Decisioning.com, Inc. v. Federated Department Stores, Inc.

United States Court of Appeals for the Federal Circuit

2007-1277

DECISIONING.COM, INC.,

Plaintiff-Appellant,

v.

FEDERATED DEPARTMENT STORES, INC.,
MACYS.COM, INC., BLOOMINGDALE’S, INC.,
THE BON, INC. (doing business as The Bon Marche), BURDINES, INC.,
RICH’S DEPARTMENT STORES, INC.
(doing business as Rich’s-Macy’s, Lazarus and Goldsmith’s),
FDS BANK, DEPARTMENT STORES NATIONAL BANK, FACS GROUP, INC.,
and FEDERATED SYSTEMS GROUP, INC.,

Defendants-Appellees.

-------------------------------------------

2007-1278

DECISIONING.COM, INC.,

Plaintiff-Appellant,

v.

TD AMERITRADE HOLDING CORPORATION, INC.,
TD AMERITRADE, INC., and TD WATERHOUSE GROUP, INC.,

Defendants-Appellees.

-------------------------------------------
 2007-1308

HSBC FINANCE CORPORATION (as successor to Household International, Inc.),

Plaintiff-Appellee,

and

HSBC CARD SERVICES, INC., HSBC RETAIL SERVICES, INC.,
HSBC BANK NEVADA, N.A., HSBC BANK USA, N.A.,
and HSBC TECHNOLOGY AND SERVICES (USA), INC.,

Third Party Defendants-Appellees,

v.

DECISIONING.COM, INC.,

Defendant/Third Party Plaintiff-
Appellant.

Steven N. Terranova, Withrow & Terranova, PLLC, of Cary, North Carolina,
argued for plaintiff-appellant, defendant/third party plaintiff-appellant, Decisioning.com,
Inc.

Ira E. Silfin, Amster Rothstein & Ebenstein LLP, of New York, New York argued
for defendants-appellees, Federated Department Stores, Inc., et al. With him on the
brief was Marc J. Jason.

Kenneth C. Bass, III, Sterne, Kessler, Goldstein & Fox P.L.L.C., of Washington,
DC, argued for defendants-appellees, TD Ameritrade Holding Corporation, Inc., et al.
With him on the brief were Robert E. Sokohl, Mark F. Evens, and Lori A. Gordon.

Wayne L. Stoner, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston,
Massachusetts, argued for plaintiff-appellee and third party defendants-appellees. With
him on the brief were Timothy R. Shannon and Lawrence P. Cogswell, III, of Boston,
Massachusetts, Irah H. Donner, of New York, New York, and Todd C. Zubler, of
Washington, DC. Of counsel were Arthur Gollwitzer III and Larry L. Saret, Michael Best
& Friedrich, LLP, of Chicago, Illinois.

Appealed from: United States District Court for the District of South Carolina

Judge Cameron M. Currie
 United States Court of Appeals for the Federal Circuit

2007-1277

DECISIONING.COM, INC.,

Plaintiff-Appellant,

v.

FEDERATED DEPARTMENT STORES, INC.,
MACYS.COM, INC., BLOOMINGDALE’S, INC.,
THE BON, INC. (doing business as The Bon Marche), BURDINES, INC.,
RICH’S DEPARTMENT STORES, INC.
(doing business as Rich’s-Macy’s, Lazarus and Goldsmith’s),
FDS BANK, DEPARTMENT STORES NATIONAL BANK, FACS GROUP, INC.,
and FEDERATED SYSTEMS GROUP, INC.,

Defendants-Appellees.

Appeal from the United States District Court for the District of South Carolina in case no.
3:03-CV-1924, Judge Cameron M. Currie.

-------------------------------------------------------

2007-1278

DECISIONING.COM, INC.,

Plaintiff-Appellant,

v.

TD AMERITRADE HOLDING CORPORATION, INC.,
TD AMERITRADE, INC., and TD WATERHOUSE GROUP, INC.,

Defendants-Appellees.

Appeal from the United States District Court for the District of South Carolina in case no.
3:03-CV-2837, Judge Cameron M. Currie.

-------------------------------------------------------
 2007-1308

HSBC FINANCE CORPORATION (as successor to Household International, Inc.),

Plaintiff-Appellee,

and

HSBC CARD SERVICES, INC., HSBC RETAIL SERVICES, INC.,
HSBC BANK NEVADA, N.A., HSBC BANK USA, N.A.,
and HSBC TECHNOLOGY AND SERVICES (USA), INC.,

Third Party Defendants-
Appellees,

v.

DECISIONING.COM, INC.,

Defendant/Third Party Plaintiff-
Appellant.

Appeal from the United States District Court for the District of South Carolina in case no.
3:04-CV-1200, Judge Cameron M. Currie.

__________________________

DECIDED: May 7, 2008
__________________________

Before MAYER, SCHALL, and LINN, Circuit Judges.

Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge LINN.

PER CURIAM.

