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

527 F.3d 1300, 86 U.S.P.Q. 2d (BNA) 1769, 2008 U.S. App. LEXIS 9725, 2008 WL 1966704
CourtCourt of Appeals for the Federal Circuit
DecidedMay 7, 2008
Docket2007-1277, 2007-1278, 2007-1308
StatusPublished
Cited by30 cases

This text of 527 F.3d 1300 (Decisioning.com, Inc. v. Federated Department Stores, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Decisioning.com, Inc. v. Federated Department Stores, Inc., 527 F.3d 1300, 86 U.S.P.Q. 2d (BNA) 1769, 2008 U.S. App. LEXIS 9725, 2008 WL 1966704 (Fed. Cir. 2008).

Opinions

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., 494 F.Supp.2d 375 (D.S.C.2007) (“HSBC Summary Judgment Order”); Decisioning.com, Inc. v. Federated Dep’t Stores, Inc., No. 3:03-CV-1924, 2007 WL 951860 (D.S.C. Mar. 28, 2007) (“Federated Summary Judgment Order”); Decisioning.com, Inc. v. TD Ameritrade Holding Corp., 484 F.Supp.2d 426 (D.S.C.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 affírmed-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 ap[1303]*1303plication”). 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 to an “automated financial account processing system.” The '007 patent is the only patent directly relevant to this appeal.

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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 eol.2 11.88— 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 11.7-10.

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 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 [1304]*1304insurance 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” 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, Deci-sioning 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

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527 F.3d 1300, 86 U.S.P.Q. 2d (BNA) 1769, 2008 U.S. App. LEXIS 9725, 2008 WL 1966704, Counsel Stack Legal Research, https://law.counselstack.com/opinion/decisioningcom-inc-v-federated-department-stores-inc-cafc-2008.