United States of America v. $27,990.00 in United States Currency
STRICKEN - MEMORANDUM OPINION regarding pending motions. Court finds defendants' products do not infringe the '288 patent directly, jointly, or indirectly. For this reason, the Court will grant defendants' motions for summary judgme nt as to non-infringement. Because the Court finds that defendants do not infringe the '288 patent, the Court does not consider defendants' other issues as delineated in their motions. A separate order will be entered in accordance with this memorandum opinion. Ordered by Senior Judge Lyle E. Strom. (JAB) Modified on 12/10/2012 to add "stricken" text pursuant to Order 19 . (JAB)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,
McAFEE, INC.; SYMANTEC
CORPORATION; and TREND MICRO )
In this case, plaintiff Prism Technologies, LLC
(“Prism”) alleges infringement of its patent, U.S. Patent No.
7,290,288 (“‘288 patent”), by defendants.
filed a motion for summary judgment of noninfringement (Filing
No. 288), which the Court denied, without prejudice, because a
second Markman hearing on disputed terms in the ‘288 patent had
not yet been held and because adequate discovery had not yet
occurred (Memorandum and Order, Filing No. 393).
time, the second Markman hearing was held on January 12, 2012,
and discovery has closed.
This matter is now before the Court on new motions for
summary judgment of noninfringement by defendants McAfee, Inc.
(“McAfee”) (Filing No. 871), Symantec Corporation (“Symantec”)
(Filing No. 868), and Trend Micro Incorporated (“Trend Micro”)
(Filing No. 849).
In their motions, defendants seek to “dispose
of this action” or at the very least “narrow the issues for
The motions have been fully briefed (see Filing No. 955,
After review of the motions, briefs, submitted
evidence, and relevant law, the Court finds as follows.
Background and Procedural History.
The ‘288 patent, entitled “Method and System for
Controlling Access, by an Authentication Server, to Protected
Computer Resources Provided via an Internet Protocol Network,”
issued on October 30, 2007, from an application filed August 29,
2002 (Ex. 2, Filing No. 173) with the United States Patent and
Trademark Office (“USPTO”).
Prism contends that the ‘288 patent
is a continuation-in-part of another Prism patent, U.S. Patent
No. 6,516,416 (“‘416 patent”), entitled “Subscription Access
System for Use with an Untrusted Network,” which issued on
February 4, 2003, from an application filed June 11, 1997 (Ex. 3,
Filing No. 173).
Prism filed its complaint in the present action on June
8, 2010 (Filing No. 1).
November 30, 2010.
The Court held a planning conference on
At that time, the parties disputed the
meaning of several of the claim terms in the ‘288 patent, but it
was thought possible that the Court’s construction of “hardware
key”1 might be dispositive of the case, making it unnecessary to
construe the other disputed terms.
The parties agree that “hardware key” and “access key”
have the same meaning within the context of the ‘288 patent.
On April 11, 2011, the Court conducted the initial
Markman hearing for the purpose of construing “hardware key.”
Subsequently, this Court construed “hardware key” to mean:
An external hardware device or
object from which the predetermined
digital identification can be read.
(Filing No. 188, at 2).
After another hearing with the parties on July 21,
2011, it was determined that the construction of “hardware key”
did not dispose of the issues in the case and that other terms in
the ‘288 patent were still disputed.
After the parties submitted
additional claim construction briefs, the Court conducted a
second Markman hearing on January 12, 2012, for the purpose of
construing the additional disputed terms.
On January 20, 2012, after the second Markman hearing,
the parties submitted a joint stipulation on claim construction,
including an agreement as to the significance of claim preambles
and as to the definitions of five claim terms (Filing No. 440).
On February 14, 2012, the Court adopted the joint stipulation
regarding the significance of the preambles and the construction
of the five terms, and the Court construed the eight remaining
In particular, the Court construed the term
“digital identification” to mean “digital data whose value is
known in advance or calculated at the moment” (Filing No. 469, at
Each of the asserted claims of the ‘288 patent requires
either a “hardware key” or an “access key.”
In this case, Prism
claims that the hardware key for each defendant is a CD or DVD2
Prism claims that for each defendant, two
kinds of data could constitute the “digital identification” read
from the hardware key.
First, each defendant’s CD for a particular product
contains digital information that is identical for that
particular product, such as the SKU (stock-keeping unit) on
McAfee’s accused products.
Prism alleges that the SKU
distributed on McAfee’s CDs “meet[s] the limitation of a digital
identification that is read from the hardware key either
literally or if not literally, under the doctrine of equivalents”
(Filing No. 937, at 10, ¶ 16).
for Symantec’s CDs:
Prism makes similar allegations
Prism “alleges that the Vendor ID, Product
ID and SKU ID . . . distributed on Symantec’s accused CDs . . .
literally meet the limitation of a ‘digital identification’ that
is read from the hardware key” (Filing No. 933, at 9, ¶ 16).
Likewise, for Trend Micro, Prism contends that the PID [product
ID] distributed on the Trend Micro CD meets the limitation of
“digital identification” (Filing No. 929, at 8, ¶ 13).
will refer to the digital information literally read from each
In the case of McAfee, also a USB device (see Filing No.
937, at ¶ 15).
defendants’ product CDs as described in this paragraph
collectively as “SKU” data.
Second, Prism alleges that data that is created using
an executable file from the CD as applied to a unique string of
data from the client computer device itself also meets the
limitation of a “digital identification.”
For example, Prism
alleges that the “Machine ID used by McAfee’s software meets the
limitation of a ‘digital identification’” (Filing No. 937, at 11,
While Prism also alleges that “the Machine ID is not
strictly ‘read’ from the hardware key,” nevertheless, Prism
“alleges that the Machine ID would not exist but for the
executable files responsible for generating the Machine ID that
are, in fact, read directly from the hardware key” (Id., at 11,
Prism makes similar allegations regarding Symantec’s
“machine fingerprint/ID” (Filing No. 933, at 10, ¶ 17) and Trend
Micro’s “GUID” (Filing No. 929, at 8, 9, ¶¶ 13, 16).
will refer to the unique information derived from the client
computer device using an executable file read from each
defendant’s product CDs as described in this paragraph
collectively as “Machine ID” data.
Finally, a third piece of data is relevant to
defendants’ motions, but this third piece is not alleged by Prism
to constitute “digital identification.”
Klausner, describes it for McAfee,
As Prism’s expert, David
During the activation process, the
user of the client computer device
is also required to type in a “CD
Key” (also referred to as a
“Product Key,” “Activation Key,” or
“Serial Number”), which is a series
of letters and/or numbers printed
on a label that comes in the
packaging of the McAfee software
product. This CD Key data is also
included in the activation request
sent from the client computer
device to McAfee’s servers.
(Ex. 2, Filing No. 939, at 24).
Likewise, Symantec’s products
require a “Product Key” (Ex. 3, Filing No. 934, at 22), and Trend
Micro’s products require a “Serial Number” (Ex. 1, Filing No.
930, at 39).
The Court will refer to the information that is
manually typed in by the user and is printed on a label on the
packaging for each defendants’ product CDs as described in this
paragraph collectively as the “Serial Number.”
defendant, each Serial Number is unique.
During prosecution of the ‘288 patent, Prism attempted
to add new claims (Claims 186 and 187) that did not include a
hardware key or access key limitation (Filing No. 937 at 10,
By Examiner’s Amendment and with approval from Prism via
a telephone interview, the USPTO added the “access key”
limitation back into the new claims (Id. at 11, ¶ 27).
examiner’s March 23, 2007, statement of reasons for allowance of
the ‘288 patent stated that “the cited prior art fails to teach
or suggest a clearinghouse storing identity data of the server
computer, identity data of each client computer device, and
authorization data associated with protected resources whereby
the clearinghouse authorizes the client to access protected
resources using the above noted stored data and the clearinghouse
allowing access by the client to the protected resources stored
on the server computer” (Id. at 17, ¶ 11).
Standard of Review - Summary Judgment.
Summary judgment is appropriate when, viewing the facts
and inferences in the light most favorable to the nonmoving
party, “there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.”
Civ. P. 56(a); see Celotex Corp. v. Catrett, 477 U.S. 317, 321–23
“The inquiry performed is the threshold inquiry of
determining whether there is the need for a trial -- whether, in
other words, there are any genuine factual issues that properly
can be resolved only by a finder of fact because they may
reasonably be resolved in favor of either party.”
Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).
In a patent case,
“[a]fter the claims at issue have reasonably been construed, a
district court may grant summary judgment ‘when it is shown that
the infringement issue can be reasonably decided only in favor of
the movant, when all reasonable factual inferences are drawn in
favor of the non-movant.’”• Kraft Foods, Inc. v. Int'l Trading
Co., 203 F.3d 1362, 1366 (Fed. Cir. 2000) (quoting Voice Techs.
Group, Inc. v. VMC Sys., Inc., 164 F.3d 605, 612 (Fed. Cir.
Motions for Summary Judgment.
Direct, Literal Infringement.
authority makes, uses, offers to sell, or sells any patented
invention, within the United States or imports into the United
States any patented invention during the term of the patent
therefor, infringes the patent.”
35 U.S.C. § 271.
infringement analysis entails two steps.
The first step is
determining the meaning and scope of the patent claims asserted
to be infringed.
The second step is comparing the properly
construed claims to the device accused of infringing.”
v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996) (citations omitted).
“It is a
‘bedrock principle’ of patent law that ‘the claims of a patent
define the invention to which the patentee is entitled the right
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
“A claim is literally infringed when the accused device
literally embodies each limitation of the claim.”
203 F.3d at 1370.
Having construed the disputed claim terms of
the ‘288 patent (see Filing Nos. 188 and 469), the Court will now
compare the construed claims to defendants’ accused products.
In this case, Prism contends that each defendant
infringes independent claim 87 (along with some of its dependent
claims), claim 186, and claim 187.
The Court will consider each
Claim 87 reads:
87. A method for protecting resources of a
server computer, the server computer
providing the protected resources to a client
computer device via an untrusted network,
without necessarily protecting other computer
resources provided by the server computer and
by other server computers to other client
computer devices, the method comprising:
storing (i) identity data of the client
computer device having a hardware key and
(ii) authorization data associated with the
protected resources into a clearinghouse;
generating a digital identification of the
hardware key associated with the client
computer device, the identity data of the
client computer device comprising the digital
selectively requiring the client computer
device to forward its identity data to the
forwarding, by the client computer device,
the identity data of the client computer
device to the server computer;
forwarding, by the server computer, the
identity data of the client computer device
to the clearinghouse;
authenticating, by the clearinghouse, the
identity of the client computer device
responsive to the request for the protected
resources of the server computer by the
client computer device;
authorizing, by the clearinghouse, the client
computer device to receive the protected
resources requested by the client computer
device, based on the stored authorization
data associated with the requested protected
controlling, by the clearinghouse, access to
the requested protected resources of the
server computer responsive to successfully
authenticating the client computer device
making the request and responsive to
successfully authorizing the client computer
(‘288 patent, 41:61-42:29).
So claim 87 requires a hardware key
from which the predetermined digital identification can be read.
Prism maintains that the first two categories of digital data
described above, the SKU and the Machine ID, constitute the
claimed digital identification for each defendant.3
Claim 87 reads in part, “generating a
digital identification of the hardware key associated with the
client computer device, the identity data of the client computer
comprising the digital identification” (‘288 patent, 42:5-8).
This Court has construed the term “identity data” to mean “data
sufficient for the system to determine whether a person,
organization, and/or computer is authentic and/or is entitled to
access protected resources” (Filing No. 469, at 12-13).
In the context of claim construction of the term
“identity data,” Prism previously argued to this Court,
See Filing No. 921, at 7, ¶¶ 6, 7, and 8.
Claim 1 of the ’288 patent, for
example, recites “said at least one
hardware key generating a digital
identification, the identity data
of said at least one client
computer device comprising said
digital identification.” ([‘288
patent] at 35:8-10). Claims 31, 62,
and 87 contain similar language of
the client computer device’s
“identity data . . . comprising
[said/the] digital identification.”
(Id. at 37:42-43, 39:60-62,
42:6-8). “In the patent claim
context the term ‘comprising’ is
well understood to mean ‘including
but not limited to.’” CIAS, Inc.
v. Alliance Gaming Corp., 504 F.3d
1356, 1360 (Fed. Cir. 2007). Thus,
the claim language “the identity
data . . . comprising said digital
identification” means that the
identity data must include the
digital identification, and could
include other items as well, but
does not necessarily need to.
