IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`CIVIL ACTION No. 6:08cv144
`
`§§§§§§§§§§
`
`REALTIME DATA, LLC D/B/A IXO,
`
`Plaintiff,
`
`v.
`
`PACKETEER, INC., et al.,
`
`Defendants.
`
`REPORT AND RECOMMENDATION OF
`UNITED STATES MAGISTRATE JUDGE
`
`Before the Court is Defendants Blue Coat Systems, Inc., (“Blue Coat”); Packeteer,
`
`Inc. (“Packeteer”); 7-Eleven, Inc. (“7-Eleven”); ABM Industries, Inc. (“ABM”); ABM Janitorial
`
`Services–South Central, Inc. (“ABMJ”); Build-A-Bear Workshop, Inc. (“BAB”); Citrix Systems,
`
`Inc. (“Citrix”); F5 Networks, Inc. (“F5”); Averitt Express, Inc. (“Averitt”); DHL Express (USA),
`
`Inc. (“DHL”); Expand Networks, Inc. (“Expand”); Interstate Battery System of America,
`
`Inc. (“IBSA”); and O’Reilly Automotive, Inc.’s (“O’Reilly”) (collectively, “Defendants”)
`
`Joint Defendants’ Motion for Partial Summary Judgment of Invalidity of U.S. Patent Nos. 6,601,104,
`
`6,604,158, and 7,321,937 for Indefiniteness (“Motion”) (Doc. No. 247). Plaintiff Realtime Data,
`
`LLC d/b/a IXO’s (“Realtime”) filed an Opposition to Joint Defendants’ Motion for Partial Summary
`
`Judgment of Invalidity of U.S. Patent Nos. 6,601,104, 6,604,158, and 7,321,937 for Indefiniteness
`
`(“Response.”). Defendants also filed a Reply (“Reply”) (Doc. No. 272). The Court held a hearing
`
`on the Motion on April 9, 2009. (Doc. No. 283). For the reasons stated herein, the Court
`
`RECOMMENDS that Defendants’ Motion be GRANTED-IN-PART and DENIED-IN-PART.
`
`Comcast - Exhibit 1024, page 1
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`

`

`BACKGROUND
`
`On April 18, 2008, Plaintiff filed the instant action against Defendants (Doc. No. 1), alleging
`
`infringement of the nine asserted patents: 1) U.S. Patent No. 6,601,104 (“the ‘104 patent”);
`1
`
`2) U.S. Patent No. 6,604, 158 (“the ‘158 patent”); 3) U.S. Patent No. 7,321,937 (“the ‘937 patent”);
`
`4) U.S. Patent No. 6,624,761 (“the ‘761 patent”); 5) U.S. Patent No. 7,161,506 (“the ‘506 patent”);
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`6) U.S. Patent No. 7,378,992 (“the ‘992 patent”); 7) U.S. Patent No. 7,352,300 (“the ‘300 patent”);
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`8) U.S. Patent No. 6,748,457 (“the ‘457 patent”); and 9) U.S. Patent No. 7,376,772
`
`(“the ‘772 patent”).
`
`The asserted patents can be viewed as three patent families: 1) the data acceleration patent
`
`family; 2) the data compression patent family; and 3) the hardware patent family. The data
`
`acceleration patent family is comprised of the ‘104 patent, the ‘158 patent, and the ‘937 patent.
`
`This patent family teaches systems and methods for providing accelerated data storage and
`
`transmission. The data compression patent family is comprised of the ‘761 patent, the ‘506 patent,
`
`the ‘992 patent, and the ‘300 patent. This patent family teaches methods for performing data
`
`compression. The hardware patent family is comprised of the ‘457 patent and the ‘772 patent.
`
`This patent family teaches apparatus designs associated with data compression and accelerated data
`
`storage and retrieval. Plaintiff asserts over ninety claims of the nine asserted patents. See NOTICE
`
`OF FILING OF JOINT CLAIM CONSTRUCTION CHART, EXH. A (“Claim Chart”) (Doc. No. 274).
`
`Representative claims are provided below with the terms Defendants argue are indefinite set
`
`forth in bold. Claim 1 of the ‘104 patent provides:
`
`1 C
`
`Defendant Blue Coat Systems, Inc. (“Blue Coat”) was added as a Defendant when Plaintiff filed its First Amended
`omplaint. (Doc. No. 58).
`
`2
`
`Comcast - Exhibit 1024, page 2
`
`

