Altiris, Inc. v. Symantec Corp.
| Decision Date | 12 February 2003 |
| Docket Number | No. 02-1137.,No. 02-1138.,02-1137.,02-1138. |
| Citation | 318 F.3d 1363 |
| Parties | ALTIRIS, INC., Plaintiff-Appellant, v. SYMANTEC CORP., Defendant-Cross Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
C. Kevin Speirs, Parsons Behle & Latimer, of Salt Lake City, UT, argued for plaintiff-appellant.
Robert T. Haslam, Heller Ehrman White & McAuliffe LLP, of Menlo Park, CA, argued for defendant-cross appellant. With him on the brief were Robert D. Fram and Sarah Elizabeth Mitchell, Heller Ehrman White & McAuliffe LLP, of San Francisco, CA.
Before MICHEL, LOURIE, and LINN, Circuit Judges.
Plaintiff-appellant Altiris, Inc. ("Altiris") appeals the grant on October 9, 2001 of summary judgment of noninfringement of Altiris' United States Patent No. 5,764,593 ("the '593 Patent") by the United States District Court for the District of Utah. Altiris, Inc. v. Symantec Corp., No. 2:99CV 0013K (D.Utah Oct. 9, 2001). Because the trial court erred in the construction of each of the five claim limitations giving rise to the grant of summary judgment we vacate and remand for a determination of infringement under the correct constructions as set forth herein. In addition, because the trial court also erred in the construction of another limitation challenged before us by defendant-cross appellant Symantec Corp. ("Symantec"), we also overturn that construction, as it too may be relevant to the remand determination of infringement. As to the construction appellant Altiris challenges, although it did not form the basis of the summary judgment, we affirm, for it too may be germane on remand.
Altiris' '593 patent claims a method for intercepting and controlling the boot process of a digital computer and a digital computer system programmed to perform that method. The technology claimed by the '593 patent is used in a computer network, which is a group of computers connected through "communications links" and typically managed by a "server computer." The invention of the '593 patent is the use of software to allow a network administrator working from the network server to remotely access individual network computers as they are booted in order to, for example, update or install software. Prior to the '593 patent, this could only be accomplished through the serial installation of hardware — called a "BootROM" — on each individual computer in the network. This was time-consuming and costly.
Booting is the process of starting or resetting a computer. The computer boot process on a typical IBM-compatible computer using either a DOS or Windows operating system proceeds as follows.1 When the computer is first turned on, it loads and executes the "Basic Input/Output System" ("BIOS"). The BIOS transfers control to a "boot loader" that loads the first sector of the first track of the hard drive. This sector contains a software program, the Master Boot Record ("MBR"), that controls the computer until it loads the operating system. The MBR contains a small database called a "partition table" that specifies the location and type of partitions on the disk.2 The MBR examines the partition table to determine which of the partitions to load and execute. The computer code, including the operating system, in the partition identified as "bootable" by the MBR is then loaded. After that code is loaded and executed, the computer is "booted" and ready for operation by the user.
The method described by the '593 patent interrupts this normal booting process and puts the computer through an alternate "automation" boot sequence. As described in the specification, the preferred embodiment accomplishes this through the use of a customized MBR. The partition table in this MBR contains a special flag system, the "boot selection flag." Unlike the normal MBR, this customized MBR tests the contents of this "boot selection flag" to determine whether the computer should load and execute an "automation partition" rather than the normal operating partition (as described in the preceding paragraph). If the test of the "boot selection flag" indicates the alternative boot, the automation partition code is loaded and it links the computer to the network server and a specialized "Bootwork routine" runs. The "Bootwork routine" examines a database on the server to determine whether there are any automation commands (e.g., to install or update software) to be executed on the individual computer. If there are automation commands to be executed, those commands are executed on the individual computer. Following execution of the automation commands (or if there are no such commands specified), the "boot selection flag" is reset to indicate that a normal boot should take place. During this second boot the MBR detects the normal setting of the "boot selection flag" and loads and executes the normal partition. The MBR also resets the "boot selection flag" to indicate an automation boot is to occur the next time the computer is rebooted. As a result, the automation partition always gains control of the normal operating system when the computer is turned on or rebooted.
In January 1999, Altiris sued Symantec for infringement of the '593 patent. On August 13, 2001, after a two-day Markman hearing, the court issued an order construing the claim limitations at issue. Altiris, Inc. v. Symantec Corp., 160 F.Supp.2d 1274 (D.Utah 2001). There are twelve claims in the '593 patent (independent claims 1 and 8, dependent claims 2-7, 9-12). On appeal, only the construction of certain limitations of claims 1 and 8 is at issue.
Claim 1 reads (disputed claim language underlined):
A method for gaining control of a computer prior to the normal boot sequence operating on a digital computer system, said digital computer system including:
means for storing data;
means for processing data;
means for connecting said digital computer system to an external source of commands;
means for displaying data; and
means for inputting data;
the method comprising:
testing automatically for automation boot sequence data, said test including reading a boot selection flag and comparing said boot selection flag with a known flag setting;
transferring control of said computer system to automation code, if said testing automatically step indicates an automation boot sequence;
executing a control process for said means for connecting said digital computer system to an external source of commands, if said testing automatically step indicates an automation boot sequence;
performing said external commands, if said testing automatically step indicates an automation boot sequence;
setting said boot selection flag; and
booting normally, if said testing automatically step indicates a normal boot sequence.
'593 patent, col. 195, lines 1-29. As relevant to this appeal, the court made the following constructions of claim 1:(1) the "setting" step must occur after the "testing automatically" step and before the "booting normally" step; (2) the preamble is a limitation that requires the "setting" step to be performed prior to the "booting normally" step; (3) the "boot selection flag" is the system ID byte of the first partition; (4) "automation boot sequence data" is a particular value assigned to the system ID byte of the first partition which indicates to the custom boot loader that the computer should boot in automation mode; (5) "automation code" is the code in the automation partition that loads an operating system, local area network ("LAN") drivers for the resident network interface card ("NIC"), and a program for reading a database on the network server to ascertain the automation commands to be executed; and (6) "means for connecting" does not include an NIC with a "BootROM."
Claim 8 reads (disputed terms underlined):
A digital computer system programmed to perform the method of gaining control of the boot procedure of a digital computer, said digital computer comprising:
(A) a central processing unit;
(B) a memory unit;
the method comprising:
testing automatically for source of said means of booting; said testing including reading a boot selection flag and comparing said boot selection flag with a known flag setting;
transferring control of said computer system to said source of said means of booting;
performing said external commands, if said testing automatically step indicates a boot sequence stored externally to said digital computer;
setting said boot selection flag; and
booting normally, if said testing automatically step indicates a boot sequence stored internal to said digital computer.
'593 Patent, col. 196, lines 13-40. Two of the court's constructions of terms in claim 8 are relevant on this appeal. The first is that the order of the steps must take place in the same order as the steps in claim 1. The second is "means of booting," which the court construed as a means-plus-function limitation and for which the court identified the corresponding structures as the software programs for booting described in the specification.
After the court's construction of the disputed limitations, the parties stipulated to Symantec's noninfringement of the '593 patent. Specifically, the parties stipulated that the accused Symantec products do not satisfy four limitations of claim 1:(1) the required order of steps, (2) the preamble phrase "gaining control of a computer prior to the normal boot sequence," (3) the steps that contain the phrase "boot selection flag," and (4) the "testing automatically" step containing the...
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