EDWARD M. CHEN

CLAIM CONSTRUCTION ORDER - SYMANTEC'S PATENTS

Plaintiff Symantec Corporation initiated this action against Defendants Acronis, Inc. and Acronis International GmbH (collectively, "Acronis"). Under the current operative complaint, Symantec charges Acronis with infringement of five patents - i.e., the '010 patent, the '365 patent, the '086 patent, the '517 patent, and the '655 patent. In response, Acronis has filed counterclaims, seeking a declaratory judgment that Symantec's patents at issue are not infringed and further are invalid. In addition, Acronis has asserted counterclaims for infringement of its own patents. This order construes terms as used in the claims of Symantec's patents only. A separate order shall provide claim construction on Acronis's patents.

I. DISCUSSION

A. Legal Standard

Claim construction is a question of law to be determined by the Court. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) ("hold[ing] that in a case tried to a jury, the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim"). "The purpose of claim construction is to 'determin[e] the meaning and scope of the patent claims asserted to be infringed.'" O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008).

Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention. "In some cases, the ordinary meaning of claim language . . . may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." However, in many cases, the meaning of a claim term as understood by persons of skill in the art is not readily apparent.

Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Those sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art."

1. Claims

The parties seem to be in general agreement that "[t]he '010 patent discloses methods and systems for providing a user interface that facilitates computer restoration operations and the automatic resource mapping between differing computer configurations of the computer that was backed up and that to which the data is being restored." Docket No. 110 (Symantec's Op. Br. at 2). "Prior to this invention, it was 'difficult for the user to envision the effect of the changes on the configuration prior to actually making the changes on the computer system.'" Docket No. 110 (Symantec's Op. Br. at 2).

The claims in the '010 patent that are at issue in this litigation are as follows: 1 and 4-10. The only independent claim is claim 1. Claim 1 provides as follows (with terms to be construed in bold):

1. A computer accessible storage medium comprising a plurality of instructions which, when executed:
present a graphical view of a first computer system configuration comprising a first plurality of computer system resources;
concurrent with presenting the graphical view of the first computer system configuration, present a graphical view of a second computer system configuration comprising a second plurality of computer system resources;
provide a mechanism to capture data representing at least a first resource of the first plurality of computer system resources from the first computer system configuration and insert the data in the second computer system configuration; and
provide an automatic mapping of resources from the first computer system configuration to the second computer system configuration, wherein the first computer system configuration corresponds to a backed-up computer system and the second computer system configuration corresponds to a computer system that the backup is being restored to.

2. Terms

a. graphical view of a first/second computer system configuration ('010 patent, claim)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +--------------------------+------------------------+-------------------------¦ ¦ ¦ ¦a pictorial ¦ ¦a pictorial or text ¦ ¦representation of a ¦ ¦ ¦a picture of a first/ ¦ ¦ ¦representation of a first/¦second ¦first/second computer ¦ ¦second ¦ ¦system ¦ ¦ ¦computer system ¦ ¦ ¦computer system ¦configuration ¦configuration which can ¦ ¦configuration ¦ ¦ ¦ ¦ ¦ ¦include text ¦ +-----------------------------------------------------------------------------+

Here, the parties' dispute centers on what is meant by the term "graphical." Symantec argues that its construction is appropriate because, as stated in the specification,

a graphical view of a configuration may refer to a representation of the configuration, where at least a portion of the representation is provided pictorially on a display device using one or more graphical elements.
Each graphical element may be a pictorial representation (that is, at least a portion of its meaning is derived from its appearance on the screen). Graphical views and graphical elements may contain text as well.

The Court finds problems with each party's construction. Acronis's construction, for example, fails to acknowledge that text can be a part of the picture. Symantec's construction, on the other hand, causes some confusion to the extent it incorporates "text representation." The Court adopts the following construction, which effectively accommodates both party's concerns and is consistent with the specification of the '010 patent: "a pictorial representation of a first/second computer system configuration which can include text." C. '365 Patent

1. Claims

The parties are in general agreement that the invention in the '365 patent provides systems and methods for

backing up data on a partition of a computer by storing an image of the data in the partition where the data is located. In other words, rather than taking an image of data on partition A and storing it in partition B, the '365 patent teaches that the image of partition A can be stored on partition A.

The claims in the '365 patent that are at issue in this litigation are as follows: 34, 50, and 52. Each of these claims is an independent claim, except claim 52. The text of the claims is provided below, with terms to be construed in bold.

a. Claim 34
34. A method of utilizing a partition within a computer system, the method comprising the computer-aided steps of:
obtaining a copy of user data which is stored in the partition; and
creating an in-partition image by at least storing a copy of at least a portion of the user data in at least one image in the same partition.
b. Claim 50
50. A computer program storage medium having a configuration that represents data and instructions which will cause at least a portion of the computer system to perform method steps for utilizing a partition within a computer system, the method steps comprising the steps of locating an image of the partition which is stored in the partition, and restoring selected user data from the image to the partition.
c. Claim 52
52. The configured program storage medium of claim 50, wherein the method further comprises the step of verifying the consistency and integrity of the image before the restoring step.

2. Terms

a. "obtaining a copy of user data" ('365 patent, claim 34)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +----------------------+--------------------------+---------------------------¦ ¦ ¦ ¦reading user data directly ¦ ¦ ¦reading data from a ¦from ¦ ¦ ¦previously ¦ ¦ ¦plain and ordinary ¦ ¦the partition or from a ¦ ¦meaning ¦created image of the ¦ ¦ ¦ ¦partition ¦previously created image of¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦the partition ¦ +-----------------------------------------------------------------------------+

The parties disagree about what "a copy of user data" means. Acronis contends that there is a difference between "user data" and "copy of user data" - i.e., "[w]hen referring to the original data in the partition that is directly read, the term 'user data' is used, but when referring to the data in a previously created image of the partition, the term 'copy of user data' is used." Docket No. 121 (Acronis's Resp. Br. at 5). In support of this position, Acronis cites to the specification which states that "[t]he obtaining step 702 may read user data directly from the partition 300" and that, "[i]nstead of reading user data from locations organized by the file system, the obtaining step 702 may read a copy of user data from a previously created image 420 of the partition 300." '365 patent, col. 1:19-20, 24-27 (emphasis added).