`

`1. A program storage device readable by machine, tangibly
`embodying a program of instructions executable by the machine to
`perform method steps for providing accelerated data storage and
`retrieval, said method steps comprising:
``receiving a data stream at an input data transmission rate
`which is greater than a data storage rate of a target
`storage device;
`compressing the data stream at a compression rate that
`increases the effective data storage rate of the data
`storage device; and
`storing the compressed data stream in the target storage
`device.
`
`‘104 patent at 18:41. Claim 17 of the ‘937 patent provides:
`
`17. A method comprising:
`receiving a data stream over an input having a first bandwidth;
`compressing, in at least real-time, said received data stream
`using a plurality of encoders to provide a compressed
`data stream;
`transmitting said compressed data stream over an output
`having a second bandwidth, wherein said first
`bandwidth is substantially greater than said second
`bandwidth and said transmitting said compressed data
`stream effectively increases said second bandwidth;
`and wherein said compressing and said transmitting of said
`compressed data stream over said output occurs faster
`than a
`transmission of said data stream
`in
`uncompressed form over said output.
`
`‘937 patent at 20:9–24. Finally, claim 20, which depends from claim 17 of the ‘937 patent, provides:
`
`20. The method of claim 17, wherein said compressing said received
`data stream comprises compressing said received data stream using
`a plurality of Lempel-Ziv encoders.
`
`‘937 patent at 20:35–38.
`
`Defendants filed the instant Motion on March, 16, 2009, arguing that the asserted claims of
`
`the ‘104, ‘158, and ‘937 patents are invalid as a matter of law because the claims fail to meet the
`
`definiteness requirement of 35 U.S.C. section 112, paragraph 2. MOTION at 1.
`
`3
`
`Comcast - Exhibit 1024, page 3
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`

`

`I.
`
`Summary Judgment
`
`LEGAL STANDARD
`
`Summary judgment is appropriate when the record, as a whole, together with the affidavits,
`
`if any, show that there is no genuine issue as to any material fact, and the moving party is entitled
`
`to judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317,
`
`323–25 (1986). A fact is material if it might affect the outcome of the suit under the governing law.
`
`Merritt-Campbell, Inc. v. RxP Prods., Inc., 164 F.3d 957, 961 (5th Cir. 1999). A “genuine issue”
`
`of material fact exists when a fact requires resolution by the trier of fact and a reasonable jury could
`
`resolve a factual matter in favor of the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
`
`248–49 (1986).
`
`The moving party bears the initial burden of showing absence of a material fact issue, and
`
`doubt is resolved against the moving party. Adickes v. S. H. Kress & Co., 398 U.S. 144, 157 (1970);
`
`U.S. v. Diebold, Inc., 369 U.S. 654, 655 (1962) (the court should draw all reasonable inferences in
`
`favor of the non-moving party). If the moving party “fails to meet this initial burden, the motion
`
`must be denied, regardless of the non-movant’s response.” Little v. Liquid Air Corp., 37 F.3d 1069,
`
`1075 (5th Cir. 1994) (en banc). If the movant meets this burden, Rule 56 requires the opposing party
`
`to go beyond the pleadings and to show by affidavits, depositions, or other admissible evidence that
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`specific facts exist over which there is a genuine issue for trial. EEOC v. Texas Instruments, Inc.,
`
`100 F.3d 1173, 1180 (5th Cir. 1996); Wallace v. Texas Tech. Univ., 80 F.3d 1042, 1046-47
`
`(5th Cir. 1996).
`
`When ruling on a motion for summary judgment, the Court is required to view all justifiable
`
`inferences drawn from the factual record in the light most favorable to the nonmoving party.
`
`4
`
`Comcast - Exhibit 1024, page 4
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`

