In re Transaction Holdings Ltd., LLC, 484 Fed.Appx. 469 (2012)
`
`Affirmed.
`
`West Headnotes (5)
`
`Patents
`Business methods; Internet applications
`Limitations reciting “Internet interface to
`the automated teller machine,” “providing
`Internet access to the consumer via the
`automated teller machine,” and “Internet
`interface to an Internet connection,”
`in
`patents generally directed to method and
`apparatus for providing banking services
`and retail transactions to consumer through
`automated teller machine (ATM) that was
`connected to the Internet, required that ATMs
`have access to retail services publicly available
`over Internet and exclude ATMs that were
`connected only to private networks.
`
`Cases that cite this headnote
`
`Patents
`Business methods; Internet applications
`Patents
`Miscellaneous particular machines and
`mechanical devices
`teller machines
`Competitor's automated
`(ATMs) that were connected only to fully
`private frame relay network, and not to
`Internet, did not literally infringe patents
`generally directed to method and apparatus
`for providing banking services and retail
`transactions to consumer through automated
`teller machine (ATM) that was connected to
`the Internet.
`
`Cases that cite this headnote
`
`Patents
`Business methods; Internet applications
`Competitor's automated
`teller machines
`(ATMs)
`that were connected only
`to
`fully private frame relay network, and
`
`484 Fed.Appx. 469
`This case was not selected for
`publication in West's Federal Reporter.
`See Fed. Rule of Appellate Procedure 32.1
`generally governing citation of judicial
`decisions issued on or after Jan. 1, 2007.
`See also U.S.Ct. of App. Fed. Cir. Rule 32.1.
`United States Court of Appeals,
`Federal Circuit.
`
`In re TRANSACTION HOLDINGS LTD., LLC.
`Automated Transactions, LLC, Plaintiff–Appellant,
`v.
`IYG Holding Co., 7–Eleven, Inc., VCOM
`Financial Services, Inc., and Cardtronics
`USA, Inc., Defendants–Appellees.
`
`Nos. 2011–1361, 2011–1492.
`|
`April 23, 2012.
`|
`Rehearing and Rehearing En
`Banc Denied July 2, 2012.
`
`Synopsis
`Background: Patentee brought action against competitors,
`alleging infringement of patents directed to systems and
`methods for enabling user to complete retail transaction
`over Internet. The United States District Court for
`the District of Delaware, Sue L. Robinson, J., 768
`F.Supp.2d 727, granted summary judgment of invalidity
`and noninfringement. Patentee appealed.
`
`[1]
`
`[2]
`
`Holdings: The Court of Appeals, Bryson, Circuit Judge,
`held that:
`
`[1] limitations required that automated teller machines
`(ATMs) have access to retail services publicly available
`over Internet and exclude ATMs that were connected only
`to private networks;
`
`[2] accused ATMs that were connected only to fully
`private frame relay network, and not to Internet, did not
`literally infringe patents; and
`
`[3]
`
`[3] accused ATMs did not infringe patents under
`equivalents doctrine.
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
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`
`CATERPILLAR EXHIBIT 1049
`CATERPILLAR v. WIRTGEN
`IPR2018-01091
`
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`

`

`In re Transaction Holdings Ltd., LLC, 484 Fed.Appx. 469 (2012)
`
`not to Internet, did not infringe patents
`under equivalents doctrine that generally
`were directed to method and apparatus
`for providing banking services and retail
`transactions to consumer through automated
`teller machine (ATM) that was connected
`to
`the Internet; accused products did
`not practice close equivalent of disputed
`limitation because connection to private
`network was substantially different from
`connection to Internet and private networks
`and Internet differed dramatically with
`respect to considerations such as security and
`simplicity of remote access.
`
`Donald R. Dunner, Finnegan, Henderson, Farabow,
`of Washington, DC, argued for defendants-appellees in
`appeal no.2011–1492. With him on the brief were Kara F.
`Stoll and Garth D. Baer.
`
`Lynne E. Pettigrew, Associate Solicitor, United States
`Patent & Trademark Office, of Alexandria, VA, argued
`for appellee in appeal no. 2011–1361 With her on the brief
`were Raymond T. Chen, Solicitor and Frances M. Lynch,
`Associate Solicitor.
`
`Before BRYSON, SCHALL, and PROST, Circuit Judges.
