Globetrotter Software v. Elan Computer Group

• Decision Date: 18 January 2001
• Citation: 236 F.3d 1363,57 USPQ2d 1542
• Parties: (Fed. Cir. 2001) GLOBETROTTER SOFTWARE, INC., Plaintiff-Appellant, v. ELAN COMPUTER GROUP, INC., and KEN GREER, Defendants/Third Party Plaintiffs- Appellees, and RAINBOW TECHNOLOGIES, INC., and RAINBOW TECHNOLOGIES NORTH AMERICA, INC., Defendants-Appellees, v. MATTHEW CHRISTIANO, Third Party Defendant. 00-1110 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1363

236 F.3d 1363 (Fed. Cir. 2001)

GLOBETROTTER SOFTWARE, INC., Plaintiff-Appellant, v. ELAN COMPUTER GROUP, INC., and KEN GREER, Defendants/Third Party Plaintiffs- Appellees, and RAINBOW TECHNOLOGIES, INC., and RAINBOW TECHNOLOGIES NORTH AMERICA, INC., Defendants-Appellees, v. MATTHEW CHRISTIANO, Third Party Defendant.

00-1110

United States Court of Appeals for the Federal Circuit

DECIDED: January 18, 2001

Appealed from: United States District Court for the Northern District of California Judge Jeremy Fogel

Bruce A. Wessel, Irell & Manella LLP, of Los Angeles, California, argued for plaintiff-appellant.

John I. Alioto, Alioto & Alioto, of San Francisco, California, argued for defendants/third party plaintiffs-appellees and defendants-appellees. With him on the brief was Linda M. Alioto.

Before BRYSON, Circuit Judge, PLAGER, Senior Circuit Judge, ^* DYK, Circuit Judge.

DYK, Circuit Judge.

Globetrotter Software, Inc. ("Globetrotter" or "plaintiff") appeals from the decision of the United States District Court for the Northern District of California denying Globetrotter's motion for preliminary injunction. Globetrotter Software, Inc. v. Elan Computer Group, Inc., Docket No. C-98-20419 (N.D. Cal. Oct. 26, 1999). Globetrotter alleges, inter alia, that the district court improperly construed the scope of claim 55 of U.S. Patent No. 5,390,297 (the "'297 patent"). Because the district court properly construed the means-plus-function limitation of claim 55 with respect to the license file means limitation, we affirm the denial of Globetrotter's motion for preliminary injunction.

BACKGROUND

The '297 patent is generally directed toward a license management system for controlling the number of concurrent copies of a program in use on a computer network. The number of concurrent copies is limited to the number of licenses that has been purchased from the vendor of the system by the licensee, i.e., the network owner. The network owner can therefore purchase a smaller quantity of licenses than the total number of computers that might run the program. Moreover, with the present invention the licensee can more easily monitor compliance with the terms of the license agreement. The licensor, i.e., the vendor, also benefits because it no longer needs to rely on the integrity of the licensee to abstain from making copies beyond the number specified in a license agreement, and it no longer needs to rely on more complex copy prevention techniques. Rather, the vendor can simply include the software disclosed in the '297 patent in the program to be installed on the computer network.

The specification of the '297 patent discloses two embodiments. In the first, the "license transfer" embodiment, each license occupies an area of memory called a license file and each license file contains at most one license. In this embodiment, a computer user's request to use an application is granted only if the copy the user is trying to run corresponds to a license file which contains a license. If the license file does not contain a license, other license files are searched for an available license. When a license is found it is transferred to the license file where it is needed.

In the second, the "license pool" embodiment, several licenses may be contained in a single license file. In this embodiment, a user's request to use a copy of the application is granted only if the pool of licenses in the license file has not been exhausted by other similar requests. Each time a request is made to run an application, a counter is decremented to indicate that one less license is available.

Independent claim 55, the claim at issue in this appeal, reads as follows:

55. A license management system for limiting the number of copies of a given computer program that are permitted to run simultaneously on one or more nodes of a network in which said nodes are connected, said limiting being according to the number of licenses for said given computer program that are authorized for said network; said system comprising:

license file means on at least one of said nodes for storing at least one and up to a selectable authorized number of said licenses;

program storage means for storing a copy of said given computer program on at least one of said nodes without limiting the running of said given computer program to running on said one node; and

license management means responsive to a request to run, said request being from one of said copies at a particular one of said nodes, for searching as many nodes as are necessary to locate one of said license file means that has a license that is available for authorizing a copy of said given computer program to run at said particular one of said nodes;

said license management means being responsive to said search not locating any of said license file means having an available license for returning to said requesting copy a message preventing said copy from running in response to said request.

