# Veritas Operating Corp. v. Microsoft Corp.

> District Court, W.D. Washington · February 20, 2008 · 562 F. Supp. 2d 1141

URL: https://www.frixlaw.com/law-library/cases/1571466

## Case

- **Full name:** VERITAS OPERATING CORPORATION, a Delaware Corporation, Plaintiff, v. MICROSOFT CORPORATION, a Washington Corporation, Defendant; Microsoft Corporation, a Washington Corporation, Counterclaim Plaintiff, v. Veritas Operating Corporation, a Delaware Corporation, and Veritas Software Corporation, a Delaware Corporation, Counterclaim Defendants
- **Court:** District Court, W.D. Washington
- **Decided:** February 20, 2008
- **Citations:** 562 F. Supp. 2d 1141; 2008 U.S. Dist. LEXIS 12383; 2008 WL 495658
- **Precedential status:** Published
- **Opinion:** Opinion by Coughenour
- **Judges:** John C. Coughenour
- **Cited by:** 5 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/1571466

## How later opinions describe it (automated extraction)

- noting parallel provisions in § 271(c) and § 271(f)

## Opinion text

ORDER
JOHN C. COUGHENOUR, District Judge.
This matter comes before the Court for review of the Special Master’s Report and Recommendation on Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,469,573 (Dkt. No. 396). The Court has reviewed de novo the Special Master’s Report and Recommendation (“ ’573 Infringement R & R”), the parties’ respective objections and responses thereto (Dkt. Nos. 403, 409), the briefing and exhibits presented to the Special Master in the first instance, and all other relevant documents in the case file. The Court has determined that oral argument is not necessary.
The Court hereby APPROVES and ADOPTS the Special Master’s ’573 Infringement R & R in its entirety. Accordingly, the Court hereby GRANTS Microsoft’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,469,573 (Dkt. No. 204).
SPECIAL MASTER’S REPORT AND RECOMMENDATION ON MICROSOFT CORPORATION’S MOTION FOR SUMMARY JUDGMENT ON VERITAS’ CLAIM OF INFRINGEMENT OF U.S. PATENT NO. 5,469,-573
FILED UNDER SEAL CONTAINS INFORMATION DESIGNATED AS “CONFIDENTIAL,” “CONFIDENTIAL-ATTORNEY EYES ONLY,” AND/OR “CONFIDENTIAL — ATTORNEY EYES ONLY — SOURCE CODE” SUBJECT TO PROTECTIVE ORDER
TABLE OF CONTENTS
I. Introduction.1149
A. Nature of the Suit.:.1149
B. Referral to the Special Master.1150
C. Issued Under Seal.1150
II. Summary Judgment Standard.1150
A. Summary Judgment.1150
B. Burden of Proof.1151
III. Brief Overview of the Patenb-in-Suit.1152
IV. Infringement.1154
A. Direct Infringement.1154
B. Indirect Infringement.1155
1. Inducing Infringement.1155
2. Contributory Infringement.1156
C. Asserted Claims.1158
*1148
D. The Parties’ Arguments.1159
E. Discussion.1160
1. The Accused Products.1160
a) System Deployment.1162
b) System Backup & Recovery.1163
2. Uses of the Accused Products.1163
a) Infringing Uses.1163
b) Substantial Non-Infringing Uses.1163
c) U.S. and Foreign Uses.1175
d) Use with Veritas’ Products.1175
3. Infringement.1175
a)“users manuals, advertising materials and other product documentation”.•.1177
(1) WAIK Guide.1178
(2) WAIK Getting Started .1192
(3) OPK Guide.1200
(4) BRC74.1210
(5) Presentation.1213
(6) Remaining Product Manuals, Materials & Documentation.1216
4. “Microsoft’s own witnesses”.1235
a) John MacIntyre.1235
b) Mark Myers ..:.1241
c) Wes Miller.1242
5. “e-mails, customer specifications and other documents” .1247
a) Nike Email.1247
b) Boeing Email.1249
c) Hershey Email .1250
d) DaimlerChrysler Documents.1251
e) “dogfood” Documents.1258
f) Windows Vista CompletePC Restore Documents.1260
g) “14 bugs” Email.1262
h) Zions Bank Email.1264
i) Dr. Nichols Report, Exh. L.1266
F. Recommendation.1268
V. Software as a Material or Apparatus Under § 271(c) .1268
A. The Parties’ Arguments.1268
B. Discussion.1269
C. Recommendation.1275
VI. Inducing Infringement — Intent.1275
A. The Parties’ Arguments.1275
B. Discussion.1277
C. Recommendation.1285
VII. Willfulness. 1285
A. The Parties’ Arguments.1285
B. Discussion.1285
C. Recommendation.,.1286
VIIL Damages .1286
A. The Parties’ Arguments.1286
B. Discussion.1287
C. Recommendation.1287
IX. Recommended Disposition.1287
X. Report and Recommendation.1287
*1149
GAIL R. PETERSON, Special Master.
I.
Introduction
A. Nature of the Suit
Veritas alleges in its complaint causes of action for trade secret misappropriation, breach of contract, breach of an implied covenant of good faith and fair dealing, unfair competition, unjust enrichment and collective trust, conversion, copyright infringement, and infringement of U.S. Patent No. 6,826,661 (“the ’661 patent”) [Dkt. No. 1]. Microsoft alleges in its counterclaim causes of action for breach of contract, breach of an implied covenant of good faith and fair dealing, and for declaratory judgments of invalidity and non-infringement of the ’661 patent, and for infringement of U.S. Patent Nos. 5,588,147 (“the ’147 patent”); 6,820,214 (“the ’214 patent”); and 6,851,073 (“the ’073 patent”) [Dkt. No. 32]. Veritas, in response, alleged additional counterclaims seeking declaratory judgments of non-infringement and invalidity of the ’147, ’214 and ’073 patents, declaratory judgments that the ’073 and ’214 patents are unenforceable due to inequitable conduct, and a counterclaim asserting infringement of U.S. Patent No. 5,469,573 (“the ’573 patent”) [Dkt. No. 39]. Microsoft answered and added counterclaims for declaratory judgments that the ’573 patent was invalid and not infringed [Dkt. No. 53], The parties subsequently stipulated to dismiss Microsoft’s counterclaims for infringement of the ’214 and ’073 patents, and Veritas’ corresponding declaratory judgment counterclaims for non-infringement, invalidity and unen-forceability of those patents [Dkt. No. 58]. The parties further stipulated to stay the action with respect to the ’661 patent after the U.S. Patent and Trademark Office (PTO) granted Microsoft’s request for
inter partes
reexamination of the ’661 patent [Dkt. No. 63],
Thus, the patents remaining in this action are Veritas’ ’573 patent and Microsoft’s ’147 patent. The master issued the Special Master’s Report and Recommendation on Claim Construction Regarding U.S. Patent No. 5,469,573 on May 25, 2007.
See
Dkt. No. 128 (“the
Markman
RR”). The Court adopted the
Markman
RR on September 12, 2007.
See
Dkt. No. 239
(“Markman
Order”).
Microsoft now moves for summary judgment of no direct or indirect infringement, and that Veritas’ damages, if any, should be limited to certain specific instances of direct infringement that Veritas can now prove. With respect to direct infringement, Microsoft argues that Veritas has not shown that any Microsoft customer has used the accused software to perform in the U.S. any of the asserted method claim. With respect to indirect infringement, Microsoft argues that the accused software (1) has substantial non-infringing uses, (2) is information, rather than a physical material .or apparatus and (3) Veritas cannot show the intent necessary for inducing infringement. Along with its argument regarding intent, Microsoft contends that Veritas cannot show the “recklessness” required under
In re Seagate Technology, LLC,
497 F.3d 1360, 1371 (Fed.Cir.2007).
See
Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,496,573 and Memorandum in Support Thereof, dated August 31, 2007 [Dkt. No. 204] (“Microsoft’s Brief’) at 21.
Veritas responds that it has substantial proof of (1) direct infringement and (2) intent to induce, and (3) that is has “raised factual questions” on willfulness. Veritas also contends that (4) software can infringe under § 271(c), (5) the accused software
*1150
contributorily infringes, and (6) Veritas has established its damages case, and need not prove every instance of direct infringement now.
See
Veritas Software Corporation’s Opposition to Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,496,573, dated September 17, 2007 [Dkt. No. 266] (“Veritas’ Response”).
In its reply, Microsoft largely re-urges the issues presented in its opening brief, arguing that no reasonable jury could find for Veritas on those issues.
See
Defendant Microsoft Corporation’s Reply in Support of its Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,496,573, dated September 21, 2007 [Dkt. No. 301] (“Microsoft’s Reply”).
B. Referral to the Special Master
This Court’s Order of January 18, 2007 [Dkt. No. 76], appointed the undersigned as special master in this action to handle all pre-trial patent-related issues. In the Court’s Order of September 10, 2007 [Dkt. No. 235], the Court specifically directed the special master to hear the patent-related motions for summary judgment in this case including,
inter alia,
the above-mentioned motion. In accordance therewith, a hearing was held in San Antonio, Texas, on October 2, 2007. A record of that hearing has been prepared and filed with the Court.
After reviewing the transcript of that hearing as well as the exhibits and briefs offered by the parties, and pursuant to the foregoing Order and Rule 53 of the Federal Rules of Civil Procedure, the master issues the following report and recommendation on the foregoing issue of non-infringement with respect to the ’573 patent.
For the reasons discussed below, the master recommends that the Court GRANT Microsoft’s motion.
C. Issued Under Seal
Some of the parties’ exhibits were designated as having been filed under seal. Because it references certain of those sealed exhibits, this report and recommendation is likewise designated “FILED UNDER SEAL.” However, the public nature of these proceedings should be preserved to the fullest extent possible. Therefore, the parties are strongly encouraged to promptly advise the Court whether this report and recommendation may be released from seal either entirely or with appropriate redaction.
II.
Summary Judgment Standard
A. Summary Judgment
Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law.
See Celotex Corp. v. Catrett,
477 U.S. 317, 322-23 , 106 S.Ct. 2548 , 91 L.Ed.2d 265 (1986);
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 247-48 , 106 S.Ct. 2505 , 91 L.Ed.2d 202 (1986); Fed.R.Civ.P. 56(c) (“Rule 56(c)”). “[T]he plain language of Fed.R.Civ.P. 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial.”
Celotex,
477 U.S. at 322 , 106 S.Ct. 2548 . The Supreme Court has held that Rule 56(c) requires the nonmoving party to go beyond the pleadings, and by affidavits, depositions, answers to interrogatories and admissions on file, to designate specific facts showing that there is a genuine issue for trial.
Id.
at 324 , 106 S.Ct. 2548 .
*1151
A genuine issue of material fact exists if the evidence is such that a reasonable jury could find for the nonmoving party.
Anderson,
477 U.S. at 248 , 106 S.Ct. 2505 ;
General Mills, Inc. v. Hunt-Wesson, Inc.,
103 F.3d 978, 980 (Fed.Cir.1997). A disputed fact is material if it might affect the outcome of the suit such that a finding of that fact is necessary and relevant to the proceeding. “[T]he dispute about a material fact is ‘genuine,’ * * *, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
Anderson, 477
U.S. at 248, 106 S.Ct. 2505 . “Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no ‘genuine issue for trial.’ ”
Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 587 , 106 S.Ct. 1348 , 89 L.Ed.2d 538 (1986). Of course, “the mere existence of
some
alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no
genuine
issue of
material
fact.”
Anderson, 477
U.S. at 247-48, 106 S.Ct. 2505 (emphasis in original). “If the evidence is merely color-able * * * or is not significantly probative, * * *, summary judgment may be granted.”
Id.
at 249-50 , 106 S.Ct. 2505 . However, “[t]he evidence submitted by the nonmovant, in opposition to a motion for summary judgment, ‘is to be believed, and all justifiable inferences are to be drawn in [its] favor.’ ”
KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc.,
997 F.2d 1444 , 1449-50 (Fed.Cir.1993)(internal citations omittedXquoting
Anderson, 477
U.S. at 255, 106 S.Ct. 2505 ).
The Court’s responsibility is not “to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.”
Anderson, 477
U.S. at 249, 106 S.Ct. 2505 . The inquiry is “the threshold inquiry of determining whether there is the need for a trial-Hvhether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party.”
