Gemalto S.A. v. HTC Corp.

• Decision Date: 19 June 2014
• Docket Number: No. 2013–1397.,2013–1397.
• Citation: 754 F.3d 1364
• Parties: GEMALTO S.A., Plaintiff–Appellant, v. HTC CORPORATION, HTC America, Inc., Exedea, Inc., Google, Inc., Motorola Mobility, LLC (also known as Motorola Mobility, Inc.), Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC, Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

754 F.3d 1364

GEMALTO S.A., Plaintiff–Appellant,

v.HTC CORPORATION, HTC America, Inc., Exedea, Inc., Google, Inc., Motorola Mobility, LLC (also known as Motorola Mobility, Inc.), Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC, Defendants–Appellees.

No. 2013–1397.

United States Court of Appeals, Federal Circuit.

June 19, 2014.

John M. Whealan, of Chevy Chase, MD, argued for plaintiff-appellant. With him on the brief were Dirk D. Thomas, McKool Smith, P.C., of Washington, DC; Robert A. Cote, of New York, N.Y.; and Joel L. Thollander, of Austin, TX.

David A. Perlson, Quinn Emanuel Urquhart & Sullivan, LLP, of San Francisco, CA, argued for defendants-appellees. With him on the brief were Charles K. Verhoeven and Antonio R. Sistos. Of counsel were Kristin J. Madigan, of San Francisco, CA, Joseph Milowic, III, and Robert B. Wilson, of New York, N.Y.

Before NEWMAN, RADER,^* and DYK, Circuit Judges.

DYK, Circuit Judge.

Gemalto 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, Gemalto challenges the district court's claim construction and its grant of summary judgment of non-infringement under the doctrine of equivalents. We affirm.

Background

The '317 patent, the '485 patent, and the '727 patent derive priority from the same provisional patent application,¹ and share the same named inventors, specification, and title: “Using a High Level Programming Language with a Microcontroller.” ² The patented technology is designed to allow resource-constrained devices, including microcontrollers, to run software applications (or programs) written in high level programming languages, such as Java.

Before Gemalto's invention, microprocessor-based personal computers could run Java applications. At the time of Gemalto's invention, these computers used processors that required substantial amounts of memory, which was located on chips separate from the chip containing the processor (referred to as off-chip memory). However, microcontroller-based devices, such as integrated circuit cards (or smart cards), had substantially less memory, using memory located on the same chip as the processor. These devices did not require external memory to function but were constrained by the amount of space on the chip (or integrated circuit) used for memory. At the time of Gemalto's invention, there were no Java implementations for microcontroller-based smart cards or integrated circuit cards. Due to the disparity between the constraints of the devices and the demands of the applications, “[f]itting Java technology inside smart cards was like playing golf in a telephone booth.” Joint Appendix (“J.A.”) 643 (quoting Sun Microsystems CEO Scott McNealy) (internal quotation marks omitted).

According to Gemalto, its invention enabled resource-constrained devices to run applications written in high level programming languages (such as Java) by minimizing the computing resources that applications consumed during storage and execution. The asserted claims are directed to applications that are converted from a high level programming language into another format that is suitable for resource-constrained computing devices. The application, in converted form, is stored in the memory of the chip containing the embedded processor that executes the application. However, the processor cannot run the converted application directly and requires an interpreter (or virtual machine) to translate the converted application into instructions that the processor can execute. The interpreter is also stored in on-chip memory. This is important because, to run a Java application, both the application and the interpreter must fit within the constraints of the platform for the purposes of storage and execution.

In October 2010, Gemalto sued the defendants for infringement, alleging that the defendants' smartphones infringe when they run the Android operating system and Java applications (converted using the Android software development kit). The defendants contended that the accused smartphones do not infringe because they are not resource-constrained devices, but rather rely on off-chip memory to run Java applications, similar to prior art personal computers.

Before summary judgment, Gemalto narrowed the number of asserted claims to the 6 claims asserted on appeal: claims 1, 4, and 5 of the '317 patent; claims 38 and 39 of the '485 patent; and claim 3 of the '727 patent.³ These claims recite either an “integrated circuit card” or a “programmable device” that includes a processor and a “memory” storing a converted application and an interpreter. Claim 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.

'317 patent col. 19 ll. 38–67. Claim 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.

'727 patent col. 19 ll. 29–43 (emphases added). Both the integrated circuit card and programmable device claims require the recited “memory” to store a converted application and an interpreter. The asserted programmable device claim expressly requires the application to be converted “into a minimized form suitable for interpretation within the set of resource constraints by the interpreter.” '727 patent col. 19 ll. 41–43.

The district court construed the recited “memory” as “all program memory”— i.e., “sufficient memory to run the Java code [or other high level programming language] in accordance with the patentee's invention.” J.A. 26 (footnote omitted). In other words, the court's construction required all application memory to be stored on the same chip as the processor. The court construed “resource constraints” to mean “insufficient memory to run the compiled application source program in an unconverted form.” J.A. 40–41. The district court construed “integrated circuit card” to mean “a card containing a single semiconductor substrate [ i.e., a chip] having a central processing unit and all program memory.” J.A. 31. The court construed “programmable device” 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.

After the court construed the claims, the defendants moved for summary judgment of non-infringement. Gemalto did not dispute that the “accused devices do not contain ‘all program memory’ on a single semiconductor substrate because they require ‘off chip’ memory to run the accused ... Android applications,” J.A. 11, but argued that requiring off-chip memory did not preclude infringement. The court concluded that the accused devices did not literally infringe because applications were stored in off-chip memory— i.e., on a chip other than the chip containing the processor. The court also rejected Gemalto's theory that the accused devices infringed under the doctrine of equivalents when they temporarily loaded program instructions into on-chip cache memory prior to execution. The court concluded that temporary storage in cache memory was not substantially the same as permanent memory storage.

Gemalto appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). Claim construction is a question of law that we review de novo. Lighting Ballast Control LLC v. Philips Elecs. N.A. Corp., 744 F.3d 1272, 1276–77 (Fed.Cir.2014) (en banc); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–55 (Fed.Cir.1998) (en banc). We review a district court's grant of summary judgment of non-infringement without deference. Bd. of Regents of the Univ. of Tex....