CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573 

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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THE HONORABLE JOHN C. COUGHENOUR 

SPECIAL MASTER GALE R. PETERSON 

IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF WASHINGTON 

AT SEATTLE 

VERITAS OPERATING CORPORATION, 

a Delaware Corporation, 

Plaintiff, 

vs. 

MICROSOFT CORPORATION, a 

Washington Corporation, 

Defendant, 

___________________________________ 

MICROSOFT CORPORATION, a 

Washington Corporation, 

Counterclaim Plaintiff and 

Counterclaim Defendant, 

vs. 

VERITAS OPERATING CORPORATION, 

a Delaware Corporation, and VERITAS 

SOFTWARE CORPORATION, a Delaware 

corporation, 

Counterclaim Defendants 

and Counterclaim 

Plaintiffs. 

Case No. CV 06-0703 JCC 

DEFENDANT MICROSOFT 

CORPORATION’S RESPONSIVE 

CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 

5,469,573 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 1 of 60
 

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DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

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TABLE OF ASSERTED CLAIMS

1. A method for loading a fully configured operating system onto a storage 

device of a data processing system, comprising the steps of: 

providing a first media comprising operating system files for installing the fully 

configured operating system onto the storage device; 

providing a second media comprising configuration-specific data files; 

initializing the data processing system from the second media to provide a 

temporary operating system and using the configuration-specific data files to 

configure the data processing system; 

loading the fully configured operating system files from the first media to the 

storage device using the temporary operating system; and 

reinitializing the data processing system from the storage device to install the 

fully configured operating system. 

2. The method of claim 1, wherein the step of providing the first media comprises 

copying the operating system files stored on the storage device to the first media. 

3. The method of claim 2, wherein the step of providing the first media further 

comprises copying all the files from the storage device to the first media. 

4. The method of claim 3, wherein the first media comprises magnetic tape, and 

copying all the files comprises running a data backup routine. 

5. The method of claim 1, wherein the step of providing a second media 

comprises copying the configuration-specific data files from the storage device to 

the second media. 

7. The method of claim 5, wherein the configuration-specific data files comprise 

system configuration files. 

8. The method of claim 5, wherein the configuration-specific data files comprise 

operating system configuration files. 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 2 of 60
 

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CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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9. The method of claim 5, wherein the configuration-specific data files comprise 

device driver files. 

10. The method of claim 1, wherein the storage device comprises a hard disk 

drive. 

13. The method of claim 1, further comprising the step of initializing the storage 

device prior to the step of loading the fully configured operating system files 

from the first media to the storage device. 

14. The method of claim 13, wherein the step of initializing the storage device 

comprises formatting the storage device. 

15. The method of claim 13, wherein the step of initializing the storage device 

comprises partitioning the storage device. 

16. The method of claim 15, wherein the step of initializing the storage device 

further comprises formatting a partition of the storage device. 

17. The method of claim 16, wherein each partition is formatted using a format 

command associated with the particular operating system and file system type to 

be loaded into that partition. 

18. A method for loading a fully configured operating system onto a disk drive of 

a data processing system, comprising the steps of: 

copying fully configured operating system files stored on the disk drive to a first 

media; 

copying configuration-specific data files from the disk drive to a second media; 

initializing the data processing system from the second media to provide a 

temporary operating system and using the configuration-specific data files to 

configure the data processing system; 

initializing the disk drive prior to the step of loading the fully configured 

operating system files from the first media to the disk drives; 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 3 of 60
 

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CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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loading the fully configured operating system files from the first media to the 

disk drive using the temporary operating system to install the fully configured 

operating system; and 

reinitializing the data processing system from the disk drive to provide the fully 

configured operating system. 

19. The method of claim 18, wherein the step of copying first operating system 

files comprises copying all the files from the disk drive to the first media. 

22. The method of claim 18, wherein the configuration-specific data files 

comprise system configuration files. 

23. The method of claim 18, wherein the configuration-specific data files 

comprise operating system configuration files. 

24. The method of claim 18, wherein the configuration-specific data files 

comprise device driver files. 

26. The method of claim 18, wherein the step of initializing the disk drive 

comprises formatting the disk drive. 

27. The method of claim 26, wherein the step of initializing the disk drive step 

further comprises partitioning the disk drive. 

28. The method of claim 18, wherein the step of initializing the disk drive 

comprises formatting a partition of the disk drive. 

29. The method of claim 18, wherein each partition is formatted using a format 

command specific to the particular operating system to be loaded into that 

partition. 

30. A method for loading a fully configured operating system onto a disk drive of 

a first data processing system, comprising the steps of: 

configuring a disk drive of a second data processing system with the desired 

configuration for the first data processing system; 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 4 of 60
 

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CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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copying fully configured operating system fries stored on the disk drive of the 

second data processing system to a first media; 

copying configuration-specific data files from the disk drive of the second data 

processing system to a second media; 

initializing the first data processing system from the second media to provide a 

temporary operating system and using the configuration-specific data files to 

configure the first data processing system; and 

loading the fully configured operating system files from the first media to a disk 

drive of the first data processing system using the temporary operating system to 

install the fully configured operating system. 

31. The method of claim 30, further comprising the step of limiting to a 

predetermined quantity the number of times the first operating system files can 

be loaded from the first media to the disk drive. 

32. The method of claim 1, wherein the first media comprises an optical disk. 

33. A method for loading a fully configured operating system onto a storage 

device of a data processing system, comprising the steps of: 

initializing the data processing system from a second media, having 

configuration-specific data files, to provide a temporary operating system using 

the configuration-specific data files to configure the data processing system; 

loading the fully configured operating system files from a first media to the 

storage device using the temporary operating system, the first media having 

operating system files for installing the fully configured operating system onto 

the storage device; and 

reinitializing the data processing system from the storage device to install the 

fully configured operating system. 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 5 of 60
 

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CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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TABLE OF CONTENTS

Page

I. INTRODUCTION ...............................................................................................................1

II. ORGANIZATION OF THIS BRIEF AND APPENDICES................................................4 

III. GOVERNING LAW ON SELECTED MARKMAN ISSUES .............................................4 

IV. U.S. PATENT NO. 5,469,573 PATENT BACKGROUND................................................6 

A. The Disaster Recovery Problem ..............................................................................6 

B. The Standard Emergency Boot (Recovery) Disk Disaster Recovery Solution .......7 

C. The Person Of Ordinary Skill In This Art In February, 1993..................................7 

D. The POSA’s Understanding Of The ‘573 Patent’s Solution ...................................8 

E. The Patent’s Prosecution History And Issued Claims...........................................11 

V. PROPOSED CLAIM CONSTRUCTIONS.......................................................................12 

A. METHOD: Recover (Use Emergency Boot (Recovery) Disk) ............................12

Configure, Configuring, Configured, and Configuration

1. “Configuring” The Data Processing System 

 Means Tailoring The System’s Hardware And/Or 

 Software, And Is Not Limited To Selecting Components.........................13 

2. Microsoft’s Two Non-Limiting Examples, 

 Taken From The Patent, Will Help The Jury.............................................14

“Initializing” And “Using” Steps

3. The Literal And Grammatical Reading 

 Of This Claim Language Is The Correct Construction..............................17 

4. The Omission Of The Word “And” In Claim 33 Was An Error ...............25 

5. Microsoft’s Non-Limiting Example Is Helpful To The Jury.....................26

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CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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“Configuration-Specific Data Files”

6. The Configuration Files Need To Provide 

 Only Enough Information To Allow The 

 Computer To Recover Its Data From The Backup Device........................27 

7. Microsoft’s Non-Limiting Examples 

 Are Correct And Will Help The Jury.........................................................29 

B. Dependent Claims 7-9, 22-24 Recite Three 

 Examples Of Configuration-Specific Data Files ...................................................30 

1. Microsoft’s Non-Limiting Examples for 

 “System Configuration Files” And “Operating System 

 Configuration Files” Are Correct and Helpful to the Jury.........................31 

2. The Court Should Adopt Microsoft’s 

 Construction Of “Device Driver Files” .....................................................31 

C. METHOD: Prepare (Create Backup) 

 And Recover (Restore From Backup) ...................................................................32

The Above “Providing” and “Loading” Steps

1. The First Media (Backup Device) Need 

 Not Store The Entire “Fully Configured” Operating System....................33 

2. These Claim Steps Preclude Restoring A 

 Bit Mapped Image Of The Operating System ...........................................34 

D. METHOD: Recover (Re-boot And Use The Restored System)...........................35

“Install”

“Reinitializing ...”

E. The Claim As A Whole .........................................................................................36

1. Claims 1, 18, 33 Are Directed To 

 Recovery Of An Operating System 

 That Becomes Corrupted Or Inoperative; 

 They Do Not Cover The Factory Loading Scenario..................................37 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 7 of 60
 

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CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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2. The Claims Require That The Loading Of The Fully 

 Configured Operating System Be Accomplished By The 

 Data Processing System Itself, Rather Than By Some Other 

 Computer From Which That Operating System Is Transferred ................37 

3. Each Step May Be Performed Manually ...................................................37 

4. The Steps May Be Performed Far Apart In Time......................................38 

F. Claim Terms Referring To Physical Devices ........................................................38 

1. The Storage Device, First Media (Backup), And 

 Second Media (Emergency Boot (Recovery) Disk) 

 Are Physically Distinct, And Not The Same Physical Thing....................39 

2. Each of the First Media (Backup) And 

 Second Media (Emergency Boot (Recovery) 

 Disk) May Comprise Multiple Physical Units...........................................41 

3. The Second Media Is Bootable..................................................................42 

4. The Second Media (Emergency Boot (Recovery) Disk) Is Removable....42 

5. The Function Of The Patent’s Storage 

 Device Is To Store Software And Other Digital Data ...............................43 

6. Microsoft’s Non-Limiting Examples Will Help The Jury.........................43 

G. Additional Claim Construction Issues Presented by Claims 30 and 31 ................44 

1. Claim 30 Does Not Require Factory Loading ...........................................44 

2. Limiting To A Predetermined Quantity.....................................................44 

VI. “FULLY CONFIGURED OPERATING SYSTEM” AND “DESIRED 

 CONFIGURATION” RENDER THE CLAIMS INCURABLY INDEFINITE ...............45 

VII. THE COURT SHOULD DISMISS THE REPORT SIGNED BY DR. SMITH...............48 

VIII. CONCLUSION..................................................................................................................50 

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CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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TABLE OF AUTHORITIES

Page

Cases

Abraxis Bioscience, Inc. v. Mayne Pharma (USA), Inc., 

467 F.3d 1370 (Fed. Cir. 2006) ............................................................................................. 14 

Brookhill-Wilk, LLC v. Intuitive Surgical, Inc., 

326 F.3d 1215 (Fed. Cir. 2003) ........................................................................................... 5, 8 

Datamize, LLC v. Plumtree Software, Inc., 

417 F.3d 1342 (Fed. Cir. 2005) ............................................................................................. 46 

Endress + Hauser, Inc. v. Hawk Measurement Systems Pty. Ltd., 

122 F.3d 1040 (Fed. Cir. 1997) ............................................................................................... 5 

Environmental Design, Ltd. v. Union Oil Co. of Calif., 

713 F.2d 693 (Fed. Cir. 1983) ................................................................................................. 5

IPXL Holdings, L.L.C. v. Amazon.com, Inc., 

430 F.3d 1377 (Fed. Cir. 2005) ............................................................................................. 45 

Markman v. Westview Instruments, 

517 U.S. 370 (1996)........................................................................................................ passim 

Phillips v. AWH Corp., 

415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) ............................................................... 5, 48 

Power Mosfet Technologies, LLC v. Siemens AG, 

378 F.3d 1396 (Fed. Cir. 2004) ............................................................................................. 36 

Robotic Vision Systems, Inc. v. View Engineering, Inc., 

189 F.3d 1370 (Fed. Cir. 1999) ............................................................................................... 8 

Serio-US Industries, Inc. v. Plastic Recovery Technologies Corp., 

459 F.3d 1311 (Fed. Cir. 2006) ............................................................................................... 5 

Union Pac. Resources Co. v. Chesapeake Energy Corp., 

236 F.3d 684 (Fed. Cir. 2001) ............................................................................................... 46 

Rules

Fed. R. Evid. 702 ....................................................................................................................... 48

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 9 of 60
 

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CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

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I. INTRODUCTION

In February, 1993, five employees of a company near Boston filed a patent application 

on a technique that had been developed and widely adopted by others years earlier. Why they 

did this is not yet known. What is known, though, is that the resulting ‘573 Patent claims this 

standard, state of the art solution. (Last week, the Patent Office granted Microsoft’s Request 

for Reexamination, based on six separate examples of this prior art technique. (See Apx. B, 

pgs. 352-365).) Now, 14 years later, in an attempt to avoid that dead-on prior art, Veritas seeks 

to re-invent the patent’s alleged invention and re-draft its claims. Below are two examples to 

back up this charge. 

