United States: An Accused Device Must Perform The Claim Limitation Of The Asserted Patent Without Modification To Infringe

In Nazomi Communications, Inc. v. Nokia Corp., No. 13-1165 (Fed. Cir. Jan. 10, 2014), the Federal Circuit affirmed the district court's grant of SJ of noninfringement in favor of defendants Western Digital Corporation and Western Digital Technologies, Inc. (collectively "Western"), and Sling Media, Inc. ("Sling").

Nazomi Communications, Inc. ("Nazomi") owns two patents—U.S. Patent No. 7,080,362 ("the '362 patent") and U.S. Patent No. 7,225,436 ("the '436 patent")—which describe a hardware-based Java Virtual Machine ("JVM") that can process software written in the Java programming language, as well as software that is not written in Java.  Nazomi's hardware-based JVM enables the translation of Java bytecodes into instructions executable by a processor, while also retaining the ability to run non-Java applications by processing instructions without using the JVM.

Nazomi sued various technology companies for infringing the '362 and the '436 patents.  Two defendants, Western and Sling, filed a motion for SJ contending that their accused products did not infringe the asserted claims.

Western and Sling each manufacture consumer products that include processors designed by ARM Limited ("ARM").  The ARM processor design used in the accused devices includes an optional hardware component called "Jazelle," which enables faster processing of Java bytecodes.  In order to utilize the Jazelle hardware, a consumer product manufacturer would need to license ARM's Jazelle Technology Enabling Kit ("JTEK") software.  Though the accused devices contained processor designs that included the Jazelle hardware, neither included the JTEK software that would enable the hardware to perform the optional functionality.  In their motion for SJ, Western and Sling argued that Nazomi's claims require an accused device to perform the claimed functions themselves, and since their devices were unable to perform that functionality due to lacking the JTEK software, they did not infringe.  The district court agreed with Western and Sling, and granted their motion for SJ.  Nazomi appealed.

"Here, the structure (i.e., JTEK software) necessary to enable Jazelle hardware to process stack-based instructions (i.e., Java bytecodes) is not only inactive, it is not even present on the accused products.  The installation of JTEK software is not unlocking existing functionality, but adding new functionality not currently present.  There is no infringement."  Slip op. at 15-16.

On appeal, the Federal Circuit began by construing Nazomi's claims.  Affirming the district court's findings, the Federal Circuit held that Nazomi's claims were properly construed to cover an apparatus, comprising both hardware and software, capable of practicing the claimed functionality.  The Court concluded that "[s]ince hardware cannot meet these limitations in the absence of enabling software, the claims are properly construed as claiming an apparatus comprising a combination of hardware and software capable of practicing the claim limitations."  Slip op. at 10.

The Court confirmed that the cases cited by Nazomi did not stand for that proposition that capability alone is enough to support a finding of infringement.  For example, the Court distinguished Intel Corp. v. U.S. International Trade Commission, 946 F.2d 821 (Fed. Cir. 1991), on the basis that the claims at issue in that case required "programmable selection means."  Slip op. at 11 (citing Intel, 946 F.2d at 832).  The "programmable" claim language required only that the accused product could be programmed to perform the required functionality, whereas Nazomi claimed a combination of hardware and software that is capable of performing the required functionality.  The Court also noted that Nazomi's arguments were not supported by cases involving the contemplated use of a claimed invention in a particular environment. Rather, the Court has repeatedly distinguished a description of the environment in which a claimed invention operates from a limitation on the claimed invention itself.  Because Nazomi's claims require a hardware-software combination, and not simply the hardware that contemplates an environment where it would be combined with software, the Court found Nazomi's reliance on these cases to be misplaced. 

After affirming the district court's claim construction rulings, the Court proceeded with its infringement analysis by determining whether the accused devices infringed under the claim construction.  Since it was undisputed that the Jazelle hardware was physically present on Western's and Sling's accused devices, and that the Jazelle hardware was not functional without the JTEK software, the Court only addressed Nazomi's reliance on cases in which the Court held that an accused device infringed when the device was designed in a way that enabled use of the claimed function without modifying the product. 

The Court distinguished these cases, holding that in order for an accused device to infringe, the device must perform the claim limitation of the asserted patent without modification.  According to the Court, an accused device having the capability of being configured or programmed to perform the stated function was not enough to constitute infringement when the device as sold was not structured to perform the stated function.  The Court concluded that Nazomi's reliance on "key" cases was inapposite.  Unlike cases in which software capable of practicing the claim limitations was already present on the accused device and could be unlocked with a key, "the structure (i.e., JTEK software) necessary to enable Jazelle hardware to process stack-based instructions (i.e., Java bytecodes) is not only inactive, it is not even present on the accused products."  Id. at 15.  Therefore, installing JTEK software was equivalent to "adding new functionality not currently present."  Id. at 15-16.  Because "[t]he purchase and installation of the JTEX software clearly constitutes a 'modification' of the accused products" necessary for the device to perform the claim limitations, the Court held that the Western and Sling products did not infringe.  Id. at 14.

Judge Lourie concurred in the decision to affirm the district court's decision to grant SJ of noninfringement, but only through the majority's affirmation on the basis "that the claim limitation 'capable of executing a plurality of instruction sets . . .' is not met by Jazelle hardware that is not functional without the JTEK software."  Lourie Concurrence at 2.

Judges:  Lourie (concurring), Dyk (author), Wallach

[Appealed from N.D. Cal., Senior Judge Whyte]

This article previously appeared in Last Month at the Federal Circuit, February 2014.

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

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