`

`Matsushita, 475 U.S. at 587; Adickes, 398 U.S. at 158-59; Merritt-Campbell, Inc., 164 F.3d at 961.
`
`However, the Court will not, “in the absence of any proof, assume that the nonmoving party could
`
`or would prove the necessary facts.” McCallum Highlands, Ltd. v. Washington Capital Dus, Inc.,
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`66 F.3d 89, 92 (5th Cir. 1995), as modified, 70 F.3d 26 (5th Cir. 1995). Unless there is sufficient
`
`evidence for a reasonable jury to return a verdict in the opposing party’s favor, there is no genuine
`
`issue for trial, and summary judgment must be granted. Celotex, 477 U.S. at 322-23; Anderson,
`
`477 U.S. at 249-51; Texas Instruments, 100 F.3d at 1179.
`
`II.
`
`Indefiniteness
`
`A claim is invalid as indefinite under 35 U.S.C. section 112, paragraph 2 if it fails to
`
`particularly point out and distinctly claim the subject matter that the applicant regards as the
`
`invention. The party seeking to invalidate a claim as indefinite must show by clear and convincing
`
`evidence that one skilled in the art would not understand the scope of the claim when read in light
`
`of the specification. Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc.,
`
`336 F.3d 1308, 1319 (Fed. Cir. 2003). Further, indefiniteness is an issue of claim construction and
`
`therefore a question of law. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331
`
`(Fed. Cir. 2009). The test for indefiniteness is stringent—a claim is invalid as indefinite if it is not
`
`“amenable to construction.” Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375
`
`(Fed. Cir. 2001). The definiteness requirement of section 112, paragraph 2 “focuses on whether the
`
`claims, as interpreted in view of the written description, adequately perform their function of
`
`notifying the public of the [scope of the] patentee’s right to exclude.” S3 Inc. v. nVIDIA Corp., 259
`
`F.3d 1364, 1371-72 (Fed. Cir. 2001) (citing Solomon, 216 F.3d at 1379). Section 112, paragraph two
`
`also requires “that the claims be amenable to construction, however difficult that task may be.”
`
`5
`
`Comcast - Exhibit 1024, page 5
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`

`

`Exxon Research, 265 F.3d at 1375. Because a claim is presumed valid, a claim is indefinite only if
`
`the “claim is insolubly ambiguous, and no narrowing construction can properly be adopted.” Id.; see
`
`also Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1338-39 (Fed. Cir. 2003).
`
` DISCUSSION
`
`I.
`
`“compression rate”2
`
`Plaintiff’s Proposed Construction
`amount of input data a compressor can
`compress per unit of time and amount of
`compressed data a compressor can output per
`unit of time
`
`Defendants’ Proposed Construction
`indefinite OR rate at which data is output
`from the compressor
`
`Defendants contend that the specification distinguishes between the term “compression rate”
`
`and “input data rate.” REPLY at 3. Defendants further contend that the term “compression ratio” is
`
`not “subsumed” in “compression rate” because Plaintiff gave up that subject matter during
`
`prosecution. Id. at 4. Defendants argue that the only way to increase the effective data storage rate,
`
`as disclosed in Claim 1 of the ‘104 patent is by compressing the data at a compression ratio that is
`
`greater than 1, and therefore claims reciting “compression rate” are indefinite. Id.
`
`Plaintiff contends that despite Defendants’ arguments that this term is indefinite, Defendants
`
`nevertheless propose a construction showing that the term is not indefinite. RESPONSE. at 3. Plaintiff
`
`argues that the compression rate encompasses both the input and output data rates. Id. at 4. Plaintiff
`
`also argues that the specification illustrates a proper construction for this term and even Defendants’
`
`expert has used the term in his own articles and patents. Id. at 5–6. Finally, Plaintiff contends that
`
`claims 1 and 2 of the ‘104 and ‘158 patents use the term consistently. Id. at 8.
`
`2 ‘
`
`The term “compression rate” is contained in claims 1, 2, 13, and 25 of the ‘104 patent and claims 1 and 9 of the
`158 patent.
`
`6
`
`Comcast - Exhibit 1024, page 6
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`

