the function of creating a recovery unit is more than the basic function of
`“storing” that can be performed by any general purpose computer and requires
`disclosure of an algorithm. EON Corp. IP Holdings LLC v. AT & T Mobility LLC,
`785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer
`lends sufficient structure only to basic functions of a microprocessor. All other
`computer-implemented functions require disclosure of an algorithm.”)
`Alternatively, Farstone argues that an algorithm is sufficiently disclosed. (ECF
`No. 175 at 7–9.) Farstone mistakenly associates the definition of recovery unit as the
`algorithm for creating a recovery unit. Farstone argues that the Court’s construction
`of “recovery unit” and “status,” combined with the claim language and the
`specification implies or gives guidance as to an algorithm. (Id. at 8.) In fact, the
`specification provides no algorithm, but rather repeats the function of backup/recovery
`module. The specification describes a “recovery unit” as holding a collection of file
`backup data and configuration information that reflects data that was in a hardware
`resource of the processing system at the time the recovery unit was created. ’835
`Patent at 4:44–50, 6:64–67, 9:9–14. These descriptions do not provide how the
`recovery unit is actually created by the backup/recover module. See Noah Sys., 675
`F.3d at 1312 (“Simply disclosing software, however, without providing some detail
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`about the means to accomplish the function, is not enough.” (internal quotations and
`citations omitted)).
`Lastly, although Farstone argues that a person of ordinary skill in the art would
`understand how to create a recovery unit based upon this description, the Federal
`Circuit has clearly held that testimony from a person of ordinary skill in the art cannot
`supplant the total absence of structure from the specification. See id. at 1312–13; see
`also Williamson, 792 F.3d at 1351; Eon Corp., 785 F.3d at 624 (“Where the
`specification discloses no algorithm, the skilled artisan’s knowledge is irrelevant.”).
`Therefore, because there is no algorithm disclosed in the ’835 Patent for creating a
`recovery unit, there is no corresponding structure and “backup/recovery module” is
`indefinite under § 112.
`B.
`“processing system”
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`The Court previously construed “processing system” as “a portion of a
`computer equipment having at least one hardware resource with backup/recovery
`module and creating at least one recovery unit.” (ECF No. 69 at 20–22.) Consistent
`with the specification and the prosecution history, the construction of processing
`system is dependent on “backup/recovery module.” (See id.) Having found
`“backup/recovery module” indefinite, the Court need not determine whether
`“processing system” is subject to § 112, ¶ 6.
`A patent must “conclude with one or more claims particularly pointing out and
`distinctly claiming the subject matter which the applicant regards as [the] invention.”
`35 U.S.C. § 112, ¶ 2 (2006). A claim fails to satisfy this statutory requirement and is
`thus invalid for indefiniteness if its language, when read in light of the specification
`and the prosecution history, “fail[s] to inform, with reasonable certainty, those skilled
`in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S.Ct. 2120, 2124 (2014). Thus, because “backup/recovery module” is indefinite,
`“processing system” also lacks reasonable certainty and is indefinite under § 112, ¶ 2.
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`V. CONCLUSION
`For the foregoing reasons, the Court finds claims 1–14 invalid for indefiniteness
`under 35 U.S.C. § 112, ¶ 2. Intellectual Prop. Dev., Inc. v. UA–Columbia Cablevision
`of Westchester, Inc., 336 F.3d 1308, 1318 (Fed. Cir. 2003) (“A determination that a
`patent claim is invalid for failure to meet the definiteness requirement of 35 U.S.C. §
`112, paragraph 2, is a legal conclusion.” (internal quotation omitted)). Because all the
`asserted claims have been found invalid, the parties shall file a stipulated proposed
`judgment by October 19, 2015.
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`IT IS SO ORDERED.
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`October 8, 2015
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` ____________________________________
` OTIS D. WRIGHT, II
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` UNITED STATES DISTRICT JUDGE
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