Id.
at 250 , 106 S.Ct. 2505 ;
see also Cooper v. Ford Motor Co.,
748 F.2d 677, 679 (Fed.Cir.1984);
see also SRI Int’l v. Matsushita Elec. Corp. of Am.,
775 F.2d 1107, 1116 (Fed.Cir.1985)(en
banc
)(“[T]he district court must view the evidence in a light most favorable to the nonmovant and draw all reasonable inferences in its favor, * * *, and must resolve all doubt over factual issues in favor of the party opposing summary judgment.”) (citing
United States v. Diebold, Inc.,
369 U.S. 654, 655 , 82 S.Ct. 993 , 8 L.Ed.2d 176 (1962);
Martin v. Barber,
755 F.2d 1564, 1566 (Fed.Cir.1985); and
Palumbo v. Don-Joy Co.,
762 F.2d 969, 973 (Fed.Cir.1985)). The Federal Circuit has held that “summary judgment is as appropriate in a patent case as in any other * *
Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd.,
731 F.2d 831, 835 (Fed.Cir.1984);
see also Meyers v. Brooks Shoe, Inc.,
912 F.2d 1459, 1461 (Fed.Cir.1990)(summary judgment is appropriate in patent cases).
B. Burden of Proof
Veritas, as the patentee asserting infringement, bears the burden of proof by a preponderance of the evidence. Indeed, the Federal Circuit recognizes that the “patent owner has always borne the burden of proving infringement,”
Wilson Sporting Goods Co. v. David Geoffrey & Assocs.,
904 F.2d 677, 685 (Fed.Cir.1990), and has often applied this burden to motions for summary judgment.
See, e.g., TechSearch, L.L.C. v. Intel Corp.,
286 F.3d 1360, 1372 (Fed.Cir.2002);
Display Techs., Inc. v. Paul Flum Ideas, Inc.,
282 F.3d 1340, 1348 (Fed.Cir.2002). “Since the ultimate burden of proving infringement rests
*1152
with the patentee, an accused infringer seeking summary judgment of non-infringement may meet its initial responsibility either by providing evidence that would preclude a finding of infringement, or by showing that the evidence on file fails to establish a material issue of fact essential to the patentee’s case.”
Novartis Corp. v. Ben Venue Labs.,
271 F.3d 1043, 1046 (Fed.Cir.2001).
“[O]n issues in which the nonmov-ant bears the burden of proof, in contrast to those in which the movant bears the burden, the movant need not ‘produce evidence’ showing the absence of a genuine issue of material fact in order to properly support its summary judgment motion.”
Exigent Tech., Inc. v. Atrana Solutions, Inc.,
442 F.3d 1301, 1307 (Fed.Cir.2006)(citing
Celotex,
477 U.S. at 325 , 106 S.Ct. 2548 ). Rather, “ ‘the burden on the moving party may be discharged by ‘showing’ — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party’s case.’ ”
Exigent Technology,
442 F.3d at 1308 (quoting
Celotex, 477
U.S. at 325, 106 S.Ct. 2548 ). That is, “nothing more is required than the filing of a summary judgment motion stating that the patentee had no evidence of infringement and pointing to the specific ways in which accused systems did not meet the claim limitations.”
Exigent Technology,
442 F.3d at 1309 .
Once the movant has satisfied its initial burden, the “burden of production then shift[s] to [the non-movant] to identify genuine issues that preclude summary judgment.”
Optivus Tech., Inc. v. Ion Beam Applications S.A.,
469 F.3d 978, 990 (Fed.Cir.2006)(citing Fed.R.Civ.P. 56(e); and 10A C. Wright, A. Miller, & M. Kane, Federal Practice and Procedure § 2727 (3d ed. 1998)(“[I]f the movant makes out a prima facie case that would entitle him to a judgment as a matter of law if uncontro-verted at trial, summary judgment will be granted unless the opposing party offers some competent evidence that could be presented at trial showing that there is a genuine issue as to a material fact.”)). Thus, “‘the [summary judgment] motion may, and should, be granted so long as whatever is before the district court demonstrates that the standard for the entry of summary judgment, as set forth in Rule 56(c), is satisfied.”
Exigent Technology,
442 F.3d at 1308 (alterations in origi-nal)(quoting
Celotex,
477 U.S. at 323 , 106 S.Ct. 2548 ).
III.
Brief Overview of the Patent-in-Suit
As discussed in the master’s report and recommendation on claim construction regarding the ’573 patent, the ’573 patent generally discloses “a data backup procedure and apparatus for backing up and restoring, or otherwise loading a fully configured operating system to the high capacity storage device (e.g., hard disk) of a computer workstation, such as a personal computer,” “from standard system backup media, such as magnetic backup tapes, without the need to reload and re configure the operating system from its original distribution media.” ’573 patent, col. 2, lines 2-6.
According to the specification, “[c]om-plex computer systems require[d] similarly complex disk operating systems” such as “IBM OS/2 (commercially available from IBM corporation), Microsoft MS-DOS, and Microsoft Windows 3.x (both commercially available from Microsoft Corporation, Redmond, Wash.).” ’573 patent, col. 1, lines 21-23 & 14-17. The specification explains that “[b]ecause there are so many possible system configurations available, a typical operating system needs to be individually
*1153
tailored for each personal computer system on which it is installed” — a process that “typically requires that a skilled technician spend several hours building the operating system on the personal computer according to the desired system configuration.” ’573 patent, col. 1, lines 25-31. Data stored on “magnetic media disk drives,” though, were vulnerable to loss or corruption, and “[d]ata backup systems, such as magnetic tape backup,” were generally used to restore “corrupted or destroyed data files on the high capacity hard disk.” ’573 patent, col. 1, lines 34-45. According to the specification, however, such backup systems normally required that “the disk operating system installed on the hard disk be intact and fully operational before data [could] be restored to the hard disk. A data loss affecting the operating system itself is typically not recoverable by using the tape backup system, and requires that, the operating system be reloaded onto the hard disk and configured anew.” ’573 patent, col. 1, lines 46-52.
For addressing that problem, the specification discloses (1) a data processing system on which the recovery process may be run, (2) creation of an electronic backup, for example on tape, (3) creation of a recovery disk, and (4) the recovery process.
The “data processing system” is said to include,
inter alia,
“a computer workstation” having a “storage device [that] stores files necessary to start (boot) and operate the workstation,”
ie.,
“operating system files, system configuration files, device driver files, and any other files necessary to properly configure and operate the workstation,” and “a tape drive adapter for communicating with the backup tape drive device.” ’573 patent, col. 3, line 44-col. 4, line 8 (reference numbers omitted).
The backup tape, according to the specification, may include the “operating system files, system configuration files, [and] device driver files,” and is “used as the source for the operating system subsequently loaded or restored onto the PC hard drive.” ’573 patent, col. 5, lines 36-38 (reference numbers omitted).
As for creating a recovery disk, the specification explains that “a recovery diskette is prepared from the fully configured PC by copying various files from the hard disk onto the recovery diskette, which essentially define the current PC configuration.” Such files include “vital operating system configuration files, system configuration files, and device drivers * * * required for the proper operation of the hardware, operating system, and attached devices,” as well as “[operating system installation files” from the “‘Installation’ diskette, distributed with the original operating system distribution diskettes,” “an application program for implementing the loading or recovery procedure of this invention, and an application program capable of recovering the operating system files from the backup media onto the hard disk of the PC.” ’573 patent, col. 5, lines 39-65 (reference numbers omitted). According to the specification, “the recovery diskette can actually be a set of several recovery diskettes, each diskette containing a particular sub-set of files.” ’573 patent, col. 4, lines 54-56.
The specification discloses a number of recovery processes, such as “the operating system recovery and loading procedure.” For that procedure, the specification explains, “[t]o begin the recovery process the operator inserts the backup tape containing the operating system files to be restored into the PC tape drive.” Then, the “operator starts (i.e., boots)” the PC “from the recovery diskette which loads an initial, temporary operating system into the memory of the PC. The recovery diskette also supplies this initial operating system
*1154
with the necessary system configuration files and device drivers, i.e., the files previously copied to the recovery diskette from the fully configured PC.” ’573 patent, col. 6, lines 10-18 (reference numbers omitted). “Next, a recovery program is loaded from the recovery diskette into the PC and run to directly recover the operating system files from the backup tape,” as well as recover other files on the backup tape. “Finally, the PC is rebooted from the recovered operating system files now installed on the hard disk, and the hard drive can be further restored from the backup tape if necessary.” ’573 patent, col. 6, lines 26-33 (reference numbers omitted).
IV.
Infringement
A. Direct Infringement
A patentee may sue for direct infringement under 35 U.S.C. § 271 (a):
Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United Sates any patented invention during the term of the patent therefor, infringes the patent.
The “making, using, or selling of a patented invention is the usual meaning of the expression ‘direct infringement.’ ”
Joy Techs. Inc. v. Flakt, Inc.,
6 F.3d 770, 773 (Fed.Cir.1993). The Federal Circuit has long held that the determination of patent infringement involves a two-step process. “The claimed invention must first be defined, a legal question of claim interpretation. Second, the trier of fact must determine whether the claims, as properly interpreted, cover the accused device or process.”
SmithKline Diagnostics, Inc. v. Helena Labs. Corp.,
859 F.2d 878, 889 (Fed.Cir.1988).
See also Liquid Dynamics Corp. v. Vaughan Co., Inc.,
355 F.3d 1361, 1367 (Fed.Cir.2004)(“The court must first interpret the claim and determine the scope and the meaning of the asserted patent claims, and then compare the properly construed claims to the allegedly infringing device.”);
Amgen Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313, 1324 (Fed.Cir.2003)( “Because claim language defines claim scope, the first step in an infringement analysis is to construe the claims. * * * Thereafter, the properly construed claims are compared to the accused product or process to determine whether each of the claim limitations is met * * *.”);
Cybor Corp. v. FAS Techs., Inc.,
138 F.3d 1448, 1454 (Fed.Cir.1998).
The first step of the infringement analysis, claim construction, is a question of law.
See id.
at 1451 . The court must “examine the claims, the rest of the specification, and, if in evidence, the prosecution history” to determine “the scope and meaning of that which is allegedly infringed.”
Amgen,
314 F.3d at 1324 .
See also Markman v. Westview Instrs., Inc.,
52 F.3d 967, 976 (Fed.Cir.1995),
aff'd,
517 U.S. 370 , 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996);
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed.Cir.2005).
The second step of the infringement analysis, comparison of the claim to the accused device, is a question of fact.
See Bai v. L & L Wings, Inc.,
160 F.3d 1350, 1353 (Fed.Cir.1998);
Liquid Dynamics,
355 F.3d at 1367 . The trier of fact must determine whether, using the properly construed claims as a guide, every claim limitation or its equivalent is found in the accused device or process.
See Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
520 U.S. 17, 29 , 117 S.Ct. 1040 , 137 L.Ed.2d 146 (1997).
Thus, literal infringement requires a showing that every limitation of at least one claim “reads on” or covers the
*1155
accused device,
i.e.,
that the accused device falls within the scope of at least one properly construed claim.
See SmithKline,
859 F.2d at 889 . “To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly.”
Southwall Techs., Inc. v. Cardinal IG Co.,
54 F.3d 1570, 1575 (Fed.Cir.1995);
Lantech, Inc. v. Keip Mach. Co.,
32 F.3d 542, 547 (Fed.Cir.1994)(“For literal infringement, each limitation of the claim must be met by the accused device exactly, any deviation from the claim precluding a finding of infringement.”). Accordingly, a claim cannot be literally infringed if any claim element or limitation is missing entirely from the accused product.
See London v. Carson Pirie Scott & Co.,
946 F.2d 1534, 1539 (Fed.Cir.1991). Furthermore, “the addition of features does not avoid infringement, if all the elements of the patent claims have been adopted. Not is infringement avoided if a claimed feature performs not only as shown in the patent, but also performs an additional function.”
N. Telecom, Inc. v. Datapoint Corp.,
908 F.2d 931, 945 (Fed.Cir.1990) (citation omitted).
“For process or method patent claims, infringement occurs when a party performs all the steps of the process.”
BMC Resources,
498 F.3d at 1379 (citing
Joy.,
6 F.3d at 773 (regarding making or selling industrial plan designed to enable use of patented system)). “Because a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves doing or performing each of the steps recited.”
NTP, Inc. v. Research in Motion, Ltd.,
418 F.3d 1282, 1318 (Fed.Cir.2005).
However, “[mjethod claims are only infringed when the claimed process is performed, not by the sale of an apparatus that is capable of infringing use.”
Ormco Corp. v. Align Tech., Inc.,
463 F.3d 1299, 1311 (Fed.Cir.2006). That is, “[t]he mere sale of an apparatus capable of performing the claimed process” is “not a direct infringement because a method or process claim is directly infringed only when the process is performed.”
Joy,
6 F.3d at 773 (citing and discussing
Standard Havens Prods., Inc. v. Gencor Indus., Inc.,
953 F.2d 1360 (Fed.Cir.1991)). “To hold that the sale of equipment which performs' a patented process is itself a direct infringement would make that portion of section 271(c) relating to the sale of an apparatus for use in practicing a patented process meaningless.”
Joy,
6 F.3d at 774 .
“In order to prove direct infringement, a patentee must either point to specific instances of direct infringement or show that the accused device necessarily infringes the patent in suit.”
ACCO Brands, Inc. v. ABA Locks Mfr. Co.,
501 F.3d 1307, 1313 (Fed.Cir.2007). Direct infringement may be shown through direct evidence as well as circumstantial evidence. Mol
eculon Research Corp. v. CBS, Inc.,
793 F.2d 1261, 1272 (Fed.Cir.1986)(“It is hornbook law that direct evidence of a fact is not necessary”). Indeed, “[c]ircumstantial evidence is not only sufficient, but may also be more certain, satisfying and persuasive than direct evidence.”
Id.
at 1272 (quoting
Michalic v. Cleveland Tankers, Inc.,
364 U.S. 325, 330 , 81 S.Ct. 6 , 5 L.Ed.2d 20 (1960)).
B. Indirect Infringement
A patentee may also sue for indirect infringement — for inducing infringement and for contributory infringement.