`

`Claim 1 of the ‘104 patent discloses:
`
`1. A program storage device readable by machine, tangibly
`embodying a program of instructions executable by the machine to
`perform method steps for providing accelerated data storage and
`retrieval, said method steps comprising:
`receiving a data stream at an input data transmission rate
`which is greater than a data storage rate of a target
`storage device;
`compressing the data stream at a compression rate that
`increases the effective data storage rate of the data
`storage device; and
`storing the compressed data stream in the target storage
`device.
`
`‘104 patent at 18:41–52 (claim 1). Claim 2 of the ‘104 patent depends from claim 1 and discloses:
`
`2. The program storage device of claim 1, wherein the compression
`rate is at least equal to the ratio of the input data transmission rate to
`the data storage rate so as to provide continuous storage of the input
`data stream at the input data transmission rate.
`
`‘104 patent at 18:54–58 (claim 2). Claim 1 indicates that the “compression rate” is a rate at which
`
`a data stream is compressed, such that the effective data storage rate of the data storage device is
`
`increased. Claim 2, however, indicates that the “compression rate” is the ratio of the input data
`
`transmission rate to the data storage rate. As Defendants point out, a rate is not the same as a ratio.
`
`MOTION at 6.
`
`Moreover, the specifications of the ‘104 and ‘158 patents, as well as the prosecution history,
`
`indicate that the patentee intended these terms to have different meanings—the meanings one of
`
`ordinary skill in the art would attribute the terms. ‘104 patent at 3:8–13 (“the method for providing
`
`accelerated data storage and retrieval utilizes a compression ratio that is at least equal to the ratio of
`
`the input data transmission rate to the data storage rate”); id. at 5:28–32 (“the rate that data blocks
`
`from the input data stream may be accepted by the data storage accelerator 10 is a function of
`
`7
`
`Comcast - Exhibit 1024, page 7
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`

`

`the . . . the compression ratio achieved [in addition to other factors]”); id. at 9:57–65 (noting a
`
`compression ratio of 3:1 and a storage rate of 30 MB/sec); see also ‘158 patent at 3:36–42;
`
`11:10–17. As these portions of the specification indicate, a ratio is a unit-less indicator of relative
`
`magnitude, while a rate is expressed in terms of data per unit of time. ‘104 patent at 9:57–65
`
`(noting a compression ratio of 3:1 and a storage rate of 30 MB/sec). This conclusion is also
`
`supported by the parties’ agreed construction of “compression ratio.” CLAIM CHART at 11–12
`
`(“ratio of the number of bits in a data block input to an encoder to the number of bits in that data
`
`block output from that encoder”).
`
`When the application for the ‘104 patent was filed, claim 2 originally disclosed:
`
`2. The program storage device of claim 1, wherein the compression
`ratio is at least equal to the ratio of the input data transmission rate
`to the data storage rate, so as to provide continuous storage of the
`input data stream at the input data transmission rate.
`
`MOTION, EXH. F at FH00006208 (emphasis added). The PTO rejected the claim as being
`3
`
`obvious, and in response, the applicant amended the claim to disclose a “compression rate.”
`
`Id. at FH00006206–08; see also id. at FH00006208 (amending claim 1 from “compressing the data
`
`stream at a compression ratio which provides a data compression rate that is greater than the data
`
`storage rate” to “compressing the data stream at a compression rate that increases the effective data
`
`storage rate of the data storage device”) (emphasis added).
`
`In addition to acknowledging the difference between “rate” and “ratio,” in the specifications
`
`of the ‘104 and ‘158 patents the applicant specifically disclosed the intended meaning of
`
`compression ratio. The specification of the ‘104 patent discloses:
`
`3 c
`
`The ‘104 patent issued from application no 09/266,394 (“the ‘394 application”). The ‘158 patent was a
`ontinuation-in-part of the ‘394 application.
`
`8
`
`Comcast - Exhibit 1024, page 8
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`

