Opinion
No. C 02-05741 SI.
September 11, 2004
On September 10, 2004, the Court heard argument on motions by defendants Yahoo! and Inktomi for summary judgment. Having carefully considered the arguments of the parties and the papers submitted, the Court hereby GRANTS defendants' motions for summary judgment.
BACKGROUND
In August 2002, plaintiff TeKnowledge filed a complaint (No. 02-5741 SI) against Akamai Technologies, Inc., Inktomi Corporation, and Cable Wireless Internet Services, Inc., alleging infringement of U.S. Patent No. 6,029,175 ("the '175 patent"). On July 16, 2003, TeKnowledge filed a second complaint (No. 03-3321 SI) alleging infringement of the same patent by Yahoo!, Inc., Microsoft Corporation, America Online and Netscape Communications Corporation. On December 15, 2003, this Court consolidated the two actions for pretrial purposes. Microsoft filed counterclaims against TeKnowledge for patent infringement of U.S. Patent Nos. 6,070,150 ("the '150 patent") and 6,564,251 ("the '251 patent") on February 4, 2004.
TeKnowledge's '175 patent involves two technologies for accessing objects, like web pages, over a distributed network. The technology "enables more efficient use of bandwidth by distributing copies of web content to servers at various geographic locations." Pl.'s Opp'n at 1:13-14.
Plaintiff alleges that two of defendant Inktomi's products infringe claims 11, 20, 22, 24, and 29 of the '175 patent. Pl.'s Revised Prelim. Infringement Contentions ("Pl.'s Revised PICs") at 2:6-7. Plaintiff asserts that "Inktomi's Content Delivery Suite (CDS) and its Traffic Server operate in combination," and that, according to Inktomi's product literature, CDS is "a set of products that integrate with Traffic Server to manage the complex task of distributing and tracking content across enterprise networks." Id. at 2:8-12.
Two independent claims of the '175 patent, claims 11 and 29, are implicated in this motion. TeKnowledge alleges that Inktomi's CDS Traffic Server products infringe these two claims. Pl.'s Revised PICs at 2:13; 5:23-24. Claim 11 requires:
In a distributed computing system having a network of computers linked for accessing objects distributed among said computers, some of said computers executing object access software for providing client browsers for fetching said objects, said object access software using standard resource location protocols for specifying the objects to be fetched, a computer-implemented method of operating at least one of said computers for providing objects from a cache located close to a group of said client browsers, said computer-implemented method comprising the steps of:
a) obtaining objects of interest to said group of client browsers by transmitting said objects of interest over said network to said cache from computers in said distributed computing system containing said objects of interest; and
b) transmitting said objects of interest from said cache to said client browsers in said group of client browsers;
wherein said client browsers are HTTP-compliant client browsers following an HTTP client-to-server data transmission protocol, and said method further includes modifying resource locators for said objects of interest to create modified resource locators identifying said cache as a location for obtaining said objects of interest.
Claim 29 requires:
In a distributed computing system having a network of clients and servers, said clients sending resource requests to said servers, a computer-implemented method of using a resource manager in said distributed computing system for intermediating between said clients and servers, said method including the steps of:
a) said resource manager intercepting said resource requests from said clients;
b) said resource manager fetching objects from servers to satisfy said resource requests from said clients, said objects fetched from said servers having respective resource locators identifying the respective sources of the objects fetched from said clients;
c) said resource manager modifying said resource locators to identify said resource manager as a source for the objects fetched from the servers to satisfy said resource requests from said clients; and
d) said resource manager returning the fetched objects and modified resource locators to said clients.
Declaration of Monte M.F. Cooper in Support of Defs.' Mot. for Summ. J. of Non-infringement of Claims 11 and 29 ("Cooper Decl. on Non-Infringement"), Ex. A, U.S. Patent No. 6,029,175 (issued Feb. 22, 2000).
A tutorial and claims construction hearing in this case are set for December 8, 2004.
The patent at issue involves computer networking technology, and the methodologies used to get data from one point on a computer network to another point. When a user operating a "client" (i.e. a computer) seeks to access another point on the Internet (e.g., www.cnn.com), the user types the website address into a web browser. The client then issues a request to the www.cnn.com server, the "origin server," across the Internet, and the request fetches the information from the www.cnn.com server and generates a response, which is delivered to the client across the Internet. The client typically employs a uniform resource locator ("URL"), a string of characters used to identify a resource on the Internet. Declaration of Peter Danzig in Support of Defs.' Mot. for Summ. J. of Invalidity and Non-infringement of Claim 29 ("Danzig Decl. I") ¶ 16.
