Wednesday, March 12, 2014

CAFC reverses WD Wisconsin in E2Interactive on law of prosecution disclaimer

As to prosecution disclaimer

We agree with Blackhawk that InComm’s statements to distinguish Weber clearly and unmistakably require using the terminal identifier to determine if a terminal is authorized to make the requested transaction.2 The doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (internal citation omitted). For prosecution disclaimer to apply, “our precedent requires that the alleged disavow- ing actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. “[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.” Id. at 1324.

During 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.


In its response to the examiner’s rejection, InComm cited its expert’s declaration and repeated his statements to argue that, unlike Weber, the asserted claims require using the terminal identifier for determining if a terminal is authorized to request a transaction. Using language identical to the expert’s, InComm told the examiner that in Weber “the identity of the particular terminal trans- mitting a transaction request is not relevant to the ulti- mate determination as to whether a particular transaction is authorized, both because Weber only uses terminal identity for purposes of post-transaction reconciliation, and because Weber instead describes transaction authori- zation determinations made on the customer-account level.” J.A. 1245 (citing J.A. 1199) (emphasis added). Again repeating its expert’s statement, InComm also told the examiner that Weber’s determination “has nothing to do with determining whether a requesting terminal identifier is authorized to request the requested transac- tion type . . . .” Id.

Bottom line

We hold that through clear and unmistakable disclaimer, InComm 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 transac- tion. There is no dispute that Blackhawk’s accused product fails to use the terminal identifier when making such a determination. Therefore, we reverse the judg- ment of infringement.

Link for E2Interactive v. Blackhawk:


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