08/19/14

Gemalto v. HTC: Claims Cannot be Broader Than Scope of Specification or Contradict Interpretations in Prosecution History


Category: Claim Construction 
 
 
 
By: Abby Lin, Contributor 
 
TitleGemalto S.A. v. HTC Corp., No. 13-1397 (Fed. Cir.June 19, 2014).
Issues
1) [Integrated Circuit Claims Claim Construction:] Gemalto first challenges the district court’s construction of the “memory” limitation in the integrated circuit card claims to require all program memory on a single semiconductor substrate (or chip). Gemalto does not dispute that an integrated circuit card is “a card containing a single semiconductor substrate having a central processing unit and memory,” J.A. 31, but contends that the card should be able to access applications stored in off-chip memory, i.e., memory located on chips other than the chip containing the processor.
Gemalto, at *8 (text added).
2) [Programmable Device Claims Claim Construction:] Gemalto asserts that the term should be construed broadly to mean “a device that can execute a computer program.” Appellant’s Br. 37. Gemalto suggests that its proposed construction reflects the ordinary meaning of “programmable device” to one of skill in the art.
Id. at *13.
3) [Infringement by Doctrine of Equivalents:] Gemalto argues that the accused devices infringe the asserted claims, as construed by the district court, under the doctrine of equivalents… Gemalto contends that the accused devices infringe under the doctrine of equivalents when they temporarily load program instructions from off-chip memory into onchip cache memory before execution.
Id. at *17.
Holding
1) [Integrated Circuit Claims Claim Construction:] The claim language does not support Gemalto’s theory. The claim language requires a “memory” that stores an “application” and a “processor” that is coupled to the memory. ’317 patent col. 19 ll. 42, 43, 64. The specification demonstrates that the entire purpose of the invention was to enable the application to be stored within the memory on the chip of the integrated circuit card…. In short, we agree with the district court that the memory recited in the integrated circuit card claims should be construed as “all program memory,” which means “sufficient memory to run the Java code [i.e., the application and interpreter] in accordance with the patentee’sinvention.”
Id. at *8, 13 (text added).
2) [Programmable Device Claims Claim Construction:] In any event, Gemalto’s central problem is that the limitation is not “programmable device” but “memory.” The meaning of terms appearing in the ’727 patent must be construed in light of the same terms recited in the ’317 patent. All three asserted patents are directly related … Statements made by the applicant concerning the “memory” limitation in the ’317 patent’s claims therefore apply with equal force to the “memory” limitation in the ’727 patent’s claims with the same limitation.
Id. at *14 (text added).
We thus agree with the district court that the programmable device of claim 3 of the ’727 patent should be construed as “a single semiconductor substrate integrating electronic circuit components that includes a central processing unit and all program memory making it suitable for use as an embedded system.” J.A. 33.
Id. at *16-17 (text added).
3) [Doctrine of Equivalents.:] Establishing infringement under the doctrine of equivalents requires particularized testimony and linking argument as the equivalence between the claim limitation and the alleged equivalent. Texas Instruments, 90 F.3d at 1567. Such testimony is missing here.
Id. at *19 (text added).
Gemalto provided no testimony asserting that the difference in functionality between cache memory and permanent memory is in fact insubstantial… Absent any testimony suggesting that cache memory is equivalent to permanent memory, no reasonable fact finder could find that the two types of memory function in substantially the same way to achieve substantially similar results
Id. at *19-20 (text added).
 
 
 
Procedural HistoryGemalto S.A. (“Gemalto”) is the owner of U.S. Patent Nos. 6,308,317 (“the ’317 patent”), 7,117,485 (“the ’485 patent”), and 7,818,727 (“the ’727 patent”). Gemalto sued HTC Corporation, HTC America, Inc., Exedea, Inc., Google, Inc., Motorola Mobility, LLC, Samsung Electronics Co., Ltd., and Samsung Telecommunications America, LLC (collectively, “defendants”) in the Eastern District of Texas, alleging infringement of various claims of the three patents. The district court construed the asserted claims and granted summary judgment of non-infringement, concluding that the accused products did not infringe literally or under the doctrine of equivalents. On appeal [to this Court], Gemalto challenges the district court’s claim construction and its grant of summary judgment of non-infringement under the doctrine of equivalents.
Gemalto, at *2(text added).
 
