Mangosoft, Inc. v. Oracle Corp.

United States Court of Appeals for the Federal Circuit

2007-1250

MANGOSOFT, INC. and
MANGOSOFT CORPORATION,

Plaintiffs-Appellants,

v.

ORACLE CORPORATION,

Defendant-Appellee.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. of
Washington, DC, argued for plaintiffs-appellants. With him on the brief were Don O.
Burley; and Erik R. Puknys, of Palo Alto, California. Of counsel on the brief were Paul J.
Hayes and Robert R. Gilman, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo P.C., of
Boston, Massachusetts.

Matthew D. Powers, Weil Gotshal & Manges, LLP, of Redwood Shores, California,
argued for defendant-appellee. With him on the brief was Douglas E. Lumish. Of counsel
were Paul T. Ehrlich and Leeron G. Kalay.

Appealed from: United States District Court for the District of New Hampshire

Chief Judge Steven J. McAuliffe
United States Court of Appeals for the Federal Circuit

2007-1250

MANGOSOFT, INC.
and MANGOSOFT CORPORATION,

Plaintiffs-Appellants,
v.

ORACLE CORPORATION,

Defendant-Appellee.

Appeal from the United States District Court for the District of New Hampshire in case
no. 02-CV-545, Chief Judge Steven J. McAuliffe.

__________________________

DECIDED: May 14, 2008
__________________________

Before MICHEL, Chief Judge, LINN and PROST, Circuit Judges.

LINN, Circuit Judge.

Mangosoft, Inc. and Mangosoft Corporation (collectively, “Mangosoft”) appeal

from a final judgment of the district court following a summary judgment order holding

that Oracle Corporation (“Oracle”) did not infringe Mangosoft’s U.S. Patent No.

6,148,377 (“the ’377 patent”). Mangosoft, Inc. v. Oracle Corp., No. 02-CV-545 (D.N.H.

Mar. 14, 2006) (“Summary Judgment Opinion”). Because Mangosoft’s arguments on

appeal relate solely to claim construction, and because we find no error in the district

court’s construction of the sole claim term raised on appeal, we affirm.
 I. BACKGROUND

Mangosoft owns the ’377 patent, which relates to “computer networking systems

and methods that provide shared memory systems and services.” ’377 patent col.1 ll.4-

6. Specifically, the ’377 patent discloses “systems that can create and manage a virtual

memory space that can be shared by each computer on a network and can span the

storage space of each memory device connected to the network.” Id. col.2 ll.21-24. In

contrast to traditional client-server networks, where servers with significant memory

capacity served as “central repositor[ies] of network data,” id. col.1 ll.23-28, the ’377

patent describes a system that pools together the storage capacity of individual

computers (or nodes) on the network to form a “virtual memory space,” see id. col.2

ll.21-28. Thus, the disclosed storage system emphasizes decentralized storage, which

leverages the storage capacity of individual client computers by allowing all of the nodes

of the network to contribute portions of their local persistent (e.g., hard disk) storage and

volatile (e.g., RAM) memory to a virtual pool of storage and memory accessible by the

entire network.

In 2002, Mangosoft filed suit against Oracle and accused Oracle’s Real

Applications Clusters (“RAC”) software, sold in conjunction with its 9i and 10g database

software, of infringing a total of 38 claims of both the ’377 patent and a related patent.

Oracle counterclaimed for a declaratory judgment of invalidity, unenforceability, and

non-infringement. In 2004, the district court construed several disputed claim terms

after holding a Markman hearing. With respect to the term “local,” it held that

the word “local” when used to modify a computer device means a
computer device (e.g., a hard drive) that is directly attached to a single
computer’s processor by, for example, the computer’s bus.

2007-1250 2
Mangosoft, Inc. v. Oracle Corp., No. 02-CV-545, slip op. at 20 (D.N.H. Sept. 21, 2004)

(“Claim Construction Opinion”) (noting additionally that a hard disk “that is ‘local’ to one

computer may also be shared with, or accessed by, other computers on the network”).

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).” Id. at 18-20 (noting that such a construction would

render the term “local” superfluous or redundant in light of claim 1’s requirement that

local memory devices be “coupled” to a computer).

Following this order, Mangosoft amended its list of asserted claims to allege

infringement only of claims 1, 5, and 9 of the ’377 patent. The parties then filed cross-

motions for summary judgment on the issues of infringement, invalidity, and

unenforceability of the ’377 patent. Summary Judgment Opinion at 1-2. The district

court concluded that, as a matter of law, Oracle did not infringe any of the asserted

claims; the court left most of the invalidity and inequitable conduct issues unresolved.