1. Inducing Infringement
Inducing infringement is defined under § 271(b):
*1156
Whoever actively induces infringement of a patent shall be liable as an infringer.
As noted above, “direct infringement * * * is a prerequisite to indirect infringement.”
Alloc, Inc. v. Int’l Trade Comm’n,
342 F.3d 1361, 1374 (Fed.Cir.2003).
See also Epcon Gas Sys., Inc. v. Bauer Compressors, Inc.,
279 F.3d 1022, 1033 (Fed. Cir.2002)(“It is well settled that there can be no inducement of infringement without direct infringement by some party.”).
To prevail on a charge of inducing infringement, the patentee must prove two additional elements after establishing the predicate act of direct infringement. First, the patentee must prove that the alleged inducer committed an act which constitutes inducement. For example, sales-related activities, including advertising, solicitation, and product instruction that encourage the infringing use may be acts constituting inducement.
Biotec Biologische Naturverpackungen GmbH v. Biocorp, Inc.,
249 F.3d 1341 (Fed.Cir.2001) (product manual instructed customers to use product so as to meet the patented limitation, thereby constituting an act of inducement).
See Golden Blount, Inc. v. Robert H. Peterson Co.,
438 F.3d 1354 (Fed.Cir.2006)(instruction sheets);
Moleculon Research Corp. v. CBS, Inc.,
793 F.2d 1261 (Fed.Cir.1986)(instruction sheet, puzzle solution booklet).
Second, the patentee must prove that the accused infringer intended to cause direct infringement. For example, the Federal Circuit
en banc
has held that “if an entity offers a product with the object of promoting its use to infringe, as shown by clear expression or other affirmative steps taken to foster infringement, it is then liable for the resulting acts of infringement by third parties.”
DSU Med. Corp. v. JMS Co.,
471 F.3d 1293, 1306 (Fed.Cir.2006). That is, “the intent requirement for inducement requires more than just intent to cause the acts that produce direct infringement Beyond that threshold knowledge, the inducer must have an affirmative intent to cause direct infringement. * * * Accordingly, inducement requires evidence of culpable conduct, directed to encouraging another’s infringement, not merely that the inducer had knowledge of the direct infringer’s activities.”
Id.
(citations omitted).
See MEMC Elec. Materials v. Mitsubishi Materials Silicon Corp.,
420 F.3d 1369 , 1378 (Fed.Cir.2005)(Inducement requires “that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement.”); and
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,
545 U.S. 913 , 125 S.Ct. 2764 , 162 L.Ed.2d 781 (2005)(drawing on the inducement of infringement standard long applied in the patent law context and “holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”).
2. Contributory Infringement
Contributory infringement is defined under § 271(c):
Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing
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use, shall be liable as a contributory infringer.
“[Djirect infringement * * * is a prerequisite to indirect infringement.”
Alloc, Inc.,
342 F.3d at 1374 .
See also Aro Mfg. Co. v. Convertible Top Replacement Co. (“Aro
I”), 365 U.S. 336, 341 , 81 S.Ct. 599 , 5 L.Ed.2d 592 (1961)(“[T]here can be no contributory infringement in the absence of a direct infringement.”).
Beyond a showing of direct infringement, to prevail on a charge of contributory infringement, a patentee must prove two elements: (1) knowledge and (2) materiality.
See DSU,
471 F.3d at 1303 (“[T]o prevail on contributory infringement, DSU must have shown that ITL made and sold the Platypus, that the Platypus has no substantial non-infringing uses in its closed-shell configuration, that ITL engaged in conduct (made sales) within the United States that contributed to another’s direct infringement, and that JMS engaged in an act of direct infringement on those sales that ITL made in the United States.”). As for knowledge, the plaintiff must prove that the defendant
knew
that the product was especially made or adapted for use in infringing the patented method.
See Aro Mfg. Co. v. Convertible Top Replacement Co. (“Aro II”),
377 U.S. 476, 488 , 84 S.Ct. 1526 , 12 L.Ed.2d 457 (1964)(emphasis in original)(“It is only sale of a component of a patented combination
‘knowing
the same to be especially made or especially adapted for use in an infringement of such patent’ that is contributory infringement under the statute.”);
Hewlett-Packard Co. v. Bausch & Lomb, Inc.,
909 F.2d 1464, 1469 (Fed.Cir.1990)(emphases in original)(“[o]nly proof of a defendant’s
knowledge,
not
intent,
that his activity cause infringement was necessary to establish contributory infringement”).
As for materiality, the patentee must prove that the product sold to the alleged direct infringer constituted a
material part
of the invention,
i.e.,
that it is “a component especially made or adapted for use in the patented combination [and] is not a staple article suitable for substantial noninfringing use.”
Preemption Devices v. Minn. Mining & Mfg. Co.,
803 F.2d 1170, 1174 (Fed.Cir.1986).
See Grokster, Ltd.,
545 U.S. at 932 , 125 S.Ct. 2764 (“This analysis reflected patent law’s traditional staple article of commerce doctrine, now codified, that distribution of a component of a patented device will not violate the patent if it is suitable for use in other ways. The doctrine was devised to identify instances in which it may be presumed from distribution of an article in commerce that the distributor intended the article to be used to infringe another’s patent, and so may justly be held liable for that infringement. * * * In sum, where an article is ‘good for nothing else’ but infringement, there is no legitimate public interest in its unlicensed availability, and there is no injustice in presuming or imputing an intent to infringe.”);
Dawson Chem. Co. v. Rohm & Haas Co.
448 U.S. 176, 213 , 100 S.Ct. 2601 , 65 L.Ed.2d 696 (1980) (“[B]y enacting §§ 271(c) and (d), Congress granted to patent holders a statutory right to control nonstaple goods that are capable only of infringing use in a patented invention, and that are essential to that invention’s advance over prior art.”);
Golden Blount,
365 F.3d at 1061 (“Thus, Blount must show that Peterson ‘knew that the combination for which its components were especially made was both patented and infringing.’ Further, Blount must show that Peterson’s components have no substantial noninfringing uses.” (quoting
Preemption
Devices)).
The question of whether a component is capable of substantial non-
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infringing use is a question of fact.
See Mentor H/S, Inc. v. Med. Device Alliance, Inc.,
244 F.3d 1365 (Fed.Cir.2001) (upholding jury verdict of contributory infringement where there was a lack of substantial non-infringing uses);
C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc.,
911 F.2d 670 (Fed.Cir.1990)(summary judgment on contributory infringement inappropriate when there existed disputed material fact issues regarding substantial non-infringing use). A suggested non-infringing use must not be farfetched, illusory, impractical or merely experimental.
See Hilgraeve Corp. v. Symantec Corp.,
265 F.3d 1336 (Fed.Cir.2001).
C. Asserted Claims
Veritas asserts claims 1-5, 7-10, 13-19, 22-24, 26-30 and 32-33 of the ’573 patent. All are method claims. Of the asserted claims, claims 1,18, 30 and 33 are independent, and provide:
1. A method for loading a fully configured operating system onto a storage device of a data processing system, comprising the steps of:
providing a first media comprising operating system files for installing the fully configured operating system onto the storage device;
providing a second media comprising configuration-specific data files;
initializing the data processing system from the second media to provide a temporary operating system and using the configuration-specific data files to configure the data processing system;
loading the fully configured operating system files from the first media to the storage device using the temporary operating system; and
reinitializing the data processing system from the storage device to install the fully configured operating system.
18. A method for loading a fully configured operating system onto a disk drive of a data processing system, comprising the steps of:
copying fully configured operating system files stored on the disk drive to a first media;
copying configuration-specific data files from the disk drive to a second media;
initializing the data processing system from the second media to provide a temporary operating system and using the configuration-specific data files to configure the data processing system;
initializing the disk drive prior to the step of loading the fully configured operating system files from the first media to the disk drives;
loading the fully configured operating system files from the first media to the disk drive using the temporary operating system to install the fully configured operating system; and
reinitializing the data processing system from the disk drive to provide the fully configured operating system.
30. A method for loading a fully configured operating system onto a disk drive of a first data processing system, comprising the steps of:
configuring a disk drive of a second data processing system with the desired configuration for the first data processing system;
copying fully configured operating system fries stored on the disk drive of the second data processing system to a first media;
copying configuration specific data files from the disk drive of the sec
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ond data processing system to a second media;
initializing the first data processing system from the second media to provide a temporary operating system and using the configuration-specific data files to configure the first data processing system; and
loading the fully configured operating system files from the first media to a disk drive of the first data processing system using the temporary operating system to install the fully configured operating system.
33. A method for loading a fully configured operating system onto a storage device of a data processing system, comprising the steps of:
initializing the data processing system from a second media, having configuration-specific data files, to provide a temporary operating system using the configuration-specific data files to configure the data processing system;
loading the fully configured operating system files from a first media to the storage device using the temporary operating system, the first media having operating system files for installing the fully configured operating system onto the storage device; and
reinitializing the data processing system from the storage device to install the fully configured operating system.
Also as noted above, the master construed disputed terms of the ’573 patent.
See Markman
RR.
D. The Parties’ Arguments
According to Microsoft, “Veritas alleges infringement by, and seeks damages on, each unit of Microsoft Windows® Vista (and other) operating system software ‘sold’ by Microsoft in the United States, under two theories. First, it alleges that these operating systems have certain built-in ‘backup and restore’ capabilities that
can be used
to infringe the ’573 Patent. Second, it alleges that software kits provided by Microsoft to computer manufacturers (OEMs) and to system administrators
can be used
to install these operating systems onto computers using a process that infringes the ’573 Patent.” Microsoft’s Brief at 1 (Microsoft’s emphases).
Microsoft illustrates the “fundamental flaw in Veritas’ case” by the following “hypothetical:”
A (hypothetical) patent claims a method of installing a spare tire (in case of a flat) by loosening and tightening the lug nuts in a particular order. A retailer sells a kit including a spare tire, a lug wrench, a jack, and instructions describing several installation methods, including the patented one. The patent’s owner complains that these kits unfairly embody the patented invention to take sales rightfully belonging to the patent holder, and seeks damages on each such kit sold by the retailer. Under U.S. Patent Law, the patent owner loses. It loses because its patent is on a method, not on a kit. The spare-tire-installation method patent is not infringed by selling the kit, even if the kit gives its buyers the
capability
to practice the patented method, and even if each kit takes a sale from the patent owner. The kit does not infringe, moreover, even though much of the psychological benefit of the patent’s technique — namely, giving the driver ease of mind — is achieved by merely having the kit stored in the trunk. Rather, the spare-tire-installation method patent is infringed
only
in the rare event that the driver actually puts the kit in the trunk,
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has a flat tire, and, in the U.S., changes the flat using the patented steps.
Microsoft’s Brief at 2 (Microsoft’s emphases).
That is, Microsoft argues, “for each asserted patent claim and for each accused software offering of Microsoft, Veritas must prove that a third-party, with no license or authorization from the patent owner or its agent, directly infringed the asserted method claim in the U.S. using that software.” According to Microsoft, “[i]t is unlikely that Veritas will be able to prove any instance of direct infringement using the accused software” because of the complexity of proof required. Microsoft urges, for example, that for Veritas “to prove direct infringement of independent claim 30, Veritas must prove, among other things, that someone in the U.S., without authority of the patent owner or its agent, used Microsoft’s accused software kits to copy an operating system from a disk drive of a master computer — configured with the desired configuration for a target computer — to a first media, and to copy configuration-specific data files
from that same disk drive
of the master computer to a second media, and then used that second media to load that identically configured operating system on to the target computer.”
Id.
at 19 (Microsoft’s emphasis).
Veritas responds that “[c]ontrary to Microsoft’s assertion, proof of indirect infringement does
not
require that the pat-entee provide proof of each individual instance of underlying direct infringement. Rather, indirect infringement under §§ 271(b) and (c) of a method claim may be proven by evidence that a broad class of users (such as Microsoft’s OEM and/or enterprise customers) directly infringe the patented methods,” and that “[s]uch proof of underlying direct infringement can be satisfied by circumstantial evidence.” Veritas proffers evidence said to show infringement, namely, (1) “advertisements and instructions that encourage infringing use despite the lack of any first-hand evidence of direct infringement by customers can provide sufficient circumstantial evidence of inducement,” (2) “testimony of the defendant’s own witnesses concerning the typical ways in which the accused products are used by customers, constitutes strong evidence of the underlying direct infringement”, and (3) “direct evidence in the form of documents and testimony that certain customers and internal Microsoft testers are actually using the accused products in an infringing manner constitutes proof of direct infringement as well.” Veritas’ Response at 7-8.
Microsoft asserts that “Veritas has not offered particularized, admissible evidence that any specific customer has used the accused software in a method that practices each step of any claim, in the U.S. and without authority.” Microsoft further argues that Veritas’ “expert’s claim charts map the claims to
capabilities, not to
actions of customers” “[a]nd, all the evidence of use Veritas submits is inadmissible, and thus cannot be considered on this motion for summary judgment.” Microsoft’s Reply at 5 (Microsoft’s emphasis). Microsoft also asserts that Veritas misrepresents the testimony of all of Microsoft’s deponents, and misstates controlling law.
The parties’ arguments are discussed in more detail below.
E. Discussion
Overall, Microsoft does not dispute that the accused products are capable of performing the methods of the asserted claims.
