Gemalto S.A. v. Htc Corporation , 754 F.3d 1364 ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
GEMALTO S.A.,
Plaintiff-Appellant,
v.
HTC CORPORATION, HTC AMERICA, INC.,
EXEDEA, INC., GOOGLE, INC., MOTOROLA
MOBILITY, LLC (also known as Motorola Mobility,
Inc.), SAMSUNG ELECTRONICS CO., LTD. AND
SAMSUNG TELECOMMUNICATIONS AMERICA,
LLC,
Defendants-Appellees.
______________________
2013-1397
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 10-CV-0561, Judge
Leonard Davis.
______________________
Decided: June 19, 2014
______________________
JOHN M. WHEALAN, of Chevy Chase, Maryland, ar-
gued 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.
2 GEMALTO S.A. v. HTC CORPORATION
DAVID A. PERLSON, Quinn Emanuel Urquhart & Sulli-
van, LLP, of San Francisco, California, argued for defend-
ants-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 Electron-
ics 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.
BACKGROUND
The ’317 patent, the ’485 patent, and the ’727 patent
derive priority from the same provisional patent applica-
∗
Randall R. Rader vacated the position of Chief
Judge on May 30, 2014.
GEMALTO S.A. v. HTC CORPORATION 3
tion, 1 and share the same named inventors, specification,
and title: “Using a High Level Programming Language
with a Microcontroller.” 2 The patented technology is
designed to allow resource-constrained devices, including
microcontrollers, to run software applications (or pro-
grams) 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 proces-
sors 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 (quot-
ing 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 minimiz-
1 Application Serial No. 60/029,057, filed on October
25, 1996.
2 For simplicity, all references to the specification
are to the ’317 patent.
4 GEMALTO S.A. v. HTC CORPORATION
ing 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 con-
straints of the platform for the purposes of storage and
execution.
In October 2010, Gemalto sued the defendants for in-
fringement, 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 rather rely on off-chip
memory to run Java applications, similar to prior art
personal computers.
Before summary judgment, Gemalto narrowed the
number of asserted claims to the 6 claims asserted on
appeal: claims 1, 4, and 5 of the ’317 patent; claims 38 and
39 of the ’485 patent; and claim 3 of the ’727 patent. 3
These claims recite either an “integrated circuit card” or a
“programmable device” that includes a processor and a
3 Gemalto previously asserted 28 claims across the
three patents. The 22 claims not asserted on appeal were
not before the district court at summary judgment.
GEMALTO S.A. v. HTC CORPORATION 5
“memory” storing a converted application and an inter-
preter. Claim 1 of the ’317 patent, which is representative
of the “integrated circuit card” claims, reads:
1. An integrated circuit card for use with a termi-
nal, comprising:
a communicator configured to communicate with
the terminal;
a memory storing:
an application derived from a program written
in a high level programming language format
wherein the application is derived from a pro-
gram written in a high level programming lan-
guage format by first compiling the program
into a compiled form and then converting the
compiled form into a converted form, the con-
verting step including at least one step selected
from a group consisting of
recording all jumps and their destinations in
the original byte codes;
converting specific byte codes into equivalent
generic byte codes or vice-versa;
modifying byte code operands from references
using identifying strings to references using
unique identifiers; and
renumbering byte codes in a compiled format to
equivalent byte codes in a format suitable for
interpretation; and
an interpreter operable to interpret such an
application derived from a program written in a
high level programming language format; and
a processor coupled to the memory, the processor
configured to use the interpreter to interpret the
6 GEMALTO S.A. v. HTC CORPORATION
application for execution and to use the communi-
cator to communicate with the terminal.
’317 patent col. 19 ll. 38–67. Claim 3 of the ’727 patent,
the only asserted claim directed to a “programmable
device,” reads:
3. A programmable device comprising:
a memory, and
a processor;
the memory comprising:
an interpreter; and
at least one application loaded in the memory
to be interpreted by the interpreter, wherein
the at least one application is generated by a
programming environment comprising:
a) a compiler for compiling application source
programs written in high level language
source code form into a compiled form, and
b) a converter for post processing the compiled
form into a minimized form suitable for inter-
pretation within the set of resource constraints
by the interpreter.