Id. at 42. In so holding, the district court agreed with Oracle that “the memory space

shared in RAC clusters does not span local persistent memory devices.” Id. at 8, 14-15.

Approximately one year later, the district court dismissed Oracle’s counterclaim without

prejudice, and entered judgment of non-infringement in favor of Oracle. Mangosoft, Inc.

v. Oracle Corp., No. 02-CV-545 (D.N.H. Mar. 28, 2007). Mangosoft timely appealed.

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

2007-1250 3
 II. DISCUSSION

This appeal presents a question of claim construction involving a single claim

term. The parties’ arguments turn on the singular issue of what it means for a storage

device, such as a hard disk, to be “local” to a particular computer, or node, in a

computer network. Mangosoft contends that in construing the claim term “local,” the

district court improperly imported what Mangosoft characterizes as the “direct” and

“unique” connection limitations. See Claim Construction Opinion at 20 (requiring that

local memory devices be “directly attached to a single computer’s processor”

(emphases added)). It argues that the district court derived these limitations solely from

a technical dictionary definition proffered by Oracle, although this dictionary was not

cited by the district court. See id. at 18-20. Mangosoft contends that a “local” memory

device should be construed as “a memory device that . . . can be contributed to the

shared addressable memory space by a particular node.” Oracle responds that the

claim language, specification, prosecution history, and reliable extrinsic evidence

support the district court’s construction. We agree with Oracle.

Mangosoft relies heavily on the fact that the district court’s opinion preceded

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and principally argues

that the result was improperly influenced by references made by the parties to a

technical dictionary. Mangosoft’s position is misplaced for several reasons and places

undue weight on what it contends was the district court’s reliance on the Texas Digital

methodology. See generally Phillips, 415 F.3d at 1319-22 (discussing Tex. Digital Sys.,

Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)). First, while there is no question

that dictionaries were considered, even Phillips recognized that reference to such

2007-1250 4
sources is not prohibited so long as the ultimate construction given to the claims in

question is grounded in the intrinsic evidence and not based upon definitions

considered in the abstract. Phillips, 415 F.3d at 1318 (noting that “dictionaries, and

especially technical dictionaries, endeavor to collect the accepted meanings of terms

used in various fields of science and technology” and thus “have been properly

recognized as among the many tools that can assist the court in determining the

meaning of particular terminology to those of skill in the art of the invention”); see also

Acumed LLC v. Stryker Corp., 483 F.3d 800, 809 n.2 (Fed. Cir. 2007) (“Although in

Phillips we rejected an approach in which a broad dictionary definition is adopted and

then whittled down only if contradicted by the specification, we did not prohibit the use

of dictionaries in claim construction, nor did we define at what point in the claim

construction analysis they may be consulted.” (internal citation omitted)); Old Town

Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 1316 (Fed. Cir. 2006) (“The

district court’s reference to the dictionary was not an improper attempt to find meaning

in the abstract divorced from the context of the intrinsic record but properly was a

starting point in its analysis, which was centered around the intrinsic record consistent

with Phillips.”). Second, we review judgments, not opinions, and need not focus on the

methodology used by the district court. Interactive Gift Express, Inc. v. Compuserve

Inc., 256 F.3d 1323, 1346 (Fed. Cir. 2001) (noting “the familiar principle that this court

does not review supporting arguments, but only the decisions reached by the trial court”

(citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983))); see

also Acumed, 483 F.3d at 809 n.2 (“Our de novo review means that we need not decide

whether the logic or subsidiary definitions used by the district court to reach the correct

2007-1250 5
construction were sound. . . . We review only the district court’s finished product, not its

process.”). Finally, even though the district court did not have the benefit of Phillips at

the time of its decision, the court’s claim construction is fully consistent with and

supported by the intrinsic record—as well as the dictionary—and thus fully comports

with our precedent. We begin with the language of the claims.

The district court’s construction of the term “local” is consistent with the language

of claim 1. The same cannot be said for Mangosoft’s position. Mangosoft’s

construction would read “local” to mean something beyond the breadth of anything in

the claims or the specification by giving that term attributes of control. The problem is

that nothing in the intrinsic record describes or supports such an expansive meaning.

