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An accused device that lacks a claimed feature of a patented invention does not infringe simply because it has the capability of being modified to perform in a way that would infringe, the Federal Circuit held April 25. Telemac Cellular Corporation v. Topp Telecom Inc., No. 99-1562, Fed. Cir. The court upheld a grant of summary judgment by the U.S. District Court for the Northern District of California, finding that claims of a patent for a mobile phone owned by Telemac Cellular Corp. were invalid and not infringed by Topp Telecom Inc. The patent describes a rental cellular telephone in which the cost of a call is automatically debited from an available credit account stored within the phone. At issue was claim language involving the activation and programming of the phone. The patented system discloses a “communication means for selectively establishing a communication link with each mobile phone unit,” in which a host processor initiates communication and automatically transmits operating codes to the phone, either through remote programming with cellular paging signals or by placement of the phone in a module connected to the host processor. The patent also discloses manual activation via a user-initiated technique. The district court held that the patent was not infringed by the accused Topp prepaid cellular telephone, in which a user contacts a customer service representative using another telephone and receives operating codes that activate the phone and cause it to store a credit amount. The lower court held that the two automated processes disclosed in the Telemac patent applied only to communications initiated by the host computer, which the Topp system lacks. It further held that the manual process in the patent applies only to a payment verification means, not to the communication means. Also at issue was claim language disclosing a “complex billing algorithm” for calculating call charges. The lower court held that the written description requires that algorithm to include the means to store phone rates for local, long distance, international and roaming calls. The court found that the accused phone does not infringe because it blocks international calls and does not store international rates in its memory. INVALIDITY The district court further found the patent invalid over a prior patent called the Wittstein patent, which also describes a mobile telephone for use as a rental phone that computes and stores charges. The court found that though the Wittstein patent does not disclose classifying and calculating “roaming” calls, someone of ordinary skill in the art would recognize that that feature was inherent. On appeal, Telemac contended that even though the Topp device does not permit direct dialing of international calls, the capability of billing for international rates is nonetheless present in the phone’s source code. It alleged that the Topp system infringes because it is capable of being modified to place, and charge for, international calls. “That a device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement,” the opinion said. “In this case, due to a restriction built into the software program stored in the telephone’s memory, a user of Topp’s system is prevented from directly placing international calls. “Therefore, international rates, and the calculation of charges for such calls, are not included in the billing algorithm of the accused device. The district court correctly concluded that Telemac’s allegations of literal infringement must fail.” NO EQUIVALENCE Similarly, the court found the limitation was not met equivalently, saying that because the accused device does not permit placement of international calls, it does not perform substantially the same function in substantially the same way to achieve substantially the same result as the claimed invention. To reach a finding of equivalents, the lower court would have had to ignore the international rate calculation limitation of the claim, in effect striking that limitation from the claim, the opinion said. “Where no equivalent element can be identified in the accused device, the district court is not at liberty to altogether ignore limitations of a claim,” it said. The court also agreed that the Topp system lacks structure corresponding to the “communication means for selectively establishing a communication link” between the host processor and each mobile phone unit because the accused system does not selectively and automatically establish communications for purposes of activating or programming the phone. To infringe literally, the accused system would have to include structure performing the functions recited in the claims in means-plus-function form, but the Topp phone lacks such a structure, the opinion said. Further, the user-initiated communications in Topp’s system are not equivalent to the claimed structure in the host processor corresponding to the claimed means for selectively establishing communications with a mobile phone, it said. ANTICIPATION The Federal Circuit also upheld the finding of anticipation, saying that though the Wittstein patent fails to expressly identify one of the four rate categories included in the Telemac patent’s “complex billing algorithm” limitation, that category, roaming, is inherent in the Wittstein patent. The Wittstein patent discloses reporting types, length and cost of calls in a “call detail record,” and Telemac’s documents indicate that such a record could include roaming charges, the opinion said. Further, a prior Telemac patent incorporated by reference into the Telemac patent at issue specifically mentions calculation of roaming charges in a call detail record, the court said. “It is evident that as of the time the application which issued as the Wittstein patent was filed a call detail record necessarily included information regarding the rates for the claimed call categories. Thus, the Wittstein patent discloses an algorithm which calculates charges for all four claimed categories of calls,” the court held. Telemac is represented by Guy W. Chambers of Townsend and Townsend and Crew in San Francisco. Topp is represented by Daniel A. DeVito of Skadden, Arps, Slate, Meagher & Flom in New York.

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