United States: Intellectual Ventures LLC v. Semantic Corporation And Veritas Technologies LLC (D. Del. 2017)

Last Updated: May 24 2017
Article by Joseph A. Herndon

Patent Directed to System for Remote Mirroring of Digital Data Found Invalid under Section 101

Intellectual Ventures brought a patent-infringement suit against Symantec Corpo. and Veritas Technologies asserting that Symantec's VVR product infringes claims 25 and 33 of U.S. Patent No. 5,537,533.  Among other motions decided here, the District Court granted Symantec's motion for summary judgment of patent ineligibility.

Patent-Eligible Subject Matter

The Court followed the two-step framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.  First, courts must determine if the claims at issue are directed to a patent-ineligible concept -- in this case, an abstract idea.  If so, the next step is to look for an inventive concept -- i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

Turning to the patent-at-issue, the '533 patent describes and claims a system for remote mirroring of digital data from a primary server to a remote server.

Independent claim 25 reads:

25.  A method for remote mirroring of digital data, said method comprising the steps of:
    copying the data from a primary network server to a nonvolatile data buffer in a data transfer unit which is digitally connected to the primary network server, the primary network server including an operating system which is capable of accessing a nonvolatile server store, the data copied to the data transfer unit being a substantially concurrent copy of data which is being stored by the operating system in the nonvolatile server store of the primary network server;
    copying the data from the data transfer unit to an input end of a communication link which has an output end physically separated from its input end;
    generating and sending a spoof packet to the operating system of the primary network server; and
    copying the data from the output end of the communication link to a nonvolatile server store on a remote network server.

Claim 33, which depends from claim 25, adds:  compressing the data prior to said step of copying the data from the data transfer unit to the input end of the communication link; and decompressing the data after said step of copying the data from the output end of the communication link.

Step One

The abstract idea step of the inquiry calls upon the Court to look at the focus of the claimed advance over the prior art to determine if the claim's character as a whole is directed to excluded subject matter.

IV argued that the claims are not directed to an abstract idea but are instead a precise, innovative, and technical solution to the problem of protecting critical data during power interruptions or system reboots, and that solution, according to IV, involves the use of nonvolative data stores and the transmission of spoof packets to ensure that data copying can be continued in the event of interruptions in power or other events threatening data integrity.

Symantec countered that the claims are directed to the basic abstract idea of storing an up-to-date backup copy of data at a remote location, and that this is the sort of thing that humans have done for centuries, even before computers.

The Court, considering the claims as a whole, agreed with Symantec that the focus of the claims is the abstract idea of backing up data.  The claims recite the basic steps of copying data from one location to another several times and sending a confirmation that the data has been received.  It is undisputed that institutions have long backed up data in general, and the specification even describes long-practiced methods of backing up digital data.

However, the specification identifies several disadvantages of the prior art back-up methods.  But the claims do not provide any concrete details that limit the claimed invention to a specific solution to the problem of remote back-up of digital data.  The claims simply rely on functional language to describe copying and confirmation steps.  Additionally, the claims use existing computer functionality as a tool to better back up data and do not themselves purport to improve anything about the computer or network itself.  As a result, the Court found that, unlike  Enfish and McRO, the claims do not improve the way computers store information or otherwise function.  Rather, the claims rely on the ordinary storage and transmission capabilities of computers within a network and apply that ordinary functionality in the particular context of remote mirroring.

Step Two

At step two, courts must look to both the claim as a whole and the individual claim elements to determine whether the claims contain an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.  The step two inquiry includes consideration of whether claim elements simply recite well-understood, routine, conventional activities.

The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art.  Even when the limitations of the claims, taken individually, recite generic computer, network and Internet components, none of which is inventive by itself, if that ordered combination of these limitations is new, they may be patent-eligible under step two.

Turning to step two, the Court again agreed with Symantec that the claims lack anything sufficient to transform the abstract idea into patent-eligible subject matter.  The claims invoke conventional computer components that do not supply an inventive concept, and IV does not seriously contend otherwise.

IV contended that when considered as an ordered combination, the claims provide specific, claimed limitations of using a nonvolatile data store and sending the spoof packet prior to undertaking a data write that transform any alleged abstract idea into a particular, practical application of that abstract idea.

But IV did not describe how these components function in combination in an arguably inventive way or what it may be about this arrangement of components that engenders the alleged improvement, and the claims provide little guidance.

At most, the '533 patent identifies a problem in the prior art:  available methods for backing up digital data were insufficiently reliable for mission-critical data, because the copies were not substantially current.  But the patent's claimed solution merely restates the problem to provide a method for remote mirroring of digital data, in which the data copied is a substantially concurrent copy.

Such an attempt to claim the abstract idea of a solution to the problem in general, as opposed to a particular solution, confirms the patent ineligibility of these claims.

As a result, the Court granted Symantec's motion for summary judgment of patent ineligibility.

Memorandum Opinion by District Judge Stark

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions