Secure Axcess, LLC. v. Bank of America Corp. et al

Filing 638

MEMORANDUM OPINION AND ORDER denying 564 SEALED MOTION for Summary Judgment of Non-Infringement filed by Amegy Bank, NA, Bank of America NA, Arvest Bank, Bank of the Ozarks, First National Bank of Omaha, ING Bank, fsb, First National Bank Southwest, First National of Nebraska, Inc., Compass Bank, First National Bank Texas, Zions First National Bank. Signed by Judge Leonard Davis on 4/26/13. (mjc, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

SECURE AXCESS LLC,
Plaintiff,
vs.
BANK OF AMERICA CORP., ET AL.,
Defendants.

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CASE NO. 6:10-CV-670

MEMORANDUM OPINION AND ORDER
Before the Court is Defendants’1 Motion for Summary Judgment of Non-Infringement
(Docket No. 564) (“Motion”). For the reasons set forth below, the Motion is DENIED.
BACKGROUND
There is only one asserted patent in this lawsuit—U.S. Patent No. 7,631,191 (the “’191
Patent” or the “Patent”). The ‘191 Patent relates to a technology for verifying a webpage is from
its true source. Docket No. 461 (“Claim Construction Opinion”) at 2. Because fraudulent
webpages often appear authentic, it can be difficult for users to determine whether the page they
are viewing is genuine. ‘191 Patent, at 1:25–29. The ‘191 Patent addresses this issue. When a
user views a webpage originating from a valid source, an “authenticity stamp” is displayed on
the page. Id. at 2:39–42. Most of the issues presented in this Motion revolve around the
authenticity stamp limitation.
An authenticity stamp is “a visual and/or audio indication that the information (e.g., a
web page) being presented has been authenticated and is from a valid source.” Claim

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This order refers to Bank of America, N.A., Arvest Bank, Bank of the Ozarks, Compass Bank, First National Bank
Texas, ING Bank, and FSB d/b/a ING Direct USA collectively as “Defendants.”

Construction Opinion at 13. The parties debate the function of the authenticity stamp.
Defendants believe the authenticity stamp plays a passive role in confirming the source of a
webpage. In their view, the presence of the stamp is binary. If the stamp is displayed, the source
is valid; if the stamp is not displayed, the source is not valid. Thus, Defendants believe the stamp
cannot be presented to a user unless the source of the page has already been validated.
Defendants argue that because their systems do not confirm the source of a webpage before they
display the authenticity stamp, their systems do not infringe.
The Plaintiff Secure Axcess LLC (“Secure”) contends the authenticity stamp plays a
more active role in confirming the source of a page. According to Secure, the user ultimately
validates the source of a webpage when it sees the authenticity stamp. Secure argues the content
of the authenticity stamp allows a user to determine whether a source is valid. Thus, an
authenticity stamp can be displayed even if the source is fraudulent because the user will know
the authenticity stamp is incorrect.
APPLICABLE LAW
Summary Judgment Standard
Summary judgment shall be rendered when the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to judgment as a matter
of law. FED. R. CIV. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 323–25 (1986); Ragas v.
Tenn. Gas Pipeline Co., 136 F.3d 455, 458 (5th Cir. 1998). An issue of material fact is genuine if
the evidence could lead a reasonable jury to find for the non-moving party. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986). In determining whether a genuine issue for trial exists, the

