Paone v. Microsoft Corp.

• Decision Date: 30 July 2012
• Docket Number: No. 07–cv–2973 (ADS)(ARL).,07–cv–2973 (ADS)(ARL).
• Parties: Luciano F. PAONE, Plaintiff, v. MICROSOFT CORPORATION, Defendant.
• Court: U.S. District Court — Eastern District of New York

881 F.Supp.2d 386

Luciano F. PAONE, Plaintiff,

v.MICROSOFT CORPORATION, Defendant.

No. 07–cv–2973 (ADS)(ARL).

United States District Court,

E.D. New York.

July 30, 2012.

Kirkland & Ellis LLP, by: Andrew Gordon Heinz, Esq., Jeanne M. Heffernan, Esq., John Michael Desmarais, Esq., Jon Todd Hohenthaner, Esq., Ryan Charles Micallef, Esq., of Counsel, New York, NY, for Plaintiff.

Woodcock Washburn LLP, by: Dale M. Heist, Esq., Daniel J. Goettle, Esq., John E. McGlynn, Esq., Steven J. Rocci, Esq., of Counsel, Philadelphia, PA, Westerman, Ball, Ederer, Miller & Sharfstein, LLP, by: Greg S. Zucker, Esq., Jeffrey A. Miller, Esq., of Counsel, Uniondale, NY, for Defendant.

MEMORANDUM OF DECISION AND ORDER

SPATT, District Judge.

In this patent infringement case, the Plaintiff Luciano F. Paone (“Paone”) alleges that the Defendant Microsoft Corporation (“Microsoft”) has infringed United States Patent 6,259,789 (“the '789 Patent”), which Paone holds. Pursuant to the Supreme Court's decision in Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the Court previously construed the disputed claim terms of the '789 Patent. Presently before the Court is the Defendant's motion for summary judgment. For the reasons set forth below, the motion is granted in part and denied in part.

I. BACKGROUND

A. Background of the Invention

For purposes of the present motion, the Court will restate the relevant facts as they appeared in the previous claim construction decision issued on February 9, 2011 (the “Markman Order”). See generally Paone v. Microsoft Corp., 771 F.Supp.2d 224 (E.D.N.Y.2011).

On July 10, 2001, the United States Patent and Trademark Office (“PTO”) issued the '789 Patent, entitled “Computer Implemented Secret Object Key Block Cipher Encryption and Digital Signature Device and Method”, to the Plaintiff Luciano F. Paone. The '789 Patent describes a method of translating (or “encrypting”) ordinary data (called “plaintext”) into encoded data (called “ciphertext”), so that the plaintext may not be viewed by an unintended reader. In cryptography, which is the science of encryption, such a method is called a “cipher”. Generally, encrypted ciphertext is later decoded, or “decrypted”, into plaintext, so that the data is again usable.

There are several ways to encrypt computer data, but the '789 Patent deals exclusively with “symmetric key” encryption of computer data, which requires that the encryptor and decryptor share knowledge of both a cipher and a key. Computer based symmetric key ciphers divide roughly into two types: block ciphers and stream ciphers. As a general matter, a stream cipher employs its key to encrypt data one bit at a time, while a block cipher employs its key to encrypt bits in groups. The '789 Patent describes a block cipher.

Computer implemented block ciphers have been in wide use in the United States since at least 1976, when a block cipher called the “Data Encryption Standard” or “DES” was adopted by the United States government for general use. As of 1997, when Paone filed his patent application, dozens of additional block encryption algorithms had been published. However, most of those inventions used a single key to encrypt successive blocks of data. Paone's innovation—in the most general terms—was to change the encryption key for each data block, based on additional, randomly generated data.

B. Infringing Technology

There are two components of Microsoft's flagship computer operating system, Windows, that Paone asserts infringe the '789 Patent. Temporal Key Integrity Protocol (“TKIP”) encryption is an industry-standard data encryption protocol used to encrypt and decrypt data that is transmitted over wireless local area networks. TKIP technology improves on prior wireless encryption standards by using a dynamic keying scheme in which the encryption key changes from one block of data to the next. The Defendant Microsoft implements or supports TKIP in many of its products, including Windows Vista, XP and 7, and Xbox 360. Paone claims that method claims 2 and 33 in the '789 Patent, as well as system claims 24 and 34 in the '789 Patent, are infringed by the TKIP technology. In order for TKIP to infringe any these claims, Paone necessarily must prove that TKIP incorporates every limitation of the claim, either literally or under the doctrine of equivalents.