First, any savvy computer user knows that one “configures” a computer by tailoring its 

hardware and/or software in a particular manner. One might begin configuring by installing 

particular versions of hardware and software, and then continue configuring by choosing from 

among thousands of available configuration settings available for that hardware and software. 

The ‘573 Patent uses “configure” in this customary way—equating it with a “tailoring 

operation” (‘573 Pat. at 1:28)—as shown by these examples: 

Configuring by Loading Programs: “Prior to performing a recovery or 

loading operation with this invention, a PC is fully loaded and configured

(100) as desired with the operating system, device drivers, configuration files, 

and application software including a tape backup program.” (‘573 Pat. at 

5:19-24). (Emphasis added throughout this Brief, unless otherwise noted). 

Configuring by Setting Parameters: “The system is then configured by the 

boot manager (416) to boot from the C: disk drive.” (Id. at 7:22-23; see also

Fig. 6A). 

But, Veritas now tries to limit “configure” to “Tailoring the capability based on 

selection of components.” 1 Using this unnatural narrowing of “configure,” if one spends three 

hours carefully tailoring a computer to customize hundreds of different settings to one’s 

 

1

 The parties’ proposed constructions are set forth in Appendix A. 

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LAW OFFICES 

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TEL, (206) 623-1700 FAX, (206) 623-8717

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personal preferences, but doesn’t “select” any “components” in the process, one has not 

“configured” the computer. Plainly, that is not how the patent uses “configure.” 

Our second example of Veritas rewriting the claims is demonstrated by the plain 

grammar of the claim language, but benefits from some background on the problem addressed 

in the patent and its standard solution in the late 1980s and early 1990s. 

The Problem: For decades, computer users backed up data onto some removable 

storage media, such as a tape drive, so they could later recover that data if their computer hard 

drive crashed, or their computer was stolen or destroyed. To later recover that data, however, 

the repaired or replaced computer had to be configured (tailored) correctly to communicate 

with the particular model of back-up device that had been used, and configured to receive the 

backed up data. This posed a “chicken before the egg” problem. That is, the programs and 

data needed to configure the repaired or replaced computer to access the specific backup 

device, were themselves stored on the backup device. Thus, unless a user planned ahead, she 

had to re-configure the computer from scratch in order to recover her backed up data. (See

‘573 Pat. at 1:18-55). 

The Standard Solution: The standard “disaster recovery” solution was to plan ahead by 

storing on a separate, floppy boot disk(s) the necessary configuration data that would be 

needed post-crash to work with the backup device and receive the backed up data. This floppy 

typically was called an “Emergency Boot Disk” or “Recovery Diskette” (hereinafter 

“Emergency Boot (Recovery) Disk”). It served at least two functions. First, it provided 

whatever operating system files the computer needed to start (boot) up. Second, it provided 

the configuration data the computer needed to access the backup device and receive the backed 

up data, such as the particular backup device’s “driver” program and the particular backup and 

restore program that had been used to backup the data. If the hard disk “crashed,” corrupting 

the operating system, the user would (1) insert this Emergency Boot (Recovery) Disk into the 

computer, (2) boot from it to provide a (temporary) operating system to run the computer, (3) 

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DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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allowing the computer to be configured (using the floppy’s configuration data) as necessary to 

access the backup device and receive the backed up data, (4) restore whatever operating system 

and other programs and other data that had been backed up, (5) remove the Emergency Boot 

(Recovery) Disk from the floppy drive, and finally (6) reboot the computer from its 

(permanent) restored operating system. 

The ‘573 Patent Describes and Claims this Standard Solution: The ‘573 Patent 

describes and claims this standard solution. The claims call the Emergency Boot (Recovery) 

Disk the “second media,” and recite its two functions (boot and configure) as follows: 

“initializing the data processing system from the second media to provide a 

temporary operating system and using the configuration-specific data files to 

configure the data processing system.” (‘573 Pat., Claim 1). 

This quoted claim language combines two participle clauses with the conjunction “and.” Each 

clause recites an action performed on an object to achieve a result: 

Action Object Result 

Initializing ... from the 

second media

the data processing system to provide a temporary 

operating system 

using the configuration-specific 

data files 

to configure the data 

processing system 

Veritas Scrambles the Claim: Veritas now scrambles the clear structure, grammar, and 

meaning of above-quoted claim language with its proposed construction: 

Starting the operation of the [first] data processing system from the second 

media, and adjusting the starting configuration of the [first] data processing 

system using the configuration-specific data files, to set up a temporary 

operating system for use. 

This revision of the claim language distorts and moves the result of the first (“initializing”) 

clause (“to provide a temporary operating system”) to the end of the second clause, and tries to 

link that result to the action recited in the second clause (“using [the configuration-specific data 

files]”). Veritas also introduces a new action of “adjusting the starting configuration,” and 

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DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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changes the broad “provide” to the narrower “set up ... for use.” As explained below, the 

transparent reason for Veritas’ claim-scrambling is to artificially limit the claims in an effort to 

avoid anticipation by some standard prior art implementations. 

In addition to rewriting the claims, Veritas tries to cloud the claims with incomplete 

and unclear constructions. And, it objects to giving the jury (non-limiting) examples to help 

explain the meaning of the claims. Microsoft, in contrast, urges the Court to give the jury 

complete and unambiguous explanations of these claims including, where appropriate, nonlimiting examples to help the jury fully understand what these claims do and do not cover. 

II. ORGANIZATION OF THIS BRIEF AND APPENDICES

This Brief summarizes the state of the art, the patent, and the patent’s prosecution 

history. It then analyzes the disputed claim language and the parties’ competing constructions. 

It ends with reasons why the Court should dismiss the report signed by Dr. Smith for Veritas. 

Accompanying this Brief are two Appendices: 

• Appendix A: Microsoft and Veritas Combined Proposed Constructions 

for the ‘573 Patent. 

• Appendix B: Microsoft Record Evidence (selected excerpts referred to in 

this Brief are paginated as “Apx. B, pg. ####”). 

III. GOVERNING LAW ON SELECTED MARKMAN ISSUES

Microsoft incorporates by reference its discussion of Markman case law in its Opening 

Claim Construction Brief Regarding Microsoft’s U.S. Patent No. 5,588,147. The parties’ 

constructions of the ‘573 Patent claims raise two additional questions of Markman law. 

First, how does one identify a “person of ordinary skill in the art (POSA)?” Veritas’ 

description of a POSA (Ver. Opening Br. at 10:14-20) makes no reference to the particular 

problem or field of art described in the patent, namely the backup and recovery of data 

including operating systems. Under Veritas’ description, the POSA might know absolutely 

nothing about this particular field or its state of the art in 1993. That cannot be. Rather, “the 

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person of ordinary skill is a hypothetical person who is presumed to be aware of all the 

pertinent prior art.” Endress + Hauser, Inc. v. Hawk Measurement Systems Pty. Ltd., 122 F.3d 

1040, 1042 (Fed. Cir. 1997) (citation omitted); see also Environmental Design, Ltd. v. Union 

Oil Co. of Calif., 713 F.2d 693, 696-97 (Fed. Cir. 1983) (the factors considered in determining 

the level of ordinary skill include (1) the kinds of problems encountered in the art and (2) prior 

art solutions to such problems). 

Second, does the state of the art matter in Markman proceedings? Veritas says No, but 

Microsoft disagrees. Persons of skill in the art bring more than just a particular vocabulary to 

their reading of the patent application. POSAs naturally read it through the lens of what they 

know about the state of the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1332 (Fed. Cir. 

2005) (en banc) (“[A] claim should be interpreted both from the perspective of one of ordinary 

skill in the art and in view of the state of the art at the time of invention.”); Brookhill-Wilk, 

LLC v. Intuitive Surgical, Inc., 326 F.3d 1215, 1220 (Fed. Cir. 2003) (“The words used in the 

claims are examined through the viewing glass of a person skilled in the art.”) (citation 

omitted). Here, Veritas’ expert, Dr. Smith, conceded that the ‘573 Patent’s recovery diskette 

was a form of emergency boot disk and that a POSA would have known of and considered that 

emergency boot disk art when reading the patent. (Apx. B, pgs. 246-49, 270-71: Smith TR at 

112:9-115:18, 170:11-171:15 (knowledge of the emergency boot disk art “would inform one’s 

reading of the patent”).) Also, the prior art provides at least as much meaningful context for 

claim construction as does the accused product, cf. Serio-US Industries, Inc. v. Plastic 

Recovery Technologies Corp., 459 F.3d 1311, 1319 (Fed. Cir. 2006). 

Following this case law, Microsoft approaches the ‘573 Patent claims through the 

POSA’s Emergency Boot (Recovery) Disk “state of the art” lens. 

Veritas tries to have it both ways on this issue. On the one hand, Veritas tells the Court 

that the ‘573 Patent applicants significantly improved upon the prior art. (See, e.g., Ver. 

Opening Br. at 1:20-21). For this, Veritas cites the report of Dr. Smith (Apx. B, pgs. 102, 114: 

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Smith Report, ¶¶ 6, 34) even though Veritas intentionally kept him in the dark about the prior 

art (see Apx. B, pgs. 228, 234-35, 243: Smith TR 18:13-24, 35:1-36:9, 56:9-13 (“I’ve made no 

study of the prior art”)). On the other hand, Veritas says the Court should not consider prior art 

in this Markman proceeding. (Ver. Opening Br. at 3:14-20). Veritas is wrong on both counts. 

The ‘573 Patent describes an Emergency Boot (Recovery) Disk technique that was well known 

to the POSA years before the patent application was filed (see Apx. B, pgs. 88-95: Lary Decl., 

at 9:9–16:19), and that state of the art is highly relevant to how such a POSA would understand 

this patent and its claims. 

IV. U.S. PATENT NO. 5,469,573 PATENT BACKGROUND 

A. The Disaster Recovery Problem

A 1990 Baxter/Herbert Usenet publication called “How to Make a Disaster Boot 

Floppy,” aptly described the “chicken before the egg” problem, as follows: 

Having installed a tape drive, and snapped a copy of my disk onto a tape, I 

am wondering how to restore that image should my disk contents get wiped 

out. Since one has to custom-configure ISC Unix to install the tape drive, the 

obvious solution is to install a fresh Unix, configure it, and then restore the 

tape.... This solution suffers the problem of having to do all that configuration 

work, when the desired result of it is already sitting on the tape, just waiting to 

be restored. Clearly a chicken-before-the-egg? problem. Surely there must be 

a better way; I’m open to suggestions. (Apx. B, pg. 278: Baxter, “How to 

Make a Disaster Boot Floppy” (1990)).2

Nearly three years later, after Baxter asked and answered that question, the ‘573 Patent 

applicants described the same problem: 

Data backup systems, such as magnetic tape backup, are generally very useful 

for restoring corrupted or destroyed data files on the high capacity hard disk. 

However, these backup systems normally require that the disk operating system 

installed on the hard disk be intact and fully operational before data can be 

 

2

 The remainder of this publication answers Mr. Baxter’s inquiry, describing the standard 

solution in detail. 

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restored to the hard disk. A data loss affecting the operating system itself is 

typically not recoverable by using the tape backup system, and requires that the 

operating system be reloaded onto the hard disk and configured anew. Where 

the operating system was “factory loaded,” reloading of the operating system 

onto the hard disk outside the factory may consume many hours of valuable user 

and technical support time. (‘573 Pat. at 1:43-55). 

B. The Standard Emergency Boot (Recovery) Disk Disaster Recovery Solution 

In 1992, the standard solution to this problem was to create an Emergency Boot 

(Recovery) Disk with sufficient configuration information to allow the computer to access and 

restore whatever had been saved to the backup media, including the operating system if that 

had been backed up. Although Veritas’ expert Dr. Smith avoided reading the prior art 

Microsoft had provided to Veritas, he knew enough to know that prior to 1993, the standard 

way to solve the crash recovery problem addressed in the ‘573 Patent was to use an emergency 

boot disk: 

Q. Do you have any information about any techniques that were used prior to 

1993 in order to fully or partially solve the problem identified in the 573 

patent about having to configure the system anew after a crash? 

MR. PAK: Objection. Vague and ambiguous. Incomplete hypothetical. 

Lacks foundation. Compound question. 

THE WITNESS: My recollection is everyone started with an emergency boot 

disk. At least in the work station PC world. There were other ways of 

restoring the system in the mainframe world, and usually the guys in the glass 

room took care of that. (Apx. B, pg. 276: Smith TR at 182:4-16). 

