Trend Micro v. Open Text: Infringement Action Dismissed With Prejudice in 142 Days
Trend Micro filed suit against Open Text in the Eastern District of Texas asserting three patents against Open Text’s Capture and Intelligent Capture product line. The case closed with prejudice in just 142 days — before any substantive merits ruling — a timeline consistent with a negotiated resolution or strategic withdrawal.
Three-Patent Capture Technology Dispute Ends Before Claim Construction
Trend Micro, Inc. filed suit on October 2, 2023 in the Eastern District of Texas (Judge Rodney Gilstrap) against Open Text, Inc. and Open Text Corp., asserting infringement of three U.S. patents — US8161548B1, US8045808B2, and US8505094B1 — against a portfolio of Open Text’s document capture products including Open Text Capture Center, Open Text Intelligent Capture (formerly Captiva), and related Capture Document and Full Page Reader products.
The case closed on February 21, 2024, dismissed with prejudice pursuant to Rule 41(a)(1)(A)(i) of the Federal Rules of Civil Procedure. A dismissal with prejudice is a final adjudication on the merits for preclusion purposes: Trend Micro is permanently barred from re-asserting these three patents against Open Text on the same accused products. Each party was ordered to bear its own costs and attorneys’ fees, meaning no fee-shifting was imposed under 35 U.S.C. § 285.
The 142-day duration — filed in early October, closed in late February — is notably short even for cases that settle early, and is consistent with a pre-discovery resolution. The mutual cost-bearing provision and the absence of any docket entries reflecting substantive motion practice suggest the parties reached a private agreement, the terms of which are not reflected in the public record. Whether any licensing arrangement, cross-license, or covenant not to sue underlies the dismissal cannot be confirmed from publicly available filings.
Filing to Dismissed with Prejudice in 142 days
142 days — well under the E.D. Texas median for patent cases reaching claim construction
Dismissed with prejudice: what this ruling means for both parties
Rule 41(a)(1)(A)(i) dismissal with prejudice — a permanent bar
Under Rule 41(a)(1)(A)(i), a plaintiff may voluntarily dismiss before the opposing party serves an answer or motion for summary judgment. When filed with prejudice, the dismissal operates as a final judgment on the merits. Trend Micro cannot re-file this action asserting these three patents against Open Text on the same accused products in any federal court.
Permanent — no re-filing permittedTrend Micro surrenders enforcement rights against Open Text’s Capture products
By voluntarily dismissing with prejudice, Trend Micro has permanently relinquished the right to pursue US8161548B1, US8045808B2, and US8505094B1 against Open Text’s accused Capture and Intelligent Capture products in this dispute. Whether Trend Micro received consideration — such as a license fee, cross-license, or other commercial agreement — is not disclosed in the public record.
Rights against Open Text extinguishedOpen Text secures permanent closure on these three patent claims
Open Text and Open Text Corp. benefit from the with-prejudice designation: they face no future infringement exposure from Trend Micro on these specific patents for these specific products. The mutual cost-bearing order means Open Text absorbed its own defense costs — typically a sign the resolution did not include a punitive outcome for either side. Claim construction and invalidity arguments were never adjudicated.
No future exposure on these patentsPatent validity untested — third-party challengers retain full IPR options
Because the case was dismissed before any merits ruling, the validity, scope, and enforceability of all three patents remain entirely untested in court. Trend Micro retains the right to assert these patents against other document capture and intelligent processing vendors. Competitors of Open Text operating in the enterprise capture market should treat these patents as fully active enforcement risks.
Patents remain enforceable vs. othersFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Trend Micro, Inc. | Company | Cybersecurity and IP licensor — holder of US8161548B1, US8045808B2, and US8505094B1Search in Eureka ↗ |
| Defendant | Open Text, Inc. | Company | Enterprise information management software company — maker of Open Text Intelligent Capture product lineSearch in Eureka ↗ |
| Co-Defendant | Open Text, Corp. | Company | Search in Eureka ↗ |
| Plaintiff counsel | Deron R. Dacus | Attorney | Counsel for Trend Micro, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Henry Y. Huang | Attorney | Counsel for Trend Micro, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Jonathan J. Lamberson | Attorney | Counsel for Trend Micro, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Michael Costello-Caulkins | Attorney | Counsel for Trend Micro, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Shashank Chitti | Attorney | Counsel for Trend Micro, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Surendra Kumar Ravula | Attorney | Counsel for Trend Micro, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Yar R. Chaikovsky | Attorney | Counsel for Trend Micro, Inc.Search in Eureka ↗ |
| Plaintiff law firm | The Dacus Firm PC | Law Firm | Representing Trend Micro, Inc.Search in Eureka ↗ |
| Plaintiff law firm | White & Case LLP | Law Firm | Representing Trend Micro, Inc.Search in Eureka ↗ |
| Plaintiff law firm | White & Case, LLP – Palo Alto | Law Firm | Representing Trend Micro, Inc.Search in Eureka ↗ |
| Defendant counsel | Christopher Campbell | Attorney | Counsel for Open Text, Inc.Search in Eureka ↗ |
| Defendant counsel | Gregory Phillip Love | Attorney | Counsel for Open Text, Inc.Search in Eureka ↗ |
| Defendant counsel | Mark Douglas Siegmund | Attorney | Counsel for Open Text, Inc.Search in Eureka ↗ |
| Defendant law firm | Cherry Johnson Siegmund James PLLC | Law Firm | Representing Open Text, Inc.Search in Eureka ↗ |
| Defendant law firm | King & Spalding LLP (DC) | Law Firm | Representing Open Text, Inc.Search in Eureka ↗ |
| Defendant law firm | Steckler Wayne Cherry & Love, PLLC | Law Firm | Representing Open Text, Inc.Search in Eureka ↗ |
| Presiding judge | Judge Rodney Gilstrap | Judge | Texas Eastern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal order accepts Trend Micro’s Rule 41(a)(1)(A)(i) notice without requiring defendant consent, as no answer had yet been served. The with-prejudice designation is critical: it converts a unilateral procedural act into a final merits bar. The cost-bearing provision — each party responsible for its own fees — is standard in negotiated departures and forecloses any subsequent § 285 exceptional-case motion by either side. The three asserted patents are unaffected as against the broader market.