The problem with Acronis's position is that it takes the above statements from the specification out of context. The above statements come from the following paragraph in the specification:

During an obtaining step 702, an implementing program obtains a copy of user data which is stored in the partition 300. This may include all of the user data 614 or it may include selected user data, such as selected files and/or subdirectories. . . . The obtaining step 702 may read user data directly from the partition 300 . . . . Instead of reading user data from locations organized by the file system, the obtaining step 702 may read a copy of user data from a previously created image 420 of the partition 300.

On the other hand, the Court also declines to adopt Symantec's approach - i.e., that the Court not provide any construction for the term at all. As Judge Seeborg has noted, where "it is not at all self-evident from a lay perspective what the meaning of [a term] is, and furthermore, [where] there is some disagreement between the parties as to [the] precise meaning [of a term]," it "cannot simply be left for the jury" but rather "must be construed." Rambus, Inc. v. LSI Corp., Nos. C 10-05446 RS, C 10-05449 RS, 2012 U.S. Dist. LEXIS 138632, at *26-27 (N.D. Cal. Sept. 26, 2012). The Court adopts the following construction based on the above language from the specification: "reading user data directly from the partition or from a previously created image of the partition."

b. "in-partition image/image of the partition which is stored in the partition" ('365 patent, claims 34, 50)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +-------------------------+-------------------------+-------------------------¦ ¦ ¦ ¦a copy of data from the ¦ ¦a sector-by-sector or ¦a copy of data from the ¦ ¦ ¦cluster- ¦ ¦partition, excluding the ¦ ¦ ¦partition, excluding the ¦image ¦ ¦by-cluster copy of data ¦image ¦ ¦ ¦from ¦ ¦itself, created using ¦ ¦ ¦itself, stored within the¦sector-by- ¦ ¦the partition, excluding ¦ ¦ ¦ ¦the ¦partition; the copy is ¦sector or ¦ ¦ ¦not ¦cluster-by-cluster ¦ ¦image itself, stored ¦ ¦ ¦ ¦within the ¦limited to a ¦imaging tools and ¦ ¦ ¦sector-by-sector or ¦techniques ¦ ¦partition ¦ ¦ ¦ ¦ ¦cluster-by-cluster copy ¦and stored within the ¦ ¦ ¦ ¦partition ¦ +-----------------------------------------------------------------------------+

The parties agree that an in-partition image is a copy of data from the partition, excluding the image itself, stored within the partition. See, e.g., '365 patent, col. 5:8-9 (noting that "'in-partition images' are images of a partition stored within the imaged partition"). Their disagreement is whether the copy is limited to a sector-by-sector or cluster-by-cluster copy or can include, e.g., a file-by-file copy. Sectors and clusters are units smaller than files. See '365 patent, col. 3:14-20 (stating that "[t]wo basic approaches are used in conventional systems and methods to backup computer data[;] one approach is generally file-oriented, while the other approach deals with files but operates primarily on cluster, sectors, runs, or similar local allocation units which are smaller than files").

Acronis argues that the image may be file-by-file copy, and not just a sector-by-sector or cluster-by-cluster copy, because the word "image" has a broad meaning - i.e., copy or backup - and the '365 patent did not otherwise redefine the term. Acronis asserts that, in fact, the patent equates "image" with "backup" as demonstrated by the following statement found in the specification: "Manufacturers and vendors of computers would often like to provide users with a backup or image of the information they originally loaded on a hard drive." '365 patent, col 3:12-14.

The above statement does indicate that an image may be considered a backup. However, the '365 patent also suggests that "image" and "backup," and their related terms, are not always proxies for one another. For example, the '365 patent makes clear that not all "backups" are done by "imaging." The patent notes that there are two ways to backup computer data: (1) a "file-oriented backup approach," in which "each file is backed up separately," '365 patent, col. 3:20, 35, and (2) an "imaging backup approach," which "restores files but deals primarily in cluster or another file allocation unit which is typically smaller than a file." '365 patent, col. 3:51-55. Although Acronis acknowledges these two means for backup, it conveniently leaves out the fact that the latter approach is deemed an imaging backup approach. The question is whether an "image" - as used in the '365 patent - is created through the imaging backup approach only or may be created through the file-oriented backup approach as well.

Symantec argues the former because the specification expressly states that "[t]he images 302 are created using sector-by-sector or cluster-by-cluster imaging tools and techniques, which may be those already known or those hereafter developed." '365 patent, col. 6:51-53. Acronis, however, notes that, the specification states, in the sentence that immediately follows: "However, some embodiments allow users to select specific subdirectories and/or specific files when creating or restoring an image." '365 patent, col. 6:54-46. According to Acronis, this establishes that an image may be created through a file-oriented approach as well.

While Acronis's argument is not unfounded, the Court is not persuaded. The sentence on which Acronis relies simply reflects that a user is able to select, e.g., a file to be copied for backup, but that does not necessarily mean that the copy is created through a file-by-file backup. As Symantec notes, "while a user may interact with the imaging program and images at the level of files, this has not bearing whatsoever on how those images are created or managed, i.e.[,] at the level of sectors and clusters." Docket No. 166 (Symantec's Supp. Br. at 2) (emphasis added).

To the extent that there is some ambiguity in the sentence pinpointed by Acronis, the extrinsic evidence weighs in favor of Symantec. The specification for the '517 patent (see infra)states that "[a]n 'image' is a blockwise image of computer storage, not a file-by-file backup of computer storage. Sector-by-sector images and cluster-by-cluster images are examples of blockwise images; they are not file-by-file backups." '517 patent, col. 4:55-58. Notably, the application for the '517 patent was filed in September 2004, i.e., only a year after the '365 patent was issued; furthermore, the inventor for the '517 patent is also one of the inventors for the '365 patent. See Acumed LLC v. Stryker Corp., 483 F.3d 800, 816 (Fed. Cir. 2007) (Moore, J., dissenting) (considering as extrinsic evidence of how those skilled in the art would understand a particular term "another patent application filed within a year of the date of issue of the '441 patent," with the inventor being the same as the inventor in the '441 patent); see also IMRA Am., Inc. v. IPG Photonics Corp., No. 06-15139, 2010 U.S. Dist. LEXIS 136394, at *34-35 (E.D. Mich. Dec. 27, 2010) (noting that "a patent from a different patent family cannot be considered 'intrinsic evidence' for purposes of claim construction" but considering the patent - which had the same inventors - as potential extrinsic evidence).

