A Blog About Intellectual Property Litigation and the District of Delaware

Not this kind of
Not this kind of "virtual" Lucrezia Carnelos, Unsplash

Yesterday, in Datacore Software Corp. v. Scale Computing, Inc., C.A. No. 22-535-GBW (D. Del. June 21, 2024), the Court issued fascinating opinion rejecting an indefiniteness argument for apparatus and method claims that included an "intent" requirement.

The claims at issue relate to allocating drive space on computer disks. The patentee explained in the specification that the system involves defining multiple virtual disks that can, collectively, be larger than the actual physical space available (e.g., in a sense, they overlap):

One advantage of the present invention is that the physical storage devices that are placed into a storage pool do not need to add up to the size of the storage pool, even collectively. For example, a pool having a 2 terabyte logical size can be used to define several [virtual disk volumes] that are each 2 terabytes in size, even if the total amount of physical disk storage space assigned to that pool is less than 2 terabytes.

U.S. Patent No. 9,344,235 at 2:19-25.

What happens if the user tries to fill those virtual disks up with more than information than can fit in the physical space? From the patent, it looks like, when the actual space used in the virtual disks starts to approach the size of the physical space that is available (which can be smaller than the virtual disk size), an alarm triggers. 12:11-24.

The Court went through the prosecution history to explain how the "intent" requirement ended up in the claims. The original claims only stated that the physical space was "allowed" to be less than the virtual space. After a rejection, the patentee amended the claims to require that the size of the virtual volumes exceeds the total physical space.

That wasn't enough, though. The examiner again rejected the claims over a reference disclosing a system where the size of the virtual disk volumes could exceed the physical space, although though the reference considered it undesirable.

The patentee then amended again, adding language to the claims that the size of the virtual disks must "intentionally exceed[]" that of the physical disk. The claims then issued.

Accused Infringer Tries for Indefiniteness on "Intentionally"

Now, in the district court, the accused infringer argued that this "intentionally exceeds" language is indefinite, because it doesn't appear in the specification, and "it is not reasonably certain whose 'intent' is claimed and how to determine whether that individual acted with the requisite intent."

The Court disagreed, holding that the "intent" must refer to the intent of the system's designer:

Scale, however, argues that "intentionally exceeds" is indefinite even when construed in light of the prosecution history because a person of ordinary skill in the art would not know whose intent is claimed. . . . Specifically, Scale argues that "intentionally exceeds" could refer to either the intent of the designer or the intent of the system's user. Id. The Court disagrees. A person of ordinary skill in the art would understand that the claimed intent is the intent of the designer. DataCore distinguished [the prior art reference] Reuter-207 on the grounds that Reuter-207 taught away from overcommitment. Specifically, DataCore argued that "there is [] no description of allowing or condoning over-commitment of any kind in the actual embodiments described in the reference.". . . Thus, since DataCore distinguished its invention from the teachings of Reuter-207, Reuter-207 must be outside the scope of the claims. . . . However, if the intent to exceed referred to the user's intent, the system in Reuter-207 would meet the "intentionally exceed" limitation if the user of that system intended to use it in an overcommitted state. Thus, as DataCore explained during the parties' hearing on Scale's motions for summary judgment, the intent to overcommit must "manifest through the systems operation itself, the way the system operates." . . . Accordingly, a person of ordinary skill in the art would understand that the intent which is claimed in claims 1 and 2 of the '235 patent is the intent of the designer.

Datacore, C.A. No. 22-535-GBW, at 11.

It's interesting that the parties seemingly argued that the "intent" requirement goes to either the "designer" or the "user." From those two options, the Court chose "designer." It seems to me that a third option could be the intent of the system, with "intent" really describing the purpose of the system.

That may be what the Court is saying here, with the line about intent that "manifests through the system[]." I have to imagine that the real issue at trial may end up being the purpose of the system, not the (subjective?) intent of whoever designed it.

In any case, the Court went on to deny a motion for summary judgment of non-infringement based on the construction of "intent," finding a dispute of fact as to what the designers intended the accused system to do:

At the hearing on Scale's motion for summary judgment, Scale argued that it provides a warning when customers operate its products in an overcommitted state [where the virtual volume size exceeds the available physical space]. Scale explained that it warns its customers to buy more memory when their systems are overcommitted "because [Scale] do[esn't] want a system to break down when someone configures it." . . . Accordingly, Scale argued, the evidence indicates that Scale does not intend for its customers to use its products in an overcommitted state. . . . In response, DataCore argued that Scale's failure to warn its customers that they should not use their system in an overcommitted state prior to acquiring more memory is evidence that Scale intends for them to do so. Tr. at 71:25-72:7 ("Scale is not warning its users not to operate in a over-committed mode. They are engaging them to. They are warning them when they might be using an over-committed mode to such a degree that they are going to run out of physical storage.").
On balance, the Court finds that there is a genuine dispute of material fact with respect to whether Scale designed HyperCore to be operated in an overcommitted state. Drawing all reasonable inferences in DataCore's favor, a reasonable juror could find that Scale shows its customers how to configure their HyperCore systems in an overcommitted state, configures HyperCore systems in an overcommitted state while marketing those systems, and tests those systems to ensure that they are functional while overcommitted.

Id. at 13-14.

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