Veritas Operating Corp. v. Microsoft Corp. (562 F. Supp. 2d 1141, 2008)

United States District Court for the Western District of Washington 2008-02-20

Citations

Full opinion text

ORDER

JOHN C. COUGHENOUR, District Judge.

This matter comes before the Court for review of the Special Master’s Report and Recommendation on Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,469,573 (Dkt. No. 396). The Court has reviewed de novo the Special Master’s Report and Recommendation (“ ’573 Infringement R & R”), the parties’ respective objections and responses thereto (Dkt. Nos. 403, 409), the briefing and exhibits presented to the Special Master in the first instance, and all other relevant documents in the case file. The Court has determined that oral argument is not necessary.

The Court hereby APPROVES and ADOPTS the Special Master’s ’573 Infringement R & R in its entirety. Accordingly, the Court hereby GRANTS Microsoft’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,469,573 (Dkt. No. 204).

SPECIAL MASTER’S REPORT AND RECOMMENDATION ON MICROSOFT CORPORATION’S MOTION FOR SUMMARY JUDGMENT ON VERITAS’ CLAIM OF INFRINGEMENT OF U.S. PATENT NO. 5,469,-573

FILED UNDER SEAL CONTAINS INFORMATION DESIGNATED AS “CONFIDENTIAL,” “CONFIDENTIAL-ATTORNEY EYES ONLY,” AND/OR “CONFIDENTIAL — ATTORNEY EYES ONLY — SOURCE CODE” SUBJECT TO PROTECTIVE ORDER

TABLE OF CONTENTS

I. Introduction.1149

A. Nature of the Suit.:.1149

B. Referral to the Special Master.1150

C. Issued Under Seal.1150

II. Summary Judgment Standard.1150

A. Summary Judgment.1150

B. Burden of Proof.1151

III. Brief Overview of the Patenb-in-Suit.1152

IV. Infringement.1154

A. Direct Infringement.1154

B. Indirect Infringement.1155

1. Inducing Infringement.1155

2. Contributory Infringement.1156

C. Asserted Claims.1158

D. The Parties’ Arguments.1159

E. Discussion.1160

1. The Accused Products.1160

a) System Deployment.1162

b) System Backup & Recovery.1163

2. Uses of the Accused Products.1163

a) Infringing Uses.1163

b) Substantial Non-Infringing Uses.1163

c) U.S. and Foreign Uses.1175

d) Use with Veritas’ Products.1175

3. Infringement.1175

a)“users manuals, advertising materials and other product documentation”.•.1177

(1) WAIK Guide.1178

(2) WAIK Getting Started .1192

(3) OPK Guide.1200

(4) BRC74.1210

(5) Presentation.1213

(6) Remaining Product Manuals, Materials & Documentation.1216

4. “Microsoft’s own witnesses”.1235

a) John MacIntyre.1235

b) Mark Myers ..:.1241

c) Wes Miller.1242

5. “e-mails, customer specifications and other documents” .1247

a) Nike Email.1247

b) Boeing Email.1249

c) Hershey Email .1250

d) DaimlerChrysler Documents.1251

e) “dogfood” Documents.1258

f) Windows Vista CompletePC Restore Documents.1260

g) “14 bugs” Email.1262

h) Zions Bank Email.1264

i) Dr. Nichols Report, Exh. L.1266

F. Recommendation.1268

V. Software as a Material or Apparatus Under § 271(c) .1268

A. The Parties’ Arguments.1268

B. Discussion.1269

C. Recommendation.1275

VI. Inducing Infringement — Intent.1275

A. The Parties’ Arguments.1275

B. Discussion.1277

C. Recommendation.1285

VII. Willfulness. 1285

A. The Parties’ Arguments.1285

B. Discussion.1285

C. Recommendation.,.1286

VIIL Damages .1286

A. The Parties’ Arguments.1286

B. Discussion.1287

C. Recommendation.1287

IX. Recommended Disposition.1287

X. Report and Recommendation.1287

GAIL R. PETERSON, Special Master.

I.

Introduction

A. Nature of the Suit

Veritas alleges in its complaint causes of action for trade secret misappropriation, breach of contract, breach of an implied covenant of good faith and fair dealing, unfair competition, unjust enrichment and collective trust, conversion, copyright infringement, and infringement of U.S. Patent No. 6,826,661 (“the ’661 patent”) [Dkt. No. 1]. Microsoft alleges in its counterclaim causes of action for breach of contract, breach of an implied covenant of good faith and fair dealing, and for declaratory judgments of invalidity and non-infringement of the ’661 patent, and for infringement of U.S. Patent Nos. 5,588,147 (“the ’147 patent”); 6,820,214 (“the ’214 patent”); and 6,851,073 (“the ’073 patent”) [Dkt. No. 32]. Veritas, in response, alleged additional counterclaims seeking declaratory judgments of non-infringement and invalidity of the ’147, ’214 and ’073 patents, declaratory judgments that the ’073 and ’214 patents are unenforceable due to inequitable conduct, and a counterclaim asserting infringement of U.S. Patent No. 5,469,573 (“the ’573 patent”) [Dkt. No. 39]. Microsoft answered and added counterclaims for declaratory judgments that the ’573 patent was invalid and not infringed [Dkt. No. 53], The parties subsequently stipulated to dismiss Microsoft’s counterclaims for infringement of the ’214 and ’073 patents, and Veritas’ corresponding declaratory judgment counterclaims for non-infringement, invalidity and unen-forceability of those patents [Dkt. No. 58]. The parties further stipulated to stay the action with respect to the ’661 patent after the U.S. Patent and Trademark Office (PTO) granted Microsoft’s request for inter partes reexamination of the ’661 patent [Dkt. No. 63],

Thus, the patents remaining in this action are Veritas’ ’573 patent and Microsoft’s ’147 patent. The master issued the Special Master’s Report and Recommendation on Claim Construction Regarding U.S. Patent No. 5,469,573 on May 25, 2007. See Dkt. No. 128 (“the Markman RR”). The Court adopted the Markman RR on September 12, 2007. See Dkt. No. 239 (“Markman Order”).

