Appeal from the United States District Court for the Eastern District of Texas in No. 10-CV-0561, Judge Leonard Davis.
JOHN M. WHEALAN, of Chevy Chase, Maryland, argued for plaintiff-appellant. With him on the brief were DIRK D. THOMAS, McKool Smith, P.C., of Washington, DC; ROBERT A. COTE, of New York, New York; and JOEL L. THOLLANDER, of Austin, Texas.
DAVID A. PERLSON, Quinn Emanuel Urquhart & Sullivan, LLP, of San Francisco, California, argued for defendants-appellees. With him on the brief were CHARLES K. VERHOEVEN and ANTONIO R. SISTOS. Of counsel were KRISTIN J. MADIGAN, of San Francisco, California, JOSEPH MILOWIC, III, and ROBERT B. WILSON, of New York, New York.
Before NEWMAN, RADER,[*] and DYK, Circuit Judges.
Dyk, Circuit Judge .
Gemalto S.A. (" Gemalto" ) is the owner of U.S. Patent Nos. 6,308,317 (" the '317 patent" ), 7,117,485 (" the '485 patent" ), and 7,818,727 (" the '727 patent" ). Gemalto sued HTC Corporation, HTC America, Inc., Exedea, Inc., Google, Inc., Motorola Mobility, LLC, Samsung Electronics Co., Ltd., and Samsung Telecommunications America, LLC (collectively, " defendants" ) in the Eastern District of Texas, alleging infringement of various claims of the three patents. The district court construed the asserted claims and granted summary judgment of non-infringement, concluding that the accused products did not infringe literally or under the doctrine of equivalents. On appeal, Gemalto challenges the district court's claim construction and its grant of summary judgment of non-infringement under the doctrine of equivalents. We affirm.
The '317 patent, the '485 patent, and the '727 patent derive priority from the same provisional patent application, and share the same named inventors, specification, and title: " Using a High Level Programming Language with a Microcontroller."  The patented technology is designed to allow resource-constrained devices, including microcontrollers, to run software applications (or programs) written in high level programming languages, such as Java.
Before Gemalto's invention, microprocessor-based personal computers could run Java applications. At the time of Gemalto's invention, these computers used processors that required substantial amounts of memory, which was located on chips separate from the chip containing the processor (referred to as off-chip memory). However, microcontroller-based devices, such as integrated circuit cards (or smart cards), had substantially less memory, using memory located on the same chip as the processor. These devices did not require external memory to function but were constrained by the amount of space on the chip (or integrated circuit) used for memory. At the time of Gemalto's invention, there were no Java implementations for microcontroller-based smart cards or integrated circuit cards. Due to the disparity between the constraints of the devices and the demands of the applications, " [f]itting Java technology inside smart cards was like playing golf in a telephone booth." Joint Appendix (" J.A." ) 643 (quoting Sun Microsystems CEO Scott McNealy) (internal quotation marks omitted).
According to Gemalto, its invention enabled resource-constrained devices to run applications written in high level programming languages (such as Java) by minimizing the computing resources that applications consumed during storage and execution. The asserted claims are directed to applications that are converted from a high level programming language into another format that is suitable for resource-constrained computing devices. The application, in converted form, is stored in the memory of the chip containing the embedded processor that executes the application. However, the processor cannot run the converted application directly and requires an interpreter (or virtual machine) to translate the converted application into instructions that the processor can execute. The interpreter is also stored in on-chip memory. This is important because, to run a Java application, both the application and the interpreter must fit within the constraints of the platform for the purposes of storage and execution.
In October 2010, Gemalto sued the defendants for infringement, alleging that the defendants' smartphones infringe when they run the Android operating system and Java applications (converted using the Android software development kit). The defendants contended that the accused smartphones do not infringe because they are not resource-constrained devices, but ...