Hardware lacking enabling software does not infringe an apparatus claim requiring a hardware-software combination

Fed. Cir. affirms summary judgment of non-infringement. The claims recited a computer "capable of" processing both two specific types of instructions in a certain manner. The Fed. Cir. construed the claims to require a hardware-software combination (not just hardware alone) because they recite "specific claim functionalities that cannot be practiced in hardware alone and require enabling software," rather than "generic mechanisms,"--more-->slip op. at 10, adding that "there is nothing unusual or improper in construing device claims to require particular functionality."Id. at 11.

Nazomi Communications, Inc. v. Nokia Corp., __ F.3d __ (Fed. Cir. Jan. 10, 2014) (Lourie (concur-in-part), DYK, Wallach) (N.D. Cal.: Whyte) (2 of 5 stars)

Precedent construing different claim language i.e., "programmable" hardware (Intel) or hardware that was intended for use in a particular environment (Silicon Graphics and Advanced Software Design) was inapplicable. Id. at 13. The defendants sold only hardware, which could not perform the claimed functions without enabling software that the defendants did not install or sell with their products. Because it was undisputed that the accused hardware "is not functional" without that software, the Fed. Cir. held "[t]his would appear to resolve the issue of infringement." Id. at 13-14. Nevertheless, the majority added that installation of enabling software was a "modification" of the accused product, making this case similar to Typhoon Technologies and Telemac and unlike Silicon Graphics and Finjan.

Judge Lourie concurred in all aspects of the Court's opinion except the latter part of the infringement analysis discussing prior caselaw.