Microsoft now moves for summary judgment of no direct or indirect infringement, and that Veritas’ damages, if any, should be limited to certain specific instances of direct infringement that Veritas can now prove. With respect to direct infringement, Microsoft argues that Veritas has not shown that any Microsoft customer has used the accused software to perform in the U.S. any of the asserted method claim. With respect to indirect infringement, Microsoft argues that the accused software (1) has substantial non-infringing uses, (2) is information, rather than a physical material .or apparatus and (3) Veritas cannot show the intent necessary for inducing infringement. Along with its argument regarding intent, Microsoft contends that Veritas cannot show the “recklessness” required under In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed.Cir.2007). See Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,496,573 and Memorandum in Support Thereof, dated August 31, 2007 [Dkt. No. 204] (“Microsoft’s Brief’) at 21.

Veritas responds that it has substantial proof of (1) direct infringement and (2) intent to induce, and (3) that is has “raised factual questions” on willfulness. Veritas also contends that (4) software can infringe under § 271(c), (5) the accused software contributorily infringes, and (6) Veritas has established its damages case, and need not prove every instance of direct infringement now. See Veritas Software Corporation’s Opposition to Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,496,573, dated September 17, 2007 [Dkt. No. 266] (“Veritas’ Response”).

In its reply, Microsoft largely re-urges the issues presented in its opening brief, arguing that no reasonable jury could find for Veritas on those issues. See Defendant Microsoft Corporation’s Reply in Support of its Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,496,573, dated September 21, 2007 [Dkt. No. 301] (“Microsoft’s Reply”).

B. Referral to the Special Master

This Court’s Order of January 18, 2007 [Dkt. No. 76], appointed the undersigned as special master in this action to handle all pre-trial patent-related issues. In the Court’s Order of September 10, 2007 [Dkt. No. 235], the Court specifically directed the special master to hear the patent-related motions for summary judgment in this case including, inter alia, the above-mentioned motion. In accordance therewith, a hearing was held in San Antonio, Texas, on October 2, 2007. A record of that hearing has been prepared and filed with the Court.

After reviewing the transcript of that hearing as well as the exhibits and briefs offered by the parties, and pursuant to the foregoing Order and Rule 53 of the Federal Rules of Civil Procedure, the master issues the following report and recommendation on the foregoing issue of non-infringement with respect to the ’573 patent.

For the reasons discussed below, the master recommends that the Court GRANT Microsoft’s motion.

C. Issued Under Seal

Some of the parties’ exhibits were designated as having been filed under seal. Because it references certain of those sealed exhibits, this report and recommendation is likewise designated “FILED UNDER SEAL.” However, the public nature of these proceedings should be preserved to the fullest extent possible. Therefore, the parties are strongly encouraged to promptly advise the Court whether this report and recommendation may be released from seal either entirely or with appropriate redaction.

II.

Summary Judgment Standard

A. Summary Judgment

Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Fed.R.Civ.P. 56(c) (“Rule 56(c)”). “[T]he plain language of Fed.R.Civ.P. 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial.” Celotex, 477 U.S. at 322, 106 S.Ct. 2548. The Supreme Court has held that Rule 56(c) requires the nonmoving party to go beyond the pleadings, and by affidavits, depositions, answers to interrogatories and admissions on file, to designate specific facts showing that there is a genuine issue for trial. Id. at 324, 106 S.Ct. 2548.

A genuine issue of material fact exists if the evidence is such that a reasonable jury could find for the nonmoving party. Anderson, 477 U.S. at 248, 106 S.Ct. 2505; General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 980 (Fed.Cir.1997). A disputed fact is material if it might affect the outcome of the suit such that a finding of that fact is necessary and relevant to the proceeding. “[T]he dispute about a material fact is ‘genuine,’ * * *, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. “Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no ‘genuine issue for trial.’ ” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Of course, “the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.” Anderson, 477 U.S. at 247-48, 106 S.Ct. 2505 (emphasis in original). “If the evidence is merely color-able * * * or is not significantly probative, * * *, summary judgment may be granted.” Id. at 249-50, 106 S.Ct. 2505. However, “[t]he evidence submitted by the nonmovant, in opposition to a motion for summary judgment, ‘is to be believed, and all justifiable inferences are to be drawn in [its] favor.’ ” KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1449-50 (Fed.Cir.1993)(internal citations omittedXquoting Anderson, 477 U.S. at 255, 106 S.Ct. 2505).

The Court’s responsibility is not “to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.” Anderson, 477 U.S. at 249, 106 S.Ct. 2505. The inquiry is “the threshold inquiry of determining whether there is the need for a trial-Hvhether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party.” Id. at 250, 106 S.Ct. 2505; see also Cooper v. Ford Motor Co., 748 F.2d 677, 679 (Fed.Cir.1984); see also SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed.Cir.1985)(en banc )(“[T]he district court must view the evidence in a light most favorable to the nonmovant and draw all reasonable inferences in its favor, * * *, and must resolve all doubt over factual issues in favor of the party opposing summary judgment.”) (citing United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962); Martin v. Barber, 755 F.2d 1564, 1566 (Fed.Cir.1985); and Palumbo v. Don-Joy Co., 762 F.2d 969, 973 (Fed.Cir.1985)). The Federal Circuit has held that “summary judgment is as appropriate in a patent case as in any other * * Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 835 (Fed.Cir.1984); see also Meyers v. Brooks Shoe, Inc., 912 F.2d 1459, 1461 (Fed.Cir.1990)(summary judgment is appropriate in patent cases).

