The Great IBM Escape

Michael Caridi | October 14, 2013

Tecsec, Inc. v. Int’l. Business Machines et al. (2012-1415)

October 2, 2013

Panel:  Moore, Linn, and Reyna.  Opinion by Linn.  Dissent by Reyna.

Summary

Following an earlier affirming of an Eastern District of Va. decision granting IBM Summary Judgment, TecSec stipulated that it could not prove infringement by the remaining defendants under the claim construction adopted during the IBM proceedings. Based on TecSec’s stipulation, the district court entered judgment of noninfringement as to the remaining defendants (a “who is who” of the server industry, including EBay, Cisco, Sun, Oracle, Paypal, Adobe and others).    The CAFC reversed, finding that the Mandate Rule and Collateral Estoppel did not apply to claim construction adopted during the IBM proceeding.  The CAFC then ruled on issues of claim construction and computer implemented means-plus-function terms, finding that the terms either were not means-plus-function under §112¶6 or that sufficient structure was presented in the specification in the form of three detailed examples.

Details

Three TecSec patents were at issue: U.S. P. 5,369,702 (the “’702 Patent”); No. 5,680,452 (the “’452 Patent”); and No. 5,898,781 (the “’781 Patent”). Claim 8 of the ’702 Patent was used by the CAFC as representative of the system claims at issue:

 A system for providing multi-level multimedia security in a data network, comprising:

A) digital logic means, the digital logic means comprising:

1) a system memory means for storing data;

2) an encryption algorithm module, comprising logic for converting unencrypted objects into encrypted objects, the encryption algorithm module being electronically connected to the system memory means for accessing data stored in the first system memory;

3) an object labeling subsystem, comprising logic means for limiting object access, subject to label conditions, the object labeling subsystem being electronically connected to the system memory means for accessing data stored in the system memory means and the object labeling subsystem being further electronically connected to the encryption algorithm module to accept inputs from the encryption algorithm module;

4) a decryption algorithm module, comprising logic for converting encrypted objects into unencrypted objects, the decryption algorithm module being electronically connected to the system memory means for accessing data stored in the system memory means; and

5) an object label identification subsystem, comprising logic for limiting object access, subject to label conditions, the object label identification subsystem being electronically connected to the system memory means for accessing data stored in the system memory means and the object label identification subsystem being further electronically connected to the decryption algorithm module to accept inputs from the decryption algorithm module;

B) the encryption algorithm module working in conjunction with the object labeling subsystem to create an encrypted object such that the object label identification subsystem limits access to an encrypted object.

The CAFC ruled on the disputed construction of “Multi-Level Multimedia Security” relying on the prosecution history for their finding which ultimately favored Tecsec.

More interesting for prosecutors in general, sixteen claim limitations that employ the term “means” were disputed.  The district court had found all the terms to be §112, ¶ 6 limitations and held that TecSec failed to identify corresponding structure for any of them.

The CAFC broke the sixteen claims into two groups, finding that two terms did not fall into § 112, ¶ 6 and the remainder were adequately supported by the specification. 

A)        “System Memory Means” and “Digital Logic Means” 

The two terms “system memory means” and the “digital memory means” were found to not invoke §112, ¶ 6. The Court reiterated that the use of the term “means” triggers a rebuttable presumption that §112, ¶ 6 applies per TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008), and one way in which this presumption can be overcome is if “the claim recites sufficient structure for performing the described functions in their entirety.” Id.

With the above in mind, they found that “system memory” is sufficient structure to perform the “storing data” function on the basis that a system memory is a specific structure that stores data. The Court also looked to the specification noting the disclosure of random access memory (RAM) to store data. Interestingly, the disclosure the Court cites to in ’720 Patent col. 7 l. 37 is very specific (“486 50 MHz DX” computer system with “16 megabytes of RAM”).

Turing to “digital logic means” the CAFC first noted that the claims do not recite a function for the digital logic means to perform, and added that the term “digital logic” designates structure of “digital circuits that perform Boolean algebra” to skilled artisans. Finally, they noted that the claim also recites that the digital logic means is comprised of structural elements, including a system memory and specific modules and subsystems.

B)        Computer-Implemented Means-Plus-Function Terms

The CAFC did find that the fourteen remaining limitations were computer-implemented means-plus-function limitations.  Using an example from claim 12 of “means for selecting an object to encrypt,” they ruled that the defendants had not shown by clear and convincing evidence that the at-issue specifications fails to disclose corresponding structure.

The defendants had argued that the examples in the specification only disclose generic software and not a specific algorithm.

The CAFC responded by first noting that a patentee can express an algorithm “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” per Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) and then methodically reviewing one of the three examples in the specification for using the software to perform the functions recited:

The first example describes securing an object in a word processor application such as WordPerfect® or Microsoft Word® using an Object-Oriented Key Manager (OOKeyMan), which is a specific stand-alone application in Microsoft Windows®. ’702 Patent col. 6 ll. 40–46, col. 7 l. 62–col. 9 l. 4. The example describes how a user interacts with the software applications to cause them to select an object to encrypt, select a label for the object, select an encryption algorithm, encrypt the object, and label the encrypted object. Id. col. 7 l. 63–col. 8 l. 37. The example then details how the software determines if the user is authorized to view the object and, if so, decrypts the object. Id. col. 8 l. 37– col. 9 l. 3. While the details of the example focus on the encryption and labeling of a single object, the specification explains that the example “shows the ability for OOKeyMan to securely manage and track single or multiple embedded encrypted objects within other encrypted objects.” Id. col. 7 ll. 50-52. The second and third examples show how the OOKeyMan software manages and tracks encrypted objects that may be transmitted between different applications, such as between WordPerfect® and Microsoft Word®. Id. col. 7 ll. 54-61, col. 9 l. 4–col. 11 l.11.

Finally, they noted that: “Short of providing source code, it is difficult to envision a more detailed disclosure.”

Dissent 

Reyna’s dissent focused solely on the Rule 36 issues, the Mandate Rule and Collateral Estoppel and did not reach the issues of claim construction.

Takeaway

1) Adjective modifiers of the word “means” in the claim can denote sufficient structure to rebut the presumption that using “means” in the claim is invoking §112, ¶6, i.e. “system memory” and “digital logic” above.  If the intent is to invoke §112, ¶6, do not use modifiers that connote structure.

If the intent is not to invoke §112, ¶ 6, do not use “means” in the claim.

2) Detailed examples in the specification describing how claimed functions are performed can provide support for computer-implemented means-plus-function.  Such support avoids potential §112, ¶2 invalidity issues under the Aristocrat rule requiring a disclosure of an algorithm detailing how to perform the claimed function of a computer-implemented means-plus-function claim element.  The cautionary side is that specific examples such as those in the current case are extremely limiting.  Hence, the best scenario may be to have a series of examples in the specification which gradually increase in detail.

Full Opinion

US5369702

US5680452

US5898781

 

 

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