The Court therefore rejects Acronis's construction and, for the most part, adopts Symantec's construction, although it modifies Symantec's construction slightly to make clear that the creation of the image is done on an imaging backup approach: "a copy of data from the partition, excluding the image itself, created using sector-by-sector or cluster-by-cluster imaging tools and techniques and stored within the partition."

c. "locating an image of the partition which is stored in the partition" ('365 patent, claim 50)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +-------------------------+-------------------------+-------------------------¦ ¦ ¦the implementing program ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦finds the image in the ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦partition; ¦ ¦ ¦ ¦ ¦finding the image of the ¦ ¦plain and ordinary ¦or ¦ ¦ ¦meaning; ¦ ¦partition which is stored¦ ¦ ¦the implementing program ¦in the ¦ ¦or ¦ ¦ ¦ ¦ ¦finds the image of the ¦partition; a user may ¦ ¦finding the image of the ¦partition ¦select an ¦ ¦ ¦ ¦ ¦ ¦partition which is stored¦which is stored in the ¦image but the computer ¦ ¦in the ¦ ¦ ¦ ¦ ¦partition; a user may ¦system otherwise does the¦ ¦partition ¦select an ¦ ¦ ¦ ¦ ¦finding ¦ ¦ ¦image so long as the ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦implementing program ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦automatically finds it ¦ ¦ +-----------------------------------------------------------------------------+

As indicated above "image of the partition which is stored in the partition" is an in-partition image. Thus, the only question here is what is meant by the term "locating." The parties' main dispute is "whether 'locating' the image requires the use of an 'implementing program.'" Docket No. 110 (Symantec's Op. Br. at 8).

In its brief, Acronis argues that the locating step must be done by an implementing program as opposed to a user, as evidenced by the language of the claim:

A computer program storage medium having a configuration that represents data and instructions which will cause at least a portion of the computer system to perform method steps for utilizing a partition
within a computer system, the method steps comprising the steps of locating an image of the partition which is stored in the partition, and restoring selected user data from the image to the partition.

To begin restoration, one implementing program checks to see if the system 600 is bootable . . . . If it is, the implementing program tries to locate (image locator 620) at least one image 420. If no image 420 is found, the program returns an error. If more than one image 420 is found, the program returns the names of all images.

In response, Symantec does not dispute that, as a general matter, the locating step is not" performed by a user. See Docket No. 166 (Symantec's Supp. Br. at 6) (indicating that a user may initiate the finding step but that the computer system ultimately carries it out). However, it argues that

[t]he addition of a reference to the implementing program" where none previously exists creates numerous ambiguities. It is not clear whether the implementing program must perform just the "locating" step or whether it must perform the "restoring" step as well. Further, the bounds of the implementing program are unclear. The jury will not know whether the implementing program is limited to a particular subroutine or encompasses the entirety of the code that makes up a backup and recovery product. As Acronis'[s] construction does nothing to help clarify the term, it should be rejected.

The Court agrees with Symantec that inclusion of the term "implementing program" would not be helpful to the jury and in fact might lead to confusion. However, a construction should be given to make clear that the locating step, while it may be initiated by a user, is ultimately performed by the computer system. The Court therefore adopts the following construction: "finding the image of the partition which is stored in the partition; a user may select an image but the computer system otherwise does the finding." This is consistent with the overall language of the claim and specification. The Court notes that reference to the "computer system" will not cause the same confusion as "implementing program" since claim 50 already refers to a computer system. See '365 patent, claim 50 (providing for "[a] computer program storage medium having a configuration that represents data and instructions which will cause at least a portion of the computer system to perform method steps [including the step of locating]").

d. "verifying the consistency and integrity of the image" ('365 patent, claim 52)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +------------------------+---------------------------+------------------------¦ ¦ ¦verifying the consistency .¦ ¦ ¦ ¦. . ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦of the image: verifying ¦ ¦ ¦ ¦that the ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦data in the image was not ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦modified during the imaging¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦process; and verifying ¦ ¦ ¦ ¦the . . . ¦ ¦ ¦ ¦ ¦ ¦ ¦plain and ordinary ¦integrity of the image: ¦ ¦ ¦meaning; ¦ ¦ ¦ ¦ ¦verifying the contents of ¦ ¦ ¦or ¦the ¦checking for errors in ¦ ¦ ¦ ¦the ¦ ¦checking for errors in ¦image by utilizing error ¦ ¦ ¦the ¦ ¦image, for example, by ¦ ¦ ¦checking techniques such as¦using ¦ ¦image, for example, by ¦ ¦ ¦ ¦using ¦checksums, cyclic ¦error checking ¦ ¦ ¦redundancy ¦techniques such ¦ ¦error checking ¦ ¦ ¦ ¦techniques such ¦checks, or other means ¦as checksums, cyclic ¦ ¦ ¦known ¦ ¦ ¦as checksums, cyclic ¦ ¦redundancy checks, or ¦ ¦ ¦to the art; ¦other ¦ ¦redundancy checks or ¦ ¦ ¦ ¦other ¦or ¦means known in the art ¦ ¦ ¦ ¦ ¦ ¦means known in the art ¦verifying the consistency .¦ ¦ ¦ ¦. . ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦of the image: verifying ¦ ¦ ¦ ¦that the ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦data has not been modified;¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦and verifying the . . . ¦ ¦ ¦ ¦integrity ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦of the image: verifying ¦ ¦ ¦ ¦that the ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦data has not been corrupted¦ ¦ +-----------------------------------------------------------------------------+

As a preliminary matter, the parties have a dispute about whether "verifying the consistency" of the image and "verifying the integrity" of the image should be separately construed - i.e., whether "there are two distinct verifications." Docket No. 164 (Acronis's Supp. Br. at 6). Symantec argues that they should not be; Acronis argues to the contrary. Symantec's position is more persuasive. First, other than the use of the two terms in the conjunctive, nothing about the claim language itself suggests that the verification process must be broken into two separate steps. Second, the specification indicates that the verification process is not broken into two separate steps.