’727 patent col. 19 ll. 29–43 (emphases added). Both the
integrated circuit card and programmable device claims
require the recited “memory” to store a converted applica-
tion and an interpreter. The asserted programmable
device claim expressly requires the application to be
converted “into a minimized form suitable for interpreta-
tion within the set of resource constraints by the inter-
preter.” ’727 patent col. 19 ll. 41–43.
The district court construed the recited “memory” as
“all program memory”—i.e., “sufficient memory to run the
Java code [or other high level programming language] in
GEMALTO S.A. v. HTC CORPORATION 7
accordance with the patentee’s invention.” J.A. 26 (foot-
note omitted). In other words, the court’s construction
required all application memory to be stored on the same
chip as the processor. The court construed “resource
constraints” to mean “insufficient memory to run the
compiled application source program in an unconverted
form.” J.A. 40–41. The district court construed “integrated
circuit card” to mean “a card containing a single semicon-
ductor substrate [i.e., a chip] having a central processing
unit and all program memory.” J.A. 31. The court con-
strued “programmable device” as “a single semiconductor
substrate integrating electronic circuit components that
includes a central processing unit and all program
memory making it suitable for use as an embedded sys-
tem.” J.A. 33.
After the court construed the claims, the defendants
moved for summary judgment of non-infringement. Ge-
malto did not dispute that the “accused devices do not
contain ‘all program memory’ on a single semiconductor
substrate because they require ‘off chip’ memory to run
the accused . . . Android applications,” J.A. 11, but argued
that requiring off-chip memory did not preclude infringe-
ment. The court concluded that the accused devices did
not literally infringe because applications were stored in
off-chip memory—i.e., on a chip other than the chip con-
taining the processor. The court also rejected Gemalto’s
theory that the accused devices infringed under the
doctrine of equivalents when they temporarily loaded
program instructions into on-chip cache memory prior to
execution. The court concluded that temporary storage in
cache memory was not substantially the same as perma-
nent memory storage.
Gemalto appealed. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1). Claim construction is a question of
law that we review de novo. Lighting Ballast Control LLC
v. Philips Elecs. N.A. Corp., 744 F.3d 1272, 76–77 (Fed.
8 GEMALTO S.A. v. HTC CORPORATION
Cir. 2014) (en banc); Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1454–55 (Fed. Cir. 1998) (en banc). We review
a district court’s grant of summary judgment of nonin-
fringement without deference. Bd. of Regents of the Univ.
of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1367
(Fed. Cir. 2008).
DISCUSSION
I. Claim Construction
A. “Integrated Circuit Card” Claims
Our claim construction methodology is described in
Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir.
2005) (en banc). Gemalto first challenges the district
court’s construction of the “memory” limitation in the
integrated circuit card claims to require all program
memory on a single semiconductor substrate (or chip).
Gemalto does not dispute that an integrated circuit card
is “a card containing a single semiconductor substrate
having a central processing unit and memory,” J.A. 31,
but contends that the card should be able to access appli-
cations stored in off-chip memory, i.e., memory located on
chips other than the chip containing the processor. The
claim language does not support Gemalto’s theory. The
claim language requires a “memory” that stores an “appli-
cation” and a “processor” that is coupled to the memory.
’317 patent col. 19 ll. 42, 43, 64. The specification demon-
strates that the entire purpose of the invention was to
enable the application to be stored within the memory on
the chip of the integrated circuit card.
Integrated circuit cards, such as smart cards, are
small, portable devices. Before Gemalto’s invention,
applications for integrated circuit cards were typically
written in low level programming languages to conserve
memory. With the expansion of digital networking, there
was a “need to load new applications on the card . . . .
