CAFC Judges Split on Indefiniteness Analysis for Identity Theft Patent

The U.S. Courtroom of Appeals for the Federal Circuit (CAFC) today held that sure claims of a patent for a system to guard in opposition to identification theft and fraud had been invalid for indefiniteness. Choose Schall dissented-in-part, explaining that he wouldn’t have discovered the claims indefinite based mostly on the intrinsic proof.

U.S. Patent No. 9,361,658 is owned by Mantissa Company and is titled “System and Methodology for Enhanced Safety and Management Over the Use of Id.” Mantissa sued First Monetary Company and First Monetary Financial institution, N.A. within the U.S. District Courtroom for the Northern District of Illinois, alleging infringement of sure claims.

The events primarily disputed two phrases throughout declare building: (1) “transaction accomplice” and (2) “OFF.” The district courtroom relied on First Monetary’s professional testimony to conclude that “transaction accomplice” was indefinite, after discovering that the professional used was an individual of extraordinary ability within the artwork (POSA). Mantissa argued that the professional didn’t have “a minimum of three years of expertise within the area of methods for processing and authorizing transactions in a monetary account over a pc community,” and subsequently was not a POSA. Whereas each events spent quite a lot of time arguing about whether or not the professional was or was not a POSA, the CAFC majority held that it was not essential to resolve that disagreement as a result of the difficulty of indefiniteness could possibly be resolved on the intrinsic proof alone.

Turning to the intrinsic proof then, the CAFC held that “[h]ere the intrinsic proof establishes that the claims are indefinite.” The courtroom defined that the time period “transaction accomplice” doesn’t seem in both the specification or “within the claims or specification in U.S. Software No. 11/115,239, the applying to which the ’658 patent claims precedence.” As an alternative, “the time period first appeared in a preliminary modification filed virtually 9 years later,” mentioned the courtroom, and neither that modification nor exchanges between the patent examiner and the applicant handled the that means of “transaction accomplice.” There isn’t any generally accepted definition of time period, both.

Mantissa argued {that a} POSA would know {that a} “transaction accomplice” means a vendor, however the CAFC majority mentioned that, whereas that  building “might make sense in some contexts, resembling if the consumer is a bank card firm looking for permission from a service supplier for a transaction accomplice to entry a monetary account maintained by the bank card firm and the transaction accomplice is a vendor looking for to course of a cost to a person’s bank card account,” the claims and specification will not be restricted in such a approach. “Given how broadly the specification defines customers and transactions, the intrinsic proof doesn’t assist construing ‘transaction accomplice’ to imply ‘vendor,’” wrote the courtroom. The CAFC additional discovered that Mantissa’s alternately proposed building of “transaction accomplice” to imply “a celebration to a transaction” solely made the issue worse.

As to the development of the time period “OFF,” the courtroom held that it didn’t have jurisdiction to evaluate that building as a result of the district courtroom’s determination “didn’t relaxation on any such willpower.” The events requested the courtroom to deal with the development of “OFF” as a result of the time period is “pending declare building underneath the identical patent-in-suit in a minimum of three parallel litigations,” and Mantissa agreed “to be certain by the declare building on the 2 overlapping phrases/phrases in” this case, however the CAFC mentioned “We’ve got refrained, and are certainly prohibited, from issuing opinions in such circumstances.” The courtroom cited to Personalized User Model, LLP v. Google Inc., to assist this conclusion, which mentioned that “…we might not present an advisory opinion on the that means of a declare time period that doesn’t have an effect on the deserves of this attraction and thus will not be correctly earlier than us.”

Choose Schall dissented-in-part, arguing that the specification and claims do reveal the that means of “transaction accomplice.” Whereas he disagreed with Mantissa’s building of “vendor,” he mentioned that in his view, the right building is “social gathering to a transaction.” Whereas the bulk discovered the “specification supplies ‘a number of events to every transaction,’ i.e., the consumer, the identification proprietor, the service supplier, or a 3rd social gathering, any one in all which could possibly be a ‘social gathering to a transaction,’” Schall mentioned “the declare language clarifies {that a} ‘transaction accomplice’ is one thing or somebody that might enter right into a transaction utilizing the monetary account, authorization for using which have to be obtained, and wouldn’t be the service supplier, entity, or monetary account proprietor.” A POSA might would thus learn of the scope of the invention with cheap certainty, mentioned Schall. He did, nonetheless, concur with the bulk’s holding that it lacked jurisdiction to think about the development of “OFF.”