In this case, Decisioning.com, Inc. (“Decisioning”) appeals from three final

decisions of the United States District Court for the District of South Carolina. See

HSBC Fin. Corp. v. Decisioning.com, Inc., No. 3:04-CV-1200 (D.S.C. Apr. 24, 2007)

(“HSBC Summary Judgment Order”); Decisioning.com, Inc. v. Federated Dep’t Stores,

Inc., No. 3:03-CV-1924 (D.S.C. Mar. 28, 2007) (“Federated Summary Judgment

2007-1277, -1278, -1308 2
Order”); Decisioning.com, Inc. v. TD Ameritrade Holding Corp., No. 3:03-CV-2837

(D.S.C. Mar. 28, 2007) (“TD Ameritrade Summary Judgment Order”). 1 As relevant to

this appeal, the district court determined on summary judgment that Appellees did not

infringe Decisioning’s U.S. Patent No. 6,105,007 (“the ’007 patent”) as construed. The

district court’s summary judgment of non-infringement in favor of the Federated

Appellees is affirmed. Its summary judgments of non-infringement in favor of the TD

Ameritrade and HSBC Appellees are affirmed-in-part and vacated-in-part, and the

cases of those appellees are remanded for further proceedings.

I. BACKGROUND

A. The ’007 Patent

Affinity Technology Group, Inc., of which

Decisioning is a wholly-owned subsidiary, is the

assignee of several patents that relate to automated

loan processing and that descend from U.S. Patent

Application Serial No. 08/113,205 (“the ’205

application”). These patents include U.S. Patent No.

5,870,721 (“the ’721 patent”), directed to a “system

and method for real time loan approval”; U.S. Patent

No. 5,940,811 (“the ’811 patent”), directed to a “closed

loop financial transaction method and apparatus”; and the ’007 patent, which is directed

1
For ease of reference, the Defendants-Appellees in Case No. 3:03-CV-
1924 (Appeal No. 2007-1277) and Case No. 3:03-CV-2837 (Appeal No. 2007-1278) are
referred to as the “Federated Appellees” and “TD Ameritrade Appellees,” respectively.
Likewise, the Plaintiff-Appellee and Third Party Defendants-Appellees in Case No. 3:04-
CV-1200 (Appeal No. 2007-1308) are referred to as the “HSBC Appellees.”
Collectively, these parties are referred to as “Appellees.”

2007-1277, -1278, -1308 3
to an “automated financial account processing system.” The ’007 patent is the only

patent directly relevant to this appeal.

The ’007 patent claims a system that automatically processes financial account

applications—for example, loan or credit card applications. In general terms, the

automatic financial account processing 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. The specification explains that the system is a “closed

loop” processor of applications, meaning “that all the steps involved are performed by a

computer that is programmed to make the decision to approve or disapprove the

request and to complete all aspects of it . . . on behalf of the financial institution within

minutes of the time the consumer initiates the request for the particular service.” ’007

patent col.2 ll.38–48. Figure 2 of the ’007 patent, seen above, illustrates an

embodiment of the invention whereby the automatic loan processing is facilitated by a

kiosk, “which is basically a housing that can contain all of the equipment for a borrower

to use in contacting and communicating with a remote, centrally located transaction

processor.” Id. col.9 ll.7–10.

The ’205 application, as originally filed, was directed to a “closed loop financial

transaction method and apparatus.” The specification and originally-filed claims

illustrate that the invention sought to be captured by the ’205 application related to “a

method and apparatus for making loans automatically, that is, a closed loop loan.” 2 The

2
The specification of the ’205 application further stated: “By the term
‘automatically,’ it is meant that the application is received and processed, the decision
made to grant or deny the loan, and the deposit of the loaned amount to the borrower’s
account is made entirely by computers in conjunction with voice and electronic
communication equipment.”

2007-1277, -1278, -1308 4
specification of the ’205 application described several embodiments for interfacing the

loan applicant with the loan processing system, such as a telephone, a personal

computer, or a kiosk housing computer equipment. These user-interfaces required

varying degrees of human interaction. For instance, while an applicant could apply with

relatively little human assistance using the kiosk embodiment, the specification

contemplated that other embodiments, such as the personal computer embodiment,

would require a more substantial level of human interaction: “In an alternate

embodiment of [sic] user interface, the loan process can be initiated with by [sic] agent,

such as an insurance agent or financial planner. An agent may have a personal, ‘lap

top’ computer with a modem and facsimile machine for use in assisting the borrower in

applying for a loan.”

When Decisioning filed the application that matured into the ’007 patent, it sought

to capture a system that processed financial accounts “without human intervention.”

See id. col.2 ll.48–53 (“In loan application processing, for example, the closed loop

includes the steps of transferring the funds to the borrower and arranging for

repayment, as well as completing the loan application and underwriting it, including

execution of regulatory requirements related to consumer financing, all done without

human intervention.” (emphasis added)). Consequently, the specification as filed was

amended to delete the embodiments which were described in the ’205 application as

involving human assistance, leaving only the kiosk embodiment. The claims as filed

were directed to a system for providing closed loop financial transactions using a

“kiosk.” During prosecution, Decisioning amended the claims to delete the “kiosk”

limitation but retained the limitation reciting a “computer controller” that was “carried by”

2007-1277, -1278, -1308 5
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.

Claim 1 of the issued ’007 patent, repeated below with the disputed terms

emphasized, is representative of the claims at issue:

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

2007-1277, -1278, -1308 6
 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.