1.
The Accused Products
Veritas accuses “Microsoft’s recommended system deployment tools and pro
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cedures for Windows Vista, Windows Server 2008 (formerly known as Longhorn), Windows XP and Windows Server 2003, and system recovery tools and procedures for Windows Vista and Windows Server 2008” of infringing the asserted claims. Veritas’ Response at 1.
Generally, Veritas presents its infringement case through its expert, Dr. Nichols. Dr. Nichols examined the following products:
System Deployment for Windows XP / Server 2003 and Windows Vista / Server 2008
1
Microsoft’s packages for deployment include:
■ Windows Automated Installation Kit (WAIK)
■ OEM Preinstallation Kit (OPK)
■ Business Desktop Deployment
These packages include some or all of the following components:
■ Windows Preinstallation Environment (WinPE)
■ ImageX
■ WIMfile format
■ Windows System Image Manager (SIM)
■ Sysprep (System Preparation)
There may be other WinPE-based scenarios recommended by Microsoft
System Backup and Restore for Windows Vista / Server 2008
Built-in capabilities in Windows Vista / Server 2008
■ Vista Complete PC Backup and Restore
■ Server 2008 Backup and Recovery
These packages rely on the following:
■ Windows Recovery Environment (WinRE)
■ Windows Preinstallation Environment (WinPE)
■ VHD file format
See
Declaration of Michael J. Sehallop in Support of Veritas Software Corporation’s Opposition to Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,469,573 (“Sehallop Deck”), Exh. B: Infringement Expert Report of A.J. Nichols, Ph.D. (“Nichols Infringement Report”).
1
Overall, “Veritas has accused specific combinations of Accused Products recommended by Microsoft for use in the infringing system recovery and system deployment scenarios.” In a footnote, Veritas urges that “[f]or the recovery scenarios, Veritas is accusing the following features based on Microsoft’s recommendations: Complete PC Backup and Restore of Windows Vista (Premium, Ultimate and Enterprise Editions) and Backup and Restore of Microsoft’s forthcoming Windows Server 2008. For the deploying scenarios, Veritas is accusing the following features based on Microsoft’s recommendations: Windows XP, Server 2003, Vista, and Server 2008 include combinations of the following: the OEM Preinstallation Kit (OPK), Windows Automated Installation Kit (WAIK), Business Desktop Deployment (BDD) tools, using the following components in their system deployment tools and procedures: Windows Preinstallation Environment (WinPE), ImageX, Windows Imaging (WIM) image file format, Windows System Image Manager (SIM), Sysprep (System Preparation), Setup Manager. All of these products collectively, when used to deploy or recover
*1162
Windows operating systems will be referred to herein as ‘Accused Products.’ ” Veritas’ Response at 4 at n. 5.
a) System Deployment
With respect to system deployment, Dr. Nichols contends that Windows Vista and Windows Server 2008 include Windows Automated Installation Kit (“WAIK”), OEM Preinstallation Kit (“OPK”), and Business Desktop Deployment (“BDD”), and that an earlier version of OPK supported Windows XP and Windows Server 2003.
See
Nichols Infringement Report at 9.
The WAIK, Dr. Nichols contends, “is a tool to simplify and speed up the process of configuring multiple numbers of computers with the same Windows operating system. It is intended for use by the IT department in an organization to simplify the setup of similar computer systems throughout the organization. WAIK depends on Windows PE, ImageX, and the WIM image file format.” According to Dr. Nichols, deploying WAIK consists of the following steps:
1. Setting up a lab environment to fully configure the desired operating system. This environment is built upon a computer referred to as the “Technician Computer”.
2. Deciding what features will be incorporated into the operating system by providing an “Answer File”.
3. Building the desired system (a master installation) on another computer called the “master computer” (a model system).
4. Creating an image of the Master Computer on the first media and creating a Windows PE media (a second media).
5. Initializing Windows PE on the “destination computer” (a target system) using the second media.
6. Deploying the image onto one or more Destination Computers.
7. Initializing the Destination Computer by the user and running a fully configured Windows operating system.
Nichols Infringement Report at 9. Dr. Nichols urges that steps 4 — 7 “involve infringement” of the asserted claims, and provides Exhibit E, which includes “screen shots” said to “show Microsoft’s recommended process of creating and customizing the Windows PE media (the second media), capturing the image of the fully configured Windows operating system from the Master Computer (the first media), initializing the Destination Computer with the Windows PE media, partitioning and formatting the disk drive, loading the fully configured operating system onto the disk drive, and re-initializing with the fully configured Windows operating system.” According to Dr. Nichols, the “screenshots were generated using the recommended deployment procedures described in the Windows Automated Installation Kit (Windows AIK) User’s Guide.”
Id.
at Exh. E.
The OPK, according to Dr. Nichols, “is practically identical to WAIK; the major difference being that here the OPK is installed on the Technician Computer instead of the WAIK.” Nichols Infringement Report at 11.
Use of the BDD, Dr. Nichols urges, “implies use of the WAIK,” and that “[i]t is only necessary to examine the relationship of WAIK to the ’573 patent to determine the relationship of BDD to the patent.”
Id.
Further with respect to system deployment, Dr. Nichols includes claim charts said to show infringement by the (1) “deployment tools and procedures for Windows Vista and Windows server 2008,”
see id.
at 16
&
Exh. F, and (2) “deployment tools and procedures for Windows XP and
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Windows Server 2003,”
see id.
at 16 & Exh. G.
b) System Backup & Recovery
With respect to system backup and recovery, Dr. Nichols points to the “built-in backup and restore components” of Windows Vista and Windows Server 2008 as infringing. Dr. Nichols provides a claim chart said to show infringement by the “system recovery tools and procedures for Windows Vista and Windows Server 2008, comprising Windows RE, Complete PC Backup and Restore (for Windows Vista) and Server 2008 Backup and Recovery (for Windows Server 2008).”
See
Nichols Infringement Report at 16, Exh. H.
2. Uses of the Accused Products
a) Infringing Uses
As noted above, Microsoft does not — at least in its present motion — dispute that the accused products are capable of being used to perform the method steps of the asserted claims.
See
Microsoft’s Reply at 5 (Microsoft’s emphasis) (Dr. Nichols’ “claim charts map the claims to
capabilities,
not to actions of consumers.”).
b) Substantial Non-Infringing Uses
However, Microsoft urges that the accused products also have substantial non-infringing uses, as well. Microsoft provides a table said to show “18 exemplary ways of using the accused software * * * that do not even arguably infringe,” and of those, particularly points out “seven indisputable examples of the myriad substantial non-infringing uses of the accused software.”
See
Microsoft’s Brief at 15 & 5, and Declaration of Xuan-Giang Tran in Support of Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claims of Infringement of U.S. Patent No. 5,469,573 (“Tran Decl.”), APX0192-94: Table A — Non-infringing Uses.
See also
Tran Deck, APX0015-90: Rebuttal Expert Report of Mark Morrissey (“Morrissey Rebuttal Report”) at 21-65 (detailing substantial non-infringing uses).
2
Microsoft
*1164
argues that “Veritas cannot meet its burden of proof on this issue for ahy combination of an asserted patent claim and an accused item of Microsoft software,” and that Veritas’ expert, “Dr. Nichols, admitted several non-infringing uses in his deposition, and admitted that he had not even tried to identify or quantify the non-infringing uses of the accused software, and that he is not an expert in how OEMs or system administrators deploy operating systems.” Microsoft’s Brief at 14.
Microsoft elaborates on seven particular scenarios:
1.“Install OS Using DVD and ‘Answer File’:
One primary and substantial use of the accused WAIK (or OPK or BDD) software kit is to create an ‘Answer file’ that stores various configuration choices, and helps automate installation of the operating system (OS) onto a computer. • Then, use a generic operating system (OS) installation DVD to install the OS onto a computer, having the OS’s set-up program look to the Answer file for the necessary configuration choices. Veritas’ expert Dr. Nichols admitted in deposition that this is a non-infringing use of WAIK.”
2.
“Install OS Using Hard Disk Duplication:
Another substantial non-infringing use of OPK is to install the OS onto a hard disk using [this method] or other non-infringing technique. Then, copy that configured operating system onto multiple hard disks connected to a hard disk duplication machine, and then remove those hard disks and install them into computers.”
3.
“Install Win RE and Win RE Onto a Computer For Diagnostics and Repair:
The accused software toolk-its are like physical toolkits: one can use the pliers without ever using the hammer, file, wrench or other tools in the kit. Here, for example, another substantial non-infringing use of OPK, WAIK and BDD is to use Microsoft’s Win PE (Preinstallation
*1165
Environment) 2.0 software — provided with WAIK, OPK and BDD— without using any other tool provided in the accused WAIK, OPK or BDD software kits.” For example, ‘Win PE 2.0 is integrated with Window Recovery Environment (Window RE)” and constitutes a non-infringing use such that “[a]n OEM or system administrator can install Win PE and Win RE onto a computer, without using the accused OS deployment methods.” According to Microsoft, “Dr. Nichols admitted in deposition that Win PE and Win RE can be used together in a non-infringing way, for diagnosis and repair of various problems.”
4.
“Other Substantial Non-infringing Uses of Win PE 2.0:
Dr. Nichols in deposition, and Mr. Morrissey in his expert report/declaration, have identified several other non-infringing uses of the Win PE 2.0 tool provided in the accused software kits. For example, Win PE can be used to perform the following functions without even arguably infringing the ’573 patent: (1) create or edit ‘Boot Configuration Data (BCD)’ stores that describe boot applications and boot application settings, (2) restore the boot sector on a computer, (3) map network drives, (4) create new physical or logical drives, (5) partition and format existing drives, (6) otherwise manage disks, partitions, or volumes, etc. Indeed, Dr. Nichols himself has written a computer program that uses Win PE 2.0 in a non-infringing way.”
5.
“Install Or Recover OS By Booting Win PE From Hard Disk:
Veritas alleges that Win PE serves the role of the ‘temporary operating system’ of the ’573 patent claims. The claims require that the temporary OS be provided by ‘second media’ that, as found by the Special Master and not challenged by Veritas, is ‘physically distinct’ from the storage device. Another substantial non-infringing use of Win PE 2.0 is to store it on the computer’s hard disk and, either in deployment or in a crash recovery situation, ‘flat boot’ the computer from that hard disk.” Microsoft argues that “[u]sed in that manner, the alleged temporary OS is not on a physically distinct media, so this is another non-infringing use of the accused software.”
6.
“Use OS Without Using The Accused Backup and Restore Functionality:
As Dr. Nichols admitted, one can use Windows® Vista and Window© Server 2008 with more than one hundred different applications without infringing the patent, and as he further admitted, these operating system have
substantial
non-infringing uses.”
7.
“Use The Accused Backup and Restore Functionality To Backup, But Not Restore:
As Dr. Nichols also admitted, one can use the accused backup and restore feature (e.g., Complete PC Backup and Restore built into Windows Vista) and not infringe the ’573 Patent, by using it to backup files but then not restoring those files. A computer user is no more required to later restore those files to the computer than a car driver is required to install a spare tire. Dr. Nichols admitted that this backup-but-no-restore was a
substantial
non-infringing use of the OS an of the accused built-in functionality of the OS.”
Microsoft’s Brief at 5-8 (Microsoft’s emphases).
*1166
In rebuttal, Veritas relies on the testimony of its expert, Dr. Nichols, and particularly on Exhibit I to Dr. Nichols’ expert report of July 17, 2007 (Nichols Infringement Report), and Exh. L of Dr. Nichols’ expert report of August 14, 2007 (Nichols Validity Report).
See
Nichols Infringement Report, Exh. I at 1-1 — 1-17 & Nichols Validity Report, Exh. L at L-l — L-ll. Exhibit I is a table entitled “Evidence of Infringement,” and is 17 pages long. Exhibit I, furthermore, references Exhibit F to the July report. Exhibit F is a table entitled “Claim Chart vs. Vista / Server 2008 System Deployment,” and is 22 pages long.
See
Nichols Infringement Report, Exh. F at F-l — F-22. Exhibit L is a table entitled “Supplemental Evidence of Infringement,” and is 11 pages long. Veri-tas cites generally to those exhibits, and does not point out any specific instance in which Dr. Nichols addresses any of the scenarios posited by Microsoft. Nor does Veritas particularly point the Court to anything in those exhibits tending to raise a genuine issue of material fact regarding Microsoft’s assertion that the accused products do not have substantial non-infringing uses. Nor is any such instance apparent upon review of the exhibits, which the master has done despite Veritas’ lack of particularity.
See Carmen v. San Francisco Unified Sch. Dist.,
237 F.3d 1026 , 1031 (9th Cir.2001)(“We hold that the district court may determine whether there is a genuine issue of fact, on summary judgment, based on the papers submitted on the motion and such other papers as may be on file and specifically referred to and facts therein set forth in the motion papers. Though the court has discretion in appropriate circumstances to consider other materials, it need not do so. The district court need not examine the entire file for evidence establishing a genuine issue of fact, where the evidence is not set forth in the opposing papers with adequate references so that it could conveniently be found.”).
