An Accused Device Must Perform The Claim Limitation Of The Asserted Patent Without Modification To Infringe

In Nazomi Communications, Inc. v. Nokia Corp., No. 13-1165 (Fed. Cir. Jan. 10, 2014), the Federal Circuit affirmed the district court's grant of SJ of noninfringement in favor of defendants Western Digital Corporation and Western Digital Technologies, Inc. (collectively "Western"), and Sling Media, Inc. ("Sling").

Nazomi Communications, Inc. ("Nazomi") owns two patents—U.S. Patent No. 7,080,362 ("the '362 patent") and U.S. Patent No. 7,225,436 ("the '436 patent")—which describe a hardware-based Java Virtual Machine ("JVM") that can process software written in the Java programming language, as well as software that is not written in Java. Nazomi's hardware-based JVM enables the translation of Java bytecodes into instructions executable by a processor, while also retaining the ability to run non-Java applications by processing instructions without using the JVM.

Nazomi sued various technology companies for infringing the '362 and the '436 patents. Two defendants, Western and Sling, filed a motion for SJ contending that their accused products did not infringe the asserted claims.

Western and Sling each manufacture consumer products that include processors designed by ARM Limited ("ARM"). The ARM processor design used in the accused devices includes an optional hardware component called "Jazelle," which enables faster processing of Java bytecodes. In order to utilize the Jazelle hardware, a consumer product manufacturer would need to license ARM's Jazelle Technology Enabling Kit ("JTEK") software. Though the accused devices contained processor designs that included the Jazelle hardware, neither included the JTEK software that would enable the hardware to perform the optional functionality. In their motion for SJ, Western and Sling argued that Nazomi's claims require an accused device to perform the claimed functions themselves, and since their devices were unable to perform that functionality due to lacking the JTEK software, they did not infringe. The district court agreed with Western and Sling, and granted their motion for SJ. Nazomi appealed.

"Here, the structure (i.e., JTEK software) necessary to enable Jazelle hardware to process stack-based instructions (i.e., Java bytecodes) is not only inactive, it is not even present on the accused products. The installation of JTEK software is not unlocking existing functionality, but adding new functionality not currently present. There is no infringement." Slip op. at 15-16.

On appeal, the Federal...