Decisioning.com v. a shopping mall's worth of department stores, Ameritrade, and HSBC Finance (CAFC 2007-1277)

Decisioning had whittled the specification to delete embodiments in the parent that involved human assistance, leaving only a kiosk embodiment.

During prosecution, Decisioning amended the claims to delete the "kiosk" limitation but retained the limitation reciting a "computer controller" that was "carried by" a kiosk. Along with this amendment, Decisioning explained that "[c]laim 1 has been amended to delete the kiosk element, which is not required for performing the method of the present invention." Subsequently, Decisioning amended the claims to delete the "computer controller" language and replaced the term with the "remote interface" term that appears in the claims as issued.

Decisioning filed against the department stores, including Federated, as well as electronic stock broker Ameritrade. HSBC filed a DJ motion. The suits were consolidated.

The district court held a consolidated Markman hearing in all three cases and construed the disputed claim terms. See, e.g., Decisioning.com, Inc. v. Federated Dep't Stores, Inc., No. 3:03-CV-1924 (D.S.C. Dec. 6, 2006) ("Claim Construction Order"). As relevant to this appeal, the district court construed the term "remote interface" as "dedicated computer equipment, meaning equipment supplied by the entity providing the financial account or service . . . ." Id. at 3. It construed "verify the applicant's identity" as follows: "to confirm or substantiate the applicant's identity..."

Claim construction did not go to Decisioning's favor.

Based on its construction of "remote interface" and "verify the applicant's identity," the district court granted Appellees' motions for summary judgment of non-infringement. With respect to the "remote interface" term, Decisioning conceded that no Appellee literally infringed under the district court's construction of that term. Instead, it asserted infringement under the doctrine of equivalents, contending that a consumer-owned personal computer was equivalent to dedicated computer equipment supplied by the entity providing the financial account or service. The district court disagreed.

The district court considered a personal computer barred by prosecution estoppel.

Identity verification required more than "name, address, and social security number," the district court ruled in summary judgment.

Decisioning appealed. In the crucial claim term construction, a 2-1 decision. Judges Mayer and Schall in the majority.

"remote interface"

The evolution of the '205 application, through various continuation applications, left the '007 patent specification with a single disclosed embodiment: a system for providing the automatic processing of loans, without human intervention, using computer equipment housed in a kiosk. The claims of the '007 patent, however, more broadly recite a "remote interface" and are not by their terms limited to a kiosk-housed interface. Decisioning thus contends that the claim term "remote interface" should be construed to encompass systems accessed by customers not only through kiosks located in public places but also, for example, through their own personal computers over the Internet.

The district court construed the term "remote interface" to require "dedicated computer equipment, meaning equipment supplied by the entity providing the financial account or service." Claim Construction Order at 3.

For the following reasons, we agree with the district court's general conclusion that the term "remote interface" does not encompass computer equipment that is privately owned by the consumer establishing the financial account. However, we disagree with the "dedicated" and "supplied by" limitations that the district court specifically adopted in order to exclude consumer-owned personal computers.

The CAFC rationalized a splitting-hair decision with tarot card case law.

At the outset, we acknowledge that "there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998); accord Phillips v. AWH Corp., 415 F.3d 1303, 1323-24 (Fed. Cir. 2005) (en banc) ("In the end, there will still remain some cases in which it will be hard to determine whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature."). This court has recognized that "attempting to resolve that problem in the context of the particular patent is likely to capture the scope of the actual invention more accurately than either strictly limiting the scope of the claims to the embodiments disclosed in the specification or divorcing the claim language from the specification," Phillips, 415 F.3d at 1323-24, and, thus, that there can be "no magic formula or catechism for conducting claim construction," id. at 1324. We must read the specification in light of its purposes in order to determine "whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive." Id. at 1323. "The manner in which the patentee uses a term within the specification and claims usually will make the distinction apparent." Id. Ultimately, our "focus remains on understanding how a person of ordinary skill in the art would understand the claim terms." Id.

Voila -

The plain and ordinary meaning of the term "remote interface" is admittedly broad. Divorced from the specification, it could encompass almost any user interface that is located remotely from the data processing system and that facilitates the exchange of information between the applicant and the transaction processor, including a consumer-owned personal computer. Read in light of the specification, however, we conclude that one of ordinary skill in the art would not understand the term "remote interface" in the '007 patent to encompass a consumer-owned personal computer.

The term "remote interface" does not appear in the written description of the '007 patent. Indeed, "interface" appears only once, where the preferred "user-interface" of the invention is described as computer equipment that is housed in a kiosk. '007 patent col.3 ll.44-51.

Down the rabbit hole they went.

On one hand, it is clear that the invention is not limited to a remote interface that is housed in a kiosk structure. The patent describes the kiosk housing as merely a preferred embodiment.

Next, we consider the inventor's alternate use of "kiosk" in reference to the entire remote interface itself--not merely a preferred housing that encloses the remote interface. The remote interface is a component of the invention itself, and the inventor's use of "kiosk" in that manner does not merely describe a preferred embodiment of the invention. Rather, it describes the invention itself.