GEMALTO S.A. v. HTC CORPORATION 9
However, typically, this [wa]s not practical . . . using low
level languages.” ’317 patent col. 3 ll. 47–48. The purpose
of Gemalto’s invention was to make it possible to load
applications written in high level languages, such as
Java, into the memory of a resource-constrained integrat-
ed circuit card.
Gemalto does not dispute that integrated circuit
cards are one-chip devices, but argues that these cards
can access applications stored in external memory
sources, such as other chips, in accordance with its inven-
tion. The specification, however, identifies configurations
in which a processor runs Java applications stored in off-
chip memory and ascribes them to the prior art—i.e.,
microprocessor-based personal computers. The specifica-
tion describes “[c]onventional platforms that support
Java” as “microprocessor-based computers,” which have “a
central processing unit that requires certain external
components (e.g., memory, input controls and output
controls) to function properly.” ’317 patent col. 1 ll. 55–56;
62–66.
Gemalto’s invention was not directed to these conven-
tional prior art platforms for Java. Instead, it focused on
resource-constrained computing platforms, such as inte-
grated circuit cards and microcontrollers, which were
previously unable to run Java applications. “In contrast to
the microprocessor, a microcontroller includes a central
processing unit, memory and other functional elements,
all on a single semiconductor substrate, or integrated
circuit (e.g., a ‘chip’).” ’317 patent col. 2 ll. 2–5. According
to the specification, the crucial difference between prior
art microprocessor-based computers and microcontroller-
based devices is that “[i]n a microcontroller, the amount of
each kind of memory available is constrained by the
amount of space on the integrated circuit,” ’317 patent col.
2 ll. 14–16, while “[a] microprocessor system . . . is not
constrained by what will fit on a single integrated circuit
10 GEMALTO S.A. v. HTC CORPORATION
device.” Id. ll. 26–31. The specification demonstrates that
external memory storage was a defining feature of prior
art Java technology, and that the patented invention was
designed to eliminate the need for such external storage.
Of course, “the claims cannot be of broader scope than the
invention that is set forth in the specification.” On De-
mand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331,
1340 (Fed. Cir. 2006).
Gemalto’s interpretation of the term “memory” also
conflicts with the prosecution history. During initial
prosecution and reexamination of the ’317 patent, Gemal-
to repeatedly distinguished invalidating prior art by
emphasizing the novelty of squeezing a Java application
onto the memory of an integrated circuit card. Initially,
the United States Patent and Trademark Office (“PTO”)
rejected all claims in the ’317 patent as anticipated and
obvious in view of U.S. Patent No. 5,923,884 (“Peyret”),
titled “System and Method for Loading Applications onto
a Smart Card,” as well as other prior art references. In
response, the patentee emphasized the novelty of fitting
the application onto an integrated circuit card, arguing
that “Peyret does not deal with a solution of how to
squeeze Java or another high level language onto a smart
card.” 4 J.A. 1162. The applicant explained that
[m]aking it possible to run programs written in a
high level language on a smart card was not obvi-
ous prior to Applicants’ invention . . . . To put Ja-
va (or any other high level language) on an
integrated circuit card is anything but obvious. At
the time of the invention, the typical Java Virtual
4 The specification uses the terms integrated circuit
card and smart card interchangeably. See, e.g., ’317
patent col. 2 ll. 37–38 (“microcontrollers frequently are
used in integrated circuit cards, such as smart cards”).
GEMALTO S.A. v. HTC CORPORATION 11
Machine required over 1 MB of memory. Any per-
son of ordinary skill would realize that to squeeze
such an interpreter into an integrated circuit card
(such as a smart card) is anything but an obvious
task.”
J.A. 1164 (emphases added). Based on the applicant’s
argument, the application subsequently issued as the ’317
patent.
During reexamination of the ’317 patent, the patentee
again argued for patentability based on the difficulty of
fitting a Java application into the memory of a resource-
constrained device. Gemalto argued that “providing Java
technology onto smart cards would be very challenging
due to the size constraints of smart cards as contrasted to
the minimum requirements of Java.” J.A. 1199. Because
Java “applications typically compile into files much larger
than the pragmatically available space in a smart
card[,] . . . the problem of fitting them onto a smart card
would be rather challenging. Also, the intermediate
language interpreter, e.g., the JVM, would also have to fit
on the card.” J.A. 1201.
