Case: 21-2263     Document: 67           Page: 1       Filed: 04/12/2023




   United States Court of Appeals
       for the Federal Circuit
                   ______________________

            SEQUOIA TECHNOLOGY, LLC,
                 Plaintiff-Appellant

                                   v.

  DELL, INC., DELL TECHNOLOGIES INC., EMC
   CORPORATION, AKA DELL EMC, HEWLETT-
 PACKARD ENTERPRISE CO., HITACHI VANTARA
 CORPORATION, SUPER MICRO COMPUTER, INC.,
                 HITACHI LTD.,
               Defendants-Appellees
              ______________________

       2021-2263, 2021-2264, 2021-2265, 2021-2266
                ______________________

     Appeals from the United States District Court for the
 District of Delaware in Nos. 1:18-cv-01127-LPS-CJB, 1:18-
 cv-01128-LPS-CJB,      1:18-cv-01129-LPS-CJB,    1:18-cv-
 01307-LPS-CJB, Judge Leonard P. Stark.

            -------------------------------------------------

                    RED HAT, INC.,
        Plaintiff/Counterclaim Defendant-Appellee

                                   v.

           SEQUOIA TECHNOLOGY, LLC,
       Defendant/Counterclaim Plaintiff-Appellant

   ELECTRONICS AND TELECOMMUNICATIONS
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 2                    SEQUOIA TECHNOLOGY, LLC   v. DELL, INC.



                RESEARCH INSTITUTE,
                  Defendant-Appellant

                             v.

 INTERNATIONAL BUSINESS MACHINES CORPO-
                   RATION,
        Counterclaim Defendant-Appellee
            ______________________

                        2021-2267
                  ______________________

     Appeal from the United States District Court for the
 District of Delaware in No. 1:18-cv-02027-LPS-CJB, Judge
 Leonard P. Stark.
                  ______________________

                  Decided: April 12, 2023
                  ______________________

    ANDREI IANCU, Irell & Manella LLP, Los Angeles, CA,
 argued for Sequoia Technology, LLC, Electronics and Tele-
 communications Research Institute. Also represented by
 ALAN J. HEINRICH; PHILIP J. WARRICK, Washington, DC;
 JOHN E. LORD, Skiermont Derby, LLP, Los Angeles, CA;
 WILLIAM J. O'BRIEN, One LLP, Newport Beach, CA.

     JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
 DC, argued for Dell, Inc., Dell Technologies Inc., EMC Cor-
 poration, Hewlett-Packard Enterprise Co., Hitachi Van-
 tara Corporation, Super Micro Computer, Inc., Hitachi
 Ltd., Red Hat, Inc., International Business Machines Cor-
 poration. Also represented by STEPHEN DESALVO; CHRIS-
 TOPHER DECORO, TODD M. FRIEDMAN, New York, NY;
 HERSH H. MEHTA, Benesch Friedlander Coplan & Aronoff
 LLP, Chicago, IL.
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 SEQUOIA TECHNOLOGY, LLC   v. DELL, INC.                     3



   JACK B. BLUMENFELD, Morris, Nichols, Arsht & Tunnell
 LLP, Wilmington, DE, for Red Hat, Inc.

    BRIAN P. EGAN, Morris, Nichols, Arsht & Tunnell LLP,
 Wilmington, DE, for International Business Machines Cor-
 poration.
                 ______________________

      Before LOURIE, DYK, and STOLL, Circuit Judges.
 STOLL, Circuit Judge.
      Sequoia Technology, LLC appeals from a stipulated
 judgment of noninfringement and invalidity of 

 following an adverse claim construction rul-
 ing from the United States District Court for the District of
 Delaware. For the reasons below, we disagree with the dis-
 trict court’s claim construction for “computer-readable re-
 cording medium,” and thus we reverse the district court’s
 ineligibility determination under 

. In addi-
 tion, we agree with the district court’s claim construction
 for “disk partition” and “logical volume,” and thus we af-
 firm the district court’s noninfringement determination.
                         BACKGROUND
                               I
      The technology at issue is digital storage. The ’436 pa-
 tent explains that servers with important data can use “Re-
 dundant Array of Independent Disks” (RAID) to store the
 same data on multiple hard disks. See ’436 patent col. 1
 ll. 26–32. The specification further notes how a virtual
 disk drive—also known as a logical volume—can encom-
 pass multiple physical disk drives. 

 at col. 1 ll. 24–28. A
 logical volume manager can implement the RAID tech-
 nique with software to construct a logical volume. 