B. Burden of Proof

Veritas, as the patentee asserting infringement, bears the burden of proof by a preponderance of the evidence. Indeed, the Federal Circuit recognizes that the “patent owner has always borne the burden of proving infringement,” Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 685 (Fed.Cir.1990), and has often applied this burden to motions for summary judgment. See, e.g., TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1372 (Fed.Cir.2002); Display Techs., Inc. v. Paul Flum Ideas, Inc., 282 F.3d 1340, 1348 (Fed.Cir.2002). “Since the ultimate burden of proving infringement rests with the patentee, an accused infringer seeking summary judgment of non-infringement may meet its initial responsibility either by providing evidence that would preclude a finding of infringement, or by showing that the evidence on file fails to establish a material issue of fact essential to the patentee’s case.” Novartis Corp. v. Ben Venue Labs., 271 F.3d 1043, 1046 (Fed.Cir.2001).

“[O]n issues in which the nonmov-ant bears the burden of proof, in contrast to those in which the movant bears the burden, the movant need not ‘produce evidence’ showing the absence of a genuine issue of material fact in order to properly support its summary judgment motion.” Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1307 (Fed.Cir.2006)(citing Celotex, 477 U.S. at 325, 106 S.Ct. 2548). Rather, “ ‘the burden on the moving party may be discharged by ‘showing’ — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party’s case.’ ” Exigent Technology, 442 F.3d at 1308 (quoting Celotex, 477 U.S. at 325, 106 S.Ct. 2548). That is, “nothing more is required than the filing of a summary judgment motion stating that the patentee had no evidence of infringement and pointing to the specific ways in which accused systems did not meet the claim limitations.” Exigent Technology, 442 F.3d at 1309.

Once the movant has satisfied its initial burden, the “burden of production then shift[s] to [the non-movant] to identify genuine issues that preclude summary judgment.” Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 990 (Fed.Cir.2006)(citing Fed.R.Civ.P. 56(e); and 10A C. Wright, A. Miller, & M. Kane, Federal Practice and Procedure § 2727 (3d ed. 1998)(“[I]f the movant makes out a prima facie case that would entitle him to a judgment as a matter of law if uncontro-verted at trial, summary judgment will be granted unless the opposing party offers some competent evidence that could be presented at trial showing that there is a genuine issue as to a material fact.”)). Thus, “‘the [summary judgment] motion may, and should, be granted so long as whatever is before the district court demonstrates that the standard for the entry of summary judgment, as set forth in Rule 56(c), is satisfied.” Exigent Technology, 442 F.3d at 1308 (alterations in origi-nal)(quoting Celotex, 477 U.S. at 323, 106 S.Ct. 2548).

III.

Brief Overview of the Patent-in-Suit

As discussed in the master’s report and recommendation on claim construction regarding the ’573 patent, the ’573 patent generally discloses “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,” “from standard system backup media, such as magnetic backup tapes, without the need to reload and re configure the operating system from its original distribution media.” ’573 patent, col. 2, lines 2-6.

According to the specification, “[c]om-plex computer systems require[d] similarly complex disk operating systems” such as “IBM OS/2 (commercially available from IBM corporation), Microsoft MS-DOS, and Microsoft Windows 3.x (both commercially available from Microsoft Corporation, Redmond, Wash.).” ’573 patent, col. 1, lines 21-23 & 14-17. The specification explains that “[b]ecause there are so many possible system configurations available, a typical operating system needs to be individually tailored for each personal computer system on which it is installed” — a process that “typically requires that a skilled technician spend several hours building the operating system on the personal computer according to the desired system configuration.” ’573 patent, col. 1, lines 25-31. Data stored on “magnetic media disk drives,” though, were vulnerable to loss or corruption, and “[d]ata backup systems, such as magnetic tape backup,” were generally used to restore “corrupted or destroyed data files on the high capacity hard disk.” ’573 patent, col. 1, lines 34-45. According to the specification, however, such backup systems normally required that “the disk operating system installed on the hard disk be intact and fully operational before data [could] be 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.” ’573 patent, col. 1, lines 46-52.

For addressing that problem, the specification discloses (1) a data processing system on which the recovery process may be run, (2) creation of an electronic backup, for example on tape, (3) creation of a recovery disk, and (4) the recovery process.

The “data processing system” is said to include, inter alia, “a computer workstation” having a “storage device [that] stores files necessary to start (boot) and operate the workstation,” ie., “operating system files, system configuration files, device driver files, and any other files necessary to properly configure and operate the workstation,” and “a tape drive adapter for communicating with the backup tape drive device.” ’573 patent, col. 3, line 44-col. 4, line 8 (reference numbers omitted).

The backup tape, according to the specification, may include the “operating system files, system configuration files, [and] device driver files,” and is “used as the source for the operating system subsequently loaded or restored onto the PC hard drive.” ’573 patent, col. 5, lines 36-38 (reference numbers omitted).

As for creating a recovery disk, the specification explains that “a recovery diskette is prepared from the fully configured PC by copying various files from the hard disk onto the recovery diskette, which essentially define the current PC configuration.” Such files include “vital operating system configuration files, system configuration files, and device drivers * * * required for the proper operation of the hardware, operating system, and attached devices,” as well as “[operating system installation files” from the “‘Installation’ diskette, distributed with the original operating system distribution diskettes,” “an application program for implementing the loading or recovery procedure of this invention, and an application program capable of recovering the operating system files from the backup media onto the hard disk of the PC.” ’573 patent, col. 5, lines 39-65 (reference numbers omitted). According to the specification, “the recovery diskette can actually be a set of several recovery diskettes, each diskette containing a particular sub-set of files.” ’573 patent, col. 4, lines 54-56.

