In E-Pass Technologies, Inc. v. 3Com Corp. 81 USPQ2d 1385 (Fed. Cir. 2007), E-Pass is the assignee of U.S. Patent No. 5,276,311 (the “‘311 patent”), entitled “Method and Device of Simplifying the Use of a Plurality of Credit Cards, or the Like.” The object of the invention is to provide a method and device for substituting a single electronic multifunction card for multiple credit cards …to address problems associated with carrying multiple cards, “the user needs, and is required to carry about, [only] a single card.” On February 28, 2000, E-Pass filed a complaint of patent infringement against 3Com Corporation and Palm, Inc. (collectively, “3Com”). In the complaint, E-pass accused 3Com of inducing consumers to practice the steps of the patented method on its Palm VII and Palm VIIx personal digital assistant (“PDA”) products. Claim 1 of the ‘311 patent recites:
1. A method for enabling a user of an electronic multi-function card to select data from a plurality of data sources such as credit cards, check cards, customer cards, identity cards, documents, keys, access information and master keys comprising the steps of:
transferring a data set from each of the plurality of data sources to the multi-function card;
storing said transferred data set from each of the plurality of data sources in the multi-function card;
assigning a secret code to activate the multi-function card;
entering said secret code into the multi-function card to activate the same;
selecting with said activated multi-function card a select one of said data sets; and
displaying on the multi-function card in at least one predetermined display area the data of said selected data set.”
The District Court originally construed “electronic multi-function card”, as recited in claim 1, as 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.” Applying this claim construction, the District Court had granted 3Com’s motion for summary judgment of noninfringement for both literal infringement and infringement under the doctrine of equivalents. On appeal, the Federal Circuit, in E-Pass Techs. v. 3Com Corp., 343 F.3d 1364; 67 USPQ2d 1947 (Fed. Cir. 2003), vacated and remanded the case based on the District Court’s erroneous claim construction of “electronic multi-function card.” The Federal Circuit held that the District Court improperly added dimensional limitations to the claim construction. The Federal Circuit then construed the term “card” as a “flat rectangular piece of stiff material,” a construction derived from several general-purpose dictionaries, and remanded the case to the District Court to address issues of infringement under this modified construction.
On remand, the District Court again granted summary judgment of noninfringement as to all defendants based on the remanded claim construction of “electronic multi-function card.”
On E-Pass Technologies’ second appeal to the Federal Circuit, the Federal Circuit upheld the District Court’s finding of noninfringement. The Federal Circuit noted that, although there was not a precise restriction on size or portability in the specification, the specification and the plain meaning of the term card indicates that recited card needed to have attributes of being able to be “carried about,” and of not having protruding buttons, keyboards, antennae, indented display screens, or hinged covers. In view of this definition, the Federal Circuit agreed with the District Court that the accused devices are neither flat nor rectangular, and had buttons, joysticks and keyboards which project above the surface, screens which sit below the surface, indented spaces holding a stylus, projecting antennae, and flip covers which sit at a 150 degree angle. Likewise, the accused devices are not “pieces of stiff material,” but rather are all elaborate mixes of multiple pieces and multiple materials. Accordingly, the Federal Circuit affirmed the District Court’s grant of summary judgment of noninfringement as to the “electronic multi-function card” limitation.
Regarding the issue of infringement under the doctrine of equivalents, the Federal Circuit affirmed the District Court’s holding that there was insufficient evidence that the recited method of claim 1 was ever practiced such that there was no need to reach the question of infringement under the doctrine of equivalents. Specifically, the District Court granted summary judgment of non-infringement since E-Pass had submitted no evidence that the patented method has ever been practiced on any Palm VII, Tungsten, Zire or Trio devices. E-pass, therefore, did not meet its burden of proving the actual practice of the patented method. E-pass’s citations to business analyses of proposed contactless payment protocols failed to show that any such protocol was ever actually deployed or that, if deployed, would infringe. Finally, the product manuals for various of the accused devices do not teach all of the steps of the claimed method together, much less in the required order. As such, there was no situation like that in Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986), where a Rubix-Cube like puzzle distributor was found to have induced infringement of a patented method for solving such a puzzle by disseminating an instruction sheet teaching the method of restoring the pre-selected pattern with each puzzle. Instead, the mere existence of the product manual requires too speculative a leap to conclude that any customer actually performed the claimed method.