In one embodiment, the file system data is verified when it is used, such as before an image is created or updated, after an image is created or updated, and when system data is stored in a separate location such as in a recovery disk or in a diagnostic and recovery partition. The consistency and integrity of the image itself is also verified when used, such as after it is created or updated, and before and after it has been used to restore user data. This can be performed by way of check codes such as checksums or CRC codes embedded in the image files and/or the image container.

Moreover, other parts of the specification do not clearly separate out consistency and integrity. For example:

The verifying step 706 verifies the integrity of the file system data which organizes the user data being placed in the image 420. Note that FIG. 7 shows two additional verifying steps, identified as 722 and 732. The three verifying steps perform the same general task, which is to detect inconsistencies in the data on which the system 600 relies and correct them or otherwise prevent image utilization based on the inconsistencies.

The parts of the specification on which Acronis relies do not much to advance its position. For example, Acronis has construed "verifying the consistency" of the image as "verifying that the data in the image was not modified during the imaging process" (emphasis added) based on a part of the specification that discusses image creation as opposed to image verification. See '365 patent, col. 18:43-50 (stating that "[t]he image 420 must be created when the computer has been put into a state that allows exclusive disk 606 access[;] [t]his prevents inconsistencies in the data (modification during the imaging process) and helps ensure that system information such as the Microsoft Windows registry are closed . . . and so can be imaged"). Acronis's constructions are not persuasive.

Instead, the Court adopts the alternative construction proposed by Symantec. The alternative construction is consistent with the language of the specification. See '365 patent, col. 5:62-67 (noting that "[t]he consistency and integrity of the image itself is also verified when used" and that "[t]his can be performed by way of check codes such as checksums or CRC does embedded in the image files and/or the image container"); '365 patent, col. 16:6-9 (stating that "[t]he image verifier 622 may also check the integrity of the contents of an image file by utilizing error checking techniques such as check sums, cyclic redundancy checks or other means known to the art"). D. '086 Patent

1. Claims

The parties are in general agreement that the invention in the '086 patent is directed to "backup and disaster recovery mechanisms in computer systems," particularly those involving virtual machines. '086 patent, col. 1:9-10.

The claims in the '086 patent that are at issue in this litigation are as follows: 11 and 22. Claim 11 is representative of both claims.

Claim 11 is dependent on claim 1. Claim 1 provides as follows (with terms to be construed in bold):

1. A computer readable medium storing a plurality of instructions comprising instructions which, when executed:
(i) capture a state of a first virtual machine executing on a first computer system, the state of the first virtual machine corresponding to a point in time in the execution of the first virtual machine, wherein the first virtual machine comprises at least one virtual disk storing at least one file used by at least one application executing in the first virtual machine, and wherein the state of the first virtual machine comprises the at least one file; and
(ii) copy at least a portion of the state to a destination separate from a storage device to which the first virtual machine is suspendable, wherein suspending the first virtual machine is performed responsive to a suspend command.

Claim 11 in turn provides as follows:

11. The computer readable medium as recited in claim 1 wherein (i) comprises creating a new log of uncommitted updates for each virtual disk in the first virtual machine and creating a memory area to capture writes to a memory of the first virtual machine, such that the first virtual machine can continue executing during (ii).

2. Terms

a. "a state of a first virtual machine" ('086 patent, claims 11, 22)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's ¦ ¦ ¦ ¦Construction ¦ +-------------------------+-------------------------------+-------------------¦ ¦ ¦a snapshot, at a specific point¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦of time, of all of the ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦information required to ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦recreate a first virtual ¦ ¦ ¦plain and ordinary ¦machine ¦ ¦ ¦meaning ¦ ¦plain meaning ¦ ¦ ¦and restore the programs and ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦data running within the first ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦virtual machine at that ¦ ¦ ¦ ¦specific ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦point of time ¦ ¦ +-----------------------------------------------------------------------------+

As Symantec argues, Acronis's proposed construction is problematic because it contains language contrary to or at least in tension with the language of the claims. For example, claim 1 states in relevant part as follows:

capture a state of a first virtual machine executing on a first computer system, the state of the first virtual machine corresponding to a point in time in the execution of the first virtual machine, wherein the first virtual machine comprises at least one virtual disk storing at least one file used by at least one application executing in the first virtual machine, and wherein the state of the first virtual machine comprises the at least one file . . . .

Moreover, because the claim on its face already identifies what comprises the "state of the first virtual machine," the Court declines to adopt any additional construction for the term.

b. "suspending" (including the related term suspendable) ('086 patent, claims 11, 22)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +-----------------------+---------------------------+-------------------------¦ ¦ ¦to pause the execution of a¦ ¦ ¦ ¦ ¦temporarily preventing ¦ ¦temporarily preventing ¦system and capture its ¦from ¦ ¦from ¦state so ¦ ¦ ¦ ¦ ¦executing, until ¦ ¦executing ¦that execution can be ¦execution is ¦ ¦ ¦resumed ¦ ¦ ¦ ¦ ¦resumed ¦ ¦ ¦later ¦ ¦ +-----------------------------------------------------------------------------+

Symantec has two points of contention with Acronis's construction: (1) that it requires a pausing in the execution of the system (as opposed to the first virtual machine) and (2) that is requires "capturing" (which is covered in step (i), not in step (ii)). Both of these criticisms have merit.

First, the claims refer to a first virtual machine being suspended, not a computer system. See, e.g., '086 patent, claim 1 (providing for "copy[ing] [of] at least a portion of the state to a destination separate from a storage device to which the first virtual machine is suspendable, wherein suspending the first virtual machine is performed responsive to a suspend command"). Notably, in its responsive brief, Acronis concedes that it is the virtual machine that is being suspended. See Docket No. 121 (Acronis's Resp. Br. at 13) (stating that "[t]he term means to pause and also to capture the state of the machine so that the machine may be resumed after the pause"; also stating that "Symantec distinguished prior art that stored periodic 'checkpoints' to restore after a failure from the claimed 'suspending' in which the patent system pauses the system (i.e., virtual machine) and saves the state so it can resume again") (emphasis added).