B. The Litigation in the District Court

Decisioning filed suit against the Federated Appellees and the TD Ameritrade

Appellees in the United States District Court for the District of South Carolina. In both of

these cases, Decisioning alleged that various systems used by these appellees for

establishing credit accounts infringed the ’007 patent. Contemporaneously, the HSBC

Appellees filed a declaratory judgment action against Decisioning in the United States

District Court for the District of Delaware, seeking a declaration of invalidity and non-

infringement of the ’007, ’721, and ’811 patents. That case was transferred to the

district court in South Carolina pursuant to 28 U.S.C. § 1404(a).

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. This is not limited

to checking biometric information and does not exclude verification using information

such as name, address, and social security number plus some additional information

less likely to have been improperly obtained (e.g., mother’s maiden name, years at

current address, years at job, etc).” Id. at 3–4 (emphasis in original). Finally, it

construed the language “compare . . . and . . .” as it appears in subsection (d)(iv) of

2007-1277, -1278, -1308 7
claim 1 to require that both sets of information being compared—i.e., the “‘information

received from the applicant,’ and ‘information received from [one or more]

database[s],’”—be “relevant to the applicant’s ability and willingness to comply with the

account requirements.” Id. at 4.

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. 3 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. It concluded that “[b]y definition, a consumer-owned piece of equipment,

regardless of how similar it may otherwise be, cannot be the equivalent of ‘dedicated

computer equipment . . . supplied by the entity providing the financial account or

service.’” Federated Summary Judgment Order at 9; TD Ameritrade Summary

Judgment Order at 14; HSBC Summary Judgment Order at 6 (rejecting Decisioning’s

argument “for the reasons set forth in the summary judgment orders entered in

Federated and Ameritrade”). The district court also concluded, based primarily on the

fact that a personal computer embodiment present in the ’205 application was deleted

when the continuation-in-part application resulting in the ’007 patent (“the ’007 patent

application”) was filed, that prosecution history estoppel barred Decisioning from

3
The TD Ameritrade Appellees received only partial summary judgment of
non-infringement with respect to the “remote interface” term because they conceded
that some of their accused systems employed dedicated computers that they provided.
TD Ameritrade Summary Judgment Order at 8, 17.

2007-1277, -1278, -1308 8
capturing equivalents to the remote interface as construed. Federated Summary

Judgment Order at 10–12 (“The prosecution history of the ’007 Patent, therefore,

reflects abandonment of consumer-owned personal computer as the means of

interacting with the central system.”); TD Ameritrade Summary Judgment Order at 15–

17; HSBC Summary Judgment Order at 6.

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. Based on this enhanced construction, the district court

determined that the systems used by the Federated Appellees, which verify identity

using name, address, social security number, and third-party credit card number, did not

literally infringe because the third-party credit card number did not constitute “additional

information less likely to have been improperly obtained.” Federated Summary

Judgment Order at 14. Similarly, it determined that the systems used by the TD

Ameritrade Appellees, which use a birthdate or phone number in addition to name,

address, and social security number, did not infringe because a birthdate or phone

number are not types of information “less likely to have been improperly obtained.” TD

Ameritrade Summary Judgment Order at 12. The “verify the applicant’s identity”

2007-1277, -1278, -1308 9
limitation did not form the basis for the district court’s summary judgment of non-

infringement with respect to the HSBC Appellees.

Decisioning timely appealed the district court’s summary judgments of non-

infringement. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II. DISCUSSION

A. Standard of Review

Claim construction is an issue of law, see Markman v. Westview Instruments,

Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996), over

which we exercise plenary review, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,

1456 (Fed. Cir. 1998) (en banc). We likewise review the district court’s grant of

summary judgment de novo, reapplying the standards applied by the district court.

SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1283 (Fed. Cir. 2005).

Summary judgment is generally appropriate when, after making all inferences in favor of

the nonmoving party, there are no genuine issues of material fact and the moving party

is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex Corp. v.

Catrett, 477 U.S. 317, 322 (1986).

B. Analysis

Decisioning argues that the district court erroneously construed three terms:

“remote interface,” “verify the applicant’s identity,” and “compare . . . and . . . .” The

district court’s grants of summary judgment of non-infringement were based on its

constructions of the first two of these terms. The district court did not grant summary

judgment based on the last of these terms, which was argued as another ground for

summary judgment, however. Because we conclude that the district court erred in its

2007-1277, -1278, -1308 10
construction of this term, and because the term is identified by the parties as a

potentially-relevant term on remand, we construe it in this opinion. Decisioning argues

that under the correct constructions, the district court’s summary judgments of non-

infringement should be overturned. We first address the correctness of the district

court’s claim constructions. We then determine whether the district court’s grants of

summary judgment can be sustained.

1. Claim Construction

a. “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. The court later explained that “[t]he

intent of this construction was to exclude personal computer systems owned and

controlled by the consumer, or by the applicant.” E.g., Federated Summary Judgment

Order at 9. Decisioning argues that the district court erred in restricting the “remote

2007-1277, -1278, -1308 11
interface” limitation to computer equipment that is “dedicated” to financial transactions

and “supplied by” the entity providing the account. According to Decisioning, the term is

broad and should be given its plain and ordinary meaning, which encompasses “any

device, equipment, or means that has input and output to allow the exchange of

information between the applicant and the computer controller.” Appellees argue that

the district court properly narrowed the claims because the specification and

prosecution history support only dedicated computer equipment, and because

Decisioning abandoned other embodiments—specifically, consumer-owned personal

computers—when it filed the ’007 patent application.