 
 
 
Legal Reasoning (Newman, Rader, DYK):
Background
Claim 1 of the '317 patentClaim 1 of the ’317 patent, which is representative of the “integrated circuit card” claims, reads:

1. An integrated circuit card for use with a terminal, comprising:

a communicator configured to communicate with the terminal;
a memory storing:

an application derived from a program written in a high level programming language format wherein the application is derived from a program written in a high level programming language format by first compiling the program into a compiled form and then converting the compiled form into a converted form, the converting step including at least one step selected from a group consisting of

recording all jumps and their destinations in the original byte codes;

converting specific byte codes into equivalent generic byte codes or vice-versa;

modifying byte code operands from references using identifying strings to references using unique identifiers; and
renumbering byte codes in a compiled format to equivalent byte codes in a format suitable for interpretation; and

an interpreter operable to interpret such an application derived from a program written in a high level programming language format; and

a processor coupled to the memory, the processor configured to use the interpreter to interpret the application for execution and to use the communicator to communicate with the terminal.

Gemalto, at *5-6.
Claim 3 of the '727 patentClaim 3 of the ’727 patent, the only asserted claim directed to a “programmable device,” reads:

3. A programmable device comprising: a memory, and
a processor;

the memory comprising:

an interpreter; and

at least one application loaded in the memory to be interpreted by the interpreter, wherein the at least one application is generated by a programming environment comprising:

a) a compiler for compiling application source programs written in high level language source code form into a compiled form, and

b) a converter for post processing the compiled form into a minimized form suitable for interpretation within the set of resource constraints by the interpreter.

