TecSec, Inc. v. International Business Machines Corp. et al.

Docket No. 2012-1415

October 2, 2013

Brief summary: Certain claims terms found not to invoke § 112, para. 6 because “the claim recites sufficient structure for performing the described functions in their entirety” and others supported by the specification which disclosed the required “sufficient corresponding structure”.

Summary: TecSec appealed DC finding of non-infringement of its US 5,369,702 and 5,898,781 related to methods and systems that secure computer data. The FC panel determined that the DC incorrectly construed the terms “multi-level multimedia security”, “digital logic means” (means plus function), and “system memory means” (means plus function). The claims require hardware and software but the DC found IBM did not infringe the claims because it only sold software (in the US), and insufficient evidence of indirect infringement was presented. Claim constructions were determined by the DC and previously appealed by IBM; the first issue considered by the FC panel here was whether this panel could consider those issues in this appeal (the “mandate rule” under Rule 36). But the FC panel determined that the issues of this appeal were not “expressly or by necessary implication” decided in the previous case. Collateral estoppel was also found not to be relevant. The DC had determined that “multi-level multimedia security” required multiple layers of encryption and the FC affirmed this decision because “the prosecuton history mandates a narrower construction” (“the inventor defined the term ‘multi-level multimedia security’ to require multiple layers of encryption”; “Claim differentiation is not a rigid rule and it cannot overcome a construction required by the prosecution history” (Regents of Univ. of Cal., FC 2008)). The FC panel also found that the term “multimedia” was incorrectly construed as “the claims and specification convey that any type of data may be encrypted, not just multimedia” (“we cannot say that the inventor clearly and unmistakably limited his claims to encrypting multimedia objects”). The DC also considered the means-plus-function terms “digital logic means” and “system memory means”, along with several other “means” terms, and found that TecSec failed to identify corresponding structure for the limitations (“none of the ‘structure’ that TecSec pointed to was sufficient to perform any of the recited functions”). But the FC panel found that the terms do not invoke § 112, para. 6 because “the claim recites sufficient structure for performing the described functions in their entirety” (TriMed, FC 2008 (use of the term “means” triggers a “rebuttal presumption”; Lighting World, FC 2004; contrasting Chicago Board Options Exchange, FC 2012). For other terms, the FC panel concluded that the specification discloses the required “sufficient corresponding structure” (Ergo Licensing, FC 2012; Finisar Corp. FC 2008; Budde, FC 2011). Judge Reyna’s dissent argued that the appeal should not have been heard as it “gives TecSec a second bite at the apple and undermines the utility of Rule 36.”

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