Docket No. 2015-1686
PROST, LINN, TARANTO
August 18, 2016
Non-precedential
Brief Summary: DC grant of SJ of non-infringment to Adobe regarding its Acrobat program vacated due to erroneous claim construction.
Summary: TecSec appealed DC grant of SJ of non-infringement to Adobe regarding its Acrobat program. Sixteen other defendants have also been sued on these patents but the DC restricted TecSec to proceed against only IBM and, here, Adobe (the remaining claims are to be resolved on remand). TecSec’s patents-at-issue are 5,369,702; 5,680,452; 5,7171,755; and 5,898,781 (the “Distributed Cryptographic Object Method” patents), “generally directed to methods and systems of multi-level encryption that allow encrypted files to be nested within other encrypted files” and “further limit access by using labels in the form of a field of characters attached to the encrypted files.” “The principal argument” in this appeal centers on the DC construction of the claim term “selecting a label”, which TecSec argued was erroneous (i.e., not required as “the plain and ordinary meaning should have been adopted”, DC “improperly read into the limitation a ‘pre-existing’ requirement [“choosing a pre-existing label…distinct from creating a label”] not supported by the instrinsic record”). The FC panel found that the DC improperly relied on the doctrine of claim differentiation to conclud that “selecting an object” and “selecting a label” have the same meaning and “‘selecting a label’ cannot include ‘creating a label’”. It also concluded that the DC erroneously relied on the specification to support its conclusion, noting that “it is improper to import limitations from the specification into the claims” and, further, “[n]othing in the intrinsic record precludes” selecting “a label that does not yet exist”, “or limits the meaning of ‘selecting a label’ to the selection of pre-existing labels.” It therefore agreed with TecSec that the limitation “should be given its plain meaning, without a requirement that the label exist prior to being selected” and concluded the grant of SJ “cannot be sustained.” The FC panel also disagreed with TecSec’s arguments regarding the DC’s construction of “label” was improper because the specification included an “express definition” (“A file ‘label’ for the purposes of this invention means…” and an incorporation-by-reference statement) (“the patentee must clearly express an intent to redefine the term” (Thorner, FC 2012; Phillips, FC 2005)). But the FC panel agreed with TecSec that the DC erroneously applied its construction of “label” to Adobe’s Acrobat program by requiring it “to identify a ‘particular person,’ as opposed to a group of persons authorized to have access” while “nothing in the intrinsic record requires” the same. For this additional reason, the FC panel concluded the DC grant of SJ to Adobe was erroneous and vacated the decision. Adobe argued the DC erroneously construed “object-orientated key manager” which was modified by the FC. It also found that TecSec should have the opportunity to separately argued infringement of the method and system claims with respect to the” “object labeling subsystem”, “object identification subsystem” and “selecting a label” limitations (Ohio Willow Wood, FC 2013).
Federal Circuit summaries 