 The
 specification teaches that these advances were known, but
 “conventional logical volume managers ha[d] problems in
 that metadata is too large to manage in huge storage
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 4                      SEQUOIA TECHNOLOGY, LLC    v. DELL, INC.



 structures and processing speed is too slow when modifying
 metadata.” 

 at col. 3 ll. 42–64. Continuing, the specifi-
 cation explains that “for managing a logical volume, the
 huge size of metadata delays system booting time and uses
 too much memory.” 

 at col. 3 ll. 43–45.
      The ’436 patent purports to address these problems.
 The patent is directed to “a method for managing a logical
 volume for minimizing a size of metadata and supporting
 dynamic online resizing,” as well as “a computer-readable
 recording medium storing a program or data structure for
 embodying the method.” 

 at Title, Abstract, col. 1
 ll. 10–14, col. 3 l. 66–col. 4 l. 6. The specification explains
 that “using a disk partition as a volume construction unit”
 for the logical volume minimizes metadata. 

 at col. 11
 l. 66–col. 12 l. 2.
      The patent describes a preferred embodiment that has
 three storage virtualizations: extents, disk partitions, and
 the logical volume. 

 at col. 6 l. 55–col. 7 l. 20. Extents
 are the “minimum unit of space allocation to store infor-
 mation” and make up disk partitions. 

 at col. 7 ll. 1–3,
 col. 12 l. 42–43. Disk partitions are the “minimum unit of
 the logical volume.” 

 at col. 6 ll. 60–61. And “[t]he logi-
 cal volume is a union of disk partitions,” which can be
 resized in disk partition units. 

 at col. 6 ll. 64–67.
     Claims 1–3 and 8 are at issue on appeal. Claim 1 is
 representative and recites:
     1. A method for managing a logical volume in order
     to support dynamic online resizing and minimizing
     a size of metadata, said method comprising steps
     of:
         a) creating the logical volume by gathering
         disk partitions in response to a request for
         creating the logical volume in a physical
         storage space;
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 SEQUOIA TECHNOLOGY, LLC   v. DELL, INC.                     5



        b) generating the metadata including infor-
        mation of the logical volume and the disk
        partitions forming the logical volume and
        storing the metadata to the disk partitions
        forming the logical volume,
        c) dynamically resizing the logical volume
        in response to a request for resizing, and
        modifying the metadata on the disk parti-
        tions forming the logical volume; and
        d) calculating and returning a physical ad-
        dress corresponding to a logical address of
        the logical volume by using mapping infor-
        mation of the metadata containing infor-
        mation      of   the   physical    address
        corresponding to the logical address,
        wherein the metadata includes,
            a disk partition table containing in-
            formation of a disk partition in
            which the metadata is stored;
            a logical volume table for maintain-
            ing the information of the logical
            volume by storing duplicated infor-
            mation of the logical volume onto
            all disk partitions of the logical vol-
            ume;
            an extent allocation table for indi-
            cating whether each extent in the
            disk partition is used or not used;
            and
            a mapping table for maintaining a
            mapping information for a physical
            address space corresponding to a
            logical address space which is a
            continuous address space equal in
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 6                     SEQUOIA TECHNOLOGY, LLC     v. DELL, INC.



            size of storage space to an entirety
            of said logical volume.
 

 at col. 12 ll. 17–48 (emphases added to highlight dis-
 puted limitations). Independent claim 8 mirrors claim 1
 except for the preamble, which recites a “computer-reada-
 ble recording medium storing instructions for executing a
 method.” 

 at col. 13 ll. 30–33.
                              II
     Sequoia is the exclusive licensee of the ’436 patent,
 which is owned by Electronics and Telecommunications
 Research Institute (ETRI). The accused product is Red
 Hat, Inc.’s software tool that can create and resize logical
 volumes with units smaller than a whole disk partition,
 such as extents.
      Initially, Sequoia filed complaints against certain Red
 Hat customers “that make or sell products or services in-
 corporating the accused products.” Appellees’ Br. 16 (citing
 Sequoia Tech., LLC v. Dell Inc., No. 18-cv-1127, 

, at *1 (D. Del. Oct. 1, 2020) (“Report”), report and
 recommendation adopted, No. 18-cv-1127, 

 (D. Del. May 20, 2021) (“Decision”)). Red Hat then
 filed a complaint against Sequoia, and later ETRI, seeking
 a declaratory judgment of noninfringement and invalidity.
 Report, 

, at *1. Sequoia counterclaimed
 against Red Hat and its parent company, International
 Business Machines Corp., for infringement. Sequoia Tech.,
 LLC v. Dell Inc., No. 18-cv-1127, 

, at *1
 (D. Del. Aug. 16, 2021), judgment entered, No. 18-cv-1127,
 

 (D. Del. Aug. 16, 2021) (“Final Judg-
 ment”). The district court judge consolidated the cases and
 referred the claim construction disputes to a magistrate
 judge. Report, 