`
`Opinion
`
`[4]
`
`[5]
`
`1 Cases that cite this headnote
`
`BRYSON, Circuit Judge.
`
`Patents
`In general; utility
`US Patent 5,781,632. Cited as Prior Art.
`
`Cases that cite this headnote
`
`**1 These two related cases were argued together, and
`we address them together. Automated Transactions, LLC,
`the appellant in the first case, No.2011–1361, is related
`to Transaction Holdings Ltd., LLC, the appellant in the
`second case, No.2011–1492. We refer to them collectively
`as “ATL.”
`
`Patents
`In general; utility
`US Patent 6,945,457. Invalid and Not
`Infringed.
`
`Cases that cite this headnote
`
`In 2006, ATL sued IYG Holding Co., 7–Eleven, Inc., and
`others for infringement of U.S. Patent No. 6,945,457 (“the
`′457 patent”). NCR Corp., which is indemnifying the
`defendants, then sought reexamination of the ′457 patent.
`The infringement case was stayed pending the outcome of
`the reexamination.
`
`*470 Appeal from the United States Patent and
`Trademark Office, Board of Patent Appeals and
`Interferences. Reexamination No. 90/008,323.
`Appeal from the United States District Court for the
`District of Delaware, in Case No. 06–CV–0043, Sue L.
`Robinson, Judge.
`
`Attorneys and Law Firms
`
`Albert L. Jacobs, Jr., Tannenbaum Helpern Syracuse,
`of New York, NY, argued for appellant and plaintiff-
`appellant in appeals 2011–1361 and 2011–1492. With him
`on the brief was Gerard F. Diebner. Of counsel on the brief
`was Daniel A. Ladow, Troutman Sanders LLP, of New
`York, NY.
`
`The reexamination proceeding ended with the Board
`of Patent Appeals and Interferences affirming a patent
`examiner's rejection of seven of the claims of the ′457
`patent. In case No.2011–1361, ATL has appealed the
`Board's order, arguing that the Board erred in finding that
`the claims would have been obvious in light of the prior
`art.
`
`While the district court's stay was in effect, ATL
`obtained a number of additional patents that claimed
`priority to the same parent application as the ′457
`patent. When the stay was lifted, ATL filed an amended
`complaint adding four of the patents obtained during
`the stay to the previously asserted claims of the ′457
`patent. The district court subsequently granted summary
`judgment of noninfringement. The court ruled that
`the accused products—certain Vcom automated teller
`machines (“ATMs”)—did not infringe the asserted claims
`of any of the five patents at issue. The court also ruled that
`
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`In re Transaction Holdings Ltd., LLC, 484 Fed.Appx. 469 (2012)
`
`several asserted claims of the ′457 patent were invalid for
`indefiniteness. In case No.2011–1492, ATL has appealed
`from that judgment, arguing that (1) the district court
`erroneously construed several claim terms, (2) the court
`erred in finding that the accused products do not infringe
`the asserted claims, and (3) the court erred in determining
`that several claims of the ′457 patent are indefinite.
`
`in finding that the asserted claims of the ′ 457 patent
`would have been obvious in light of the prior art. Subrizi
`is a November 1994 article that discussed problems with
`ATMs of that era and proposed a new prototype ATM.
`Odom teaches the use of encryption to send secure data
`over the Internet for the purpose of completing financial
`transactions.
`
`*471 I
`
`The patents at issue are generally directed to a method
`and apparatus for providing banking services and retail
`transactions to a consumer through an ATM that is
`connected to the Internet. The five patents share the same
`specification and have very similar claims. Independent
`claims 1 and 9 of the ′457 patent are representative of the
`asserted claims. Claim 1 recites as follows:
`
`Integrated banking and transaction apparatus for use
`by a consumer, comprising:
`
`an automated teller machine; and
`
`means for providing a retail transaction to the consumer
`through an Internet interface to the automated teller
`machine.
`
`Claim 9 recites as follows:
`
`A method of providing banking services and
`transaction capability to a consumer in a single
`automated transaction machine, comprising the steps
`of:
`
`providing automated teller machine access to the
`consumer via the automated transaction machine; and
`
`providing Internet access to the consumer via the
`automated transaction machine and realizing a retail
`transaction.
`
`II
`
`**2 We first address the ′457 reexamination. The Board
`found that claims 1, 2, 5, 9, 10, and 14 would have been
`obvious over an article by Subrizi, et al., in view of U.S.