US8161548B1, US8045808B2 & US8505094B1 — Document Capture & Processing Patents
The three patents asserted in this case — US8161548B1 (App. No. 11/204567), US8045808B2 (App. No. 11/893921), and US8505094B1 (App. No. 12/686458) — cover technologies in document capture, image processing, and intelligent data extraction. These application numbers place the earliest filings in the mid-to-late 2000s, a formative period for enterprise content management and automated document processing technologies. Trend Micro, better known for cybersecurity, holds a broader patent portfolio that extends into information management and data processing.
The accused Open Text products — including Open Text Capture Center, Intelligent Capture (formerly Captiva), and associated document reader tools — are central to Open Text’s enterprise content management platform and serve large financial services, insurance, and government customers. Assertion of these patents against this product line signals that Trend Micro views its IP as covering core OCR, classification, and automated capture workflows used across the enterprise software market. Any vendor competing in this space — particularly those with intelligent document processing, RPA-integrated capture, or cloud-native content ingestion — should assess exposure.
Should you run an FTO against US8161548B1, US8045808B2, and US8505094B1?
Product teams building or selling enterprise document capture, intelligent document processing, or automated data extraction tools — including OCR pipelines, full-page document readers, and capture classification systems — should conduct freedom-to-operate analysis against all three Trend Micro patents. These patents were never construed or invalidated in this case, meaning their enforceable scope is entirely unknown from public court records. The with-prejudice dismissal applies only to Open Text; Trend Micro faces no legal barrier to asserting the same patents against other defendants.
PatSnap Eureka’s FTO Search Agent can map the claim language of US8161548B1, US8045808B2, and US8505094B1 against your product’s technical architecture, flag claim elements most likely to read on automated capture and document processing workflows, and surface prior art that could support a design-around or IPR petition. Given the absence of any court-issued claim construction, understanding the literal and doctrine-of-equivalents scope of these claims is essential before launching any competing capture or intelligent processing product into the market.
Run a freedom-to-operate analysis on US8161548B1 to assess your product’s exposure
Run FTO in Eureka →Similar Document Capture & Enterprise Software Patent Cases in E.D. Texas
Explore patent infringement actions involving document capture, OCR, and intelligent processing technologies filed in the Eastern District of Texas before Judge Gilstrap.
What this case signals for the enterprise document capture IP landscape
A rapid, prejudicial dismissal in E.D. Texas without fee-shifting typically suggests a private commercial resolution rather than a pure concession.
Speed and finality suggest a negotiated exit, not a surrender
The 142-day closure and mutual cost-bearing provision are consistent with a settlement or licensing agreement reached before substantial litigation costs were incurred. Pure capitulation by a plaintiff typically results in a longer docket or a fee motion by the defendant. The absence of either suggests a deal was struck.
Three patents remain active enforcement tools against the broader market
US8161548B1, US8045808B2, and US8505094B1 were never invalidated or construed. Any enterprise software company whose products perform document capture, image processing, or intelligent data extraction workflows should assess exposure under these patents — Trend Micro’s enforcement posture remains unchanged against third parties.
Trend v Open — key questions answered
A dismissal with prejudice under Rule 41(a)(1)(A)(i) operates as a final judgment on the merits. Trend Micro is permanently barred from re-asserting US8161548B1, US8045808B2, and US8505094B1 against Open Text’s Capture and Intelligent Capture products in any future federal action. The three patents remain fully enforceable against all other parties.
The accused products included Open Text Business Center Capture, Open Text Capture Center, Open Text Capture Document Reader, Open Text Capture Full Page Reader, and Open Text Intelligent Capture (previously marketed as Open Text Captiva). These products form the core of Open Text’s enterprise document capture and content management platform.
No. The case was dismissed before any claim construction hearing, invalidity briefing, or substantive merits ruling. US8161548B1, US8045808B2, and US8505094B1 remain unconstrued and presumptively valid. This means Trend Micro retains full enforcement rights against third parties operating in the document capture and intelligent processing market.
No fee-shifting was ordered. The dismissal order states each party is to bear its own costs, expenses, and attorneys’ fees. This mutual cost-bearing provision is consistent with a negotiated resolution and forecloses any subsequent motion for attorneys’ fees under 35 U.S.C. § 285 by either party.
E.D. Texas, and Judge Gilstrap’s docket specifically, is a preferred venue for patent plaintiffs due to its plaintiff-friendly procedural history, aggressive scheduling, and experience with complex patent cases. Filing before Gilstrap typically accelerates claim construction timelines, creating cost and schedule pressure on defendants that can incentivise early settlement — consistent with the 142-day closure observed here.
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