, at *1. During litigation,
 Red Hat filed two petitions for inter partes reviews (IPRs),
 and the U.S. Patent and Trademark Office denied institu-
 tion in both. Red Hat, Inc. v. Elecs. & Telecomms. Research
 Inst., Case No. IPR2019-00465, Paper No. 15 (P.T.A.B.
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 SEQUOIA TECHNOLOGY, LLC   v. DELL, INC.                    7



 June 13, 2019); Red Hat, Inc. v. Elecs. & Telecomms. Re-
 search Inst., Case No. IPR2019-00467, Paper No. 14
 (P.T.A.B. July 10, 2019).
     Relevant to this appeal, the parties disputed the con-
 struction of several claim terms. Specifically, the parties
 disputed the construction of: “computer-readable record-
 ing medium”; “disk partition”; “logical volume”; and, re-
 lated to the latter two claim construction issues, construed
 the term “used or not used” in the context of an extent’s
 usage in an “extent allocation table.”
      The magistrate judge adopted Red Hat’s construction
 and construed “computer-readable recording medium” to
 include transitory media (i.e., signals or waves). Final
 Judgment, 

, at *2. He looked to the spec-
 ification, which discusses “computer readable medium” as
 “including” a list of items—none of which are transitory—
 and interpreted that language as leaving the door open for
 media that could be transitory. 1 Report, 

,
 at *14 (citing ’436 patent col. 11 ll. 36–39). He also relied
 on Red Hat’s expert’s analysis that a person of ordinary


     1   Transitory media is “fleeting” and “devoid of any
 semblance of permanence during transmission.” In re
 Nuijten, 

 (Fed. Cir. 2007). It can be
 physical, like “radio broadcasts, electrical signals through
 a wire, and light pulses through a fiber-optic cable,” but
 does not possess concrete structure that would qualify as a
 device or machine. 

. By contrast, non-
 transitory media can encompass a concrete structure like a
 “random-access memory” or “optical data storage device”
 and be a manufacture, matter, machine, or process. See
 Mentor Graphics Corp. v. EVE-USA, Inc., 

 (Fed. Cir. 2017) (explaining that the challenged claim
 included patent-eligible embodiments, like “random-access
 memory” or “optical data storage device,” that—unlike a
 carrier wave—would not run afoul of Nuijten).
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 8                      SEQUOIA TECHNOLOGY, LLC    v. DELL, INC.



 skill in the art would have understood “computer-readable
 recording medium” to include transitory media; a conclu-
 sion the expert reached based on express definitions in
 thirty-four contemporaneous patents and patent applica-
 tions. 

 In adopting the magistrate judge’s Report and
 Recommendation, the district court concluded that no clear
 language in the specification excluded transitory media, so
 the extrinsic evidence was persuasive, “particularly given
 the lack of any substantive rebuttal from Sequoia’s expert.”
 Decision, 

, at *3. Because transitory me-
 dia are ineligible statutory subject matter under
 

, see In re Nuijten, 

 (Fed. Cir. 2007), the court entered a stipulated judg-
 ment of invalidity of claims 8–10 based on its construction
 of “computer-readable recording medium.” Final Judg-
 ment, 

, at *2.
     As for “disk partition” and “logical volume,” the district
 court agreed with Red Hat and construed a “disk partition”
 to mean a “section of a disk that is a minimum unit of a
 logical volume” and a “logical volume” to mean an “exten-
 sible union of more than one disk partition, the size of
 which is resized in disk partition units.” 

 at *1–2. The
 district court’s construction thus requires that a logical vol-
 ume is constructed by whole disk partitions, not subparts
 of disk partitions such as extents.
     Finally, the district court construed the phrase “used
 or not used” in the limitation “extent allocation table for
 indicating whether each extent in the disk partition is used
 or not used.” Decision, 

, at *1. Adopting
 Red Hat’s construction, the court held that “used or not
 used” means that an extent “is or is not storing infor-
 mation.” 

     Following claim construction, the parties stipulated to
 final judgment that, under the district court’s claim con-
 struction of “logical volume” and “disk partition,” the ac-
 cused products do not infringe the asserted claims and
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 SEQUOIA TECHNOLOGY, LLC   v. DELL, INC.                     9



 that, under the district court’s construction of “computer-
 readable recording medium,” claims 8–10 are ineligible un-
 der § 101. The district court entered judgment accordingly.
 The interpretation of the term “extent allocation table” was
 not subject to the stipulation, but its interpretation affects
 the construction of “disk partition” and “logical volume.”
     Sequoia appeals. We have jurisdiction under 

(a)(1).
                         DISCUSSION
     We review claim construction based on intrinsic evi-
 dence de novo and review factual findings about extrinsic
 evidence for clear error. SpeedTrack, Inc. v. Amazon.com,
 

