Goliath Slays David II

Submitted by patentadmin on Fri, 03/25/2011 - 17:06

In legal battles pitting a patentee David against an accused infringer Goliath, there is a tendency to assume that the little guy is virtuously and reasonably enforcing its valid rights against a giant, evil scum-sucker. Well, not always. (TecSec, Inc. v. International Business Machines Corp. et al.)

TecSec sued IBM alleging infringement of twenty-five claims of six patents directed to cryptography and security-related products. TecSec sought a permanent injunction, treble damages for willful infringement, and attorney’s fees and costs. IBM responded with a Motion for Proposed Claim Constructions and Summary Judgment of No Infringement, arguing, in part, that TecSec had not come forward with sufficient evidence to establish a genuine material dispute regarding the alleged infringement of any of the six patents-in-suit.

Before embarking on an analysis of TecSec’s infringement allegations, the Court construed the phrase “multi-level multimedia security” which appeared in the preambles of each of the independent claims of four of the patents. As might be expected, TecSec argued that the phrase, which did not appear in the body of any of the asserted claims, was not a limitation.

Not so, ruled the Court. “In considering whether a preamble limits a claim, the preamble is analyzed to ascertain whether it states a necessary and defining aspect of the invention, or is simply an introduction to the general field … all [four of the] patents stress the inventions’ ability to provide multi-level and multimedia security as a critical feature of the claimed inventions. Under these circumstances, the phrase ‘multi-level multimedia security’ therefore must be regarded as a claim limitation.”

To remove any doubt, or the possibility of a successful appeal, the Court went on, “[m]oreover, the patentee expressly relied upon an explanation of ‘multi-level multimedia security’ to distinguish prior art during prosecution of the [subject] patents, and TecSec has relied upon that phrase throughout the course of this litigation.”

Having decided that the phrase was a limitation, the Court proceeded to construe its meaning.

IBM, having read the prosecution histories (the “file wrappers” to us patent professionals) of the four patents, proffered as a construction quotations from the patentee’s arguments to the patent examiner, where TecSec defined the phrase. Rejecting TecSec’s much broader proposal, the Court ruled, “[t]he patentee’s definition … during patent prosecution is therefore binding as a matter of law.” Just to drive the point home – as if anything further was necessary – the Court added, “TecSec’s contention … flatly contradicts the plain language of the claims, as well as the patentee’s binding statements during patent prosecution. TecSec’s proposed definition is also inconsistent with the patent specification[s].”

Turning now to the question of infringement, the Court began by noting that, “[a] patentee claiming infringement must present proof that the accused product meets each and every claim limitation. Mere speculation is insufficient to allow a case to proceed to trial.” This is where TecSec’s case really began to fall apart.

The four patents, for which the claim terms had been construed, included both method claims and system claims. Addressing first the method claims, the Court pointed out that, “TecSec has utterly failed to come forward with any evidence that IBM itself performed any of the steps of the method claims.”

Moving on to the system claims, the Court pointed out that, “TecSec simply accuses various types of IBM software of infringement. That software, of course, constitutes at most only part of the claimed systems, as the software must be installed on a computer and combined with hardware to infringe. As a matter of law, making or selling software without the claimed hardware does not constitute direct infringement of a system claim.”

So, how had TecSec sought to prove infringement of the system claims? They relied on very specific accused “scenarios,” involving particular combinations and configurations of certain IBM products. As viewed by the Court, this theory “appears to reduce to the contention that IBM’s users or customers may theoretically be able to install IBM software onto a computer system and then combine and configure it into one of the accused scenarios.” “[I]t is not enough to simply show that a product is capable of infringement; the patent owner must show evidence of specific instances of direct infringement …” However, after extensive discovery, comprising over 7 MILLION pages of documents, 40 depositions and 55 subpoenas to IBM customers, TecSec was unable to present evidence of a single instance of a customer using the accused IBM products according to one of the “scenarios.”

Motion for summary judgment of noninfringement of the four patents GRANTED. Again seeking to drive the last nail into the coffin, the Court went on to note that TecSec had failed to provide any evidence that any of the “scenarios” would constitute an infringement.

As if this were not enough, the Court delved into several of the claims of the four patents, which were in “means-plus-function” form, holding that “because TecSec failed to identify sufficient corresponding structure for each of those means-plus-function limitations, and failed to compare the corresponding structure to any allegedly equivalent structure in IBM’s accused systems, plaintiff’s allegations of infringement of those claims fail as a matter of law.”

Turning at last to the question of infringement of the remaining two patents, the Court again began with a construction of three disputed claim terms: “storing,” “providing” and “extract.” Turning to the accused products, the Court held that the “storing” function was disclosed in the specification of the relevant patent, but not claimed and, hence, “must be deemed dedicated to the public … [therefore] because TecSec’s infringement allegations attempt to encompass embodiments that are not actually claimed by the [subject] patent, plaintiff’s allegations fail as a matter of law.”

TecSec had also admitted that the accused products did not meet the “providing” and “extract” limitations of the claims of these two patents, whereby there was no infringement. Therefore, summary judgment of noninfringement as to these two patents was also GRANTED.

THE LESSON TO BE LEARNED: Not every big corporation is a bottom-feeding infringer; read your patents and their file wrappers carefully before asserting infringement – it may save you from a costly embarrassment.

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