In obtaining and sustaining the ’317 patent, Gemalto
emphasized the significance of fitting the application and
interpreter onto the memory of an integrated circuit card.
If the card could simply access external memory sources,
there would be no need to “squeeze” the application or its
interpreter onto the card. The integrated circuit card
could simply access the application and interpreter from
an external memory source without being constrained by
the resources available on the integrated circuit card
itself.
However, Gemalto contends that claim differentiation
supports its theory that the integrated circuit card claims
should be construed to cover off-chip memory. That con-
tention rests on claim 4 of the ’317 patent, which recites
12 GEMALTO S.A. v. HTC CORPORATION
“[t]he integrated circuit card of claim 1 wherein at least a
portion of the memory is located in the processor.” ’317
patent col. 20 ll. 6–7. According to this theory, by requir-
ing a “portion of the memory” to be in the processor, claim
4 indicates that some program memory can be stored on
separate chips. But the language of claim 4 only allows
some memory to be outside the processor, not outside the
chip. It implies that the memory recited in other claims
may be located on the same chip as the processor, but not
within the processor itself. Claim differentiation based on
claim 4 only indicates that none of the memory recited in
other claims needs to be located “in the processor”; it says
nothing about the location of the memory with respect to
the chip containing the processor. Thus, claim differentia-
tion does not support Gemalto’s argument or overcome
the conclusion that the claims require the processor to be
“coupled to the memory,” id. col. 19 l. 64, i.e., on the same
chip, storing the application and interpreter necessary for
the integrated circuit card to run the application.
The patentee’s arguments regarding the “memory”
limitation recited in the integrated circuit card claims of
the ’317 patent apply equally to the “memory” limitation
recited in the integrated circuit card claims of the ’485
patent. As we held in Elkay Manufacturing Co. v. EBCO
Manufacturing Co., 192 F.3d 973, 980 (Fed. Cir.
1999),“[w]hen multiple patents derive from the same
initial application, the prosecution history regarding a
claim limitation in any patent that has issued applies
with equal force to subsequently issued patents that
contain the same claim limitation.” Id. (citing Jonsson v.
Stanley Works, 903 F.2d 812, 817–18 (Fed. Cir. 1990)); see
also Andersen Corp. v. Fiber Composites, LLC, 474 F.3d
1361, 1368–69 (Fed. Cir. 2007) (construing claim lan-
guage based on statements made during prosecution of
parent application regarding similar claim language),
Biovail Corp. Int’l v. Andrx Pharms., Inc., 239 F.3d 1297,
GEMALTO S.A. v. HTC CORPORATION 13
1301–02 (Fed. Cir. 2001) (construing disputed limitation
based on statements relating to that limitation during
prosecution of a patent deriving priority from the same
original application as the patent-in-suit). The ’485 patent
is a continuation of the ’317 patent and shares the same
title, specification, and provisional application from which
both derive their priority date. Further, claim 38 of the
’485 patent describes the memory and the application it
stores using identical language as claim 1 of the ’317
patent. Compare ’317 patent col. 19 ll. 42–49 with ’485
patent col. 23 ll. 25–32. Claim 39 depends from claim 38
and incorporates the same memory limitation, adding
additional limitations only to the process for converting
the application before loading it onto the memory.
In short, we agree with the district court that the
memory recited in the integrated circuit card claims
should be construed as “all program memory,” which
means “sufficient memory to run the Java code [i.e., the
application and interpreter] in accordance with the pa-
tentee’s invention.”
B. “Programmable Device” Claims
Gemalto also argues that any limitations barring the
use of off-chip memory in an integrated circuit card are
not relevant to claim 3 of the ’727 patent, which is di-
rected to a “programmable device.” Gemalto asserts that
the term should be construed broadly to mean “a device
that can execute a computer program.” Appellant’s Br. 37.