(Filing No. 309, at 27-28).
Thereby Prism expressly acknowledged
to this Court that the “identity data” term in Claim 87 requires
the digital identification only (while it could be comprised of
additional elements as well).
This implies that the digital
identification is capable of filling the role of the identity
data, that is, of being “data sufficient for the system to
determine whether a person, organization, and/or computer is
authentic and/or is entitled to access protected resources.”
In addition, in an earlier ‘288 patent case before this
Court, Prism told the Court, “The authentication server
determines whether or not a client computer device requesting
access to the protected computer resources is ‘authentic’ based
upon a comparison of the digital identification associated with
the client computer device to the digital identification stored
in a database associated with the authentication server” (Prism
Techs. LLC v. Research in Motion, 8:08CV537, Filing No. 76, at
There, Prism acknowledged that it is the digital
identification, as a necessary component of the identity data,
that is used in the comparison with the authentication server.
So according to Prism’s own reading of its patent, the digital
identification identifies the client computer device for
comparison with the database associated with the authentication
As this Court has written in its first claim
The ‘288 patent’s claims
contemplate a comparison between
the hardware key’s digital
identification and the
authorization data stored on the
clearinghouse database. See Claims
1, 31, 62, 87, 116, 117, 150, 185,
186, 187. If the hardware key’s
digital identification is not
predetermined, then the
authentication server would not be
able to compare the hardware key’s
digital identification and the
authorization data stored on the
clearinghouse database. Without
such a comparison, authentication
of the user’s identity would not be
(Filing No. 188, at 10) (emphasis added).
It follows that the
digital identification itself, and not some other piece of data
that is not read off the hardware key, must be compared to the
authorization data to authenticate the user’s identity.
specification of the ‘288 patent supports this understanding:
“[T]he account holder authentication server accesses the account
holder’s information from its database and authenticates the
In using two or three factor authentication,
this authentication involves the comparison of the digital ID”
(‘288 patent at 17:12-16 (emphasis added)).
Also, “[T]wo factor
authentication could be provided by some other physical device,
such as a credit card, a key, an ATM card, or the like which is
known to have been assigned and given to a specific person” (Id.
at 19:50-53) (emphasis added).
Mr. Klausner states for each defendant, in a
substantially similar fashion, (in this quotation, for McAfee),
The SKU, Machine ID, and [Serial
Number] data constitute data
sufficient for the Anti-Piracy III
system to determine whether the
client computer device is entitled
to activate the McAfee product
installed on the client computer
device. This data therefore
constitutes the “identity data” of
the client computer device, and
includes digital identification
generated from the product CD, DVD,
or USB device.
In reading the SKU and/or
generating the Machine ID from the
McAfee product [CD], McAfee’s
system is therefore “generating a
digital identification of the
hardware key associated with the
client computer device, the
identity data of the client
computer device comprising the
(Ex. 2, Filing No. 939, at 26-27; see for Symantec, Ex. 3, Filing
No. 934, at 25 and for Trend Micro, Ex. 1, Filing No. 930, at 4748).
This is unlike the situation posited by Prism above, where
the digital identification is the only ingredient of the identity
data and therefore is integral to the determination of
Undoubtedly, if the manually-typed Serial Number
and the Machine ID are added in as a part of the identity data,
then the identity data contains data sufficient to identify the
computer as authentic.
In essence, then, the only function
provided by what Prism purports to be the digital identification
read from the defendants’ CDs, the SKU, is to provide information
about the product itself.
But then the SKU has nothing to do
with the authentication of the user’s identity; rather, it has to
do with the authentication of the product’s identity, which is
The claims of the ‘416 patent include several of the
same terms whose construction was disputed in the ‘288 patent.
In previous litigation initiated in 2005 by Prism against other
defendants (the “Delaware Case”), the United States District
Court for the District of Delaware (the “Delaware Court”)
construed the term “hardware key” in the context of the ‘416
patent to mean “external hardware device or object from which the
predetermined digital identification can be read” (Prism Tech.
