*1 COMMUNICATIONS, NAZOMI Plaintiff-Appellant,
INC.,
NOKIA CORPORATION Defendants, Inc.,
Nokia Defendant, Inc.,
Amazon.com, Digital Corporation
Western Technologies, Digital Defendants-Appellees,
Inc., Inc., Defendant-Appellee,
Sling Media,
Vizio, Defendant.
No. 2013-1165. Appeals,
United States Court of Circuit.
Federal
Jan. Belanger, Pepper Hamilton D.
William Boston, plaintiff- LLP, MA, *2 program him on the brief were For a to run appellant. With software on the Liu, McCarthy, device, D. Alison L. Frank and of a computing program CPU Benjamin M. Snitkoff. be compiled must or translated from a high-level programming language that LLP, Anderson, Wiley Rein, of Kevin P. in syntax written a human-readable DC, for Washington, defendants- (“source code”), into a machine-readable Corporation, Digital Western et appellees (“machine code”) processor form that the Maynard, al. Deanne E. & and Morrison can code is pro- understand. Machine DC, Foerster, LLP, Washington, of ar- result, cessor-specific. As a Media, gued defendant-appellee Sling for compilers only can programs translate into them Inc. on the brief were Karin A. With particular types pro- machine code for of Scheffel, Wiley Hessler and Robert Rein J. example, For DC, pro- cessors. Intel-based LLP, Washington, for Di- Western al.; instructions, use set of cessors one native gital Brian R. Corporation, et Matsui, Foerster, LLP, Macintosh processors PowerPC-based use Morrison & DC; Krevans, instructions, Washington, and Rachel a different set of native Moore, Kim, Scott C. and Ester of San ARM processors Limited use another still. CA, Francisco, Media, Sling Therefore, for Inc. to run the same source code or system on a or platform, software different DYK, LOURIE, Before recompiled it must be system. for the new WALLACH, Judges. Circuit high-level programming Java is a lan- Concurring opinion filed Circuit guage problem by addresses this al- Judge LOURIE. lowing developers programs to write run can on processors different without DYK, Judge. Circuit recompiled system. each new Communications, Plaintiff Nazomi Inc. Instead, language single Java uses a (“Nazomi”) appeals from decision of the compiler that programs translates United States District Court “bytecodes” into instead of processor-spe- Northern District of construing California cific machine code. Java do not disputed language sum- granting CPU, run on the on a Java mary in judgment non-infringement fa- (“JVM”) Virtual Machine which translates vor of Digital Corpo- defendants Western processor-specific them into machine code. Digital Technologies, ration Therefore, programs written Java can “Western”), Inc. (collectively, any any run on platform operating Media, (“Sling”). affirm. system, one providing principal ad- vantages programs of Java “porta- Background —their bility.” function, computing requires To Computing vary devices also how
both hardware and software. Processors memory, store data in which affects components embedded characteristics of the code. machine Pro- computing process- devices. The central (“CPU”) using memory systems cessors computing enables de- last-in, carry vice to out “store information first-out instructions contained in ..., computer program. analogous papers Software basis to a stack refers to Therefore, an inbox.” JA 2709. tell the device hardware ac- “[t]o what a paper stack, to do. The hardware then follows cess at the bottom the (“executes” these instructions the soft- the reader must remove all the papers ware). contrast, above it.” JA 2709. In register- register unit and associated data execution and retrieves memory “stores file, data location of each execute in- the exact the execution according to post arrangement of item, like an much of instruction plurality structions of result, pro- *3 As JA 2709. a boxes.” office sets, a including regis- a and stack-based memory storage different that use cessors set; instruction ter-based types of also use different systems must maintain at least some a mechanism sets,” namely, machine code or “instruction plurality data for the instruction sets “register- instructions and “stack-based” file, register including maintaining in the Although most mod- based” instructions. an stack for the stack-based operand register-based ap- a processors use ern and register file an are in- bytecodes stack-based proach, Java operand depth of a indication structions. stack; Therefore, using register- a a a stack control mechanism includes programs run written processor can and at least one of an overflow under- using a that translates in Java JVM mechanism, least some flow wherein at register- bytecodes into Java stack-based operands are moved between executing But Java based instructions. memory; register file and and using typical a software-based bytecodes exception in a generate mechanism pro- executing than longer JVM takes respect stack-based instruc- of selected can run on the device’s grams that One solu- tions. without translation. hardware certain processing problem tion to this 111. 6.1 patent col. 1.57 to col. '362 ap- hardware where plurality decoding [for mechanism present to “acceler- software is