In his July report, Dr. Nichols opined that “Microsoft’s infringing tools and procedures have no substantial non-infringing uses.” Nichols Infringement Report at 16. However, Dr. Nichols conceded during deposition that the foregoing statement “is unqualified and it should be qualified,” and provided the qualification that “I believe that I have seen no evidence of substantial non-infringing use.”
See
Tran Deck, APX0112-66: Deposition Excerpts of A.J. Nichols, Ph.D. (“Nichols Dep.”) at 237:7-239:25. That is consistent with Dr. Nichols’ statement in his July report that “[t]he Windows automated installation Kit, OEM Preinstallation Kit, Business Desktop Deployment packages are all described as products for deployment. Microsoft suggests no other use of the products, and I
know
of no substantial non-infringing use of them. Similarly, Vista Complete PC Backup and Restore and a Server 2008 Backup and Recovery used in conjunction with Windows RE are intended for backing up and recovering the operating system environment, and I
know
of no substantial non-infringing use of them.” Nichols Infringement Report at 17 (emphases added) (paragraphing omitted).
Indeed, Dr. Nichols’ qualification came after Microsoft questioned him about a number of substantial non-infringing uses. Dr. Nichols conceded that the accused products had many non-infringing uses, although he also stated that he had not determined whether those uses were “substantial.”
See, e.g.,
Nichols Dep. at 11:25-12:1 (“[Tjhere are ways in which one can use the Vista operating system without infringing the ’573 patent.”), 14:7-15:18 (“One can use the Vista operating system to run an application — run the Word application to write a, for example, a report such as a validity report or an infringe
*1167
ment report of the ’573 patent. One could use a — the Vista operating system to run a program such as Excel to construct a spreadsheet * * *. One can use a Vista operating system to run a Visual Studio, a Visual C++ 6.0 to construct a program that would be used to, for example, analyze source code for duplication. * * * One could use the Vista operating system to gain access to the web * * *. One can use the Vista operating system to open up a DOS box and run programs * * *. One can use the Vista operating system * * * to run the PowerPoint application for Microsoft. One can use the Vista operating system for running Access, which is a database management system * * *. * * *”), 19:9-12 (“I have no idea as to how many people, whether it’s millions or billions or hundreds, but I know that some of those programs are widely used.”), 22:25-23:12 (“I’ll do the best I can here. ‘Substantial noninfringing use’ in my mind as a — as a legal layperson, not as an expert in legalities as you yourself are, I hope, to me that term means that there are some large percentage, substantial amount of uses of a product, a large number of uses, I should say, of a product that do not infringe. That’s what I think ‘substantial noninfringing use’ means. * * * More than a trivial amount, more than a small amount.”), 23:17-29 (“The Windows Vista operating system has substantial uses— uses beyond infringement of the ’573 patent.”), 23:3-18 (“[T]here are probably many programs, application programs that Windows 2008 can run. Probably more than a hundred. * * * Without infringing the 573 patent. * * * and I will even go so far as to give you a substantial number of ways that server 2008 can be used without infringing the 573 patent.”), 29:3-7 (Q. “Is it possible to use Windows PE 2.0 without infringing the ’573 patent?” A. “Yes, I think it’s possible.”), 32:2-6 (Q. “And just to clarify, one noninfringing use of Windows PE 2.0 vis-a-vis the ’573 patent is to support the running of your program called clonedir; is that correct?” A. “That is a non-infringing use, yes.”), 35:5-7 (“I don’t recall specifically attempting to look for noninfringing uses. I certainly discovered one.”), 45:7-10 (“I did not do any research on trying to determine the number of people who had used the Microsoft products to infringe the ’573 patent.”), 46;14 — 16 (“I don’t believe I have looked at Windows PE enough to determine whether the noninfringing uses of Windows PE are substantial.”), 46:23-25 (“I have seen no evidence of anything from Microsoft that would lead me to believe there are substantial noninfringing uses of the OPK.”), 47:4-15 (Q. “Is it possible to receive Microsoft Windows OPK and use only Windows PE 2.0 for any purpose and not use the remainder of the OPK?” A. “It is possible.”), 49:5-25 (“And I thought of a few more things that one can do with Windows Vista that did not infringe the patent. * * * One can run virus programs and get into the operating system in a variety of ways. * * * One can run programs that will block such attempts such as firewalls, virus checker, spyware checkers, route kit checkers. * * * One can watch movies, can put in a CD and watch a movie using a Windows Vista operating system.”), 55:4-12 (Q. “What are some of the ways in which one can install Windows Vista on a computer without infringing claim 30 of the ’573 patent?” A. “Microsoft loaded Vista somehow onto computers presumably by building and installing them using some mechanism that would not necessarily have infringed the ’573 patent, claim 30.”), 90:13 (“I have not used OPK.”), 90:23-91:9 (‘WAIK and OPK are almost identical, A; B, there is testimony, I believe, that I’ve read, and I’d have to review again. But I believe I’ve read testimony by Microsoft existing or former employees that the — as to the purpose of
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WAIK and OPK that led me to believe that Microsoft’s employees, at least, I believe there were no other — there was no intention, at least, of using these products for any other purpose. That they were built explicitly for purposes that would infringe the ’573 patent. I think that was enough analysis on my part.”), 91:18-21 (Q. “Have you ever backed up operating system files and not later restored them from the backup?” A. “Yes.”), 91:23-92:1 (Q. “Is it possible to use the Complete PC feature of Vista to back up operating system files and never restore them from the backup?” A. “Hopefully.”), 92:12-21 (Q. “Do you have an informed opinion as to the percentage of Vista users that back up their operative system using Complete PC? What percentage of those users will never restore the operating system from the backup?” A. “I have not tried to determine those percentages, no.”), 93:16-19 (“If one backed up the operating system files, but did not actually restore them, then one would not meet every element of the independent claims of the ’573 patent.”), 93:25-94:9. (A. “I would expect that a goodly number of people would do a backup — that did a backup would not use it, would not need to restore from it.” Q. “So isn’t that a substantial noninfringing use of the Complete PC feature; namely, to back up operating system files but not restore them?” A. “Probably. Hopefully.”), 94:11 95:25 (Q. “And is the same true for the backup and restore feature in Server 2008; namely, that a substantial nonin-fringing use of that particular feature is to back up operating system files but not restore them?” A. “There are probably a goodly number of people — I don’t think server 2008 is released. Is a released yet?” Q. “Not commercially, no.” A. “Then we are talking about something that is really hypothetical here because it doesn’t even exist. But when it exists, I will expect that some people will use the backup and not have to do a restore of the operating system.” * * * Q. “And that won’t be a trivial number, will it? It will be a substantial number, won’t it?” A. “We are talking about the future. I have no idea. Probably it will be a substantial number.”), 104:11-23 (Q. “And when a person goes to a store and picks up the Vista retail DVD and installs on the computer, they are not infringing any of the claims of the ’573 patent, are they, because they’re not installing a fully configured operating system, isn’t that right?” A. “That’s correct.”), and 224:14-17 (“When you use Windows RE to do automatic diagnosis and repair of an installation that has become uninitializable, then that would not, by itself, be infringement of the ’573 patent.”).
Veritas nevertheless argues that the accused products “have no substantial non-infringing uses for the
mode of operation
accused.” Veritas’ Response at 18 (Veri-tas’ emphasis). According to Veritas, “Microsoft’s argument misses the mark, however, because Microsoft never points to a substantial noninfringing use for any of the accused recovery or deployment scenarios referenced above. Instead, it merely discusses the allegedly noninfringing uses of certain components in the identified scenarios, or the allegedly noninfring-ing uses of the Accused Products outside of the identified scenarios. Microsoft is therefore arguing that the Accused Products are staple articles simply because they perform functions in addition to those functions that are accused to infringe.”
Id.
at 18-19. According to Veritas, that is “contrary to the law and should be rejected,” citing
Oak Indus., Inc. v. Zenith Elecs. Corp. (“Oak Industries II”),
726 F.Supp. 1525 (N.D.Ill.1989), and
Imagexpo, L.L.C. v. Microsoft Corp.,
284 F.Supp.2d 365 (E.D.Va.2003). Veritas’ Response at 19.
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Microsoft replies that “[w]hen determining whether an accused product has a substantial noninfringing use, it is the thing sold, not some allegedly infringing ingredient or portion of an accused product, that matters,” citing
Hodosh v. Block Drug Co.,
833 F.2d 1575, 1578 (Fed.Cir.1987). According to Microsoft,
Oak Industries
and
Imagexpo
are “irrelevant.”
See
Microsoft’s Reply at 2-3.
Veritas’ argument pertains particularly to indirect infringement under § 271(c),
i.e.,
contributory infringement. Focus on particular “system recovery and system deployment scenarios” is improper for the staple/non-staple inquiry under § 271(c). Again, the asserted claims are all method claims, and so the contributory infringement analysis focuses on “a material or apparatus for use in practicing a patented process.” Whether the accused software constitutes a “material or apparatus” is discussed separately below; nevertheless, the staple/non-staple inquiry properly focuses on what Microsoft “offers to sell or sells within the United States or imports into the United States.”
In other words, as Microsoft points out, § 271(c) “deals with the material actually sold by the accused and the uses made of it by its purchasers.”
Hodosh,
833 F.2d at 1578 . In
Hodosh ,
the accused infringer sold toothpaste, and the court rejected the patent owner’s attempt to limit the staple/nonstaple inquiry to one ingredient of that toothpaste, namely, potassium nitrate:
Section 271(c) requires examination of the patented method only in determining whether the material the accused actually sells constitutes a material part of the invention and is known by the accused to be especially made or adapted for use in infringing the patent. Neither party here “sells” potassium nitrate, and Block’s attempted limitation of the staple/nonstaple inquiry to that mere ingredient would eliminate the § 271(c)— mandated inquiries relating to whether what was actually sold was a material part of the invention and whether the seller knew that what was actually sold was especially made or adapted for use in infringement of the patent.
Id. See also Aquatex Indus., Inc. v. Techniche Solutions,
419 F.3d 1374 , 1383 n.* * [sic] (Fed.Cir.2005) (“From the record before us, the ‘apparatus for use in practicing’ the claimed methods is Techniche’s multi-layered product. The proper question is not whether Vizorb TM is a staple article of commerce, which is readily apparent, but whether the accused Techniche products are “suitable for substantial non-infringing use[s].” ’). Here, there is no dispute that Microsoft sold and offered to sell the accused products as units,
e.g.,
Windows Vista and Server 2008, not just the specific recovery or deployment scenarios urged by Veritas. It must be concluded, therefore, that Veritas does not dispute the scenarios posited by Microsoft, or dispute that the accused products, namely, Windows XP, Server 2003, Vista and Server 2008, have substantial non-infringing uses.
As noted above, Veritas cites two cases,
Oak Industries
and
Imagexpo,
in support of its argument. In
Oak Industries,
the patented method, the “Mandell method,” claimed a method for eliminating direct interference on CATV systems. According to the opinion, Defendant Zenith sold converters “capable of practicing the Man-dell method” to cable operators. However, the opinion explains that “these converters also perform other functions such as expanding the number of channels that the subscriber may receive, providing subscribers with the ability to unscramble protected signals, thus allowing cable operators to scramble protected frequencies, and allowing cable operators to address and remotely control subscribers’ programming. Zenith converters apparently
*1170
contain several electronic systems, such as a tuner, a detector, a decoder and a modulator. These systems are interconnected to perform multiple functions. In other words, the same circuitry that, for example, expands the number of channels that a subscriber may receive, also allows the subscriber to receive on cable an over-the-air VHF channel output on a channel not used by the over-the-air stations (such as channel 3 in Chicago). The use of the converter’s electronic systems in this manner, when combined with the shielding inherent in the housing in the Zenith converters, allows subscribers — at least for the purposes of this motion — to directly infringe the Mandell method.”
Oak Industries II, 726
F.Supp. 1525, 1529. Zenith had earlier moved for summary judgment claiming,
inter alia,
that it was not liable for contributory infringement. The court had then held that Zenith had not presented sufficient evidence to show an absence of material fact concerning whether its converters were staple articles.
3
In
Oak Industries II ,
the issue before the court was: “are Zenith’s converters
*1172
staples?” 726 F.Supp. at 1538 . The court reasoned as follows:
For if they are, Zenith is not liable for contributory infringement.
See Calhoun v. State Chem. Mfg. Co.,
153 F.Supp. 293, 301 , 115 U.S.P.Q. 120, 126 (N.D.Ohio 1957); 35 U.S.C. § 271 (b). To answer this question we must examine the converter Zenith sells.
See Hodosh v. Block Drug Co.,
833 F.2d 1575, 1577 , 4 U.S.P.Q.2d 1935, 1937 (Fed.Cir.1987), ce
rt. denied,
485 U.S. 1007 , 108 S.Ct. 1472 , 99 L.Ed.2d 701 (1988). For the purposes of this motion Zenith has agreed that its converters are capable of practicing the Mandell method. Although these converters also perform additional functions, we recognized the general rule that combining non-infringing functions in one device that is capable of practicing a patented method will not ordinarily result in the court finding that such device is a staple.
