IBM unit secures partial win at Federal Circuit
Precedential decision underlines the importance of intrinsic evidence | Key clarification for patent practitioners | Former USPTO director represented plaintiff.
A unit owned by technology giant IBM has persuaded the US Court of Appeals for the Federal Circuit to uphold an earlier ruling of non-infringement relating to a digital storage patent.
But in the precedential decision handed down on Wednesday, April 12, the court also found that the US District Court for the District of Delaware had misconstrued a claim construction reading that invalidated the patent.
Affirmation and reversal
The Federal Circuit subsequently reversed the finding of invalidity, while upholding the finding of non-infringement.
Back in 2018, the dispute arose when venture capitalist Sequoia sued customers of IBM subsidiary Red Hat over a software tool that can create and resize logical volumes with units smaller than a whole disk partition.
Sequoia alleged the infringement of the US patent number 6,718,436, which is directed to “a method for managing a logical volume for minimising the size of metadata and supporting dynamic online resizing”.
The patent also covers “a computer-readable recording medium storing a program or data structure for embodying the method”. Red Hat then filed a complaint against Sequoia, seeking a declaratory judgment of noninfringement and invalidity, prompting a counter infringement suit.
Judge Leonard Stark of the Delaware federal court found in favour of the IBM unit, prompting an appeal from Sequoia in which it challenged the district court’s construction of ‘computer-readable recording medium’,” underlying the court’s judgment of ineligibility.
It also challenged the lower court's readings of ‘disk partitions’, ‘logical volumes’, and ‘used or not used’, underlying the court’s finding of noninfringement.
Former US Patent and Trademark Office director and partner at Irell & Manella, Andrei Iancu, acted for Sequoia, while Red Hat was represented by John O’ Quinn, partner at Kirkland & Ellis.
After reviewing the arguments, the Federal Circuit disagreed with the district court’s claim construction for a ‘computer-readable recording medium’, and reversed the district court’s ineligibility determination.
But it found in favour of the district court’s claim construction for ‘disk partition’ and ‘logical volume’, and so affirmed the district court’s non infringement finding.
Intrinsic evidence rules
Commenting on the decision, Phil Harris, partner at Holland and Hart deemed the precedential ruling as “important for patent practitioners when considering the type of evidence used to construe claims”.
“The district court delivered its decision because the patent specification itself did not exclude this interpretation and the presented extrinsic evidence supported that construction,” he explained.
“Patent practitioners understand that transitory media are ineligible statutory subject matter under 35 U.S.C. § 101 and thus this conclusion by the district court required a finding of ineligibility.”
But Judge Kara Stoll, writing on behalf of the Federal Circuit, found fault with this interpretation.
“The Federal Circuit found the claim language reciting “computer-readable recording medium” along with the discussion in the specification supported the opposite construction,” said Harris.
In doing so, the Federal Circuit asserted that its “decision rested solely on the intrinsic evidence”— marking a major clarification for patent practitioners.
“One key takeaway for practitioners is that the patent’s intrinsic evidence will carry the day, even if extrinsic evidence, such as that from industry documents, is at odds with intrinsic evidence, then the intrinsic evidence will rule,” concluded Harris.
