Search the Archives           Subscribe           About this News Service           Reader Comments

Archived updates for Wednesday, September 14, 2005

"Download Component" Narrowly Construed as Application

In Netwok Commerce, Inc., et al. v. Microsoft Corp. (Fed. Cir. September 8, 2005) the court considered the meaning of the term "download component" which has no commonly-understood meaning and was not used in the specification of United States Patent No. 6,073,124: (left).

The claim generally related to a method in a computer system for conducting electronic commerce, including requesting a first web server to order electronic data; receiving, in response to the request, a download component for coordinating the download of the electronic data; and under control of the download component, downloading from a second web server the electronic data.

Network Commerce admitted that the term "download component" appears nowhere in the specification, but argued that since the word component is used broadly in the specification to refer to all sorts of things, "download component" should be construed just as broadly. However, this argument was "unavailing" to the Federal Circuit . "The specification’s broad usage of one word from the claim term 'download component' does not suggest that the phrase 'download component' has the same meaning as that one word," noted the court:

Instead of a download component, the specification described a "download file." It appears from the function and description of the "download file" that this item corresponds most closely to the download component of the claims. The specification explains that the download file resides in the computer of an online merchant or is accessible to that computer. When the merchant receives an online request for electronic content, the online merchant "downloads and installs the download file" on the customer’s computer. This file when downloaded into the customer’s computer "extracts [from the download file] the executable boot program and component list."

The specification defines the capability of the boot program to include the ability
to read the component list to determine what [electronic content] . . . to download . . . from the appropriate contents supplier server,” and the ability to request the appropriate content from the supplier server. Thus, while the download file may contain different things, the specification indicates that it must contain at least the boot program.

The specification describes no programs mediating between the boot program and the operating system. Moreover, figure 8 identifies the boot program as a file called "SAFEboot.exe." An "exe file" is a file in "binary code" and "a Windows exe file (e.g., the Windows Media Player application) is an executable file because it is a sequence of bits arranged in such a way that it can be executed by . . . the computer’s operating system."

In summary, the specification makes clear that the download component must include a boot program, and that the boot program interacts directly with the operating system of the computer without the assistance of any other program. Accordingly, we construe "download component" to mean a file or program either sent to or received by a computer in response to a request for electronic data that 1) requests (or controls the download of) electronic data from a computer other than the computer from which the program was sent or received; 2) coordinates the download of electronic data; and 3) interacts directly with the operating system of the computer without another program mediating between it and the operating system.

This construction of the term "download component" is similar to the definition of "application" adopted in Eolas Technologies, Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005). There we approved the district court’s construction of "application" to mean "‘a computer program, that is not the operating system or a utility, that is designed to allow an end-user to perform some specific task.’" Id. at 1336. In addition, we see nothing in the prosecution history that remotely suggests that our interpretation of "download component" is incorrect.

Network Commerce relies on the declaration of its expert, Theodore Coombs, for the proposition that the "download component" need not contain the boot program. In his declaration, Coombs quotes various passages from the specification, and concludes: "I understand [these passages] to mean that there are possible embodiments of this invention that use a ‘download component’ that does not contain a boot program or executable code." Coombs’ declaration provides scant support for Network Commerce’s position. As we recently reaffirmed in Phillips, "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court." Phillips, 415 F.3d at 1318. Here Coombs does not support his conclusion with any references to industry publications or other independent sources. Moreover, expert testimony at odds with the intrinsic evidence must be disregarded. Id. ("[A] court should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the written record of the patent.") (internal quotations and citation omitted). That is the case here. . . .

Network Commerce argues on appeal that summary judgment of literal infringement was not appropriate because there are genuine issues of material fact. Specifically, it argues that metafiles are computer programs that carry out the claimed functions, relying on the declaration of its expert, Theodore Coombs. However, the download component must interact directly with the operating system of the computer without another program’s mediating between it and the operating system. Coombs stated in his declaration that metafiles perform the functions of the download component, but he did not state that they can perform those functions through direct interaction with the operating system. He conceded that metafiles are interpreted by Windows Media Player, which then sends instructions through the operating system to the microprocessor. Furthermore, Network Commerce concedes in its appeal brief that "metafiles are ‘powerful tools for controlling Windows Media Player.’" (Br. of Pls.-Appellants at 8 (quoting Microsoft documents with approval).) Thus, even according to Network Commerce, a metafile is not a download component as correctly construed. No genuine issues of material fact exist regarding metafiles. . . .

The expert declaration and other evidence relied on by Network Commerce supporting infringement by equivalents are generalized and do not provide particularized testimony and linking argument on a limitation-by-limitation basis. For this reason the evidence did not raise a genuine issue of material fact. Summary judgment of non-infringement under the doctrine of equivalents regarding metafiles was therefore proper.

    (1)comment(s)     translate     More Updates     Send    


Anonymous Chris G. said...

IMO, the court didn't need to construe the term "download component" so narrowly to get the same result.

The claims require that the download component "control" a download (claim 7) or "request" and "coordinate" a download (claims 1, 11 and 14).

As noted by the court, a metafile is simply data, and not an executable program. Since it is not an executable, it can't perform any action, including requesting, controling, or coordinating a download as required by the claims.

So, in the end, the take-away from this case is not that if you use the term "download component" it is going to always mean it is an executable. I think the court was looking to the whole claim term.

My take away is that, if you don't want to be limited to executable programs, one should be careful in using verbs associated with whatever term you are using to define any type of file.

September 16, 2005 9:47 AM  

Post a Comment

<< Home