When are Hardware AND Software Required to Infringe Patent Claims?

A district court properly construed patent claims as requiring both hardware and software, and properly granted summary judgment of non-infringement where the defendants' products used  potentially infringing hardware, but did not license or use software that would have been necessary to complete the infringement.  Nazomi Communications, Inc. v. Nokia Corp., No. 2013-1165 (Fed. Cir. Jan. 10, 2014).

Claims of U.S. Patent Nos. 7,080,362 and 7,225,436 were directed to apparatuses including “a hardware-based [Java Virtual Machine] capable of processing stack-based instructions, that also retains the ability to run legacy (i.e., register-based) applications without utilizing the JVM."  The accused devices contained the "Jazelle" hardware capable of providing this functionality, but only with the “Jazelle Technology Enabling Kit,” i.e., software, that was neither included in the accused devices nor licensed by the defendants.

The district court “construed the asserted claims to require a hardware and software combination capable of processing both register-based and stack-based instructions.”  Because the JTEK software was required in addition to the Jazelle processors for the Jazelle processors to process stack-based instructions, and the accused devices “do not include the necessary JTEK software, the district court found that the accused devices do not infringe.”

The Federal Circuit, in a majority opinion by Judge Dyk, agreed with the district court's construction of “the claims as claiming an apparatus, comprising both hardware and software, capable of practicing the claimed functionality.”  Hardware could not meet the limitations of “processing . . . both register-based and stack-based instructions” without “enabling software.”  Therefore, “the claims are properly construed as claiming an apparatus comprising a combination of hardware and software capable of practicing the claim limitations.”

Cases that Nazomi relied on to support its position were inapposite.  These cases required only that “'programmable' claim language required . . . that the accused product could be programmed to perform the claimed functionality.”  Nazomi had not claimed “programmable” hardware, but instead “claimed a combination of hardware and software capable of performing” stack-based processing.  Further, Nazomi's claims did not simply describe an environment, e.g., an operating system, in which the claims operated, but rather included software limitations on the claims themselves.

Affirming the district court's claim construction made affirming the district court's summary judgment of non-infringement easy.  There was no dispute that the Jazelle hardware was present on the accused devices, but that the “Jazelle hardware is not functional without the JTEK software.”

Further, the accused products were not “designed in such a way as to enable the user of that [product] to utilize the function without having to modify the product.”  Instead, purchasing and installing “the JTEK software clearly constitutes a “modification” of the accused products.”

Judge Lourie concurred in the judgment, and joined the majority opinion except for part of its opinion concerning non-infringement.

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