LLC v. Verisign, Inc., No. 05-214-JJF, Filing No. 449 (D. Del.
Apr. 2, 2007), Ex. 6, Filing No. 173, at 3).
construction for hardware key is identical to the construction
given in the Delaware Case.
In its brief opposing the present
motions for summary judgment, Prism quotes itself from a
statement to the Delaware Court in the Delaware Case:
Moreover, nothing stated by the
’416 patent inventors about their
invention precludes the sharing of
a hardware key amongst an
authorized user group. The
hardware key need not identify
anything other than itself, and it
can preferably (but not
necessarily) be associated with a
particular user or person. Once
connected to a client computer
device, and once the predetermined
digital identification is read from
the hardware key, it identifies the
client computer that the subscriber
happens to be using.
(Filing No. 1110, at 10) (emphasis added).
But this statement
only serves to show that the SKU data on defendants’ CDs cannot
possibly serve as the digital identification read from a hardware
key, because the CD cannot “identify . . . itself.”
can only place itself as a member of a group of hundreds or
thousands of identical CDs with identical SKUs.
SKU data on the CD cannot “identif[y] the client computer that
the subscriber happens to be using,” because the SKU contains no
information about the client computer.
In summary, the Court finds that the SKU data on each
defendant’s CDs cannot literally embody each limitation of claim
87, because the SKU cannot function as the required predetermined
digital identification read from the hardware key.
the Court finds that with regard to the SKU, the “infringement
issue can be reasonably decided only in favor of the movant, when
all reasonable factual inferences are drawn in favor of the
As required by the Court’s
construction of “hardware key,” the “digital identification” must
be read from the hardware key itself, not from somewhere else,
such as the client computer.
In the words of Prism’s expert, Mr.
Klausner, the ‘288 patent describes a hardware key that “contains
a digital identification used to authenticate the device to the
Trend Micro’s brief in support of its motion for summary
judgment for noninfringement (Filing No. 853) does not make this
argument. However, in its brief in support of its motion for no
induced infringement (Filing No. 1129), Trend first argues that
there is no direct infringement for substantially the same
reasons stated by McAfee and Symantec in their present motions.
Furthermore, the original motion for summary judgment (Filing No.
288) and corresponding brief were submitted by Trend Micro on
behalf of all defendants, and Trend Micro also made substantially
the same arguments therein that are presented here. Accordingly,
the Court will consider these arguments as having been submitted
by all three defendants.
system” (Ex. 2, Filing No. 854, at 6, emphasis added).5
according to Mr. Klausner, “when the client computer device sends
a request over the network to access the protected resources, it
forwards a digital identification derived from the hardware key
as well as, in some cases, additional identifying information to
the secure transaction server” (Id. at 7, emphasis added).
this way, Mr. Klausner differentiates between “digital
identification” from the hardware key and “additional identifying
information,” which would not come from the hardware key.
Klausner himself admits that the Machine ID is not read from the
“While this Machine ID is not strictly ‘read’
directly from the hardware key, . . .” (Ex. 2, Filing No. 939, at
The Court finds that the Machine ID cannot constitute
the “digital identification,” since it is derived, using an
executable file from the product CD, from unique digital
information that resides on the client computer device, not the
In addition, the resulting Machine ID is not
“read” from the hardware key any more than the manually-typed
Thus defendants could not possibly infringe claim
87 with regard to the Machine ID of the client computer device as
“digital identification,” because the Machine ID is not literally
This statement also supports the Court’s conclusion that
the digital identification is used for authentication and is not
just a tag-along with other useful bits of identity data.
read from the hardware key, as required by the claim construction
of hardware key.
In order to “protect resources of a server computer,”
as Claim 87's preamble recites, the method of Claim 87 would have
to result in some limitation of the number of client computer
devices that were able to access the protected resources.
Prism stated to the USPTO, “The challenge of [Prism’s]
application server to the clearinghouse is:
Can this user or
account holder have access to my selected resources?”
Filing No. 371, at 27).
If the answer to Prism’s question is
always “yes,” then Prism’s invention serves no purpose at all.
But defendants’ ostensible hardware keys, the CDs associated with
their software products, do not provide this access limitation.
