ITC decision of non-infringement of functional/capability-type computer claims affirmed; decision as to expired patent found moot

INVT SPE LLC v. Int. Trade Commission (ITC), HTC America, Inc. et al. (Intervenor)

Docket No. 2020-1903 (https://cafc.uscourts.gov/opinions-orders/20-1903.OPINION.8-31-2022_1997811.pdf)

NEWMAN, TARANTO, CHEN

August 31, 2022

Brief Summary:   ITC decision finding no infringement of functional computer claims affirmed; decision regarding expired patent dismissed. Summary:  INVT appealed ITC decision finding that HTC et al. did not violate 19 USC section 1337 (section 337) by importation and sale of smartphones, smart watches, and tablets due to failure “to meet the technical prong of the domestic industry requirement of” (ALJ decision not reviewed by the ITC) and non-infringement of five INVT patents, two of which are at issue in this appeal (US 6,760,590 and 7,848,439).  The FC panel affirmed the ITC’s “determination that there was no section 337 violation with respect to the ’439 patent because INVT failed to show infringement and the existence of domestic industry” and “INVT’s argument on appeal that the asserted ’439 claims are drawn to ‘capability’” but disagreed with INVT on infringement.  INVT argued that “(1) the ’439 claims are essential to the practice of the LTE standard, see id. at *58– 63, and (2) the accused products practice the asserted claims”.  The ALJ disagreed with both arguments (e.g., “the plain language dictated the result… Claim 1 is silent on the operation of the communicating party”, ““patent essentiality cannot, as a matter of law, be established merely by showing that the asserted standard is capable of meeting the claim, as mere capability of a claimed feature is ipso facto not tantamount to the requirement that the claimed feature must be mandatory”, “mere capability in this instance does not equate to infringement” (Finjan, FC 2010)).  The FC panel explained that that “[f]or infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused computer-implemented device is programmed or otherwise configured, without modification, to perform the claimed function when in operation” and that “INVT failed to introduce any evidence to establish that the accused devices, when put into operation, will ever perform the particular functions recited in the asserted claims.” It “agree[d] with INVT that the asserted ’439 claims are drawn to “capability,” and not to actual operation as the ALJ found” but also found that INVT “failed to show that the accused LTE-compliant devices have the capability required by the claims” and therefore did not show infringement.  The FC panel explained that “sometimes a device only needs to be “capable of operating” according to a claimed limitation, for a finding of infringement” (Finjan; Silicon Graphics, ), but also that “[o]ther times, a device does not infringe unless it actually operates as claimed” (ParkerVision, FC 2018; Ball Aerosol, FC 2009), the “the most straightforward example of this [being] the common distinction between method claims and apparatus claims” (e.g., Finjan’s “non-method claims describe capabilities without requiring that any software components be ‘active’ or ‘enabled’” but “method claims…not infringed” as “actual performance of each claimed step” required; Cross Medical, FC 2005 (“limitation…could be met merely by an interface that was capable of contacting bone”), Ball Aerosol, FC 2009 (“configuration-type claim…required showing that the candle holder was actually placed on its cover” and “no evidence that the Travel Candle was in fact ever placed in such a configuration”), and Silicon Graphics (FC 2010) (“claim directed to a computer, claimed in functional terms” infringed if unmodified product could operate as claimed (“capability-type language”)).  But, again, infringement was not found here as INVT did not show evidence that all of the devices, including external devices (e.g., “base station”), needed to carry out the claimed function were present in the accused devices.  The FC panel also found “the Commission’s determination with respect to the ’590 patent moot based on the patent’s expiration” and vacated and remanded the decision as to that patent (Tex. Instr., FC 1988; 19 USC section 1337(d)-(f)).

This entry was posted in Claim Construction, Functional limitations, Importation, International Trade Commission, Method claims, Software. Bookmark the permalink.

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