`

`In order to achieve continuous data storage acceleration, the data
`storage accelerator 10 must be configured to compress a given input
`data block at a rate that is equal to or faster than receipt of the input
`data. Thus, to achieve optimum throughput, the rate that data blocks
`from the input data stream may be accepted by the data storage
`accelerator 10 is a function of the size of each input data block, the
`compression ratio achieved, and the bandwidth of the target storage
`device. For example, if the data storage device 45 . . . is capable of
`storing 20 megabytes per second and the data storage accelerator 10
`is capable of providing an average compression ratio of 3:1, then
`60 megabytes per second may be accepted as input and the data
`storage acceleration is precisely 3:1, equivalent to the average
`compression ratio.
`
`‘104 patent at 5:24–38 (emphasis added). This excerpt reveals that the applicant intended the
`
`compression rate of data storage accelerator 10 to be defined by throughput. The specification
`
`further indicates that “the input data stream or the output of the data accelerator 10 may be buffered
`
`[as needed].” ‘104 patent at 5:52–24. Thus, as Plaintiff points out, the specification defines
`
`“compression rate” in terms of the throughput of the compressor—the amount of data compressed
`
`per unit of time.
`
`As to claim 1 of the ‘104 patent, the prosecution history supports this conclusion.
`
`Claims 1 and 2 were initially rejected by the PTO as being obvious in light of the Adiletta reference.
`
`MOTION, EXH. F at FH00006203. The prosecution history indicates that the patent applicant
`
`considered the increase in the effective data storage rate as the point of novelty which made the
`
`invention patentable over Adelitta. This is because Adelitta discloses a data compression scheme
`
`which compresses all the data before storing it to memory. MOTION., EXH. F at FH00006205–06.
`
`Although Adelitta does provide a decrease in the required memory storage space, an increase in the
`
`effective data storage rate may not result because the time required to compress all of the data and
`
`subsequently store all the data could be greater than or equal to the time to merely store the
`
`9
`
`Comcast - Exhibit 1024, page 9
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`

`

`uncompressed data. Id. (“the Adiletta system may realize a decrease in storage, but such system will
`
`not realize ‘accelerated data storage’ as contemplated by the present invention”). The applicant’s
`
`modification of the language in claims 1 and 2, in light of these arguments, reflects the importance
`
`of the time required to compress the data and make it available for storage. So unlike the
`
`compression ratio, the compression rate takes into account the time period it takes to compress a
`
`certain amount of data.
`
`The use of the term “compression rate” in claim 1 of the ‘104 patent is consistent with this
`
`conclusion. There, the data throughput of the compressor is great enough that it increases the
`
`effective storage rate of the data storage device. ‘104 patent at 18:41–53 (claim 1) (“compressing
`
`the data stream at a compression rate that increases the effective data storage rate of the data storage
`
`device”). Claims 13 and 25 of the ‘104 patent, along with claims 1 and 9 of the ‘158 patent similarly
`
`use the term “compression rate” to refer to compressor throughput at a given compression ratio.
`
`The use of term “compression rate” in claim 2 of the ‘104 patent, however, is not consistent with the
`
`use of the term throughout the remainder of the patent and prosecution history. Claim 2 indicates
`
`that the “compression rate” is “at least equal to the ratio of the input data transmission rate to the data
`
`storage rate.” ‘104 patent at 18:54–58 (claim 2). As previously noted, this is inconsistent with the
`
`remainder of the claims, specification, and prosecution history.
`
`Plaintiff argues that the term “compression rate” provides information about the amount of
`
`input data a compressor can compress per unit of time, the amount of compressed data a compressor
`
`can output per unit of time, and the amount of data that is compressed—the compression ratio.
`
`RESPONSE at 8. In other words, Plaintiff argues that the term “compression ratio” is subsumed within
`
`the term “compression rate.” However, this contention is refuted by the specification, as previously
`
`10
`
`Comcast - Exhibit 1024, page 10
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`

