Case: 22-1598 Document: 99 Page: 1 Filed: 04/01/2024
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ALEXSAM, INC.,
Plaintiff-Appellant
v.
SIMON PROPERTY GROUP, L.P., BLACKHAWK
NETWORK, INC.,
Defendants-Appellees
US BANK NA,
Defendant
______________________
2022-1598
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 2:19-cv-00331-RWS-RDP,
Judge Robert Schroeder, III.
______________________
Decided: April 1, 2024
______________________
STEVEN RITCHESON, Insight, PLC, Marina del Rey, CA,
argued for plaintiff-appellant. Also represented by
JACQUELINE KNAPP BURT, Heninger Garrison Davis, LLC,
Atlanta, GA; TIMOTHY C. DAVIS, W. LEE GRESHAM, III, Bir-
mingham, AL.
Case: 22-1598 Document: 99 Page: 2 Filed: 04/01/2024
2 ALEXSAM, INC. v. SIMON PROPERTY GROUP, L.P.
ELIZABETH M. MANNO, Venable LLP, Washington, DC,
argued for defendant-appellee Simon Property Group, L.P.
Also represented by TIMOTHY J. CARROLL, Orrick, Herring-
ton & Sutcliffe LLP, Chicago, IL; LAURA A. WYTSMA, Los
Angeles, CA.
JASON F. HOFFMAN, Baker & Hostetler LLP, Washing-
ton, DC, argued for defendant-appellee Blackhawk Net-
work, Inc. Also represented by JAMES B. HATTEN, Atlanta,
GA.
______________________
Before PROST, TARANTO, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
AlexSam, Inc. appeals the U.S. District Court for the
Eastern District of Texas’s grant of Simon Property Group,
L.P.’s and Blackhawk Network, Inc.’s non-infringement
summary judgment motions. AlexSam contends that the
district court erred in its application of the stipulated claim
construction of “unmodified” and that genuine issues of
material fact exist. For the reasons that follow, we affirm.
I
Appellant AlexSam owns U.S. Patent No. 6,000,608,
which discloses a “multifunction card system.” ’608 patent
Abstract. The system includes a multifunction card that
“can serve a number of functions, thus allowing the con-
sumer to have one card which may act as their card for fi-
nancial transactions, long-distance telephone calls, loyalty
information, and medical information.” Id. at 3:3–6. These
cards do not require special programming to be used: they
can be activated, reloaded, or used at existing, rather than
specialized, point-of-sale retail devices. Id. at 4:14–20.
Independent claim 34 provides:
A system comprising:
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ALEXSAM, INC. v. SIMON PROPERTY GROUP, L.P. 3
a. at least one electronic gift certificate card having
an electronic gift certificate card unique identifica-
tion number encoded on it, said electronic gift cer-
tificate card unique identification number
comprising a bank identification number approved
by the American Banking Association for use in a
banking network;
b. a transaction processor receiving electronic gift
card activation data from an unmodified existing
standard retail point-of-sale device, said electronic
gift certificate card activation data including said
unique identification number and an electronic gift
certificate card activation amount;
c. a processing hub receiving directly or indirectly
said activation data from said transaction proces-
sor; and
d. said processing hub activating an account corre-
sponding to the electronic gift certificate card
unique identification number with a balance corre-
sponding to the electronic gift certificate activation
amount.
Id. at 16:15–33 (emphasis added). Independent claim 60 re-
cites “[a] method of activating a prepaid card” by “swiping
the card through an unmodified existing standard point-of-
sale device.” Id. at 18:58–19:2 (emphasis added).
A
During prosecution of the ’608 patent, the inventor dis-
tinguished their invention from the prior art because the
patented invention “is specifically intended to be deployed
over an existing banking network,” therefore “custom soft-
ware is not necessary at the activating location . . . . Thus,
existing point-of-sale devices known in the art for processing
credit card and/or debit card transactions can be utilized
without modification.” J.A. 3469 (emphasis added). The pa-
tent examiner allowed the claims once the inventor
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4 ALEXSAM, INC. v. SIMON PROPERTY GROUP, L.P.
inserted the word “unmodified” before “existing standard
point-of-sale device.” See J.A. 3486–87. The ’608 patent
subsequently issued.
B
There has been much litigation regarding the meaning
of “unmodified existing standard [retail] point-of-sale de-
vice” 1 as used in the ’608 patent’s claims. AlexSam sued
Datastream Card Services Ltd. for infringement of the ’608
patent in 2003. Alexsam, Inc. v. Datastream Card Servs.
Ltd., No. 2:03-cv-337 (E.D. Tex. Sept. 26, 2003), ECF No. 1.
There, the district court issued a claim construction order,
construing “unmodified existing standard [retail] point-of-
sale device” to mean “a terminal for making purchases at a
retail location of the type in use as of July 10, 1997 that has
not been reprogrammed, customized, or otherwise altered
with respect to its software or hardware for use in the card
system” (hereinafter, the Datastream construction).
