Lack of Detail in Claim- Construction Analysis and Infringement Findings Results in Remand
April 11, 2005
Last Month at the Federal Circuit - May 2005
Judges: Rader (author), Michel, and Prost
In Nazomi Communications, Inc. v. ARM Holdings, PLC, No. 04-1101 (Fed. Cir. Apr. 11, 2005), the Federal Circuit vacated and remanded the district court’s grant of SJ of noninfringement of U.S. Patent No. 6,332,215 (“the ‘215 patent”) due to insufficiently detailed claim-construction analysis and noninfringement findings by the district court.
The ‘215 patent is directed to a computer-hardware accelerator that translates stack-based Java bytecode instructions into register-based instructions that are usable by a register-based CPU. Claim 1 includes a “hardware unit adapted to convert stack-based instructions into register-based instructions.” The parties disputed the meaning of the term “instructions” in this claim element. At the district court, the Plaintiff patent owner, Nazomi Communications, Inc. (“Nazomi”), proposed that the term meant a command that specifies or causes performance of an operation or function. The Defendants, ARM Holdings, PLC, ARM Limited, and ARM, Inc. (collectively “ARM”), proposed a narrower definition, including that the instructions be “provided to the processor at its input and thus be recognizable to the decoder.” ARM further sought to limit the term to exclude “control signals,” which are the signals generated by the processor’s decoder that
control downstream hardware.
The district court ruled that the “hardware unit or subunit that converts stackbased instructions into the register-based instructions [do so] prior to the processing of those instructions by the processor in the so-called ‘decode stage.’” Under this construction, without analyzing the accused product, the district court concluded that ARM’s device did not infringe literally or under the DOE, and granted ARM’s motion for SJ of noninfringement.
The Federal Circuit concluded that the district court, at best, glossed over the intrinsic evidence and improperly focused on reading the claims to preserve their validity. While acknowledging the rule that, if practicable, claims are to be read to preserve their validity, the Court stated that the claims must first be properly construed, “[o]therwise the construing court has put the validity cart before the claim construction horse.” Nazomi, slip op. at 7.
The Federal Circuit then reviewed its litany of claim-construction inquiries to assist the district court in its claimconstruction analysis of the term “instructions,” including the intrinsic evidence, expert testimony, the prior art, and claim differentiation.
The Federal Circuit also found the district court’s infringement analysis insufficient for review due to a lack of findings of fact on the nature of the accused device and based on a “circular” infringement analysis that improperly strived to preserve validity. Further, because the district court had construed the claims differently than the parties, the record did not include evidence that the accused product included each feature of the construed claims. Accordingly, the Federal Circuit vacated and remanded to the district court for a detailed claim-construction analysis and for factual findings on the infringement issue.