`

`noted, because the patentee explicitly distinguishes between “rates” and “ratios.” See ‘104 patent
`
`at 3:8–13 (“the method for providing accelerated data storage and retrieval utilizes a compression
`
`ratio that is at least equal to the ratio of the input data transmission rate to the data storage rate”);
`
`id. at 5:28–32 (“the rate that data blocks from the input data stream may be accepted by the data
`
`storage accelerator 10 is a function of the . . . the compression ratio achieved [in addition to other
`
`factors]”); id. at 9:57–65 (noting a compression ratio of 3:1 and a storage rate of 30 MB/sec);
`
`see also ‘158 patent at 3:36–42; 11:10–17; MOTION, EXH. F at FH00006208 (amending claim 1 from
`
`“compressing the data stream at a compression ratio which provides a data compression rate that
`
`is greater than the data storage rate” to “compressing the data stream at a compression rate that
`
`increases the effective data storage rate of the data storage device”) (emphasis added).
`
`Therefore, with respect to claims 1, 13, and 25 of the ‘104 patent and claims 1 and 9 of the
`
`‘158 patent, the Court finds that the term “compression rate” is not indefinite and is properly
`
`construed as “compressor throughput as a measure of the amount of input data a compressor can
`
`compress and make available for storage per unit of time at a given compression ratio.”
`
`However, as previously noted, the use of the term “compression rate” in claim 2 is
`
`inconsistent with the remainder of the claims, specification, and prosecution history. It is
`
`nonsensical and one of ordinary skill would understand it as such. The limitation is directed at a
`
`“compression ratio,” but discloses a “compression rate.” While patents are presumed valid and
`
`claims may only be declared invalid based on clear and convincing evidence, the term “compression
`
`rate” is amendable to only one reasonable construction, rendering claim 2 nonsensical. The Court
`
`must construe the claim as the patentee has drafted it. Process Control Corporation v. Hydreclaim
`
`Corporation, 190 F.3d 1350, 1357 (Fed. Cir. 1999) (“[w]here, as here, the claim is susceptible to
`
`11
`
`Comcast - Exhibit 1024, page 11
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`

`

`only one reasonable construction . . . we must construe the claims based on the patentee’s version
`
`of the claim as he himself drafted it”). As such, courts may not redraft claims to make them operable
`
`or to sustain their validity, regardless how the patentee wished they had drafted it. Chef America,
`
`Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373–74 (Fed. Cir. 2004). As a result, claim 2 of the
`
`‘104 patent is invalid as being indefinite because it is not “amenable to construction,”
`
`Exxon Research, 265 F.3d at 1375, and it is insolubly ambiguous and no narrowing construction can
`
`properly be adopted.” Id.; see also Honeywell, 341 F.3d 1332 at 1338-39.
`
`II.
`
`“wherein said first bandwidth is substantially greater than said second
`bandwidth”4
`
`Plaintiff’s Proposed Construction
`wherein said first bandwidth is sufficiently
`greater than said second bandwidth such that
`applying compression methods would be
`beneficial
`
`Defendants’ Proposed Construction
`indefinite
`
`Defendants argue that the specification fails to provide some standard for measuring the
`
`degree of the term “substantially greater” in order to apprise those skilled in the art whether they are
`
`practicing the claimed invention or not. REPLY at 6. Defendants also contend that Plaintiff’s
`
`arguments to the contrary rely on portions of the specification that do not relate to comparing
`
`bandwidths as recited in claim 17. Id.
`
`Plaintiff contends that the term “substantially” is not only commonly used, but also has been
`
`held not indefinite on numerous occasions by the Federal Circuit. RESPONSE at 11–12.
`
`4 H
`
`The parties identified the term “substantially greater” for argument at the Markman hearing. TERMS FOR
`EARING at 3. However, the parties include the term “wherein said first bandwidth is substantially greater than said
`second bandwidth” in the claim chart, so the Court will construe this term. See CLAIM CHART at 64. The term
`“wherein said first bandwidth is substantially greater than said second bandwidth” is contained in claim 17 of the
`‘937 patent.
`
`12
`
`Comcast - Exhibit 1024, page 12
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`

