In the second instance the court settled on a definition of the term "at runtime" with respect to the '205 patent. Oracle suggested "at runtime" means "during execution of the virtual machine." Google sought a further refining of that definition to be "during execution of the virtual machine instructions." [emphasis added]. As the court points out, the Oracle proposed definition would render the use of the term meaningless. This interpretation will narrow the claim, and Google believes that to be helpful to its invalidity arguments.
The court opted to defer interpretation of the third claim term considered, "obtaining a representation of at least one class from a source definition provided as object oriented program code" in the '720 patent. The dispute with respect to that phrase centers on the term "a source definition" and whether that term includes both source code and object code (as argued by Oracle) or is limited to source code (as argued by Google). The court found the arguments advanced by the parties to be unhelpful in determining the definition, so the court elected to defer taking a stance until trial, at which time the determination may be mooted in the '720 patent is found invalid.
The two decided interpretations were distinct wins for Google.
In the only other matter entered yesterday the court set forth the manner in which Google is to track and report time related to Oracle's third damages attempt. (705 [PDF; Text])
IN THE UNITED STATES DISTRICT COURT
ORACLE AMERICA, INC.,
FOR THE NORTHERN DISTRICT OF CALIFORNIA
No. C 10-03561 WHA
In this patent and copyright infringement action, the parties seek supplemental
construction of three phrases from the asserted patents. After consideration of the briefing from
both sides, final constructions for two of the three phrases are set forth below.
The technical background was set forth in the first claim construction order in May 2011
(Dkt. No. 137). The first claim construction order construed five of six requested terms. After
the number of asserted claims was reduced, the Court invited the parties to list additional terms in
dispute (Dkt. No. 603). The parties now request construction of three phrases. This order follows
opening and reply briefs from both sides.
Courts must determine the meaning of disputed claim terms from the perspective of a
person of ordinary skill in the pertinent art at the time the patent was filed. Chamberlain Group,
Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008). While claim terms are generally given
their ordinary and customary meaning, the patent’s specification is always highly relevant to the
claim construction analysis. Phillips v. AWH Corp., 415 F.3d 1303, 1312–15 (Fed. Cir. 2005).
Although courts have discretion to consider extrinsic evidence, including dictionaries, scientific
treatises, and testimony from experts and inventors, such evidence is “less significant than the
intrinsic record in determining the legally operative meaning of claim language.” Phillips, 415
F.3d at 1317–18.
While this order acknowledges that the parties have a right to a ruling on all disputed
claim terms by the time the jury instructions are settled, the Court will reserve the authority, on its
own motion, to modify the constructions in this order if further evidence — intrinsic or
extrinsic — warrants such a modification. Given that claim construction is not a purely legal
matter, but is (as the Supreme Court describes it) a “mongrel practice” with “evidentiary
underpinnings,” it is entirely appropriate for the Court to adjust its construction of claims if the
evidence compels an alternative construction. Markman, 517 U.S. at 378, 390. The parties
should be aware, however, that they are not invited to ask for reconsideration of the constructions
herein. Motions for reconsideration may be made only in strict accordance with the rules of
procedure, if at all.
1. THE ’476 PATENT: “COMPUTER-READABLE MEDIUM.”
The ’476 patent, entitled “Controlling Access to a Resource,” was issued in February
2001. The invention generally related to a dynamic security method for determining appropriate
access privileges. While this could have been practiced on a personal computer, embodiments of
the invention were not limited to any specific combination of hardware circuitry and software
Only independent claim 14 is asserted. The phrase construed by this order is italicized
below. Claim 14 covered (col. 19:59–20:5):
14. A computer-readable medium bearing
instructions for providing security, the
instructions including instructions for
performing the steps of:>
detecting when a request for an action
is made by a principal;
This is the parties’ second request to construe “computer-readable medium.” During the
first claim construction proceedings, the parties sought to construe this phrase and all related
phrases appearing in six different patents. The first claim construction order refused to do so
because the patents were too heterogenous: the issue dates spanned a decade and patented subject
matter ranged from security and access protections to loading and processing techniques. The
order held that construing the phrase would require individualized attention to the intrinsic
evidence of each patent. Now, the parties only seek to construe the phrase as used in the ’476
determining whether said action is
authorized based on an association
between permissions and a plurality
of routines in a calling hierarchy
associated with said principal;
wherein each routine of said plurality
of routines is associated with a class;
and wherein said association between
permissions and said plurality of
routines is based on a second
association between classes and
The parties’ proposed constructions are shown below.
|A storage device for use by a computer||Any medium that participates in
providing instructions to a processor
for execution, including but not
limited to, optical or magnetic disks,
dynamic memory, coaxial cables,
copper wire, fiber optics, acoustic or
light waves, radio-waves and infra-red
The construction of “computer-readable medium” is relevant to the parties’ invalidity arguments.