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.

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

2007-1277, -1278, -1308 12
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.

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. The inventor used the term “kiosk” in the specification in two ways. First,

the specification describes the “kiosk” as being merely a housing for the computer

2007-1277, -1278, -1308 13
equipment that constitutes the “remote interface.” Id. col.9 ll.7–10 (“A kiosk is basically

a housing that can contain all of the equipment for a borrower to use in contacting and

communicating with a remote, centrally located transaction processor . . . .”). Second,

the specification uses the term “kiosk” to represent the entire “remote interface” itself,

including the required computer equipment. See id. col.3 ll.55–58 (“The kiosk can

enable the consumer to establish checking and savings accounts [and] apply for and be

immediately issued or sent credit and debit cards . . . .”), col.6 ll.6–9 (“Kiosk 40 is

activated by drawing an ATM or bank card or equivalent through a magnetically

encoded card reader 70 or by providing a member number for credit unions or a

merchant number for merchants and finance companies.”), col.9 ll.61–63 (“[L]oans and

credit cards are but one of many types of services that can be provided by a kiosk of the

type described or with slight modifications.”). In construing “remote interface,” we

consider both senses in which the term “kiosk” is used throughout the written

description.

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. Id. col.3 ll.44–45 (“In a preferred embodiment, the user-

interface is a kiosk housing a computer controller . . . .” (emphasis added)), col.9 ll.4–6

(“The preferred embodiment for enabling a borrower to complete a loan or credit card

application is housed in kiosk 40.” (emphasis added)). The preferred kiosk housing,

which resembles a typical bank automated teller machine, is depicted in figures 2 and 3

of the patent. We agree with Decisioning that the invention is not limited to a remote

interface that is enclosed by the preferred kiosk housing disclosed in the specification.

2007-1277, -1278, -1308 14
See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 1995) (“Even

when the specification describes only a single embodiment, the claims of the 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.”). In

alternate embodiments, a different style of housing—or even no housing at all—may be

used to enclose the remote interface.

More importantly, Decisioning made clear during prosecution that the claims of

the ’007 patent do not require a kiosk housing. As originally filed, claim 1 recited:

1. A system for providing a closed loop financial transaction to a
consumer, said system comprising:

a kiosk;

a computer controller carried by said kiosk and programmed to
interact with said consumer . . . ;

means carried by said kiosk and responsive to said computer
controller for communicating to said consumer;

input means carried by said kiosk for enabling information to be
communicated by said consumer to said computer controller, said
computer controller responsive to said input means;

output means carried by said kiosk and responsive to said
computer controller for responding to said financial transaction
requested by said consumer; and

...

(emphases added). It is apparent that claim 1 originally recited the limitation of a kiosk

housing. “Kiosk” is first recited as a limitation, and the components subsequently

recited are “carried by said kiosk.” However, in an amendment dated August 15, 1995,

the inventor deleted all references to the kiosk housing in claim 1 (the portions

underlined above). In the remarks accompanying the amendment, the inventor

2007-1277, -1278, -1308 15
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.” We think that the effect of

this amendment was to remove the requirement that the remote interface be enclosed

by a kiosk housing. In that regard, however, we do not agree with Decisioning that the

amendment actually “broadened the scope of the applicant interface” itself.

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. E.g., ’007 patent Abstract (“The

transactions are provided from a kiosk . . . .”), col.4 ll.16–18 (“The use of a kiosk to

make available to borrowers the communications capability for applying for a loan or

credit card is another important feature of the present invention.” (emphasis added)),

col.4 ll.35–39 (“In fact, the present invention greatly reduces the need for financial

institutions to maintain offices and makes it more cost effective for them to provide

kiosks in remote areas rather than branch offices.” (emphasis added)), col.9 l.63–col.10

l.6 (“[A]ll the basic services provided by financial institutions . . . can be done using the

kiosk and computer controller of the present invention.” (emphasis added)).

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

Oxford English Dictionary defines “kiosk” to include a “structure . . . used for the sale of

newspapers” and a “telephone kiosk.” VII Oxford English Dictionary 455 (2d ed. 1989);

see also The American Heritage Dictionary of the English Language 966 (4th ed. 2000)

2007-1277, -1278, -1308 16
(a “small structure, often open on one or more sides, used as a newsstand or booth”);

The New Oxford American Dictionary 938 (2001) (“a small open-fronted hut or cubicle

from which newspapers, refreshments, tickets, etc., are sold” and “a telephone booth”);

Random House Webster’s College Dictionary 730 (2d ed. 1999) (“an interactive

computer terminal available for public use, as one with Internet access or site-specific

information”); Random House Webster’s Unabridged Dictionary 1059 (2d ed. 2001) (“a

small structure having one or more sides open, used as a newsstand, refreshment

stand, bandstand, etc.” and “a telephone booth”).

The specification is consistent with this ordinary meaning of “kiosk.” The

specification provides that the kiosks are placed in “convenient locations.” See ’007

patent col.3 ll.1–9 (“[T]he present invention is the closed loop performance of financial

functions via a computer and monitor mounted in a kiosk, located in convenient places

. . . .”), col.3 ll.51–55, col.4 ll.18–20. The specification further defines those “convenient

locations” to include, e.g., an airport terminal, a bank, a shopping area, or a store. Id.

col.3 ll.51–55. All of these locations—consistent with the ordinary meaning of “kiosk”—

indicate public accessibility. Nowhere does the specification suggest that “kiosk” might

encompass a consumer’s privately-owned personal computer.