The specification discloses a number of recovery processes, such as “the operating system recovery and loading procedure.” For that procedure, the specification explains, “[t]o begin the recovery process the operator inserts the backup tape containing the operating system files to be restored into the PC tape drive.” Then, the “operator starts (i.e., boots)” 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 patent, col. 6, lines 10-18 (reference numbers omitted). “Next, a recovery program is loaded from the recovery diskette into the PC and run to directly recover the operating system files from the backup tape,” as well as recover other files on the backup tape. “Finally, the PC is rebooted from the recovered operating system files now installed on the hard disk, and the hard drive can be further restored from the backup tape if necessary.” ’573 patent, col. 6, lines 26-33 (reference numbers omitted).

IV.

Infringement

A. Direct Infringement

A patentee may sue for direct infringement under 35 U.S.C. § 271(a):

Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United Sates any patented invention during the term of the patent therefor, infringes the patent.

The “making, using, or selling of a patented invention is the usual meaning of the expression ‘direct infringement.’ ” Joy Techs. Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed.Cir.1993). The Federal Circuit has long held that the determination of patent infringement involves a two-step process. “The claimed invention must first be defined, a legal question of claim interpretation. Second, the trier of fact must determine whether the claims, as properly interpreted, cover the accused device or process.” SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed.Cir.1988). See also Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1367 (Fed.Cir.2004)(“The court must first interpret the claim and determine the scope and the meaning of the asserted patent claims, and then compare the properly construed claims to the allegedly infringing device.”); Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1324 (Fed.Cir.2003)( “Because claim language defines claim scope, the first step in an infringement analysis is to construe the claims. * * * Thereafter, the properly construed claims are compared to the accused product or process to determine whether each of the claim limitations is met * * *.”); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998).

The first step of the infringement analysis, claim construction, is a question of law. See id. at 1451. The court must “examine the claims, the rest of the specification, and, if in evidence, the prosecution history” to determine “the scope and meaning of that which is allegedly infringed.” Amgen, 314 F.3d at 1324. See also Markman v. Westview Instrs., Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005).

The second step of the infringement analysis, comparison of the claim to the accused device, is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998); Liquid Dynamics, 355 F.3d at 1367. The trier of fact must determine whether, using the properly construed claims as a guide, every claim limitation or its equivalent is found in the accused device or process. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997).

Thus, literal infringement requires a showing that every limitation of at least one claim “reads on” or covers the accused device, i.e., that the accused device falls within the scope of at least one properly construed claim. See SmithKline, 859 F.2d at 889. “To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed.Cir.1995); Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed.Cir.1994)(“For literal infringement, each limitation of the claim must be met by the accused device exactly, any deviation from the claim precluding a finding of infringement.”). Accordingly, a claim cannot be literally infringed if any claim element or limitation is missing entirely from the accused product. See London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1539 (Fed.Cir.1991). Furthermore, “the addition of features does not avoid infringement, if all the elements of the patent claims have been adopted. Not is infringement avoided if a claimed feature performs not only as shown in the patent, but also performs an additional function.” N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 945 (Fed.Cir.1990) (citation omitted).

“For process or method patent claims, infringement occurs when a party performs all the steps of the process.” BMC Resources, 498 F.3d at 1379 (citing Joy., 6 F.3d at 773 (regarding making or selling industrial plan designed to enable use of patented system)). “Because a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves doing or performing each of the steps recited.” NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1318 (Fed.Cir.2005).

However, “[mjethod claims are only infringed when the claimed process is performed, not by the sale of an apparatus that is capable of infringing use.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed.Cir.2006). That is, “[t]he mere sale of an apparatus capable of performing the claimed process” is “not a direct infringement because a method or process claim is directly infringed only when the process is performed.” Joy, 6 F.3d at 773 (citing and discussing Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360 (Fed.Cir.1991)). “To hold that the sale of equipment which performs' a patented process is itself a direct infringement would make that portion of section 271(c) relating to the sale of an apparatus for use in practicing a patented process meaningless.” Joy, 6 F.3d at 774.

“In order to prove direct infringement, a patentee must either point to specific instances of direct infringement or show that the accused device necessarily infringes the patent in suit.” ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed.Cir.2007). Direct infringement may be shown through direct evidence as well as circumstantial evidence. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed.Cir.1986)(“It is hornbook law that direct evidence of a fact is not necessary”). Indeed, “[c]ircumstantial evidence is not only sufficient, but may also be more certain, satisfying and persuasive than direct evidence.” Id. at 1272 (quoting Michalic v. Cleveland Tankers, Inc., 364 U.S. 325, 330, 81 S.Ct. 6, 5 L.Ed.2d 20 (1960)).

B. Indirect Infringement

A patentee may also sue for indirect infringement — for inducing infringement and for contributory infringement.

1. Inducing Infringement

Inducing infringement is defined under § 271(b):

Whoever actively induces infringement of a patent shall be liable as an infringer.

As noted above, “direct infringement * * * is a prerequisite to indirect infringement.” Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1374 (Fed.Cir.2003). See also Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1033 (Fed. Cir.2002)(“It is well settled that there can be no inducement of infringement without direct infringement by some party.”).

To prevail on a charge of inducing infringement, the patentee must prove two additional elements after establishing the predicate act of direct infringement. First, the patentee must prove that the alleged inducer committed an act which constitutes inducement. For example, sales-related activities, including advertising, solicitation, and product instruction that encourage the infringing use may be acts constituting inducement. Biotec Biologische Naturverpackungen GmbH v. Biocorp, Inc., 249 F.3d 1341 (Fed.Cir.2001) (product manual instructed customers to use product so as to meet the patented limitation, thereby constituting an act of inducement). See Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354 (Fed.Cir.2006)(instruction sheets); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed.Cir.1986)(instruction sheet, puzzle solution booklet).