This standard Emergency Boot (Recovery) Disk technique used the same steps 

described in the ‘573 Patent, as is explained in Section IV. D. infra, and documented at Apx. 

B, pgs. 278-328 and other materials submitted with Exhibit G of the Joint Claim Construction 

Statement (hereinafter referred to as “JCCS”) and explained by Richard Lary in his declaration. 

(See generally, Apx. B, pgs. 80-96). 

C. The Person Of Ordinary Skill In This Art In February, 1993 

 Richard Lary is an expert in this field. (Apx. B, pg. 80: Lary Decl. at 1:10-18). He 

describes the persons of ordinary skill in the art (POSAs) as of February, 1993, in relation to 

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the problem addressed by the ‘573 Patent. In particular, he defines the POSA as either of two 

persons: (1) a skilled system administrator looking for ways to reduce the amount of work 

involved in recovery of a system disk (a disk storing the operating system) or (2) the backup 

software designer, skilled in the art of software engineering, looking to incorporate rapid 

recovery from system disk failures into a backup application. (See, e.g., Apx. B, pg. 89: Lary 

Decl. at 10:5-17). Case law permits such multiple POSA categories. See, e.g., Robotic Vision 

Systems, Inc. v. View Engineering, Inc., 189 F.3d 1370, 1373 (Fed. Cir. 1999). Each POSA 

would have been familiar with the Emergency Boot (Recovery) Disk prior art, as that art 

addresses the same problem addressed by the ‘573 Patent (and provides the same solution). 

D. The POSA’s Understanding Of The ‘573 Patent’s Solution 

A POSA picking up the ‘573 Patent application on February 26, 1993, immediately 

would have recognized that it was describing an implementation of the standard Emergency 

Boot (Recovery) Disk crash recovery procedure, and read it through that “state of the art” lens. 

Cf., Brookhill-Wilk, 326 F.3d at 1220. The POSA also would have seen that the application 

was not limited to any particular operating-system implementation of that known Emergency 

Boot (Recovery) Disk technique, as the application expressly states that the alleged 

“invention” applies to “IBM OS/2 (versions 1.2, 1.3x, 2.0 and 2.x), but could also be Microsoft 

MS-DOS, Microsoft Windows 3.x, UNIX, or another operating system.” (‘573 Pat. at 3:46-

50). With this “state of the art” lens, the POSA would have understood the patent application 

to describe the following crash recovery process: 

PREPARE (CREATE BACKUP)

Standard: The first step of the standard Emergency Boot (Recovery) Disk technique—

and of the standard backup procedure in general—was to backup the contents of a hard disk, 

including all or part of the computer’s configured operating system, to a removable tape or 

other removable backup media. Some backup applications at that time—including the “Sytos 

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Plus” program of Sytron Corporation (the Applicants’ employer) mentioned in the ‘573 Patent 

application—allowed the user to do a full backup including the operating system files. (Id. at 

5:19-36). Several of the prior art Emergency Boot (Recovery) Disk publications recommend 

doing such a full back-up. (See, e.g., Apx. B, pg. 314: CT-BOOT Brochure: “... to archive 

EVERYTHING on a filesystem ...”). 

Patent: The ‘573 Patent describes this same first step: per Fig. 3, steps 102-03, save 

the computer’s configured operating system, and perhaps other contents of a hard disk, to a 

tape or other backup media. (‘573 Pat. at 5:21-36). 

PREPARE (CREATE EMERGENCY BOOT (RECOVERY) DISK)

Standard: Next, create a removable Emergency Boot (Recovery) Disk (which might be 

two or more disks), and save to it whatever drivers, restore program and other configuration 

data will be needed to access the backup media and receive data from it. Examples of the 

specific configuration files that were saved include device driver files, user preference files, 

password files, CONFIG.SYS, AUTOEXEC.BAT, backup logs, recovery programs, etc. (See, 

e.g., Apx. B, pg. 278-82: Baxter; Apx. B, pgs., 319-22: Supercharging MS-DOS at 354-57). 

Patent: The ‘573 Patent describes this same step. Per Fig. 3, steps 104-112, create a 

bootable recovery diskette, and save to it whatever drivers and configuration information will 

be needed to access the backup media: 

Next, a recovery diskette is prepared from the fully configured PC by copying 

various files from the hard disk onto the recovery diskette . . . These copied 

files include vital operating system configuration files (104), system 

configuration files (106), and device drivers (108) which are required for the 

proper operation of the hardware, operating system, and attached devices. 

(‘573 Pat. at 5:39-46). 

RECOVER (USE EMERGENCY BOOT (RECOVERY) DISK)

Standard: Next, after a crash or other loss of data and after the user repaired or 

replaced the hard drive, she inserted the Emergency Boot (Recovery) Disk and booted the 

computer from it. The computer used the configuration information stored on this disk (e.g., 

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backup device driver, backup and restore program, etc.) to configure itself as necessary to 

access the backup media and recover data from it. (See, e.g., Apx. B, pg. 291: CT-BOOT 

Manual at 7: “Boot the system from the CTAR BOOT Diskette ... reconfigure and prepare a 

currently existing hard drive for restoration of CTAR backups ...”; Apx. B, pg. 278: Baxter: 

“build an emergency boot floppy with the configured OS (at least, the OS configured with the 

tape driver and all the hard disk partitions); in case of disaster, one could simply boot that and 

then do a tape restore.”) 

Patent: The ‘573 Patent describes these same uses for its recovery diskette. Per Fig. 4, 

step 202, after repairing or replacing the hard drive, use the boot recovery diskette to boot the 

computer and also to configure it as necessary to access the backup media and receive data 

from it: 

To begin the recovery process, the operator inserts (200) the backup tape 

containing the operating system files to be restored into the PC tape drive. 

Next, the operator starts (i.e., boots) (202) the PC from the recovery diskette 

which loads an initial, temporary operating system into the memory of the PC. 

The recovery diskette also supplies this initial operating system with the 

necessary system configuration files and device drivers, i.e., the files 

previously copied to the recovery diskette from the fully configured PC. 

(‘573 Pat. at 6:10-18). 

RECOVER (RESTORE FROM BACKUP)

Standard: Next, the user used the sufficiently configured computer to recover whatever 

she had backed up, including the operating system and other programs. (See, e.g., Apx. B., pg. 

291: CT-BOOT Manual at 7: “restores your last CTAR Master Backup”). 

Patent: The ‘573 Patent describes this same step. Per Fig. 4, steps 204-206, restore the 

configured operating system, and perhaps other contents, from the backup media to the new or 

repaired hard drive: 

Next, a recovery program is loaded from the recovery diskette into the PC and 

run (204) to directly recover (206) the operating system files from the backup 

tape. Other files on the backup tape can also be restored to the PC by the 

recovery program. (‘573 Pat. at 6:26-30). 

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RECOVER (RE-BOOT AND USE THE RESTORED SYSTEM)

Standard: Finally, the user removed the Emergency Boot (Recovery) Disk and rebooted the computer from the hard drive using the (permanent) restored operating system. 

(See, e.g., Apx. B, pg. 291: CT-BOOT Manual at 7: “Reboot from your hard drive and away 

you go.”) 

Patent: The ‘573 Patent describes this same final step. Per Fig. 4, step 208, re-boot the 

computer from the hard drive and use the restored operating system. (‘573 Pat. at 6:30-33). 

E. The Patent’s Prosecution History And Issued Claims

Applicants originally filed 32 claims. The Examiner rejected them under Sections 112, 

¶ 2, and 103. Applicants amended the claims, added two new claims, and submitted Remarks 

taking several positions on the scope of the claims, including: 

• Applicants repeatedly argued that claims 1, 18 and 33 are directed to recovering 

from a corrupted operating system. (Apx. B, pgs. 31-36: Amendment 

[10/28/94] at 6-11). 

• They argued that the claims’ method steps could be performed manually or 

automatically. (Id., pg. 30: Amendment [10/28/94] at 5). 

• To distinguish cited art, they argued that the claims exclude a system in which 

the loading of the “fully configured” operating system is accomplished by some 

computer other than the data processing system itself. (Id., pgs. 34-35: 

Amendment [10/28/94] at 9-10). 

The Applicants did not cite any Emergency Boot (Recovery) Disk art to the Examiner 

and the Examiner did not find that art on his own. The Applicants cited only two prior art 

patents and one publication. These cited references concerned the selection of files to be 

backed up and a network backup application. 

The Examiner then allowed all of the claims, except one of the two new claims which 

Applicants then cancelled. The Patent issued with 33 method claims, four of which are 

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independent. A large-font copy of the asserted claims is attached to this Brief immediately 

after the caption page. 

On March 15, 2007, the Patent Office granted Microsoft’s Request of Ex Parte

Reexamination and agreed to reexamine all 33 claims of the ‘573 Patent, based, in part, on six 

different examples of Emergency Boot (Recovery) Disk art that had not been considered 

before. (See Apx. B., pgs. 352-65). 

V. PROPOSED CLAIM CONSTRUCTIONS

A. METHOD: Recover (Use Emergency Boot (Recovery) Disk) 

This stage of the recovery process presents the most claim construction disputes, 

including the two identified in the Introduction of this Brief. 

Configure, Configuring, Configured, and Configuration

Claim 

Language

Microsoft’s Proposed Claim Construction Veritas’ Proposed 

Claim Construction

configuring, 

configuration, 

configure 

(claims 1, 5, 

7-9, 18, 22-

24, 30, 33) 

Configuring: Tailoring hardware and/or software of 

a particular data processing system. For example 

(but not limited to), tailoring a particular data 

processing system to operate with a specific tape 

backup device. 

Configuration: The particular combination and set up 

of hardware and/or software (e.g., an operating 

system) of a specific data processing system or 

portion thereof. 

Configure: Tailor hardware and/or software of a 

particular data processing system. For example (but 

not limited to), tailor a particular data processing 

system to operate with a specific tape backup device. 

Configuring: 

Tailoring the 

capability based on 

selection of 

components 

Configuration: The 

way in which the 

capability has been 

tailored based on 

selection of 

components 

Configure: To tailor 

the capability based 

on selection of 

components 

Configured 

(claims 1, 13, 

18, 30, 33) 

Tailored hardware and/or software. Tailored in terms of 

capability based on 

selection of 

components 

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Primary Dispute

1. Does Tailoring the System’s Hardware and/or Software “Configure” a Data 

Processing System, Even If It Does Not “Select Components” In the Process?: This Brief’s 

Introduction, supra at 1, explains this dispute. 

Other Disputes

2. Are Microsoft’s Two Non-Limiting Examples, Taken from the Patent, Helpful to the 

Jury? Microsoft proposes two examples that are expressly non-limiting: “For example (but 

not limited to), ....” Veritas does not deny that these examples are consistent with the meaning 

of the claim language, but it objects to all examples. 

1. “Configuring” The Data Processing System 

Means Tailoring The System’s Hardware And/Or 

Software, And Is Not Limited To Selecting Components 

State of the Art: The POSA knew that the standard Emergency Boot (Recovery) Disk 

recovery procedure was designed, in part, to avoid the tedium of re-customizing settings to retailor a computer’s hardware and/or software. (See, e.g., Apx. B, pg. 278: Baxter; id., pg. 287: 

CT-BOOT Manual at 3). 

Claims: The claims recite that the data processing system is configured. They say 

nothing about selecting components as part of that configuring. Rather, they refer broadly to 

“configure the data processing system,” without specifying any particular type of configuring. 

(See ‘573 Pat. at 9:5-6; 9:66-67; 10:53-54; 11:4-5). 

Specification: Nothing in the ‘573 Patent deviates from the customary meaning of 

“configure.” On the contrary, the patent uses the word “configure” in its ordinary broad sense, 

to refer to tailoring hardware and/or software, in any manner. (See, e.g., ‘573 Pat. at 1:18-34; 

2:57-3:4; 4:26-46; 5:19-50; 7:13-23; Figs. 3, 5, 6A, 7). The “three to five hours” cited in the 

patent for tailoring (configuring) a PC (‘573 Pat. at 4:13-22) was not needed simply to “select 

components” (whatever exactly that means). 

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Prosecution History: Nothing in the prosecution history narrows the claims in the way 

sought by Veritas. 

Extrinsic Evidence: The ordinary meaning of “configuring” is the meaning proposed 

by Microsoft, not the restricted meaning urged by Veritas. (See, e.g., Apx. B, pg. 348: 

Computer Professional’s Dictionary (1990) (“configure means to modify hardware or software 

to meet a specific environment or need”); Apx. B, pg. 351: PC Configuration Handbook

(1990) (“configure” includes setting switches to indicate various options); Apx. B, pgs. 239-

41; 242; 266: Smith TR at 49:13-51:19, 53:14-24, 157:2-21). 