When multiple clients request the same information from the same origin server, the server can become overwhelmed with requests. Id. at ¶ 18. "Proxy cache" technology was developed to deal with this problem. Id. A proxy cache is a temporary storage tool, where copies of information may be duplicated, stored, and made available for access by users. Id. at ¶ 19. Usually, a user thinks he or she is accessing the origin server but in fact is accessing the proxy. Id. Proxy caches sit between clients and the origin server. Id. at ¶ 21. The proxy cache determines if the information requested is in its memory, and if not, it forwards the request to the origin server. Id. The client fetches information from a server; "the relevant technology does not contemplate fetching information from the client." Id.
In the '175 patent, one type of proxy caching is disclosed.Id. at ¶ 26. A "Revision Manager" acts as the proxy cache and intermediates between a client and a server. Id. The term "client" is different from the term "server," and "the term `client' is used consistently to refer to the entity that fetches documents from a server, not the entity from which documents are fetched." Defs.' Mot. for Summ. J. of Invalidity and Non-infringement of Claim 29 ("Defs.' Mot. for Invalidity of Claim 29") at 5:24-25 (emphasis in original). The Revision Manager "acts as both a server and a client. It is a server when accepting HTTP requests from browser clients connecting to it, but it acts like a client to the remote servers that it connects to in order to retrieve the documents for its own clients." '175 Patent, col. 11, lines 26-20; Danzig Decl. I ¶ 28. In either capacity, the Revision Manager fetches objects from the network server, and it does not fetch objects from clients. Id. at 29-30.
Now before the Court are motions by defendants Yahoo! and Inktomi for summary judgment of invalidity and non-infringement of claim 29, and for summary judgment of non-infringement of claims 11 and 29.
LEGAL STANDARD
"Summary judgment is appropriate in a patent case, as in other cases, when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law."Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994) (citations omitted). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The moving party, however, has no burden to negate or disprove matters on which the non-moving party will have the burden of proof at trial. Id. The moving party need only point out to the Court that there is an absence of evidence to support the non-moving party's case. Id. at 325.
The burden then shifts to the non-moving party to "designate `specific facts showing there is a genuine issue for trial.'"Id. at 324 (quoting Rule 56(e)). To carry this burden, the non-moving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). "The mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could reasonably find for the [non-moving party]." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).
Summary judgment can be used to determine infringement, non-infringement, Avia Group Intern., Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1560 (Fed. Cir. 1988), and invalidity for failure to satisfy the written description requirement. Reiffin v. Microsoft Corp., 1998 WL 397915 (N.D. Cal. Jul. 10, 1998). The moving party bears the burden of proving infringement or non-infringement by a preponderance of the evidence. Mannesmann Demag Corp. v. Engineered Metal Products, Inc., 793 F.2d 1279, 1282 (Fed Cir. 1986).
A party seeking to invalidate a patent must overcome a presumption that the patent is valid. 35 U.S.C. § 282; United States Gypsum Co. v. National Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996); Hibritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed. Cir. 1986). This presumption places the burden on the challenging party to prove the patent's invalidity by clear and convincing evidence. United States Gypsum Co., 74 F.3d at 1212. The challenging party's burden also includes overcoming deference to the PTO's findings and decisions in prosecuting the patent application. Deference to the PTO is due "[w]hen no prior art other than that which was considered by the PTO examiner is relied on by the attacker." American Hoist Derrick Co. v. Sowa Sons, 725 F.2d 1350, 1359 (Fed. Cir.), cert. denied, 469 U.S. 821 (1984).
DISCUSSION
A. Defendants' motion for summary judgment of invalidity and non-infringement of Claim 29
1. Validity of claim 29
Defendants contend that claim 29 of the '175 patent contains "an incurable defect": the "nonsensical" phrase "objects fetched from said clients," which appears in element (b) of the claim. Defs.' Mot. for Invalidity of Claim 29 at 1:4-6; Danzig Decl. I ¶ 32-33. The defect is in the concept of fetching objects from clients, because "[t]he patent has no teaching that supports the notion of fetching any kind of information from a client." Defs.' Mot. for Invalidity of Claim 29 at 7:24-26. According to defendants, "the concept of `fetching' objects from clients is nonsensical in the context of the claim and the invention," and this language gives the claim an impossible limitation. Id. at 14:10-11. Consequently, the claim is inoperable, non-enabled under 35 U.S.C. § 112 ¶ 1, lacking in utility under 35 U.S.C. § 101, and both invalid and non-infringed by Inktomi's accused products. Id. at 1:4-5, 9-11.
