Revisiting the wording of claims that recite a combination of hardware and software, the U.S. Court of Appeals for the Federal Circuit upheld a holding of non-infringement.  Nazomi Commc’ns., Inc. v. Nokia Corp., Case No. 13-1165 (Fed. Cir., Jan. 10, 2014) (Dyk, J.) (Lourie, J., concurring).

Plaintiff patentee appealed from claim construction decision and grant of summary judgment of non-infringement.  The asserted claims are apparatus claims directed to “a hardware-based [Java Virtual Machine] capable of processing stack-based instructions, that also retains the ability to run legacy (i.e., register-based) applications without utilizing the JVM.”  The accused products could only perform the allegedly infringing operations after the installation of a software “technology enabling kit.”  The defendants did not license or install this enabling software, and it was agreed that the accused device could not perform all of the recited steps without the software installed.

The representative claim recited “A central processing unit (CPU) capable of executing a plurality of instruction sets[,]” where one of the four instruction sets is only enabled by the absent enabling software.  The plaintiff contended that the claim required only hardware that was capable of performing the claimed functionalities, and the enabling software was not required.  The panel agreed with the district court’s claim construction of the district court that required a hardware and software combination capable of performing all of the allegedly infringing operations.  Because the enabling software was not installed by the defendants, the panel concluded that the accused product was not capable of infringing the claims.

The panel analyzed two lines of cases applicable to the issue.  The first line,  relied upon by the plaintiff, involved cases where a claimed functionality was present but had to be “unlocked,” for example, by purchasing a product key, or where claims recited hardware “programmable” to perform a function.  Intel Corp. v. U.S. Int’l Trade Comm’n, (programmable hardware) and Finjan v. Secure Computing, (IP Update, Vol. 13, No. 11) (functions unlocked with product key).  According to this line of cases, even if a defendant does not unlock or program the function, the claims can still be infringed.

The second line of cases involved claims where claimed hardware is “configured to” or “programmed to” perform a set of functions.  The Federal Circuit concluded that such structure claim language indicated that the recited functions must all be present in a device for infringement.  Thus, unless an alleged infringer configures or programs hardware to perform a function, there is no infringement.  In other words, in such a case the product must be “modified”, i.e., structurally, by adding the claimed function, whereas in the Intel and Finjan line of cases, the claimed function is already present.

The majority, analyzing the “capable of” language of the asserted patents concluded that the second line of cases applied.  Installing the enabling software would modify the hardware and provide the missing function, but without the missing software, there was no infringement.

Judge Lourie concurred with the determination of the majority as to the dispositive nature of the “capable to” language, but did not join the majority in applying the “modification” rationale.