Veritas’ Construction: Under Veritas’ artificial limitation of this claim term, a tailoring 

operation that fails to “select a component” does not qualify as configuring. Nothing in the 

patent justifies re-writing the claims in this way. 

Veritas’ constructions are not only wrong, they are unclear. Neither “select” nor 

“component” is mentioned anywhere in the patent. Veritas’ construction of “configuration” is 

also unclear: “The way in which the capability has been tailored based on selection of 

components.” A jury would wonder whether this refers to the manner in which the user 

performed the configuring, or the result, or something else. 

Conclusion: Nothing in the state of the art, the alleged invention, the specification, the 

claims, the prosecution history, or the ordinary meaning even arguably limits the word 

“configure” to “selection of components” as urged by Veritas. On the contrary, all of this 

evidence is consistent: to configure a particular data processing system is to tailor its hardware 

and/or software. 

2. Microsoft’s Two Non-Limiting Examples, 

Taken From The Patent, Will Help The Jury

Examples can help define a claim term. Cf. Abraxis Bioscience, Inc. v. Mayne Pharma 

(USA), Inc., 467 F.3d 1370, 1378 (Fed. Cir. 2006) (“the proper construction of ‘edetate’ is 

EDTA and derivatives of EDTA, such as salts, but not including structural analogs”). To 

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clarify the meaning of “configure” in this patent, Microsoft’s construction adds the patent’s 

most important example of configuring the data processing system, namely to tailor it to 

operate with a specific tape backup device. (‘573 Pat. at 5:46-50). Veritas does not deny that 

this example is correct. 

Further, Microsoft’s construction of “configuration” notes that what might be 

configured is the operating system. Veritas does not deny the validity of this example either. 

Veritas poses two objections to giving the jury examples to help define claim terms. 

Neither is grounded in logic or law. First, Veritas says that the POSA would not need 

examples. (Ver. Opening Br. at 23:21-23). That may be, but it is besides the point as the 

constructions are drafted to be understood by jurors, some of whom will not be skilled in this 

art. Second, Veritas cites case law that claims should not be limited to optional examples 

described in the patent. (Id. at 23:7-9) That is true, but also besides the point because 

Microsoft’s examples are non-limiting. 

“Initializing” And “Using” Steps

Claim 

Language

Microsoft’s Proposed Claim Construction Veritas’ Proposed 

Claim Construction

initializing 

the [first] data 

processing 

system 

(claims 1, 18, 

30, 33) 

Starting (booting) the operation of the data 

processing system. 

Starting the operation 

of the [first] data 

processing system 

from the second 

media, and adjusting 

the starting 

configuration of the 

[first] data processing 

system using the 

configuration-specific 

data files, to set up a 

temporary operating 

system for use 

using the 

configurationspecific data 

Configuring hardware and/or software on the data 

processing system based on information contained in 

the configuration-specific data files. For example, 

Starting the operation 

of the [first] data 

processing system 

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Claim 

Language

Microsoft’s Proposed Claim Construction Veritas’ Proposed 

Claim Construction

files to 

configure the 

[first] data 

processing 

system 

(claims 1, 18, 

30, 33) 

loading a tape backup device driver from the second 

media to the data processing system’s memory (to 

support later transfer of data from tape to that 

system’s storage device). 

from the second 

media, and adjusting 

the starting 

configuration of the 

[first] data processing 

system using the 

configuration-specific 

data files, to set up a 

temporary operating 

system for use 

initializing 

the [first] data 

processing 

system from 

the [a] second 

media . . . to 

provide a 

temporary 

operating 

system [and] 

using the 

configurationspecific data 

files to 

configure the 

[first] data 

processing 

system 

(claims 1, 18, 

30, 33) 

Claims 1, 18, and 30 each recite two steps, 

“initializing...” and “using...,” separated by the word 

“and.” The word “and” is missing in claim 33, but 

that is a typographical error and properly read, this 

claim language includes the word “and” in claim 33 

as in the other claims. 

“initializing the [first] data processing system from 

the [a] second media . . . to provide a temporary 

operating system”: Starting (booting) the operation 

of the data processing system using an interim 

operating system located on the second media. 

“using the configuration-specific data files to 

configure the [first] data processing system”: 

Configuring hardware and/or software on the data 

processing system based on information contained in 

the configuration-specific data files. For example, 

loading a tape backup device driver from the second 

media to the data processing system’s memory (to 

support later transfer of data from tape to that 

system’s storage device). 

Starting the operation 

of the [first] data 

processing system 

from the second 

media, and adjusting 

the starting 

configuration of the 

[first] data processing 

system using the 

configuration-specific 

data files, to set up a 

temporary operating 

system for use 

Primary Dispute

3. Is the Literal and Grammatical Reading of this Claim Language the Correct 

Construction? This is the second claim construction dispute described in this Brief’s 

Introduction, supra at 2-4. 

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Other Disputes

4. Is the Omission of the Word “And” in Claim 33 An Error? Claim 33 recites similar 

language but omits the conjunction “and.” Microsoft explains that as a typographical error. 

Veritas does not address this directly. 

5. Is Microsoft’s Non-Limiting Example Helpful to the Jury? Microsoft’s construction 

includes a non-limiting example from the patent. Veritas objects to all examples. 

3. The Literal And Grammatical Reading 

Of This Claim Language Is The Correct Construction

State of the Art: The POSA knew that the Emergency Boot (Recovery) Disk served at 

least two distinct functions. First, it allowed the crashed computer to boot up by loading 

operating system files from the Emergency Boot (Recovery) Disk into the computer’s memory 

as a temporary operating system. Second, it provided enough configuration data to allow the 

computer to be configured sufficiently to recover data from the backup device. 

For example, the CT-Boot implementation stored a partially configured version of the 

SCO Unix (or SCO Xenix) operating system on the Emergency Boot (Recovery) Disk, with 

enough configuration information to allow the computer to recover its backed up data. (Apx. 

B, pg. 287: CT-BOOT Manual at 3). Depicted below is a summary page from that manual. As 

explained supra at 5-6, the POSA reading the ‘573 Patent application in 1993 immediately 

would see that its “second media” recovery diskette served the exact same two functions, and 

would read the claims in that light. 

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CTAR BOOT/FILESYSTEM RECOVERY MANUAL (April 4, 1990) (Apx. B, pg. 284, 287) 

(brackets added) 

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Claims: The claim language recites the two traditional functions of the Emergency 

Boot (Recovery) Disk: boot and configure. Claims 1, 18 and 30 separate these two functions 

with the conjunction “and.” The plain meaning of “and” in the phrase “initializing ... and

using” is that there are two separate actions (“initializing” and “using”). 

The Claims’ Boot Clause: Claim 1 recites “initializing the data processing system 

from the second media to provide a temporary operating system.” This participle clause is 

complete and self-contained. It recites an action (“initializing ... from the second media”), the 

object of that action (“the data processing system”), and the result of that action on that object 

(“to provide a temporary operating system”). 

The recited action is stated broadly: “initializing” means starting or booting (‘573 Pat. 

at 4:41) and “from the second media” means that the data processing system loads operating 

system files from that second media into memory to boot up. 

The action’s result is also stated broadly: booting the data processing system from the 

second media provides an operating system that is “temporary” (as the method later loads 

another operating system). The claim uses (here and elsewhere) the broad term “provides.” It 

does not say “configures,” “installs” or “sets up for use” the temporary operating system. 

The Claims’ Configure Clause: In the second, separate, participle clause, the claim 

recites “using [the configuration-specific data files] to configure the data processing system.” 

This clause is complete and self-contained. It has an action (using) that is performed on an 

object (the configuration-specific data files) to cause a result (to configure the data processing 

system). 

The action of “using [the configuration-specific data files]” is stated broadly. It is not

restricted to any particular configuration-specific data files. For example, it does not require 

these files to include device driver files (cf. Claim 9) or operating system configuration files 

(cf. Claim 8). Nor does it require any particular way of using these files to tailor (configure) 

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the data processing system. Nor does it require that the files be used during booting of the 

system, or during any other action. 

The action’s result (to configure the data processing system) also is stated broadly. It is 

not restricted to any particular manner in which the data processing system is configured. Nor 

does it specify that any particular part of the data processing system must be configured. For 

example, it does not require (or prohibit) that the temporary operating system is configured by 

the configuration-specific data files. 

Relationship of These Two Claim Clauses: Nothing in the grammatical structure of 

this claim language requires that these two separate participle clauses be merged in any way. 

No rule of English grammar suggests, for instance, that the result recited in the first clause 

should be moved to the second clause (as urged by Veritas). 

Nor does anything in the substantive content of this claim language require that these 

two separate participle clauses be merged in any way. As noted, each clause makes perfect 

sense on its own. Each is self-contained, reciting a (broadly worded) action performed on an 

object to achieve a (broadly worded) result. Nothing in these actions or results suggests that 

the result recited in the first clause should be moved to the second clause (as urged by Veritas). 

Specification: Veritas’ proposed construction tries to restrict the broad claim language 

by requiring that the configuration-specific files be used to “set up a temporary operating 

system for use.” Its Brief would add still further limitations not expressed in its constructions, 

such as requiring that the configuring occur during the initializing, that the initializing and 

configuring be “integrated,” and that the operating system must be “dynamically 

configurable.” But, these artificial limitations are not only foreign to the claims, they are 

foreign to the alleged “invention” of the patent. None of them is an “essential feature” of the 

patent specification as urged by Veritas. 

The specification supports Microsoft’s plain-meaning construction of the claim 

language in at least the following five ways. 

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First, like the claims, the specification describes the boot and configure functions of the 

boot and recovery disk separately. For example, the first sentence below maps to the first 

claim clause in question (boot) and the second sentence maps to the second (configure): 

To recover the fully configured operating system onto the hard disk 16, the PC 

system is started, or booted, from the bootable recovery diskette 52. The 

system configuration files 20 and device drivers 22 stored on the recovery 

diskette 52 are used to configure the system and provide the necessary device 

drivers to activate the PC devices, especially the backup tape drive 26. (‘573 

Pat. at 4:40-46). 

Second, nothing in the specification requires the configuration-specific data files to 

configure the temporary operating system (as distinct from configuring vis-à-vis other 

hardware and/or software on the data processing system). 

Third, nothing in the specification requires the configuration-specific data files to play 

a role in the first, “boot” function. On the contrary, the patent describes operating system 

installation files, not the configuration-specific data files, as being used to boot the temporary 

operating system: 

First, the PC is booted (402) with the latest version of the OS/2 operating 

system to be restored on the system. This can be accomplished, for instance, 

by booting the system from the appropriate OS/2 installation diskette. (Id. at 

7:8-12; see also id. at 4:32-34). 

Fourth, nothing in the patent limits the “operating system” to being a “dynamically 

configurable” operating system, as suggested by Veritas.3 On the contrary, the patent says that 

its technique works with a variety of operating systems (and names Unix as well as Microsoft’s 

MS-DOS and Windows 3.x operating systems, OS/2 “or another operating system.”) (‘573 

Pat. at 3:46-50). 

 

3

 If Veritas truly thought that the patent and its claims limited “operating system” to a 

“dynamically configurable” operating system, it was up to Veritas to seek that construction of 

the claim term “operating system.” But, Veritas did not do that. Therefore, the Court should 

presume that the claim term “operating system” means any operating system. 

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Fifth, nothing in the patent requires a particular manner of storing or using the device 

driver files. As the patent applicant Gonsalves testified in deposition, whether the driver is or 

is not part of the operating system on the recovery diskette is “irrelevant to successfully 

achieving the [‘573] patent.” (Apx. B, pgs. 196-97: Gonsalves TR at 166:15-167:14). 

Veritas cites this language from the specification: “initializing the data processing 

system from the second media to provide a temporary operating system using the 

configuration-specific data files.” (Ver. Opening Br. at 15:9-11). This language does not 

compel Veritas’ attempted re-write of the claim language, for several reasons. First, it states 

that the temporary operating system is provided by initializing (booting) the data processing 

system (not by the configuration-specific data files), which supports Microsoft’s reading of the 

claims. Second, it does not restrict the operating system to a dynamically configurable 

operating systems, as urged by Veritas. Third, while unclear on this point, it suggests that the 

temporary operating system uses the configuration-specific data files (in some unspecified 

manner), which is not contrary to Microsoft’s position. Finally, and most importantly, it is not

the final wording used in the issued claims. As described below, the claims originally had 

somewhat similar language, but were later amended to add the word “and” between the two 

clauses. 

In sum, the specification supports Microsoft’s literal reading of the claim language, not 

Veritas’ attempted re-write of that claim language. 

Prosecution History: The prosecution history also supports Microsoft’s construction, in 

at least four ways. 