Plaintiff counters, first, that summary judgment is premature at this point, because defendants' validity arguments "are largely dependent upon claim construction." Pl.'s Opp'n at 5. However, plaintiff also agrees that the phrase at issue "need not be construed but should be given its ordinary meaning." Id. at 12:4. The Court finds that this issue is appropriate for resolution prior to claims construction, because the parties agree that claim construction is not required for element (b) of claim 29. They disagree about what the "ordinary meaning" of the phrase is, as discussed further below.
a. Meaning of the phrase "objects fetched from said clients"
Defendants interpret the phrase "objects fetched from said clients" to mean that "the clients are the source of the objects." Defs.' Mot. for Invalidity of Claim 29 at 12:25; Danzig Decl I ¶ 33. Plaintiff does not dispute that, as drafted, the phrase "objects fetched from said clients" means that objects come from clients. Instead, plaintiff interprets the "ordinary meaning of the phrase to be "fetched from said servers" or "fetched for said clients." Pl.'s Opp'n at 12:10 (emphasis in original). Plaintiff states that the phrase is the result of "an unambiguous typographical error," and that a person of ordinary skill in the art would identify and understand it as such. Id. at 13:9-10 (emphasis in original). For this proposition, plaintiff relies on the testimony of its expert, Dr. Frederick Hayes-Roth. Id. at 13:22-14:25. Plaintiff urges the Court to make one of two corrections to the claim language: either change the word "from" to the word "for," or change the word "clients" to the word "servers."
The Court finds that, even if this phrase contains a typographical error, it cannot re-draft the claim language to render claim 29 valid. It is true that patents are presumed valid, and this presumption of validity may only be overcome by clear and convincing evidence. 35 U.S.C. § 282; Eli Lilly Co. v. Barr Labs, Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). Moreover, as plaintiff correctly points out, "where claims are amenable to more than one construction, they should where reasonably possible be interpreted so as to preserve their validity." Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999), citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). However, in this case, the Court finds that the language of claim 29 is susceptible to only one meaning, and that the strict prohibition against courts re-drafting claims prevents it from "correcting" the error to conform the language to plaintiff's proposed interpretation.
The language of element (b) of claim 29 clearly states that objects are being "fetched from said clients." The dictionary definition of "from" is "a function word to indicate starting point" or "source, cause, agent, or basis." Webster's New Collegiate Dictionary (1981). The word "fetch" means "to cause to come." Id. The Court agrees with defendants that, interpreted literally, the phrase "from said clients" indicates that the clients are the starting point or source of the objects. The words, in this context, "mean exactly what they say." Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir. 2004). Defendants' expert testifies that this is also the plain meaning of the phrase to persons of skill in the art. Danzig Decl. I ¶ 33.
In the absence of the patentee's clear intent to give claim terms some other, special meaning, the ordinary meaning controls.Chef America, Inc., 358 F.3d at 1374, citing Process Control, 190 F.3d at 1357. Courts looks to the claims, specification, and prosecution history to discern whether some other meaning was intended. The testimony of the inventor about his or her subjective intent "is of little or no probative weight in determining the scope of the claim." Markman v. Westview Instruments, Inc., 52 F.3d 967, 985 (Fed. Cir. 1995) (en banc),aff'd, 517 U.S. 370 (1976). In addition, if a party states that the claims have special meaning to those of ordinary skill in the art, that party must explain how the words would convey that special meaning. See Chef America Inc., 358 F.3d at 1375.