, 1378 (Fed. Cir. 2021) (citing Teva Pharms.
 USA, Inc. v. Sandoz, Inc., 

, 331–32 (2015)).
 Factual findings are clearly erroneous when, although
 there is supporting evidence, “the reviewing court on the
 entire evidence is left with the definite and firm conviction
 that a mistake has been committed.” United States v. U.S.
 Gypsum Co., 

 (1948).
     On appeal, Sequoia challenges the district court’s con-
 struction of (1) “computer-readable recording medium,” un-
 derlying the court’s judgment of ineligibility of claims 8–10
 under § 101; and (2) “disk partitions,” “logical volumes,”
 and “used or not used,” underlying the court’s finding of
 noninfringement. We address each issue in turn.
                               I
     We start with ineligibility and Sequoia’s argument that
 the district court erred in construing “computer-readable
 recording medium storing instructions” as including tran-
 sitory media. Appellant’s Br. 41–50. Because the intrinsic
 evidence supports Sequoia’s interpretation, we agree that
 the court erred.
    We start with the claim language. See Personalized
 Media Commc’ns, LLC v. Apple Inc., 

, 1340
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 10                    SEQUOIA TECHNOLOGY, LLC    v. DELL, INC.



 (Fed. Cir. 2020) (explaining how we first, and primarily,
 rely on intrinsic evidence like claim language when con-
 struing claim terms). At the outset, we note that the claim
 language does not actually recite a “computer-readable me-
 dium” or CRM. Instead, it more narrowly recites “com-
 puter-readable recording medium storing instructions.”
 ’436 patent col. 13 ll. 29–30 (emphases added). As Sequoia
 asserts, a person of ordinary skill would not understand
 transitory signals, such as carrier waves, to record or store
 instructions in memory systems. This is because transitory
 signals, by their very nature, are fleeting and do not persist
 over time. Other elements in the claim confirm that the
 claim is directed to hardware as opposed to transitory
 waves or signals. 2 For example, the claim recites “creating
 the logical volume . . . in a physical storage space,” 

 at col. 13 ll. 33–35, and “storing [sic] metadata to the disk
 partitions,” 

 at col. 13 ll. 38–39. The claim language
 thus demonstrates that claim 8 is not directed to a transi-
 ent signal, but rather to a non-transient storage medium.
     In our view, the specification further supports this con-
 struction. See Phillips v. AWH Corp., 

 (Fed. Cir. 2005) (en banc) (characterizing the specification
 as highly relevant and “the single best guide to the mean-
 ing of a disputed term”) (citation omitted); Trs. of Columbia
 Univ. v. Symantec Corp., 

 (Fed. Cir.
 2016). The specification discloses only non-transitory me-
 dia. The specification states: “[T]he present invention can
 be stored in a computer readable medium including com-
 pact disc read only memory (CDROM), random access
 memory (RAM), floppy disk, hard disk, and magneto-




      2   The specification states that the invention “can be
 embodied in hardware or software.” 

 at col. 3 l. 1. Even
 if the recording and storage were implemented in software,
 this is not the same as a transitory signal.
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 SEQUOIA TECHNOLOGY, LLC   v. DELL, INC.                    11



 optical disk.” ’436 patent col. 11 ll. 36–39. Every example
 is hardware.
      On appeal, Red Hat emphasizes, as it did before the
 district court, that the specification states that CRM “in-
 clud[es]” non-transitory media, and thus its definition is
 open-ended and could include transitory media. Appellees’
 Br. 73–74. It is true that we have held that the term “in-
 cluding” is open-ended. See, e.g., Lucent Techs., Inc.
 v. Gateway, Inc., 

 (Fed. Cir. 2008). But
 this does not mean that “computer-readable recording me-
 dium storing instructions” as used in claim 8 and the spec-
 ification is fairly understood to include transitory signals.
 “[C]laims . . . do not have meaning removed from the con-
 text from which they arose.” Netword, LLC v. Centraal
 Corp., 

 (Fed. Cir. 2001); see Phillips,
 

 (explaining the importance of reading a
 claim in the context of the entire patent). Here, not only is
 the claim term narrower—including the phrases “record-
 ing” and “storing”—but also Red Hat’s proposed construc-
 tion hardly makes sense in the context of the disclosed
 invention, which relates to hardware storage and says
 nothing about signals. Indeed, it is hard to imagine how
 the invention would be implemented as a signal. The spec-
 ification states that an object of the invention is to provide
 “a computer-readable recording medium storing a program
 or data structure”—which seems irreconcilable with a tran-
 sitory signal. See ’436 patent col. 1 ll. 12–13, 19–20, col. 4
 ll. 5–6, 25–26. In short, the use of a term denoting a non-
 exhaustive list does not eviscerate our obligation to con-
 strue terms in the context of the entire patent. The context
 here makes clear that the term “computer-readable record-
 ing medium” cannot encompass transitory media.
     Our decision rests solely on the intrinsic evidence. We
 are unpersuaded by Red Hat’s arguments to the contrary,
 which rest on extrinsic evidence. See Appellees’ Br. 69–72.
 To this end, we find that the district court clearly erred in
 considering Red Hat’s expert testimony, which is both
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 12                    SEQUOIA TECHNOLOGY, LLC    v. DELL, INC.