Second, suspension of the first virtual machine is discussed in the "copying" step and not the "capturing" step:

1. A computer readable medium storing a plurality of instructions comprising instructions which, when executed:
(i) capture a state of a first virtual machine executing on a first computer system, the state of the first virtual machine corresponding to a point in time in the execution of the first virtual machine, wherein the first virtual machine comprises at least one virtual disk storing at least one file used by at least one application executing in the first virtual machine, and wherein the state of the first virtual machine comprises the at least one file; and
(ii) copy at least a portion of the state to a destination separate from a storage device to which the first virtual machine is suspendable, wherein suspending the first virtual machine is performed responsive to a suspend command.

While the Court rejects the above limitations proposed by Acronis, it does incorporate some of the language suggested - i.e., the language related to resuming. Notably, Symantec's opening brief conceded that there is a "resume" component. See Docket No. 110 (Symantec's Op. Br. at 14) (stating that "the specification describes that suspending a virtual machine temporarily prevents it from executing until it is resumed"). The Court therefore adopts the following construction: "temporarily preventing from executing, until execution is resumed."

c. "a destination separate from the storage device to which the first virtual machine is suspendable" ('086 patent, claims 11, 22)

+----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +-------------------------+------------------------+-------------------------¦ ¦a destination separate ¦a location that is not ¦ ¦ ¦from a ¦on any ¦ ¦ ¦ ¦ ¦ ¦ ¦storage device on which ¦storage device to which ¦ ¦ ¦the ¦the ¦ ¦ ¦ ¦ ¦ ¦ ¦state of the first ¦virtual machine is ¦ ¦ ¦virtual ¦ ¦ ¦ ¦ ¦suspendable; ¦ ¦ ¦machine is stopped when ¦ ¦ ¦ ¦the ¦or ¦ ¦ ¦ ¦ ¦a destination separate ¦ ¦first virtual machine is ¦a location that is not ¦from the ¦ ¦ ¦on any ¦ ¦ ¦temporarily prevented ¦ ¦storage device that is ¦ ¦from ¦storage device to which ¦ ¦ ¦ ¦the ¦configured or would be ¦ ¦executing; ¦ ¦ ¦ ¦ ¦virtual machine is ¦configured to be the ¦ ¦or ¦capable of ¦target of ¦ ¦ ¦ ¦ ¦ ¦a destination separate ¦being suspended; ¦the suspension at the ¦ ¦from the ¦ ¦time a ¦ ¦ ¦or ¦ ¦ ¦storage device that is ¦ ¦state of the first ¦ ¦ ¦a location that is not ¦virtual ¦ ¦configured or would be ¦on any ¦ ¦ ¦ ¦ ¦machine is captured ¦ ¦configured to be the ¦storage device where the¦ ¦ ¦target of ¦ ¦ ¦ ¦ ¦computer is able to save¦ ¦ ¦the suspension at the ¦the ¦ ¦ ¦time a ¦ ¦ ¦ ¦ ¦state of a virtual ¦ ¦ ¦state of the first ¦machine in ¦ ¦ ¦virtual ¦ ¦ ¦ ¦ ¦response to a suspend ¦ ¦ ¦machine is captured ¦ ¦ ¦ ¦ ¦command ¦ ¦ +----------------------------------------------------------------------------+

Acronis argues that its construction is more appropriate because it gives weight to the claim's use of the word "suspendable," which means capable of being suspended. According to Acronis, because "suspendable" is used in the claim, any place where the state of the first virtual machine may be saved is "off limits" for the backup copy. See Docket No. 164 (Acronis's Supp. Br. at 7); see also http://www.oed.com/view/Entry/195154?redirectedFrom=suspendible#eid (last visited January 7, 2013) (defining "suspendible" as "[c]apable of being, or liable to be, suspended"). In response, Symantec agrees that, in principle, the copy must be on a device different from that where the state of the first virtual machine is stored. Symantec's concern, however - as articulated at the hearing and in its supplemental brief - is that, under Acronis's construction, "any device could theoretically be a device the computer system is 'able to' suspend the state of the virtual machine to." Docket No. 166 (Symantec's Supp. Br. at 5-6) (emphasis in original).

The Court agrees with Symantec's criticism. Although "suspendable" means capable of being suspended, the term still needs to be taken in context. Claim 1 covers both a situation where there is suspending and a situation where there is not suspending, and thus the patentee used the term "suspendable." Compare '086 patent, claim 11 (covering the situation where there is not suspending only; providing that "the first virtual machine can continue executing during (ii)"). Symantec's alternative construction is more consistent with this concept of "suspendable" when viewed in context. E. '517 Patent

1. Claims

The '517 patent provides for "[m]ethods . . . for retargeting captured images to new hardware. An image taken from a computer having hardware drivers and other system operation in one hardware configuration can be modified to adapt it for use on a computer having different hardware requiring different drivers." '517 patent, abstract.

The claims in the '517 patent that are at issue in this litigation are as follows: 1, 7, 39, and 41. Claims 1 and 39 (both independent) are exemplary of the claims asserted by Symantec. The text of these claims is provided below, with terms to be construed in bold.

a. Claim 1
1. A computer-implemented method for retargeting a captured image for new hardware, comprising:
identifying an image captured from a source computer;
obtaining target computer information, the target computer information identifying new hardware for a target computer that is not presently installed on the source computer; and
while in a pre-boot environment, modifying the image to match the new hardware identified in the target computer information.
b. Claim 39
39. A system comprising:
a new hardware computer;
a computerized source of hardware information about the new hardware computer;
a local storage device of the new hardware computer which contains an image captured from an old hardware computer, the image not presently deployed on the new hardware computer;
system support information for new hardware of the new hardware computer, the system support information corresponding to at least a portion of the hardware information about the new hardware; and
a retargeting program which is capable of retargeting the image in a pre-boot environment to make the image include at least a portion of the system support information.