Here, there is no intrinsic evidence that the patentees themselves defined "from" as "for" or "clients" as "servers." The prosecution history indicates that the patentees understood "client" and "server" to mean different things, because the applicants amended another claim, claim 36, which depends upon claim 29, by changing the word "server" to "client" in two places. Cooper Decl. on Non-infringement, Ex. C, Tab 9 at INKT0074741. Plaintiff's evidence that the claims carry this special meaning to those of ordinary skill is the testimony of Dr. Frederick Hayes-Roth, one of the patent's inventors, who testified that "fetched from said clients" is equivalent to "fetched for the clients or fetched by the clients." Pl.'s Opp'n at 14:4-5. But this testimony, in addition to lacking probative weight, does not create a genuine issue of material fact because it does not explain how the word "from" could be read to mean "for" or "client" could be read to mean "server." The testimony is no more than a "restatement of [plaintiff's] basic contention "that unless [the Court] rewrite[s] the claim, the patented process cannot perform its intended function." Chef America Inc., 358 F.3d at 1375.
The Court "must construe the claims based on the patentee's version of the claim as he himself drafted it." Process Control Corp., 190 F.3d at 1356-57. Consequently, the Court finds that the phrase "objects fetched from said clients" has only one plain meaning to those of skill in the art: that clients are the source of the objects.
b. Typographical error
Plaintiff's contention that the claim contains a typographical error does not alter this conclusion. Plaintiff actually proposes two possible typographical errors, only one of which needs to be corrected: either the preposition "from" should be changed to "for," or the noun "clients" should be changed to "servers." Plaintiff then attempts to distinguish the Federal Circuit authority relied on by defendants on grounds that the cited cases deal with purposeful drafting errors rather than inadvertent, typographical errors. Plaintiff does not demonstrate that this is a distinction with a difference in this case, and the Court cannot conclude that it is one.
Defendants argue that this is not a typographical error as a matter of law. For purposes of summary judgment, viewing the evidence in the light most favorable to the non-moving party, the Court will assume that the error is typographical, and instead assess whether it can correct the error under these circumstances.
The Federal Circuit has acknowledged that "not all clerical or typographical mistakes are immediately apparent, and even where the mistake is apparent, it may not be clear how the mistake should be corrected." Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358, 1370. In Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003), the Federal Circuit addressed "whether a district court can act to correct an error in a patent by interpretation of the patent where no certificate of correction has been issued," and held that "a district court can do so only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims." Id. at 1354.
Plaintiff distinguishes Superior Fireplace, where the court concluded that the error was not typographical because the claim language had been changed from "rear wall" to "rear walls" by an examiner's amendment, and thus the patentee could not have it changed back by a certificate of correction. The Court does not rely on Superior Fireplace, and recognizes that here, the language has never been altered at all. However, the issue is whether this language (if a typo) can be corrected by the Court.
Here, the correction is clearly subject to reasonable debate. Plaintiff itself proposes two possibilities for the correction. In addition, as defendants point out, three co-inventors of the patent have offered different interpretations of the claim. Dr. Hayes-Roth considers "from the clients" to be equivalent to "for the clients" or "by the clients." Pl.'s Opp'n at 14:3-4. Chris McMahon testified that the language does not include a typographical error and that the word "from" need not be read as "for." Supplemental Declaration of Monte M.F. Cooper in Support of Defs.' Mot. for Summ. J. of Invalidity and Non-infringement of Claim 29 ("Supp. Cooper Decl."), Ex. G (Rough Tr. of Depo. Chris McMahon) at 78:5-6, 9; 76:17-18. James Manley stated that "clients" was intended to mean "servers." Id., Ex. H (Rough Tr. of Depo. James Manley) at 80:17-19.
In addition, the prosecution history does not support an inference that the claim should be interpreted as urged by plaintiff. When the '175 Patent was filed on October 26, 1995, it had ten claims, none of which contained the language of claim 29. Cooper Decl. on Non-infringement, Ex. B. The applicants filed a non-provisional application in June 1996, which included 65 claims, one of which was claim 29, then identified as claim 33.Id., Ex. C, Tab 1 at INKT0074641. The applicants made a "preliminary amendment" to correct typographical errors in the new application. Id., Tab 4 at INKT0074715-17. Claim 29 was one of 17 claims allowed by the PTO. After the patent issued, the applicants filed a formal "certificate of correction" under 35 U.S.C. § 254 to correct typographical errors in six of the claims. Id., Tab 16 at INKT0074960-61. Claim 29 was not changed. The applicants never made changes to this language, while they did change the word "server" to the word "client" twice in another claim. Plaintiff contends that because it never altered this claim language, the language contained a mistake from the beginning, and the failure to correct the mistake shows that it was inadvertent. Pl.'s Opp'n at 13:10-17. But the Court is not persuaded, and there is no evidence, that plaintiff's inaction means what plaintiff says it does. The Court finds nothing in the patent's prosecution history that suggests a different interpretation than the ordinary meaning of the language as drafted.