Further, the specification describes various features of the kiosk that would not

be associated with consumer-owned personal computers. For example, the

specification provides that customers exchange information with the kiosk using “touch

screen” or voice recognition technology and sign documents via an electronic pen and

signature pad. The Summary of the Invention states that “the present invention is the

closed loop performance of financial functions via a computer and monitor . . . using

2007-1277, -1278, -1308 17
‘touch-screen’ or voice recognition technology, for the consumer to indicate choices and

provide information, and an electronic signature pad to obtain the signature of the

applicant indicating understanding and acceptance of the terms of the transaction.” Id.

col.3 ll.1–9; see also id. col.4 ll.25–39 (describing the use of an electronic signature pad

as a “feature of the present invention”), col.4 ll.43–45 (describing the use of a “touch

screen” technology as a “feature of the present invention”). The kiosk is also described

as including a magnetic bank card reader, id. col.9 ll.11–15, and security camera, id.

col.9 l.18. Finally, the specification provides that credit or debit cards may be imprinted

and issued through the kiosk’s credit card port. Id. col.3 l.63–col.4 l.9 (“An important

feature of the present invention is the extent to which the financial transactions are

processed by the computer controller and without human intervention. . . . Here, the

processing by computer controller includes . . . [the] issuance of a transaction card,

such as a credit, debit or ‘smart’ card, imprinted with the necessary information.”), col.10

ll.20–24.

Many of these features do not evoke the use of consumer-owned personal

computers today; it is even less likely that a skilled artisan would have associated them

with consumer-owned personal computers as of the effective date of the patent

application. See Phillips, 415 F.3d at 1313. 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. They play an important role in

2007-1277, -1278, -1308 18
achieving the invention’s stated purpose—i.e., the closed loop processing of financial

transactions without human involvement. See, e.g., ’007 patent col.3 ll.36–42 (stating

that the customer uses an electronic signature pad in order to sign loan documents,

which is “important for assuring that regulatory requirements have been met”).

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).

2007-1277, -1278, -1308 19
 For the reasons outlined above, we conclude that the term “remote interface” in

the context of the ’007 patent does not encompass consumer-owned personal

computers. 4 Nevertheless, we think that the district court erred in applying the

“dedicated” and “supplied by” limitations to the claimed “remote interface.” Engrafting

the claims with these limitations produces anomalous results, not supported by the

specification or the claims themselves. For example, a kiosk that is provided by a bank

would be encompassed by the district court’s construction, but a kiosk provided by a

third party that facilitates loans for that bank would not because the kiosk is no longer

“supplied by the entity providing the account.” Further, the district court’s construction

would encompass a kiosk that is completely dedicated to financial transactions, but it

would presumably exclude a kiosk that could also be used for one additional function,

e.g., checking a weather report.

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. 5

4
Our construction of the term “remote interface” is not based upon the
prosecution history. Appellees argue that “remote interface” should be construed to
exclude consumer-owned personal computers because the application that matured
into the ’007 patent failed to carry forward the personal computer embodiment disclosed
in the original ’205 application. In Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352
(Fed. Cir. 2003), this court confronted a similar situation, where a continuation-in-part
application failed to include an embodiment from the parent application. The court
determined that this fact, standing alone, was an insufficient basis to exclude that
embodiment from the scope of the claims where there was no language indicating
surrender of the deleted subject matter. Id. at 1358. Here, although the ’007 patent as
filed did not carry forward certain embodiments, there is no language present in the
specification or the prosecution history to indicate that Decisioning intended to abandon
any claim to this subject matter. We thus find the prosecution history inapposite.
5
The written description states that “the present invention greatly reduces
the need for financial institutions to maintain offices and makes it more cost effective for

2007-1277, -1278, -1308 20
The claim term “remote interface” refers to computer equipment installed in publicly-

accessible locations, although it need not be enclosed in a “kiosk” housing. However,

“remote interface” does not encompass computer equipment that is privately owned by

the consumer establishing the financial account. 6 As explained above, a person of

ordinary skill in the art would not understand the term “remote interface”—read in light of

the specification—to encompass a consumer-owned personal computer. See Phillips,

415 F.3d at 1313.

b. “verify the applicant’s identity”

The district court construed “verify the applicant’s identity” as follows: “to confirm

or substantiate the applicant’s identity. This is not limited to checking biometric

information and does not exclude verification using information such as name, address,

and social security number plus some additional information less likely to have been

improperly obtained (e.g., mother’s maiden name, years at current address, years at

job, etc).” Claim Construction Order at 3–4 (emphasis in original). However, at

summary judgment, the district court interpreted its construction to require the

verification to consist of information that is both quantitatively and qualitatively more

them to provide kiosks in remote areas rather than branch offices.” ’007 patent col.4
ll.35–39 (emphasis added). Without more, however, we are not convinced that the
remote interface may only be supplied by the financial institution providing the account.
6
Dependent claim 16 claims “[t]he automatic account processing system of
claim 1 wherein said remote interface is a public kiosk.” We acknowledge that our
construction of “remote interface” arguably renders the term “public” in claim 16
surplusage. However, we have recognized that “no canon of claim construction is
absolute in its application,” Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d
1243, 1248 (Fed. Cir. 1998), and that surplusage may exist in some claims, see
Pickholtz v. Rainbow Tech., Inc., 284 F.3d 1365, 1373 (Fed. Cir. 2002). In light of the
intrinsic evidence that we have discussed, we conclude that the claims of the ’007
patent are limited to a publicly-accessible “remote interface” despite the fact that such a
construction may render the term “public” in claim 16 surplusage.