`

`Plaintiff points to a portion of the specification where the compression ratio is 3:1 as being an
`
`example in the ‘927 patent where the first bandwidth is “substantially greater” than a second
`
`bandwidth. Id. at 12–13.
`
`Claim 17 of the ‘937 patent sets forth:
`
`17.
`
`A method comprising:
`receiving a data stream over an input having a first
`bandwidth;
`compressing, in at least real-time, said received data
`stream using a plurality of encoders to provide
`a compressed data stream;
`transmitting said compressed data stream over an
`output having a second bandwidth, wherein
`said first bandwidth is substantially greater
`than said second bandwidth and said
`transmitting said compressed data stream
`effectively increases said second bandwidth;
`and
`wherein said compressing and said transmitting of
`said compressed data stream over said output
`occurs faster than a transmission of said data
`stream in uncompressed form over said
`output.
`
`‘937 patent at 20:9–2.
`
`To the extent that Defendants argue that this claim is indefinite because the specification fails
`
`to explicitly delineate numerical boundaries for the “substantially greater” term, this is not required.
`
`A patentee is not required to define a claimed invention with mathematical precision in order to
`
`comply with the definiteness requirement. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1341
`
`(Fed. Cir. 2003) (citing In re Marosi, 710 F.2d 799, 802–803 (Fed. Cir. 1983)). In Marosi, the
`
`Federal Circuit noted, “[i]nsofar as it requires appellants to specify a particular number as the cutoff
`
`between their invention and the prior art, the PTO’s position is impractical [because the] invention
`
`13
`
`Comcast - Exhibit 1024, page 13
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`