Gemalto suggests that its proposed construction reflects
the ordinary meaning of “programmable device” to one of
skill in the art. However, the testimony of two of the
asserted patents’ inventors (Timothy Wilkinson and Scott
Guthery), persons skilled in the relevant art, confirms
that the term had no such meaning. When asked what the
meaning of “programmable device” is, one inventor stated,
“[i]t has no meaning.” J.A. 1074. The other averred, “I
14 GEMALTO S.A. v. HTC CORPORATION
don’t remember anybody ever talking about a program-
mable device particularly. . . . Sounds like a patent term
to me,” and agreed that even a punch-card computer could
be considered a programmable device. J.A. 985. Gemalto
does not assert that “programmable device” has any
ordinary meaning to a skilled practitioner in the field of
computer programming, let alone the particular construc-
tion it proposes.
In any event, Gemalto’s central problem is that the
limitation is not “programmable device” but “memory.”
Claim 3 explicitly requires a device that has “a memory”
and “at least one application loaded in the memory.” ’727
patent col. 19 ll. 30, 34. The meaning of terms appearing
in the ’727 patent must be construed in light of the same
terms recited in the ’317 patent. All three asserted pa-
tents are directly related (the ’727 patent is a continua-
tion of the ’485 patent, which is a continuation of the ’317
patent), derive priority from the same provisional applica-
tion, and share the same disputed claim language. State-
ments made by the applicant concerning the “memory”
limitation in the ’317 patent’s claims therefore apply with
equal force to the “memory” limitation in the ’727 patent’s
claims with the same limitation. Elkay, 192 F.3d at 980.
Claim 3 of the ’727 patent uses identical language to that
of claim 65 of the ’317 patent, requiring the recited appli-
cation to be “loaded in the memory to be interpreted by
the interpreter” and converted into “a minimized form
suitable for interpretation within the set of resource
constraints by the interpreter.” ’727 patent col. 19 ll. 30–
43; see also ’317 patent col. 24 ll. 51–64. The claim re-
quires the application to be loaded in the recited memory
and processed into a form that allows the application to be
interpreted (and thus executed) within the set of resource
constraints. As construed by the district court—and not
challenged on appeal—those constraints require the
GEMALTO S.A. v. HTC CORPORATION 15
device to lack sufficient memory if the application had not
been so converted.
Here, the meaning of “memory” is made even clearer
by the language of the programmable device claim that
requires the application loaded in the memory to be
converted “into a minimized form suitable for interpreta-
tion within the set of resource constraints by the inter-
preter.” ’727 patent col. 19 ll. 42–43 (emphasis added).
Gemalto’s arguments to the PTO during prosecution of
the ’317 patent directly make clear the meaning of “re-
source constraints” recited in claim 3 of the ’727 patent.
To obtain the ’317 patent, Gemalto emphasized that the
conversion of the application was necessary because of the
resource constraints on the device on which it was stored.
Gemalto explained that
Appellants recognized the difficulty in operating
Java (or other high level language) programs
within the limited resources of an integrated cir-
cuit card or other microcontroller. To solve that
problem, Appellants introduced the additional
step of converting the compiled form from a Java
compiler into a form suitable for interpretation on
a specialized interpreter. Peyret does not teach or
suggest this additional step.
J.A. 1174. The prosecution history of the ’727 patent and
those from which it derives priority do not support Gemal-
to’s theory that a “programmable device” can be any type
of computer. Rather, the prosecution history demon-
strates that a programmable device must have resource
constraints that the patentee argued made squeezing
Java applications on them “anything but obvious.” J.A.
1176.
On appeal, Gemalto does not challenge the construc-
tion of “resource constraints” as meaning “insufficient
memory to run the compiled application source program
16 GEMALTO S.A. v. HTC CORPORATION
in an unconverted form.” J.A. 40–41. While Gemalto
admits that the device must meet these limitations, it
does not explain how the broad construction it proposes
would satisfy them. To be consistent with the “resource
constraints” limitation, the device must have insufficient
memory to run the application in an unconverted form.
