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