E-Pass Technologies, Inc. v. 3Com Corporation, Palm, Inc., Palmone, Inc. and Handspring, Inc.

E-Pass Technologies, Inc. ("E-Pass") appeals from a final summary judgment of non-infringement by the United States District Court for the Northern District of California, in which the court held that none of the defendants directly or indirectly infringed E-Pass's U.S. Patent No. 5,276,311 ("the '311 patent"). E-Pass Techs., Inc. v. 3Com Corp., Nos. 00-CV-2255, 03-CV-4747, 04-CV-0528 (N.D. Cal. Mar. 17, 2006) ("SJ Order"). Because the district court correctly determined that no reasonable jury could have found any of the defendants liable on the basis of the evidence presented, summary judgment was proper, and we affirm.

I. BACKGROUND

A. Introduction and Prior Appeal

As we discussed in a prior appeal in this case,

E-Pass is the assignee of the '311 patent, entitled "Method and Device for 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."

E-Pass Techs. v. 3Com Corp., 343 F.3d 1364, 1365 (Fed. Cir. 2004) ("E-Pass I") (quoting '311 patent, col. 1, ll. 64–66). Claim 1 of the '311 patent, the only independent claim asserted in this litigation, reads as follows:

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.

'311 patent, col. 10, l. 54–col. 11, l. 3.

On February 28, 2000, E-Pass filed a complaint for patent infringement against 3Com Corporation and Palm, Inc. (collectively, "3Com"). In it, 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. 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," E-Pass Techs. v. 3Com Corp., 177 F. Supp. 2d 1033, 1037 (N.D. Cal. 2001), the district court granted 3Com's motion for summary judgment of noninfringement both literally and under the doctrine of equivalents, E-Pass Techs. v. 3Com Corp., 222 F. Supp. 2d 1157, 1165 (N.D. Cal. 2002).

E-Pass appealed. On appeal, we held that the district court had erred by "requiring the dimensions of a standard credit card." E-Pass I, 343 F.3d at 1371. We observed that "the ordinary meaning of the word ‘card' here, as used in the phrase ‘electronic multi-function card,' is the proper construction," and we vacated and remanded to the district court to address the issue of infringement under the proper construction. Id. at 1370–71. Notably, we emphasized that "it may be or may not be that the accused Palm Pilot devices literally infringe" under that construction. Id. at 1371.

B. Events After Remand

After we remanded the action against 3Com, E-Pass filed two new infringement actions in the district court. It filed the first new action, Case No. 03-CV-4747, on October 22, 2003, against Visa U.S.A., Inc., and Visa International Service Association (collectively, "Visa"). In that action, E-Pass alleged that Visa had infringed the '311 patent by using a Palm V PDA in two demonstrations in 2001. E-Pass filed the second new action, Case No. 04-CV-0528, against PalmSource, Inc., palmOne, Inc., and Handspring, Inc., on February 9, 2004. In the second new action, it made claims of direct, induced, and contributory infringement of the '311 patent based on three new PDA product lines - the Tungsten, Zire, and Treo lines - that had been introduced since the filing of the initial action.

On March 17, 2006, the district court granted summary judgment of noninfringement as to all defendants. SJ Order. It rested its finding of noninfringement on two independent grounds. First, it held that even under a broader construction of "card," none of the accused devices could infringe the "electronic multi-function card" limitation. Id., slip op. at 25–34. Second, it held that E-Pass had failed to adduce sufficient evidence to support a finding that any of the defendants or their customers had practiced all of the steps of the claimed method. Id., slip op. at 17–25. Having demonstrated no instances of direct infringement, E-Pass could not prove liability for induced or contributory infringement.

E-Pass appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

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AFFIRMED.