May 4, 2023
Computer-Readable Recording Medium Is Not a Transitory Medium
In Sequoia Technology, LLC v. Dell, Inc., [2021-2263, 2021-2264, 2021-2265, 2021-2266] (April 12, 2022), the Federal Circuit disagreed with the district court’s claim construction for “computer-readable recording medium,” and thus reverses the district court’s ineligibility determination under 35 U.S.C. § 101. In addition, the Federal Circuit agreed with the district court’s claim construction for “disk partition” and “logical volume,” and thus affirmed the district court’s noninfringement determination.
The magistrate judge adopted and construed “computer-readable recording medium” to include transitory media (i.e., signals or waves), based upon the specification, which discusses “computer readable medium” as “including” a list of items—none of which are transitory— and interpreted that language as leaving the door open for media that could be transitory.
The Federal Circuit noted at the outset that the claim language does not actually recite a “computer-readable medium” or CRM. Instead, it more narrowly recites “computer-readable recording medium storing instructions.” The Court said that a person of ordinary skill would not understand transitory signals, such as carrier waves, to record or store instructions in memory systems. This is because transitory signals, by their very nature, are fleeting and do not persist over time. Other elements in the claim confirm that the claim is directed to hardware as opposed to transitory waves or signals. The Federal Circuit found that the claim language demonstrates that claim 8 is not directed to a transient signal, but rather to a non-transient storage medium.
The Federal Circuit then turned to the specification, which discloses only non-transitory media. The Court said the use of a term denoting a nonexhaustive list does not eviscerate our obligation to construe terms in the context of the entire patent. The context here makes clear that the term “computer-readable recording medium” cannot encompass transitory media.
The Federal Circuit declared that its decision rests solely on the intrinsic evidence, and that it was unpersuaded by arguments to the contrary, which rest on extrinsic evidence. The Court further noted that not only was this extrinsic evidence inconsistent with the intrinsic evidence and also based on different express definitions of CRM in patent specifications directed to different inventions.
The Federal Circuit disagreed with the district court’s claim construction and, consequently, reversed the district court’s holding that claims 8–10 are ineligible under § 101.
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