Patterson Intellectual Property Law

Firm Update

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Inventive patent requires both hardware and software

In these technology-oriented times, it seems that more and more patents claiming computer-related inventions are being filed. But, when looking to nip infringers in the bud, holders of such patents will need to take care in drafting claims. Specifically, they should include separate claim sets to hardware, software, and a combination of hardware and software to cover all variations of the alleged infringing product. Case in point:  Nazomi Communications, Inc. v. Nokia Corp., No. 2013-1165, Jan. 10, 2014 (Fed. Cir.).

Booting the claims

Nazomi Communications holds two patents covering a hardware-based Java Virtual Machine (JVM) apparatus “capable of” processing both stack-based and register-basedmemory systems. The invention facilitates faster processing speeds.

Western Digital Corporation and Sling Media are consumer product manufacturers that incorporate various processors into their products. Western’s MyBook World edition and Sling’s Slingbox Pro-HD have central processing units (CPUs) containing a core that includes a hardware component called Jazelle licensed from a third party. That hardware, however, can’t perform the functions described in Nazomi’s patent without software known as the Jazelle Technology Enabling Kit (JTEK). Western and Sling didn’t license JTEK from the third party and have never installed it on their products.

In February 2010, Nazomi filed a patent infringement lawsuit against various technology companies, including Western and Sling. The two companies sought summary judgment of noninfringement. They contended that the patents should be interpreted (or “construed”) to require that the apparatus perform the claimed functions itself and, therefore, their accused products didn’t infringe because they included only the hardware and not the necessary software. After the district court granted them summary judgment, Nazomi appealed.

Drawing a hard line

The district court found that the patent covered an apparatus comprising both hardware and software capable of performing register-based and stack-based instructions. Without the enabling JTEK software, the court noted, Jazelle hardware can’t process stack-based instructions. Therefore, it rejected Nazomi’s argument that the patent required only hardware that was capable of performing the claimed functionality, regardless of whether the apparatus ever actually does so.

The U.S. Court of Appeals for the Federal Circuit agreed with the lower court. It found that the patent described a CPU that can perform particular functions — namely, the processing of both register-based and stack-based instructions. Because hardware can’t perform those functions without enabling software, the patent was indeed properly interpreted as covering an apparatus comprising a combination of hardware and software capable of performing the functions. “There is nothing unusual or improper in construing device claims to require the particular functionality,” the court said.

Calling the game

The Federal Circuit went on to find that Western’s and Sling’s products didn’t infringe the patent as construed. The court acknowledged that, in the past, it has held that an apparatus claim related to a computer described in functional terms is nonetheless infringed if the accused product is designed to enable a user to use the function without having to modify the product. But it dismissed Nazomi’s argument that installation of the JTEK software isn’t a modification that precludes a finding of infringement.

Rather, the purchase and installation of the software clearly constitutes a “modification” of the accused products. The installation of JTEK in the accused products wouldn’t merely unlock existing functionality — it would add new functionality. Therefore, the court said, “there is no infringement.”