Claim term construed by construing different term in specification deleted from claim
May 12, 2008
In a decision last week, the Federal Circuit affirmed-in-part and vacated-in-part a district court's summary judgment of noninfringement based on a revised claim construction of two claim terms. The court, in somewhat of a departure from its typical practice, also construed one additional term that appeared likely to be relevant on remand, but which did not form the basis for the summary judgment ruling.While the Federal Circuit modified the construction of both terms that formed the basis of the summary judgment ruling, the court nevertheless found that summary judgment was still proper for one of the two groups of defendants under the broader revised construction. The court remanded with respect to the other group of defendants, as the record was unclear whether summary judgment was appropriate.Judge Linn dissented, and would have construed the term that formed the basis for the partial affirmance more broadly. He asserted the majority unduly narrowed the claim based on passages in the specification relating to a term not even used in the claim itself, and would therefore have construed the claim more broadly.More detail of, Inc. v. Federated Dep't Stores, Inc. after the is the owner of a patent claiming a system that automatically processes financial account applications, such as loan or credit card applications. The system permits an applicant to apply for a financial account remotely without assistance from a person and to receive an account approval result within minutes, using a computer programmed to approve or disapprove the request and to complete all aspects of the request on behalf of the financial institution.The parent application describes several embodiments for interfacing the applicant with the processing system, including a personal computer and a kiosk housing computer equipment. The patent-in-suit issued from a CIP of that application, and when the CIP was filed, the personal computer embodiment was deleted from the specification, and left only the kiosk embodiment. The claims of the application, as filed, required use of a kiosk in the system. In an amendment, the applicant deleted the kiosk limitations, stating in the remarks that a kiosk was not required by the invention.The district court held a consolidated Markman hearing in three related cases all involving the same patent. The relevant claim is claim 1, reproduced below (emphases added):
1. An automatic account processing system for establishing a financial account without human intervention for applicants located at a remote interface, said system comprising:a. a remote interface adapted to:
i. allow an applicant to remotely request an account; and
ii. receive data from an applicant;
b. a data processing system with associated memory having establishment criteria bearing on the ability and willingness of the applicant to comply with account requirements for establishing and holding an account at a financial institution based on prescribed data obtained from the applicant and information about the applicant obtained from at least one database containing information about the applicant relevant to the ability and willingness of the applicant to comply with the account requirements;
c. a communication network electronically coupling said data processing system to said applicant interface;
d. without human assistance, said data processing system adapted to:
i. receive the data from the applicant received at the remote interface;
ii. access the at least one database for information relevant to the applicant's identity and for the information relevant to the applicant's ability and willingness to comply with the account requirements;
iii. verify the applicant's identity by comparing certain of the information received from the applicant with certain of the information received from said at least one database relevant to the applicant's identity;
iv. compare certain of the information received from the applicant and certain of the information received from said at least one database relevant to the applicant's ability and willingness to comply with the account requirements to determine in real time and without human assistance if the applicant's requested account is approved; and
v. send a result to the remote applicant interface informing the applicant whether or not establishment of the requested account was approved.