propriate sets, including instruction programs. execution of Java ate” the register-based]; may JVMs such hardware-based operand register [including file legacy process applications be unable operands store for stack- stack to programmed Java. and data associated based instruction set aim patents asserted here Nazomi’s two in- register register-based for with the They this describe a to address issue. set]; struction capable process- JVM hardware-based and under- one of an overflow least instructions, also re- ing stack-based operands cause the flow mechanism to (ie., regis- ability legacy run tains the register moved file to—be between ter-based) utilizing without applications memory; At issue are four the JVM. indepen- patents, two claims from related processes out- unit that execution 74 of Patent No. dent claims U.S. put decoding of the stack-based [of (“the 7,080,362 indepen- '362 patent”) and sets], instruction register-based of U.S. Patent No. dent claims and 5 patent col. 12 11.29-47. '362 (“the
7,225,436 Representa- patent”). '436 executing reg- 1. A CPU 48 of the '362 reads: tive claim instructions, comprising; ister-based (CPU) processing 48. A central logic executing regis- execute plurality of in- executing instructions; ter-based comprising: sets struction (CPU) central com- remaining 74. A The claims at issue mirror the prising: elements of claim 48: II. 26-50. register bytecodes. file associated with the exe- component logic; cute ARM design was called “Jazelle.” As processor designs, hardware accelerator with its other code ..., based instructions wherein pro- ARM licensed ARM 926EJ-S generates accelerator a new (“ARM core”) chip- cessor core to various ..., program virtual machine counter pro- makers. As with the other ARM computes the return virtual machine cessors, this ARM core is often selected pushes program counter and the return chip-makers flexibility; for its it can be program virtual machine counter. incorporated chips into for different end *4 14 11. patent '426 30-46. uses, ranging smartphones refrig- from to (CPU) processing 5. A central erators. ...; logic execute comprising: ARM design Because the core and the ...; accelerator hardware chips based on that core are intended to be ...; operand an in a variety used wide of products, ...; mechanism overflow/underflow contain optional functionality often not uti- bytecode buffer that receives by nor every lized enabled manufacturer. ...;
based instructions and The Jazelle optional hardware is such one ...; instruction decode feature. products, Both accused West- program common counter.... MyBook (“MyBook”) ern’s World Edition and Sling Sling’s Slingbox Defendants Western are con- (“Slingbox”), Pro-HD product sumer manufacturers that incor- containing have CPUs an ARM core with porate processors prod- various into their Jazelle hardware. the Jazelle (“ARM”) develops ucts. ARM Limited hardware on the accused devices cannot processor designs, it which licenses perform the described in Na- chip-makers Qualcomm third such party as zomi’s asserted claims without software physical Texas Instruments build known as Jazelle Technology Enabling Kit processor chips. Although ARM does not (“JTEK”). Consumer manufac- processors, make or sell ARM has a suite turers can license JTEK ARM a from processor designs many that are used in fee. Defendants Western and Sling did Chip-makers computing devices. select a not license the from JTEK software ARM processor design suitable ARM depending have never installed the JTEK soft- particular purpose the for which the ware to enable Jazelle on the accused de- processor chips will be used. The incorpo- vices. rating designs ARM’s utilized con- February In 2010 Nazomi filed a com- sumer manufacturers such as plaint Central District California Sling. Western and against technology companies, various in- Initially, ARM processors could cluding Sling, alleging Western and in- only code, types execute two of machine fringement of '362 patent and the '436 both of register-based which are instruc- patent. In October case was They tions. could also execute Java’s transferred Northern District of using stack-based instructions the method July California. In 2012 Western and known in the prior art to the Nazomi Sling summary judgment filed a motion patent running a software-based JVM — contending that the claims should con- that translate the would require perform strued the device register-based into ARM’s code. machine In itself, ARM developed chip the claimed functions and that the design would accelerate products of Java did not the as- Techs., they included the FAS because serted claims banc). (Fed.Cir.1998) (en not the hardware but The Jazelle district summary opposing In JTEK software. claim 48 of the '362 as court treated argued that asserted Nazomi judgment, claims representative all