Alexsam, Inc., No. 2:03-cv-337 (E.D. Tex. June 10, 2005),
ECF No. 199 at 9. The district court reasoned that, based
on the prosecution history, the “examiner required the in-
clusion” of “unmodified” “to clarify that the systems
claimed in the ’608 patent did not require any hardware
and/or software modifications to the existing standard re-
tail POS devices.” Id.
In subsequent litigation involving the ’608 patent,
AlexSam has stipulated to the Datastream construction of
“unmodified existing standard [retail] point-of-sale device.”
See, e.g., Alexsam, Inc. v. IDT Corp., 715 F.3d 1336, 1339
1 Independent claim 34 includes the bracketed term
“retail,” whereas independent claim 60 does not. The par-
ties do not argue that the exclusion of “retail” meaningfully
changes the scope of claim 60 relative to claim 34. For sim-
plicity, we refer to both claim limitations as “unmodified
existing standard [retail] point-of-sale device.”
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ALEXSAM, INC. v. SIMON PROPERTY GROUP, L.P. 5
(Fed. Cir. 2013) (IDT); Alexsam, Inc. v. Gap, Inc., 621 F.
App’x 983, 986 (Fed. Cir. 2015) (Gap). In both cases, the
construction of “unmodified existing standard [retail]
point-of-sale device” was an important aspect of the dis-
putes. In IDT, we reversed a district court’s judgment of
infringement because AlexSam did not provide sufficient
evidence that “no modifications were actually made to the
[accused systems’] software in order to allow them to acti-
vate [the accused’s] cards.” 715 F.3d at 1342, 1348. And in
Gap, we reversed a district court’s denial of judgment as a
matter of law because AlexSam did not show prior concep-
tion of an “unmodified” point-of-sale device. 621 F. App’x at
994–95.
C
Appellee Simon sells self-branded gift cards, including
a Visa Gift Card, a 5% Back Visa Gift Card, and an Amer-
ican Express Gift Card. AlexSam initially sued only Simon,
alleging that its gift cards infringed independent claims 34
and 60 and various dependent claims of the ’608 patent.
AlexSam later amended its complaint to include infringe-
ment claims against Appellee Blackhawk, the entity that
supplies and activates some of the accused Simon-branded
gift cards.
During claim construction, AlexSam, Simon, and
Blackhawk agreed that the Datastream construction of
“unmodified existing standard [retail] point-of-sale device”
should be applied. J.A. 29, 67–68. Under the Datastream
construction, “unmodified existing standard retail point-of-
sale device” means “[a] terminal, for making purchases at
a retail location, that is of the type in use as of July 10,
1997, and that has not been reprogrammed, customized, or
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6 ALEXSAM, INC. v. SIMON PROPERTY GROUP, L.P.
otherwise altered with respect to its software or hardware
for use in the card system.” J.A. 68. 2,3
Simon and Blackhawk separately moved for summary
judgment of non-infringement, arguing that AlexSam did
not proffer sufficient evidence that the accused systems’
point-of-sale devices were actually “unmodified” and, in
any event, that the accused point-of-sale devices are modi-
fied (and not “unmodified” as required by the claims). J.A.
74. The magistrate judge issued a report and recommenda-
tion (R&R) recommending that the district court grant the
non-infringement motions and dismiss AlexSam’s infringe-
ment claims with prejudice. J.A. 69–83. The district court
adopted the magistrate judge’s R&R over AlexSam’s objec-
tions and granted Simon’s and Blackhawk’s motions for
summary judgment. J.A. 1–6.
AlexSam timely appealed, and we have jurisdiction un-
der 28 U.S.C. § 1295(a)(1).
II
We review a district court’s summary judgment deci-
sion under applicable regional circuit precedent. Unwired
Planet, LLC v. Apple Inc., 829 F.3d 1353, 1356 (Fed. Cir.
2016). The Fifth Circuit reviews the grant of summary
judgment de novo. Patel v. Tex. Tech Univ., 941 F.3d 743,
747 (5th Cir. 2019). “Summary judgment is appropriate
when, drawing all justifiable inferences in the nonmovant’s
favor, ‘the movant shows that there is no genuine dispute
as to any material fact and the movant is entitled to
2 The stipulated construction of “unmodified existing
standard point-of-sale device,” as used in claim 60, omits
the “at a retail location” language. J.A. 67.
3 No party argues that the added commas in the stip-
ulated version of the Datastream construction applied here
impacts the disputed “unmodified existing standard [re-
tail] point-of-sale device” claim limitations. See J.A. 77 n.7.
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ALEXSAM, INC. v. SIMON PROPERTY GROUP, L.P. 7
judgment as a matter of law.’” Unwired Planet, 829 F.3d at
1356 (quoting Fed. R. Civ. P. 56(a) and citing Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)).
