E2 Interactive, Inc. and Interactive Communications, Inc. (“InComm”) v. Blackhawk Network, Inc.

Docket No. 2013-1151

March 12, 2014


Brief Summary: DC judgment of infringement finding claims did not require “terminal identifier” to make authorization determination reversed where patentee “unambiguously argued that” it is required during prosecution.

Summary: Blackhawk appealed from DC entry of final judgment of infringement (and about $3.5 million as a reasonably royalty) of InComm’s US 7,578,439 based on construction of the claim term “terminal identifier” and phrase “determining if the requesting terminal is authorized to request the requested transcation type for the stored value card”. The DC concluded that the claims lacked the requirement that “terminal identifier” must be used to determine if the terminal is authorized to make the requested transaction. Blackhawk argued that during reexamination, InComm overcame an obviousness rejection by arguing that the prior art (Weber) did not require the terminal identifier, thereby “clearly and unmistakably” requiring the use of the terminal identifier. InComm argued that “Blackhawk’s proposed construction would exclude disclosed embodiments in which the determining step does not require using the terminal identifier” and that “it did not make an affirmative statement about the scope of the asserted claims” but was instead “explaining that such attributes were in fact not disclosed” by Weber. During reexamination, InComm’s expert stated: “Weber discloses a protocol for request messages that includes terminal ID (‘TID’)…Yet Weber fails to disclose using the TID, or any terminal identifier, as a basis for authorizing a terminal to perform a requested transaction type…Thus, Weber fails to disclose a determination that a requesting terminal is authorized to request the requested transaction type.” InComm repeated this statement in responding to the rejections and argued that “Weber only uses terminal identity for purposes of post-transaction reconciliation” and that “Weber’s determination ‘has nothing to do with determining whether a requesting terminal identifier is authorized to request the requested transaction”. In addition, “the examiner expressly relied on those arguments to confirm the patentability of the asserted claims over”. Thus, the FC panel agreed with Blackhawk because “InComm unambiguously argued that Weber fails to disclose the recited determining step” (citing Omega Eng’g (FC 2003)). As “[t]here is no dispute that Blackhawk’s accused product fails to use the terminal identifier when making such a determination”, the judgment of infringement was reversed.

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