Docket Nos. 2013-1397
NEWMAN, RADER, DYK
June 19, 2014
Brief Summary: DC grant of SJ to HTC of non-infringement (literal and under DOE) affirmed based on claim construction determination.
Summary: Gemalto appealed DC grant of SJ to HTC of non-infringement (literal and under DOE) of US 6,308,317; 7,117,485; and 7,818,727 relating to the incorporation of high level programming languages (e.g., Java) into smaller devices such as smartphones. Gemalto alleged HTC’s smartphones infringe when they run the Android OS and Java. HTC argued that it did not infringe because it relies on “off-chip memory to run Java applications, similar to prior art computers.” The DC construction of the claims “required all application memory to be stored on the same chip as the processor” and, therefore, HTC’s phones do not literally infringe. The DC also rejected Gemalto’s argument “that the accused devices infringed under the doctrine of equivalents when they temporarily loaded program instructions into on-chip cache memory prior to execution” because “temporary storage in cache memory was not substantially the same as permanent memory storage.” The FC opinion explained “[t]he specification demonstrates that the entire purpose of the invention was to enable the application to be stored within the memory on the chip of the integrated circuit card” and “identifies configurations in which a processor runs Java applications stored in off-chip memory and ascribes them to the prior art” (“Of course, ‘the claims cannot be of broader scope than the invention that is set forth in the specification” (On Demand Mach. Corp., FC 2006)). In addition, during prosecution and reexamination “Gemalto repeatedly distinguished invalidating prior art by emphasizing the novelty of squeezing a Java application onto the memory of an integrated circuit card” (e.g., “Peyret does not deal with a solution of how to squeeze Java or another high level language onto a smart card.”) Gemalto also unsuccessfully argued that claim differentiation supports its theory because claim 4 recites “[t]he integrated circuit card of claim 1 wherein at least a portion of the memory is located in the processor.” But the FC panel disagreed, concluding “claim 4 only allows some memory to be outside the processor, not outside the chip” and “says nothing about the location of the memory with respect to the chip containing the processor.” It also explained that the limitations of the ‘317 patent apply equally to the ‘485 patent since, “when multiple patents derive from the same initial application, the prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same limitation” (Eklay Manuf., FC 1999). Gemalto also argued that the “off-chip” limitations do not apply to claim 3 of the ‘727 patent which is directed to a “programmable device”. But an inventor testified that the term “has no meaning” and the FC panel concluded “the limitation is not ‘programmable device’ but ‘memory’ and ‘at least one application loaded in the memory’” which is supported by the specification and the prosecution history. Gemalto’s DOE arguments were also rejected as it could not “provide ‘particularized testimony and linking argument to show the equivalents’ are insubstantially different” (AquaTex, FC 2007) and applying DOE “to cover cache memory used in the prior art is not permissible” (Marquip, FC 1999).