Moreover, the broader construction proffered by Mangosoft—“a memory device that . . .

can be contributed to the shared addressable memory space by a particular node”—

would render the claim term “local” superfluous. This was recognized by the district

court. See Claim Construction Opinion at 19-20. Claim 1 requires that each local

persistent memory device be “coupled to” a computer comprising a node on the network

and that the “shared addressable memory space” be mapped “across said plurality of

local persistent memory devices” through these computer nodes. This language—

independent of the word “local”—requires a connection of some sort between a

computer and a hard disk. Thus, Mangosoft’s proposed construction ascribes no

meaning to the term “local” not already implicit in the rest of the claim. See Merck & Co.

v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction

that gives meaning to all the terms of the claim is preferred over one that does not do

so.”). This defect is particularly severe because Mangosoft added the word “local” to

2007-1250 6
claim 1 during prosecution to distinguish prior art as discussed infra. In contrast, the

district court’s construction accords “local” its ordinary meaning by distinguishing “local

persistent memory devices” from those that are “shared,” “networked,” or “remote.”

Claim Construction Opinion at 18. Construing “local” to mean “directly attached to a

single computer’s processor” also comports with claim 1’s recitation of “a plurality of

computers, each of said plurality of computers . . . including . . . a local persistent

memory device coupled to said computer.” ’377 patent claim 1 (emphases added).

Turning next to the specification, we find additional support for the district court’s

construction.

Specifically, the summary of the invention notes that “[i]n a system that

distributes the storage across the memory devices of the network, the persistent

memory device will be understood to include a plurality of local persistent memory

devices that each couple to a respective one of the plural computers.” ’377 patent col.3

ll.10-14 (emphases added). Mangosoft relies on the prior paragraph’s introductory

language (“[i]n one aspect, the invention can be understood to include,” id. col.2 l.64) to

argue that the language regarding local persistent memory devices relates solely to one

embodiment. However, even if we assume that this language properly addresses only

an “aspect” of the invention—namely, “computer systems having a shared addressable

memory space,” id. col.2 ll.64-66—this is precisely the aspect of the invention at issue in

claim 1. See id. claim 1 (reciting “[a] computer system have a shared addressable

memory space”); see also Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d

1295, 1308 n.8 (Fed. Cir. 2007) (rejecting Verizon’s argument that language in the

specification referring to the “present invention” was “not significant . . . because the

2007-1250 7
specification merely refers to ‘one aspect’ of ‘the present invention,’” because “that

‘aspect’ is . . . the very claim term that is at issue here”).

More generally, the specification discloses that an “object of the invention is to

provide computer network systems that . . . dynamically exploit[] distributed resources,”

’377 patent col.2 ll.3-6 (emphasis added), in contrast to centralized storage, and

characterizes local persistent memory devices as being unique to individual nodes on

the network, e.g., id. col.3 l.44 (“local persistent memory device of a first computer”); id.

col.3 ll.45-46 (“local persistent memory device of a second computer”); id. col.7 l.21

(“the local memories of each of the nodes”). The specification’s figures and descriptions

consistently represent “local” persistent memory devices as being directly attached to

individual computers. In so doing, the specification specifically contrasts local memory

devices with “network memory devices,” which are remote, networked memory devices

providing centralized shared storage for multiple computers. For example, the

embodiment illustrated in Figure 2, reproduced below, includes “a network memory

device 26,” but the specification defines only the disks 36a, 36b, and 36c of each

individual node on the network as being “local.” Id. col.7 ll.1-8.

2007-1250 8
 Mangosoft nonetheless argues that claim 1 may encompass such network

memory devices based on the following language in the specification: “The disk can be

any persistent memory including any disk, RAID, tape or other device that provides

persistent data storage.” Id. col.3 ll.38-40. Mangosoft characterizes RAID as a type of

network memory device “in which numerous drives are shared by a ‘cluster’ of

computers.” Taken in context, however, this quote relates not to “local” persistent

memory devices, nor even to the persistent memory devices across which the shared

addressable memory space is spanned, but rather to an optional “cache controller.” Id.

col.3 ll.34-40. In sum, we find the specification and claim language entirely consistent

with and fully supportive of the district court’s construction.