First, the Applicants added the word “and” by amendment to separate these two 

clauses. (Apx. B, pgs. 27-28: Amendment [10/28/94] at 2-3). As the word was deliberately 

inserted into the claim, it cannot now be ignored. Moreover, in quoting to the Examiner this 

claim language in each independent claim, Applicants inserted the “and” separating the two 

clauses, even though it is missing from issued Claim 33. (Id. at 34-35: Amendment [10/28/94] 

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at 9-10). This concretely confirms the Applicants’ contemporaneous understanding and 

position that these were two separate clauses. 

Second, Applicants presented a new application claim 33 (later cancelled) in which 

they again recognized that boot and configure functions may be separate: 

Independent claim 33 recites a diskette that is insertable into a workstation 

and that boots, activates, configures and recovers the fully configured 

operating system of that workstation from a backup system, e.g., a tape drive. 

(Apx. B, pg. 35: Amendment [10/28/9] at 10). 

Specifically, independent claim 33 recites a recovery diskette that is 

insertable into a workstation and includes (i) means for booting the 

workstation under a temporary operating system and (ii) device driver means 

to activate the data backup system. The diskette further includes (iii) 

configuration means for configuring the workstation and (iv) recovery means 

for loading files from the backup system to the workstation. (Apx. B, pgs. 

36-37: Amendment [10/28/94] at 11-12).

These Remarks by the Applicants confirm that the recovery disk has some files used in 

booting the data processing system (which puts a temporary operating system into memory), 

and has other files used to configure the workstation, and that “boots” and “configures” may be 

separate actions. 

Third, in distinguishing prior art, Applicants described the role of the configurationspecific data files as supporting later transfer of data from the backup media—which is 

Microsoft’s position—not to assist booting the computer—as Veritas urges. They confirmed 

this both in describing a recovery scenario: 

In such an event [system disk corruption], a “temporary operating system” is 

installed from a recovery diskette, i.e., the “second media,” together with a 

number of files, i.e., the “configuration specific data files,” necessary to 

support transfer of data between the storage device and the back-up system or 

“first media,” e.g., a QIC or DAT tape cartridge located in a backup device 

such as a tape drive. (Apx. B, pg. 33: Amendment [10/28/94] at 8). 

and also in describing a “target configuration” scenario: 

A “temporary operating system” is installed onto each computer system from 

a “second media,” together with a number of files, i.e., the “configurationCase 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 32 of 60
 

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specific data files,” necessary to support transfer of data between each 

computer system and the “first media” of the target configuration. (Id.) 

Veritas ignores all of the above prosecution history support for Microsoft’s position. 

Instead, it seeks support in a later passage in the same Amendment: 

In accord with the invention, therefore, the temporary operating system is 

booted via the second media, e.g., a floppy disk, and the remaining operating 

system folders are restored from the first media, e.g., the backup tape, by the 

data processing system, e.g., the computer workstation. This solves the 

problem of how to boot a system that has no operating system or which has a 

corrupted operating system. Further, the temporary operating system is 

configured by the data processing system using the configuration specific 

data of the second media; and the fully configured operating system is loaded 

by the data processing system using the temporary operating system. (Apx. 

B, pg. 35: Amendment [10/28/94] at 10).

In this passage, Applicants again discuss booting (with the temporary operating system) 

separately from configuring. They also mention the data processing system configuring the 

temporary operating system, but they do not tie that to any particular claim, and in fact no 

claim mentions either the data processing system doing configuring or the temporary operating 

system being configured. Thus, this one passage does not clearly rebut the several claim 

amendments and Remarks supporting Microsoft’s literal reading of the claim language. 

Fourth, the Examiner read the term “initializing” in the independent claims broadly, 

equating it with “booting.” (Apx. B, pg. 24: Office Action [06/29/94] at 3). 

Extrinsic Evidence: Nothing in the plain meaning of any of the words in these two 

clauses supports any of Veritas’ re-writing of the claim language. 

With fanfare, Veritas quotes an incomplete part of a statement made by a Microsoft 

attorney, more than eight years after the ‘573 Patent issued, to distinguish McGill as prior art. 

The statement is immaterial to the claim construction issue before the Court. It did not purport 

to construe any claim language, or even purport to identify features in the specification that 

were “essential” or “critical” to the alleged invention in the ‘573 Patent. Moreover, Veritas 

cutoff the rest of the sentence. The omitted portion (“for loading a recovery application 

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program from the backup device that, in turn, loads the operating system, configuration files, 

and device drivers from the backup device”) (Veritas Apx. C at 347) shows that the attorney’s 

description of the restore operations differs from Veritas’ description. 

Veritas’ Construction: Throughout its Brief and in its proposed construction, Veritas 

scrambles the plain and grammatically clear structure and meaning of these two participle 

clauses. For example, Veritas ignores the conjunction “and” that was added by amendment to 

explicitly separate these two clauses, moves the recited result of the first clause (namely 

“provide a temporary operating system”) to the second clause, and otherwise re-writes the 

claim to require that the temporary operating system be “set up” (per Veritas’ re-write) not 

only by initializing the data processing system but also by using the configuration-specific data 

files. 

Conclusion: Microsoft’s construction tracks the literal wording and grammatical 

structure of the claim, while Veritas scrambles the claims’ two separate clauses together, 

changing the meaning of each. Microsoft’s construction also tracks the description in the 

specification and prosecution history, while Veritas would import limitations that are foreign to 

the claims, the specification, and the prosecution history. Finally, Microsoft’s construction 

honors the POSA’s “state of the art” lens, while Veritas instead takes an “avoid the art” 

sledgehammer to the claims.4 

4. The Omission Of The Word “And” In Claim 33 Was An Error 

Claim 33 recites “initializing the data processing system from a second media, having 

configuration-specific data files, to provide a temporary operating system using the 

configuration-specific data files to configure the data processing system.” While unclear as 

written, it appears to have two separate participle clauses; in the first, the temporary operating 

system is provided by booting the data processing system from the second media, and in the 

 

4

 Not even Veritas’ re-writing of the claims actually avoids the prior art. 

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second, the data processing system is configured using the configuration-specific data files—as 

in the other claims. But, the conjunction “and” is missing between the two clauses. That was 

an error in the patent.5 As noted above, Applicants included the missing “and” in this claim 33 

[which at the time was application claim 34] when they quoted it to the Examiner: 

In particular, note that Applicants claims 1, 18, 30 and 34 include the steps of 

1) “initializing the ... data processing system from the second media ... to 

provide a temporary operating system and using the configuration-specific 

data files to configure the data processing system” and (2) “loading the fully 

configured operating system files from the fist media ... using the temporary 

operating system” and such steps (1) and (2) are absent from Ottman et al. 

(Apx. B, pgs. 34-35: Amendment [10/28/94] at 9-10). 

The specification does not always use the word “and” to separate the two clauses, but 

the word was added to the claims to clarify this point. (See Apx. B., pgs. 30-31: Amendment 

[10/28/94] at 5-6 (“Other minor amendments were made in claim 1 for clarity and which either 

rearranged words or deleted unnecessary words.”) The Court should not now, more than 

twelve years later, undo the Applicants’ editing of the claim language on which the Examiner 

and public were entitled to rely. 

5. Microsoft’s Non-Limiting Example Is Helpful To The Jury

Microsoft’s non-limiting example for the configuring action (loading a tape backup 

device driver ...) is taken from the patent. (See, e.g., ‘573 Pat. at 5:42-46). It is what the 

patent identifies as the “most important” driver on the recovery diskette. This non-limiting 

example will help the jury understand this claim language. 

 

5 The patent has several typographical errors, such as “fries” for “files” in Claim 30, and 

“the first operating system” in Claim 31. 

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Claim 

Language

Microsoft’s Proposed Claim Construction Veritas’ Proposed 

Claim Construction

configurationspecific data 

files 

(claims 1, 5, 

7-9, 18, 22-

24, 30, 33) 

Files collectively providing necessary information to 

configure the specific data processing system as 

required for loading from a media an operating 

system configured for that system. Examples of such 

files are a tape backup device driver, a restore 

program for a specific device, and/or a text file 

specifying configuration parameters. 

Data files that are 

used to configure in a 

distinctive manner 

Primary Dispute

6. How Much “Configuring” Needs to Be Enabled by the Configuration-Specific Data 

Files? Each party defines this term primarily by the function it serves. Microsoft’s 

construction is more specific than Veritas’ construction. 

Other Disputes

7. Are Microsoft’s Non-Limiting Examples Correct and Helpful to the Jury? 

Microsoft proposes three non-limiting examples. Veritas objects to all examples, and disputes 

the validity of one of Microsoft’s examples. 

6. The Configuration Files Need To Provide 

Only Enough Information To Allow The 

Computer To Recover Its Data From The Backup Device 

State of the Art: As noted, the standard Emergency Boot (Recovery) Disk stored 

whatever information would be needed by the post-crash computer to recover data from the 

backup device. (See, e.g., Apx. B, pg. 88: Lary Decl. at 9:14-15; Apx. B, pg. 287: CT-BOOT 

Manual at 3). 

Claims: The claims imply that enough configuration information is needed to allow the 

steps of the method to be performed. 

Specification: The function served by the configuration data stored on the patent’s 

Emergency Boot (Recovery) Disk was to configure the computer, post crash, just enough to 

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restore data from the back-up device. For example, after listing the types of files that might be 

saved to the recovery disk, it notes: “The most important device driver is the backup device 

driver, e.g., backup tape drive device driver, which must be available to activate the backup 

tape drive during the recovery or loading operation.” (‘573 Pat. at 5:46-50). 

Prosecution History: During prosecution, in distinguishing prior art, the Applicants 

noted this function served by the claimed “configuration-specific data files”: 

In such an event, a “temporary operating system” is installed from a recovery 

diskette, i.e., the ‘second media,’ together with a number of files, i.e., the 

“configuration specific data files,” necessary to support transfer of data between 

the storage device and the back-up system or “first media” ... (Apx. B, pg. 33: 

Amendment [10/28/94] at 8). 

Veritas cites a similar passage from the prosecution history to supposedly support its 

construction, but, in fact, that passage repeats Microsoft’s point: “necessary to support transfer 

of data between each computer system and the ‘first media.’” (See Ver. Opening Br. at 21:20-

25). 

Extrinsic Evidence: Microsoft agrees with Dr. Smith’s testimony that Claim 1 requires 

only enough configuration-specific data to be stored on the second media “to be sufficient 

information to perform the subsequent steps” (Apx. B, pgs. 229-31: Smith TR at 27:1-6, 

27:22-28:1, 28:21-29:5) and, in particular, (only) “whatever drivers and configuration 

information will be needed to access the backup media.” (Id., pgs. 250-51: Smith TR at 

116:24-117:14). 

Veritas’ Construction: Veritas’ construction is incomplete and unclear. “Data files that 

are used to configure in a distinctive manner” does not explain what is to be configured or how 

“distinctive” is measured. Thousands of computers may be given the exact same 

configuration. Will the jury conclude that each is “distinctive”? Does configuring in a 

“distinctive manner” require more configuring than is required by Microsoft’s construction? 

Less? Dr. Smith seems to think that “distinctive” effectively means nothing and that there is 

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no such thing as a configuration that is not distinctive. (Id., pgs. 258-59: Smith TR at 138:25-

139:16). The odds of the jury being confused by “distinctive manner” are too high. 

Veritas concedes that “configuration-specific data files” can “be used to support the 

transfer of data between the computer system and the backup media,” but argues that the “as 

required for loading” language is too limiting. (Ver. Opening Br. at 7-11). But Veritas’ 

criticism reads out essential features of the patent. Both the patent specification and 

prosecution history plainly show that the most important aspect of the “configuration-specific 

data files” is that they “provide the necessary information to configure the specific data 

processing system as required for loading from a media an operating system configured for that 

system.” 

Conclusion: In this patent, the configuration data put on the second media must be 

sufficient to allow the computer to later retrieve data from the first media. Anything less, and 

the alleged “invention” simply won’t work. A POSA would understand this when reading the 

claims, and the Court’s construction should reflect this. 

7. Microsoft’s Non-Limiting Examples 

Are Correct And Will Help The Jury

“Tape Backup Device Driver” Example: The patent expressly refers to a tape backup 

device driver as a configuration-specific data file. (See, e.g., Claim 9). Dr. Smith agrees with 

Microsoft that a tape backup device driver is an example of a configuration-specific data file. 

(See Apx. B, pg. 260: Smith TR at 140:8-13). 

“Text File Specifying Configuration Parameters” Example: This example is based on 

the patent’s reference to the file “Config.sys.” (‘573 Pat. at 5:50-52). The file “Config.sys” is 

a text file specifying configuration parameters. (See Apx. B, pg. 261: Smith TR at 141:3-20). 