2. Terms

a. "[while] in a pre-boot environment" ('517 patent, claims 1, 7, 39)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +--------------------+--------------------------------+-----------------------¦ ¦ ¦ ¦while in an environment¦ ¦ ¦ ¦on a ¦ ¦while a pre-boot ¦ ¦ ¦ ¦program is ¦ ¦computer during ¦ ¦ ¦ ¦execution of ¦ ¦running that permits¦a computer, before it has ¦ ¦ ¦only ¦ ¦a pre-boot program, a ¦ ¦ ¦booted, running a program that ¦pre-boot ¦ ¦limited operation of¦ ¦ ¦ ¦the ¦permits only limited operation ¦program being one that ¦ ¦ ¦ ¦ ¦ ¦computer and limited¦of the computer ¦permits only limited ¦ ¦device ¦ ¦operation ¦ ¦ ¦ ¦ ¦ ¦support ¦ ¦of the computer and ¦ ¦ ¦ ¦limited ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦device support ¦ +-----------------------------------------------------------------------------+

The specification expressly defines what a "pre-boot environment" means - i.e., "an environment on a computer during execution of a pre-boot program." '517 patent, col. 5:7-8. What a pre-boot program is is also explained by the specification:

"Pre-boot programs" permit only limited operation of the computer, and are used to perform operations such as diagnostics or boot image downloads. Pre-boot programs provide only limited device support, e.g., by providing device drivers only for the display, network, and local storage devices. Full operation of the computer requires more functionality than the pre-boot program supplies; the increased functionality can be provided by fully booting an image of a complete operating system, for instance.

In its brief, Acronis points out that the specification states as follows with respect to booting:

"Booting" a computer means causing the computer to at least begin running low-level software, such as a system diagnostic, a pre-boot program, or an operating system. A booted environment is one in which booting ends by passing control to users through a command interface, or to application programs through a script or the like.

The Court adopts the following construction which is similar to Symantec's but which more closely adheres to the language used in the specification: "while in an environment on a computer during execution of a pre-boot program, a pre-boot program being one that permits only limited operation of the computer and limited device support."

b. "the image not presently deployed on the new hardware computer" ('517 patent, claim 39)

+-----------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦SBW Proposed Construction ¦ +----------------------------+-------------+----------------------------¦ ¦not presently running an ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦operating system obtained ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦from inside the image of the¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦old hardware computer on the¦ ¦not presently running an ¦ ¦ ¦ ¦ ¦ ¦new hardware computer; ¦ ¦operating system from inside¦ ¦ ¦plain meaning¦ ¦ ¦or ¦ ¦the image on the new ¦ ¦ ¦ ¦ ¦ ¦not presently running an ¦ ¦hardware computer ¦ ¦ ¦ ¦ ¦ ¦operating system obtained ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦from inside the image on the¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦new hardware computer ¦ ¦ ¦ +-----------------------------------------------------------------------+

The specification states as follows regarding the term "deploying":

"[D]eploying" an image on a given computer means running an operating system obtained from inside the image. Merely copying an image into a computer's local storage does not deploy the image, although the image must be on the computer before it can be deployed. . . . One way to deploy an image onto a computer is to copy the image onto the computer and to then boot into the image, which passes control of the computer to the image's operating system.

Based on its brief, Acronis seems to have objected to Symantec's construction because it uses "extraneous language" and "unnecessary . . . verbiage." Docket No. 121 (Acronis's Resp. Br. at 17). Acronis asserts: "Were Symantec genuinely interested in preserving the integrity of its definition, it would have simply defined the phrase as 'the image not presently running an operating system from inside the image on the new hardware computer.'" Docket No. 121 (Acronis's Resp. Br. at 17) (emphasis in original). It appears that, thereafter, Symantec tried to see if the parties could compromise by proffering the following construction: "'not presently running an operating system obtained from inside the image on the new hardware computer.'" Horan Reply Decl., Ex. A (email). Symantec explained that "[w]e deleted 'the image' from Acronis'[s] proposed construction because, after reflection, we do not believe that it is accurate to state that the image runs an operating system." Horan Reply Decl., Ex. A (e-mail). Acronis rejected the compromise, however, simply sticking to its position that the plain meaning should be adopted. But where "it is not at all self-evident from a lay perspective what the meaning of [a term] is, and furthermore, [where] there is some disagreement between the parties as to [the] precise meaning [of a term]," it "cannot simply be left for the jury" but rather "must be construed." Rambus, 2012 U.S. Dist. LEXIS 138632, at *26-27.

Because Symantec's compromise construction is reasonable and entirely consistent with the specification, the Court hereby adopts it. F. '655 Patent

1. Claims

The parties are in general agreement that "[t]he '655 patent is directed to a backup system that utilizes a 'catalog' containing information as to where the backed-up data objects are located." Docket No. 121 (Acronis's Resp. Br. at 17); see also '655 patent, Abstract (describing "[s]ynthesized backup set catalogs," which are "created to more efficiently create synthetic full backups of a data volume or to more efficiently restore a data object of the data volume").

The only claim in the '655 patent that is at issue in this litigation is claim 7. Claim 7 provides as follows (with terms to be construed in bold):

7. A computer readable medium storing instructions executable by a computer system, wherein the computer system implements a method in response to executing the instructions, the method comprising:
creating a first backup of a data volume, wherein the data volume comprises first and second data objects;
creating a second backup of the data volume after modification of the second data object but before modification of the first data object;
creating a catalog after modification of the second data object but before modification of the first data object, wherein the catalog contains information indicating that backup copies of the first and second data objects are contained in the first and second backups, respectively.

2. Terms

a. "catalog" ('655 patent, claim 7)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦SBW Proposed ¦ ¦ ¦ ¦Construction ¦ +--------------------------+----------------------------+---------------------¦ ¦ ¦a list containing a separate¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦entry for each file in the ¦ ¦ ¦data structure identifying¦data ¦ ¦ ¦the ¦ ¦ ¦ ¦ ¦volume; ¦ ¦ ¦locations of backed-up ¦ ¦ ¦ ¦data ¦or ¦ ¦ ¦ ¦ ¦ ¦ ¦objects enabling synthesis¦a list containing a separate¦ ¦ ¦of a ¦ ¦ ¦ ¦ ¦entry for each data object ¦ ¦ ¦full backup; ¦in ¦ ¦ ¦ ¦ ¦ ¦ ¦or ¦the data volume; ¦plain meaning ¦ ¦ ¦ ¦ ¦ ¦data structure identifying¦or ¦ ¦ ¦the ¦ ¦ ¦ ¦ ¦a list containing a separate¦ ¦ ¦locations of backed-up ¦ ¦ ¦ ¦data ¦entry for each file in the ¦ ¦ ¦ ¦data ¦ ¦ ¦objects used to synthesize¦ ¦ ¦ ¦a ¦volume and identifying the ¦ ¦ ¦ ¦ ¦ ¦ ¦full backup ¦location of each file in the¦ ¦ ¦ ¦data ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦volume ¦ ¦ +-----------------------------------------------------------------------------+

There are various disputes between the parties over the construction of the term "catalog." The critical ones boil down to (1) whether a catalog must be a list and (2) whether a catalog must have a separate entry for each data object.