c. The Court cannot re-draft this claim language
The clear line of Federal Circuit authority dictates that this Court may not re-draft claims to change their ordinary meaning, even if the ordinary meaning produces a nonsensical result. See Chef America Inc., 358 F.3d at 1374; Process Control Corp., 190 F.3d at 1357. The language "objects fetched from said clients," according to its ordinary meaning, conveys that objects will be fetched from clients. Viewing the evidence in the light most favorable to plaintiff, and even assuming that this was a typographical error, the Court cannot redraft the claim to render it operable.
The purpose of claim language is to "put competitors on notice of the scope of the claimed invention, and to "prevent unduly burdening competitors who must determine the scope of the claimed invention based on an erroneously drafted claim."Hoganas AB v. Dresser Industries, Inc., 9 F.3d 948, 951 (Fed. Cir. 1993); Process Control Corp., 190 F.3d at 1357. In the recent Federal Circuit decision of Chef America, the district court granted summary judgment and interpreted literally claim language requiring "heating the resulting batter-coated dough to a temperature in the range of about 400 [degrees] F. to 850 [degrees] F.," instead of adopting the plaintiff's interpretation of the claim as requiring "heating the . . . dough at a temperature of" (meaning that the oven should reach that temperature rather than the dough itself). Chef America, Inc., 358 F.3d at 1373. The Federal Circuit affirmed, despite the fact that the claim language, as written, produced the result of burning the dough to a crisp. Id.
Here, the Court agrees with defendants that the claim language, as written, produces the nonsensical result of making the clients the source of the objects, which does not make sense in the context of the claim and the invention. Defs.' Mot. on Invalidity of Claim 29 at 14:10. The Federal Circuit "repeatedly and consistently has recognized that courts may not redraft claims, whether to make them operable or to sustain their validity." Chef America, Inc., 358 F.3d at 1374. "It is the job of the patentee, and not the court, to write patents carefully and consistently," and this Court must construe the claim "as written, not as the patentees wish they had written it." Id. at 1373. The Court cannot substitute the word "for" for the word "from" or the word "server" for the word "client" to change the nonsensical result.
Defendants argue that plaintiff's contention that the claim contains a typographical error is "an admission that the language as drafted is, in fact, nonsensical." Defs.' Reply in Support of Mot. for Summ. J. of Invalidity and Non-infringement of Claim 29 ("Defs.' Reply on Invalidity of Claim 29") at 6:17-18.
2. Infringement of claim 29
A patent claim is non-enabled, and consequently invalid, if the claim has impossible or nonsensical limitations. CFMT, Inc. v. Yieldup Int'l Corp., 349 F.3d 1333, 1339 (Fed. Cir. 2003); Process Control Corp., 190 F.3d at 1359. Here, the claim limitation of fetching objects from clients is an impossible limitation, because the invention teaches that objects are fetched only from servers.
Defendants argue that claim 29 is non-infringed because it is non-enabled under 35 U.S.C. § 112 ¶ 1 and lacking in utility under 35 U.S.C. § 101. Whether a disclosure is enabling under § 112 ¶ 1 is a legal conclusion. As the Federal Circuit has held, "when an impossible limitation, such as a nonsensical method of operation, is clearly embodied within the claim, the claimed invention must be held invalid." Process Control Corp., 190 F.3d at 1359; see also Raytheon Co. v. Roper Corp., 724 F.2d 951, 956 (Fed. Cir. 1983). The Court finds, by clear and convincing evidence, that claim 29 is invalid as non-operable.
Utility is a factual issue which the Court does not reach, although "[l]ack of enablement and absence of utility are closely related grounds of unpatentability." See Process Control Corp., 190 F.3d at 1358-59.
It is undisputed that Inktomi's accused products do not fetch objects from clients. Danzig Decl. I ¶ 23, 25. This claim, though nonsensical, can only be infringed if the accused products meet the limitations of the claim. They do not.
Accordingly, the Court GRANTS defendants' motion for summary judgment of invalidity and non-infringement of claim 29.
