Nazomi Communications, Inc. v. Nokia Corporation
739 F.3d 1339
| Fed. Cir. | 2014Background
- Nazomi asserted U.S. Pat. Nos. 7,080,362 and 7,225,436 against Western Digital and Sling for CPUs that allegedly implement a hardware JVM to process Java bytecodes (stack-based) while also running legacy register-based applications.
- The asserted claims recite a CPU "capable of" executing both stack-based and register-based instruction sets and enumerate functional limitations (operand stack in a register file, overflow/underflow movement between register file and memory, exception generation, etc.).
- The accused devices include ARM cores with optional Jazelle hardware; Jazelle requires separate ARM-supplied JTEK software to enable processing of Java bytecodes. Western and Sling did not install or license JTEK on the accused products.
- District court construed the claims to require an apparatus (hardware plus software) capable of performing the claimed functions and granted summary judgment of noninfringement because the accused devices lacked the enabling software.
- Nazomi argued the claims cover hardware that merely could be made to perform the functions (e.g., by adding software) and therefore the presence of Jazelle hardware alone sufficed for infringement.
- The Federal Circuit affirmed, holding the claim language and specification require a hardware–software combination actually capable of performing the recited stack-based functions as sold (i.e., not requiring post-sale modification to meet limitations).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim construction: does a claim to a CPU "capable of" executing stack- and register-based instruction sets cover hardware alone or a hardware+software combination? | Nazomi: Claims cover any hardware that "could" process stack-based instructions, even if software not present. | Defendants: Claims require the hardware+software combination actually capable of performing the recited functions. | The court construed the claims to require a hardware–software combination capable of practicing the claimed functions. |
| Infringement: do accused devices infringe when they contain Jazelle hardware but lack JTEK enabling software? | Nazomi: Installation of JTEK is not a disqualifying modification; devices are designed so a user can enable the function. | Western/Sling: JTEK is absent; installing it would modify the product; Jazelle hardware alone cannot perform the claimed functions. | No infringement: summary judgment affirmed because accused devices lack the enabling software and thus do not perform the claimed functions as sold. |
| Whether mere capability to be modified/configured suffices for infringement | Nazomi: Capability to be configured to perform functions should suffice (cite cases where unlocking enabled functionality). | Defendants: Modification/installation of software is a modification that prevents finding direct infringement. | Court: Mere capability absent present structure/functionality does not establish infringement; adding JTEK is a modification. |
| Whether the district court required intent to find infringement | Nazomi: District court allegedly required defendant intent. | Defendants: No intent requirement for direct infringement. | Court: District court did not impose an intent requirement; issue not needed to resolve because claims fail on lack of present functionality. |
Key Cases Cited
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir.) (en banc) (claim construction reviewed de novo)
- Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821 (Fed. Cir. 1991) (programmable claim language may cover products that can be programmed to perform the claimed function)
- Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011) (device must be structured as sold to perform claimed functions; mere capability to be configured later is insufficient)
- Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784 (Fed. Cir. 2010) (distinguishing environment-of-use from claim limitations; hardware combined with OS may meet limitations)
- Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197 (Fed. Cir. 2010) (software present but locked on device can support infringement when unlocking does not add new structure)
- High Tech Med. Instrum. v. New Image Indus., 49 F.3d 1551 (Fed. Cir. 1995) (post-sale modification of a product can preclude finding direct infringement)