(emphasis added).

The specification of the '297 patent describes the structure necessary to perform the recited functions of the license management system of claim 55. The issue in this appeal is whether a unique identification ("UID") disclosed in the specification is necessary structure required to perform the function of "storing at least one and up to a selectable number of said licenses," as recited for the "license file means." Defendant Rainbow Technologies, Inc. ("Rainbow") acquired from defendant Elan Computer Group, Inc. ("Elan") license management software designated SentinelLM 5.0 by Rainbow. Rainbow also sells a second license management software designated SentinelLM 6.0. Elan and Rainbow allege that neither of these products contains a UID, and thus could not infringe the '297 patent if a UID is a necessary part of the structure of claim 55.

Globetrotter, the patentee of the '297 patent, sued Elan and Rainbow (hereinafter referred to as "Elan" or "appellees"), asserting infringement of numerous claims, including independent claims 32 and 55, and dependent claims 56, 57, and 59.

In May 1999, Globetrotter filed motions for preliminary injunction and partial summary judgment of infringement, inter alia, with respect to claim 55. In response, in June 1999, Elan, inter alia, filed a cross-motion for partial summary judgment of non-infringement of claim 55. The district court then conducted a Markman hearing in order to interpret the claims of the '297 patent. On October 26, 1999, the district court issued two orders: (1) an order construing the terms of the '297 patent claims; and (2) an order,inter alia, denying Globetrotter's motions for preliminary injunction and partial summary judgment of infringement of claim 55, and granting Elan's motion for partial summary judgment of non-infringement of claim 55.

The first element of claim 55 recites a "license file means on at least one of said nodes for storing at least one and up to a selectable authorized number of said licenses." (emphasis added). In the October 26, 1999, Markman order, the district court ruled that:

LICENSE FILE MEANS FOR STORING is an area of memory on the disk of a NODE, capable of storing at least one LICENSE, and containing at least a UID. Equivalents of the structure just described also constitute LICENSE FILE MEANS FOR STORING.

(emphasis added). The district court further cited the specification for the proposition that "the identification assigned to a given license file . . . at a particular time is referred to as the UID." '297 patent, col. 6, ll. 39-42. In addition, the court noted that another program known as the "'installation program' . . . must be able to distinguish the UID of any license file within its bailiwick from every other license file it may encounter." The district court therefore ruled that:

A UID is data assigned to a LICENSE FILE which is different from the data assigned to any other LICENSE FILE then in existence with which the first mentioned LICENSE FILE otherwise may be confused.

The district court, in the summary judgment order which relied on the Markman order, determined that Globetrotter was not entitled to summary judgment because it had made no showing that the alleged infringing program includes a UID or equivalent based on the above definition. The district court then proceeded to analyze the fourth element of claim 55.

The fourth element of claim 55 recites:

said license management means being responsive to said search not locating any of said license file means having an available license for returning to said requesting copy a message preventing said copy from running in response to said request.

(emphasis added).

In the summary judgment order, the district court ruled that "[t]he fourth element of Claim 55 refers to the means-plus-function term 'license management means,' with the pertinent function being 'preventing [a] copy [of a program] from running.'" The district court denied Globetrotter's motion for summary judgment on the fourth element and granted Elan's motion for summary judgment of non-infringement on this element, determining that "[b]ecause the prevention function is not present [in the accused device], the second step in means-plus-function analysis (finding a corresponding structure) need not be reached."

Based in part on this analysis, the district court denied Globetrotter's motion for a preliminary injunction, stating that "[i]t is evident from the foregoing that GLOBEtrotter has not made a sufficient showing concerning its likelihood of prevailing on the merits of this action to justify the issuance of a preliminary injunction . . . ." Globetrotter then appealed to this court.

DISCUSSION

I. Jurisdiction and Standard of Review

While appellees correctly point out that we do not have jurisdiction to directly review the actions of the district court on the partial summary judgment motions, we have jurisdiction over Globetrotter's appeal of the district...