B. Defendants' motion for summary judgment of non-infringement of Claims 11 and 29
Defendants also move for summary judgment on non-infringement of claims 11 and 29, which both contain the claim limitation "modifying resource locators." The parties have agreed that this phrase should be construed as "altering resource locators." Pl.'s Opp'n at 5:21-22. Consequently, claims construction is not required.
Defendants contend that its accused products, the Content Delivery Suite (CDS) software and Traffic Server, do not alter resource locators. CDS utilizes "push-based" prior art software, which "does not respond to client requests but rather provides data irrespective of any [client] request." Declaration of Peter Danzig in Support of Motion for Non-infringement of Claims 11 and 29 ("Danzig Decl. II") ¶ 26. Traffic Server is separate software from CDS, and defendants claim that it is "effectively an implementation of the admitted prior art." Defs.' Mot. for Summ. J. of Non-Infringement of Claims 11 and 29 ("Defs.' Mot. for Non-Infringement of Claims 11 and 29") at 11:11.
1. Inktomi's CDS software
The '175 Patent is a "pull-based" or "client-server" model, which means that it is based on a request by a user to an origin server for certain information. Danzig Decl. II ¶ 15. Defendants demonstrate that the CDS software is a "push-based" system that does not modify resource locators. Id. at ¶ 28. The CDS software includes an agent that resides on the origin server and an agent that resides on the Traffic Server cache. Danzig Decl. I ¶ 25. The agents on the origin server identify "updates" to content and send them to the Traffic Server, "automatically refreshing" the Traffic Server cache. Id. In its Opposition, plaintiff agrees that "CDS does not perform the `modifying resource locators' element of the claims," although it contends that CDS is still relevant to the infringement analysis "because it is a portion of that system that distributes web content to Traffic Server caches." Pl.'s Opp'n at 6:22-23, 7:3-5. However, plaintiff appears to recognize that CDS and Traffic Server are distinct products, and alleges that "Inktomi's internal technical documentation . . . shows that it is a component of the Traffic Server software which modifies the resource locators to redirect client requests to the proxy cache." Id. at 6:19-21.
The Court concludes that the CDS software does not infringe the '175 Patent because, as both parties agree, it does not modify resource locators. Accordingly, the Court GRANTS defendants' motion for summary judgment of non-infringement of claims 11 and 29 as to this accused product.
2. Inktomi's Traffic Server software
Defendants ask the Court to strike plaintiff's argument that Traffic Server alters resource locators, because (1) the materials on which plaintiff relies were not cited in the Preliminary Infringement Contentions and thus this argument is effectively an amendment of the PICs without leave of the Court; and (2) plaintiff's attorney's characterizations of technical literature constitute inadmissible expert testimony. The Court notes that plaintiff's PICs alleged that CDS and Traffic Server "operate in combination" to infringe the claims, see Pl.'s Revised PICs at 2:8, and declines to strike plaintiff's arguments on these grounds.
Traffic Server software operates as a proxy cache, receiving requests from clients for information stored on origin servers. Danzig Decl. I ¶ 24. These requests contain a URL, which tells the Traffic Server software the location of the origin server, and the Traffic Server software then locates these files, either within the Traffic Server cache or "by fetching the requested file from the origin server." Id. Traffic Server operates in three modes. In "Forward Proxy mode," a proxy server running the Traffic Server software is located near the client, and it acts as an intermediary between a user and all origin servers on the Internet. Danzig Decl. II ¶ 31. The proxy server accepts a URL request from a user and fetches the data from the origin server. Id. There is no modification or alteration of URLs. Id.
In "Transparent Forward Proxy mode," a proxy server accepts a URL request from a user and then determines whether the information is in the memory of the proxy server. Id. at ¶ 32. If the information is in the proxy server's memory, it is returned to the user. If it is not, then the request is forwarded to the origin server. Id. No resource locators are modified.Id. In "Reverse Proxy mode," a proxy server acts as an intermediary between clients and a limited number of origin servers. Id. at ¶ 33. The proxy accepts requests from clients and forwards these requests to the origin server, which is located inside a firewall. Id. Again, defendants contend that Traffic Server, when running in this mode, does not cause resource locators to be altered or modified. Id.