 inconsistent with the intrinsic evidence and also based on
 different express definitions of CRM in patent specifica-
 tions directed to different inventions.
     First, Red Hat relies on its expert’s analysis of thirty-
 four contemporaneous patents and patent applications to
 support its argument that a person of ordinary skill under-
 stood “computer-readable recording medium” to encompass
 transitory media.          Appellees’ Br. 69–71 (citing
 J.A. 551–59). This evidence merely shows that in thirty-
 four other specifications, the inventors chose to be their
 own lexicographers and expressly defined CRM or like
 terms to include transitory media. The inventors here
 chose otherwise. That other inventors chose to be their
 own lexicographers and define CRM to include transitory
 signals does not demonstrate what CRM means in the con-
 text of the ’436 patent. Nor does it establish the plain and
 ordinary meaning of the claim term “computer-readable re-
 cording medium for storing.”
     Red Hat also relies on our decision in Mentor Graphics
 Corp. v. EVE-USA, Inc., 

 (Fed. Cir.
 2017). But Mentor Graphics does not support Red Hat’s
 construction. There, we affirmed the district court’s con-
 struction of “computer readable medium” as including
 transitory signals based on the specification’s express defi-
 nition, which included “carrier waves.” 

 Our holding
 rested on the fundamental principle that “[a] patentee is
 free to be his own lexicographer.” 

 We emphasized that
 “[e]ven though carrier waves differ greatly from the other
 disclosed mediums (such as CD-ROMs or magnetic tape),
 we are bound by the patentee’s lexicography.” 

 We did
 not address the situation where, as here, the patentee did
 not expressly define CRM to include carrier waves or other
 transitory signals. And that is why Red Hat’s reliance on
 Mentor Graphics and thirty-four other patents and patent
 applications is misplaced. Those thirty-four other patents
 and patent applications expressly defined CRM to include
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 SEQUOIA TECHNOLOGY, LLC    v. DELL, INC.                    13



 transitory media. The ’436 patent does not, and our hold-
 ing relies on this absence.
      Further, “a court should discount any expert testimony
 ‘that is clearly at odds with the claim construction man-
 dated by . . . the written record of the patent.’” Phillips,
 

 (quoting Key Pharms. v. Hercon Lab’ys
 Corp., 

 (Fed. Cir. 1998)). Simply put, ex-
 trinsic evidence of what other inventors chose to do cannot
 surmount the intrinsic evidence of what the inventors
 chose here; context is key in claim construction. See id.
 at 1313; see also id. at 1317 (extrinsic evidence is “less sig-
 nificant” than intrinsic evidence in determining the legally
 operative meaning of claim terms); id. at 1321 (explaining
 how one of the main problems with elevating extrinsic evi-
 dence is that the inquiry is in the abstract, rather than
 within the context of the patent); Netword, 

 (“[C]laims . . . do not have a meaning removed from
 the context in which they arose.”). Thus, the district court
 clearly erred in considering Red Hat’s expert’s analysis,
 which is at odds with the written record of the patent. 3
     Red Hat next argues that a memorandum from the
 U.S. Patent and Trademark Office compels a different con-
 struction of “computer-readable storage medium” in this
 case. Appellees’ Br. 71–72 (citing J.A. 549 (Subject Matter
 Eligibility of Computer Readable Media, 1351 Off. Gaz.
 Pat. Office 212 (Feb. 23, 2010) (“Kappos Memo”))). But the
 Kappos Memo merely recognizes that the broadest reason-
 able interpretation—which is not the standard that applies
 in district court—may in some instances result in some


     3    We do not disturb the district court’s finding that
 Sequoia’s expert did not provide a substantial rebuttal to
 Red Hat’s extrinsic evidence. Decision, 

,
 at *3 (citing Report, 

, at *14 (describing
 Sequoia’s expert’s opinion as “fairly brisk and conclu-
 sory”)).
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 14                    SEQUOIA TECHNOLOGY, LLC    v. DELL, INC.