The common meaning of the term "kiosk" strongly suggests to one of ordinary skill that the claimed remote interface is installed in a publicly-accessible location... The specification is consistent with this ordinary meaning of "kiosk..." Further, the specification describes various features of the kiosk that would not be associated with consumer-owned personal computers.

We acknowledge that embodiments incorporating these features are claimed specifically in several of the patent's dependent claims, and that the features themselves do not limit the scope of the term "remote interface." However, we think that these features would further indicate to a skilled artisan that the "remote interface" described in the specification does not encompass a consumer-owned personal computer.

At the bottom of the rabbit hole, case law mud, the "particular facts" depending on how the cards are shuffled. You can smell the fudge wafting off: "our decision on this point has support in the case law."

The construction of the term "remote interface" must be resolved in the context of the particular facts before us. See Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377, 1383 (Fed. Cir. 1999) ("Although precedent offers assorted quotations in support of differing conclusions concerning the scope of the specification, these cases must be viewed in the factual context in which they arose. Whether an invention is fairly claimed more broadly than the 'preferred embodiment' in the specification is a question specific to the content of the specification, the context in which the embodiment is described, the prosecution history, and if appropriate the prior art . . . ."). Based upon the written description in this case, we conclude that the claim term "remote interface" excludes consumer-owned personal computers. Our decision on this point has support in the case law. See Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1317-19 (Fed. Cir. 2006) (limiting the broader claim term "fuel injection system component" to "fuel filter," where a fuel filter was the only component disclosed in the written description and was described as "the present invention"); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299-1302 (Fed. Cir. 1999) (construing the broader claim term "including" as requiring permanent attachment of the restriction ring to the cover, where all embodiments of the invention showed a permanently attached restriction ring and a unitary structure was described as important to the invention).

The district court was chided in going too narrow.

In sum, the district court erred in requiring the computer equipment of the remote interface to be (1) "dedicated" solely to financial transactions and (2) "supplied by" the financial institution, as neither of those limitations finds support in the specification.

Judge Linn dissented in part, rightly figuring that "remote interface" could encompass personal computers.

Because the claim language places no such restriction on the scope of the claims, the question is whether, despite the broad language used, the claims should nevertheless be limited based on a disclaimer or disavowal of scope in the specification or prosecution history. The majority concedes that no such disclaimer is present in the prosecution history, Maj. Op. at 20 n.4, but determines that the specification is sufficient to surrender claim scope.

The majority recognizes that the kiosk is merely a "housing" for the "remote interface," id. at 13-14, that the "remote interface" should not be limited to the preferred "kiosk" embodiment, id. at 14, and that the "remote interface" may have a different type of housing or no housing at all, id. at 15. Nevertheless, the majority incongruously equates "remote interface" with "kiosk" to justify engrafting the "publicly-accessible" characteristic of kiosks onto the "remote interface" term. I cannot subscribe to the majority's seemingly contradictory analysis that the "remote interface" is not limited to a "kiosk" except when it is.

In my view, the majority's construction, which limits the broadly-claimed "remote interface" to the characteristics of the disclosed "kiosk" embodiment, violates fundamental tenets of claim construction precedent. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) ("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 to exclude.'" (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004))); Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) ("The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims."); Cont'l Paper Bag Co. v. E. Paper Bag Co., 210 U.S. 405, 419 (1908) ("The invention, of course, must be described and the mode of putting it to practical use, but the claims measure the invention." (emphasis added)); cf. McCarty v. Lehigh Valley R.R. Co., 160 U.S. 110, 116 (1895) ("[I]f we once begin to include elements not mentioned in the claim, in order to limit such claim, and avoid a defense of anticipation, we should never know where to stop.").

"verify the applicant's identity"

As regards the "verify the applicant's identity" limitation, at summary judgment the district court interpreted its original construction to not permit verification using only name, address, and social security number. See Federated Summary Judgment Order at 13 ("[T]he construction adopted by the court recognizes that identity 'verification' requires a check of information which is qualitatively different from the specifically listed items of 'name, address, and social security number.' That qualitative difference must be such as to make the information 'less likely to have been improperly obtained' than the three specifically listed items." (emphasis in original)); TD Ameritrade Summary Judgment Order at 10.

As the defendants were lame in identify verification, the district court took them off the hook for infringement. The CAFC did not agree.

We agree with Decisioning and conclude that this claim term is entitled to its plain and ordinary meaning: "to confirm or substantiate the applicant's identity." The claim language itself does not require that any particular type or quantity of information be used to verify the applicant's identity.

A scrap of the spec had been used for the demanding construction, the appeals court was unpersuaded by the scant evidence.

Although the specification contains sparse disclosure detailing how verification of the applicant's identity is to occur, nowhere can a disavowal of the broad claim scope fairly be found... This description of a preferred embodiment, in the absence of a clear intention to limit claim scope, is an insufficient basis on which to narrow the claims. See Liebel-Flarsheim, 358 F.3d at 906.

The CAFC likewise construed "compare . . . and . . ." with its plain meaning.

Federated skated because its usage was entirely through personal computers, but not HSBC or Ameritrade, where the record was unclear that public terminals may be used.

Affirmed-in-part, vacated-in-part, remanded.