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Actifio, Inc. v. Delphix Corp.

United States District Court, D. Massachusetts

December 11, 2015

ACTIFIO, INC., Plaintiff,
v.
DELPHIX CORP., Defendants

Page 118

          For 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.

         For 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.

         For 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.

         For 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, Boston, MA.

Page 119

         MEMORANDUM AND ORDER

         Denise J. Casper, United States District Judge.

         I. Introduction

         Plaintiff 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 construction follows.

         II. Patents-in-Suit

         This 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.

         III. Procedural History

         Actifio 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

Page 120

strike the supplemental submission filed by Delphix.

         IV. Standard of Review

         As 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).

         A. The Claims

         Claim 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 1315.

         B. The Specification

         Claims 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. 1998)).

Page 121

         C. The Prosecution History

         After 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 [] ...


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