Every Penny Counts (EPC) v. American Express, Visa, Mastercard,... you get the idea (CAFC 2008-1434) precedential

At the center of this dispute is the meaning of the phrase "excess cash payment." EPC's patents describe a method for "apportioning . . . a part of [an] excess cash payment among a number of predetermined accounts" (emphasis added).¹ Again, we "focus[] at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down." Phillips, 415 F.3d at 1321. Of particular relevance is the patent specification, which we have described as "the primary basis for construing the claims." Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985); see also Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004) ("In most cases, the best source for discerning the proper context of claim terms is the patent specification . . . .").

¹ The patents-in-suit are related. For simplicity we refer to the disclosure of U.S. Patent No. 5,621,640. The other patents-in-suit are U.S. Patent Nos. 6,088,682; 6,876,976; and 7,171,370.

In the present case, the patent specification strongly supports the construction of "excess cash" that the district court ultimately adopted. The specification describes the patent as a method "for conveniently and frequently donating to qualified charities and savings or other accounts."

[T]he specification... tells us what "excess cash" means in the context of the patent claim: "excess cash" is what is left over after the merchant subtracts the price of the items the consumer wishes to buy from the cash the consumer tenders to complete the sale. Where the consumer does not offer a sum in excess of the total displayed on the cash register, then there is no excess cash. All this is captured quite well by the construction of "excess cash" that the district court ultimately adopted, according to which "excess cash" refers to "an amount selected by the payor beyond the total amount owed at the point of sale.

EPC lawyer Harvey S. Kauget of Phelps Dunbar, Tampa, Florida, did not impress the court.

EPC has surprisingly little to say about what it alleges is substantively wrong with the district court's construction, or why its proposed construction would be better on the merits. Instead, it attempts to assign error to the district court's construction on a number of procedural grounds.

Which the court considered "puzzling," and found faulting "the court for attempting to clarify the phrase's meaning is at best ironic and at worst disingenuous."

Again, the court's obligation is to ensure that questions of the scope of the patent claims are not left to the jury. O2 Micro, 521 F.3d at 1361-62. In order to fulfill this obligation, the court must see to it that disputes concerning the scope of the patent claims are fully resolved. Id... [T]here was nothing improper about the fact that the court interpreted EPC's (quite slippery) proposed construction. As Michele de Montaigne has said, there are times when "[w]e need to interpret interpretations more than to interpret things." Jacques Derrida, Structure, Sign and Play in the Discourse of the Human Sciences, in Writing and Difference 278 (Alan Bass, trans. 1980) (quoting Montaigne).

The court may consider the accused products as a viewpoint into the meaning of the claims.

Equally without merit is EPC's argument that the district court erred by "tailoring its claim construction to fit the dimensions of the accused product." A court may not use the accused products for the sole purpose of arriving at a construction of the claim terms that would make it impossible for the plaintiff to prove infringement. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1331 (Fed. Cir. 2006). But that is not what the court did here. To the contrary, the court quite properly invited the parties' views of what they thought "excess cash" meant in the context of a series of hypothetical transactions, some of which involved the accused products... In other words, the court considered the accused products only to elicit the parties' views about what the claim term means in the context of a concrete transaction involving these products. EPC's suggestion that this was improper is way wide of the mark. See id. at 1326-27 ("While a trial court should certainly not prejudge the ultimate infringement analysis by construing claims with an aim to include or exclude an accused product or process, knowledge of that product or process provides meaningful context for the first step of the infringement analysis, claim construction."); Aero Prods. Int'l, Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1012 n.6 (Fed. Cir. 2006) ("Although the court revealed an awareness of the accused device, the court's awareness of the accused device is permissible.").

Affirmed.