Second, the patentee must prove that the accused infringer intended to cause direct infringement. For example, the Federal Circuit en banc has held that “if an entity offers a product with the object of promoting its use to infringe, as shown by clear expression or other affirmative steps taken to foster infringement, it is then liable for the resulting acts of infringement by third parties.” DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed.Cir.2006). That is, “the intent requirement for inducement requires more than just intent to cause the acts that produce direct infringement Beyond that threshold knowledge, the inducer must have an affirmative intent to cause direct infringement. * * * Accordingly, inducement requires evidence of culpable conduct, directed to encouraging another’s infringement, not merely that the inducer had knowledge of the direct infringer’s activities.” Id. (citations omitted). See MEMC Elec. Materials v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed.Cir.2005)(Inducement requires “that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement.”); and Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005)(drawing on the inducement of infringement standard long applied in the patent law context and “holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”).

2. Contributory Infringement

Contributory infringement is defined under § 271(c):

Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

“[Djirect infringement * * * is a prerequisite to indirect infringement.” Alloc, Inc., 342 F.3d at 1374. See also Aro Mfg. Co. v. Convertible Top Replacement Co. (“Aro I”), 365 U.S. 336, 341, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)(“[T]here can be no contributory infringement in the absence of a direct infringement.”).

Beyond a showing of direct infringement, to prevail on a charge of contributory infringement, a patentee must prove two elements: (1) knowledge and (2) materiality. See DSU, 471 F.3d at 1303 (“[T]o prevail on contributory infringement, DSU must have shown that ITL made and sold the Platypus, that the Platypus has no substantial non-infringing uses in its closed-shell configuration, that ITL engaged in conduct (made sales) within the United States that contributed to another’s direct infringement, and that JMS engaged in an act of direct infringement on those sales that ITL made in the United States.”). As for knowledge, the plaintiff must prove that the defendant knew that the product was especially made or adapted for use in infringing the patented method. See Aro Mfg. Co. v. Convertible Top Replacement Co. (“Aro II”), 377 U.S. 476, 488, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964)(emphasis in original)(“It is only sale of a component of a patented combination ‘knowing the same to be especially made or especially adapted for use in an infringement of such patent’ that is contributory infringement under the statute.”); Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1469 (Fed.Cir.1990)(emphases in original)(“[o]nly proof of a defendant’s knowledge, not intent, that his activity cause infringement was necessary to establish contributory infringement”).

As for materiality, the patentee must prove that the product sold to the alleged direct infringer constituted a material part of the invention, i.e., that it is “a component especially made or adapted for use in the patented combination [and] is not a staple article suitable for substantial noninfringing use.” Preemption Devices v. Minn. Mining & Mfg. Co., 803 F.2d 1170, 1174 (Fed.Cir.1986). See Grokster, Ltd., 545 U.S. at 932, 125 S.Ct. 2764 (“This analysis reflected patent law’s traditional staple article of commerce doctrine, now codified, that distribution of a component of a patented device will not violate the patent if it is suitable for use in other ways. The doctrine was devised to identify instances in which it may be presumed from distribution of an article in commerce that the distributor intended the article to be used to infringe another’s patent, and so may justly be held liable for that infringement. * * * In sum, where an article is ‘good for nothing else’ but infringement, there is no legitimate public interest in its unlicensed availability, and there is no injustice in presuming or imputing an intent to infringe.”); Dawson Chem. Co. v. Rohm & Haas Co. 448 U.S. 176, 213, 100 S.Ct. 2601, 65 L.Ed.2d 696 (1980) (“[B]y enacting §§ 271(c) and (d), Congress granted to patent holders a statutory right to control nonstaple goods that are capable only of infringing use in a patented invention, and that are essential to that invention’s advance over prior art.”); Golden Blount, 365 F.3d at 1061 (“Thus, Blount must show that Peterson ‘knew that the combination for which its components were especially made was both patented and infringing.’ Further, Blount must show that Peterson’s components have no substantial noninfringing uses.” (quoting Preemption Devices)).

The question of whether a component is capable of substantial non-infringing use is a question of fact. See Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365 (Fed.Cir.2001) (upholding jury verdict of contributory infringement where there was a lack of substantial non-infringing uses); C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670 (Fed.Cir.1990)(summary judgment on contributory infringement inappropriate when there existed disputed material fact issues regarding substantial non-infringing use). A suggested non-infringing use must not be farfetched, illusory, impractical or merely experimental. See Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336 (Fed.Cir.2001).

C. Asserted Claims

Veritas asserts claims 1-5, 7-10, 13-19, 22-24, 26-30 and 32-33 of the ’573 patent. All are method claims. Of the asserted claims, claims 1,18, 30 and 33 are independent, and provide:

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.

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;

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.

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;

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.

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.

Also as noted above, the master construed disputed terms of the ’573 patent. See Markman RR.

D. The Parties’ Arguments

According to Microsoft, “Veritas alleges infringement by, and seeks damages on, each unit of Microsoft Windows® Vista (and other) operating system software ‘sold’ by Microsoft in the United States, under two theories. First, it alleges that these operating systems have certain built-in ‘backup and restore’ capabilities that can be used to infringe the ’573 Patent. Second, it alleges that software kits provided by Microsoft to computer manufacturers (OEMs) and to system administrators can be used to install these operating systems onto computers using a process that infringes the ’573 Patent.” Microsoft’s Brief at 1 (Microsoft’s emphases).

