Globetrotter Software, Inc. v. Elan Computer Group, Inc.

Citations: 236 F.3d 1363; 57 U.S.P.Q. 2d (BNA) 1542; 2001 U.S. App. LEXIS 662; 2001 WL 41027Docket: No. 00-1110

Court: Court of Appeals for the Federal Circuit; January 17, 2001; Federal Appellate Court

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Globetrotter Software, Inc. appeals the denial of its motion for a preliminary injunction by the United States District Court for the Northern District of California, concerning the interpretation of claim 55 of U.S. Patent No. 5,390,297. The patent addresses a license management system that regulates the number of concurrent copies of software running on a computer network, aligning the number of active copies with the licenses purchased by the network owner. This system allows network owners to buy fewer licenses than the total number of computers, simplifying compliance monitoring and alleviating the vendor's reliance on the licensee's integrity.

The patent outlines two embodiments: the "license transfer" embodiment, where each license is stored in a separate license file, and the "license pool" embodiment, where multiple licenses can reside in a single file. Independent claim 55 specifies a license management system that includes components for storing licenses, managing program storage across nodes, and responding to requests to run programs by searching for available licenses. The court affirmed the district court's proper interpretation of the means-plus-function limitation of claim 55, leading to the rejection of Globetrotter’s preliminary injunction request.

The '297 patent specification outlines the structural requirements for a license management system, specifically addressing whether a unique identification (UID) is essential for the function of "storing at least one and up to a selectable number of said licenses," as detailed in claim 55. Rainbow Technologies, Inc., which acquired license management software from Elan Computer Group, contends that its products, SentinelLM 5.0 and 6.0, lack a UID, thus asserting non-infringement of the patent. Globetrotter, the patent holder, sued Elan and Rainbow for infringement of several claims, including claim 55. In response to Globetrotter's motions for a preliminary injunction and partial summary judgment regarding claim 55, Elan filed a cross-motion for partial summary judgment claiming non-infringement. The district court held a Markman hearing to interpret the patent claims and subsequently issued orders on October 26, 1999. The court defined "LICENSE FILE MEANS FOR STORING" as a memory area on a node containing at least one license and a UID, stating that equivalents of this structure would also qualify. The court noted that a UID is crucial for distinguishing license files and ruled that Globetrotter failed to demonstrate that the accused software contained a UID or its equivalent. The court also analyzed the fourth element of claim 55, which involves the license management system's response when no licenses are available.

The district court determined that the fourth element of Claim 55 involves the means-plus-function term "license management means," which specifically functions to "prevent a copy of a program from running." Globetrotter's motion for summary judgment on this element was denied, while Elan's motion for summary judgment of non-infringement was granted, as the court found that the accused device did not contain the prevention function, thus negating the need to identify a corresponding structure. Consequently, Globetrotter's request for a preliminary injunction was also denied, with the court stating that Globetrotter failed to demonstrate a likelihood of success on its infringement claim. Globetrotter appealed this decision, arguing that the denial stemmed from incorrect claim construction. The appellate court outlined its jurisdiction over the appeal regarding the preliminary injunction under 28 U.S.C. 1292(c)(1) and emphasized that the district court's decisions on preliminary injunctions are reviewed for abuse of discretion, legal errors, or misjudgment of evidence. It noted that any claim construction errors would be reviewed de novo, as claim construction is a legal issue. Both parties acknowledged that the "license file means for storing" in Claim 55 is a means-plus-function limitation under 35 U.S.C. 112, paragraph 6, which must be interpreted in light of the corresponding structure described in the specification.

Globetrotter contends that the district court incorrectly interpreted the "license file means" in claim 55 to require a UID, arguing this violates the precedent set in Micro Chemical, which states that a means-plus-function claim cannot be limited by a function not explicitly mentioned in the claim. Globetrotter maintains that the "license file means" simply refers to the function of storing a license, with the UID being unnecessary for this function, as storing licenses and assigning a UID are distinct functions requiring different structures. Furthermore, Globetrotter asserts that the district court's analysis focused solely on the license transfer embodiment, neglecting the license pool embodiment.

In contrast, the district court found that the function of the means-plus-function limitation is "storing at least one license," and identified the corresponding structure as the "license file." The court determined that since a UID is assigned to each license file, it constitutes a defining characteristic of the license file rather than just potential content. The court's analysis aligns with the intrinsic evidence, revealing that a UID is essential for performing the claimed function. The specification of the '297 patent explicitly states that a UID is necessary for the license file to store licenses effectively, as it enables comparison with a directory at a remote node to check license usage. Both embodiments in the specification demonstrate that a UID is integral to the storage function, countering Globetrotter’s claims.

A unique identifier (UID) is essential for both the license transfer and license pool embodiments as outlined in the '297 patent. In the license pool scenario, the operating system assigns a UID to a newly created license file, which is shared among all licenses in that file. The installation program encrypts this UID and embeds it within the license file before any program usage requests are made, ensuring that licenses without the required UID cannot be utilized. Neither embodiment of the invention can store licenses without a UID, as confirmed by both the patent descriptions and accompanying drawings, which display UIDs assigned to license files in both embodiments. 

Globetrotter contends that the district court's interpretation of "license file means" requiring a UID undermines the doctrine of claim differentiation, particularly regarding Claim 58, which specifies a means for assigning a UID. They assert that this claim must be differentiated from Claim 55, from which it depends. However, the dependent Claim 58 introduces a limitation not present in Claim 55, and while Globetrotter acknowledges that the "means for assigning" and "means for storing" serve distinct functions, this distinction does not negate the necessity of a UID for the storage function as interpreted by the district court. The court's claim construction supports the view that a UID is required for storing licenses without contradicting the claim differentiation doctrine.

Claim differentiation is not applicable in this case, as the court interprets claim 55 according to the statutory requirements of section 112, paragraph 6, necessitating a Unique Identifier (UID) for the license file means limitation, without importing functions from claim 58. Globetrotter's arguments regarding claim differentiation are unconvincing. The court affirms the district court's construction of the "license file means" and concludes that the preliminary injunction was rightly denied under this construction. Elan's reliance on prosecution history to argue that a UID is essential for the storing function is deemed irrelevant, as it pertains to claims with different limitations than claim 55. The license file means limitation of claim 55 encompasses equivalents, as stipulated by 35 U.S.C. 112, paragraph six. The court does not address whether Globetrotter can prove infringement regarding the license file means limitation, affirming only the denial of the preliminary injunction due to Globetrotter's inability to demonstrate probable success on its infringement claim. The issue of infringement concerning the license file means limitation is considered moot at the district court level, following the grant of summary judgment on the prevention function limitation. The correctness of this summary judgment remains unresolved for future consideration.