On summary judgment, the district court construed three highlighted terms. The court construed the term "remote interface" as being "dedicated computer equipment supplied by the entity providing the financial account or service." Based on this interpretation, Decisioning conceded that there was no literal infringement, but asserted infringement under the doctrine of equivalents, contending that a consumer-owned personal computer was equivalent to dedicated computer equipment supplied by the financial institution. The district court disagreed, concluding that the consumer owned piece of equipment cannot be equivalent to dedicated computer equipment supplied by the financial institution. The district court further concluded that the personal computer embodiment described in the parent application was deleted in the CIP application, such that prosecution history estoppel prevented Decisioning from relying on the doctrine of equivalents. Based on this construction (and the construction of the other two claim terms), the court granted summary judgment of noninfringement. On appeal, the Federal Circuit noted that the claim term "remote interface" does not appear anywhere in the specification, and that "interface" only appears once wherein it is described that the "user-interface" of the invention is computer equipment that is housed in a kiosk. The court then went on to explore the meaning of "kiosk" even though that term does not appear in claim 1, and was expressly deleted from claim 1 in an amendment. The court then concluded that the term "kiosk" was used in two ways in the specification, and thus gave it two interpretations. The first interpretation is that "kiosk" is merely a housing for the computer equipment that constitutes the remote interface. The second interpretation is that "kiosk" represents the entire "remote interface" itself, including the computer equipment. The court then concluded that it was clear that the invention was not limited to a remote interface that is housed in a kiosk structure (the first definition), since Decisioning made clear during prosecution that the claims do not require such a kiosk housing. However, "the invention" was described in the context of a kiosk (the second definition), which was relevant to the construction of "remote interface."In examining this further, the court looked to the common meaning of the term "kiosk" as defined by the Oxford English Dictionary to include a "structure used for the sale of newspapers and a telephone kiosk." Based upon this common meaning, the court concluded that "kiosk" suggests to one of ordinary skill in the art that the claimed remote interface is installed in a publicly-accessible location, which does not encompass a consumer's privately owned personal computer. The court also noted various features of the kiosk described in the specification that would not be associated with a consumer owned personal computer, such as a touch screen, voice recognition technology, and an electric pen and signature pad. While the court expressly stated that these features themselves do not limit the scope of the term "remote interface" (and in fact were present in several dependent claims), the court concluded that these features would indicate to a skilled artisan that the remote interface described in the specification does not encompass the consumer owned personal computer. The features play an important role in achieving the inventor's stated purpose of a financial processing system without human involvement. Thus, based upon the court's interpretation of "kiosk" (which is not found in the claims), the court concluded the term "remote interface" excluded consumer owned personal computers.In a footnote, the court explained that their construction of the term "remote interface" is not based upon the prosecution history (even though the court previously noted the amendment which deleted "kiosk" from the claims). The footnote further explains that although the patent did not carry forward certain embodiments from the parent application (use of personal computers), there is no language present in the specification or prosecution history to indicate that the patentee intended to abandon claims to the embodiments that were excluded from the CIP application.The court therefore summarized its interpretation of "remote interface" as referring to computer equipment installed in publicly accessible locations, although not necessarily enclosed in a kiosk housing, but not encompassing computer equipment that is privately owned by the consumer establishing the financial account.The court then construed an "identity verification" clause of the '007 claim, as well as a clause requiring "comparison" of certain data, as required by the claims. Again, the Federal Circuit disagreed with the district court's construction of these terms. The court then reviewed summary judgment of non-infringement based on its revised construction. The court concluded the first defendants' system was accessed solely via consumer-owned personal computers, and thus did not literally infringe the patent. The system also did not infringe under the doctrine of equivalents, as this would result in vitiation of the "remote interface" limitation, as equivalency cannot embrace a structure that is specifically excluded from the scope of the claims. Accordingly, the court affirmed the grant of summary judgment of noninfringement to these defendants.The system with respect to the second and third defendants was accessed via personal computers supplied by and operated on the retail store floor, and therefore the court vacated and remanded summary judgment with respect to such systems.Judge Linn dissented with respect to the interpretation of "remote interface" as excluding consumer owned personal computers and requiring public accessibility. He noted that the claims do not require publicly accessible equipment, and that there is no disclaimer or disavowal of personal computers in the specification or prosecution history. While the majority conceded that no such disclaimer existed, the majority determined that the specification was sufficient to surrender the claim scope with respect to personal computers.Judge Linn also noted the acknowledgement by the majority that "the claims of a patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." He observed the majority did not point to any words or expressions of manifest exclusion or restriction evidencing a clear intention to limit the claim scope, but rather equated the claimed "remote interface" with the preferred kiosk embodiment described in the specification. He further noted the majority's conclusion that the remote interface should not be limited to a kiosk which is merely a housing for the remote interface, since the remote interface may have a different type of housing or no housing at all. But the majority then incongruously equated "remote interface" with kiosk to justify the engrafting of the "publicly accessible" characteristic of kiosks into the remote interface claim term. Judge Linn specifically pointed out two arguably contradictory statements in the majority opinion:
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 is merely a preferred embodiment.

. . . The remote interface is a component of the invention itself, and the inventors use of kiosk in that manner does not merely describe a preferred embodiment of the invention. Rather, it describes the invention itself.
Accordingly, Judge Linn would have construed "remote interface" more broadly, and would not have excluded personal computers from the scope of the term.To read the full decision in, Inc. v. Federated Dep't Stores, Inc., click here.
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