We find further support for the district court’s construction in the prosecution

history. As originally filed, the application leading to the ’377 patent included a broader

claim 1, which recited, in relevant part, “a persistent memory device, coupled to said

data network and having persistent storage for data signals.” J.A. 1295. The original

application also included a dependent claim—filed as claim 2—which recited “a plurality

2007-1250 9
of local persistent memory devices each coupled to a respective one of said plural

computers.” Id. During prosecution, Mangosoft amended claim 1; cancelled several

claims, including claim 2; and represented to the examiner that it had “[i]n general . . .

amended claim 1 to include the subject matter of claims 2, 3, 4, 8, and 9. Amended

claim 1 recites ‘a local persistent memory device’ . . . associated with each of the

computers coupled to the network.” J.A. 1391. In describing the amendment to the

examiner, Mangosoft emphasized the addition of the term “local” and argued that “none

of the relied-upon references teaches or suggests local . . . persistent memory devices

(e.g., hard disks associated with each networked computer), having portions of a shared

addressable memory space mapped thereon.” Id. The examiner responded to this

amendment and accompanying arguments by allowing the claims.

In addressing that history, Mangosoft argues that in amending claim 1, which

does not recite all of the language of cancelled claim 2, it did not incorporate the

limitation that local devices “each [be] coupled to a respective one of said plural

computers.” Mangosoft characterizes cancelled claim 2 as requiring “unique”

connections between each local persistent memory device and computer, such that no

computer could have more than one such device. Mangosoft contends that it could not

have incorporated this limitation into claim 1 because its communications with the

examiner contemplated computers having multiple local hard disks. Contrary to

Mangosoft’s arguments, neither the language of cancelled claim 2 nor the district court’s

requirement that local disks be directly attached to a single computer precludes a single

computer from having multiple local disks. Moreover, having incorporated the term

“local” and having represented to the examiner that it had “[i]n general . . . amended

2007-1250 10
claim 1 to include the subject matter of claim[] 2,” Mangosoft cannot now argue that

“local” should be interpreted inconsistently with both cancelled claim 2 and the definition

found in the specification, which describes “a plurality of local persistent memory

devices that each couple to a respective one of the plural computers.” ’377 patent col.3

ll.12-14. To do so would effectively read the “local” limitation out of the claim or ignore

the subject matter incorporated from cancelled dependent claim 2 of the original

application. See, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.

Cir. 2003) (noting that “[t]he doctrine of prosecution disclaimer . . . preclud[es] patentees

from recapturing through claim interpretation specific meanings disclaimed during

prosecution”).

Nor do we find persuasive Mangosoft’s argument that the amendment was made

not to emphasize “local” but rather to emphasize that the claimed shared addressable

memory space consisted of both volatile and persistent memory. This interpretation of

the prosecution history flies in the face of the arguments Mangosoft presented to the

examiner and which it quotes in its brief on appeal: “[N]one of the relied-upon

references teaches or suggests local volatile memory devices . . . or persistent memory

devices . . . having portions of a shared addressable memory space mapped thereon.”

J.A. 1391 (emphases added).

Having found support for the district court’s claim construction in the claim

language, the specification, and the prosecution history of the ’377 patent, we note that

this construction is also consistent with the technical dictionary definition proffered by

Oracle. “Local device” is there defined as “[p]eripheral equipment that is linked directly

to a computer or other supporting equipment without an intervening communications

2007-1250 11
channel.” McGraw-Hill Dictionary of Scientific and Technical Terms 1159-60 (5th ed.

1994). In response to Oracle’s assertion that this definition represents the accepted

meaning of this term in the relevant art, see Phillips, 415 F.3d at 1313, Mangosoft

neither provides a persuasive reason to disregard it, nor contests that it accurately

reflects the general meaning of this term to those of skill in the art. It argues only that

this definition is not limited to memory devices, but rather encompasses numerous kinds

of computer devices. We find this argument to be inconsequential, particularly because

Mangosoft does not dispute that this definition encompasses the persistent storage

devices at issue in this case. Accordingly, when considered in the context of and not

divorced from the intrinsic evidence, there is nothing improper about referencing this

definition in correctly construing the claim. See L.B. Plastics, Inc. v. Amerimax Home

Prods., Inc., 499 F.3d 1303, 1308 (Fed. Cir. 2007) (noting that the district court properly

referenced dictionaries—including a later version of the dictionary cited by Oracle—in

construing various disputed claim terms).

Finally, we have considered the parties’ remaining arguments concerning

additional extrinsic evidence and find them to be unpersuasive.

III. CONCLUSION

Because the district court correctly construed the “local” claim term, we affirm the

district court’s grant of Oracle’s motion for summary judgment of non-infringement.

AFFIRMED.

2007-1250 12