Hardware alone does not infringe patent that also requires software running on the hardware

The mere capability of infringement does not necessarily give rise to liability for infringement, according to the Federal Circuit’s opinion in Nazomi Communications v. Nokia Corp. (No. 2013-1165, 1/10/2014).

In the case, non-practicing entity Nazomi held two patents covering hardware-based java virtual machines (JVMs) that can process both programming instructions stored in a stack-based memory and legacy applications that are stored in a register-based memory. The case involved electronic devices sold by Western Digital (specifically, the MyBook) and Sling Media (which sells the SlingBox). Each device  contained a processor that was licensed from ARM Limited. The ARM processors could not process stack-based instructions by themselves, but they were designed so that they could process stack-based instructions if programmed with additional software from ARM known the “Jazelle Technology Enabling Kit” (JTEK). Neither the MyBook nor the SlingBox contained the JTEK instructions.

Western Digital and Sling moved for summary judgment of non-infringement, and the district court granted the motion. On appeal, the Federal Circuit affirmed, stating that the MyBook and SlingBox were capable of infringing only if modified to include the JTEK software, stating that “[t]he purchase and installation of the JTEK software clearly constitutes a ‘modification’ of the accused products.”

The Court distinguished this situation from cases where hardware is shipped with software installed, but disabled:

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.

The Court also briefly addressed the issues of whether the products indirectly infringed or contributed to infringement, and it did away with those issues by stating there was no suggestion in this case that the MyBook or SlingBox were designed to be used with the JTEK software.

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