asserted and 74 of claims 48 respects and held that is “similar most cover patent2 5 of the '436 claims 5. to the other asserted claims.” JA Nazo- hardware that “could any generic dispute propriety mi does of treat- ..., regardless of all the ing representative 48 as actually does so.” the device ever whether claims, are all which directed to words, In other JA pertaining and recite limitations CPU only the claims describe functionality. its component necessary ie., functionalities, claimed district court construed the based on products claiming apparatus, as compris claims alone, of the presence both hardware and the activation JTEK even without functionality. practicing *5 software. rejected construction The court Nazomi’s requiring only capable Western and hardware that was granted
The district court summary judgment Sling’s motion performing of claimed functionalities. apparatus must found that agree. The face of claims shows the claimed capable performing itself be of that each claim particular functions, and the asserted construed example, por For the italicized limitation. and software require a hardware claims to specific claim tions of claim 48 below recite capable processing of both combination practiced functionalities cannot be and stack-based instruc- register-based require enabling hardware alone and soft court that without tions. The concluded ware: software, hard- enabling JTEK (CPU) A processing central process cannot stack-based instruc- ware executing plurality of in- capable of tions all. Because Jazelle comprising: sets struction in- process not stack-based alone could register an execution unit and associated structions, ap- the Western file, in- execution to execute include the paratuses do not instruction plurality structions of of software, court found the district JTEK sets, including reg- and a stack-based infringe. the accused devices do not set; ister-based instruction judg- then certified The district court appeal pursuant ment for Fed.R.Civ.P. least to maintain at some a mechanism 54(b). juris- we have appeals, Nazomi sets plurality for the of instruction data 1295(a)(1). § 28 diction under U.S.C. file, register including in the maintain- an the stack-based ing operand stack for Discussion an register file and operand of the depth of indication I. Claim Construction stack; infringement of step The first that includes a stack control mechanism construction, question of
analysis is claim of overflow under- v. at least one an Cybor Corp. de novo. law reviewed of claim 86 alleged infringement withdrew its assertion initially of Nazomi 2. Nazomi 48, 74, appeal. of claims and 86 the '362 before this patent. claims and 5 the '436 1 of 1344 mechanism, require particular wherein at least some device claims to func-
flow See, Techs., operands Typhoon moved between the tionality. e.g., Touch memory; Dell, Inc., file and register 659 F.3d (Fed.Cir.2011); Corp. K-2 v. Salomon exception generate a mechanism to S.A., (Fed.Cir.1999). stack-based instruc- respect of selected tions. The cases on which Nazomi do relies 10 1. 57 col. 11 1. position. its support example, For Intel (emphases The claims recite a Corporation v. U.S. International Trade func- perform CPU that can Commission, only required claims tions, both namely, regis- means,” “programmable selection and the and stack-based instructions. ter-based because could Since hardware cannot meet these limita- be programmed perform infringing enabling in the tions absence (Fed.Cir.1991). use. 946 F.2d as claim- properly the claims are construed “programmable” We held that claim apparatus comprising a combination required language only that the accused prac- hardware and software could programmed ticing example, the claim limitations. For functionality. contrast, the claimed Id. In generic 48 does recite mecha- has not claimed an with nisms, specific requires functions of “programmable” “(1) operand maintaining instructions, stack-based it has claimed a (2) instructions; performing combination hardware and software ca ‘stack control’ of ‘overflow/underflow’ pable performing that function. See *6 moving operands registers between the Fantasy Sports Props., also v. Sports (3) memory; generating excep- Inc., line.com, 287 F.3d 1117-18 certain tions for stack-based instructions.” (Fed.Cir.2002) (“Intel does therefore 3938; patent JA '362 col. see also 10 1. 57 proposition stand for the ... infringe that 11 1. col. 6. These limitations on the may upon finding ment be based a that an specifically pertain claimed CPU to the merely is processing of stack-based instructions. in a infringes modified manner that Further, specified the need for the func- a patent.”). claims of tionality patent is confirmed the '362 Similarly, in Graphics, Inc. Silicon v. specification, which indicates that “the Technologies, ATI the claims contem- hardware accelerator [Java] can convert plated in system an operating use environ- the stack-based Java into ... ment and we overturned the district register-based native instructions on a ruling products court’s that the accused patent CPU.” '362 col. 11.23-25. The did not because could not specification explains “[t]he also that Java claim meet the limitations until combined hardware can accelerator some or all do[ ] with computer a operating system. 