Microsoft illustrates the “fundamental flaw in Veritas’ case” by the following “hypothetical:”

A (hypothetical) patent claims a method of installing a spare tire (in case of a flat) by loosening and tightening the lug nuts in a particular order. A retailer sells a kit including a spare tire, a lug wrench, a jack, and instructions describing several installation methods, including the patented one. The patent’s owner complains that these kits unfairly embody the patented invention to take sales rightfully belonging to the patent holder, and seeks damages on each such kit sold by the retailer. Under U.S. Patent Law, the patent owner loses. It loses because its patent is on a method, not on a kit. The spare-tire-installation method patent is not infringed by selling the kit, even if the kit gives its buyers the capability to practice the patented method, and even if each kit takes a sale from the patent owner. The kit does not infringe, moreover, even though much of the psychological benefit of the patent’s technique — namely, giving the driver ease of mind — is achieved by merely having the kit stored in the trunk. Rather, the spare-tire-installation method patent is infringed only in the rare event that the driver actually puts the kit in the trunk, has a flat tire, and, in the U.S., changes the flat using the patented steps.

Microsoft’s Brief at 2 (Microsoft’s emphases).

That is, Microsoft argues, “for each asserted patent claim and for each accused software offering of Microsoft, Veritas must prove that a third-party, with no license or authorization from the patent owner or its agent, directly infringed the asserted method claim in the U.S. using that software.” According to Microsoft, “[i]t is unlikely that Veritas will be able to prove any instance of direct infringement using the accused software” because of the complexity of proof required. Microsoft urges, for example, that for Veritas “to prove direct infringement of independent claim 30, Veritas must prove, among other things, that someone in the U.S., without authority of the patent owner or its agent, used Microsoft’s accused software kits to copy an operating system from a disk drive of a master computer — configured with the desired configuration for a target computer — to a first media, and to copy configuration-specific data files from that same disk drive of the master computer to a second media, and then used that second media to load that identically configured operating system on to the target computer.” Id. at 19 (Microsoft’s emphasis).

Veritas responds that “[c]ontrary to Microsoft’s assertion, proof of indirect infringement does not require that the pat-entee provide proof of each individual instance of underlying direct infringement. Rather, indirect infringement under §§ 271(b) and (c) of a method claim may be proven by evidence that a broad class of users (such as Microsoft’s OEM and/or enterprise customers) directly infringe the patented methods,” and that “[s]uch proof of underlying direct infringement can be satisfied by circumstantial evidence.” Veritas proffers evidence said to show infringement, namely, (1) “advertisements and instructions that encourage infringing use despite the lack of any first-hand evidence of direct infringement by customers can provide sufficient circumstantial evidence of inducement,” (2) “testimony of the defendant’s own witnesses concerning the typical ways in which the accused products are used by customers, constitutes strong evidence of the underlying direct infringement”, and (3) “direct evidence in the form of documents and testimony that certain customers and internal Microsoft testers are actually using the accused products in an infringing manner constitutes proof of direct infringement as well.” Veritas’ Response at 7-8.

Microsoft asserts that “Veritas has not offered particularized, admissible evidence that any specific customer has used the accused software in a method that practices each step of any claim, in the U.S. and without authority.” Microsoft further argues that Veritas’ “expert’s claim charts map the claims to capabilities, not to actions of customers” “[a]nd, all the evidence of use Veritas submits is inadmissible, and thus cannot be considered on this motion for summary judgment.” Microsoft’s Reply at 5 (Microsoft’s emphasis). Microsoft also asserts that Veritas misrepresents the testimony of all of Microsoft’s deponents, and misstates controlling law.

The parties’ arguments are discussed in more detail below.

E. Discussion

Overall, Microsoft does not dispute that the accused products are capable of performing the methods of the asserted claims.

1. The Accused Products

Veritas accuses “Microsoft’s recommended system deployment tools and procedures for Windows Vista, Windows Server 2008 (formerly known as Longhorn), Windows XP and Windows Server 2003, and system recovery tools and procedures for Windows Vista and Windows Server 2008” of infringing the asserted claims. Veritas’ Response at 1.

Generally, Veritas presents its infringement case through its expert, Dr. Nichols. Dr. Nichols examined the following products:

System Deployment for Windows XP / Server 2003 and Windows Vista / Server 2008

Microsoft’s packages for deployment include:

■ Windows Automated Installation Kit (WAIK)

■ OEM Preinstallation Kit (OPK)

■ Business Desktop Deployment

These packages include some or all of the following components:

■ Windows Preinstallation Environment (WinPE)

■ ImageX

■ WIMfile format

■ Windows System Image Manager (SIM)

■ Sysprep (System Preparation)

There may be other WinPE-based scenarios recommended by Microsoft

System Backup and Restore for Windows Vista / Server 2008

Built-in capabilities in Windows Vista / Server 2008

■ Vista Complete PC Backup and Restore

■ Server 2008 Backup and Recovery

These packages rely on the following:

■ Windows Recovery Environment (WinRE)

■ Windows Preinstallation Environment (WinPE)

■ VHD file format

See Declaration of Michael J. Sehallop in Support of Veritas Software Corporation’s Opposition to Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claim of Infringement of U.S. Patent No. 5,469,573 (“Sehallop Deck”), Exh. B: Infringement Expert Report of A.J. Nichols, Ph.D. (“Nichols Infringement Report”).