 claims in some patents being interpreted to cover transi-
 tory media and then rejected under § 101. J.A. 549. To
 overcome this problem, the Kappos Memo suggests that a
 so rejected claim may be amended to add the phrase “non-
 transitory” to overcome the ineligibility determination. Id.
      Contrary to Red Hat’s contention, however, this mem-
 orandum does not create a presumption that the claim
 term “computer-readable recording medium storing in-
 structions” in claim 8 reads on transitory media. Nor does
 it provide the plain and ordinary meaning of CRM. Where,
 as here, the intrinsic record demonstrates that the term
 computer-readable recording medium storing instructions
 (or the like) does not reasonably include transitory media
 and the specification’s examples are all non-transitory, we
 will not require the addition of the words “non-transitory”
 in the claims or specification. 4
     In sum, the limitation “computer-readable recording
 medium storing instructions”—read in the context of this
 patent—does not encompass transitory media. We are left
 with a definite and firm conviction that the district court
 erred in relying on extrinsic evidence that was clearly at
 odds with the intrinsic evidence. Thus, we disagree with
 the district court’s claim construction and, consequently,
 reverse the district court’s holding that claims 8–10 are in-
 eligible under § 101.
                               II
     We turn next to the terms “disk partition” and “logical
 volume.” At issue is whether the claimed invention can al-
 locate less than an entire disk partition to a logical volume.


      4  Red Hat also relies on district court and U.S. Pa-
 tent and Trademark Office decisions to support its position
 that the term “computer-readable recording medium” in-
 cludes transitory media. See Appellees’ Br. 72, 75. These
 non-binding decisions do not impact our holding.
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 SEQUOIA TECHNOLOGY, LLC     v. DELL, INC.                      15



 We conclude that it cannot. The intrinsic evidence sup-
 ports constructing a logical volume using only entire disk
 partitions.
      We again begin with the claim language. See Person-
 alized Media Commc’ns, 952 F.3d at 1340. The language
 of the relevant claims recites “creating the logical volume
 by gathering disk partitions.” ’436 patent col. 12 l. 20
 (claim 1), col. 13 l. 33 (claim 8). In addition, the claims re-
 peatedly identify “disk partitions” as the construction unit
 for a logical volume—i.e., “forming the logical volume.” See
 id.; see also id. at col. 12 ll. 24–25 (“disk partitions forming
 the logical volume”); id. at col. 12 ll. 51 (same); id. at col. 13
 ll. 37–38 (same). The claims do not recite extents or groups
 of extents as forming the logical volume. Sequoia argues
 otherwise because the claims do not include the word
 “whole” in front of “disk partition.” Appellant’s Br. 30. But
 neither do they include the words “parts” or “portions.” Ap-
 pellees’ Br. 30; see J.A. 1098 (Sequoia admitting “portion of
 a partition” appears nowhere in the intrinsic evidence).
 This claim language thus more reasonably suggests that
 the logical volume is constructed by disk partitions, not
 portions of disk partitions.
     The specification further supports this construction.
 We have explained that a patent’s express purpose of the
 invention “informs the proper construction of claim terms.”
 Kaken Pharm. Co. v. Iancu, 

, 1352 (Fed. Cir.
 2020). Here, an expressed purpose of the invention is min-
 imizing metadata. 5 See, e.g., 

 at col. 1 ll. 10–12, col. 4


     5   The patent’s other expressed purpose is dynamic
 resizing. See, e.g., ’436 patent col. 1 ll. 10–12. “By provid-
 ing flexibility of mapping, volume size can be dynamically
 increas[ed] and decreas[ed] effectively[.]” 

 at col. 4
 ll. 47–49. Sequoia argues that if only entire disk partitions
 form logical volumes, that would reduce flexibility and run
 afoul of the patent’s stated purpose. See Appellant’s
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 16                      SEQUOIA TECHNOLOGY, LLC      v. DELL, INC.



 ll. 7–10. To achieve this goal, the specification explains
 that “[t]he present invention constructs a logical volume by
 using a disk partition as a volume construction unit so the
 present invention can minimize the size of metadata.” 

 at col. 11 l. 66–col. 12 l. 1. Sequoia argues that metadata
 is minimized even if portions of the disk partition are used
 to construct logical volumes. Appellant’s Br. 36. But Se-
 quoia’s argument is untethered to the language of the pa-
 tent. The only explanation in the patent for how metadata
 is minimized is the quoted language above, which credits
 constructing logical volumes with disk partitions, not por-
 tions of disk partitions.
      Further, the specification explains that the preferred
 embodiment requires that “[t]he disk partition is a mini-
 mum unit of the logical volume.” ’436 patent col. 6
 ll. 60–61. Also, it states that “the logical volume is resized
 in disk partition units”; “[t]he logical volume is a union of
 disk partitions”; and “a logical volume is constructed with
 several disk partitions.” 

 at col. 6 ll. 63–65, col. 7 ll. 8–9.
 We are mindful to not limit claims to a preferred embodi-
 ment. See Teleflex, Inc. v. Ficosa N. Am. Corp., 

 (Fed. Cir. 2002). But we also recognize that “[a]
 claim construction exclud[ing] a preferred embodiment is
 rarely, if ever correct.” Kaufman v. Microsoft Corp.,
 

, 1372 (Fed. Cir. 2022) (cleaned up). Here, we
 do not limit the claim language based on the preferred em-
 bodiment. Instead, we recognize that it aligns with, and



 Br. 35–36. For support, Sequoia cites to a portion of its ex-
 pert’s report, which is devoid of explanation. 

