Addressing the issue of claim elements that are undefined in the specification, the U.S. Court of Appeals for the Federal Circuit relied upon Phillips to support its holding that a "remote interface," as used in the patent, excludes consumer-owned personal computers. Decisioning.com, Inc. v. Federated Department Stores, Inc., Case No. 07-1277 (Fed. Cir., May 7, 2008) (per curiam).
Decisioning's patent covers a system that processes loan or credit card applications automatically to give approvals within minutes. Claim 1 of the patent claims a system comprising a "remote interface," but the term "remote interface was defined nowhere in the specification. The specification did contain, however, a preferred embodiment of the invention, which consisted of a system to automatically process loans using computer equipment housed in a kiosk. The specification taught that all loan processing was done "without human interaction." During prosecution, all embodiments that involved human assistance were deleted, leaving only the kiosk embodiment. Decisioning contended that claim 1 should not be limited to kiosks, but instead a remote interface should encompass other forms of access such as Internet access from personal computers. The district court nevertheless held the term to be limited to kiosk-based terminals. Decisioning appealed.
The Federal Circuit affirmed finding that the term "kiosk" was not only a description of the preferred embodiment, but it was the description of the actual invention. Consequently, the Court read claim 1 in light of the specification and held that a "remote interface" did not include consumer-owned personal computers. Interestingly, the prosecution history showed that the term "kiosk" was originally used in claim 1 instead of "remote interface." The claim was later amended and all references to the term "kiosk" were deleted. The remarks accompanying the amendment stated that the kiosk element was deleted because it was not required for performing the method. The Court found this to mean that the remote interface did not need to be enclosed within a kiosk and rejected Decisioning's assertion that the amendment actually broadened the scope of the claim. The majority acknowledged that in some situations there was a "fine line" between reading a claim in light of a specification and reading a limitation from the specification into the claim but determined that the disclosed senses of "remote interface" in the specification corresponded the use of kiosk in the specification.
In dissent, Judge Linn argued that the term "remote interface" should not be limited to the preferred embodiment of kiosks. He found no support for such a limitation in the prosecution history or the specification or disavowal of non-kiosk based terminals. Furthermore, Judge Linn argued that the majority's construction "violates fundamental tenets of claim construction." According to Judge Linn, because the term "remote interface" is not defined in the prosecution history or in the specification, it should be given its plain and ordinary meaning. Consequently, the remote interface element should include consumer-owned personal computers.
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