Examples of these parameters are described in an exhibit submitted by Dr. Smith (Exhibit 5), 

for OS/2. The parties agree that it is a configuration-specific data file. But, rather than refer in 

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the claim construction to “config.sys”—which is used only with particular operating systems—

Microsoft refers to it more generically as a “text file specifying configuration parameters.” 

“Restore Program for a Specific Device” Example: In the patent, a restore program is 

stored on the boot and recovery disk, and is needed for the recovery procedure to work. It is 

not, however, expressly referred to as a “configuration-specific data file.” Nevertheless, the 

patent implies that adding an application program to a data processing system (as depicted in 

Figure 2) “configures” that data processing system (e.g., a PC): “Prior to performing a 

recovery or loading operation with this invention, a PC is fully loaded and configured (100) as 

desired with the operating system, device drivers, configuration files, and application software 

including a tape backup program.” (‘573 Pat. at 5:19-24). This usage is consistent with the 

state of the art. (See Apx. B, pg. 328: Central Point Manual at 280 (identifying several 

“configuration files” that are part of the Central Point backup and restore program).) 

B. Dependent Claims 7-9, 22-24 Recite Three 

Examples Of Configuration-Specific Data Files

Claim 

Language

Microsoft’s Proposed Claim Construction Veritas’ Proposed 

Claim Construction

system 

configuration 

files 

(claims 7-8, 

22-23) 

Files providing information about the set up of 

hardware and/or software in a specific data 

processing system. Examples of such files are a 

restore program for a specific device, a file 

specifying the location of device drivers, and/or a file 

specifying the location, number and/or size of 

partitions on the hard disk. 

Data files that are 

used to configure the 

data processing 

system in a distinctive 

manner 

operating 

system 

configuration 

files 

(claims 8, 23) 

Files providing information about the set up of a 

specific data processing system’s operating system. 

Examples of such files are a file specifying the 

location of device drivers and/or a file specifying the 

location, number and/or size of partitions on the hard 

disk. 

Data files that are 

used to configure an 

operating system in a 

distinctive manner 

device driver 

files 

Files that can be used by a data processing system to 

activate one or more devices attached to the data 

Data files that are 

used to configure the 

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Claim 

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Microsoft’s Proposed Claim Construction Veritas’ Proposed 

Claim Construction

(claims 9, 24) processing system, such as a tape backup device. data processing 

system in a distinctive 

manner by activating 

devices 

1. Microsoft’s Non-Limiting Examples for 

“System Configuration Files” And “Operating System 

Configuration Files” Are Correct and Helpful to the Jury

 The parties’ constructions here are close. The biggest difference is that Microsoft tries 

to help the future jury by providing non-limiting examples, whereas Veritas’ constructions 

leave too much ambiguity with its “distinctive manner” terminology. 

Veritas argues that Microsoft’s proposed example of “a file specifying the location, 

number and/or size of partitions on the hard disk,” is not in the patent. (Ver. Opening Br. at 

26:2-6). But, the POSA knew that this was common information to store on an Emergency 

Boot (Recovery) Disk. (Apx. B, pgs. 278-82: Baxter). The ‘573 Patent, moreover, describes 

partitioning the hard drive into multiple partitions and formatting the partitions. (‘573 Pat. at 

7:15-52; Claims 15-17, 27-29). That’s configuring the data processing system. 

2. The Court Should Adopt Microsoft’s 

Construction Of “Device Driver Files”

Microsoft’s construction tracks the patent closely. For example: “The system 

configuration files 20 and device drivers 22 stored on the recovery diskette 52 are used to 

configure the system and provide the necessary device drivers to activate the PC devices, 

especially the backup tape drive 26.” (‘573 Pat. at 4:42-46). Veritas’ construction suggests 

that the only way that the device drivers configure the system is by activating devices, but that 

is wrong. The mere act of loading the correct hardware and software on the system tailors it, 

whether that hardware and software is used or not. (See, e.g., ‘573 Pat. at 5:19-24). And, 

Veritas’ “distinctive manner” terminology would only cloud the meaning of the claims. 

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C. METHOD: Prepare (Create Backup) 

And Recover (Restore From Backup) 

These two steps correspond closely. To prepare for a system crash, one backs up data 

to the first media. To recover from a crash, one recovers that data from the first media. 

Together, they raise the following claim construction disputes (the term “fully configured 

operating system” is discussed in Section VI infra): 

Claim 

Language

Microsoft’s Proposed Claim Construction Veritas’ Proposed 

Claim Construction

providing a 

first media 

comprising 

operating 

system files 

for installing 

the fully 

configured 

operating 

system onto 

the storage 

device 

(claim 1) 

Providing a first media storing operating system files 

such that they can be loaded from the first media to 

the storage device. As a result of this “providing” 

step and the subsequent “loading” step, the “fully 

configured operating system” becomes present on the 

storage device. 

This claim limitation excludes restoring a bit mapped 

image of the operating system. 

As noted elsewhere, the phrase “fully configured 

operating system” is indefinite in the ‘573 patent 

claims. 

No further 

construction is 

necessary, except for 

terms already 

construed 

loading the 

fully 

configured 

operating 

system files 

from [the/a] 

first media 

(claims 1, 13, 

18, 30, 33) 

Loading operating system files from the first media to 

the storage device, such that the “fully configured 

operating system” becomes present on the storage 

device. 

This claim limitation excludes restoring or loading a 

bit mapped image of the operating system. 

No further 

construction is 

necessary, except for 

terms already 

construed 

loading . . . to 

install the 

fully 

configured 

operating 

Loading operating system files from the first media to 

the storage device, such that the “fully configured 

operating system” becomes present on the storage 

device. 

No further 

construction is 

necessary, except for 

terms already 

construed 

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system 

(claims 18, 

30) 

This claim limitation excludes restoring or loading a 

bit mapped image of the operating system. 

loading . . . 

for installing 

the fully 

configured 

operating 

system 

(claims 33) 

Loading operating system files from the first media to 

the storage device, such that the “fully configured 

operating system” becomes present on the storage 

device. 

This claim limitation excludes restoring or loading a 

bit mapped image of the operating system. 

No further 

construction is 

necessary, except for 

terms already 

construed 

The Above “Providing” and “Loading” Steps

Primary Dispute

1. Must The First Media (Backup Device) Store the Entire, “Fully Configured”

Operating System? These steps raise the question of what must be stored on the first media. 

Must it store the “fully configured operating system?” Or, alternatively, may it store only 

enough of the operating system to provide a “fully configured operating system” on the storage 

device when combined with whatever operating system files are loaded from the Emergency 

Boot (Recovery) Disk? Veritas asks the Court not to construe this claim language. 

Other Disputes

2. Do These Claim Steps Preclude Restoring a Bit Mapped Image of the Operating 

System? Microsoft asks the Court to answer this question in the affirmative. Veritas asks the 

Court not to construe this claim language. 

1. The First Media (Backup Device) Need 

Not Store The Entire “Fully Configured” Operating System

Microsoft’s constructions of these claim phrases provides the same answer that 

Applicant Gonsalves provides, which is consistent with the state of the art at the time. 

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Claims: The claim language is unclear on this point. The first “providing step” recites 

that the first media comprises “operating system files,” not “fully configured operating system 

files.” But then it adds the functional language “for installing the fully configured operating 

system onto the storage device.” Microsoft’s construction attempts to reconcile this seemingly 

conflicting terminology. 

Specification: The patent discloses that all or some of the files on the PC may be 

backed up. (‘573 Pat. at 5:32). It does not, however, explain what it means by “fully 

configured operating system.” 

Extrinsic Evidence: Applicant Gonsalves testified in deposition that backing up “all of 

the files” in the ‘573 Patent did not necessarily mean backing up all of the operating system 

files. (See Apx. B, pgs. 203-06: Gonsalves TR at 174:23-177:20). 

Veritas Construction: Veritas asks the Court not to construe either of these phrases. 

Conclusion: While the restore operation needs to install the “fully” (whatever that 

means) configured operating system onto the storage device, the claims do not seem to require 

that “fully” configured operating system to be stored on the backup media. 

2. These Claim Steps Preclude Restoring A 

Bit Mapped Image Of The Operating System 

This portion of Microsoft’s construction is based on the following language in the 

specification, in which the Applicants distinguished their “invention” from “image restoration” 

of an operating system backed up on a bit-mapped basis: 

Data backup systems are known which restore high capacity hard disks from a 

digital image of that hard disk, i.e., on a media bit-mapped basis. This type of 

image restoration may be able to restore an operating system to fixed storage 

media since the operating system is simply some portion of the total image 

being restored. However, any reformat or repartition of the hard disk, which is 

typically required after a head crash or other problem affecting the integrity of 

the media, can change the underlying logical structure of the hard disk which 

may make it impossible to restore a digital image to the hard disk without losing 

data. 

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SUMMARY OF THE INVENTION 

The present invention provides a data backup procedure and apparatus for 

backing up and restoring, or otherwise loading a fully configured operating 

system to the high capacity storage device (e.g., hard disk) of a computer 

workstation, such as a personal computer. .... The operating system can be 

restored regardless of whether the high capacity storage device has been 

reformatted, repartitioned, or otherwise replaced with an equivalent device. 

(‘573 Pat. at 1:55-2:17). 

Nothing in the patent purports to solve the above-described purported problem with 

image restoration. Instead, it seeks to match some of the benefits of image restoration, using 

non-image based files. Thus, this language disclaims restoring or loading a bit mapped image 

of the operating system. 

D. METHOD: Recover (Re-boot And Use The Restored System)

This stage introduces two claim construction disputes: 

Claim Language Microsoft’s Proposed Claim Construction Veritas’ Proposed 

Claim Construction

Install 

(claims 1, 18, 30, 

33) 

The claims use this word in the following two 

different ways, at different locations in the 

claims: 

(1) Place digital information (e.g., software) 

into a computer’s storage device such that it 

is ready to be loaded into the computer 

memory and used by the computer. (‘573 

Pat. at 8:66, 10:6, 10:57, 12:2). 

(2) Load digital information (e.g., software) 

into a computer’s memory for use by the 

computer. (‘573 Pat. at 9:11, 12:5). 

Set up for use 

reinitializing . . . to 

install the fully 

configured 

operating system 

(claims 1, 33) 

reinitializing . . . to 

provide the fully 

Restarting (re-booting) the operation of the data 

processing system to install the operating system 

loaded onto the storage device into memory on 

the data processing system. 

Restarting the 

operation of the data 

processing system 

from the storage 

device to set up a 

fully configured 

operating system for 

use 

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Claim Construction

configured 

operating system 

(claim 18) 

“Install”

Veritas’ proposed construction “set up for use” is too cryptic to be helpful. Microsoft’s 

proposed constructions track the literal claim language, and reflect that “install” has a different 

connotation when used in connection with a storage device such as a hard disk versus memory. 

Dr. Smith concedes that Microsoft’s constructions are “entirely consistent” with Veritas’ 

construction. (Apx. B, pg. 137: Smith Report at 38, ¶70). 

“Reinitializing ...”

The parties’ constructions of this claim language are close, but Microsoft is more 

specific. Veritas’ reference to “a” “fully configured operating system” is unclear on whether 

this is the same “fully configured operating system” referenced earlier in the claim. Also, “set 

up for use” is unclear. 

E. The Claim As A Whole

The main point of claim construction is to explain the claimed invention to the jury. 

While that explanation will define individual claim terms, it is not limited to creating a mini 

dictionary. Frequently, a patent claim construction explains the meaning of the claim as a 

whole, such as defining the order of its different steps. Power Mosfet Technologies, LLC v. 

Siemens AG, 378 F.3d 1396, 1404, 1410, 1412 (Fed. Cir. 2004) (“The terms in the Special 

Master Report were construed in isolation, and at no other time did the district court or the 

Special Master construe the claims as a whole.” This “limited construction left substantial 

ambiguity as to the meaning of the claims as a whole.” “A construction of the claims as a 

whole would have been beneficial to the litigants”) 

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1. Claims 1, 18, 33 Are Directed To 

Recovery Of An Operating System 

That Becomes Corrupted Or Inoperative; 

They Do Not Cover The Factory Loading Scenario

Applicants made this point repeatedly in the prosecution history. (Apx. B, pgs. 31-36: 

Amendment [10/28/94] at 6-11). Applicants told the Patent Office that these claims were 

directed to crash recovery, and that another set of claims was directed to factory loading. Their 

statements should be mirrored in the Court’s claim construction. Otherwise, the jury will 

decide the case based on a claim scope that the Patent Office never granted. 

