Smart card maker Gemalto, a company with a current market capitalization of EUR 5.9  billion ($ 7.6 billion), brought a patent infringement lawsuit in October 2010 against Google, Motorola, Samsung and HTC, alleging that "Android Applications and the development of such applications using the Android SDK infringe one or more claims of the Patents-in-Suit". Gemalto basically says it made Java work on small devices. I didn't keep a close eye on that litigation in the Eastern District of Texas. The case was dismissed earlier this year on summary judgment. Gemalto appealed, and yesterday Gemalto's opening brief in its appeal of that dismissal to the Federal Circuit became publicly available (this post continues below the document):
Gemalto is trying to resuscitate its case against the key players in the Android ecosystem by arguing that the district court based its summary judgment on an erroneous claim construction, but even under the district court's interpretation Gemalto says it has a case for infringement under the Doctrine of Equivalents (DoE).
The primary problem facing Gemalto here is that its patent were filed in connection with Gemalto's development of Java-capable smart cards, where everything is on the same chip, but the smartphones it accused of infringement obviously have more components. The district court read the patent as being pretty smart card-specific and, as a result, imported certain limitations into the claims by means of its claim construction, above all the requirement "all" memory for storing converted applications has to be on-chip (and not separate) memory. Gemalto disagrees that its patents is smart card-specific and points to rather unspecific references to other embodiments in the specification. It also thinks that the claim term "programmable device" should not be interpreted as being coextensive with the term "microcontroller". These are the claim construction arguments based on which it hopes to capture infringements outside the field of smart cards. And if all else fails, it wants to try the DoE, saying that "the accused Android smartphones execute 100% of the program instructions from on-chip cache memory, and 97% of the time the instruction code to be executed for a given application is stored in the on-chip cache memory (either the L1 instruction cache, the L1 data cache, or the L2 data cache) before it is requested or needed by the CPU". In other words, 97% is claimed to be equivalent to 100%.
If Gemalto's appeal succeeded, the final judgments would be vacated and the case would be remanded to the Eastern District of Texas, where it would have to be put before a jury.
The finding of non-infringement, based on the court's claim construction, was originally made by United States Magistrate Judge John D. Love. I've uploaded it to Scribd. Chief Judge Leonard Davis adopted the Magistrate Judge's findings.
Chief Judge Davis does not have a reputation for being exceedingly defendant-friendly, but there was a time when he was more reluctant to dismiss patent infringement claims than as of recent. In March he threw out a claim against Red Hat. And in April he adopted Magistrate Judge Love's recommended finding of non-infringement in the Gemalto case.
Claim constructions by district courts are frequently reversed by the Federal Circuit. I haven't yet formed an opinion on this appeal, to be honest. I've read the brief and the decisions, but don't know if and when I'll find the time to look at this in more detail. Maybe I'll just wait until the Federal Circuit rules on this. Then the case will either be over (it's unlikely that this would go up to the Supreme Court then) or Gemalto will get a second wind, in which case the further proceedings in Texas could get interesting.
[Update] A reader contacted me after this post and drew my attention a UK ruling that came down yesterday and declared two Gemalto patents invalid. HTC anticipated a Mannheim lawsuit (which Gemalto indeed filed, and lost on April 30, 2013, over of a patent from the same family as the ones at issue in Texas) and launched a pre-emptive declaratory judgment action in the UK against multiple Gemalto patents. Gemalto gave up on some of them along the way and decided to defend four of them at a recent trial. Two of the four have been declared invalid, and the other two will come to judgment in the near term. [/Update]
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