`

`does not reside in such a number.” Marosi, 710 F.2d at 802. There, the Court held that one skilled
`
`in the art would determine if a source is “essentially free of alkali metal” when it contains
`
`“unavoidable impurities in starting materials and essential ingredients.” Id. at 803. In Oakley,
`
`however, the numerical value of the “differential effect . . . producing a vivid colored appearance”
`
`was a distinguishing feature over the prior art, and therefore particular numerical values should
`
`be—and were—disclosed in the specification. 316 F.3d at 1341–42. In this case, that a first
`
`bandwidth is substantially greater than a second bandwidth is not a distinguishing feature over the
`
`prior art. As used here, “substantially greater” is a term of degree. The capacity difference between
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`the two bandwidths is merely an initial parameter in defining a system which performs the claimed
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`method of accelerating data storage. Further, the novelty of the invention does not lie in the capacity
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`difference between the two bandwidths. Thus, as in Marosi, the claimed invention does not reside
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`in a number delineating the capacity difference between the two disclosed bandwidths.
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`Defendants argue that the specification fails to disclose a frame of reference for determining
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`when a first bandwidth is “substantially greater” than a second bandwidth. REPLY at 6–7.
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`Defendants further argue that the portions of the specification that Plaintiff points to for this frame
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`of reference are irrelevant to the relative size of the first and second bandwidths. However, the Court
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`disagrees. That there is a dispute, even among those skilled in the art, as to the proper meaning of
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`“substantially greater” does not, itself, render the claim invalid. Verve, LLC v. Crane Cams, Inc.,
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`311 F.3d 1116, 1120 (Fed. Cir. 2002). Ambiguities which remain after examination of the claims
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`and specification “may be aided by extrinsic evidence of usage and meaning of a term in the context
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`of the invention.” Id. at 1119. Thus, the question is not whether the word “substantially greater”
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`has a fixed meaning as applied to the first and second bandwidths, “but how the phrase would be
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`understood by persons experienced in this field of mechanics, upon reading the patent documents.”
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`Id. at 1119–20. The Federal Circuit has explained:
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`Definiteness problems often arise when words of degree are used in
`a claim. That some claim language may not be precise, however, does
`not automatically render a claim invalid. When a word of degree is
`used the district court must determine whether the patent’s
`specification provides some standard for measuring that degree. The
`trial court must decide, that is, whether one of ordinary skill in the art
`would understand what is claimed when the claim is read in light of
`the specification.
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`Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Thus, the
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`manner in which one skilled in the art would read and understand the ‘937 patent is the lens through
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`which the Court should view this term in order to determine the proper meaning.
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`One skilled in the art would understand that the purpose of this invention is to accelerate the
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`transmission of data in a system limited by the second bandwidth because existing memory storage
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`devices at the time this patent issued limited the performance of many disk and memory intensive
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`operations. ‘937 patent at 2:22–25. Both claim 17 and the specification disclose that compressing
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`the data effectively increases the second bandwidth, resulting in transmission of data faster than
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`would be possible uncompressed. ‘937 patent at 20:9–25 (claim 17) (“said transmitting said
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`compressed data stream effectively increases said second bandwidth; [resulting in data stream output
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`which is] faster than a transmission of said data stream in uncompressed form over said output”);
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`id. at 2:16–18 (“data compression can reduce the time to transmit data by more efficiently utilizing
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`low bandwidth data links”). Claim 17 is drafted in such a way that one skilled in the art would
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`understand that the difference in the first and second bandwidths is a system constraint related to the
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`problems experienced in the field at the time the patent issued. This system constraint derives
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`15
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`Comcast - Exhibit 1024, page 15
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`directly from the problems in the art, as disclosed by the patentee:
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`One problem with the current art is that existing memory storage
`devices severely limit the performance of [] computers for all disk
`and memory intensive operations. For example, magnetic disk mass
`storage devices currently employed in a variety of [] applications
`suffer from significant seek-time access delays along with profound
`read/write data rate limitations. Currently the fastest available
`(10,000) rpm disk drives support only a 17.1 Megabyte per second
`data rate (MB/sec). This is in stark contrast to the modem Personal
`Computer’s Peripheral Component Interconnect (PCI) Bus’s
`input/output capability of 264 MB/sec and internal local bus
`capability of 800 MB/sec.
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`‘937 patent at 2:22–35. In other words, if the first bandwidth is output from an internal local bus and
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`the second bandwidth is input to a mass storage device, 800 MB/s is substantially greater than
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`17.1 MB/s and a transmission delay will result. See also ‘937 patent at 10:1–13 (noting that “[i]f the
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`maximum data storage rate of the data storage device 45 is . . . is less than the data rate output from
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`the data storage accelerator 10[], data congestion and backup would occur at the output of the data
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`storage accelerator 10”). So the relative sizes of the first and second bandwidths is a parameter
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`pertinent to addressing the practical problems, as disclosed by the patentee, experienced in the art
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`at the time the patent issued.
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`The specification of the ‘937 patent also discloses an embodiment with an input data rate of
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`90 MB/sec, a compression ratio of 3:1, and a maximum data storage rate of the data storage device
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`of 20MB/sec. ‘937 patent at 10:1–8. While Defendants are correct that this example is not
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`discussed in terms of bandwidth, that does not mean it is bereft of information regarding the relative
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`bandwidths. In other words, if an input data rate is disclosed to be 90 MB/sec, then the first
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`bandwidth of this input transmission line must be at least 90 MB/sec. Further, if the output of the
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`data storage accelerator is 30 MB/sec and the maximum data storage rate of the data storage device
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`16
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`Comcast - Exhibit 1024, page 16
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`is 20 MB/sec, then the second bandwidth—either the output of the data storage accelerator or the
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`incoming transmission line of the data storage device—must be able to accommodate at least
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`20 MB/sec. Thus, in this example, the first bandwidth is at least 60 MB/sec greater than the second
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`bandwidth or the relative bandwidth transmission rates is a ratio of at leas