Federal Circuit, January 10, 2014

The Federal Circuit holds that, when an apparatus claim recites limitations pertaining to its functionality, the functions must be enabled without modifying the product. The court found that installing software to enable a function is a modification.

Nazomi's patents are directed to hardware acceleration of Java Virtual Machines. The representative claim recites a central processing unit that is defined by functional limitations. The accused device is a processor that is capable of the claimed hardware acceleration, but requires enabling software to be licensed and installed separately. The Federal Circuit distinguished over Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821 (Fed. Cir. 1991) where the claims were to "programmable" means. "Programmable" meant only that the apparatus was capable of being programmed to perform the function.

Nazomi cited Silicon Graphics, Inc. V. ATI Techs. Inc., asserting that the products were still infringing where the user of the product is able to utilize the function "without having to modify the product" 607 F.3d 784, 794 (Fed. Cir. 2010). The Federal Circuit distinguished in that, in Silicon Graphics, the software was installed and merely required a license key to enable the function. Meanwhile, in the present case, in order to perform the claimed functionality, the defendants would have to modify the products by installing the enabling software.