The second component Paone asserts as being infringed is BitLocker. BitLocker is an encryption feature implemented in Microsoft software, which is used to encrypt and decrypt data on a customer's hard drive. BitLocker targets the “lost laptop” scenario, in which unprotected data could be vulnerable to theft or offline attacks. The BitLocker technology encrypts data on a hard drive using an encryption key that changes from one block of data to the next. As with TKIP, Microsoft has incorporated the BitLocker feature into a number of its products, including Windows Vista and 7 Ultimate. Paone claims that the method claims 2 and 33 in the '789 Patent are infringed by the BitLocker technology. In order for BitLocker to infringe either of these claims, Paone necessarily must prove that BitLocker incorporates every limitation of either of the claims, either literally or under the doctrine of equivalents.

In sum, Paone alleges that Microsoft's products implementing and supporting TKIP encryption infringe claims 2, 24, 33 and 34 of the '789 Patent, while products incorporating Microsoft's BitLocker encryption feature infringe claims 2 and 33 of the '789 Patent.

C. Procedural History

Paone filed his application for the '789 Patent on December 12, 1997. Following the initial application, the PTO rejected Paone's claims as unpatentable in three successive office actions, dated September 29, 1999, March 16, 2000, and October 30, 2000. In response to each of these rejections, Paone modified his claims and provided additional argument. Then, on July 10, 2001, the PTO deemed the described invention patentable, and issued the '789 Patent.

On July 23, 2007, Paone commenced the present action against Microsoft, alleging that Microsoft was infringing the '789 patent. Specifically, Paone asserts that two components of Microsoft's flagship computer operating system, Windows, infringe the '789 Patent, as set forth above. The parties proceeded with discovery, during which time Microsoft on May 16, 2008 requested the PTO to reexamine the '789 Patent. In early 2009, with the reexamination proceeding still pending, the parties briefed claim construction motions. However, before holding a Markman hearing, the Court on April 5, 2009 stayed the case pending the resolution of the reexamination proceeding. Then, before the stay was lifted, Microsoft also filed two more reexamination requests, dated June 29, 2009, and July 27, 2009. The three reexamination proceedings as a whole resulted in the cancellation of claims 1, 3, 23, and 32 of the '789 Patent, but also a ruling that several claims, including claims 2, 24, 33, and 34, were patentable. After certain amendments, a number of other claims were also found to be patentable.

After the reexamination proceedings had been finalized, the Court on March 3, 2010 lifted the stay of the case. Partly as a result of the reexamination proceedings, Paone modified his position to assert that Microsoft was infringing claims 2, 24, 33, and 34 of the '789 Patent, all of which had been ruled patentable by the PTO. These claims read in full as follows (the language of claims 1, 23, and 32 are also included, because some of the asserted claims are dependent on those claims).

What is claimed is:

1. A computer implemented method for encrypting data comprising the steps of:

creating at least one object key in a block cipher, the at least one object key comprising data and methods that operate on said data;

creating a key schedule based upon the at least one object key;

encrypting a random session object key in a block cipher encryption process with the at least one object key;

encrypting a block of input plaintext data utilizing said key schedule;

modifying the at least one object key based on seeding from the random session object key;

modifying the key schedule based upon the at least one modified object key;

encrypting a next block of input plaintext data utilizing said modified key schedule; and

repeating the steps of modifying the at least one object key, modifying the key schedule and encrypting utilizing the modified key schedule until the encrypting of blocks of plaintext data is completed.

2. A computer implemented method as defined in claim 1, wherein the modification of the key schedule is independent of the input plaintext data.

23. A cryptographic communications system comprising:

at least two networked computer systems linked by a communication channel; and

each computer system including a central processing unit and a memory storage device for executing a block cipher encryption/decryption process;

wherein the encryption process transforms an input plaintext message to a ciphertext message and the decryption process transforms the ciphertext message to the input plaintext message, the encryption/decryption process using at least one dynamic object key which is modified using a non-linear function for each block of input data, each object key being associated with a different key schedule to encrypt/decrypt the input plaintext/output ciphertext message.

24. A cryptographic communications system as defined in claim 23, wherein the encryption/decryption process further includes the use of a random session object key having an initial state randomly generated by the computer system, and wherein the object key modifications are based on seeding from the random session object key.

32. A computer implemented method for encrypting data comprising the steps of:

creating at least one object key in a block cipher, the at least one object key comprising data and methods that operate on said data;

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