Overall, “Veritas has accused specific combinations of Accused Products recommended by Microsoft for use in the infringing system recovery and system deployment scenarios.” In a footnote, Veritas urges that “[f]or the recovery scenarios, Veritas is accusing the following features based on Microsoft’s recommendations: Complete PC Backup and Restore of Windows Vista (Premium, Ultimate and Enterprise Editions) and Backup and Restore of Microsoft’s forthcoming Windows Server 2008. For the deploying scenarios, Veritas is accusing the following features based on Microsoft’s recommendations: Windows XP, Server 2003, Vista, and Server 2008 include combinations of the following: the OEM Preinstallation Kit (OPK), Windows Automated Installation Kit (WAIK), Business Desktop Deployment (BDD) tools, using the following components in their system deployment tools and procedures: Windows Preinstallation Environment (WinPE), ImageX, Windows Imaging (WIM) image file format, Windows System Image Manager (SIM), Sysprep (System Preparation), Setup Manager. All of these products collectively, when used to deploy or recover Windows operating systems will be referred to herein as ‘Accused Products.’ ” Veritas’ Response at 4 at n. 5.

a) System Deployment

With respect to system deployment, Dr. Nichols contends that Windows Vista and Windows Server 2008 include Windows Automated Installation Kit (“WAIK”), OEM Preinstallation Kit (“OPK”), and Business Desktop Deployment (“BDD”), and that an earlier version of OPK supported Windows XP and Windows Server 2003. See Nichols Infringement Report at 9.

The WAIK, Dr. Nichols contends, “is a tool to simplify and speed up the process of configuring multiple numbers of computers with the same Windows operating system. It is intended for use by the IT department in an organization to simplify the setup of similar computer systems throughout the organization. WAIK depends on Windows PE, ImageX, and the WIM image file format.” According to Dr. Nichols, deploying WAIK consists of the following steps:

1. Setting up a lab environment to fully configure the desired operating system. This environment is built upon a computer referred to as the “Technician Computer”.

2. Deciding what features will be incorporated into the operating system by providing an “Answer File”.

3. Building the desired system (a master installation) on another computer called the “master computer” (a model system).

4. Creating an image of the Master Computer on the first media and creating a Windows PE media (a second media).

5. Initializing Windows PE on the “destination computer” (a target system) using the second media.

6. Deploying the image onto one or more Destination Computers.

7. Initializing the Destination Computer by the user and running a fully configured Windows operating system.

Nichols Infringement Report at 9. Dr. Nichols urges that steps 4 — 7 “involve infringement” of the asserted claims, and provides Exhibit E, which includes “screen shots” said to “show Microsoft’s recommended process of creating and customizing the Windows PE media (the second media), capturing the image of the fully configured Windows operating system from the Master Computer (the first media), initializing the Destination Computer with the Windows PE media, partitioning and formatting the disk drive, loading the fully configured operating system onto the disk drive, and re-initializing with the fully configured Windows operating system.” According to Dr. Nichols, the “screenshots were generated using the recommended deployment procedures described in the Windows Automated Installation Kit (Windows AIK) User’s Guide.” Id. at Exh. E.

The OPK, according to Dr. Nichols, “is practically identical to WAIK; the major difference being that here the OPK is installed on the Technician Computer instead of the WAIK.” Nichols Infringement Report at 11.

Use of the BDD, Dr. Nichols urges, “implies use of the WAIK,” and that “[i]t is only necessary to examine the relationship of WAIK to the ’573 patent to determine the relationship of BDD to the patent.” Id.

Further with respect to system deployment, Dr. Nichols includes claim charts said to show infringement by the (1) “deployment tools and procedures for Windows Vista and Windows server 2008,” see id. at 16 & Exh. F, and (2) “deployment tools and procedures for Windows XP and Windows Server 2003,” see id. at 16 & Exh. G.

b) System Backup & Recovery

With respect to system backup and recovery, Dr. Nichols points to the “built-in backup and restore components” of Windows Vista and Windows Server 2008 as infringing. Dr. Nichols provides a claim chart said to show infringement by the “system recovery tools and procedures for Windows Vista and Windows Server 2008, comprising Windows RE, Complete PC Backup and Restore (for Windows Vista) and Server 2008 Backup and Recovery (for Windows Server 2008).” See Nichols Infringement Report at 16, Exh. H.

2. Uses of the Accused Products

a) Infringing Uses

As noted above, Microsoft does not — at least in its present motion — dispute that the accused products are capable of being used to perform the method steps of the asserted claims. See Microsoft’s Reply at 5 (Microsoft’s emphasis) (Dr. Nichols’ “claim charts map the claims to capabilities, not to actions of consumers.”).

b) Substantial Non-Infringing Uses

However, Microsoft urges that the accused products also have substantial non-infringing uses, as well. Microsoft provides a table said to show “18 exemplary ways of using the accused software * * * that do not even arguably infringe,” and of those, particularly points out “seven indisputable examples of the myriad substantial non-infringing uses of the accused software.” See Microsoft’s Brief at 15 & 5, and Declaration of Xuan-Giang Tran in Support of Microsoft Corporation’s Motion for Summary Judgment on Veritas’ Claims of Infringement of U.S. Patent No. 5,469,573 (“Tran Decl.”), APX0192-94: Table A — Non-infringing Uses. See also Tran Deck, APX0015-90: Rebuttal Expert Report of Mark Morrissey (“Morrissey Rebuttal Report”) at 21-65 (detailing substantial non-infringing uses). Microsoft argues that “Veritas cannot meet its burden of proof on this issue for ahy combination of an asserted patent claim and an accused item of Microsoft software,” and that Veritas’ expert, “Dr. Nichols, admitted several non-infringing uses in his deposition, and admitted that he had not even tried to identify or quantify the non-infringing uses of the accused software, and that he is not an expert in how OEMs or system administrators deploy operating systems.” Microsoft’s Brief at 14.

Microsoft elaborates on seven particular scenarios:

1.“Install OS Using DVD and ‘Answer File’: One primary and substantial use of the accused WAIK (or OPK or BDD) software kit is to create an ‘Answer file’ that stores various configuration choices, and helps automate installation of the operating system (OS) onto a computer. • Then, use a generic operating system (OS) installation DVD to install the OS onto a computer, having the OS’s set-up program look to the Answer file for the necessary configuration choices. Veritas’ expert Dr. Nichols admitted in deposition that this is a non-infringing use of WAIK.”

