Docket No. 2013-1165
LOURIE, DYK, WALLACH
January 10, 2014
Brief Summary: No infringement because functional language required both hardware and software, and “[t]he purchase and installation of the…software clearly constitutes a ‘modification’ of the accused products”.
Summary: Nazomi appealed DC decision construing the claims as “claiming an apparatus, comprising both hardware and software, capable of practicing the claimed functionality” (“to execute instructions of a plurality of instruction sets, including a stack-based and a register-based instruction set”, “maintaining an operand stack for the stack-based instructions”, “stack control mechanism”) and granting SJ of noninfringment to Western Digital (WD). The FC panel agreed because the claimed “functionalities…cannot be practiced in hardware alone and require enabling software” (e.g., “claim 48 does not recite generic mechanisms but requires specific functions”). The opinion explained that “the need for the specified functionality is confirmed by the ’362 patent specification” and “there is nothing unusual or improper in construing device claims to require particular functionality” (citing Typhoon Touch Techs., FC 2011; K-2 Corp., FC 2011; and Fantasy Sports, FC 2002 (“Intel therefore does not stand for the proposition…that infringement may be based upon a finding that an accused product is merely capable of being modified in a manner that infringes the claims of a patent.”)) The panel also wrote “[w]e have repeatedly distinguished a description of the environment in which a claimed invention operates from a limitation on the claimed invention itself” (citing Silicon Graphics, FC 2010 (accused products could not infringe until combined with a computer operating system)). The panel also agreed with the DC finding of no infringement because “[t]he purchase and installation of the…software clearly constitutes a ‘modification’ of the accused products”. Nazomi argued that Silicon Graphics held that “an apparatus claim directed to a computer that is claimed in functional terms is nonetheless infringed so long as the product is designed in such a way as to enable the user of that [product] to utilize the function without having to modify the product.” However, the FC rejected this argument with reference to Typhoon Touch Technologies (FC 2011) (“capability of being configured or programmed” not enough), Telemac Cellular (FC 2001) (accused product required “employment of an outside carrier that could place international calls”), Finjan, Inc. (FC 2010) (unlocking of software using a product key not modification because “devices infringed even if the software had not been activated”), and High Tech Medical (FC 1995) (infringement not likely where camera could be rotated by loosening screws instead of by software). It also found “no suggestion that the accused devices were designed to be used with the…software” leaving “no occasion to consider whether the design of a device that contemplates use in an infringing manner could establish direct infringement, as opposed to induced or contributory infringement”.