III
On appeal, AlexSam challenges the stipulated and
long-applied construction of “unmodified existing standard
[retail] point-of-sale device,” and argues that under the cor-
rect construction of “unmodified” or the correct application
of the stipulated construction, genuine issues of material
fact exist. We disagree.
To the extent that AlexSam attempts to challenge the
stipulated construction of “unmodified existing standard
[retail] point-of-sale device,” we conclude that this argu-
ment is waived. See Digital-Vending Servs. Int’l, LLC v.
Univ. of Phoenix, Inc., 672 F.3d 1270, 1278 (Fed. Cir. 2012)
(“By stipulating to the construction that the district court
adopted, Digital-Vending waived its right to challenge this
construction on appeal.”).
AlexSam next contends that the district court erred in
applying the stipulated construction such that any modifi-
cation made to a point-of-sale device would take that device
outside the scope of the claims. As AlexSam understands
the Datastream construction, the key language is “for use
in the card system.” Appellant’s Br. 42. In AlexSam’s view,
“unmodified” excludes modifications “directed to the spe-
cific functions required of the device in the Asserted
Claims,” such as reading a card’s identification number or
having the device communicate data over a banking net-
work, and that are “not otherwise required” because they
are “required for any use, not just ‘for use in the card sys-
tem.’” Id.
We agree with AlexSam that a point-of-sale device can
be altered in certain respects while still being “unmodified”
for purposes of infringement. However, the Datastream
construction, as it has long been applied, specifies what an
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8 ALEXSAM, INC. v. SIMON PROPERTY GROUP, L.P.
“unmodified . . . [retail] point-of-sale device” is: a point-of-
sale device that has not been “reprogrammed, customized,
or otherwise altered with respect to its software or hard-
ware for use in the card system.” The magistrate judge
faithfully applied this construction in the R&R, explaining
that “modifications to the software or hardware that im-
pact how the POS device would generally be used in the
card system fall outside of the claim scope.” J.A. 80 (empha-
sis added); J.A. 5. To the extent AlexSam even advances a
new or different understanding of the “unmodified” claim
term, we are unpersuaded by AlexSam’s attempt to
broaden the scope of “unmodified existing standard [retail]
point-of-sale device” after stipulating to the Datastream
construction after cases like Gap and IDT.
In sum, we conclude that the district court did not err
in its application of the Datastream construction.
IV
We next consider whether the district court erred in its
grant of Simon’s and Blackhawk’s motions for summary
judgment of non-infringement. AlexSam argues that it of-
fered sufficient evidence of Simon’s and Blackhawk’s in-
fringement to proceed to trial. We are not persuaded.
The district court concluded there was no genuine dis-
pute of material fact about whether the accused point-of-
sale devices were “unmodified” because AlexSam’s evi-
dence was “substantially the same as that presented in
IDT.” J.A. 4. In IDT, we explained that to establish in-
fringement, AlexSam had to show that the accused sys-
tems’ point-of-sale devices “ha[d] not been reprogrammed,
customized, or otherwise altered with respect to [their]
software . . . for use in the card system.” 715 F.3d at 1341
(emphasis omitted). Before the IDT district court, AlexSam
relied on expert testimony that IDT’s systems did not need
to be modified to function with the accused cards, but did
not opine that the point-of-sale devices were not actually
“reprogrammed, customized, or otherwise altered” as
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ALEXSAM, INC. v. SIMON PROPERTY GROUP, L.P. 9
required by the Datastream construction. 715 F.3d at
1341–42. AlexSam’s other expert similarly “testified that
no modifications were ‘necessary’ to allow a standard
[point-of-sale] terminal to read an IDT card.” Id. at 1342.
Ultimately, we reversed the district court’s denial of IDT’s
motion for judgment as a matter of law of non-infringement
because AlexSam failed to present sufficient evidence that
IDT’s accused systems had not been “reprogrammed, cus-
tomized, or otherwise altered with respect to [their] soft-
ware . . . for use in the card system.” Id.
Here, AlexSam’s expert testified that it was “not neces-
sary to inspect the actual [point-of-sale] devices used in the
Simon and Blackhawk systems” to determine that the ac-
cused systems infringed the asserted claims. J.A. 3223
(Zatkovich Supplemental Report ¶ 29). Once more,
AlexSam’s expert “concluded that no modification is re-
quired to the [point-of-sale] Devices for use in the Simon
and Blackhawk systems.” J.A. 3222 (Zatkovich Supple-
mental Report ¶ 26) (emphasis added). This testimony re-
mains insufficient under IDT. We agree with the district
court that AlexSam’s evidence falls short of creating a gen-
uine issue of material fact.
We conclude that the district court did not err in grant-
ing Simon’s and Blackhawk’s motions for summary judg-
ment of non-infringement.
V
The district court correctly applied the stipulated
Datastream claim construction and AlexSam did not pro-
vide sufficient evidence to establish a genuine dispute of
material fact over whether the accused devices were “un-
modified.” We have considered AlexSam’s additional argu-
ments and find them unpersuasive. We affirm.
AFFIRMED