Thursday, August 18, 2016

TenSec prevails at CAFC in appeal against Adobe

From the decision

TecSec, Inc. (“TecSec”) challenges certain claim
construction rulings and appeals from a grant of summary
judgment of non-infringement by Adobe Systems, Inc.
(“Adobe”) of TecSec’s U.S. Patents Numbers 5,369,702
(“’702 patent”), 5,680,452 (“’452 patent”), 5,717,755 (“’755
patent”), and 5,898,781 (“’781 patent”), collectively the
Distributed Cryptographic Object Method patents
(“DCOM patents”). TecSec, Inc. v. Int’l Business Machines
Corp., No. 1:10-cv-115 (E.D. Va. May 7, 2015) (“TecSec
V”). Adobe contests TecSec’s arguments and asserts a
number of alternative grounds for affirmance. TecSec
also requests that the case be reassigned to a different
district judge on remand.

Because the district court erred in its construction
of “selecting a label,” because we find no merit in Adobe’s
alternate grounds for affirmance, and because we find
nothing to warrant reassignment on remand, we vacate
the district court’s summary judgment of noninfringement
and remand for further proceedings consistent
with this opinion.

Background of the issue

In its written opinion, the district court addressed
both the claim construction issues raised by Adobe and
Adobe’s motion for summary judgment of noninfringement.
In addressing claim construction, the court
began by construing “selecting a label for the object.” The
court noted that while the parties did not propose a
construction for that limitation and declined the opportunity
to brief the issue, they clearly disputed whether
selecting a label includes creating a label or selecting the
components that go into a label. For that reason, the
court stated that that it had a duty to resolve that dispute,
citing O2 Micro International, Ltd. v. Beyond Innovation
Technology Co., 521 F.3d 1351, 1362 (Fed. Cir.
2008). TecSec V at 19. The court then concluded that
“before an object can be selected, it must first be created.”
Id. at 20. Moreover, it construed the limitation as meaning
“choosing a pre-existing label” and not merely selecting
“the components used in its creation.” Id. at 23.

An issue which the CAFC did NOT address:

TecSec first contends that the district court committed
serious procedural error when it granted summary
judgment on the basis of its sua sponte construction of
selecting a label, without providing proper notice. Because
we vacate the district court’s summary judgment on
the merits, we need not and do not address TecSec’s
assertion of procedural error, but instead turn directly to
the issues raised.

A problem with the district court analysis:

The problem with this reasoning is that first, the “selecting
an object” and “selecting a label” limitations are
separate and different limitations. Moreover, while the
doctrine of claim differentiation requires that the limitations
in a parent claim be construed to be different in
scope from those in dependent claims, it does not necessarily
mean that they are mutually exclusive. The only
requirement is that the limitation in the parent be at
least broad enough to encompass the limitation in the
dependent claim. Tr. of Columbia Univ. in City of New
York v. Symantec Corp., 811 F.3d 1359, 1370 (Fed. Cir.
2016) (“Thus, in a situation where dependent claims have
no meaningful difference other than an added limitation,
the independent claim is not restricted by the added
limitation in the dependent claim. In such situations,
construing the independent claim to exclude material
covered by the dependent claim would be inconsistent.”);
Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d
1335, 1348 (Fed. Cir. 2012) (holding that an independent
claim including the limitation “magnetic member” includes
ferromagnetic material in addition to a magnet, in
light of dependent claim limiting “magnetic member” to a
magnet); Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d
1354, 1360 (Fed. Cir. 2010) (concluding that “[u]nder the
doctrine of claim differentiation, those dependent claims
[reciting the use of particular wavelengths] give rise to a
presumption that the broader independent claims [reciting
that laser radiation be ‘absorbed substantially completely’]
are not confined to that range”).

Here, the district court’s reliance on the doctrine of
claim differentiation is flawed.


Moreover, it is beyond cavil that the plain and ordinary meaning
of the term “selecting” can naturally refer to a choice
of a not-yet extant object. Parties regularly select any
number of things that do not exist when the selection is
made and are only later made to order.

The district court also relied on the portion of the
specification that “requires a user to actively choose a preexisting
label.” TecSec V at 21. This too was error. First,
as the district court acknowledged, it is improper to
import limitations from the specification into the claims.
Second, the specification does not in any way indicate or
suggest that one cannot select a label that does not yet
exist, such as a label identifying the location of a terminal
that is not yet connected. Nothing in the intrinsic record
precludes such a possibility, or limits the meaning of
“selecting a label” to the selection of pre-existing labels.


**Separately on 18 August 2016:


Post a Comment

<< Home