If the CD were all that was needed for access to a defendant’s
protected resources, then one enterprising pirate could easily
buy one copy of a defendant’s product and rent out the associated
CD to every other resident of his college dormitory for a nominal
fee, allowing each resident to access the defendant’s protected
resources at will.
For that reason, defendants do not guard against piracy
of their protected resources by providing their customers with
identical CDs that can be used by any number of non-paying
Rather, defendants protect their resources by
issuing to each paying customer a predetermined Serial Number
that authenticates the identity of the customer’s client computer
device such that protected resources (in the form of software
updates, say) are only sent to paying customers.
fact is that the Serial Number is not read from the CD; it
resides on a label on the packaging of the product and is
manually typed in by the customer.
Therefore, it cannot
constitute “digital identification,” which must be read from a
In this way, while the CD user does have access to the
resources on the CD itself, that is, the initial version of the
defendant’s software product, the CD does not allow for access to
the protected resources located on a server computer, such as
updates to the software product.
On the contrary,
The accused systems use CDs only as
a delivery mechanism for software –
not as a security component. This
is the exact opposite of the system
contemplated by the patent, in
which the hardware key is the
security component, and the
“protected content” is only to be
delivered to the user’s computer
once the digital identification
read from that hardware key
authenticates the identity of the
authorized user or the client
(Filing No. 926, at 6 n.2).
Claims 186 (‘288 patent, 50:34-67) and 187 (‘288
patent, 51:1-52:16) fare no better, since each requires an access
key, which is identical to a hardware key.
For the same reasons
given above, the Court finds that defendants’ product CDs cannot
serve as an access key as required by claims 186 and 187.
Accordingly, the Court finds that defendants do not literally,
directly infringe the asserted claims of the ‘288 patent.
Doctrine of Equivalents.
“Infringement under the
doctrine of equivalents is a question of fact.”
F.3d at 1371.
Kraft Foods, 203
But “[p]rosecution history estoppel as a limit on
the doctrine of equivalents presents a question of law.”
Wellcome, Inc. v. Impax Laboratories, Inc., 356 F.3d 1348, 1351
(Fed. Cir. 2004).
Claims 186 and 187.
Via the doctrine of
equivalents, “a patent protects its holder against efforts of
copyists to evade liability for infringement by making only
insubstantial changes to a patented invention.”
Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 727 (2002).
“In some cases the Patent and Trademark Office (PTO) may have
rejected an earlier version of the patent application on the
ground that a claim does not meet a statutory requirement for
“When the patentee responds to the
rejection by narrowing his claims, this prosecution history
estops him from later arguing that the subject matter covered by
the original, broader claim was nothing more than an equivalent.”
“Competitors may rely on the estoppel to ensure that their
own devices will not be found to infringe by equivalence.”
In particular, “A rejection [of a claim] indicates that
the patent examiner does not believe the original claim could be
Id. at 734.
“Estoppel arises when an amendment is
made to secure the patent and the amendment narrows the patent's
Id. at 736.
“A patentee who narrows a claim as a
condition for obtaining a patent disavows his claim to the
broader subject matter . . . .
We must regard the patentee as
having conceded an inability to claim the broader subject matter
or at least as having abandoned his right to appeal a rejection.
In either case estoppel may apply.”
Id. at 737.
“Prosecution history estoppel continues to be available
as a defense to infringement, but if the patent holder
demonstrates that an amendment required during prosecution had a
purpose unrelated to patentability, a court must consider that
purpose in order to decide whether an estoppel is precluded.”
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,
“Where the patent holder is unable to establish
such a purpose, a court should presume that the purpose behind
the required amendment is such that prosecution history estoppel
Id. at 41.
In addition, “the patentee should bear
the burden of showing that the amendment does not surrender the
particular equivalent in question.”
Festo, 535 U.S. at 740.
patentee's decision to narrow his claims through amendment may be
presumed to be a general disclaimer of the territory between the
original claim and the amended claim.”
adding a new claim limitation constitutes a narrowing amendment
that may give rise to an estoppel.”
Honeywell Int'l Inc. v.
Hamilton Sundstrand Corp., 370 F.3d 1131, 1141 (Fed. Cir. 2004).
During the prosecution of the ‘288 patent, Prism tried
to add what would become claims 186 and 187 without the
limitation of an access key.