Allowing the device to access external off-chip memory
would effectively read this express limitation out of the
claim.
Gemalto contends that the prosecution history of the
’727 patent supports a broad construction, pointing to a
statement by the examiner that “the present claims are
merely considered a broader recitation of claims 1–86 of
the ’317 patent.” Appellant Br. 34 (internal quotation
marks omitted). In fact, the examiner made the exact
same statement about the claims as originally drafted—at
which point they recited a “smart card” rather than a
“programmable device.” Further, the examiner also rec-
ognized that the “[t]he subject matter claimed in the
instant application [for the ’727 patent] is fully disclosed
in the [’317] patent and is covered by the [’317] patent.”
J.A. 751; see also J.A. 1183. The ’317 patent expressly
discloses prior art computers—devices capable of execut-
ing computer programs—that run Java applications
without the claimed invention. The examiner’s statement,
standing alone, does not support construing “programma-
ble device” so broadly that it encompasses any device
capable of executing program instructions, particularly
those within the prior art as defined by the specification
of the ’727 patent and shared by all three asserted pa-
tents.
We thus agree with the district court that the pro-
grammable device of claim 3 of the ’727 patent should be
construed as “a single semiconductor substrate integrat-
ing electronic circuit components that includes a central
GEMALTO S.A. v. HTC CORPORATION 17
processing unit and all program memory making it suita-
ble for use as an embedded system.” J.A. 33.
II. Infringement
The district court granted summary judgment of non-
infringement as to all asserted claims. The court found
that the accused devices did not infringe literally because
it was undisputed that they “store program instructions
off-chip and access those off-chip instructions to run the
accused applications.” J.A. 12. Because the devices could
not literally infringe, the court found no indirect in-
fringement of claim 3 of the ’727 patent. With respect to
infringement, Gemalto does not challenge the court’s
findings on literal or indirect infringement under the
district court’s construction.
Instead, Gemalto argues that the accused devices in-
fringe the asserted claims, as construed by the district
court, under the doctrine of equivalents. A device that
does not literally infringe a claim may infringe under the
doctrine of equivalents. Energy Transp. Grp., Inc. v.
William Demant Holding A/S, 697 F.3d 1342, 1352 (Fed.
Cir. 2012). We have held that “a patentee may prove that
a particular claim element is met under the doctrine of
equivalents . . . by showing that ‘the accused product
performs substantially the same function in substantially
the same way with substantially the same result’ as
claimed in the patent.” Id. (quoting Crown Packaging
Tech., Inc. v. Rexam Bev. Can Co., 559 F.3d 1308, 1312
(Fed. Cir. 2009)); see also Warner-Jenkinson Co. v. Hilton
Davis Chem. Co., 520 U.S. 17, 39–40 (1997).
Gemalto contends that the accused devices infringe
under the doctrine of equivalents when they temporarily
load program instructions from off-chip memory into on-
chip cache memory before execution. Because cache
memory cannot store applications (or any content) when a
device is turned off, the court concluded that cache
18 GEMALTO S.A. v. HTC CORPORATION
memory is substantially different from permanent
memory and not equivalent for infringement purposes.
Gemalto admits that cache memory does not store pro-
gram instructions when the accused devices are turned
off, but argues that the difference between temporary on-
chip storage and permanent on-chip storage is insubstan-
tial or, alternatively, that the significance of this differ-
ence raises a genuine question of material fact. Gemalto’s
theory of infringement by equivalents hinges on its con-
tention that on-chip cache memory is equivalent to on-
chip memory permanently storing applications. According
to Gemalto, applications are loaded into on-chip cache
memory before execution 97% of the time, and the differ-
ence between 97% and 100% is insubstantial.
