10/03/13

Title	TecSec, Inc. v. Int'l Business Mach., Inc., No. 2012-1415 (Fed. Cir. Oct. 2, 2013).
Issues	[1-2] The defendants now assert that, under [1] the mandate rule and [2] the doctrine of collateral estoppel, our Rule 36 judgment [regarding claim construction at the summary judgment stage] precludes TecSec from re-raising its claim construction arguments. TecSec, at *8 (text added).
	[3] "TecSec argues that the district court erred when it concluded that the terms “system memory means” and “digital logic means” were means-plus-function limitations." Id. at *19.
	[4] [The defendants] contend that the software programs recited in the specification are not sufficient to perform the recited [computer-implemented means-plus-function terms] because they are generic disclosures of software, not specific algorithms to implement the claimed functions. Id. at at *22 (text added).
Holdings	[1] “[A] Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” [...] Had claim construction been the only issue in the [summary judgment appeal], and had that claim construction been essential to sustaining the judgment of noninfringement, the preclusive effect of our Rule 36 judgment would have been undeniable. But that was not the case. Here, the mandate rule does not preclude TecSec from challenging claim construction. TecSec, at *11 (text added, internal citations omitted).
	[2] Because claim construction was neither actually determined by nor critical and necessary to our summary affirmance in the [summary judgment appeal], collateral estoppel does not preclude the present challenge. Id. at *13 (text added).
	[3] "[W]e hold that the district court erred when it concluded that the term “system memory means for storing data” was a means-plus-function limitation [because a person skilled in the art would recognize that term to mean a specific structure that stores data.]." Tecsec, at *20 (text added). "[Also,] the district court erred when it held that the term “digital logic means” was a means-plus-function limitation [because 'digital logic' defines structure and the claim further defines said term to have structural elements]." Id. at *21 (text added).
	[4] [T]he examples [in the specification detailing how the software operates generally] provide detailed prose that shows how the specific software products operate to implement the claimed functions. “This court does not impose a lofty standard in its indefiniteness cases.” Finisar, 523 F.3d at 1341. Short of providing source code, it is difficult to envision a more detailed disclosure. Id. at *24 (text added).

Procedural History

"TecSec filed suit in the Eastern District of Virginia, alleging that the defendants’ internet servers and related software products infringed. In addition to the defend- ants, TecSec also alleged infringement by International Business Machines Corp. (“IBM”). Early in the case, the district court severed TecSec’s claims against IBM and stayed proceedings against the defendants. It considered the cross-motions relating to infringement, ultimately granting IBM’s motion for summary judgment of noninfringement. […] TecSec appealed, challenging the district court’s claim construction as well as its conclusion that TecSec failed to prove infringement by IBM. This court affirmed the district court’s judgment without opinion pursuant to Federal Circuit Rule 36. […] On remand, proceedings resumed as to the defendants that remained. TecSec then stipulated that it could not prove infringement by defendants under the claim construction adopted by the district court during the proceed- ings with IBM. Based on TecSec’s stipulation, the district court entered judgment of noninfringement as to the defendants. […]" TecSec, at *5-6 (internal citations omitted, emphasis added).

 