After the USPTO examiner added back
in the access key limitations in an amendment, and Prism accepted
the amendment, the new claims were allowed (see Ex. 5, Filing No.
876, at 5-6).
Prism avers that the addition of the access key
limitation does not constitute a narrowing amendment because
claim 1 of the ‘288 patent contains a hardware key, and all the
other claims of the ‘288 patent depend on claim 1, such that any
new claim would already contain a hardware key/access key
But McAfee persuasively argues,
Prior to those amendments, the
claims did not require that the
“digital identification” be derived
from an access key associated with
the client computer. In other
words, prior to the amendment, the
claims were ambivalent as to the
location from which the digital
identification could be derived and
read, and after amendment, the
claims expressly required that the
digital identification be derived
and read from the hardware key.
Thus, there can be no genuine
dispute that these limitations
narrowed the scope of claims 186
(Filing No. 1078, at 29).
The Court agrees that the access key
amendments were narrowing.
The Court presumes that such narrowing amendments were
made to facilitate patentability, and the burden is on Prism to
rebut the presumption.
Prism attempts to do so by citing the
examiner’s statement as to the “reasons for allowance” cited
above, which does not mention the addition of the access key
limitation (see supra pp. 6-7).
Yet, as noted by Trend Micro,
“Here, there can be no question that the amendments were made for
purposes of patentability because the Examiner conditioned
issuance of the patent on the applicant’s acceptance of the
(E.g., Ex. 12, p. 2 (‘Should the changes and/or
additions be unacceptable to applicant, an amendment may be filed
as provided by 37 CFR 1.312.’))” (Filing No. 853, at 32).
addition, Trend Micro argues, “[A]s Prism itself later
acknowledged, the Examiner’s statement was an overview statement
based only on ‘claim 1 as a representative claim,’ and was
inaccurate as to the vast majority of claims” (Filing No. 1067,
at 25, quoting Ex. 2, Filing No. 1066, at 2 (Applicant’s
“Comments on Statements of Reasons For Allowance.”)).
not intended to address all purportedly novel aspects of all 187
claims, and Prism in fact explicitly stated that it was not
applicable to claims 186 or 187” (Id.).
The Court agrees that Prism has not met its burden of
overcoming the presumption that the amendments including the
limitation of an “access key” for claims 186 and 187 were made
for purposes of patentability.
Therefore, prosecution history
estoppel applies to the “access key” limitation in claims 186 and
“[S]ubject matter surrendered via claim
amendments during prosecution is also relinquished for other
claims containing the same limitation.”
Glaxo, 356 F.3d at 1356.
“This court follows this rule to ensure consistent interpretation
of the same claim terms in the same patent.”
claims of a single patent should not be afforded different ranges
of equivalents for the same claim term, ‘absent an unmistakable
indication to the contrary.’”
Id. at 1356-57 (quoting Am.
Permahedge, Inc. v. Barcana, Inc., 105 F.3d 1441, 1446 (Fed. Cir.
Since “hardware key” and “access key” have the same
meaning in the context of the ‘288 patent, following Glaxo,
prosecution history estoppel also applies to the “hardware key”
limitation in claim 87.
Consequently, Prism is estopped from
arguing that defendants have infringed the asserted claims under
the ‘288 patent under the doctrine of equivalents as to the
“hardware key” limitation.
When viewing the evidence in a light most favorable to
the non-moving party, Prism, the Court finds that no reasonable
jury could find that the CDs associated with defendants’ products
could constitute a “hardware key” or “access key” in the context
of the ‘288 patent.
Moreover, as a matter of law, Prism is
estopped from asserting the doctrine of equivalents as to the
“hardware key” limitation.
Therefore, defendants’ products do
not infringe the ‘288 patent directly, jointly, or indirectly.
For this reason, the Court will grant defendants’ motions for
summary judgment as to non-infringement.
Because the Court finds
that defendants do not infringe the ‘288 patent, the Court does
not consider defendants’ other issues as delineated in their
A separate order will be entered in accordance with
this memorandum opinion.
DATED this 10th day of December, 2012.
BY THE COURT:
/s/ Lyle E. Strom
LYLE E. STROM, Senior Judge
United States District Court
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