607 tasks,” following and lists functions (Fed.Cir.2010). There, 794-95 in processing involved stack-based instruc- patent system the asserted claimed a for tions, including “managing graphics, rendering including claims cover- on a register “generating file” and excep- ing a “processor that rasterizes” and a predetermined by- tions on instructions on storing” “frame buffer data. Id. tecodes,” at mirroring limitations in contemplated 795. The claims patent claims 48 and 74. '362 col. 3 11.10- 19; see, that e.g., 5-6, 11. the claimed hardware would be used col. 11 Nazomi, Contrary in operating 33-37. there the environment of standard is nothing unusual improper construing system perform or in processes. claimed phys- disputed that the Jazelle hardware is requiring as the claims Id. We construed ically part of the ARM core present as execute the claimed that could devices, MyBook and both accused with the Mi functionality when combined Slingbox, and that is Id. at system. operating crosoft Windows not functional without the JTEK software. distinguished repeatedly have 794. We This the issue appear would resolve in which a environment description infringement. from a limita operates invention For the claimed invention itself. tion on points Nazomi out we Design in example, Advanced “an Software have held that direct- Inc., as in Silicon Corporation v. Fiserv. computer ed to a is claimed func- addressed Graphics, claims were tional terms is nonetheless so “the achieving particular long designed is in such a as oper the claim in which environment way [product] as to enable the user ate[d],” therefore not “limitations and were having to utilize function without by an accused performed that must be modify product.” Graphics, Silicon (Fed.Cir. (internal 641 F.3d infringer.” quotations at omit- 607 F.3d 2011). ted) Here, contrast, the claims do (emphasis argues contemplates an envi hardware that that installation of the JTEK software is cover precludes finding with not modification that it could be combined ronment where disagree. pur- infringement. a hardware- of require but rather the JTEK soft- chase and installation of that must software combination clearly “modification” ware constitutes a We affirm the the described functions.3 products.4 the accused district court’s claim construction. example, Typhoon For Touch Tech- Analysis Infringement
II.
Dell, Inc.,
nologies, Inc.
the asserted
infringe
in an
step
The second
portable,
keyboardless,
claimed “[a]
determining
analysis
whether the
memory
ment
computer, comprising ...
under
infringes
appli-
accused device
one data collection
storing
least
*7
(Fed.Cir.
Med.
Wright
the claim construction.
659 F.3d
1379
cation.”
2011)
There,
Tech.,
Corp.,
(emphases
original).
Typ-
v.
122 F.3d
Inc.
Osteonics
(Fed.Cir.1997).
Here,
argument that Nazo-
it is un-
hoon made the same
comprising "primary spectacle
Graph-
frame
Fantasy Sports
to
is similar
Silicon
magnetic
engaging
capable
...
second
Fantasy Sports,
ics.
In
the asserted
spectacle
football,”
auxiliary
frame.”
of an
members
playing
computer for
"[a]
specified
Id.
the first
hard-
at 1363. Because
functionally defined
forth a number of
set
capability, the claim at
alone had this
ware
computer-
that must be included
the
means
Eyewear
distinguishable
is
issue in Revolution
software, such as "means for scor-
executable
claims,
require a
which
com-
from Nazomi’s
Fantasy
ing
Sports, 287
points.”
bonus
perform
to
of hardware and software
bination
Fantasy Sports, the claims
F.3d at 1118. In
the claim limitations.
interpreted
standing
to claim software
were
computer
Graphics,
the
alone. As
Silicon
Sling argue that the JTEK soft-
4. Western and
merely
in which
was
the environment
the
hacking
be installed without
ware could not
operated.
software
hacking (or
and that such
the accused devices
Eyewear,
use)
relies on Revolution
Nazomi also
modifying
system
the
unintended
proposition
AspexEyewear,
Inc.
for the
v.
Inc.
We need
render the devices useless.
would
cover
if
could
that a claim can
Even JTEK
be
not address this issue.
(Fed.Cir.
standing
hacking, the addition of the
alone.
grant of
fringement.
AFFIRMED.
Costs
No costs.
LOURIE, concurring. Judge, Circuit majority’s
I decision concur granting district court’s decision
affirm the noninfringement
summary judgment join opin- I its patent.
the '362 through para- the first only up
ion II, holding Part in which
graph of ground affirmed on the
noninfringement is “capable of claim limitation exe-
that the ...” of instruction sets is
cuting plurality hardware that
not met the JTEK without software.
functional
In re ENHANCED SECURITY
RESEARCH, LLC.
No. 2013-1114. Appeals, States Court of
United Circuit.
Federal 13, 2014.
Jan.