Limitations of a Claim Come from the Claim Language ItselfJanuary 12, 2007

In E-Pass Technologies (“E-Pass”) v. 3Com Corp., Palm Inc., palmOne, Inc. and Handspring, Inc. and Visa International Service Association and Visa U.S.A., Inc. and Palmsource, Inc. (“3Com”), the district court’s holding of final summary judgment of non-infringement by 3Com was affirmed by the Federal Circuit. At issue was a patent (“the ‘311 patent”) entitled “Method and Device for Simplifying the Use of a Plurality of Credit Cards, or the Like.” E-Pass filed a complaint for patent infringement against 3Com accusing 3Com of inducing consumers to practice the steps of the patented method on its Palm VII and Palm VIIx personal digital assistant (“PDA”) products. Following a claim construction that construed “electronic multi-function card” to be “a device having the width and outer dimensions of a standard credit card with an embedded electronic circuit allowing for the conversion of the card to the form and function of at least two different single-purpose cards,” the district court granted 3Com’s motion for summary judgment. E-Pass appealed and, on appeal, the Federal Circuit held that the district court had erred by requiring the dimensions of a standard credit card. The Federal Circuit vacated and remanded to the district court to address the issue of infringement under the proper claim construction. After remand, E-Pass filed two new infringement actions in the district court. One against Visa (Visa U.S.A., Inc. and Visa International Service Association) alleging that Visa had infringed the ‘311 patent by using a Palm V PDA in two demonstrations. E-Pass filed its second action against PalmSource, Inc., palmOne, Inc., and Handspring making claims of direct, induced, and contributory infringement of the ‘311 patent based on three new PDA product lines that had been introduced since the first action ? Tungsten, Zire, and Treo lines. The district court granted summary judgment of non-infringement as to all defendants resting its findings on two grounds: 1) that even under a broader construction of “card,” none of the accused devices could infringe the “electronic multi-function card” limitation; 2) that E-Pass had failed to adduce sufficient evidence to support a finding that any of the defendants or their customers had practiced all the steps of the claimed method; and 3) having demonstrated no instances of direct infringement, E-Pass could not prove liability for induced or contributory infringement. In affirming the district court’s grant of final summary judgment, the Federal Circuit held that the district court properly construed the limitations of the claim from the language of the claims themselves; E-Pass failed to submit any evidence that the patented method had ever been actually practiced on any Palm VII device; and that there was no evidence to show that the Palm defendants taught their customers each step of the claimed method in isolation. To read the full decision in E-Pass Techs., Inc. v. 3Com Corp., click here.

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