Oracle and Google agree that “computer-readable medium” encompassed storage media. The
dispute is whether it also encompassed transmission media, such as coaxial cables and fiber
optics that only contain transitory data signals. This order finds that “computer-readable
medium” did encompass transmission media.
In the specification, “computer-readable medium” was explicitly defined as:
The term “computer-readable medium” as used herein refers
to any medium that participates in providing instructions to
processor for execution. Such a medium may take many
forms, including but not limited to, non-volatile media,
volatile media, and transmission media. Non-volatile media
includes, for example, optical or magnetic disks, such as
storage device. Volatile media includes dynamic memory,
such as main memory. Transmission media includes coaxial
cables, copper wire and fiber optics, including the wires
that comprise bus. Transmission media can also take the
form of acoustic or light waves, such as those generated
during radio-wave and infra-red data communications.
(col. 5:4–16) (emphasis added). This explicit definition of “computer-readable medium” would
have been persuasive to a person of ordinary skill. The claim drafter acted as his own
lexicographer when he expressly defined the phrase. Indeed, quotation marks were used around
the phrase “computer-readable medium,” a strong indication that what followed was a definition.
Sinorgchem Co. v. ITC, 511 F.3d 1132, 1136 (Fed. Cir. 2007).
In addition to this explicit definition, the specification described embodiments that
unambiguously included transmission media, such as wireless signals. For example, the
specification described the use of an infra-red transmitter as a medium (col. 5:32–35), and the use
of wireless links to send and receive signals (col. 5:52–56).
Against the explicit definition and described embodiments, Oracle argues the often-quoted
point, “claims should be so construed, if possible, as to sustain their validity.” Rhine v. Casio,
Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). This argument is unpersuasive because there was no
ambiguity in the specification’s definition. The only construction that is consistent with the
language of the patent is a “computer-readable medium” that included transmission media.
Oracle’s citations to extrinsic dictionaries are also unpersuasive. Oracle argues that
because some contemporaneous technical dictionaries defined “media” as physical materials and
storage devices, the phrase “computer-readable medium” must have only included storage media.
Extrinsic sources, however, cannot be used to contradict claim meaning that is unambiguous in
light of intrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005).
Oracle also makes a grammatical argument. It argues that the word “may” in the
definition paragraph meant that transmission media should have been treated as a disclosed but
unclaimed embodiment. A person skilled in the art would not have read the specification’s
definition that way. The sentence explained that computer-readable “medium may have taken
many forms.” And the next phrase explicitly included transmission media in the definition of the
medium: “including but not limited to . . . transmission media.”
Finally, Oracle also makes a policy argument that the construction of “computer-readable
medium” presents a larger issue than just this action. Oracle rhetorically asks: since the Federal
Circuit has arguably interpreted the law to invalidate claims encompassing both storage media
and transmission media, “what shall courts do with the thousands of patents issued in the past
decade that have [relied on a prior interpretation]?” This order does not need to reach the larger
policy issue because validity has not yet been determined. Such a determination would require a
broader record and additional briefing.
One skilled in the art would have understood that transmission media was included in the
claim language. Accordingly, the phrase “computer-readable medium” shall be construed to
mean “any medium that participates in providing instructions to processor for execution,
including but not limited to, transmission media.”
Importantly, this construction of “computer-readable medium” only applies to the ’476
patent and does not apply to the other asserted patents.
2. THE ’205 PATENT: “AT RUNTIME.”
The ’205 patent, entitled “Intrepreting Functions Utilizing a Hybrid of Virtual and Native
Machine Instructions,” was issued in June 2005. The ’205 patent generally related to increasing
execution speed by replacing bytecode with instructions to access faster native code.
Two claims from this patent are asserted: independent claim 1, and its dependent claim 2.
The disputed phrase appeared only in text of claim 1. The disputed phrase is italicized below.
Claim 1 covered (col. 13:43–53):
1. In a computer system, a method for increasing the
execution speed of virtual machine instructions at
runtime, the method comprising:
receiving a first virtual machine instruction;
The phrase “at runtime” appeared twice in claim 1, once in the preamble and once in the body.
Illustrated below is a graphic representation of the claimed steps:
generating, at runtime, a new virtual machine
instruction that represents or references one
or more native instructions that can be
executed instead of said first virtual machine
executing said new virtual machine
instruction instead of said first virtual
Figures 4 and 6 from the ’205 Patent: Claimed Method
The parties’ proposed constructions are shown below.
|No construction necessary. The
ordinary meaning is “during execution
of the virtual machine.”
||“during execution of the virtual
The construction of “at runtime” is relevant to the parties’ non-infringement arguments. The
parties agree that “at runtime” included during the time that the virtual machine was running. The
parties dispute whether runtime only encompassed the narrower period during execution of virtual
machine instructions. Put another way, the dispute is whether the virtual machine has to be
executing instructions or just up-and-running (without executing instructions) when a “new
virtual machine instruction” was generated. This order finds that a person of ordinary skill would
have understood that the generation step had to have occurred during execution of virtual
Oracle’s definition of “at runtime” would render the phrase meaningless. If “at runtime”
meant any time during which the virtual machine was up-and-running, then the claimed
generation step would not have any additional limitations relative to the other steps in the claim:
receiving and executing. The asserted claim outlined three steps to be performed in a virtual
machine (Oracle’s Opening Br. 9) (computer system is virtual machine): receiving, generating,
and executing. Only the generating step has the additional limiting language of “at runtime.”