Id. at *6.
Legal StandardAs we held in Elkay Manufacturing Co. v. EBCO Manufacturing Co., 192 F.3d 973, 980 (Fed. Cir. 1999),“[w]hen multiple patents derive from the same initial application, the prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same claim limitation.” Id. (citing Jonsson v. Stanley Works, 903 F.2d 812, 817–18 (Fed. Cir. 1990)); see also Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1368–69 (Fed. Cir. 2007) (construing claim language based on statements made during prosecution of parent application regarding similar claim language), Biovail Corp. Int’l v. Andrx Pharms., Inc., 239 F.3d 1297, 1301–02 (Fed. Cir. 2001) (construing disputed limitation based on statements relating to that limitation during prosecution of a patent deriving priority from the same original application as the patent-in-suit).
Id. at *12-13.
1) Integrated Claims: Construction of the Word “Memory”
a. Claim Cannot be Broader Than Specification"The specification [...] identifies configurations in which a processor runs Java applications stored in offchip memory and ascribes them to the prior art—i.e., microprocessor-based personal computers. The specification describes “[c]onventional platforms that support Java” as “microprocessor-based computers,” which have “a central processing unit that requires certain external components (e.g., memory, input controls and output controls) to function properly.” [...] Gemalto’s invention was not directed to these conventional prior art platforms for Java. Instead, it focused on resource-constrained computing platforms, such as integrated circuit cards and microcontrollers, which were previously unable to run Java applications. “In contrast to the microprocessor, a microcontroller includes a central processing unit, memory and other functional elements, all on a single semiconductor substrate, or integrated circuit (e.g., a ‘chip’).”[...] According to the specification, the crucial difference between prior art microprocessor-based computers and microcontrollerbased devices is that “[i]n a microcontroller, the amount of each kind of memory available is constrained by the amount of space on the integrated circuit,” [...], while “[a] microprocessor system . . . is not constrained by what will fit on a single integrated circuit” device.” [...] The specification demonstrates that external memory storage was a defining feature of prior art Java technology, and that the patented invention was designed to eliminate the need for such external storage. Of course, “the claims cannot be of broader scope than the invention that is set forth in the specification.” [...]
Gemalto, at *9-10 (internal citations omitted).
b. Claim Interpretation Cannot Contradict Prosecution History Arguments
"Gemalto’s interpretation of the term “memory” also conflicts with the prosecution history. During initial prosecution and reexamination of the ’317 patent, Gemalto repeatedly distinguished invalidating prior art by emphasizing the novelty of squeezing a Java application onto the memory of an integrated circuit card."
Id. at *10.
[During re-exam, in] obtaining and sustaining the ’317 patent, Gemalto emphasized the significance of fitting the application and interpreter onto the memory of an integrated circuit card. If the card could simply access external memory sources, there would be no need to “squeeze” the application or its interpreter onto the card. The integrated circuit card could simply access the application and interpreter from an external memory source without being constrained by the resources available on the integrated circuit card itself.
Id. at *11.
[T]he language of claim 4 only allows some memory to be outside the processor, not outside the chip. It implies that the memory recited in other claims may be located on the same chip as the processor, but not within the processor itself. Claim differentiation based on claim 4 only indicates that none of the memory recited in other claims needs to be located “in the processor”; it says nothing about the location of the memory with respect to the chip containing the processor. Thus, claim differentiation does not support Gemalto’s argument or overcome the conclusion that the claims require the processor to be “coupled to the memory,” id. col. 19 l. 64, i.e., on the same chip, storing the application and interpreter necessary for the integrated circuit card to run the application. [Per Elkay, the same arguments and decisions apply to “memory” in the claims of ‘485 patent.]
Id. at *12 (text added).
2) Programmable Device Claims: Construction of the Term “Programmable Device”
a) Argued Term not a “Term of Art” When Those of Ordinary Skill in the Art Do Not Know Its Meaning[T]he testimony of two of the asserted patents’ inventors (Timothy Wilkinson and Scott Guthery), persons skilled in the relevant art, confirms that the term had no such meaning. When asked what the meaning of “programmable device” is, one inventor stated, “[i]t has no meaning.” J.A. 1074. The other averred, “I don’t remember anybody ever talking about a programmable device particularly. . . . Sounds like a patent term to me,” and agreed that even a punch-card computer could be considered a programmable device. J.A. 985. Gemalto does not assert that “programmable device” has any ordinary meaning to a skilled practitioner in the field of computer programming, let alone the particular construction it proposes.
Gemalto, at *13-14.
b) “Programmable Device” Is “Memory”
In any event, Gemalto’s central problem is that the limitation is not “programmable device” but “memory.” Claim 3 explicitly requires a device that has “a memory” and “at least one application loaded in the memory.” ’727 patent col. 19 ll. 30, 34. The meaning of terms appearing in the ’727 patent must be construed in light of the same terms recited in the ’317 patent. All three asserted patents are directly related (the ’727 patent is a continuation of the ’485 patent, which is a continuation of the ’317 patent), derive priority from the same provisional application, and share the same disputed claim language. Statements made by the applicant concerning the “memory” limitation in the ’317 patent’s claims therefore apply with equal force to the “memory” limitation in the ’727 patent’s claims with the same limitation.
Id. at *14.
Gemalto contends that the prosecution history of the ’727 patent supports a broad construction, pointing to a statement by the examiner that “the present claims are merely considered a broader recitation of claims 1–86 of the ’317 patent.” Appellant Br. 34 (internal quotation marks omitted). In fact, the examiner made the exact same statement about the claims as originally drafted—at which point they recited a “smart card” rather than a “programmable device.” Further, the examiner also recognized that the “[t]he subject matter claimed in the instant application [for the ’727 patent] is fully disclosed in the [’317] patent and is covered by the [’317] patent.” J.A. 751; see also J.A. 1183. The ’317 patent expressly discloses prior art computers—devices capable of executing computer programs—that run Java applications without the claimed invention. The examiner’s statement, standing alone, does not support construing “programmable device” so broadly that it encompasses any device capable of executing program instructions, particularly those within the prior art as defined by the specification of the ’727 patent and shared by all three asserted patents.
Id. at *16.
3) Infringement by Doctrine of Equivalents Requires Particularity in Arguments
Legal Standard, Doctrine of Equivalents
A device that does not literally infringe a claim may infringe under the doctrine of equivalents. Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1352 (Fed. Cir. 2012). We have held that “a patentee may prove that a particular claim element is met under the doctrine of equivalents . . . by showing that ‘the accused product performs substantially the same function in substantially the same way with substantially the same result’ as claimed in the patent.” Id. (quoting Crown Packaging Tech., Inc. v. Rexam Bev. Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009)); see also Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39–40 (1997).
Gemalto, at *17.
A plaintiff must provide “particularized testimony and linking argument to show the equivalents” are insubstantially different. AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1329 (Fed. Cir. 2007); accord Texas Instruments, Inc. v. Cypress Semiconductor Corp. 90 F.3d 1558, 1566 (Fed. Cir. 1996). “Generalized testimony as to the overall similarity between the claims and the accused infringer’s product or process will not suffice.” Texas Instruments, 90 F.3d at 1567. These requirements “assure that the fact-finder does not, ‘under the guise of applying the doctrine of equivalents, erase a plethora of meaningful structural and functional limitations of the claim on which the public is entitled to rely in avoiding infringement.’” Id. (quoting Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935 (Fed. Cir. 1987) (en banc)).
Id. at *18.
Failure to Provide Particularized TestimonyGemalto has failed to provide particularized testimony and linking argument. Gemalto provided no testimony asserting that the difference in functionality between cache memory and permanent memory is in fact insubstantial. […] The [expert]testimony does not address whether cache memory is equivalent to other types of memory that are capable of storing applications after a device is turned off. Absent any testimony suggesting that cache memory is equivalent to permanent memory, no reasonable fact finder could find that the two types of memory function in substantially the same way to achieve substantially similar results. [...] Establishing infringement under the doctrine of equivalents requires particularized testimony and linking argument as the equivalence between the claim limitation and the alleged equivalent. Texas Instruments, 90 F.3d at 1567. Such testimony is missing here.
Id. at *18-19.
Conclusion
“We affirm the district court’s claim construction and summary judgment of no infringement with respect to all asserted claims.”
Gemalto, at *20.
 
 
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