2. The Claims Require That The Loading Of The Fully 

Configured Operating System Be Accomplished By The 

Data Processing System Itself, Rather Than By Some Other 

Computer From Which That Operating System Is Transferred

This is another requirement specified in the prosecution history. Applicants 

distinguished the Ottman reference on this ground: 

Instead, the loading of the operating system into the transferee computer of 

Ottman et al. is accomplished by the transferor computer and not by the 

transferee computer. See col. 4, lines 27-31. Applicants specifically claim 

‘loading the fully configured operating system files from the first media ... 

using the temporary operating system,’ claims 1, 18, 30 and 34. (Id., pg. 35: 

Amendment [10/28/94] at 10). 

Again, the jury needs to be told about this to fully understand the claimed invention. Veritas 

offers no different reading of the prosecution history. 

3. Each Step May Be Performed Manually

The prosecution history makes this point clearly. In an initial Office Action, the Patent 

Office rejected all claims as indefinite, at least in part because the application was “unclear” as 

to whether the claimed steps were to “be performed by a data processing mean, some specific 

means, or by a human user?” (Apx. B, pg. 23: Office Action [06/29/94] at 2). In response, the 

applicants argued around that rejection by telling the Patent Office that the claims were broad 

enough to cover any of these possibilities: “Applicants suggest that such additions are 

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narrowing limitations which unnecessarily limit the full scope of the invention entitled to the 

Applicants.” (Apx. B, pg. 30: Amendment [10/28/94] at 5). (Accord Smith TR at 146:16-25, 

147:2-21). 

Again, Veritas offers no different reading of the prosecution history. 

4. The Steps May Be Performed Far Apart In Time

Nothing in the claims’ language requires their steps to be performed near in time to 

each other. (Accord Apx. B, pg. 227: Smith TR at 12:13-19). 

F. Claim Terms Referring To Physical Devices

The claimed methods move certain information to and from three physical devices. 

Claim 

Language

Microsoft’s Proposed Claim Construction Veritas’ Proposed 

Claim Construction

storage 

device 

(claims 1-3, 

5, 10, 13-16, 

33) 

A data processing system’s device for storing software 

and other digital data, such as a magnetic media hard 

disk drive, flash memory, or optical laser disk. The 

storage device may have one or more partitions. The 

storage device is physically distinct from both the first 

media and the second media. 

Mechanism for 

performing the 

functions of 

accepting, retaining, 

and emitting data 

first media 

(claims 1-3, 

13, 18-19, 

30-33) 

A data storage material, such as a magnetic tape, 

optical disk, or secondary hard disk. The first media is 

physically distinct from both the storage device and 

the second media. The first media may consist of 

multiple physical units (such as multiple tapes or 

disks). 

Media: any readable 

or writable data 

storage area 

second 

media 

(claims 1, 5, 

18, 30, 33) 

A removable data storage material (such as a floppy 

diskette, optical disk or non-volatile solid state 

memory module) from which the data processing 

system may be started (booted). The second media is 

physically distinct from both the storage device and 

the first media. The second media may consist of 

multiple physical units (such as multiple floppy 

diskettes). 

Media: any readable 

or writable data 

storage area 

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Primary Dispute

1. Are the Storage Device, First Media (Backup), and Second Media (Emergency Boot 

(Recovery) Disk) The Same Single Physical Device? Microsoft’s constructions clarify that 

these three devices are physically distinct from each other. Veritas’ constructions apparently 

allow them to be the exact same, single device. 

Other Disputes

2. May the First Media (Backup) and Second Media (Emergency Boot (Recovery) 

Disk) Each Comprise Multiple Physical Units? Microsoft’s construction clarifies that “media” 

may be more than one unit. Veritas’ construction is unclear on this point. 

3. Is the Second Media (Emergency Boot (Recovery) Disk) Bootable? The second 

media in the patent must be bootable. Microsoft includes this important characteristic in its 

construction of “second media.” Veritas does not. 

4. Is the Second Media (Emergency Boot (Recovery) Disk) Removable from the Data 

Processing System? The second media in the patent must be removable from the data 

processing system. Microsoft includes this characteristic in its construction of “second media.” 

Veritas does not. 

5. What is the Function of the Storage Device? The parties describe the function of the 

“storage device” in slightly different terms. 

6. Will Giving Non-Limiting Examples Help the Jury? Microsoft gives non-limiting

examples to explain the claim language to the jury. Veritas resists all illustrative examples. 

1. The Storage Device, First Media (Backup), And 

Second Media (Emergency Boot (Recovery) Disk) 

Are Physically Distinct, And Not The Same Physical Thing 

State of the Art: The standard Emergency Boot (Recovery) Disk recovery procedure 

required three separate storage devices: (1) a removable back-up storage device, often tape; 

(2) the removable Emergency Boot (Recovery) Disk; and (3) the computer’s hard drive. 

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Veritas has pointed to no Emergency Boot (Recovery) Disk technique from 1993 or earlier that 

combined any of these three devices into a single storage device. Thus, the POSA reading the 

‘573 Patent application would have expected three physically separate storage devices unless 

the patent clearly stated otherwise. 

Claim Language: The claims use the terms “first media,” “second media,” and “storage 

device” to refer to the three separate devices used in the standard Emergency Boot (Recovery) 

Disk recovery procedure. Nothing in the claims suggests that any of these three are or could be 

the same unit. 

Specification: The patent tracks the standard Emergency Boot (Recovery) Disk 

procedure closely. It describes and depicts these devices as being physically distinct, as shown 

in Fig. 2. This separation is not merely preferred. All embodiments in the patent physically 

separate these three storage media devices. No embodiment combines any two of the three 

into a single unit. 

Moreover, these three storage media must be different to achieve the functions 

described in the patent. The patent anticipates total failure, theft, or destruction of the hard 

disk. Therefore, the first media and second media must not be part of that hard disk or they 

will be unavailable for recovery purposes. It would make no sense to put either backup data or 

emergency data on the very device you feared would crash. Likewise, the patent assumes an 

inability, post crash, to retrieve data from the first media (e.g., for lack of the correctly 

configured device driver), so by definition the “invention” cannot work if the second media is 

physically part of that inaccessible first media. 

Other Extrinsic Evidence: Mr. Lary, an expert in the design and implementation of 

complex storage systems (Apx. B, pg. 157: Lary TR at 28:14-23), testified to the significance 

of keeping the different media “physically distinct.” (Id., pgs. 159-65: Lary TR at 59:22-

65:13). In deposition, Dr. Smith conceded that the possibility of merging two or more of these 

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three devices into a single device was not “specifically enumerated” in the ‘573 Patent. (Apx. 

B, pgs. 256-57: Smith TR at 135:22-136:20). 

Veritas’ Constructions: Veritas says that the first or second media may be only a 

portion of the total storage available on a particular physical object. (Ver. Opening Br. at 

41:17-19). But, Veritas cites nothing in the patent as support. In fact, when the patent refers to 

logically distinct portions of a storage device or media (see, e.g., ‘573 Pat. at 7:13-43; see also

Ver. Opening Br. at 42:3-17), it refers to “partitions,” not to separate devices or separate 

media. A logical partition of a hard disk does not create two separate hard disks. (See Apx. B, 

pg. 255: Smith TR at 132:16-22 (a single storage device can have multiple partitions)). 

Conclusion: In sum, the state of the art known to the POSA, the functions to be 

performed by the invention, the patent’s written description and drawings, and the claims 

support Microsoft’s construction that these three devices are physically distinct from each 

other. Allowing them to be the exact same, single device, would broaden the claims beyond 

the “invention” disclosed in the patent. 

2. Each of the First Media (Backup) And 

Second Media (Emergency Boot (Recovery) 

Disk) May Comprise Multiple Physical Units 

The patent states explicitly (and depicts in Fig. 2) that the second media may comprise 

multiple disks: “Depending on the type of operating system to be loaded onto the hard disk, 

the recovery diskette can actually be a set of several recovery diskettes, each diskette 

containing a particular sub-set of files.” (‘573 Pat. at 4:53-65; see also Fig. 2). And, it says 

that backup media may be a “media set.” (Id. at 5:32-33). Nothing in the claims, state of the 

art (see, e.g., Apx. B, pgs. 287, 291: CT-BOOT Manual at 3, 7), or prosecution history is to 

the contrary. 

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Under Veritas’ proposed construction, the jury might mistakenly believe that “first 

media” and/or “second media” is limited to a single physical object. The Court should help the 

jury avoid that mistake. 

3. The Second Media Is Bootable 

The claims say that the data processing system is initialized from the second media, 

which requires it to be bootable. In all embodiments, the recovery diskette is bootable. The 

standard Emergency Boot (Recovery) Disk was bootable. Veritas has pointed to no exception. 

A defining characteristic of the second media in the patent is that it is bootable. The 

alleged invention simply won’t work without the Emergency Boot (Recovery) Disk being 

bootable. The jury should be told this in the construction. 

4. The Second Media (Emergency Boot (Recovery) Disk) Is Removable

State of the Art: The standard Emergency Boot (Recovery) Disk was removable from 

the data processing system. (See Apx. B, pgs. 278-328). Veritas has pointed to no exception. 

Thus, the POSA reading the ‘573 Patent application naturally would have assumed that the 

“second media” is also removable, unless clearly described otherwise in the patent. 

Claims: Dependent Claim 11 recites: “wherein the second media comprises a 

removable diskette.” This raises a question under the doctrine of claim differentiation: does 

Claim 11 mean that the “second media” in the independent claims need not be removable? 

The answer is No. Rather, it means only that the independent claims do not limit the “second 

media” to a “removable diskette.” Microsoft’s construction abides by this conclusion and 

includes a removable “memory module” within the scope of the independent claims. 

Specification: All embodiments in the patent have the second media removable. The 

patent repeatedly refers to “inserting” the recovery diskette. (See, e.g., ‘573 Pat. at 6:22-25; 

7:13-15; Fig. 6A). The threats anticipated by this alleged invention include theft of the 

computer or fire destroying the computer. Obviously, these events would incapacitate any 

“second media” permanently attached to the computer. Veritas’ argument that “media” in the 

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abstract can be both removable and non-removable (Ver. Opening Br. at 42:18–43:9), misses 

the point, and fails to rebut that the claimed “second media” must be removable for the claimed 

method to work for its described purposes. 

Veritas’ Construction: Veritas’ incomplete construction ignores this question. 

Conclusion: The ‘573 patent’s “second media,” is removable. The Court’s 

construction should include this characteristic. 

5. The Function Of The Patent’s Storage 

Device Is To Store Software And Other Digital Data

The parties are close on this issue. Each includes in its construction of “storage device” 

the function performed by the device. But the parties’ respective descriptions of that function 

differ slightly. Veritas’ version (accepting, retaining, and emitting data) is not wrong as far as 

it goes, but Microsoft’s (storing software and other digital data) is more specific to the claims 

in question. (See Apx. B, pg. 255: Smith TR at 132:2-14 (in Claim 1, a function of the storage 

device is to store software and other digital data)). Microsoft does not object to merging the 

two versions as follows: “A data processing system’s device for accepting, storing, and 

emitting software and other digital data ...” (and then continuing with the rest of Microsoft’s 

construction). 

6. Microsoft’s Non-Limiting Examples Will Help The Jury

To help explain its alleged invention, the patent gives examples for each of the devices 

in question. Microsoft’s constructions follow suit, using, for the most part, examples recited in 

the patent. Those examples should be helpful to the jury in understanding the claims’ scope. 

Neither Veritas nor its expert Dr. Smith disputes the accuracy of any of Microsoft’s examples. 

(E.g., Apx. B, pgs. 252-54: Smith TR at 129:22-131:2 (Claim 1’s “storage device” could be a 

magnetic media hard disk, or a flash memory device, or an optical disk)). 

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Veritas knows the value of examples in claim constructions. Three of the agreed 

constructions include non-limiting examples. (Apx. A: Agreed Constructions for “loading;” 

“initializing the disk drive;” and “initializing the storage device”). 

Microsoft asks the Court to give the jury all the help it needs to fully understand these 

claims. 

G. Additional Claim Construction Issues Presented by Claims 30 and 31

1. Claim 30 Does Not Require Factory Loading

Claim 30 requires two data processing systems. It does not require more than two and 

it does not require that the process occur in a factory. Although Applicants told the Patent 

Office that Claim 30 encompassed the factory loading scenario (Apx. B, pg. 31: Amendment 

[10/28/94] at 6), they did not say that the claim was limited to loading in a factory. Dr. Smith 

agrees that the claim is not so limited, and agrees that Claim 30 covers a situation in which the 

first data processing system is nothing more than the second data processing system with a new 

hard drive. (Apx. B, pgs. 232-33: Smith TR at 31:23-32:19). Microsoft’s construction 

explains both of these points to the jury. 

