Patent Case Summaries January 10, 2014

Federal Circuit Patent Case Summaries for the Week Ending January 10, 2014

The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending January 10, 2014. Linda Chang and Ross Barton prepared this edition.  

Case Summaries

Claim Interpretation: Intrinsic Evidence: Specification
Infringement: Literal infringement

Nazomi Communications, Inc. v. Nokia Corp., et al., No. 13-1165 (Fed. Cir. (N.D. Cal.) Jan. 10, 2014). Opinion by Dyk, joined by Wallach. Concurring opinion by Lourie.

In affirming the grant of summary judgment of noninfringement, the Federal Circuit held that the accused products did not infringe because they are not capable of performing the claimed functions.

In 2010, Nazomi Communications, Inc. (“Nazomi”) sued multiple companies, including Western Digital Corporation and Western Digital Technologies, Inc. (collectively “Western Digital”) and Sling Media, Inc. (“Sling”). Nazomi alleged infringement of U.S. Patent Nos. 7,080,362 and 7,225,436, which relate to a “central processing unit (CPU) capable of executing a plurality of instruction sets” that practice the claimed functions. The U.S. District Court for the Northern District of California construed the claims as requiring an apparatus comprising a combination of hardware and software capable of practicing the claimed functions. In view of this construction, the district court granted summary judgment of noninfringement because the accused hardware cannot meet the functional claim limitations in the absence of enabling software.

Nazomi appealed, at which point only Western Digital and Sling remained in the case as Defendants-Appellees. On appeal, the Federal Circuit affirmed the district court’s construction of the asserted claims to require an apparatus comprising a combination of hardware and software, noting that the specification expressly contemplated the need for this functionality. The Appeals Court also noted that the asserted claims do not contemplate merely an environment to be combined with software, but rather require a hardware-software combination that must perform the described functions.

In view of this construction, the Federal Circuit agreed with the district court that Western Digital and Sling did not infringe the patents by making the accused products. The accused products incorporate a processor developed by ARM Limited (“ARM”) that includes a hardware component called “Jazelle,” which can perform the functionality claimed in Nazomi’s patents only with software known as Jazelle Technology Enabling Kit (“JTEK”). Although the accused products incorporate ARM processors with the Jazelle hardware, they do not include JTEK software. In addition, Western Digital and Sling did not license the JTEK software and have never installed the JTEK software. The Federal Circuit concluded that the accused products do not infringe because the Jazelle hardware cannot perform the claimed functionality without JTEK.

In a concurring opinion, Judge Lourie agreed with the majority’s decision to affirm the district court’s decision granting summary judgment of noninfringement of the ’362 patent. However, Judge Lourie joined the opinion only up to the portion in which the holding of noninfringement is affirmed on the ground that the claim limitation “capable of executing a plurality of instruction sets . . .” is not met by Jazelle
hardware that is not functional without the JTEK software.  


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