The asserted claim:

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.

--

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.

The intervening claim construction stone tablets handed down in Phillips v. AWH didn't change anything.

Following our decision in E-Pass I and prior to the district court’s ruling on remand, our court, sitting en banc, decided Phillips. 415 F.3d at 1303. In its brief, Visa argues that the district court was “at liberty to reconstrue ‘card’” because Phillips “supercedes the 3Com panel decision.” Visa Br. at 19–20. This is an overstatement. A claim construction articulated by a prior panel decision of this court ordinarily remains the law of the case unless it is in conflict with a subsequent decision by this court sitting en banc or by the Supreme Court. See Cal. Fed. Bank v. United States, 395 F.3d 1263, 1274–75 (Fed. Cir. 2005) (declining to revisit earlier ruling where intervening en banc decision was not in direct conflict, and where Supreme Court analysis of the same issue controlled); see also United States v. Moran, 393 F.3d 1, 7 (1st Cir. 2004) (“[A] legal decision made at one stage of a criminal or civil proceeding should remain the law of that case throughout the litigation, unless and until the decision is modified or overruled . . . .”). Here, we see no conflict between the guidance provided in Phillips and the claim construction we articulated in E-Pass I.

More bizarre is the continuing wrong-headed concept that claim construction depends in part on an accused product, as if a claim construction is not self-contained. Phillips v. AWH laid out the priority stack of evidence to be reviewed for a proper claim construction: first, intrinsic (specification, prosecution history), second, extrinsic (state of the art determination using dictionaries & expert witnesses). Where does an externality, like someone else's product, logically fit in? An accused product is hardly extrinsic evidence of what a claim term would have meant at the time of the invention. What if there are different products at different times; does that allow for different constructions?!

Nonetheless, any articulated definition of a claim term ultimately must relate to the infringement questions that it is intended to answer. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326 (Fed. Cir. 2006) (“[T]he legal function of giving meaning to claim terms always takes place in the context of a specific accused infringing device or process.”). The definition of “card” that we articulated in E-Pass I described the properties of a “card” relevant to the accused devices, and it thereby sufficed to determine the question of infringement.

Moreover, we reiterated in Phillips the paramount importance to claim construction of the language of the claims themselves. See Phillips, 415 F.3d at 1312; see also Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (“[W]e look to the words of the claims themselves . . . to define the scope of the patented invention.”). This case hinges on the construction of a term that not only bears one of its ordinary meanings, but is a straightforward name for an everyday object.

The district court implicitly recognized this observation when it boiled the infringement inquiry down to a “straightforward question—using the plain meaning of the word ‘card,’ can any of the accused devices be considered to be a ‘card’?” SJ Order, slip op. at 33.

This above last quote, while under the claim construction section, goes to, as the sentence puts it, "the infringement inquiry." Why is the court so muddle-headed as to not be able to clearly bifurcate the two-step process of claim construction and infringement analysis?

Non-infringement was granted because the accused devices didn't meet the definition of a 'card', as claimed.

As the district court correctly observed, the accused devices are neither flat nor rectangular:

They have buttons, joysticks and keyboards which project above the surface. They have screens which sit below the surface. Some have indented spaces holding a stylus which can be used on the device. They have projecting antennae. The Treo cell phone has a full QWERTY keyboard and a flip cover which sits at a 150 degree angle to the surface of the phone when it is open.
. . . .
. . . A review of the accused devices . . . shows that none of them meet the definition [of rectangular]. Corners and edges are fully rounded. The sides of the devices are generally curved, some convex, some concave, rather than straight. They have built-in or flip-up antennae which completely alter the straight line sides of a rectangle. Some have USB connectors which have the same effect.

SJ Order, slip op. at 31–32. Likewise, the accused devices are not “piece[s] of stiff material,” see E-Pass I, 343 F.3d at 1371, but rather “are all elaborate mixes of multiple pieces and multiple materials,” SJ Order, slip op. at 32. Accordingly, the district court properly concluded that no reasonable jury could find that the accused devices are “cards.”

E-Pass didn't pass even muster arguing doctrine of equivalents, as E-Pass didn't provide sufficient evidence of infringement.

Procedurally, it is hornbook law that to survive the defendants’ motions for summary judgment, E-Pass must “make a showing sufficient to establish the existence of [each] element essential to [its] case.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). Substantively, because the language of most of the steps of its method claim refer to the completed results of the prior step, E-Pass must show that all of those steps were performed in order. E.g., ’311 patent, claim 1 (“transferring a data set . . . ; storing said transferred data set”); see Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1376 (Fed. Cir. 1998) (holding that “the sequential nature of the claim steps is apparent from the plain meaning of the claim language and nothing in the written description suggests otherwise”).

[T]he evidence here shows, at best, that the Palm defendants taught their customers each step of the claimed method in isolation. Nowhere do the manual excerpts teach all of the steps of the claimed method together, much less in the required order. Accordingly, it requires too speculative a leap to conclude that any customer actually performed the claimed method. Indeed, the very same record evidence upon which E-Pass attempts to rely also shows that the accused PDAs are general-purpose computing devices that can be used for a variety of purposes and in a variety of ways. In comparison, the device at issue in Moleculon was intended to be used in only one way—to practice the infringing method—and that method was explicitly taught by the proffered instructions. Id. If, as E-Pass argues, it is “unfathomable” that no user in possession of one of the accused devices and its manual has practiced the accused method, see E-Pass Repl. Br. at 16, E-Pass should have had no difficulty in meeting its burden of proof and in introducing testimony of even one such user. Having failed to meet that burden, E-Pass has no basis to overturn the district court’s decision.

Affirmed.

E-Pass fared no better against Microsoft and HP.