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court views all inferences drawn from the factual record in the light most favorable to the
nonmoving party. Id.; Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 587 (1986).
If the moving party has made an initial showing that there is no evidence to support the
nonmoving party’s case, the party opposing the motion must assert competent summary
judgment evidence of the existence of a genuine fact issue. Matsushita, 475 U.S. at 586. Mere
conclusory allegations, unsubstantiated assertions, improbable inferences, and unsupported
speculation are not competent summary judgment evidence. See Eason v. Thaler, 73 F.3d 1322,
1325 (5th Cir. 1996); Forsyth v. Barr, 19 F.3d 1527, 1533 (5th Cir. 1994). The party opposing
summary judgment is required to identify evidence in the record and articulate the manner in
which that evidence supports his claim. Ragas, 136 F.3d at 458. “Only disputes over facts that
might affect the outcome of the suit under the governing laws will properly preclude the entry of
summary judgment.” Anderson, 477 U.S. at 248. Summary judgment must be granted if the
nonmoving party fails to make a showing sufficient to establish the existence of an element
essential to its case and on which it will bear the burden of proof at trial. Celotex, 477 U.S. at
322–23.
Infringement Law
Infringement analysis is “a two-step process in which we first determine the correct claim
scope, and then compare the properly construed claim to the accused device to determine
whether all of the claim limitations are present either literally or by a substantial equivalent.”
Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1247–48 (Fed. Cir. 1998). Claim
construction is an issue of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970–71
(Fed. Cir. 1995). A determination of infringement, whether literal or under the doctrine of
equivalents is a question of fact. Biovail Corp. Int’l v. Andrx Pharms., Inc., 239 F.3d 1297, 1300

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(Fed. Cir. 2001). For literal infringement, “every limitation set forth in a claim must be found in
an accused product, exactly.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575
(Fed. Cir. 1995). Any deviation from the literal claim language precludes a literal infringement
finding. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001).
ANALYSIS
“Authenticity Stamp” Limitation
The parties’ dispute regarding this limitation reflects a fundamental disagreement over
the scope of the Patent. In particular, the parties debate the level of human involvement dictated
by the Claims. Defendants contend the entire process is automated and involves no human
interaction. Motion at 14. Under Defendants’ view, the system authenticates that a web page
comes from a valid source, then displays an authenticity stamp. See id. at 13 (“Conveyance to the
user that the web page has been authenticated as being from its true source is accomplished
through the display of an authenticity stamp.”) (emphasis added). A human user plays a passive
role. If an authenticity stamp is displayed, the page came from a valid source—the user is not
required to make a determination about the stamp itself. See id. Secure’s view requires the user
to play a more active role. Secure believes a page can be authenticated even if the source is
fraudulent, so a human user must confirm that the authenticity stamp is correct. Docket No. 574
(“Response”) at 6. Secure refers to this last step as the “validating step.” See id. Secure argues
the authenticity stamp enables a user to visually confirm the page came from a valid source, so
user confirmation is inherent within the Claims. See id.
Defendants’ non-infringement position is based on their belief that authentication and
validation occur simultaneously. Motion at 9. Defendants first argue they do not infringe because
SSL authentication does not confirm a source is valid. Id. at 12. Under Secure’s infringement

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theory, the “authenticity key” is an image tag. Id. at 11. The image tag triggers round-trip SSL
authentication, which in turn authenticates the webpage. Id. However, SSL alone does not
authenticate the source of the page. Id. at 12. Thus, using SSL authentication, a system may
“authenticate” a malicious source. Id. Because SSL does not confirm a source is valid,
Defendants do not infringe. Id.
Defendants’ second argument is based on timing. Under Secure’s infringement theory,
the stamp is always presented to a user, even if a page has not been authenticated. Id. at 14.
However, the Court’s construction states that the authenticity stamp is presented to a user after
authentication has occurred. Id. at 13. Thus, Defendants contend Secure’s infringement theory is
so broad, any use of a SSL communication channel to transfer data would infringe. Id.
Secure counters that authentication and validation are two distinct steps. Response at 6.
Secure argues authentication is a machine-level process, while validation requires visual human
confirmation. Id. In support, Secure points to various portions of Dr. Hugh Smith’s2 expert report
and deposition. Dr. Smith testified “validate” means to confirm the authentication step is correct.
See id. at 13. In Dr. Smith’s view, once the authentication succeeds, the user must visually
confirm the authenticated page is valid. Id. at 15. The entire purpose of the stamp is to indicate a
source is valid. Id. The stamp will only be known to the user and the host computer, so a
phishing website would not be able to recreate the image. Id. at 11. Thus, a user will be able to
confirm a page is valid based on the image displayed in the authenticity stamp. Id.
Defendants’ argument can be summarized as follows: (1) authentication and validation
occur simultaneously; (2) Secure’s infringement contentions rely on SSL protocol to meet the
authentication limitation; (3) SSL protocol does not validate a page’s source; (4) Defendants do
not infringe because their SSL authentication does not meet the validation limitation. Their
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Dr. Smith is Secure’s infringement expert. Motion at 5.