2007-1277, -1278, -1308 21
substantial than that based on name, address, and social security number alone.

Federated Summary Judgment Order at 13; TD Ameritrade Summary Judgment Order

at 10.

As an initial matter, Appellees argue that Decisioning is judicially estopped from

challenging this construction because it failed to object to and did not seek

reconsideration of this construction, even though it requested reconsideration of other

constructions. We are unpersuaded by Appellees’ argument. The district court’s initial

construction, which Appellees assert Decisioning failed to challenge, is at best

ambiguous, because on its face it does not also exclude Decisioning’s proffered

construction, which would permit verification using name, address, and social security

number only. At summary judgment, however, the construction was interpreted as

requiring additional information when verification was based on those three types of

information alone. Cf. 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 at 10. Decisioning

opposed this interpretation of the claim term at summary judgment when Appellees

urged the district court to apply it. Consequently, judicial estoppel is inapplicable. See

New Hampshire v. Maine, 532 U.S. 742, 749 (2001) (judicial estoppel determination

based on several factors, including (1) whether the party’s later position is “clearly

inconsistent” with its earlier position; (2) whether the party succeeded in persuading a

2007-1277, -1278, -1308 22
court to accept its earlier position; and (3) whether the party seeking to assert an

inconsistent position would derive an unfair advantage or impose an unfair detriment on

the opposing party if not estopped).

With respect to the merits of the district court’s construction, Decisioning argues

that the district court improperly engrafted limitations onto the claims by requiring that

“additional information less likely to have been improperly obtained” be used in

conjunction with name, address, and social security number. Appellees counter that the

district court’s construction is supported by the specification and prosecution history.

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; it requires only that the account processing

system “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.” ’007 patent col.11 ll.3–6. 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.

Appellees seize on the specification’s description of a preferred embodiment, where the

specification reveals that the identity of the applicant may be verified, in the course of a

fraud check, using information in addition to name, address, and social security number:

Before the application is approved, however, there are several checks
made by transaction processor 10 to prevent fraud. For example, the
name of the applicant and the applicant’s signature is verified, both
electronically. Information obtained from the applicant including date of
birth and the number of years with present employer, is compared to that

2007-1277, -1278, -1308 23
 available from a credit report or other sources such as the national death
and birth records, drivers’ licenses, criminal records, etc.

Id. col.7 l.66–col.8 l.7.

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.

c. “compare . . . and . . .”

The claims recite a data processing system adapted to “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.” ’007 patent col.11 ll.7–13 (emphasis

added). The district court construed the disputed comparison language to require that

both sets of information being compared—i.e., (i) that received from applicant and (ii)

that received from the database—“[be] relevant to the applicant’s ability and willingness

to comply with the account requirements.” Claim Construction Order at 4. Decisioning

argues that the district court’s construction is erroneous because it is inconsistent with

the plain language of the claims. Appellees urge us to affirm the district court’s

interpretation based upon their own parsing of the claim language.

We conclude that the plain language of the claims requires only the information

received from the “database relevant to the applicant’s ability and willingness to comply

with the account requirements” necessarily be “relevant to the applicant’s ability and

willingness to comply with the account requirements.” The modifying phrase, “relevant

to the applicant’s ability and willingness to comply with the account requirements,” is

2007-1277, -1278, -1308 24
clearly linked to the “at least one database” recited in the claim. In the language of the

disputed sentence, each reference to information is preceded by the phrase “certain of

the information,” making distinct the types of information being compared. Thus, the

data processing system “compare[s] [1] certain of the information received from the

applicant and [2] 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.” ’007 patent col.11 ll.7–13 (emphases added). This

sentence structure is also used elsewhere in claim 1 to distinguish between two types of

information being compared. See id. col.11 ll.3–6 (“verify the applicant's identity by

comparing [1] certain of the information received from the applicant with [2] certain of

the information received from said at least one database relevant to the applicant’s

identity.”) (emphases added).

Moreover, the claims, when read as a whole, demonstrate that the “relevant to”

modifier describes the type of database from which the information is being culled. This

characteristic is highlighted by the description of the data processing system in claim 1:

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.

Id. col.10 ll.50–59 (emphasis added). This passage confirms that the disputed

“compare . . . and . . .” language envisions the comparison of two types of data: that

received “from” the applicant (e.g., name, telephone number, etc.) and that received

“about” the applicant from a credit database (e.g., credit score). The specification is in

2007-1277, -1278, -1308 25
accord. See id. col.3 ll.21–27 (“Information about the applicant is also obtained via

electronic transfer of data to the computer from one or more databases, including those

that provide name and address based on a caller’s telephone number, and from credit

bureaus that provide credit reports on an applicant given an applicant’s name, a social

security number and an address.”); id. col.6 ll.40–44 (“[T]ransaction processor 10

initially needs only the applicant’s name, address and social security number for

identification. This information is used to obtain a credit report from a credit bureau.”).

