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

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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.