United States District Court, D. Massachusetts
ACTIFIO, INC., Plaintiff: Chi Cheung, Priyen N. Patel, LEAD
ATTORNEY, PRO HAC VICE, Latham & Watkins LLP, New York, NY;
David F. Kowalski, LEAD ATTORNEY, PRO HAC VICE, Latham &
Watkins, LLP, San Diego, CA; Kyle A. Virgien, LEAD ATTORNEY,
PRO HAC VICE, Latham & Watkins LLP, San Francisco, CA;
Maximilian A. Grant, LEAD ATTORNEY, PRO HAC VICE, Latham &
Watkins LLP (DC), Washington, DC; S. Giri Pathmanaban,
Yasamin Parsafar, LEAD ATTORNEY, PRO HAC VICE, Latham &
Wakins LLP, Menlo Park, CA; Steven J. Pacini, LEAD ATTORNEY,
Latham & Watkins LLP, Boston, MA.
DELPHIX CORP., Defendant: Eman Sojoodi, LEAD ATTORNEY, PRO
HAC VICE, Fenwick & West LLP, San Francisco, CA; Heather B.
Repicky, LEAD ATTORNEY, Alison C. Casey, Nutter, McClennen &
Fish, LLP, Boston, MA; J. David Hadden, Phillip J. Haack,
Saina S. Shamilov, LEAD ATTORNEY, PRO HAC VICE, Fenwick &
West, LLP, Mountain View, CA.
DELPHIX CORP., Counter Claimant: Eman Sojoodi, LEAD ATTORNEY,
PRO HAC VICE, Fenwick & West LLP, San Francisco, CA; Heather
B. Repicky, LEAD ATTORNEY, Nutter, McClennen & Fish, LLP,
Boston, MA; J. David Hadden, Phillip J. Haack, Saina S.
Shamilov, LEAD ATTORNEY, PRO HAC VICE, Fenwick & West, LLP,
Mountain View, CA.
ACTIFIO, INC., Counter Defendant: Chi Cheung, LEAD ATTORNEY,
PRO HAC VICE, Latham & Watkins LLP, New York, NY; David F.
Kowalski, LEAD ATTORNEY, PRO HAC VICE, Latham & Watkins, LLP,
San Diego, CA; Kyle A. Virgien, LEAD ATTORNEY, PRO HAC VICE,
Latham & Watkins LLP, San Francisco, CA; Maximilian A. Grant,
LEAD ATTORNEY, PRO HAC VICE, Latham & Watkins LLP (DC),
Washington, DC; S. Giri Pathmanaban, Yasamin Parsafar, LEAD
ATTORNEY, PRO HAC VICE, Latham & Wakins LLP, Menlo Park, CA;
Steven J. Pacini, LEAD ATTORNEY, Latham & Watkins LLP,
J. Casper, United States District Judge.
Actifio, Inc. (" Actifio" ) alleges that Defendant
Delphix Corp. (" Delphix" ) infringes certain
claims of U.S. Patent Nos. 8,299,944 (" '9944
patent" ), 8,788,769 (" '769 patent" ) and
8,904,126 (" '126 patent" ) (collectively, the
" Patents-in-Suit" ). The parties now seek
construction of five disputed claim terms. After extensive
briefing and a Markman hearing, the Court's claim
lawsuit involves patents addressing virtual data management,
storage and backup. D. 67-1 ('9944 patent), 67-2
('769 patent), 67-3 ('126 patent); see Actifio,
Inc. v. Delphix Corp., No. 14-cv-13247-DJC, 2015 WL
1243164, at *4 (D. Mass. Mar. 17, 2015) . Actifio alleges
that Delphix's " Agile Data Platform" products
and services infringe one or more of the claims of the
Patents-in-Suit. D. 67 ¶¶ 18, 22-23, 35-36, 41-42. The
Patents-in-Suit share similar specifications and incorporate
each other by reference. '9944 patent, 1:16-23; '769
patent, 1:15-18, 1:30-33; '126 patent, 1:16-19, 36-38.
All the Patents-in-Suit were filed on November 16, 2010. D.