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position requires the authentication step to confirm a webpage comes from a trusted source. See
Motion at 12 (“The SSL session key cannot authenticate that the webpage is from a valid
source.”). This implicates the parties’ dispute over the level of human interaction required by the
Patent.
The Court’s claim construction opinion requires the authentication step to be performed
at the machine level. See Claim Construction Opinion at 12 (“The authentication process is
accomplished by the user’s device (or plug-in software).”). However, there is no discussion
about the validation step. See id. at 10–13. This leaves open the possibility a human user can
validate a source.3 Cf. ‘191 Patent, at 2:51–53 (“The validation is performed using only
information that the true owner of the icon can possess.”). Indeed, the Court’s non-acceptance of
Defendants’ proposed construction supports this position. At the Markman hearing, Defendants
argued “authenticity stamp” meant “a visual and/or audio indication that the user’s device has
authenticated the source of the formatted data.” See Claim Construction Opinion at 10 (emphasis
added). The actual construction does not include the “user’s device” requirement. See id. at 13.
Thus, there is no requirement in the Claim Construction that authentication and validation occur
simultaneously.4
An authenticity stamp may validate a source after machine-level authentication. One way
for an authenticity stamp to validate a source is through the stamp’s content. See ‘191 Patent, at
1:63–67 (discussing selection of the authenticity stamp). Defendants contend the only way for a
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The Abstract of the Patent highlights the user interaction embodied in the Claims. It describes “the present
invention” as a system “that allows a user to validate that current information (e.g., a web page) originates from the
true owner of the icon and is not merely a copy.” ‘191 Patent, Abstract (emphasis added).
4
Defendants contend Dr. Smith contradicted this statement during his deposition. See Motion at 10. When asked
what authenticate meant, Dr. Smith responded, “The page needs to be authenticated that it is from a valid source.”
Id. Defendants argue this statement indicates the authentication step includes validation of the source. However, on
several other occasions at his deposition, Dr. Smith highlighted his views on the difference between authentication
and validation. See Response at 13–14. While Defendants are free to cross-examine Dr. Smith about his conflicting
statements, a single inconsistent statement in a deposition is insufficient to establish Dr. Smith’s position at the
summary judgment stage.

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stamp to validate a source is for the stamp to be displayed. However, the Court’s claim
construction opinion never requires the presence of an authenticity stamp to confirm the validity
of a source. Claim Construction Opinion at 10–13. An authenticity stamp is “a visual and/or
audio indication that the information (e.g., a web page) being presented has been authenticated
and is from a valid source.” Id. at 13. More succinctly, a stamp is an “indication that the
information…is from a valid source.” See id. All the construction requires is for the stamp to
indicate the information comes from a valid source. “Indicate” is a broad word, and there are
multiple ways for a stamp to indicate a source is valid. One such way is for the stamp to display
an image known to the user. See ‘191 Patent, at 2:51–53 (“The validation is performed using
only information that the true owner of the icon can possess.”).
The flaw in Defendants’ argument is highlighted by viewing the construction from a
process verses outcome perspective. The construction of “authenticity stamp” dictates an
outcome—the stamp must indicate a source is valid. Claim Construction Opinion at 13. The
construction does not dictate the process of how that outcome is reached. See id. All that is
required is for the stamp to indicate whether a source is valid. The construction places no
restrictions on how the stamp must indicate a source is valid. In Defendants’ view, the only way
an authenticity stamp can confirm a source’s validity is through the actual presentation of the
stamp. However, the Claims do not require an authenticity stamp to confirm a source’s validity
in a particular way; they only require the stamp to indicate a source is valid. This indication of
validity could be the stamp’s presence, but it does not have to be. An indication of validity could
also come from the stamp’s content.
Lastly, Defendants argue Secure’s infringement theory is so broad that “the mere use of
an SSL communication channel to transfer data would be sufficient to satisfy the authentication