Plaintiffs argue that defendants have provided "only a brief, general description" of how Traffic Server operates in each of its modes, and "makes uncorroborated, conclusory statements" that the software does not modify resource locators. Plaintiff then cites the Administrator and User Guides for Traffic Server to show that, when operating in Reverse Proxy mode and Transparent Forward Proxy mode, the Traffic Server "modifies" or "translates" the URL to point to the Traffic Server cache. Pl.'s Opp'n at 8:1. In Transparent Forward Proxy mode, plaintiff contends that client requests headed toward the origin server are intercepted and directed toward the Traffic Server cache by an "ARM module," which "readdresses requests to Traffic Server so that they can be served." Id. at 10:12-13; Declaration of Corby R. Vowell ("Vowell Decl."), Ex. 2 at INKT0058352. According to plaintiff, for Reverse Proxy mode, "[t]he Traffic Server documentation is replete with references to rewriting and translating the URL's for incoming client requests." Pl.'s Opp'n at 9:1-2. Specifically, the "URL mapping rules" "translate an incoming request URL to the appropriate origin server URL." Vowell Decl., Ex. 2 at INKT0058582. Plaintiff makes no allegations that Traffic Server modifies resource locators in Forward Proxy mode.
In reply, defendants argue that plaintiff's citations to administrator and user guides do not establish that the product modifies resource locators. Defendants' expert submits supplemental material, some of it under seal, demonstrating that, in Transparent Forward Proxy mode, Traffic Server "translates destination addresses in IP packets" using a technology called "Network Address Translation" ("NAT"), which was disclosed as prior art, existed before the filing of the '175 Patent, and does not involve altering resource locators. Supplemental Declaration of Peter Danzig in Support of Mot. for Summ. J. of Non-infringement of Claims 11 and 29 ("Supp. Danzig Decl.") ¶ 13-18.
In Reverse Proxy mode, defendants disclose that resource requests for the origin servers are directed to Traffic Server by "standard Domain Name Server (`DNS') resolution" of the hostnames of the origin servers to Traffic Server's IP address. Supp. Danzig Decl. at ¶ 20. When Traffic Server receives a request from a client, it checks its cache to see if the requested resource is present. Id. at ¶ 21. If the resource is not present, Traffic Server requests the content from the origin server by translating the URL, using "mapping" rules, to a destination URL. Id. at 21-22. While this translation appears to constitute "modifying resource locators," defendants point out that the relevant language of both claims 11 and 29 requires that the modified resource locators "identify said cache as a location for obtaining said objects of interest." U.S. Patent No. 6,029,175 (issued Feb. 22, 2000), claim 11, element (b); claim 29, element(c) ("modifying said resource locators to identify said resource manager as a source for the objects"); Supp. Danzig Decl. ¶ 23-24. By contrast, to the extent that Traffic Server alters resource locators, the modified resource locator identifies the origin server as the source for objects of interest, rather than the Traffic Server cache. Supp. Danzig Decl. ¶ 25. Defendants contend that, because Traffic Server does not modify resource locators to point to the proxy cache, it does not infringe claims 11 and 29.
Because plaintiff does not allege infringement based on Traffic Server's "Forward Proxy mode," the Court GRANTS defendants' motion for summary judgment as to this mode of operation.
For Transparent Forward Proxy mode, the Court also finds that defendants have established a prima facie case that Traffic Server does not alter resource locators, and that plaintiff has not met its burden of designating specific facts showing that there is a genuine issue for trial. Plaintiff has offered no evidence — expert testimony, source code, or anything in the product information — disputing that Traffic Server uses prior art that does not alter resource locators in this mode of operation. Accordingly, defendants' motion for summary judgment of non-infringement of claims 11 and 29 as to this mode of operation is GRANTED.
Viewing the evidence in the light most favorable to plaintiff, Traffic Server does appear to "modify resource locators" in Reverse Proxy mode. See Vowell Decl., Ex. 2 at INKT0058582. However, the Court agrees with defendants that the claim language requires that the modified resource locator must point to the proxy cache. Because Inktomi's Traffic Server software, when operating in this mode, points to the origin server and not at the proxy, the Court finds that no jury could reasonably find infringement of these claims. Defendants' motion is GRANTED as to this mode of operation as well.
CONCLUSION
For the foregoing reasons and for good cause shown, the Court hereby GRANTS defendants' motion for summary judgment of invalidity and non-infringement of claim 29 and motion for summary judgment of non-infringement of claims 11 and 29. [Docket # 111, 117]