By Jason Rantanen
Nazomi Communications, Inc. v. Nokia Corp. (Fed. Cir. 2014) Download 13-1165.Opinion.1-8-2014.1
Panel: Lourie (concurring), Dyk (author), Wallach
Nazomi is a small software and semiconductor development company that sued a set of large technology companies for patent infringement in a series of lawsuits. This appeal involved the district court's initial claim construction order in one of these suits and its grant of summary judgment of noninfringement in favor of Western Digital and Sling Media.
Two of Nazomi's patents were at issue in this appeal: Nos. 7,225,436 and 7,080,362. During the district court proceeding, the defendants moved for a "preliminary" construction of the asserted claims, arguing that all the claims "require that the processor of the claimed apparatus, when operated, will perform the recited functions related to the processing of stack-based instructions without modification." The court analyzed the issue in the context of representative claim 48 of the '362 patent
48. A central processing unit (CPU) capable of executing a plurality of instruction sets comprising:
an execution unit and associated register file, the execution unit to execute instructions of a plurality of instruction sets, including a stack based and a register-based instruction set;
a mechanism to maintain at least some data for the plurality of instruction sets in the register file, including maintaining an operand stack for the stack-based instructions in the register file and an indication of a depth of the operand stack;
a stack control mechanism that includes at least one of an overflow and underflow mechanism, wherein at least some of the operands are moved between the register file and memory; and
a mechanism to generate an exception in respect of selected stack-based instructions.
Nazomi contended that the claim required only hardware that was capable of performing the claimed functionalities (here, indicated by italics). The district court concluded, however, that the asserted claims required a combination of hardware and software capable of performing the functional limitations.
To understand why this distinction matters, some background in the defendants' products is useful. Western Digital and Sling Media use a processor designed by another company, ARM. In 2000, ARM developed a design involving a hardware component called "Jazelle." However, recognizing that not every product would use every circuitry feature in its processors, ARM also designed its processors so that unused functionality would remain dormant unless activated (and thus not unnecessarily drain resources). In order to activate the Jazelle circuitry, it is necessary to first install a software package called "JTEK." In both the accused Western Digital and Sling Media products, Jazelle is dormant and there was no evidence that any end user had installed JTEK. Nazomi's argument, however, was that Jazelle's presence in the accused products was sufficient sufficient for a finding of infringement (i.e.: hardware "capable").
On appeal, the Federal Circuit agreed with the district court's construction as requiring both hardware and software. It reasoned that because hardware cannot meet the functional limitations in the absence of enabling software, "the claims are properly construed as claiming an apparatus comprising a combination of hardware and software capable of practicing the claim limitations." (my emphasis). In reaching this conclusion, it distinguished cases involving "programmable" language, such as Intel Corporation v. U.S. International Trade Commission, 946 F.2d 821, 832 (Fed. Cir. 1991). Here, the claims did not merely cover hardware that could be programmed to perform the claimed functionality; they required that the processor be capable of executing the stated instruction sets. Since hardware alone cannot do that in the absence of enabling software, the only possibility was that the claims required both hardware and software.
The panel also affirmed the district court's grant of summary judgment of noninfringement (Judge Lourie agreed with outcome, but did not join as to the bulk of the court's reasoning), drawing on precedent that "“an apparatus claim directed to a computer that is claimed in functional terms is nonetheless infringed so long as the product is designed in such a way as to enable the user of that [product] to utilize the function without having to modify the product.” Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d 784, 794 (Fed. Cir. 2010). The critical issue was thus whether the installation of the JTEK software would constitute a "modification" of the accused product.
The Federal Circuit concluded that installation of the software would constitute a modification because in the asserted claims the software is part of the claimed structure. In other words, this is not a case where the software component already resided on the hardware and could be unlocked by using a key, or where the claims recited programable software that also resided on the hardware. Rather, the software was a necessary structural component of the claimed invention and its addition would constitute the addition of functionality that is not currently present.