 (citing
 J.A. 1464–65, ¶ 36). The district court did rely on this ex-
 trinsic evidence, see Decision, 

, at *3,
 and, in any event, conclusory expert testimony suggesting
 that dynamic resizing cannot be accomplished with disk
 partitions is inconsistent with the preferred embodiment,
 which only resizes based on disk partitions.
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 SEQUOIA TECHNOLOGY, LLC   v. DELL, INC.                    17



 thus bolsters, what the plain claim language indi-
 cates: that the disk partition is a logical volume’s mini-
 mum construction unit.
     We next turn to the prosecution history, which can in-
 form how the inventor understood the invention and
 whether the inventor limited the invention during prosecu-
 tion, thereby clarifying the scope of a claim. See Phillips,
 

. In Aylus Networks, Inc. v. Apple Inc.,
 

 (Fed. Cir. 2017), we held that “state-
 ments made by a patent owner during an IPR proceeding,
 whether before or after an institution decision, can be con-
 sidered for claim construction.” See also CUPP Computing
 AS v. Trend Micro Inc., 

, 1384 (Fed. Cir.
 2022). Here, statements by the patent owner, ETRI, fur-
 ther support a construction of disk partition as a logical
 volume’s smallest construction unit.
      In its preliminary response to Red Hat’s IPR petition,
 ETRI distinguished two prior art references, Bridge and
 Williams, by highlighting that instead of disk partitions,
 “extents in Bridge or physical partitions in Williams, both
 subsets of disk drives[,] . . . are gathered to form a logical
 volume.” J.A. 1027 (quoting D.I. 178, Ex. K, at 2); see
 J.A. 936 (similarly explaining that “the extents of Bridge
 or the physical partitions of Williams,” not disk partitions,
 are gathered to form the logical volume). Separately, ETRI
 stated that “[w]hile the logical volume [in the ’436 patent]
 is formed from extents, extents are added or removed from
 the logical volume at the level of the disk partitions.”
 J.A. 921 (emphasis added). These statements are con-
 sistent with the understanding that a logical volume in the
 present invention is only constructed at the level of disk
 partitions, not sub-portions of disk partitions.
     Sequoia disagrees. It argues that the distinction ETRI
 drew between the prior art and the claimed invention was
 that Bridges and Williams lack any disk partitions (a nec-
 essary component of the claim). Appellant’s Br. 38–40. We
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 18                     SEQUOIA TECHNOLOGY, LLC    v. DELL, INC.



 disagree. ETRI’s statements during prosecution distin-
 guish the prior art based on what element is removed or
 added to form the logical volume—either disk partitions or
 subparts of disk partitions. Sequoia argues that ETRI’s
 second statement above is consistent with “permit[ting] ex-
 tents to be individually allocated (or not) to the logical vol-
 ume.” 

. But ETRI’s reference to removing or
 adding extents “at the level of the disk partitions” is clear.
 See J.A. 921. It does not reasonably support a construction
 that would allow extents—which are sub-portions of disk
 partitions—to build logical volumes.
     Finally, Sequoia argues that another limitation in
 claim 1, directed to an “extent allocation table for indicat-
 ing whether each extent in the disk is used or not used,”
 supports its construction of disk partition and logical vol-
 ume. Appellant’s Br. 27–29. According to Sequoia, “used
 or not used” in the extent allocation table means used or
 not used for constructing the logical volume. Accordingly,
 if Sequoia is correct, then extents—not partitions—are the
 minimum unit forming the logical volume, and the district
 court’s construction of “disk partition” and “logical volume”
 are incorrect. Red Hat, on the other hand, contends that
 “used or not used” means used or not used for storage. As
 such, under Red Hat’s construction, this claim language
 does not undermine the district court’s construction of
 “disk partition” and “logical volume.”
      The claim language read in isolation does not clearly
 support either parties’ construction. Rather, the plain lan-
 guage of the claim limitation “used or not used” begs the
 question—used for what? Here, in light of the intrinsic ev-
 idence that logical volumes are constructed from entire
 disk partitions, the extent allocation table must point to
 whether extents are used or not used for storage. The spec-
 ification in other respects also sheds some light on the
 term. It discloses that, in the preferred embodiment, “[t]he
 disk partition is a minimum unit of the logical volume”; yet,
 the preferred embodiment also has an “extent allocation
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 SEQUOIA TECHNOLOGY, LLC   v. DELL, INC.                   19