Legal Reasoning (Linn, Moore)
Background
Representative Claim 8	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 […]; 3) an object labelling subsystem, […]; 4) a decryption algorithm module […]; and 5) an object label identification subsystem […]; B) the encryption algorithm module working in conjunction with the object labelling subsystem […]. TecSec, at *4-5.
[1] Claim Construction after a Rule 36 Finding: Mandate Rule
Legal Standard	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. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999). TecSec, at *9.
Rule 36 Summary Affirmance as to Lack of Evidence does not Extend to Claim Construction	Summary Judgment based on Sufficiency of Evidence	Given the absence of evidence that any steps were performed by IBM or that an entire claimed hardware/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 infringement. Id. at *9-10.
	Claim Construction was Not Ground for Affirmance	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 record, 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. Id. at *10.
[2] Claim Construction after a Rule 36 Finding: Collateral Estoppel
Legal Standard	Among other elements, the party that seeks to invoke collateral estoppel must show that the litigated issue was “actually determined in the prior proceeding” and was a “critical and necessary part of the decision in the prior proceeding.” Collins v. Pond Creek Mining Co., 468 F.3d 213, 217 (4th Cir. 2006). A corollary to this requirement is “where the court in the prior suit has determined two issues, either of which could independently support the result, then neither determination is considered essential to the judgment.” Ritter v. Mount St. Mary’s Coll., 814 F.2d 986, 993 (4th Cir. 1987) [...]. TecSec, at *12 (some internal citations omitted).
Collateral Estoppel does Not Apply to a Rule 36 Decision Based on One of Two Alternate Findings	Judgment based on TecSec’s Failure of Proof was Independent of the Court’s Construction	[T]he district court’s judgment was independently predicated on alternative grounds: TecSec’s failure of proof as to IBM’s and its customers’ acts and as to IBM’s intent, and its failure to show that IBM’s software met certain limitations of the claims, as construed. The former ground was not and is not dependent on any claim construction. Even though the district court stated that its claim constructions were “strictly necessary” to resolving the parties’ summary judgment motions, the judgment based on TecSec’s failure of proof was independent of the court’s construction. Id. at *12-13.
	Distinguishing Ritter With Regards to Collateral Estoppel	We decline to extend Ritter to the facts of this case. The Fourth Circuit has recognized that Ritter “essentially appl[ied] a law-of-the-case principle” to hold that collateral estoppel should apply in that case. In re Microsoft Antitrust Litig., 355 F.3d 322, 328 (4th Cir. 2004). For the reasons underlying our decision that the mandate rule does not apply in this case, we conclude that the law of the case doctrine does not bar TecSec from rearguing claim construction in this appeal. See Tronzo v. Biomet, Inc., 236 F.3d 1342, 1348 n.1 (Fed. Cir. 2001) (explaining that the law of the case doctrine is a “corollary to the mandate rule”) […] Moreover, unlike Ritter, our Rule 36 judgment did not address any of the issues ruled on below that TecSec had appealed. We did not endorse or reject any of the district court’s specific holdings. For collateral estoppel to apply to a court’s claim construction, the construction “had to be the reason for the loss,” Jackson Jordan, Inc. v. Plasser Am. Corp., 747 F.2d 1567, 1577 (Fed. Cir. 1984), a conclusion that does not apply here. We thus decline to hold that collateral estoppel applies in this case. Id. at *14 (some internal citations omitted).
[3] Construction of Means-Plus-Function Limitations: System Memory Means and Digital Logic Means
Legal Standard	The use of the term “means” triggers a rebut- table presumption that § 112, ¶ 6 applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). 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. To determine if the claim recites sufficient structure, “it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359–60 (Fed. Cir. 2004). TecSec, at *19.
"system memory means" not a § 112, ¶ 6 limitation	A “system memory” is sufficient structure to perform the “storing data” function. To those skilled in the art, a system memory is a specific structure that stores data. Consistent with this understanding, for example, the specification discloses a computer that contains random access memory (RAM) to store data. ’720 Patent col. 7 l. 37 (disclosing a “486 50 MHz DX” computer system with “16 megabytes of RAM”). Id. at *20.
“digital logic means” not a § 112, ¶ 6 limitation	The term “digital logic means” is also not subject to § 112, ¶ 6. As an initial matter, the claims do not recite a function for the digital logic means to perform. Claim 8 of the ’702 Patent simply recites a “digital logic means, the digital logic means comprising” a number of claim ele- ments. In addition, the term “digital logic” designates structure to skilled artisans—namely digital circuits that perform Boolean algebra. The claim also recites that the digital logic means is comprised of structural elements, including a system memory and specific modules and subsystems. While the defendants assert that those elements are purely generic, we see no reason to hold that those elements are so devoid of structure as to implicate § 112, ¶ 6. Thus, the district court erred when it held that the term “digital logic means” was a means-plus-function limitation. Id. at *21.
[4] Construction of Means-Plus-Function Limitations: Computer-Implemented Means-Plus-Function Terms
Legal Standards	Standard for Computer Implemented Software Means	The parties agree that for these limitations to avoid indefiniteness, the specification must disclose a special purpose computer as corresponding structure—i.e., a computer programmed to perform a disclosed algorithm. […] We allow a patentee to 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.” […] However, “[s]imply reciting ‘software’ without providing some detail about the means to accomplish the function is not enough.” [...] The party alleging that the specification fails to disclose sufficient corresponding structure must make that showing by clear and convincing evidence. […] TecSec, at *22 (internal citations omitted).
	On generic disclosures of software to support structure for 112	It is true that “black box” disclosures of software are often too generic to provide corresponding structure for computer-implemented means-plus-function limitations. E.g., Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1383 (Fed. Cir. 2009) (“The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed.”); ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 518 (Fed. Cir. 2012) (holding that “black box” labeled “Purchase Orders” was insufficient structure to perform the “generate purchase orders” function). Id., at *24.
Disclosure of Specific Software Products and How to Use Those Products to Support Computer Implemented Software Means	The specification discloses the specific software products and how to use those products to implement the claimed functions, which include “selecting an object to encrypt,” “selecting an encryption algorithm,” and “encrypting the object,” among others. The specification provides three examples of using the software to perform these functions. 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. TecSec, at *22-23.
Conclusion
	For the foregoing reasons, the district court’s judgment is AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED. TecSec, at *24.