2. Limiting To A Predetermined Quantity

Dependent Claim 31 adds the limitation “limiting to a predetermined quantity the 

number of times the first operating system files can be loaded from the first media to the disk 

drive.” The patent sketchily describes a “copy counter” option in two paragraphs in 

connection with Figure 7, which is used as a security device for controlling the quantity of 

systems that can be loaded by using a particular recovery diskette. (‘573 Pat. at 8:19-45). That 

discussion sheds light on the meaning of “limiting to a predetermined quantity,” namely that 

for security reasons, the step of loading of the “first operating system files” (which phrase is 

another error in these claims) from the first media to the disk drive should be disabled after 

being performed a particular number of times. 

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Microsoft’s proposed construction spells out the plain meaning of the claim language, 

read in light of that description: “prohibiting (disabling) loading of the ‘first operating system 

files’ from the first media to the disk drive more often than a particular number of times, which 

number is set prior to performance of any step in the recited method.” 

Veritas says that no construction is necessary. But, the claim term “predetermined” 

naturally raises the question: determined before what? The jury has to answer that question to 

understand the claim, and Microsoft’s construction answers that question in the context of the 

whole claim. The claim term “limiting” also needs to be explained. Microsoft proposes 

“prohibiting (disabling),” because it is clearer than “limiting.” 

VI. “FULLY CONFIGURED OPERATING SYSTEM” AND “DESIRED 

CONFIGURATION” RENDER THE CLAIMS INCURABLY INDEFINITE

Microsoft proposes a plain-meaning construction of the claim’s phrase “configured 

operating system”: “an operating system which is tailored for a particular data processing 

system.” (Apx. A at 6). This follows from the meaning of “configured,” discussed supra at 

12-15.6

The phrase “fully configured operating system,” however, is too indefinite to construe. 

It is not a term of art and the patent does not define it. (See ‘573 Pat. at Abstract, 2:5, 2:15, 

4:40). The word “fully,” of course, divides the universe of configured operating systems into 

two camps: “fully” configured and “not fully” configured. The problem is that the patent does 

not define that dividing line. It gives the POSA no objective guide for distinguishing an 

operating system that is “fully configured” from one that is “not fully configured.” 

A patent claim is considered indefinite, under 35 U.S.C. § 112, ¶ 2, if it fails to 

reasonably apprise those skilled in the art of its scope. IPXL Holdings, L.L.C. v. Amazon.com, 

Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005) (claims indefinite because “it is unclear” when 

 

6

 Although Veritas suggests in its Brief that the operating system must be dynamically 

configurable, it does not, and could not plausibly, suggest such a limitation in its construction 

of “fully configured operating system.” 

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infringement would occur); Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1352, 

1356 (Fed. Cir. 2005) (“aesthetically pleasing” indefinite as patent did not set forth “any 

objective way to determine whether” an interface screen is “aesthetically pleasing”); Union 

Pac. Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001) (claim 

language “comparing” indefinite because it could have different meanings to a person of skill 

in the art). 

Consider a hypothetical where a first computer user (e.g., a computer administrator at 

work or a family member at home) configures a computer to her liking, does a full backup, and 

creates an Emergency Boot (Recovery) Disk. Then, a second user takes over that same 

computer, re-configures it to his liking, does no additional backup, and the system crashes. 

The second user then restores the first user’s backed up, out-of-date operating system 

configuration. Is that restored operating system “fully configured” or “not fully configured?” 

The ‘573 Patent does not say. It forces a POSA to guess at what point an out-of-date operating 

system configuration is “fully configured” versus “not fully configured.” 

The ‘573 Patent Applicant McGill testified that “fully configured operating system” in 

this patent was “very, very subjective”: 

But, you know, the bottom line is “fully configured” to me means it has a 

level of functionality that is necessary for the task, might be another way of 

putting it. And that’s very, very subjective. What’s necessary at any 

particular point in time is going to be a subjective thing. 

**** 

I don’t know what “fully configured” means in a legal context, and I also 

don’t know what it means in a technical context. But from the standpoint of 

someone just sitting and just an average person off the street reading this or 

understanding this, I think they would understand what I mean. I mean, is it 

subjective? I think that there are multiple opinions based on who -- if you 

asked a bunch people, even have technically competent people, what’s “fully 

configured,” I think you’d get a lot of different answers. So maybe that makes 

it subjective. 

(Apx. B, pgs. 219-21: McGill TR at 96:22-98:4). 

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Mr. McGill is right. Below are some of the different tests a POSA might reasonably 

consider as candidates for distinguishing a “fully configured” operating system from one that is 

“not fully configured,” with the ‘573 Patent giving no clear indication as to which is correct: 

• Functional Test: An operating system that requires no reconfiguring 

whatsoever to completely support the full current capabilities of all of 

the hardware and software of the data processing system on which it is 

installed (or on which it is expected to be installed). 

• Historical Test: An operating system that is configured the same way 

as an operating system was configured on this or another data 

processing system at some point in the past, such as the most recently 

backed up version of the operating system. 

• Historical and Functional Test: A configured operating system selected 

from a set of previously saved configured operating systems to provide 

the closest match for supporting the full capabilities of all of the 

hardware and software of the data processing system, which may not be 

the most recently backed up version of the operating system. 

• Subjective Test No. 1: An operating system sufficiently configured to 

support its hardware and software environment in a manner satisfactory 

to the user of the data processing system. 

• Subjective Test No. 2: An operating system sufficiently configured to 

support its hardware and software environment in a manner satisfactory 

to the administrator of the data processing system. 

For its proposed construction, Veritas offers a circle of words leading nowhere. 

Erasing the word “fully,” it proposes: “Operating system having the desired configuration [and 

defines “desired configuration” as “The desired way in which the capability has been tailored 

based on selection of components”]. This does not help the POSA at all. 

“Desired configuration,” recited in Claim 30, is also indefinite. It is not a well-defined 

term of art and it is not defined in the patent. Who needs to have desired the configuration? 

How much of it must they desire? When must they have desired it? (See Apx. A at 5). 

Veritas’ proposed definition again does not help. For example, when trying to apply that 

definition, Dr. Smith was forced to concede that a configuration might be “desired” even if the 

user did not specify or desire any part of it (Apx. B, pgs. 236-38: Smith TR 41:23-43:5)—

which makes no sense. 

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999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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In sum, the Court should declare this claim language indefinite because it creates the 

“zone of uncertainty” prohibited by patent law. Markman v. Westview Instruments, 517 U.S. 

370, 390 (1996). 

VII. THE COURT SHOULD DISMISS THE REPORT SIGNED BY DR. SMITH

The Court should dismiss the report submitted by Veritas and signed by Dr. Smith and 

disregard its stated opinions on claim construction because: 

1. Phillips does not permit an expert to opine on the ultimate issue of construction; 

2. Dr. Smith does not know the state of the art in 1993 and thus could not and did 

not use the required “state of the art” lens through which a POSA would have read the 

patent application (see Apx. B, pgs. 228, 234-35, 243: Smith TR 18:13-24, 35:1-36:9, 

56:9-13 (“I’ve made no study of the prior art”); Apx. B, pgs. 247-48: Smith TR 113:4-

114:20 (“I haven’t looked to see what was on the emergency boot disk [in 1992 or 

earlier]”); Apx. B, pgs. 264-65: Smith TR 149:10-150:3 (he’s read none of the cited prior 

art); Apx. B, pg. 267: Smith TR 160:8-12 (he’s made no effort to learn about the prior art); 

Apx. B, pgs. 268-69: Smith TR 168:15-169:4 (he has “no idea” who was working on the 

problem addressed in the patent)); 

3. he mis-defines the pertinent field of art as “the design and implementation of 

computer system software including operating systems,” and thus he mis-defines the 

POSA. This is neither the problem nor the field addressed by the ‘573 Patent; 

4. as a result of the above problems, the report’s methodology fails the reliability 

requirements of Fed. R. Evid. 702 and Daubert case law; 

5. the report is unsworn and thus inadmissible as evidence; and 

6. as explained below, it lacks the required level of trustworthiness. 

 (See generally Microsoft’s Opening Br. on ‘147 Pat. at 46-49). 

As noted above, Dr. Smith made “no study” of the prior art, did not look at the art 

Microsoft gave to Veritas months earlier, and did not read even the cited art. His studied 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 57 of 60
 

Page 49 

CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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ignorance of the prior art did not stop him, however, from signing a report telling this Court 

that the ‘573 Patent’s alleged invention was a “significant improvement” over that prior art: 

In Section IV [which contains ¶ 34, quoted below], I provide an overview of 

the inventions of the ‘573 patent, in particular its key improvements over the 

prior art, ....” (Apx. B, pg. 102: Smith Report, ¶ 6). 

One of ordinary skill in the art would understand that the resulting reduction 

in time and labor offers a significant improvement over the prior art methods 

for system restoration and deployment, while preserving the flexibility of 

dynamically configuring the operating system during system initialization to 

accommodate new capabilities and hardware components. (Apx. B, pg. 114: 

Smith Report, ¶ 34 (last sentence)). 

When presented with this troubling discrepancy, Dr. Smith testified that the abovequoted representations that the ‘573 Patent described a significant improvement over the prior 

art were not presented in the report as his considered opinion based on his experience and 

knowledge of the subject matter, but rather were presented in the report as parroting what was 

(supposedly) said in the patent: “What I’m saying here is relying on the representations in the 

patent. To that extent, that’s my testimony.” (See Apx. B, pgs. 272-73: Smith TR 178:11-

179:14). On the contrary, the above-quoted statements in the Smith report are not quoting, or 

even citing, to the patent. Instead, as Veritas no doubt will concede, they were presented to the 

Court as the considered, reliable opinions of an expert who had “drawn from my academic and 

professional experiences related to the subject matter of this patent.” (Apx. B, pg. 102: Smith 

Report ¶ 3). 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 58 of 60
 

Page 50 

CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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VIII. CONCLUSION

 For the foregoing reasons, the Court should construe the disputed claim language in the 

manner proposed by Microsoft. 

 DATED this 19th day of March, 2007. 

 DANIELSON HARRIGAN LEYH & TOLLEFSON 

 By: s/ John D. Vandenberg 

Arthur W. Harrigan, Jr., WSBA #1751 

Christopher T. Wion, WSBA #33207 

Attorneys for Defendant and Counterclaim Plaintiff, 

Microsoft Corporation 

Dan K. Webb, pro hac vice 

Bruce R. Braun, pro hac vice 

Raymond C. Perkins, pro hac vice 

WINSTON & STRAWN LLP 

35 West Wacker Drive 

Chicago, Illinois 60601 

Telephone: (312) 558-5600 

Kristin L. Cleveland, pro hac vice

Todd M. Siegel, pro hac vice 

John D. Vandenberg, WSBA #38445 

KLARQUIST SPARKMAN, LLP 

One World Trade Center 

121 S.W. Salmon Street, Suite 1600 

Portland, Oregon 97204 

Telephone: (503) 595-5300 

Facsimile: (503) 595-5301 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 59 of 60
 

Page 51 

CV 06-0703 JCC 

DEFENDANT MICROSOFT CORPORATION’S 

RESPONSIVE CLAIM CONSTRUCTION BRIEF 

REGARDING U.S. PATENT NO. 5,469,573

LAW OFFICES 

DANIELSON HARRIGAN LEYH & TOLLEFSON LLP 

999 THIRD AVENUE, SUITE 4400 

SEATTLE, WASHINGTON 98104 

TEL, (206) 623-1700 FAX, (206) 623-8717

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CERTIFICATE OF SERVICE

 I, John D. Vandenberg, swear under penalty of perjury under the laws of the State of 

Washington to the following: 

 1. I am over the age of 21 and not a party to this action. 

 2. On the 19th of March, 2007, I caused the preceding document to be served on 

the Special Master and counsel of record in the following manner: 

BY E-MAIL AND FEDERAL EXPRESS 

Gale Roy Peterson 

Cox Smith Matthews Incorporated 

112 E. Pecan Street, Suite 1800 

San Antonio, TX 78205-1521 

grpeters@coxsmith.com

BY E-MAIL 

Ralph H. Palumbo 

Summit Law Group PLLC 

315 Fifth Avenue South, Suite 1000 

Seattle, Washington 98104 

ralphp@summitlaw.com

Mark A. Flagel 

Belinda Lee 

Michael Schallop 

Latham & Watkins LLP 

633 West Fifth Street, Suite 4000 

Los Angeles, California 90071 

mark.flagel@lw.com

belinda.lee@lw.com

BY E-MAIL AND FEDERAL EXPRESS 

Michael J. Schallop 

Latham & Watkins 

140 Scott Drive 

Menlo Park, CA 94025 

michael.schallop@lw.com

 

 By: s/ John D. Vandenberg 

 John D. Vandenberg 

Case 2:06-cv-00703-JCC Document 106 Filed 05/03/07 Page 60 of 60