Temporary cache memory not the equivalent of permanent memory

Federal Circuit affirms claim construction and summary judgment of no doctrine of equivalents infringement.

Gemalto S.A. v. HTC Corp., et al. __F.3d__ (Fed. Cir. June 19, 2014) (Newman, Rader, DYK) (E.D. Tex., Davis) (3 of 5 stars)

CLAIM CONSTRUCTION: The district court properly used the terms "memory" and "programmable device" to limit the claims to devices that stored "all program memory" for running Java programs on the relevant chip, and not on some other device. The court was fairly vague with respect to what language in the claim was the hook for limiting the claims, and it relied on a seemingly pervasive distinction that the applicants made in the specification and throughout prosecution (including in related cases) between prior devices that could not fit all the program on the chip, and the invention, which overcame that problem. For the "programmable device" limitation, the prior art also disclosed computers that ran Java applications and thus Appellant's proposed construction could not be correct because it would "encompass [] any device capable of executing program instructions," even those disclosed in the prior art. Id. at 16.

INFRINGEMENT UNDER DOE: The accused devices only brought the program instructions into temporary on-chip cache memory temporarily and did not infringe under the doctrine of equivalents. Patentee failed to provide particularized testimony showing that the differences between the two were insubstantial. Patentee's argument that a cache storing 97% of the instructions is almost 100% of the instructions, did not address the equivalence of the accused structure and the claimed storing of an entire application and interpreter on the chip permanently. The prior art systems also used cache memory in the same way proposed by Appellant's infringement theory—and an equivalent cannot cover the prior art.

Note: The opinion relies on inventor testimony that "programmable device" does not have an ordinary meaning to a POSITA. Id. at 13. This may be a citable point for defendants, because many inventors give similar testimony.