Nazomi Comm., Inc. v. Nokia: Installation of Software a 'modification' of Accused Product, Avoids Infringement

Category: Infringement 
By: Jesus Hernandez, Blog Editor/Contributor   
TitleNazomi Comm., Inc. v. Nokia Corp., No. 2013-1165 (Fed. Cir. Jan. 10, 2014).
[1] The district court construed the claims [directed to a CPU] as claiming an apparatus, comprising both hardware and software, capable of practicing the claimed functionality. The [district] court rejected Nazomi’s construction requiring only hardware that was capable of performing the claimed functionalities.
Nazomi Comm., Inc. at *9-10 (text added).
[2] [W]e have held 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.” […] Nazomi argues that installation of the JTEK software is not a modification that precludes a finding of infringement.
Id. at *14 (internal citations omitted, text added).
[1] The face of the claims shows that each particular functionality is a claim limitation [since hardware cannot meet functional claim limitations in the absence of enabling software].
Id. at *10 (text added).
[2] The purchase and installation of the JTEK software clearly constitutes a “modification” of the accused products [because the accused products infringe only if presently structured to perform the claimed function, rather than after a modification - such as installation of software].
Id. at *14 (text added).

Procedural HistoryPlaintiff Nazomi Communications, Inc. (“Nazomi”) appeals from a decision of the United States District Court for the Northern District of California construing disputed claim language and granting summary judgment of non-infringement in favor of defendants Western Digital Corporation and Western Digital Technologies, Inc. (collectively, “Western”), and Sling Media, Inc. (“Sling”).
Nazomi Comm., Inc. at *3.
Legal Reasoning (Lourie, Dyk, Wallach)
Representative claim 48 of the ’362 patent reads: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 Comm., Inc. at *5.
Dispositive Fact: Accused Devices Cannot Perform Claimed Functionality Until Optional Software InstalledBecause the ARM core design and the chips based on that core are intended to be used in a wide variety of products, they often contain optional functionality not utilized nor enabled by every manufacturer. The Jazelle hardware is one such optional feature. Both accused products, Western’s MyBook World Edition (“MyBook”) and Sling’s Slingbox Pro-HD (“Slingbox”), have CPUs containing an ARM core with Jazelle hardware. However, the Jazelle hardware on the accused devices cannot perform the functionality described in Nazomi’s asserted claims without software known as Jazelle Technology Enabling Kit (“JTEK”). Consumer product manufacturers can license JTEK from ARM for a fee. Defendants Western and Sling did not license the JTEK software from ARM and have never installed the JTEK software to enable Jazelle on the accused devices.
Id. at *8.
[1] Apparatus CPU Claim directed to Software and Hardware
Recitation of Particular Functions and Interoperability leads to Software-Hardware Construction[C]laim 48 does not recite generic mechanisms, but requires specific functions of “(1) maintaining an operand stack for the stack-based instructions; (2) performing ‘stack control’ of ‘overflow/underflow’ by moving operands between the registers and memory; and (3) generating exceptions for certain stack-based instructions.” JA 3938; see also ’362 patent col. 10 l. 57 to col. 11 l. 6. These limitations on the claimed CPU pertain specifically to the processing of stack-based instructions.
Nazomi Comm., Inc. at *10-11.
Failure to use "programmable" language proves fatal[I]n Intel Corporation v. U.S. International Trade Commission, the claims only required “programmable selection means,” and the accused product infringed because it could be programmed to perform the infringing use. 946 F.2d 821, 832 (Fed.Cir. 1991). We held that the “programmable” claim language required only that the accused product could be programmed to perform the claimed functionality. Id. In contrast, Nazomi has not claimed an apparatus with hardware “programmable” to process stack-based instructions, it has claimed a combination of hardware and software capable of performing that function.
Id. at *11-12 (emphasis added).
[2] Installation of Software a "modification"
Claim Language Requires Product to be Presently Structured to Perform Functions[In Typhoon Touch Technologies, Inc. v. Dell, Inc. the court found] that an accused device must be presently “structured to store at least one data collection application” to infringe the asserted claims—that the enumerated functions served as claim limitations. Id. at 1381. Here, as in Typhoon, the products sold by Western and Sling do not infringe without modification—the modification of installing the required software.[...] Nazomi Comm., Inc. at *14-15 (some internal citations omitted).
Distinguishing High Tech Medical[I]n High Tech Medical, which stated “if a device is designed to be altered or assembled before operation, the manufacturer may be held liable for infringement if the device, as altered or assembled, infringes a valid patent.” 49 F.3d at 1556. Here there is no suggestion that the accused devices were designed to be used with the JTEK software.
Id. at *16.
Therefore, we affirm the district court’s grant of summary judgment of non-infringement.
Nazomi Comm., Inc. at *17.
Image Attribution Statement: AAAndrey A, “NXP ARM processor," available under a  Creative Commons Attribution-Share Alike 3.0 Unported license, http://commons.wikimedia.org/wiki/File:Windm2.jpg (last visited Jan. 10, 2014).
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