Oak,
697 F.Supp. at 995, 9 U.S.P.Q.2d at 1143-44. If this were not the rule, a seller could avoid liability for contributory infringement of a method patent simply by adding other materials or functions. We do not believe that Congress intended that the seller could so easily avoid liability. The difficulty arises here because Zenith’s converters use the same parts to perform non-patented methods and to practice the Mandell method. Zenith claims that because of these physical limitations, infringement of the Mandell patent is inevitable. Thus we continue to believe that the proper test to determine if a device that can practice non-infringing methods, but allows practice of a patented method, is a staple, is that the practice of the patented method must be incidental and necessary due to technological limitations.
Id.
at 996, 9 U.S.P.Q.2d at 1145. If the practice of the patented method is incidental and necessary to the practice of the unpat-ented methods, the device is a staple and there can be no contributory infringement. If, on the other hand, the practice of the patented method is not necessary or incidental to the practice of the unpatented methods, a jury could find that the device
as a whole
is not staple and the seller could be liable for contributory infringement.
726 F.Supp. at 1538-39 . Zenith argued non-infringement on two bases: (1) that structural housings shielded electronic components from electromagnetic radiation and thus served a number of non-
*1173
infringing purposes, and (2) simple design changes would render the converter non-infringing. With respect to (1), the paten-tee responded that the degree of shielding was not necessary to perform the non-patented methods, but was necessary only if one wished to practice the Mandell method. The court concluded that there was a genuine issue of material fact whether “the new shielded converters have no reason for being other than to infringe the Mandell patent,”
i.e.,
whether “converters with extra shielding perform no additional non-infringing functions from the unshielded converters.” In other words, with respect to a patented method, there remained a genuine issue of material fact whether a structural element added non-infringing functionality to the accused product. As for (2), the court rejected Zenith’s arguments because Zenith did not sell products with those design changes.
There is no need here to address the “tentative legal views” of
Oak Industries I
or the reasoning of
Oak Industries II ,
for those cases are readily distinguishable from the present situation.
4
As in
Oak
*1174
Industries,
the focus here is on the accused product as a whole, not on a particular functional scenario. .Unlike the situation in
Oak Industries II ,
however, here there is no dispute that the accused products perform non-infringing functions. Thus, infringement is not inevitable. Nor is there any structure at issue that may or may not add non-infringing functions to the accused products. The situation in
Oak Industries II
is simply not analogous to the present situation, nor is there anything in
Oak Industries
that suggests looking at less than the product as a whole.
Imagexpo
does not compel a different conclusion. The court in
Imagexpo
relied exclusively on the reasoning in
Oak Industries I
in couching the issue as “whether and how intricately each software package combines the patented method with additional software applications?”
Imagexpo,
284 F.Supp.2d at 368 . Imagexpo had argued that “neither of the accused software applications, Buddy Browser or whiteboard, is a staple article or commodity of commerce suitable for any substantial non-infringing use.” Microsoft had argued that “the products at issue are not the single applications of Buddy Browser and whiteboard, but rather MSN 8 and Net-Meeting, as suites or packages of software.” And according to the court, the MSN 8 suite added “parental controls, a junk e-mail filter, and photo-supporting email software to the accused Buddy Browser function, and the NetMeeting suite adds application sharing, file transfer, and chat features to the accused whiteboard feature.”
Id.
at 367 . The court questioned whether “the Microsoft software suites [were] a combination of separable functions, or [whether] each suite [was] designed such that, due to the limits of technology, each necessarily and incidentally practices the patented method in order to accomplish its purpose? Stated another way, even if Microsoft made every effort to remove Buddy Browser and
*1175
white board from software suites, would the remaining technology, used to practice the other functions in MSN 8 and Net-Meeting, nevertheless permit a user to practice the patented method? These are disputed questions of material fact that the court finds relevant to the question of substantial non-infringing use.”
Id.
at 368 . Here, however, there is no dispute that the accused products have substantial non-infringing uses, which distinguishes the instant case from that of
Imagexpo.
Veritas’ arguments regarding
Oak Industries
and
Imagexpo
must therefore be rejected.
With no dispute that the accused products have substantial non-infringing uses, Microsoft cannot be held liable for contributory infringement.
See, e.g., Grokster.,
545 U.S. at 932 , 125 S.Ct. 2764 (“This analysis reflected patent law’s traditional staple article of commerce doctrine, now codified, that distribution of a component of a patented device will not violate the patent if it is suitable for use in other ways.”).
c) U.S. and Foreign Uses
There also appears to be no dispute that the accused products are used both in the United States and outside the United States.
See, e.g.,
Veritas’ Response at 20 (‘Veritas has
not
accused
exported
Microsoft golden masters or any exported Microsoft software * * (Veritas’ emphasis)) and 23 n. 21 (discussing apportioning damages for U.S. versus non-U.S. use).
d) Use with Veritas’ Products
Finally, Veritas does not appear to dispute that Veritas’ own software may be used to deploy Windows operating system.
See
Morrissey Rebuttal Report at 65 (“It is not necessary to use Microsoft’s toolkits and tools to deploy Windows operating system. Several third parties provide tools that can be used to deploy Windows operating systems. For example, at least the following third-parties offer tools that can be used to deploy the Windows XP operating system: * * * Symantec, * * *. The Vista operating system can be deployed with at least the following third-party tools: Symantec Ghost, * * *.”). ******
Viewing the evidence in light most favorable to Veritas, therefore, there is no dispute that the accused products — as sold— are (1) capable of infringing uses, (2) capable of substantial non-infringing uses and (3) used both inside and outside the United States. Nor does there appear to be any dispute that (4) Veritas’ own products, running on the accused products, may be used to deploy Windows operating systems.
3. Infringement
It is worth emphasizing here that Microsoft’s motion for summary judgment with respect to direct infringement urges that Veritas has no evidence of infringing use by Microsoft’s
customers.
In other words, Microsoft does not here contend that it (Microsoft) has not made infringing use of the accused products.
Microsoft thus seeks to limit its damages exposure by removing on summary judgment the largest class of potential in-fringers — Microsoft’s customers for the accused products. In the instant suit, Veri-tas did not sue Microsoft’s customers for infringing the accused products; rather, Veritas seeks to hold Microsoft vicariously liable for its customer’s infringement. To avoid summary judgment, therefore, Veri-tas must,
inter alia,
raise a genuine issue of material fact regarding use by Microsoft’s customers of the accused products to perform “all the steps of the process.”
BMC Resources,
498 F.3d at 1379.
See Glenayre Elecs., Inc. v. Jackson,
443 F.3d 851 , 875-76 (Fed.Cir.2006)(“The rule is
*1176
that the patent must be shown to be directly infringed, usually by a third person who is not before the court, before the patentee can seek damages from the entity that induced or contributed to that direct infringement.”);
see Dynacore Holdings Corp. v. U.S. Philips Corp.,
363 F.3d 1263, 1272 (Fed.Cir.2004)(“Indirect infringement, whether inducement to infringe or contributory infringement, can only arise in the presence of direct infringement, though the direct infringer is typically someone other than the defendant accused of indirect infringement
A hypothetical act of direct infringement is insufficient.
See Dynacore,
363 F.3d at 1274-76 (rejecting Dynacore’s argument that “a hypothetical direct infringement suffices to establish the defendants’ broad vicarious liability across the entire category of IEEE 1394 compliant networks”). Rather, Veritas must either show that use of the accused products necessarily infringes, or identify a specific instance of direct infringement.
See id.
at 1275-76 (“Dynacore must therefore either demonstrate that LANs compliant with the IEEE 1394 Standard necessarily infringe the ’732 Patent, or point to a specific instance of direct infringement and restrict its suit to liability stemming from that specific instance.”);
ACCO Brands,
501 F.3d at 1313 (“In order to prove direct infringement, a patentee must either point to specific instances of direct infringement or show that the accused device necessarily infringes the patent in suit. Here, the parties do not dispute that the accused device can be operated in either of two modes — the infringing Dornfeld method or the noninfringing press-to-lock method. Because the accused device can be used at any given time in a noninfringing manner, the accused device does not necessarily infringe the ’989 patent.”).
Because the accused products have undisputed substantial non-infringing uses, Veritas cannot show that use of the accused products necessarily infringes. Thus, Veritas must point to a specific instance of direct infringement in order to avoid summary judgment on its charge of indirect infringement.
Of course, mere sale of the accused products by Microsoft is insufficient to raise a genuine issue of material fact regarding infringement of the asserted claims.
See Ormco Corp.,
463 F.3d. at 1310-11 (“Method claims are only infringed when the claimed process is performed, not by the sale of an apparatus that is capable of infringing use.”). And, because use of the accused products does not necessarily infringe, mere use of the accused products by Microsoft’s customers is likewise insufficient to raise a genuine issue of material fact regarding infringement. In other words, Veritas must do more than make a showing that a customer used the accused products to deploy or restore. Veritas must make a showing that such deployment or restoration was accomplished using a method recited in the claims.
Also, some of the claimed method steps are inherently ordered,
i.e.,
one step must follow another. For example, in independent claims 1, 18 and 30, the step of “initializing the data processing system from the second media” must follow the steps that introduce the “second media.”
See Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc.,
152 F.3d 1368 , 1376 (Fed.Cir.1998) (holding that “the sequential nature of the claim steps is apparent from the plain meaning of the claim language and nothing in the written description suggests otherwise”). Thus, Veritas must also show that Microsoft’s customers not only performed the claimed method steps, but performed those steps in an order inherent to
*1177
the claims.
See E-Pass Techs., Inc. v. 3Com Corp.,
473 F.3d 1213, 1222 (Fed.Cir.2007) (citation omitted)(“Procedurally, it is hornbook law that to survive the defendants’ motions for summary judgment, E-Pass must ‘make a showing sufficient to establish the existence of [each] element essential to [its] case.’ Substantively, because the language of most of the steps of its method claim refer to the completed results of the prior step, E-Pass must show that all of those steps were performed in order.”).
Furthermore, Veritas must show use within the U.S. After all, under § 271(a) provides for infringement based on activities “within the United States.”
See also
§ 271(c) (“Whoever offers to sell or sells within the United States or imports into the United States * * * shall be liable as a contributory infringer.”). One cannot not infringe by performing a claimed method outside the U.S.
See NTP,
418 F.3d at 1318 (“We therefore hold that a process cannot be used ‘within’ the United States as required by section 271(a) unless each of the steps is performed within this country.”);
Voda v. Cordis Corp.,
476 F.3d 887, 901 (Fed.Cir.2007)(“A patent right is limited by the metes and bounds of the jurisdictional territory that granted the right to exclude.”).
Likewise, Veritas must show that such use was not accomplished using Veritas’ software. Under § 271(a), there is no infringement unless Microsoft’s customers performed the accused action “without authority.”
Generally, Veritas’ evidence of direct infringement falls into three categories: (1) “users manuals, advertising materials and other product documentation that instruct [Microsoft’s] customers how to use the Accused Products to perform the infringing methods in both the system deployment and system recovery scenatios identified by Veritas,” supported by “an expert report from Dr. Nichols that provides a detailed, claimed-by-claim, infringement analysis of all the Accused Products, identifying such offending literature,” (2) “Microsoft’s own witnesses [who] have testified concerning the use of the Accused Products by Microsoft’s customers in an infringing manner,” and (3) “in hundreds of e-mails, customer specifications and other documents establishing that customers use the Accused Products as instructed by Microsoft to perform the claimed recovery and deployment methods.” Veritas’ Response at 8-9 & 12. The master addresses each category of evidence in turn.
a) “users manuals, advertising materials and other product documentation”
Veritas specifically points to the (1) Windows Automated Installation Kit (Windows AIK) User’s Guide,
see
Schallop Deck, Exh. G: (“WAIK Guide”), (2) Getting Started with the Windows Automated Installation Kit (Windows AIK),
see
Schal-lop Deck, Exh. H: (“WAIK Getting Started”), (3) OEM Preinstallation Kit (OPK) User’s Guide for Windows XP Service Pack 2,
see
Schallop Deck, Exh. HH: (“OPK Guide”), (4) Windows Backup and Restore Center — Complete PC Backup and Restore,
see
Schallop Deck, Exh. J: (“BRC”), and (5) a presentation delivered to Microsoft customers entitled “Backup and Restore in Windows Vista and Windows Longhorn Server”,
see
Schallop Deck, Exh. K: (“Presentation”), among other documents considered by Dr. Nichols.
5
Veritas also points to Dr. Nichols’ treatment of the WAIK Guide in his report at Exh. E, the WAIK Getting Started refer
*1178
ence in his Exh. F, the OKP Guide in his report at Exh..G, and the BRC and Presentation in his report at Exh. H.
See
Veri-tas’ Response at 8-9.
(1) WAIK Guide
Turning first to the WAIK Guide
(see
Schallop Dec!., Exh. G: VRTS 00943244718), the WAIK Guide appears to be an electronic hyperlinked manual that corresponds to approximately 475 pages when printed out, at least as provided by Veri-tas. The WAIK Guide provides the following introduction:
[[Image here]]
WAIK Guide at VRTS 00943245. According to the WAIK Guide, “[ejach phase contains a collection of topics including conceptual, how-to, and walk-through topics. Conceptual topics focus on what you need to know during that phase of deployment. How-to topics provide specific instructions on common tasks. Walk-through topics are step-by-step instructions on building specific solutions.”
Id.
at VRTS-262.