`Patent No. 5,781,632 (“Odom”), and that claim 3 would
`have been obvious over Subrizi in view of Odom and a
`U.S. patent to Mos. 1 ATL argues that the Board erred
`
`In its decision affirming the examiner's obviousness
`rejections, the Board found that Subrizi taught the use of
`an ATM over “the information superhighway” to perform
`retail transactions. The Board further found that while the
`Internet and the information superhighway might have
`been regarded as different entities at the time, they would
`have been seen as obvious alternatives to one another,
`especially in light of Odom's teaching that the Internet had
`become the information superhighway of choice. Those
`findings are supported by substantial evidence.
`
`Although Subrizi focuses principally on a redesigned user
`interface for ATMs, it also teaches that the described
`redesigned ATMs could allow customers to interact with
`“utility companies, credit card companies, and third
`party brokerage houses,” as well as “support other
`nontraditional activities such as bill payment, purchase
`of airline tickets, travel reservations, and brokerage
`transactions.” Subrizi also notes that the interface
`could be ported to non-traditional ATMs, and “the
`idea of a branded virtual banking space that can be
`accessed from a variety of information ‘ports' recasts
`the traditional ATM as just one public-access window
`into a ubiquitous financial network, an endless lattice of
`financial and other services that will eventually be part
`of the information superhighway.” Odom addresses how
`to use encryption to send secure data over the *472
`Internet. In the “Background of the Invention” section,
`Odom states: “Through the years, the Internet has become
`the information ‘superhighway’ of choice for an ever
`increasing number of individuals who have turned to it
`as an inexpensive way of transmitting electronic messages
`and other information.”
`
`ATL's argument that the Board's findings are not
`supported by substantial evidence
`is unpersuasive.
`ATL disputes the effectiveness of Odom for securing
`transactions, but it has not put forward any evidence
`that persons of ordinary skill would have doubted
`Odom's teachings. ATL also argues that, at the time,
`a person having ordinary skill in the art would have
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`In re Transaction Holdings Ltd., LLC, 484 Fed.Appx. 469 (2012)
`
`viewed the Internet and the information superhighway as
`competitors. The evidence that ATL relies on, however, is
`not helpful to it. ATL cites an article by Vizard, but that
`article notes that “[t]he data highway model everyone is
`looking at is a confederation of computer networks called
`the Internet.” According to Vizard, services to access the
`Internet could be “just another lane on the information
`highway.” ATL also relies on an article by Besser, which
`states that the Internet and the information superhighway
`are “in many ways diametrically opposed models.” But
`the article acknowledges that it was widely believed that
`“the Information SuperHighway will just be a faster,
`more powerful version of the Internet.” That statement
`supports the conclusion that a person having ordinary
`skill in the art would have considered the Internet as at
`least an alternative to the information superhighway.
`
`**3 ATL also points to evidence that at the time
`the patent application was filed, the Internet was
`slow and difficult to search. But that evidence is not
`particularly relevant; the claimed ATMs would not need
`high bandwidth because ATMs transmit relatively small
`amounts of data, and the ATMs would not need efficient
`search capabilities because they would already have the
`addresses of the services to which they would need access.
`As for ATL's reliance on its expert's declarations, even he
`admitted that “a person of ordinary skill in the art on May
`10, 1996 would have understood the phrase ‘Information
`Superhighway’ to include the Internet....” Accordingly,
`none of the evidence relied on by ATL calls into question
`the Board's determinations, particularly in light of the
`deferential “substantial evidence” standard that applies to
`its factual findings.
`
`ATL attempts to overcome the obviousness rejection
`by reference to secondary considerations, including
`commercial success. In support of its argument that the
`claimed invention has been commercially successful, ATL
`points to the success of certain Vcom ATMs, which are
`the same products that ATL accused of infringing its
`patents in the related district court litigation. The Board
`noted that “no evidence of a court finding of infringement
`has been proffered,” and in appeal No.2011–1492, we
`are upholding the district court's determination that the
`accused Vcom ATMs do not infringe the ′457 patent.
