04/27/14

e2Interactive v. Blackhawk Network: Construing "terminal identifier" in view of Prosecution History

Category: Claim Construction 
 
 
 
 
By: Christian Hannon, Contributor 
 
Titlee2Interactive, Inc. v. Blackhawk Network, Inc., No. 2013-1151 (Fed. Cir. Mar. 12, 2014) (non-precedential).
Issue The central issue in this appeal is whether the asserted claims [of U.S. Pat. No. 7,578,439 (the '439 patent)] require using the recited “terminal identifier” for determining if the terminal is authorized to make the requested transaction. 
e2interactive at *3 (text added).
HoldingWe hold that through clear and unmistakable disclaimer, InComm[,] [which includes e2Interactive,] limited the scope of the asserted claims to require use of the terminal identifier for determining if a terminal is authorized to make the requested transaction.
Id. at *7.


 
Procedural Historye2Interactive, Inc. and Interactive Communications International, Inc. (collectively, InComm) sued Blackhawk, alleging that Blackhawk’s transaction processing platform infringes the asserted claims [of which claim 1 is representative]. A jury returned a verdict of infringement and awarded InComm nearly $3.5 million as a reasonable royalty. After the district court entered a final judgment of infringement in favor of InComm, Blackhawk filed a motion for relief from the judgment, arguing that the court’s construction of various claim terms, including the “determining” step, was erroneous. The court denied the motion. Blackhawk appeals.
e2Interactive at *3 (text added) (internal citations omitted).
 
 
 
 
Legal Reasoning (Dyk, Moore, and Wallach)
Background
Claim at issueClaim 1 is representative of the asserted claims (emphases added): A computer-implemented method for processing a tored-value card transaction request in a card data management system having a central processor in communication with...point-of-sale terminals..., each of the one or more terminals having a unique terminal identifier ..., the method comprising: receiving the stored-value card transaction request from a requesting terminal, ... the transaction request comprising a requesting terminal identifier,...; determiniining if the requesting terminal is authorized to request the requested transaction type for the stored value card;....
e2Interactive at *3 (ellipses in original).
District Court ConstructionThe district court concluded that the asserted claims lack [requiring use of a "terminal identifier" for determining if the terminal is authorized to make the requested transaction]. [The district court] considered InComm's statements made during reexamination of the '439 patent to overcome the examiner's determination that the asserted claims would have been obvious based in part on U.S. Patent No. 5,812,668 (Weber). The court concluded, however, that InComm's statements did not amount to a clear and unmistakable disclaimer.
Id. at *3-4 (text added).
Claim Analysis
Doctrine of Prosecution DisclaimerThe doctrine of prosecution disclaimer preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution. For prosecution disclaimer to apply, our precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.[W]here the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer [. . .] narrows the ordinary meaning of the claim congruent with the scope of the surrender.
e2Interactive at *5. (internal quotations and citations omitted).
Statements During Reexam Sufficient to Invoke Doctrine of Prosecution DisclaimerDuring reexamination of the ’439 patent, InComm sought to overcome the examiner’s rejection based on Weber with an expert declaration. InComm’s expert expressly distinguished the claimed determining step by arguing that Weber failed to disclose using the terminal identifier to determine if a terminal was authorized to make a requested transaction.[...] [InComm's response to the examiner's rejection] cited its expert's declaration and repeated his statements to argue that, unlike Weber, the asserted claims required using the terminal identifier for determiing if a treminal is authorized to request a transaction" InComm's argument that Weber did not render the claims obvious because it does not disclose use of the terminal identifier in the determination of terminal authorization was a disclaimer of claim scope.
Id. at *5-7.
Characterizing Remarks as Mere Explanation does Not Avoid the Doctrine of Prosecution DisclaimerInComm’s statements clearly and unmistakably indicate that the asserted claims require using the terminal identifier to determine if a terminal is authorized to make the requested transaction. InComm repeatedly distinguished Weber on this basis. InComm’s characterization of its statements as mere explanations of Weber’s disclosure that did not address the scope of the asserted claims is without merit. InComm unambiguously argued that Weber fails to disclose the recited determining step, and the examiner expressly relied on those arguments to confirm the patentability of the asserted claims over Weber.
Id. at *7.
Conclusion
There is no dispute that Blackhawk’s accused product fails to use the terminal identifier when making such a determination. Therefore, we reverse the judgment of infringement.
e2interactive at *7. 

 
 Image Attribution Statement: Stewart Black, “Bristol Harbourside,” available under a Creative Commons Attribution 2.0 Generic license,http://www.imcreator.com/images/bristol-harbourside (last visited April 26, 2014) (image edited).
 
 
 
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