Dr. Nichols’ Exhibit E infringement chart for the WAIK relies on the WAIK Guide. That chart is reproduced below to the extent that it references the WAIK Guide (screenshots and accompanying discussion are omitted), and in the order provided by Dr. Nichols:
*1179
[[Image here]]
*1180
[[Image here]]
Nichols Infringement Report, Exh. E. As may be seen from the chart, Dr. Nichols pulls together three portions of the WAIK Guide in an effort to show infringement, namely, those at pages VRTS 00943295, - 403-04 and -448.
Starting with the five phases discussed in the foregoing Introduction, one may drill down to the specific pages referenced by Veritas in order to put those pages in context. Page VRTS 00943295 is part of Phase 3, which addresses “Preinstallation Customization:”
*1181
[[Image here]]
WAIK Guide at VRTS -285. The “Customization Walkthroughs” section describes a number of walkthroughs. Of interest is the “Walkthrough: Build a Configuration Set.”
[[Image here]]
WAIK Guide at VRTS -287.
The “Walkthrough: Build a Configuration Set” section provides the following discussion:
*1182
[[Image here]]
WAIK Guide at VRTS -292. Following that discussion, the walkthrough provides an 8-step process for “Building a Configuration Set.”
See id.
at VRTS -292-97. Those steps include: (1) “Create a Distribution Share,” (2) “Add Drivers and Applications to Distribution Share,” (3) “Create an Answer File,” (4) “Add and Configure Windows Settings,” (5) “Add a Device Driver to the Answer File,” (6) “Add a Third-Party Application,” (7) “Validate the Answer File” and (8) “Create a Configuration Set.” Page VRTS 00943295 discloses the first part of step 5 of that process, the step that Veritas references:
[[Image here]]
For context, step 5 continues on page - 296:
[[Image here]]
Id.
at VRTS -295-96.
Pages VRTS 00943403-04 are part of Phase 4, which discusses “Image Deployment.”
*1183
[[Image here]]
Id.
at VRTS -394.
Drilling down further, the “Déployment Walkthroughs” section provides a number of walkthrough scenarios:
[[Image here]]
Id.
at VRTS -398.
Specifically, pages VRTS 00943403-04 are part of the “Deploy an Image from a Network Share” Walkthrough:
*1184
[[Image here]]
*1185
Id.
at VRTS -403-04. As may be seen from Dr. Nichols’ chart, Veritas focuses on step 3.
Finally, Veritas also points to page VRTS 00943448. That page is also part of Phase 4, which discusses “Image Deployment” as noted above.
See id.
at VRTS - 394. Focusing on the “Deployment How-To Topics,” that section provides:
[[Image here]]
Id.
at VRTS -415.
Drilling down further to the “Work with Windows PE” section, that section provides further sub-topics:
[[Image here]]
Id.
at VRTS -416.
Turning to the “Windows PE Customization How-To Topics,” that section provides:
*1186
[[Image here]]
Id.
at VRTS -446.
Page VRTS 00943448, which Veritas points to, introduces the “Add a Device Driver to an Offline Windows PE Image” section:
[[Image here]]
Id.
*1187
Dr. Nichols also relies on the WAIK Guide, along with three other references,
6
in his infringement claim chart regarding Vista / Server 2008 system deployment.
See
Nichols Infringement Report, Exh. F. However, Dr. Nichols relies on the WAIK Guide only for certain claims and claim elements in the Exhibit F claim chart. Also, Dr. Nichols relies on different parts of the WAIK Guide in the Exhibit F claim chart than he did for the Exhibit E claim chart above.
With respect to Exhibit F, for the claim 1 element “providing a second media comprising configuration-specific data files,” Dr. Nichols relies on the WAIK Guide at VRTS 00948438-36 and -449-50. Pages VRTS 00943433-36 are part of Phase 4, under the “Windows PE Walkthroughs” discussed above at VRTS -416.
The various “Windows PE Walkth-roughs” include:
[[Image here]]
WAIK Guide at VRTS -422.
Pages VRTS 00943433-36 discuss the “Create a Custom Windows PE Image” walkthrough (Dr. Nichols focuses only on step 3):
[[Image here]]
*1188
[[Image here]]
*1189
[[Image here]]
*1190
[[Image here]]
*1191
[[Image here]]
Dr. Nichols relies on the other references with respect to the rest of claim 1.
Dr. Nichols also relies on the WAIK Guide for the following:
Claim WAIK Guide pages (VRTS 000943
— )
Claim 10 Pages -271 and -578
Claims 13-16 For all four claims, pages - 497, -525 and -590
Claim 17 Pages -428 and -431
Claim 30: “configuring a disk drive of a second data processing system with the desired configuration for the first data processing system” Page-496
Claim 30: “copying configuration-specific data files from the disk drive of the second data processing-system to a second media” Pages -433-36 (discussed above in connection with claim 1)
Claim 32 Page -408
Claim 33: “initializing the data processing system from a second media, having configuration-specific data files, to provide a temporary operating system using the configuration-specific data files to configure the data processing system” Pages -433-36 (discussed above in connection with claim 1)
See
Nichols Infringement Report, Exh. F.
Once again, there is no dispute that the WAIK Guide discloses a number of different deployment scenarios or walkthroughs that a customer may utilize without infringing the asserted claims, which makes actual infringing use too speculative to circumstantially raise a genuine issue of material fact of direct infringement by Microsoft’s customers.
Also, Dr. Nichols cobbles together parts of various walkthroughs to show that the
*1192
WAIK Guide teaches the claimed methods. However, those parts are not disclosed together, and in the claimed order, so as to teach the claimed method steps in the order required by the claims. Dr. Nichols’ approach indicates that the accused products are capable of performing the claimed methods — and that is not in dispute — but nothing in the WAIK Guide indicates that Microsoft’s customers have actually used the accused products in the manner that Dr. Nichols suggests. The manner in which the WAIK Guide discloses the claimed method suggests to the contrary, and Dr. Nichols does not explain whether the WAIK Guide itself would lead a user to use the accused products as Dr. Nichols suggests. Thus, Veritas’
ad hoc
reliance on the WAIK Guide to show that a user actually performed the claimed method is too speculative to raise a genuine issue of material fact in that regard.
See E-Pass Technologies,
473 F.3d at 1222 (“[T]he evidence here shows, at best, that the Palm defendants taught their customers each step of the claimed method in isolation. Nowhere do the manual excerpts teach all of the steps of the claimed method together, much less in the required order. Accordingly, it requires too speculative a leap to conclude that any customer actually performed the claimed method.”).
(2) WAIK Getting Started
The same may be said with respect to the WAIK Getting Started
(see
Schallop Decl., Exh. H: VRTS 01843128-39) reference. Veritas argues that the reference “instructs user[s] to employ the same deployment method” as the WAIK Guide. Veritas’ Response at 9. The WAIK Getting Started reference comprises 12 pages, and begins as follows:
*1193
[[Image here]]
*1194
[[Image here]]
*1195
[[Image here]]
WAIK Getting Started at VRTS 01843128-30.
The WAIK Getting Started reference provides the following list of requirements:
[[Image here]]
*1196
Id.
atVRTS-131.
Dr. Nichols relies on the WAIK Getting Started reference, along with other references and witness testimony,
7
in his infringement claim chart regarding Vista / Server 2008 system deployment.
See
Nichols Infringement Report, Exh. F at F-l. According to Dr. Nichols, “[t]his exemplary claim chart describes the deployment of Windows Vista as taught by Microsoft in the Microsoft’s [WAIK Guide] (as part of the Windows Automated Installation Kit). The same teachings are in Microsoft’s [OPK Guide] (as part of the OEM Preinstallation Kit). Upon information and belief, Microsoft recommends the use of the same infringing components, particularly WinPE 2.0, in the same manner in the deployment of Windows Server 2008.”
Id.
Exh. F at F-l n. 2.
In connection with claim 1, for example, Dr. Nichols uses WAIK Getting Started as follows:
[[Image here]]
*1197
[[Image here]]
*1198
[[Image here]]
*1199
[[Image here]]
Nichols Infringement Report, Exh. F at F-l — F-15.
As with the WAIK Guide, however, Dr. Nichols selectively relies on various method steps disclosed in the WAIK Getting Started reference, and relies on the other three references where the WAIK Getting Started reference lacks disclosure. Thus, although the WAIK Getting Started reference is substantially shorter than the WAIK Guide, Dr. Nichols’ selective use of the WAIK Getting Started reference in conjunction with other references and testimony to show that a user actually performed the claimed method is likewise too speculative to raise a genuine issue of material fact in that regard.
See E-Pass Technologies,
473 F.3d at 1222 .
Furthermore, the front page of the WAIK Getting Started reference contains a disclaimer that indicates that the reference had limited release, if at all, and would not have been generally available to Microsoft customers:
*1200
[[Image here]]
Disclaimer
This document supports a preliminary release of a software product that may be changed substantially prior to final commercial release, and is the confidential and proprietary information of Microsoft Corporation. It is disclosed pursuant to a non-disclosure agreement between the recipient and Microsoft. This document is provided for informational purposes only and Microsoft makes no warranties, either express or implied, in this document. Information in this document.
That is, the WAIK Getting Started reference pertains to a version of WAIK for a product (Windows Vista) that had not yet been commercially released. Viewing the WAIK Getting Started reference in a light most favorable to Veritas, no reasonable juror could conclude from WAIK Getting Started that a Microsoft customer actually used the accused software to perform a claimed method.
(3) OPK Guide
As for the OPK Guide (see Schallop Decl., Exh. HH: VRTS 01828315-571), Veritas contends that the OPK Guide “instructs users to perform the same infringing method for installation of the XP and Server 2003 operating systems.” Veritas’ Response at 9. The OPK Guide appears to be an electronic hyperiinked manual that corresponds to approximately 257 pages when printed out, at least as provided by Veritas. The OPK Guide provides the following introduction:
*1201
[[Image here]]
OPK Guide at VRTS 316-17 (pp. 2-3
8
).
Dr. Nichols’ Exhibit G infringement chart relies in part on the OPK Guide.
See
Nichols Infringement Report, Exh. G at G-l.
9
That chart is reproduced below for claim 1 to the extent that it references the OPK Guide:
*1202
[[Image here]]
*1203
[[Image here]]
*1204
[[Image here]]
*1205
[[Image here]]
*1206
[[Image here]]
Nichols Infringement Report, Exh. G at G-l — G-13. As is clear from the foregoing, Dr. Nichols does not rely on the OPK Guide for claim element l[f]. The same appears to be true for the corresponding element in claim 33.
See id.
at G-22.
As cited by Dr. Nichols, page 1 of the OPK Guide explains,
inter alia,
that:
*1207
[[Image here]]
OPK Guide at VRTS -315. Page 7 of the OPK Guide provides hyperlinks to “Customization Guidelines:”
[[Image here]]
Id.
at VRTS-321.
Page 34 provides a “Comparison of Preinstallation Methods,” and explains:
*1208
[[Image here]]
Page 34 also provides a chart comparing various methods according to speed, volume and customization:
[[Image here]]
OPK Guide at VRTS-348.
Additionally, pages 34-36 describe a number of different preinstallation methods, including “Build-to-Plan,” “Build-to-Order,” “Network Setup” and “CD Boot.”
See
VRTS -348-50. Dr. Nichols focuses on those as teaching “using OPK to customize Windows to provide a fully configured operating system.”
See
Nichols Infringement Report, Exh. G at G-2.
Dr. Nichols continues to rely primarily on the OPK Guide, pages 33-36, until reaching the limitation “providing a second media comprising configuration-specific data files” (claim element l[c]). There, Dr. Nichols notes that the OPK Guide states at page 61 that “For more information on building a version of Windows PE customized to meet sure manufacturing needs, see Creating a Customized Version of Windows PE.” It is not clear what section page 61 falls under, but the context for that statement is reproduced below:
*1209
[[Image here]]
That section suggests that customization is optional, and Dr. Nichols indicates that to be the case, as his explanation in connection with l[e] makes clear (“For example, the
WinPE User Guide (2004.)
teaches that when PE
can contain
configuration-specific data files, such as drivers, which
can be used
to configure the data processing system in a specific manner and collectively provide necessary information for loading data form
[sic
] the first media to the storage disk (or disk drive) of that system.” Nichols Infringement Report, Exh. G at G-3 (underlining added)). In any case, Dr. Nichols then relies on a different reference, WinPE User Guide (2004), as disclosing that method step.
Dr. Nichols then continues with the OPK Guide as indicated in the claim chart excerpts, and uses the OPK Guide similarly for other claims.
As with the WAIK Guide, the method steps Dr. Nichols relies on are not disclosed together, or even entirely in the OPK Guide. Moreover, Dr. Nichols indicates, and the OPK Guide teaches, that at least one method step is optional. And, once again, there is no dispute that the OPK Guide discloses a number of different non-infringing uses to which the customer may put the accused products without infringing the asserted claims. Dr. Nichols’ approach thus once again indicates that the accused products are capable of performing the claimed methods — and that is not in dispute — but nothing in the OPK Guide indicates that Microsoft’s customers have actually used the accused products in the manner that Dr. Nichols suggests. Thus, again, Veritas’
ad hoc
reliance on the OPK Guide to show that a user actually performed the claimed method is too speculative to raise a genuine issue of material fact in that regard.