 table.” See ’436 patent col. 6 ll. 60–61, col. 12 ll. 42–43.
 This suggests that “used” does not mean used in the logical
 volume; rather, it means used for storage. Were it other-
 wise, the extent allocation table in the preferred embodi-
 ment would be superfluous. 6 While not dispositive, we find
 it unlikely that an inventor would define an invention such
 that an element of a preferred embodiment is superfluous.
 Cf. Vitronics Corp. v. Conceptronic, Inc., 

 (Fed. Cir. 1996) (explaining that interpreting a claim
 such that a preferred embodiment is excluded is “rarely, if
 ever, correct” because it is unlikely an inventor would de-
 fine the invention in such a way).
      The district court also relied on a paper written by the
 inventors of the ’436 patent (and cited in the ’436 patent)
 to support its understanding of “used or not used.” See
 Kim, et al., Volume Management in SAN Environment,
 PROC. OF THE EIGHTH INT’L CONF. ON PARALLEL AND DIS-
 TRIBUTED SYS., 500, 500–05 (2001). We have held that
 when a patentee cites prior art, it may “have particular
 value as a guide to the proper construction of the term, be-
 cause it may indicate . . . that the patentee intended to
 adopt that meaning.” Arthur A. Collins, Inc. v. N. Telecom
 Ltd., 

 (Fed. Cir. 2000). Here, neither
 party disputes that the inventors’ paper, albeit directed to
 an earlier system, indicates that an extent is “used” when
 it is storing information—either storing normal data (as in-
 dicated by the value 11) or metadata (as indicated by the
 values 01 or 10). See Appellant’s Br. 24–26; Appellees’



     6     The preferred embodiment uses “one bit per each
 extent in the disk partition and [the extent allocation map]
 represents usage of a corresponding extent.” ’436 patent
 col. 7 ll. 65–67 (emphasis added). Thus, extents are allo-
 cated to a single disk partition. If “usage” means alloca-
 tion, then the extent allocation table would nonsensically
 record the same value for each extent.
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 20                      SEQUOIA TECHNOLOGY, LLC    v. DELL, INC.



 Br. 67; Reply Br. 10. An extent is “not used” when it is not
 storing data (indicated by the value 00). The paper ex-
 plains:
      An extent may be used for both normal data and
      metadata. The SANtopia [system, an earlier em-
      bodiment of the patent’s claims] gives two bits to
      the allocation bitmap for an extent in order to dis-
      tinguish these usages of an extent. The value 00 is
      given to an extent for the free space, 01 is for an
      inode, 10 is for a directory entry and 11 is for a data
      extent.
 J.A. 796. The district court reasonably found that this de-
 scription is consistent with Red Hat’s proposed construc-
 tion, in that it “indicate[s] that ‘an extent is “used” when it
 is storing information.’” Decision, 

, at *1
 (quoting Report, 

, at *10).
     Sequoia challenges the district court’s reliance on this
 paper, stressing the differences between the present inven-
 tion and the SANtopia system, and explaining that “a pa-
 tentee does not renounce the ordinary meaning of a term
 merely by submitting a reference that employs a different
 meaning.” Appellant’s Br. 24–27 (quoting Boehringer
 Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 

 (Fed. Cir. 2003)). We agree that the
 claimed invention and the SANtopia system differ. We also
 agree that the paper does not dictate the meaning of “us-
 age.” Instead, like the district court, we simply conclude
 that the paper shows that an extent’s “use” can refer to its
 use for storage, rather than its use in constructing a logical
 volume. In other words, this paper aligns with the specifi-
 cation because it supports interpreting an extent’s usage as
 usage for storage.
     In sum, we agree with the district court’s claim con-
 structions for “disk partition” and “logical volume.” We
 thus affirm the district court’s determination of nonin-
 fringement.
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 SEQUOIA TECHNOLOGY, LLC   v. DELL, INC.                   21



                        CONCLUSION
     We have considered the parties’ remaining arguments
 and find them unpersuasive. For the reasons above, we
 disagree with the district court’s construction of “computer-
 readable recording medium,” and we thereby reverse the
 district court’s judgment that claims 8–10 are ineligible un-
 der § 101. In addition, because we agree with the district
 court’s construction of “disk partition” and “logical vol-
 ume,” we affirm the district court’s judgment of nonin-
 fringement.
      REVERSED-IN-PART, AFFIRMED-IN-PART
                            COSTS
 No costs.