Virginia IP Law : Virginia Intellectual Property Lawyer & Attorney : Troutman Sanders Law Firm : Technology & Patent Litigation

We previously blogged about the massive patent infringement case TecSec filed against thirteen separate defendant groups here, here and here. After more than a year of procedural wrangling, Judge Brinkema brought the first phase of the case to an abrupt end by awarding summary judgment to IBM on all of TecSec’s claims. The judge’s opinion can be found here and is also at TecSec, Inc. v. International Business Machines Corp., 2011 U.S. Dist. LEXIS 21726 (E.D. Va. March 3, 2011).

TecSec asserted infringement of three separate groups of patents addressing encryption and security methods and products. The Court identified the patents as the “DCOM” patent family, the XML patent and the Parallel Processor patent.

In the course of her summary judgment ruling, Judge Brinkema reached three decisions on claim construction which led directly to her conclusion on summary judgment:

1. First, she ruled that the phrase “multi-level multimedia security” in the preamble of the DCOM patent family was a defining aspect of the invention and so served as a claim limitation.
2. Second, she ruled that “multi-level security” requires multiple layers of encryption. Thus, encrypted objects must be nested within other encrypted objects. TecSec attempted to broaden the definition to include a single level of encryption, but Judge Brinkema ruled that it had advocated multiple levels of encryption as the essence of the invention during prosecution.
3. Third, Judge Brinkema held that “storing” of encrypted objects could not be interpreted to cover passing information on a real-time basis to the intended recipient of the information.

From these rulings, a finding of non-infringement followed because IBM’s products provided, at most, only a single level of encryption or were designed to pass encrypted messages on a real-time basis.

Other significant rulings by Judge Brinkema included:

• IBM did not infringe the asserted method claims because neither IBM or any third party performed all of the steps of those claims;
• IBM did not infringe the asserted system claims because TecSec only accused IBM’s software of infringement but the claimed systems also included hardware means;
• TecSec claimed that six different configurations of IBM products infringed but offered no evidence that IBM actually made or sold the specific accused configurations;
• TecSec could not prove inducement of infringement because there was no evidence that any customer used the IBM products in any of the six accused configurations;
• TecSec’s claim that circumstantial evidence showed that the products might be used in an infringing configuration failed because such a theory required a showing that the products would necessarily infringe, and IBM’s products could be used in a variety of ways that did not infringe;
• The ability of the products to be used in non-infringing configurations also doomed TecSec’s claim of contributory infringement;
• TecSec failed to identify sufficient corresponding structure in the specification for the means plus function claims of its patents.

After ruling on summary judgment, Judge Brinkema entered an Order, found here, continuing the stay of the litigation against all of the other defendants based on TecSec’s representations that it would promptly pursue an appeal of the summary judgment ruling and that  it will not pursue its claims against the other defendants until the conclusion of that appeal.

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On March 8, the Senate passed comprehensive patent reform legislation by a vote of 95-5. While almost all the litigation-related provisions were removed, one provision, placing venue for suits against the PTO in the Eastern District of Virginia, was included in the final bill.

Congress has struggled with patent reform over the past several Congresses, and a few of our posts from previous efforts can be found here and here. The latest bill, S. 23, with changes made in the Judiciary Committee, can be found here.  A good summary of the provisions of the bill as passed by the Senate written by the Congressional Research Service can be found here.

There are few provisions left which will alter patent litigation lawsuits. The proposal to alter willfulness claims in the original bill was eliminated in Committee, and other litigation provisions affecting venue and damages were removed on the Senate floor through a manager’s amendment, which can be found here.  The bill also left out a proposal for a pilot program in district courts to provide training and additional resources for judges willing to take patent cases, which appeared in earlier versions of patent reform legislation.

The one venue provision that survived the manager’s amendment has a direct effect on Virginia. That provision changes the venue for litigation against the Patent and Trademark Office from the federal court in Washington to the Eastern District of Virginia, since the PTO is located in Alexandria.  The bill also effectively eliminates false patent marking claims under 35 U.S.C. 292(a) and eliminates the best mode defense to claims of patent infringement.

The legislation now moves to the House of Representatives, which held subcommittee hearings on patent reform on March 9 and 10.  There are indications that the Senate attempted to address some of the House's concerns in the manager's amendment, and so hopes for ultimate enactment of the legislation are higher than in past years.  Even if passed by the House and enacted into law, though, patent reform will be delayed a bit longer. The effective date of the Act is one year after enactment and applies to any patent issued after that effective date.

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