TecSec, Inc. v. International Business MacHines Corp.
731 F.3d 1336
| Fed. Cir. | 2013Background
- TecSec sued several defendants (and IBM separately) for infringement of three related patents ('702, '452, '781) that claim a system/method providing "multi-level multimedia security" by nesting encrypted objects within other encrypted objects.
- The district court granted summary judgment for IBM on noninfringement, relying principally on TecSec’s alleged failure of proof that IBM or its customers performed all claimed steps or made/used/sold/imported complete accused systems; it also offered alternative claim constructions. The Federal Circuit previously affirmed that judgment under Rule 36.
- After the IBM phase, TecSec stipulated it could not prove infringement under the district court’s constructions and the district court entered noninfringement judgments as to the remaining defendants. TecSec appealed.
- On appeal the panel reviewed de novo claim construction, the applicability of the mandate rule and collateral estoppel to the prior Rule 36 affirmance, the proper construction of the term "multi-level multimedia security," and whether several "means" claim terms invoked 35 U.S.C. § 112 ¶ 6 or had adequate corresponding structure in the specification.
- The Federal Circuit majority held the mandate rule and collateral estoppel did not bar TecSec from rearguing claim construction because the Rule 36 affirmance did not necessarily decide claim construction; it construed the disputed term to require multiple layers of encryption but not to be limited to multimedia data, and it held that many challenged "means" terms have adequate corresponding structure in the specification. The court affirmed noninfringement as to PayPal only, reversed other noninfringement judgments, and remanded.
Issues
| Issue | Plaintiff's Argument (TecSec) | Defendant's Argument | Held |
|---|---|---|---|
| Whether the prior Rule 36 affirmance and district court rulings preclude TecSec from re‑litigating claim construction (mandate rule) | Rule 36 affirmance is summary and does not reveal which issues were decided; TecSec may reargue claim construction | Prior judgment and Rule 36 affirmance foreclose relitigation under the mandate rule | Mandate rule does not bar reargument; Rule 36 affirmance did not necessarily decide claim construction |
| Whether collateral estoppel prevents relitigation of claim construction | Collateral estoppel inapplicable because the prior judgment rested on multiple independent grounds and claim construction was not "actually determined" as necessary | Prior district court constructions were "strictly necessary" and should have preclusive effect | Collateral estoppel does not apply; claim construction was not shown to be necessary and critical to the Rule 36 affirmance |
| Construction of "multi-level" in "multi-level multimedia security" — must it require multiple layers of encryption? | "Security" is broader than encryption; claims/spec disclose single-layer embodiments; prosecution history not limiting | Inventor defined the term during prosecution as nested encrypted objects; prosecution history mandates multiple layers of encryption | Term requires multiple layers of encryption (prosecution disclaimer/definition controls) |
| Construction of "multimedia" in "multi-level multimedia security" — does it limit protected data to multimedia objects? | "Multimedia" modifies "security," not the object type; specification treats any object types | Inventor referenced a dictionary and referred to multimedia during prosecution; district court limited to multimedia | "Multimedia" does not limit claim to multimedia data; district court erred to so limit (no clear, unmistakable disavowal) |
| Whether "system memory means" and "digital logic means" invoke § 112 ¶ 6 | These terms recite sufficient structure (system memory is a known structure; digital logic detailed by comprising elements) | Presumption that use of "means" yields means-plus-function — these are generic and invoke ¶ 6 | Both terms do NOT invoke § 112 ¶ 6; "system memory" and "digital logic" supply adequate structure to skilled artisans |
| Whether the other computer‑implemented "means" limitations lack corresponding structure (indefiniteness) | Specification examples (OOKeyMan, WordPerfect/MS Word workflows) disclose algorithms/stepwise prose sufficient to show a special-purpose computer implements the functions | Examples are generic "black box" software; no specific algorithms disclosed, so § 112 ¶ 6 structure is lacking | Specification supplies sufficient corresponding structure for the fourteen computer-implemented means terms; district court erred in finding them indefinite |
Key Cases Cited
- Cybor Corp. v. FAS Techs., 138 F.3d 1448 (Fed. Cir. 1998) (claim construction reviewed de novo)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (priority of intrinsic evidence in claim construction)
- TriMed, Inc. v. Stryker Corp., 514 F.3d 1256 (Fed. Cir. 2008) (rebuttable presumption when "means" used and how to overcome it)
- Finisar Corp. v. DirecTV Grp., 523 F.3d 1323 (Fed. Cir. 2008) (software algorithm disclosure standards for § 112 ¶ 6 structure)
- Pennwalt Corp. v. Durand‑Wayland, 833 F.2d 931 (Fed. Cir. 1987) (every claim limitation must be present for infringement)
- Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) (prosecution disclaimer requires clear and unmistakable statements)
- Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742 (Fed. Cir. 2012) (Rule 36 judgments affirm without endorsing specific reasoning)