Tecsec v. IBM; CAFC discusses scope of mandate within Rule 36 context; IBM's comments in oral argument: no “need to get to claim construction.”
The defendants argue that the mandate rule applies because: (1) the district court’s constructions were within the scope of its judgment; (2) that judgment was affirmed in the IBM appeal; and (3) no issues were reserved for further consideration in the decision in the prior appeal. TecSec responds that the mandate rule does not apply because it is impossible to glean which issues this court decided when we issued the Rule 36 judgment.
This court agrees with TecSec that the mandate rule does not bar it from challenging the district court’s claim construction. After our mandate issues, the mandate rule “forecloses reconsideration of issues implicitly or explicitly decided on appeal.” Amado v. Microsoft Corp., 517 F.3d 1353, 1364 (Fed. Cir. 2008). For an issue to be implicitly decided, it must be “decided by necessary implication.” Laitram, 115 F.3d at 951. Moreover, in interpreting this court’s mandate, “both the letter and the spirit of the mandate must be considered.” Engel Indus., Inc. v. Lock- former Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999).
The Rule 36 judgment in the IBM appeal summarily affirmed the district court’s judgment that IBM did not directly or indirectly infringe TecSec’s patents. The district court’s judgment was based on two independent grounds. The district court first ruled as a matter of law that TecSec’s direct and indirect infringement claims failed for failure of proof that IBM itself or any of its customers performed every claimed step or made, used, sold, offered for sale, or imported any system containing all of the limitations of the asserted claims. As the dis- trict court stated in its opinion, without questioning TecSec’s construction of the terms now at issue, “TecSec has utterly failed to come forward with any evidence that IBM itself performed any of the steps of the method claims,” and “even if some user-implemented system were to meet all of the asserted claim limitations—which, as explained below it cannot . . . —TecSec has provided no evidence that IBM ever made, used, sold, offered to sell, or imported that entire claimed system . . . .” Summary Judgment Order, 769 F. Supp. 2d at 1010, 1012 (first emphasis added). The district court drew a similar con- clusion regarding indirect infringement, as to which it found, as well, insufficient proof of the required intent.
Given the absence of evidence that any steps were per- formed by IBM or that an entire claimed hard- ware/software system was ever made, used, sold, offered to sell, or imported by IBM or its customers, the district court was compelled to find no direct or indirect infringe- ment. Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 949–50 (Fed. Cir. 1987) (en banc) (“Every Supreme Court decision which has addressed the issue of infringe- ment of a patent claim, beginning with Prouty v. Draper, 41 U.S. (16 Pet.) 335, 10 L.Ed. 985 (1842)—and the prece- dent is voluminous—has held that where a part of the claimed invention, that is, a limitation of the claim, is lacking in the accused device exactly or equivalently, there is no infringement.”) The district court, in finding a complete failure of proof regarding any act of infringe- ment by IBM or its customers, did not rely on any rejection of TecSec’s constructions of the terms at issue here. Indeed, IBM represented to the court that we could affirm the district court’s judgment solely based on TecSec’s “complete failure of proof” and did not “need to get to claim construction.” TecSec, Inc. v. Int’l Bus. Machs. Corp., No. 2011-1303, Oral Arg. at 19:30–24:55, available at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20 11-1303.mp3.
While the district court also ruled in the alternative that TecSec failed to show that IBM’s software met various claim limitations, as construed, our Rule 36 decision does not articulate a basis for affirmance, let alone an explication on claim construction. On this rec- ord, it cannot be concluded simply on the basis of this court’s summary affirmance that we expressly or by necessary implication decided the claim construction issues in the IBM appeal.1
Footnote 1 addresses the dissent:
The dissent boldly contends that “[c]laim construction and sufficiency of the evidence showing an act of infringement are not alternative grounds on which to find noninfringement,” Dissent at 6, both: (a) ignoring the distinctions between failures of proof and conventional rules of infringement, and (b) overlooking the actual
rulings of the district court on the evidentiary record before it during the IBM phase of this case.