Summary: CAFC confirms claim construction and summary judgment of non-infringement.
Case: Gemalto S.A. v. HTC Corp., No. 2013-1397 (Fed. Cir. Jun. 19, 2014) (precedential). On appeal from E.D. Tex. Before Newman, Rader, and Dyk.
Procedural Posture: Patent holder Gemalto appealed summary judgment of non-infringement. CAFC affirmed.
- Claim Construction: The asserted patent claims required either an “integrated circuit card” or a “programmable device” that includes a processor and a “memory” storing a converted application and an interpreter. The district court did not err in construing the “memory” limitation in the integrated circuit card claims to require all program memory that was necessary to run the application to be stored on the same semiconductor substrate (or chip) as the processor. The specification described the purpose of the invention as being to make it possible to load applications written in a high level programming language such as Java into the memory of a resource-constrained integrated circuit card, in contrast to prior art systems in which Java applications were stored in off-chip memory, and during prosecution and reexamination proceedings the applicants distinguished the prior art based on the alleged novelty of storing a Java application in the memory of an integrated circuit card.
- Claim Construction: The district court did not err in construing the asserted claim reciting a “programmable device” as requiring “a single semiconductor substrate . . . that includes a central processing unit and all program memory making it suitable for use as an embedded system.” The “programmable device” claims, like the “integrated circuit card” claims, required a “memory,” and therefore the applicants’ statements during prosecution of its related patents also requiring a “memory” were relevant to the construction. Moreover, the patentee did not dispute on appeal that the claimed “programmable device” must be subject to resource constraints requiring the device to lack sufficient memory to run the application unless the application is converted into a minimized form, and construing the claims so that the “programmable device” could access external off-chip memory would effectively read the resource-constraint limitation out of the claim.
- Infringement (Doctrine of Equivalents): The parties did not dispute that the accused devices did not literally infringe under the court’s constructions of the claims because it was undisputed that they store program instructions in off-chip memory. The patentee argued that the devices infringe under the doctrine of equivalents because they temporarily load program instructions from the off-chip memory into on-chip cache memory before executing the instructions. The circuit court found that the patentee failed to prove that this use of on-chip cache memory, which cannot store applications or any other content when a device is turned off, is substantially similar to on-chip memory which permanently stores the application. Moreover the cache memory that formed the basis of appellant’s argument was used in microprocessors at the time of the invention, and thus, under the appellant’s theory of equivalence, the patent claims would improperly encompass prior-art systems.