The Court agrees with Symantec that there is nothing about the invention that suggests that a catalog must be in the form of a list - i.e., being a list is not an essential feature. See Docket No. 127 (Symantec's Reply at 11-12). Notably, Acronis has pointed to only one part of the specification that is suggestive of the word "list": "When the backup server 18 creates the full backup set 1, backup server 18 also creates catalog 36(1) listing the files copied to tape 32(1)." '655 patent, col. 3:21-23. Even if this statement were enough to equate the term "catalog" with "list," "list" in and of itself is hardly more illuminating than the word "catalog."

The slightly harder question is whether a catalog must have a separate entry for each data object. Acronis contends that there must be separate entries in order for the invention claimed to be practiced: "[H]aving a list containing a separate entry for each file permits the system to avoid using multiple catalogs (the goal of the patent) and access 'only one synthesized catalog to learn the location within the backup sets of all files needed to create the synthetic full backup." Docket No. 121 (Acronis's Resp. Br. at 19) (emphasis added). Acronis also points to places in the specification where a catalog is composed of "n entries corresponding to the n files [or data objects]." '655 patent, col. 7:18-19; see also '655 patent, col. 3:23-24 (stating that, "[a]s shown in FIG. 3, catalog 36(1) includes n entries corresponding to the n files [or data objects]"). But nowhere does Symantec point to anywhere in the specification which states that the invention or the present invention consists of a catalog composed of n entries corresponding to the n files. See American Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1366 (Fed. Cir. 2010) (noting that "we have repeatedly held that 'the use of the words "the present invention" can be read to limit the invention to what is described as such'"); Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (noting that "a fuel filter was not merely discussed as a preferred embodiment"; rather, "[o]n at least four occasions, the written description refers to the fuel filter as 'this invention' or 'the present invention'"). In fact, as Symantec points out, the specification actually states in the "Summary of the Invention" section, that, "[i]n one embodiment, the synthesized backup set catalog comprises n entries corresponding to n data objects." '655 patent, col. 5:16-17 (emphasis added). To the extent Acronis argues that the fact of only one embodiment suggests that limitations in that embodiment are inherent in the invention, that argument is without merit. The Federal Circuit has expressly rejected the assertion that, "where only one embodiment is disclosed in the specification, claim terms are [necessarily] limited to the embodiment disclosed." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002). Indeed, the Federal Circuit has stated that, "even where a patent describes only a single embodiment, claims will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1117 (Fed. Cir. 2004) (internal quotation marks omitted); see also Teleflex, 299 F.3d at 1328 (Fed. Cir. 2002) (noting that "[t]he record is devoid of 'clear statements of scope' limiting the term appearing in claim 1 to having 'a single pair of legs'"). No such intention is established here. Finally, it is worth noting that Acronis could have, but did not, offer any expert evidence to support its contention that a catalog must have n entries corresponding to n file in order for the invention to work.

Accordingly, the Court declines to adopt any of the constructions offered by Acronis. The Court, however, also declines to adopt either of Symantec's constructions. The term "data structure" as used by Symantec is not a helpful definition; as for Symantec's description of what the catalog does, that is essentially covered in the language of the claim. See Atser Research Techs., Inc. v. Raba-Kistner Consultants, Inc., No. SA-07-CA-93-H, 2009 U.S. Dist. LEXIS 25294, at *31-32 (W.D. Tex. Mar. 2, 2009) (rejecting defendant's construction of the term "client computer" because it "includ[ed] the surrounding words of the claim" which was "redundant and unnecessary").

Accordingly, the Court declines to provide a construction for the term "catalog" other than to reject the limitations proposed by Acronis.

b. "creating a catalog" ('655 patent, claim 7)

+------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction¦ +--------------------------+------------------------+--------------------¦ ¦plain and ordinary meaning¦generating a new catalog¦plain meaning ¦ +------------------------------------------------------------------------+

Here, the parties' dispute is whether Acronis's inclusion of the word "new" is appropriate. Symantec argues that it is not. According to Symantec, it is "contrary to the teachings of the specification, which explicitly contemplates creating a catalog by modifying a previously existing catalog." Docket No. 110 (Symantec's Op. Br. at 21). In support, Symantec cites the following part of the specification:

Information from a previously created synthesized catalog is carried forward or copied to create the newest synthesized catalog. For example, synthetic catalog 116(2) may be created by copying the contents of synthetic catalog 116(1) and then overwriting entry 2 with the new entry 2 shown in catalog 116(2).

In response, Acronis does not dispute that generation of a catalog can be related to a previously existing catalog. "The term 'new' simply means that the catalog did not exist previously." Docket No. 121 (Acronis's Resp. Br. at 20). Acronis also points out that the specification above also uses "new" language - i.e., "carried forward or copied to create the newest synthesized catalog." '655 patent, col. 7:62-63 (emphasis added).

At the end, the issue is really whether the term "new" can be misleading. The Court agrees with Symantec that it could be. Indeed, Symantec has pointed out that at least one dictionary definition for "new" (admittedly, the fifth definition) is "different from one of the same category that has existed previously." Horan Decl., Ex. B (definition from Merriam-Webster's Collegiate Dictionary).