This would have suggested to a person of ordinary skill that the generating step had an additional
limitation relative to the receiving and execution steps. But if Oracle’s definition of “during
execution of the virtual machine” were adopted, there would not have been an additional
limitation for the generating step. This is because the virtual machine was necessarily up-andrunning
while it was receiving and executing. Oracle does not dispute this (Oracle’s Opening Br.
9). Oracle’s construction is not persuasive because it would have rendered the additional
limitation of “at runtime” meaningless.
Construing “at runtime” to mean “during execution of virtual machine instructions,” on
the other hand, would provide meaning supported by embodiments in the specification. The only
disclosed embodiments involved generating new virtual machine instructions during execution of
instructions. One embodiment was generating “go_native” instructions. The go_native
instruction was a preferred embodiment of a new virtual machine instruction (col. 7:23–26). The
go_native instruction was generated whenever the virtual machine decided to substitute a
sequence of bytecodes with native machine instructions called “snippets” (col. 6:26–30, 7:49–57).
The specification was clear that this process occurred during execution of virtual machine
instructions (col. 9:30–34, 7:49–51).
Another embodiment was generating new virtual machine instructions during Java virtual
machine initialization, which also involved the execution of virtual machine instructions. New
virtual machine instructions, including snippet codes, were generated along with a bytecode table
during intialization (col. 13:3–26 & Figure 13). A bytecode table is illustrated below:
Figure 13 from the ’205 Patent: Bytecode Table
Although the parties dispute whether initialization involved the execution of virtual machine
instructions, this order finds that a person of ordinary skill would have understood that
instructions were executed during initialization. There were many tasks the Java virtual machine
performed during initialization, such as class loading and class initialization. The process of class
loading and class initialization involved the execution of virtual machine instructions. Class
loading was done by executing virtual machine instructions found in a ClassLoader file, which
was written in the Java programming language (Fenton Decl. Exh. B). Similarly, the process for
class initialization was done by executing virtual machine instructions in the form of bytecode
(US Patent 6,061,520). Oracle disputes this. However, its supporting citations did not discuss
whether virtual machine instructions were executed during initialization. Instead, the citations
only addressed the general process of class loading and class initialization, which, as discussed,
involved the execution of virtual machine instructions.
Oracle’s argues that construing “at runtime” to “during execution of the virtual machine
instructions” would be illogical because of the definite article ‘the’ in the construction. Put
another way, Oracle argues that it would be unclear which virtual machine instructions were
being referenced. This order agrees. The reference could not have been to the first virtual
machine instructions because those instructions may never have been executed. And referring to
the new virtual machine instructions would be illogical because those instructions are executed at
a later step in the claimed method. This order finds that a definite article is unnecessary and
Accordingly, the phrase “at runtime” shall be construed to mean “during execution of one
or more virtual machine instructions.”
3. THE ’720 PATENT: “OBTAIN[ING] A REPRESENTATION OF AT LEAST ONE CLASS
FROM A SOURCE DEFINITION PROVIDED AS OBJECT ORIENTED PROGRAM CODE.”
The ’720 patent, entitled “System and Method for Dynamic Preloading of Classes through
Memory Space Cloning of a Master Runtime System Process,” was issued in September 2008.
The ’720 patent improved efficiency by dynamic preloading of classes through memory space
cloning. Six claims from this patent are asserted: independent claims 1 and 10, and their
dependent claims: 6, 19, 21, and 22. The disputed phrase is found in both independent claims.
The parties’ proposed constructions of “obtain[ing] a representation of at least one class from a
source definition provided as object oriented program code” are shown below.
|No construction necessary. The phrase
has the ordinary meaning that its
constituent words give it.
||load at least one class definition by
compiling object oriented source
The main dispute is whether “a source definition” in the obtaining step referred to source code,
object code (bytecode or machine code), or either. Google argues for source code, while Oracle
argues that the “source definition” can be either source code or object code.
The record evidence does not illuminate the precise meaning of that phrase to a person of
ordinary skill in the pertinent art at the time the patent was filed. If construction of the phrase
proves necessary, it will be construed before the jury is charged at the end of the trial, and its
construction will be based upon a more fully developed record.
For the reasons provided herein, the constructions set forth above will apply in this
dispute. The Court will reserve the authority, on its own motion, to modify these constructions if
further evidence warrants such a modification. Counsel, however, may not ask for modification.
IT IS SO ORDERED.
Dated: January 25, 2012.
/s/ William Alsup
UNITED STATES DISTRICT JUDGE