On February 10, 2016 the Court of Appeals for the Federal Circuit (CAFC) decided the case of Convolve, the Massachusetts Institute of Technology v. Compaq Computer Corp. and Seagate Technology, Inc. (February 10, 2016, 2014-1732, CAFC).
The technology at issue in the case involved improvements in computer hard drives described in US Patent No. 6,314,473 (‘the ‘473 patent”). Claim 10 from the ‘473 patent is representative:
Method for controlling operation of a data storage device, comprising:
providing a user interface for controlling one of a seek time of the data storage device and [an] a seek acoustic noise level of the data storage device;
operating the user interface so as to alter settings of one of the seek time and the seek acoustic noise level of the data storage device in inverse relation; and
outputting commands to the data storage device causing the data storage device to alter seek trajectory shape by shaping input signals to the data storage device to reduce selected unwanted frequencies from a plurality of frequencies in accordance with the altered settings.
(Where the italicized term, seek was added during re-examination and the bracketed term [an] was deleted.)
Seagate’s accused products are disk drives with an on dashboard controller that interfaces with a host computer. The controller uses an industry-standard interface, either ATA or SCSI. The ATA/SCSI interface excepts commands from the host computer processor to switch between a “quiet” and “performance” mode, and translates those commands for the hard drive, instructing it to change seek speed according to the selected mode. Compaq’s accuse products are computers that contain the F10 BIOS user interface in combination with a Seagate hard drive. The F10 BIOS is a graphical user interface that allows user to select certain hardware settings, including the seek speed and acoustic noise of the Seagate hard drive but does not itself issue commands a directly change the seek speed of the disk drives.
In its 2005 Markman order, the District Court construed “user interface” as “software, hardware, firmware, or a combination thereof that allows a person, directly or indirectly to alter parameters.” The court rejected a broader construction that would have stated that the “user interface” “may be accessed via other software or hardware, E. G., As a jumper, protocol, software program, keyboard or mouse.”
The CAFC found the district court’s construction of the term “user interface” to be correct because the word “user” must distinguish between different kinds of interfaces. In the claimed method, the only action that a user takes is selecting an operating mode. The “user interface” is thus the interface that the user interacts with to select an operating mode – not subsequent interfaces or components that merely execute the user’s selection.
The CAFC considered 3 groups of claims. The first group of claims is 7, 8, and 10 – 14 which do not require the “user interface” to perform the “outputting commands” function. Therefore the language of the first group of claims require the user interface to issue the shape commands recited in the claims and therefore it was error for the District Court to grant summary judgment for those claims.
The second group of claims is 9 and 15 which recite an apparatus comprising “a processor” that executes certain process steps “to generator user interface,” “to alter settings in the user interface,” and “to output commands to the data storage device.” Citing Baldwin Graphics Sys., Inc. v. Siebert, Inc., 512 F. 3-D 1338, 1342 (Fed. Cir. 2008) the CAFC held “absent a clear intent in the claims themselves, the specification, or the prosecution history, we interpret “a processor” as “one or more processors.” Furthermore, the specification disclosed an embodiment where “seeks” are controlled by a “separate controller dedicated to the disk drive.” Therefore, in the second group of claims, the commands to the data storage device did not necessarily need to be made by a “user” and instead the “seeks” can be controlled by a “separate controller” such as that on a as ATA or SCSI interface. Therefore, the CAFC found the District Court erred in granting summary judgment for non-infringement of the second group of claims.
The third group of claims includes 1,3 and 5. According to the CAFC, the language and structure of third group of claims demonstrated a clear intent to tie the processor that “outputs commands to the data storage device” to the “user interface.” Specifically, claim 1 recites “a processor” in the preamble before recitation of “comprising,” and the claim body uses the definite article “the” to refer to the “processor.” Moreover, the claim language requires a processor associated with user interface to issue the check commands of the claims, which contrasts with the multiple processors in the first group of claims. Therefore the CAFC concluded that the District Court did not air in granting summary judgment of non-infringement on the third group of claims.