2. “Install OS Using Hard Disk Duplication: Another substantial non-infringing use of OPK is to install the OS onto a hard disk using [this method] or other non-infringing technique. Then, copy that configured operating system onto multiple hard disks connected to a hard disk duplication machine, and then remove those hard disks and install them into computers.”

3. “Install Win RE and Win RE Onto a Computer For Diagnostics and Repair: The accused software toolk-its are like physical toolkits: one can use the pliers without ever using the hammer, file, wrench or other tools in the kit. Here, for example, another substantial non-infringing use of OPK, WAIK and BDD is to use Microsoft’s Win PE (Preinstallation Environment) 2.0 software — provided with WAIK, OPK and BDD— without using any other tool provided in the accused WAIK, OPK or BDD software kits.” For example, ‘Win PE 2.0 is integrated with Window Recovery Environment (Window RE)” and constitutes a non-infringing use such that “[a]n OEM or system administrator can install Win PE and Win RE onto a computer, without using the accused OS deployment methods.” According to Microsoft, “Dr. Nichols admitted in deposition that Win PE and Win RE can be used together in a non-infringing way, for diagnosis and repair of various problems.”

4. “Other Substantial Non-infringing Uses of Win PE 2.0: Dr. Nichols in deposition, and Mr. Morrissey in his expert report/declaration, have identified several other non-infringing uses of the Win PE 2.0 tool provided in the accused software kits. For example, Win PE can be used to perform the following functions without even arguably infringing the ’573 patent: (1) create or edit ‘Boot Configuration Data (BCD)’ stores that describe boot applications and boot application settings, (2) restore the boot sector on a computer, (3) map network drives, (4) create new physical or logical drives, (5) partition and format existing drives, (6) otherwise manage disks, partitions, or volumes, etc. Indeed, Dr. Nichols himself has written a computer program that uses Win PE 2.0 in a non-infringing way.”

5. “Install Or Recover OS By Booting Win PE From Hard Disk: Veritas alleges that Win PE serves the role of the ‘temporary operating system’ of the ’573 patent claims. The claims require that the temporary OS be provided by ‘second media’ that, as found by the Special Master and not challenged by Veritas, is ‘physically distinct’ from the storage device. Another substantial non-infringing use of Win PE 2.0 is to store it on the computer’s hard disk and, either in deployment or in a crash recovery situation, ‘flat boot’ the computer from that hard disk.” Microsoft argues that “[u]sed in that manner, the alleged temporary OS is not on a physically distinct media, so this is another non-infringing use of the accused software.”

6. “Use OS Without Using The Accused Backup and Restore Functionality: As Dr. Nichols admitted, one can use Windows® Vista and Window© Server 2008 with more than one hundred different applications without infringing the patent, and as he further admitted, these operating system have substantial non-infringing uses.”

7. “Use The Accused Backup and Restore Functionality To Backup, But Not Restore: As Dr. Nichols also admitted, one can use the accused backup and restore feature (e.g., Complete PC Backup and Restore built into Windows Vista) and not infringe the ’573 Patent, by using it to backup files but then not restoring those files. A computer user is no more required to later restore those files to the computer than a car driver is required to install a spare tire. Dr. Nichols admitted that this backup-but-no-restore was a substantial non-infringing use of the OS an of the accused built-in functionality of the OS.”

Microsoft’s Brief at 5-8 (Microsoft’s emphases).

In rebuttal, Veritas relies on the testimony of its expert, Dr. Nichols, and particularly on Exhibit I to Dr. Nichols’ expert report of July 17, 2007 (Nichols Infringement Report), and Exh. L of Dr. Nichols’ expert report of August 14, 2007 (Nichols Validity Report). See Nichols Infringement Report, Exh. I at 1-1 — 1-17 & Nichols Validity Report, Exh. L at L-l — L-ll. Exhibit I is a table entitled “Evidence of Infringement,” and is 17 pages long. Exhibit I, furthermore, references Exhibit F to the July report. Exhibit F is a table entitled “Claim Chart vs. Vista / Server 2008 System Deployment,” and is 22 pages long. See Nichols Infringement Report, Exh. F at F-l — F-22. Exhibit L is a table entitled “Supplemental Evidence of Infringement,” and is 11 pages long. Veri-tas cites generally to those exhibits, and does not point out any specific instance in which Dr. Nichols addresses any of the scenarios posited by Microsoft. Nor does Veritas particularly point the Court to anything in those exhibits tending to raise a genuine issue of material fact regarding Microsoft’s assertion that the accused products do not have substantial non-infringing uses. Nor is any such instance apparent upon review of the exhibits, which the master has done despite Veritas’ lack of particularity. See Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1031 (9th Cir.2001)(“We hold that the district court may determine whether there is a genuine issue of fact, on summary judgment, based on the papers submitted on the motion and such other papers as may be on file and specifically referred to and facts therein set forth in the motion papers. Though the court has discretion in appropriate circumstances to consider other materials, it need not do so. The district court need not examine the entire file for evidence establishing a genuine issue of fact, where the evidence is not set forth in the opposing papers with adequate references so that it could conveniently be found.”).

In his July report, Dr. Nichols opined that “Microsoft’s infringing tools and procedures have no substantial non-infringing uses.” Nichols Infringement Report at 16. However, Dr. Nichols conceded during deposition that the foregoing statement “is unqualified and it should be qualified,” and provided the qualification that “I believe that I have seen no evidence of substantial non-infringing use.” See Tran Deck, APX0112-66: Deposition Excerpts of A.J. Nichols, Ph.D. (“Nichols Dep.”) at 237:7-239:25. That is consistent with Dr. Nichols’ statement in his July report that “[t]he Windows automated installation Kit, OEM Pre