67-1 at 1; D. 67-2 at 1; D. 67-3 at 1. The '9944 patent
issued on October 30, 2012, D. 67 ¶ 15, the '769 patent
issued on July 22, 2014, id. ¶ 16, and the '126 patent
issued on December 2, 2014, id. ¶ 17.
instituted this action on August 6, 2014. D. 1. On August 22,
2014, Delphix moved to dismiss, stay or transfer the action
to the Northern District of California. D. 7. The Court
denied that motion, D. 54, and a history of the litigation
between the parties is outlined in the Court's Order on
that motion. See Actifio, 2015 WL 1243164, at **2-3. Actifio
filed an assented-to amended complaint on April 14, 2015. D.
67. After claim construction briefing, the Court held a
Markman hearing on November 19, 2015 and took the matter
under advisement. D. 110. Later that day, without leave of
the Court, Delphix filed a " Supplemental Claim
Construction Submission" which included the arguments it
presented at the Markman hearing. D. 111. Actifio filed a
reply and requested Delphix's submission be stricken, D.
112, and Delphix opposed, D. 115. Considering the parties
have had an opportunity to respond to each other's
post-hearing filings, the Court considers all of the
submissions here and denies Actifio's motion to
strike the supplemental submission filed by Delphix.
Standard of Review
established by the Supreme Court, construction of disputed
claim terms is a question of law for the Court. Markman
v. Westview Instruments, Inc., 517 U.S. 370, 372, 116
S.Ct. 1384, 134 L.Ed.2d 577 (1996). This Court must construe
" the meaning that the term would have to a person of
ordinary skill in the art in question at the time of . . .
the effective filing date of the patent application."
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en banc). In doing so, the Court must look to
" 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."
Id. at 1314 (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116
(Fed. Cir. 2004)) (internal quotation marks omitted).
construction begins with the words of the claims themselves
where " the claims of a patent define the invention to
which the patentee is entitled the right to exclude."
Id. at 1312 (quoting Innova, 381 F.3d at
1115) (internal quotation marks omitted). Claims " are
generally given their ordinary and customary meaning"
and can " provide substantial guidance as to the meaning
of particular claim terms." Id. at 1312, 1314
(quoting Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996)) (internal quotation marks
omitted). " [T]he context in which a term is used in the
asserted claim can be highly instructive." Id.
at 1314. A claim itself may provide the means for construing
a term where, for instance, the claim term is consistently
used throughout the patent. Id. As such, " the
meaning of a term in one claim is likely the meaning of that
same term in another." Abbott GmbH & Co., KG v.
Centocor Ortho Biotech, Inc., No. 09-cv-11340-FDS, 2011
WL 948403, at *3 (D. Mass. Mar. 15, 2011) (citing Phillips,
415 F.3d at 1314). Notably, " the presence of a
dependent claim that adds a particular limitation gives rise
to a presumption that the limitation in question is not
present in the independent claim." Phillips, 415 F.3d at
are not to be read alone, but " are part of 'a fully
integrated written instrument,' consisting principally of
a specification that concludes with the claims."
Id. (citation omitted). " Usually, [the
specification] is dispositive; it is the single best guide to
the meaning of a disputed term." Id. (quoting
Vitronics, 90 F.3d at 1582) (internal quotation mark
omitted). The specification, as the patentee's
description of the invention, defines " the scope and
outer boundary" of the claims and, thus, " claims
cannot be of broader scope than the invention that is set
forth in the specification." On Demand Mach. Corp.
v. Ingram Indus., Inc., 442 F.3d 1331, 1338-40 (Fed.
Cir. 2006). In looking to the specification in interpreting
the meaning of a claim, the Court must be careful not to
" import[ ] limitations from the specification into the
claim." Phillips, 415 F.3d at 1323. This
standard may " be a difficult one to apply in
practice," Id., but " [t]he construction
that stays true to the claim language and most naturally
aligns with the patent's description of the invention
will be, in the end, the correct construction,"
id. at 1316 (quoting Renishaw PLC v. Marposs
Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
The Prosecution History
looking to the claims themselves and the specification,
" a court should also consider the patent's
prosecution history, if it is in evidence." Id.
at 1317 (citation and internal quotation marks omitted). The
prosecution history, as evidence of how the inventor
understood the patent, " can often inform the meaning of
the claim language by demonstrating how the inventor
understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim
scope narrower than it would otherwise be." Id.
(citing Vitronics, 90 F.3d at 1582-83). Because the
prosecution history " often lacks  ...