Accordingly, the Court declines to construe the term "creating a catalog," other than to indicate that Acronis's construction is not proper. The Court need not define "creating" as the parties do not appear to have a dispute as to what that term means.

c. "information indicating that backup copies of the first and second data objects are contained in the first and second backups, respectively" ('655 patent, claim 7)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's ¦ ¦ ¦ ¦Construction ¦ +-------------------------+-------------------------------+-------------------¦ ¦ ¦information specifying the ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦location of the backup copy of ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦the first data object within ¦ ¦ ¦ ¦the ¦ ¦ ¦plain and ordinary ¦ ¦plain meaning ¦ ¦meaning ¦first backup and specifying the¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦location of the backup copy of ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦the second data object within ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦the second backup ¦ ¦ +-----------------------------------------------------------------------------+

Claim 7 provides that the catalog contains "the information indicating that backup copies of the first and second data objects are contained in the first and second backups, respectively." '655 patent, claim 7. As Symantec argues, it appears that "[t]he only change that Acronis'[s] construction provides is to add the requirement that the information must 'specify the location' within the respective backups where the information is located. But the plain language only requires that the information identifies that the first backup contains the first data object and the second backup contains the second data object." Docket No. 127 (Symantec's Reply at 13) (emphasis in original). "[T]here is no reason why the location information could not be included in another location, such as within the backup itself." Docket No. 127 (Symantec's Reply at 14).

The cites that Acronis provides to the specification do not establish otherwise. While a catalog may contain information providing "the location within the backup sets of all files needed to create the synthetic full backup," '655 patent, cols. 8:67-9:1 (emphasis added), as Symantec argues, it need not.

Accordingly, the Court does not construe the term, other than to indicate that Acronis's construction is not proper.

d. "backup of [a/the] data volume" ('655 patent, claim 7)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +------------------------+---------------------------+------------------------¦ ¦ ¦a copy of all the files in ¦ ¦ ¦ ¦the ¦ ¦ ¦collection of data from ¦ ¦collection of data from ¦ ¦a data ¦data volume; ¦a data ¦ ¦ ¦ ¦ ¦ ¦volume for purposes of ¦or ¦volume for purposes of ¦ ¦ ¦ ¦ ¦ ¦recovery ¦a copy of all the data ¦recovery ¦ ¦ ¦objects in ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦the data volume ¦ ¦ +-----------------------------------------------------------------------------+

Acronis takes the position that a backup must include all the files or data objects in the data volume. In contrast, Symantec takes the position that a backup can include all the files or data objects or it can include less than all the files or data objects. In other words, Symantec's contention is that the generic term "backup" broadly includes all backups - full backups as well as partial or incremental backups.

Symantec's argument is more persuasive. Its assertion that backups includes all backups, whether full or partial/incremental, is supported by the specification:

Backup operations create backup sets (i.e., copies of one or more files of the data volume) that may be either full or incremental. A full backup set means that all of the files in the data volume are copied, regardless of how recently they have been modified or whether a previous backup set exists. An incremental backup means that only files of the data volume that have been changed since some previous event (e.g., a prior full backup or incremental backup) are copied.

Accordingly, the Court rejects Acronis's construction and adopts Symantec's instead.

e. "computer readable medium storing instructions executable by a computer system" ('655 patent, claim 7)

+-----------------------------------------------------------------------------+ ¦Symantec ¦Acronis ¦Court's Construction ¦ +-----------------------+---------------------------+-------------------------¦ ¦ ¦hardware storage elements, ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦such as RAM and disk ¦ ¦ ¦ ¦ ¦[construing only the term¦ ¦ ¦memory, containing the ¦ ¦ ¦ ¦ ¦"computer readable ¦ ¦ ¦instructions that are ¦medium"] ¦ ¦ ¦executed ¦ ¦ ¦plain and ordinary ¦ ¦hardware storage ¦ ¦meaning ¦by a computer system, but ¦elements, ¦ ¦ ¦ ¦ ¦ ¦ ¦does not include ¦such as (but not limited ¦ ¦ ¦transmission ¦to) ¦ ¦ ¦ ¦ ¦ ¦ ¦medium, carrier waves or ¦RAM and disk memory ¦ ¦ ¦the ¦ ¦ ¦ ¦ ¦ ¦ ¦ ¦like ¦ ¦ +-----------------------------------------------------------------------------+

Here, the parties' basic dispute is over what "computer readable medium" means. Acronis takes its construction from a statement that the patent examiner made during prosecution - i.e., that "'computer readable medium' is taken to mean hardware storage elements such as RAM, Disk memory, etc. The 'computer readable medium' would not include 'transmission medium,' 'carrier waves,' or the like." Docket No. 121 (Acronis's Resp. Br., Ex. A at 5)). Acronis emphasizes that the patent applicant was silent in response to the examiner's statement which leads to a presumption that it agreed with the examiner's understanding of the term. See Docket No. 121 (Acronis's Resp. Br. at 23 & nn.17-18).

In response, Symantec does not dispute that Acronis's definition is technically correct, see, e.g., Docket No. 127 (Symantec's Reply at 15) (agreeing that "'computer readable medium' does not include transmission media such as carrier waves"), but argues that it will only end up confusing the jury, in particular, by providing new terms such as "transmission medium" and "carrier waves." Symantec also argues that the Acronis has provided a "non-exclusive list of computer-readable media that could be used" which could further be confusing. See Cisco Sys. v. Teleconference Sys., LLC, No. C 09-01550 JSW, 2011 U.S. Dist. LEXIS 136328, at *26-27 (N.D. Cal. Nov. 23, 2011) (agreeing with Defendants that "Plaintiffs' construction to the extent it includes an unexhausted list of examples of . . . subscriber-specific settings [is] unnecessary and confusing to the jury"; "therefore reject[ing] Plaintiffs' proposed construction to the extent they include examples of such settings").

The Court is sympathetic to Symantec's first argument. "Transmission medium" and "carrier waves" are undefined terms, and they do not appear to be anywhere in the patents. However, the Court does not see a jury being confused if some examples of computer storage media are provided, especially if it is made clear that these are nonexhaustive examples. At the very least, a jury might find it helpful to know that a "computer readable medium" is a hardware storage element. The Court therefore adopts the following construction for the term "computer readable medium" only (which is the only portion of the above that is in dispute): "hardware storage elements, such as (but not limited to) RAM and disk memory."

II. CONCLUSION

The disputed claim terms of the patents-in-suit are hereby construed as set forth above.

IT IS SO ORDERED.

____________________

EDWARD M. CHEN

United States District Judge