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requirements of the invention recited in the asserted claims of the ‘191 Patent since every SSL
communication requires encoding and decoding.” Motion at 14. This argument misses the point
because it ignores validation. One of the “authentication requirements of the invention” is that
the authenticity stamp indicates information comes “from a valid source.” See Claim
Construction Opinion at 13. Secure does not argue SSL protocol alone validates the source of
information. See Response at 8–10. Rather, under Secure’s view, the authenticity stamp will
validate after SSL authentication. See id. at 10. Thus, regardless of whether all SSL protocol
authenticates, a SSL-based system cannot infringe unless it also validates the source of the
information.5
Disavowal of SSL-based Infringement
Defendants also argue Secure’s infringement theory attempts to capture claim scope
disavowed in the Patent. Motion at 15. Under Secure’s infringement theory, the accused systems
implement a secure communication channel using SSL protocol to authenticate a webpage.
However, Defendants contend the following sentence in the Patent expressly disavows SSL
protocol:
Unlike Secure Sockets Layer (SSL) or other “security session” protocols, the
present invention validates aspects of the screen display independent of the
communications channel between the user and the web site (however, security
session protocols may be used in addition to the present invention).
‘191 Patent, at 2:46–51. Additionally, Defendants cite three other passages they believe indicate
“that security tools, including SSL, are used in addition to, and are not part of, the authentication
process.” Motion at 18; see id. at 19 (“Although the specification reveals that the inventors knew
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Defendants also argue they do not infringe because the authenticity stamp is presented to a user after authentication
has occurred. Motion at 14. This does not require a finding of non-infringement; it limits the instances of
infringement. The authenticity stamp is presented to a user after authentication has occurred. Claim Construction
Opinion at 12. Under Secure’s infringement theory, a user validates a source after the stamp is presented. Because
the authenticity stamp must indicate a valid source, only those connections to a valid source would meet the Claims.
An authenticated connection to a phishing site would not meet the Claims because there would be no valid source,
as required by the authenticity stamp limitation.

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about security protocols, the ‘191 Patent never mentions or provides any hint that a security
session protocol would be suitable for authenticating a webpage in accordance with the claimed
invention.”). Since the Patent teaches away from using SSL to authenticate the source of a page,
Defendants contend Secure cannot rely on SSL protocol to prove infringement. Id. at 20.
Secure contends the cited passages are meant to illustrate the importance of the
authenticity stamp, not to serve as a disclaimer of SSL protocol. Response at 16. Secure argues
SSL protocol is independent of the algorithm used to validate a source. Id. at 17. Further, Secure
asserts that Defendants originally cited to SSL in their invalidity contentions as meeting the
authentication requirements of the Claims. Id. at 18.
Secure’s SSL-based infringement contentions are entirely consistent with the cited
passages. The inventive step embodied in the Patent is the authenticity stamp, not SSL protocol.
See ‘191 Patent, at 2:39–40 (describing the stamp as “an additional level of functionality”). A
user using SSL protocol can access a malicious webpage that appears genuine, so the
authenticity stamp is necessary to confirm the source of the information. See ‘191 Patent, at
1:34–38. Because each user knows their stamp, a user is able to determine whether the source is
genuine. If the stamp matches the user’s stamp, the source is valid. Conversely, if the stamp is
incorrect, the source is malicious. The cited passages address SSL protocol to make this
distinction. They do not say SSL protocol cannot be used to meet the Claim limitations; they say
SSL protocol alone does not meet the Claim limitations. See id. at 2:46–51 (noting SSL
protocols do not validate the source of information).
CONCLUSION
For the foregoing reasons, Defendants’ Motion for Summary Judgment of NonInfringement (Docket No. 564) is DENIED.

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So ORDERED and SIGNED this 26th day of April, 2013.

__________________________________
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE

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