For these reasons, only the information received from the “at least one database”

is required to be “relevant to the applicant’s ability and willingness to comply with the

account requirements.”

2. Summary Judgment

As discussed above, our construction of “remote interface” encompasses only

publicly-accessible computer equipment that is located remotely from the data

processing system and that facilitates the exchange of information between the

applicant and the transaction processor. Thus, Appellees’ systems that are accessed

solely via consumer-owned personal computers do not literally infringe the ’007 patent.

Further, Decisioning is precluded from asserting that those systems infringe under the

doctrine of equivalents, as doing so would vitiate an element of the claims—i.e., “remote

interface” as construed. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d

1573, 1582 (Fed. Cir. 1996) (“As a corollary to the ‘all limitations’ rule discussed above,

we have held that ‘the concept of equivalency cannot embrace a structure that is

specifically excluded from the scope of the claims.’ Applying this formulation to the

undisputed facts of the instant case, we conclude that the intermediate offset distance

2007-1277, -1278, -1308 26
required by the properly construed claim cannot have an equivalent in a racket with only

two offset distances. In other words, the two-distance splayed string system was

‘specifically excluded from the scope of the claims.’” (citations omitted)); see also

Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1377–78 (Fed. Cir. 2005)

(construing “network for data communications” to require direct, point-to-point

connections between processors and concluding that equivalence of a network in which

the connections were indirect would vitiate the claim phrase as construed); Novartis

Pharms. Corp. v. Abbott Labs., 375 F.3d 1328, 1337–38 (Fed. Cir. 2004) (construing

“lipophilic phase component” as limited to non-surfactant excipients and concluding that

a surfactant cannot be the equivalent of a non-surfactant); Searfoss v. Pioneer Consol.

Corp., 374 F.3d 1142, 1150–51 (Fed. Cir. 2004) (construing “actuation means for

connecting said tension bail to said extension assembly” as requiring a direct

connection through an actuation means and finding that equivalence of an indirect

connection would vitiate “connecting” as construed).

In granting the Federated Appellees’ motion for summary judgment of non-

infringement, the district court stated that “access to the Federated websites is through

consumer-owned personal computers and is never through dedicated computer

equipment nor through equipment supplied by Federated.” Federated Summary

Judgment Order at 7. On appeal, Decisioning does not dispute that characterization of

the Federated Appellees’ systems. Thus, we affirm the district court’s grant of the

Federated Appellees’ motion for summary judgment of non-infringement.

With respect to the HSBC Appellees, the district court stated that “HSBC asserts

and [Decisioning] does not contest that the services at issue in this action are all

2007-1277, -1278, -1308 27
provided through consumer-owned personal computers.” HSBC Summary Judgment

Order at 2. However, the record on appeal reflects that the HSBC Appellees’ systems

are accessed “in some cases via personal computers supplied by and operated on the

store floor of HSBC clients, such as retailers.” We are unable to reconcile the district

court’s statement in the HSBC Summary Judgment Order with the record before us on

appeal. Therefore, we affirm the district court’s grant of the HSBC Appellees’ motion for

summary judgment of non-infringement only with respect to systems that are accessed

solely via consumer-owned personal computers. Likewise, we affirm the district court’s

grant of the TD Ameritrade Appellees’ motion for summary judgment of non-

infringement only with respect to systems that are accessed solely via consumer-owned

personal computers.

We have also construed the “verify the applicant’s identity” and “compare . . . and

. . .” limitations on appeal. 7 We are unable to determine, based on the record before us,

whether the HSBC and TD Ameritrade Appellees are entitled to summary judgment of

non-infringement under our modified claim constructions. Accordingly, we vacate the

district court’s grants of summary judgment of non-infringement with respect to the

systems of the HSBC and TD Ameritrade Appellees that are accessed via means other

than consumer-owned personal computers, and remand for further proceedings

consistent with this opinion.

7
As an alternative basis for affirming the district court’s summary judgment
of non-infringement, Appellees urge us to construe the “whether or not . . . approved”
limitation that appears in subsection (d)(v) of claim 1. We offer no opinion on the court’s
construction of “whether or not . . . approved,” however, because it was not relied upon
in the district court’s summary judgment orders, and because we do not consider the
record before us with respect to that limitation adequately developed.

2007-1277, -1278, -1308 28
 III. CONCLUSION

The district court’s claim construction is modified in accordance with this opinion.

The district court’s summary judgment of non-infringement in favor of the Federated

Appellees is affirmed. The district court’s summary judgments of non-infringement in

favor of the HSBC and TD Ameritrade Appellees are affirmed-in-part and vacated-in-

part, and the case is remanded for further proceedings consistent with this opinion.

AFFIRMED-IN-PART, VACATED-IN-PART, and REMANDED

COSTS

No costs.

2007-1277, -1278, -1308 29
 United States Court of Appeals for the Federal Circuit
2007-1277

DECISIONING.COM, INC.,

Plaintiff-Appellant,

v.

