Case 1:16-cv-11613-RGS Document 51 Filed 02/14/17 Page 1 of 28 UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS CIVIL ACTION NO. 16-11613-RGS EGENERA, INC. v. CISCO SYSTEMS, INC. MEMORANDUM AND ORDER ON DEFENDANT’S MOTION TO DISMISS February 14, 2017 STEARNS, D.J. The desire to economize time and mental effort in arithmetical computations, and to eliminate human liability to error, is probably as old as the science of arithmetic itself. This desire has led to the design and construction of a variety of aids to calculation, beginning with groups of small objects, such as pebbles, first used loosely, later as counters on ruled boards, and later still as beads mounted on wires fixed in a frame, as in the abacus. ─ Howard Aiken, father of the Mark I IBM computer1 Beginning with the invention by Blaise Pascal of the mechanical calculator, and culminating in our times with the integrated circuit-based computer, the ability of modern computers to aid human beings in performing tasks requiring the processing of large amounts of data has, as 1 In Zenon W. Pylyshyn & Liam J. Bannon, Perspectives on the Computer Revolution (1989). Case 1:16-cv-11613-RGS Document 51 Filed 02/14/17 Page 2 of 28 Gordon Moore predicted, grown exponentially as transistors have miniaturized, while doubling in capacity roughly every eighteen months since 1965. In 1874, Frank Stephen Baldwin was granted the first American patent (No. 153,522) for a calculating machine, the arithmometer. The number of “calculator patents” granted since is impossible to estimate accurately, but certainly runs to the hundreds of thousands. Not all of these patents are valid. Patents only protect inventions. They do not (or at least they are not supposed to) vest intellectual property rights in patentees who stake claims to the “building blocks of human ingenuity.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and citation omitted). One of the challenges for the patent system, as laid out by the Supreme Court in the recent Alice decision, is to separate out new and useful applications of abstract ideas from impermissible attempts to monopolize them. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Mayo [Collaborative Servs. v. Prometheus Labs., Inc.,] 132 S. Ct. [1289,] 1294 [(2012)]. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Bilski [v. Kappos, 561 U.S. 593,] 610-611 [(2010)]. Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Alice, 134 S. Ct. at 2358. 2 Case 1:16-cv-11613-RGS Document 51 Filed 02/14/17 Page 3 of 28 In this intellectual property dispute, plaintiff Egenera, Inc., alleges that defendant Cisco Systems, Inc., infringes three of Egenera’s patents – United States Patent No. 6,971,044 (the ’044 patent), United States Patent No. 7,1178,059 (the ’059 patent), and United States Patent No. 7,231,430 (the ’430 patent), all of which set out claims to an improved enterprise computing system. Cisco moves to dismiss the Complaint, contending that Egenera’s patents do not assert viable claims to patentable subject matter as required by 35 U.S.C. § 101. The court heard oral argument on the motion to dismiss on February 8, 2017. The Asserted Patents The ’044 and the ’430 patents arise from two patent applications filed on January 4, 2002. Both patents claim priority to the same provisional application filed on April 20, 2001, and share virtually identical specifications. The ’044 patent is entitled “Service Cluster and Method in a Processing System with Failover Capability,” and was issued on November 29, 2005. It lists as its inventors Scott Geng, Pete Manca, Paul Curtis, Ewan Milne, Max Smith, Alan Greenspan, Edward Duffy, and Peter Schulter. The ’430 patent is entitled “Reconfigurable, Virtual Processing System Cluster, Network, and Method,” and was issued on June 12, 2007. The ’430 patent 3 Case 1:16-cv-11613-RGS Document 51 Filed 02/14/17 Page 4 of 28 lists the same inventors as the ’044 patent, with three additions – Vern Brownell, Ben Sprachman, and Dan Busby. The ’044 and ’430 patents are directed to solving problems in configuring, deploying, and maintaining enterprise and application servers. For example, when deploying 24 conventional servers, more than 100 discrete connections may be required to configure the overall system. Managing these cables is an ongoing challenge, and each represents a failure point. Attempting to mitigate the risk of failure by adding redundancy can double the cabling, exacerbating the problem while increasing complexity and costs. ’044 patent, col. 1, ll. 41-47. Given that “personnel from multiple information technology (IT) functions (electrical, networking, etc.) must participate to deploy processing and networking resources . it can take weeks or months to deploy a new computer server.” Id. col. 1, ll. 22-27. In addition, to ensure high availability of server resources, “a failover server must be deployed for every primary server . [requiring] complex management software and professional services.” Id. col. 1, ll. 49-51. Finally, a post-deployment system adjustment “often requires a ‘forklift upgrade,’ meaning more hardware/software systems are added, needing new connections and the like.” Id. col. 1, ll. 56-58. The ’044 and ’430 patents seek to improve on these limitations by creating a “processing platform from which virtual systems may be deployed through configuration commands.” Id. col. 2, ll. 4 Case 1:16-cv-11613-RGS Document 51 Filed 02/14/17 Page 5 of 28 The platform provides a large pool of processors from which a subset may be selected and configured through software commands to form a virtualized network of computers (“processing area network” or “processor clusters”) that may be deployed to serve a given set of applications or customer. The virtualized processing area network (PAN) may then be used to execute customer specific applications, such as Web-based server applications. The virtualization may include virtualization of local area networks (LANs) or the virtualization of I/O storage. By providing such a platform, processing resources may be deployed rapidly and easily through software via configuration commands, e.g., from an administrator, rather than through physically providing servers, cabling network and storage connections, providing power to each server and so forth. Id. col. 2, l. 59 - col. 3, l. 7. Figure 1 illustrates the physical topography of a prototypical platform. 5 Case 1:16-cv-11613-RGS Document 51 Filed 02/14/17 Page 6 of 28 As shown in FIG. 1, a preferred hardware platform 100 includes a set of processing nodes 105a-n connected to a switch fabrics 115a,b via high-speed, interconnect 110a,b. The switch fabric 115a,b is also connected to at least one control node 120a,b that is in communication with an external IP network 125 (or other data communication network), and with a storage area network (SAN) 130. A management application 135, for example, executing remotely, may access one or more of the control nodes via the IP network 125 to assist in configuring the platform 100 and deploying virtualized PANs. Under certain embodiments, about 24 processing nodes 105a-n, two control nodes 120, and two switch fabrics 115a,b are contained in a single chassis and interconnected with a fixed, pre-wired mesh of point-to-point (PtP) links. Each processing node 105 is a board that includes one or more (e.g., 4) processors 106j-l, one or more network interface cards (NICs) 107, and local memory (e.g., greater than 4 Gbytes) that, among other things, includes some BIOS firmware for booting and initialization. Here is no local disk for the processors 106; instead all storage, including storage needed for paging, is handled by SAN storage devices 130. Each control node 120 is a single board that includes one or more (e.g., 4) processors, local memory, and local disk storage for holding independent copies of the boot image and initial file system that is used to boot operating system software for the processing nodes 105 and for the control nodes 106. Each control node communicates with SAN 130 via 100 megabyte/second fibre channel adapter cards 128 connected to fibre channel links 122, 124 and communicates with the Internet (or any other external network) 125 via an external network interface 129 having one or more Gigabit Ethernet NICs connected to Gigabit Ethernet links 121,123. (Many other techniques and hardware may be used for SAN and external network connectivity.) Each control node includes a low speed Ethernet port (not shown) as a dedicated management port, which may be used instead of remote, web-based management via management application 135. 6 Case 1:16-cv-11613-RGS Document 51 Filed 02/14/17 Page 7 of 28 The switch fabrics is composed of one or more 30-port Giganet switches 115, such as the NIC-CLAN 1000 and clan 5300 switch, and the various processing and control nodes use corresponding NICs for communication with such a fabric module. Giganet switch fabrics have the semantics of a Non-Broadcast Multiple Access (NBMA) network. All inter-node communication is via a switch fabric. Each link is formed as a serial connection between a NIC 107 and a port in the switch fabric 115. Each link operates at 112 megabytes/second. ’044 patent, col. 3, ll. 9-59. The platform is designed to utilize virtual MAC addresses2 to respond to failovers. A plurality of computer processors are [sic] connected to an internal communication network.