`Because the Vcom ATMs are not embodiments of the
`claimed invention, their success cannot be attributed to
`the ′457 patent. See, e.g., In re DBC, 545 F.3d 1373, 1384
`(Fed.Cir.2008). Moreover, the Board found that ATL had
`
`failed to show that the commercial success of the Vcom
`products was due to their appropriation of the invention
`rather than to factors such as marketing and advertising,
`co-branding based on placement of the products in 7–
`Eleven stores, and incentives such as the waiver of certain
`fees. ATL has not seriously challenged those findings on
`appeal. Accordingly, we affirm the Board's determination
`that claims 1–3, 5, 9, 10 and 14 of *473 the ′457 patent
`would have been obvious in light of the prior art.
`
`III
`
`In its appeal from the adverse judgment of the district
`court, ATL argues that the district court misconstrued the
`terms “Internet” and “Internet interface,” that the court
`erred in granting summary judgment of noninfringement,
`and that the court erred in determining that several claims
`of the ′457 patent are invalid for indefiniteness.
`
`A
`
`[1]
` ATL first contends that the district court adopted an
`incorrect definition of the term “Internet.” The district
`court construed “Internet” to mean “a public network
`that is logically linked together by a globally unique
`address space.” ATL argues that the court should have
`construed the term to include private networks. The term
`“Internet” is not used by itself in any of the claims,
`however. Instead, the pertinent claim terms in the patents
`at issue are “Internet interface,” “Internet access,” and
`“Internet connection,” so we address the meaning of those
`terms, not the term “Internet” standing alone.
`
`**4 The plain language of the claims and the supporting
`evidence makes clear that the limitations reciting “an
`Internet interface to the automated teller machine,”
`“providing Internet access to the consumer via the
`automated teller machine,” and “an Internet interface to
`an Internet connection,” require that the customer be able
`to use the ATM to access services available through the
`Internet. The claims envisage an ATM having Internet
`access (through an Internet interface) that the customer
`can use to conduct both banking and other transactions,
`such as retail transactions. Thus, regardless of whether
`the Internet is defined to include private as well as public
`networks, it is clear from the references to the Internet
`interface and Internet access that the claims do not read on
`
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`In re Transaction Holdings Ltd., LLC, 484 Fed.Appx. 469 (2012)
`
`ATMs that are connected only to a private network and
`not to the Internet. The common specification confirms
`that point. It provides that “[t]he key to the invention is
`the multiple functioning of the terminal as compared to
`primarily single purpose devices of the prior art.” ′457
`patent, col. 5, ll. 37–40. The “multiple functioning” refers
`to a host of services that the invention contemplated
`the ATM would be able to provide by virtue of its
`Internet access, such as “insurance services, restaurant
`services, travel services, ... floral delivery services, ...
`news services, transportation services, utility services,
`physician services,” and many more. Id. at col. 3, ll. 31–36.
`Moreover, the inventor's deposition testimony indicates
`that he contemplated that customers could use the ATMs'
`Internet access to perform such functions as browsing the
`Web and checking e-mail.
`
`The district court defined “Internet interface” to mean
`“Internet access” and interpreted the two terms to require
`that the ATM actually have an Internet connection. That
`construction is entirely consistent with the intrinsic record.
`During prosecution, the inventor used the term “Internet
`interface” interchangeably with “Internet connection”
`and “Internet access.” And in distinguishing the claims
`containing the “Internet interface” (or “Internet access”)
`limitation from a prior art reference, the inventor argued
`that the reference in question “does not teach or suggest
`the use of an ATM with an Internet connection to
`conduct retail transactions,” and that in the prior art
`device, a customer “never utilizes an Internet connection
`to realize a retail transaction.” During the reexamination,
`ATL also equated “Internet interface” with an Internet
`*474 connection or Internet access. In distinguishing
`a claim with the “Internet interface” limitation from
`prior art references, ATL argued that one reference “does
`not teach giving users access to the Internet through
`the automated teller machine,” that another reference
`contains “no suggestion that an ATM machine connected
`to the Internet would allow renewal of one's driver's
`license,” and that “nowhere is there any suggestion that
`a device like an ATM can have its functions expanded
`to include a multitude of non-banking related retail
`functions by being connected to the Internet.” In short,
`the district court's construction of the term “Internet
`interface” is entirely sensible, and we uphold it. Moreover,
`although the district court did not expressly construe the
`terms “Internet access” and “Internet connection,” we
`hold that those terms likewise require that the ATMs have
`access to retail services publicly available over the Internet
`
`and exclude ATMs that are connected only to private
`networks.