 

 

REYNA, Circuit Judge, dissenting. TecSec, Reyna, Op., at *1.
I. Claim Construction was Not an Independent Inquiry, but Instead Part of Infringement Analysis at Summary Judgment
Claim Construction and Sufficiency of the Evidence are not Alternative Inquiries	Claim construction and sufficiency of the evidence showing an act of infringement are not alternative grounds on which to find noninfringement. They are part of a singular analysis. […] Only after the claims are properly construed can the court determine that there is no evidence of an act of infringement when there has been no showing that the accused products meet all of the limitations of the properly con- strued claims. […] It is during this second step of the infringement analysis that the “all elements” rule is deployed to determine whether there has been an act of infringement. See supra note 2. TecSec, Reyna, Op., at *6 (internal citations omitted).
Claim Construction was "Critical and Necessary" to SJ Infringement Analysis	Given that this court affirmed (under Rule 36) the district court’s judgment as based on findings that were not clearly erroneous, that the record supported summary judgment, and that the judgment was entered without an error of law, the district court’s claim construction must have been critical and necessary to the decision to issue the Rule 36 affirmance. See Fed. Cir. R. 36(a), (c), (e); cf. Burke,183 F.3d at 1338 Id., at *6.
II. Mandate Rule and Collateral Estoppel Apply
Mandate Rule	Here, the majority reasons that the claim construction issues were not “actually decided” because the TecSec I [summary judgment stage] panel could have affirmed on the “independent” ground of failure of proof without “implicitly or explicitly” reaching the claim construction issues. This reasoning is contrary to our precedent that claim construction and evaluation of the evidence to determine a failure of proof are not inde- pendent grounds; they are two steps necessary to reach a single noninfringement judgment. E.g., Abbott Labs., 566 F.3d at 1288. Accordingly, the claim construction issues that TecSec advanced in TecSec I are within the scope of the Rule 36 affirmance in that case, and the mandate rule precludes TecSec from relitigating them in this appeal. TecSec, Reyna, Op., at *9 (text added).
Collateral Estoppel	For collateral estoppel, the majority disputes whether the claim construction issues were “actually determined” and “critical and necessary to the judgment.” Yet, there is no question that the district court actually determined the claim construction issues in TecSec I. See TecSec, 769 F. Supp. 2d at 1003–09. For the TecSec I panel to have affirmed the district court’s judgment of noninfringement, it necessarily decided those issues as well or, at a mini- mum, the claim construction issues were critical and necessary to the affirmance of the district court’s sum- mary judgment decision. See Abbott Labs., 566 F.3d at 1288. Thus, I find that collateral estoppel precludes TecSec from relitigating the claim construction issues it lost in TecSec I on appeal before this court. Id. at *9.
Policy Considerations	When we explicitly or implicitly assume that a prior panel of this court overlooked controlling precedent and narrowly circum- scribe a prior judgment issued under Rule 36, we fail to honor the principle that those cases “receive the full consideration of the court, and are no less carefully decid- ed than the cases in which we issue full opinions.” U.S. Surgical, 103 F.3d at 1556. Allowing a party to relitigate an issue it previously lost by summary affirmance will erode the confidence that underpins Rule 36, that such cases are no less carefully reviewed. Id. at *10.

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