See E-Pass Technologies,
473 F.3d at 1222 (“[T]he evidence
*1210
here shows, at best, that the Palm defendants taught their customers each step of the claimed method in isolation. Nowhere do the manual excerpts teach all of the steps of the claimed method together, much less in the required order. Accordingly, it requires too speculative a leap to conclude that any customer actually performed the claimed method.”).
(4) BRC
According to Veritas, BRC “instruct[s] customers how to perform the infringing recovery methods using the specified recovery scenarios.” Veritas’ Response at 9. The BRC is a 4-page printout
(see
Schal-lop Decl., Exh. J: VRTS 01843782-85):
[[Image here]]
*1211
[[Image here]]
*1212
[[Image here]]
Dr. Nichols’ Exhibit H infringement chart relies in part on the OPK Guide, which is discussed above.
See
Nichols Infringement Report, Exh. H at H-l.
10
Ac
*1213
cording to Dr. Nichols’ chart, however, the BRC only discloses claim elements l[a] (preamble), l[b] (“providing a first media comprising operating system files for installing a fully configured operating system onto the storage device”) and l[e] (“loading the fully configured operating system files from the first media to the storage device using the temporary operating system.”). Dr. Nichols relies on other references for the remaining disclosure. Thus, the BRC does not disclose every step of a claimed method, nor does the BRC otherwise provide sufficient detail to determine which backup method was used. As noted above, there is no dispute that the accused products are capable of substantial non-infringing uses, including non-infringing backup and restore operations. The BRC simply does not point to use of a sufficiently specific method such that a reasonable jury could identify an infringing method from the BRC, much less conclude that a Microsoft customer had actually used the accused products to perform a claimed method.
(5) Presentation
As with the BRC, Veritas urges that the Presentation
(see
Schallop Deck, Exh. K: VRTS 00943209-43) “instructs] customers how to perform the infringing recovery methods using the specified recovery scenarios.” Veritas’ Response at 9. The presentation includes at least 28 slides (judging from Dr. Nichols’ chart below). Veritas, however, has provided only 17 or so of those slides, and it is not clear which of the 28 (or more) slides Veritas has omitted.
According to Dr. Nichols’ chart, the Presentation discloses most claim elements (chart reproduced in pertinent part below with respect to claim 1):
[[Image here]]
*1214
[[Image here]]
*1215
[[Image here]]
*1216
[[Image here]]
Nichols Infringement Report, Exh. H at H-l — H-13.
In short, the Presentation suffers many of the same shortcomings as does the BRC. The Presentation provides many capabilities, but does not explain exactly how those capabilities are to be implemented. That is, the Presentation does not disclose sufficient detail to determine what backup method(s) the slides are referring to. Thus, there is no way to tell from the Presentation whether those methods are infringing, much less whether any Microsoft customer has actually performed those methods. Thus, the Presentation fails to show that any Microsoft customer has actually used the accused products in an infringing manner.
(6) Remaining Product Manuals, Materials & Documentation
As is clear from Dr. Nichols’ expert report,
11
Veritas relies on other product documents that are referenced in its brief. However, a review of each of the following documents provided by Veritas reveals that for many of the foregoing reasons these documents likewise fail to show that Microsoft’s customers have actually used the accused products in an infringing manner:
Windows Vista CompletePC help documentation
This set of documents includes the following printouts: “Back up your programs, system settings, and files” (1 page), “Methods for backing up your files” (2 pages), “Restore your computer from a system image backup” (3 pages), and “What are the system recovery options in windows vista?” (2 pages).
See
Schallop Decl. Exh. I: VRTS 01196481-89. Those documents provide a general discussion of those topics, and indicate that the accused products are capable of backup and recovery, but do not provide sufficient detail to determine the method of backup and recovery.
For example, the document “Restore your computer from a system image backup” provides the following instructions:
*1217
[[Image here]]
Id.
at VRTS -485-86. Nor does Veritas provide any analysis linking the disclosure to the asserted claims. And, the documents do not directly indicate or, given the broad discussion, circumstantially suggest that any customer has used the disclosed methods.
Windows Server 2008 Backup and Recovery Step-By-Step Guide
This document appears to be a 12-page printout from the “Windows Server 2008 Technical Library.”
See
Schallop Decl. Exh. L: VRTS 01843732-42. This document explains what “backup” is, and provides a number of scenarios:
*1218
[[Image here]]
Id.
at VRTS -734.
Dr. Nichols relies on this document in his claim chart with respect to “Windows Vista and Windows Server 2008' system recovery tools and procedures,” but only in connection with (using claim 1 as an exam-pie) the preamble:
[[Image here]]
and l[d] (“initializing the data processing system from the second media to provide a temporary operating system and using the configuration specific data files to eonfig-ure the data processing system”):
*1219
[[Image here]]
See
Nichols Infringement Report, Exh. H at H-3 — H-4. Dr. Nichols provides no explanation of how this document discloses any of the claimed method steps. Also, it appears that the Windows Server 2008 product is “forthcoming,”
see
Veritas’ Response at 15, which suggests that Microsoft’s customers would not have used that product yet. Accordingly, this document fails to show that a Microsoft user has used the accused products to perform an infringing method.
Windows Vista Compare Editions
This document is a 2-page chart comparing the features of Basic, Home Premium, Business, and Ultimate versions of Windows Vista
(see
Schallop Decl., Exh. M: VRTS 01842472-73):
*1220
[[Image here]]
That chart indicates capabilities of the various Windows versions, and may indicate that Microsoft users have actually used those products. However, nothing in that chart suggests that Microsoft’s users have used those products in an infringing manner.
Windows Deployment Service (Longhorn)
This 23-page document provides the following introduction
(see
Schallop Decl., Exh. EE: MS-VRTS 000000244359-81):
[[Image here]]
and the following table of contents:
*1221
[[Image here]]
Id.
at MS-VRTS-359 and -361-62.
This document further discloses various deployment scenarios,
e.g.:
*1222
[[Image here]]
Id.
at MS-VTRS -370. Veritas does not, however, particularly point to any of those scenarios as in fringing, or make any effort to link those scenarios to the asserted claims. Once again, there is no dispute that the accused products have substantial non-infringing deployment uses. And, this document contains a confidentiality notice on the front page. Accordingly, this document fails to show that a Microsoft customer has actually used the accused products in an infringing manner.
Windows Platform Design Notes
— Prein-
stalling Microsoft Windows XP By Using the OEM Preinstallation Kit, Parti
This 23-page document provides the following introduction
(see
Schallop Decl., Exh. FF: MS-VRTS 000000439956-78):
*1223
[[Image here]]
Id.
at MS-VRTS -956. That is, this document pertains to OPK:
*1224
[[Image here]]
Id.
at MS-VRTS-958.
This document then describes at that “very high level” various preinstallation methods:
*1225
[[Image here]]
Id.
at MS-VRTS -959-60. Veritas does not link this document’s disclosure to any of the asserted claims. Presumably, therefore, Veritas relies on this document as it does the OPK Guide, the primary reference to which this document refers. For reasons discussed above in connection with the OPK Guide, this document fails to show that Microsoft’s customers have actually used the accused products in an infringing manner. Again, there is no dispute that the accused products have-substantial non-infringing uses.
BDD Guide (2005)
This document is a lengthy ( — 100 pages) reference that discloses BDD in like manner as the WAIK Guide discloses WAIK and the OPK Guide discloses OPK.
See
Sehallop Deck, Exh. II: VRTS 01828202-298. Dr. Nichols relies on this document in his infringement chart with respect to ‘Windows XP and Windows Server 2003 System Deployment Tools And Procedures.”
See
n. 9
supra.
Presumably, Dr. Nichols relies on this document in the same way that he relies on the WAIK Guide, but he does so only in connection
*1226
with (using claim 1 as an example) claim element l[e]: “loading a fully configured operating system files from the first media to the storage device using the temporary operating system:”
[[Image here]]
Nichols Infringement Report, Exh. G at G-12-G-13. Specifically, Dr. Nichols relies on the discussion of “Capturing the Image” on page 81 of that document. As noted above, there is no dispute that BDD relies on WAIK. Nevertheless, given that limited reliance, Dr. Nichols provides insufficient analysis to reasonably conclude that any Microsoft customer has used BDD in an infringing manner. Accordingly, this document also fails to show that a Microsoft customer has actually used the accused products in an infringing manner.
WinPE User Guide (2001.)
As with the WAIK and OPK Guides, this 131-page document provides various deployment scenarios.
See
Schallop DecL, Exh. JJ: VRTS 01828577-707. For example, this document provides:
[[Image here]]
Id.
at VRTS-580.
Dr. Nichols relies on this document in his infringement chart with respect to “Windows XP and Windows Server 2003 System Deployment Tools And Procedures,” but only in connection with (using claim 1 as an example) claim element l[c] (“providing a second media comprising configuration-specific data files”):
*1227
[[Image here]]
*1228
[[Image here]]
l[e] (“loading the fully configured operating system files from the first media to the storage device using the temporary operating system”):
[[Image here]]
and l[f] (“reinitializing the data processing system from the storage device to install the fully configured operating system”):
*1229
[[Image here]]
See
n. 9
swpra;
Nichols Infringement Report, Exh. G at G-3 — G-6 & G-9 — G-13. Given that limited reliance, Dr. Nichols provides insufficient analysis to reasonably conclude that WinPE has been used in an infringing manner. Accordingly, this document also fails to show that a Microsoft customer has actually used the accused products in an infringing manner.
WinPE 2.0 for Vista Overview
This 9-page document begins as follows
(see
Schallop Decl., Exh. KK: VRTS 00943130-38):
[[Image here]]
Id.
at VRTS-131.
Dr. Nichols relies on this document in his claim chart with respect to “Windows Vista and Windows Server 2008 system recovery tools and procedures,” see n. 10
supra,
but only in connection with (using claim 1 as an example) claim element l[c] (“providing a second media comprising configuration-specific data files”):
*1230
[[Image here]]
and l[d] (“initializing the data processing system from the second media to provide a temporary operating system and using the configuration specific data files to configure the data processing system”):
[[Image here]]
See
Nichols Infringement Report, Exh. H at H-6 — H-ll. This document discloses certain capabilities of the accused products, but does not appear to disclose any particular method for backup and recovery, at least none that Dr. Nichols points to. Accordingly, this document fails to show that Microsoft customers have actually used WinPE to perform a claimed method.
*1231
WinPE Technical Reference
This set of documents includes a “Windows Recovery Technical Reference” jump page (half-page) that links to “What is Windows RE” (~2 pages), “How Windows, RE Works” (6 pages), and “Windows RE Scripts” (half-page) (see Schallop Deck, Exh. LL: VRTS 01843379-90).
[[Image here]]
Id.
at VRTS-379.
Dr. Nichols relies on these documents in his claim chart with respect to “Windows Vista and Windows Server 2008 system recovery tools and procedures,” see n. 10
supra,
but only in connection with (using claim 1 as an example) claim element l[c] (“providing a second media comprising configuration-specific data files”):
[[Image here]]
l[e] (“loading the fully configured operating system files from the first media to the storage device using the temporary operating system”):
[[Image here]]
and l[f] (“reinitializing the data processing system from the storage device to install the fully configured operating system”):
[[Image here]]
Nichols Infringement Report, Exh. H at H-ll — H-13. This document discloses certain capabilities of the accused products, but does not appear to disclose any particular method for backup and recovery, at least none that Dr. Nichols points to. Accordingly, this document fails to show that Microsoft customers have actually used WinPE to perform a claimed method.
Getting Started with OPK (2006)
This document discloses “a basic end-to-end deployment scenario” for OPK, much
*1232
as the WAIK Getting Started reference does for WAIK. This document comprises approximately 11 pages, and begins as follows
(see
Schallop Decl., Exh. MM: VRTS 01828299-309).
[[Image here]]
*1233
[[Image here]]
*1234
[[Image here]]
Id.
VRTS -299-301.
Just as the WAIK Getting Started reference, this document provides the following list of requirements:
[[Image here]]
Id.
at VRTS-301-302.
Veritas makes no effort to link the disclosed deployment scenario to the asserted claims. Once again, there is no dispute that the accused products have substantial non-infringing deployment uses. Accordingly, this document fails to show that a
*1235
Microsoft customer has actually used the accused products in an. infringing manner.
Furthermore, as does the WAIK Getting Started reference, the front page of this document contains a disclaimer that indicates that the reference had limited release, if at all, and may not have been available to Microsoft customers:
[[Image here]]
That is, this documents pertains to a version of OPK for a product that had not yet been commercially released. Overall, therefore, this document fails to show that a Microsoft customer actually used the accused software to perform the claimed method.
Vista Deployment Tools Overview (2007)
This 27-page document appears to provide just what its title suggests, namely, an overview of the Vista deployment tools.
See
Schallop Decl., Exh. 00: VRTS 01837060-86. Dr. Nichols relies on this document in his infringement report with respect to “Windows Vista and Windows Server 2008 System Deployment Tools and Procedures.”
See
n. 6
supra;
Nichols Infringement Report, Exh. F. This document, and the parts relied on by Dr. Nichols, describes what Windows Vista and its various components are, and describes various capabilities of Windows Vista. This document does not, however, describe any methods for using them, nor does Dr. Nichols point to any. Accordingly, this document does not show that Microsoft’s

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/1571466. Public record. Not legal advice.