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TecSec, Inc. v. Intl. Business Machines

Posted Sunday, October 20, 2013 by Mike Cicero

A few weeks ago the Court of Appeals for the Federal Circuit decided the case of TecSec, Inc. v. Intl. Business Machines and, in doing so, had to tackle the issue of claim construction. Because claim construction is an ongoing issue and the analysis of this case is fairly straightforward, it serves as a good practical example of how courts actually decide upon a given interpretation. For a detailed review on the evolution of the courts’ handling of this issue, see Brian Apel’s recent article Claim Construction. For purposes of this article it’s enough to state that currently, “[t]o ascertain the scope and meaning of the asserted claims, [courts look] to the words of the claims themselves, the specification, the prosecution history, and, lastly, any relevant extrinsic evidence.” See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Moreover, claim contrition is a legal issue and is reviewed de novo meaning that a lower court’s construction is given no deference by a higher court on appeal.

The precise term which the parties disputed the construction of was “multi-level multimedia security” which was a limitation of every asserted claim. The lower court had ruled that this term requires “multiple layers of encryption” due to TecSec having defined the term during prosecution and amending the patent specification to state that the patented method encrypts one object and then embeds it within other encrypted objects. TecSec’s position was that this construction was too narrow because the term “security” is broader than the term “encryption.” Moreover, TecSec argued that claim differentiation required an interpretation of claim 1 which includes encrypting a single object because dependent claim 3 recites encrypting multiple objects. The Court was unpersuaded.

Had it not been for the relevant intrinsic evidence on the record, TecSec’s arguments may have won the day. After all, extrinsic evidence would suggest that security means simply something that secures whereas encryption refers to changing information from one form to another, especially to hide its meaning. The Court looked to the prosecution history and rejected TecSec’s arguments. During prosecution the PTO had rejected the term “multi-level multimedia security” as being unclear and, in response, the inventor explained that multi-level security is achieved because “encrypted objects may be nested within other objects which are also encrypted” and amended the specification accordingly. In essence, after having clarified the term to overcome a rejection the applicant was estopped (i.e. prevented) from arguing a for broader meaning. The Court dealt with applicant’s claim differentiation argument by stating that the doctrine is “not a rigid rule” and “cannot overcome a construction required by the prosecution history.” Therefore, the inventor’s own definition of “multi-level multimedia security” as provided during prosecution governed and the term was held to require multiple levels of encryption.

This case highlights the importance of carefully considering each course of action during prosecution. For example, when faced with a rejection similar to the one the inventor in TecSec was, an applicant may decide to stand his ground and fight for a broad interpretation or may choose to pursue the narrower subject matter more explicitly, e.g. by actually using the term encryption in some claims, while pursuing broader subject matter in a continuation. Whatever one’s options, it’s best to be very deliberate in deciding upon the appropriate course of action so as not forfeit valuable subject matter.

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