FEDERATED DEPARTMENT STORES, INC.,
MACYS.COM, INC., BLOOMINGDALES’S, INC.,
THE BON, INC. (doing business as The Bon Marche), BURDINES, INC.,
RICH’S DEPARTMENT STORES, INC.
(doing business as Rich’s-Macy’s, Lazarus and Goldsmith’s),
FDS BANK, DEPARTMENT STORES NATIONAL BANK, FACS GROUP, INC.,
and FEDERATED SYSTEMS GROUP, INC.,

Defendants-Appellees.

Appeal from the United States District Court for the District of South Carolina in case no.
3:03-CV-1924, Judge Cameron M. Currie.

-------------------------------------------------------

2007-1278

DECISIONING.COM, INC.,

Plaintiff-Appellant,

v.

TD AMERITRADE HOLDING CORPORATION, INC.,
TD AMERITRADE, INC., and TD WATERHOUSE GROUP, INC.,

Defendants-Appellees.

Appeal from the United States District Court for the District of South Carolina in case no.
3:03-CV-2837, Judge Cameron M. Currie.

-------------------------------------------------------
 2007-1308

HSBC FINANCE CORPORATION (as successor to Household International, Inc.),

Plaintiff-Appellee,

and

HSBC CARD SERVICES, INC., HSBC RETAIL SERVICES, INC.,
HSBC BANK NEVADA, N.A., HSBC BANK USA, N.A.,
and HSBC TECHNOLOGY AND SERVICES (USA), INC.,

Third Party Defendants-
Appellees,

v.

DECISIONING.COM, INC.,

Defendant/Third Party Plaintiff-
Appellant.

Appeal from the United States District Court for the District of South Carolina in case no.
3:04-CV-1200, Judge Cameron M. Currie.

LINN, Circuit Judge, concurring-in-part and dissenting-in-part.

I am pleased to join the majority opinion, with the exception of part II.B.1.a. In

that part, the majority concludes that the claimed “remote interface” cannot encompass

consumer-owned personal computers, thereby effectively engrafting a “publicly-

accessible” limitation onto the term. E.g., Maj. Op. at 19 (“Based upon the written

description in this case, we conclude that the claim term ‘remote interface’ excludes

consumer-owned personal computers.”); id. at 21 (“The claim term ‘remote interface’

refers to computer equipment installed in publicly-accessible locations . . . .”). Because

I am unable to find support anywhere in the specification or prosecution history for

limiting the term in this manner, I respectfully dissent.

2007-1277, -1278, -1308 2
 The claims of the ’007 patent broadly recite a “remote interface” for use in an

automatic account processing system. E.g., ’007 patent, claim 1. The only

requirements imposed on the “remote interface” are that it be adapted to “allow an

applicant to remotely request an account” and to “receive data from an applicant.” Id.

The claim language itself does not require that the “remote interface” be publicly-

accessible; in other words, it does not foreclose the use of a consumer-owned personal

computer to accomplish these functions. 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.

As the majority acknowledges, id. at 15, “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.’” Liebel-

Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (quoting Teleflex, Inc.

v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). The majority does not

point to “words or expressions of manifest exclusion or restriction” evidencing “a clear

intention to limit the claim scope,” however, but instead equates the claimed “remote

interface” with the preferred “kiosk” embodiment described in the specification. After

making various observations about kiosks in general, see id. at 16 (“The common

meaning of the term ‘kiosk’ strongly suggests . . . that the claimed remote interface is

installed in a publicly-accessible location.”); id. at 17 (“[T]he specification describes

2007-1277, -1278, -1308 3
various features of the kiosk that would not be associated with consumer-owned

personal computers.”), the majority concludes that one of ordinary skill would

understand “remote interface” to be limited to the fundamental characteristics of kiosks.

With all due respect to my colleagues in the majority, I find this conclusion

unsupportable. 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. Compare id. at 14 (“[I]t 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.”), with id. at 16 (“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.”). Moreover, although the majority contends

that the written description can also be read to use the term “kiosk” “to represent the

entire ‘remote interface’ itself,” id., the fact remains that the specification, in the portions

cited by the majority to reinforce this proposition, simply uses “kiosk” as shorthand for

both the housing and the “remote interface” contained therein. This nomenclature is

unremarkable, since the sole disclosed preferred embodiment is a kiosk. See ’007

patent, col. 3, ll. 44-46 (“In a preferred embodiment, the user-interface is a kiosk

2007-1277, -1278, -1308 4
housing a computer controller, at least one telecommunications link, a monitor or ‘touch-

screen monitor’ . . . .”).

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.”).

I am unable to find a clear intention to disavow consumer-owned personal

computers in the written description. To the contrary, I read the specification to broadly

describe an automatic account processing system which encompasses—consistent with

the language of the claims—virtually any user interface that facilitates the exchange of

information between the applicant and the claimed data processing system. See ’007

patent, col. 2, ll. 55-58 (“[T]he [loan processing] apparatus uses a computer controller

2007-1277, -1278, -1308 5
and a telecommunications link, plus other electronic communications equipment, to

enable the complete, automated processing of the application . . . .”). Thus, applying

the appropriate standard, the “remote interface” term should carry its plain and ordinary

meaning: “a user interface located remotely from the data processing system that allows

the exchange of information therebetween.” Because the majority fails to accord the

“remote interface” term the scope to which it is entitled, I respectfully dissent from part

II.B.1.a.

2007-1277, -1278, -1308 6