A plaintiff must provide “particularized testimony and
linking argument to show the equivalents” are insubstan-
tially different. AquaTex Indus., Inc. v. Techniche Solu-
tions, 479 F.3d 1320, 1329 (Fed. Cir. 2007); accord Texas
Instruments, Inc. v. Cypress Semiconductor Corp. 90 F.3d
1558, 1566 (Fed. Cir. 1996). “Generalized testimony as to
the overall similarity between the claims and the accused
infringer’s product or process will not suffice.” Texas
Instruments, 90 F.3d at 1567. These requirements “assure
that the fact-finder does not, ‘under the guise of applying
the doctrine of equivalents, erase a plethora of meaningful
structural and functional limitations of the claim on
which the public is entitled to rely in avoiding infringe-
ment.’” Id. (quoting Pennwalt Corp. v. Durand-Wayland,
Inc., 833 F.2d 931, 935 (Fed. Cir. 1987) (en banc)). Gemal-
to has failed to provide particularized testimony and
linking argument.
Gemalto provided no testimony asserting that the dif-
ference in functionality between cache memory and
permanent memory is in fact insubstantial. Gemalto’s
expert testimony only addresses the difference between
having 100% or 97% of program instructions stored on-
GEMALTO S.A. v. HTC CORPORATION 19
chip, not the underlying difference between temporary
and permanent storage. The testimony does not address
whether cache memory is equivalent to other types of
memory that are capable of storing applications after a
device is turned off. Absent any testimony suggesting that
cache memory is equivalent to permanent memory, no
reasonable fact finder could find that the two types of
memory function in substantially the same way to achieve
substantially similar results.
Gemalto asserts that the “invention works the same
whether or not the memory is on the same chip as the
CPU, or the program is executed from temporary
memory.” Appellant’s Reply Br. 30. These arguments are
not directed to the equivalence between the accused
products’ functionality and the particular claim limitation
reciting a memory storing an application and interpreter
as a whole. Rather, Gemalto offers “merely generalized
testimony as to overall similarity” between the accused
products and the claims, which under well-established
case law “cannot support a finding that the differences
[a]re ‘insubstantial.’” Texas Instruments, 90 F.3d at 1568;
see also AquaTex, 479 F.3d at 1329 (“‘[T]he doctrine of
equivalents must be applied to individual elements of the
invention, not the invention as a whole.’” (quoting Warn-
er-Jenkinson, 520 U.S. at 29)). Establishing infringement
under the doctrine of equivalents requires particularized
testimony and linking argument as the equivalence
between the claim limitation and the alleged equivalent.
Texas Instruments, 90 F.3d at 1567. Such testimony is
missing here.
Moreover, the cache memory functionality that is the
basis for Gemalto’s theory was employed by microproces-
sor-based systems at the time of the invention. Gemalto
has admitted that “‘microprocessors in 1996 did have
cache memory,’” J.A. 1852, and that these microproces-
20 GEMALTO S.A. v. HTC CORPORATION
sors ran Java applications before the 1996 priority date of
the asserted patents. If cache memory were equivalent to
the recited memory that stores an application and inter-
preter, Gemalto’s claims would read on microprocessor
systems that were widely used prior to its invention. The
doctrine of equivalents cannot be applied to encompass
the prior art as “this court has consistently limited the
doctrine of equivalents to prevent its application to en-
snare prior art.” Marquip, Inc. v. Fosber Am., Inc., 198
F.3d 1363, 1367 (Fed. Cir. 1999) (citing Wilson Sporting
Goods v. David Geoffrey & Assoc., 904 F.2d 677, 683 (Fed.
Cir. 1990)). In Marquip, we recognized that “[b]ecause
prior art limits the exclusive right available to an inven-
tor, it also limits the range of permissible equivalents of a
claim.” Id. Applying the doctrine of equivalents to cover
cache memory used in the prior art is not permissible. We
agree with the district court that the accused devices do
not infringe under the doctrine of equivalents due to their
use of cache memory.
CONCLUSION
We affirm the district court’s claim construction and
summary judgment of no infringement with respect to all
asserted claims.
AFFIRMED