`
`B
`
`[2]
`**5
` ATL argues that, even under the claim
`construction adopted by the district court, summary
`judgment of noninfringement was
`improper. ATL
`contends that the accused Vcom ATMs infringe the
`various patents in suit, either literally or under the doctrine
`of equivalents.
`
`It appears to be undisputed that the Vcom ATMs
`themselves are not connected to the Internet and cannot
`be accessed over the Internet. The defendants provided
`unrebutted testimony that the Vcom ATMs conduct
`transactions over a fully private frame relay network,
`and ATL's expert seemed to acknowledge that the Vcom
`ATMs are unable to browse the Web or do other tasks
`typically associated with Internet access. Although it is
`true that something can be connected to the Internet and
`not have Web access (for example, because it does not
`have a Web browser installed), the unrebutted evidence
`shows that the ATMs themselves are connected only to a
`fully private frame relay network and not to the Internet.
`
`ATL acknowledges that the Vcom ATMs are on a
`private network, but it argues that a private network can
`still “be on the internet so long as the network has at
`least one publically facing address space.” The evidence
`shows that the Vcom ATMs use a “Postilion server”
`to communicate over a private “Cardtronics” network,
`and that users cannot cause data to be sent to any
`computer on any network other than to the Postilion
`server on the Cardtronics network. ATL argues that the
`“Vcom system” is connected to the Internet through the
`“public IP address” of the Postilion server and other
`devices that are connected to the Vcom ATMs. The
`evidence that various segments of the Vcom system have
`IP addresses does not help ATL, however, because the
`unrebutted evidence shows that the accused Vcom ATMs
`themselves are on a private network, are not connected
`to the Internet, and do not have public IP addresses.
`The evidence further shows that even customer service
`employees cannot access the ATMs remotely; they can
`access certain information from the Cardtronics network
`only over a secure VPN, which can receive limited data
`from the network. Thus, a customer service employee's
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`In re Transaction Holdings Ltd., LLC, 484 Fed.Appx. 469 (2012)
`
`computer cannot access any of the Vcom ATMs, and
`the Vcom ATMs cannot access the customer service
`employee's computer.
`
`ATL argues that the accused Vcom ATMs necessarily
`provide Internet access or have an Internet interface
`because ATL's expert was able to “ping” the “Vcom
`system,” i.e., to obtain a response from the Vcom system
`by sending a message to that system over the Internet.
`*475 ATL also argues that because hackers in Russia
`were able to hack into the Vcom system by using the
`Internet, Vcom ATMs must have an Internet interface and
`be capable of Internet access.
`
`That evidence does not show that the Vcom ATMs
`infringe the asserted claims. The fact that ATL's expert
`was able to ping Vcom's system, as opposed to Vcom
`ATMs, is meaningless. It shows that some element of the
`Vcom system is on the Internet, but it does not show that
`any individual ATM is on the Internet, which is what the
`asserted claims require.
`
`**6 Similarly, the news article introduced by ATL to
`show that the Vcom system had been hacked from an
`outside source in Russia does not prove that the Vcom
`ATMs are on the Internet. The article is not specific about
`the nature of the incursion, and it does not state that
`a Vcom ATM was hacked remotely over the Internet.
`Instead, it suggests that the hackers gained access to
`7–Eleven's servers through 7–Eleven's public web page,
`where they stole information and used it to create fake
`ATM cards. To actually obtain money from the Vcom
`ATMs, the hackers had to go to an ATM, insert a card,
`and withdraw cash. The article does not say that the
`hackers succeeded in accessing the Vcom ATMs remotely.
`Therefore, even assuming the article to be accurate, it does
`not support ATL's theory of the case.
`
`While ATL's evidence suggests that some element of the
`Vcom system may be on the Internet, ATL has not
`produced any evidence showing that the accused Vcom
`ATMs themselves are on the Internet. The defendants
`have provided substantial, unrebutted evidence that the
`accused Vcom ATMs are not on the Internet, and that
`a customer cannot use a Vcom ATM to send data
`to, or receive data from, any computer outside the
`private dedicated frame relay network that connects the
`Vcom ATMs with the Postilion server. Since the asserted
`claims of all five patents require an Internet interface,
`
`an Internet connection, or Internet access, ATL has
`not pointed to a genuine issue of material fact as to
`whether the accused products literally infringe the asserted
`claims. Accordingly, summary judgment in favor of the
`defendants was appropriate.
`
`[3]
` ATL is no more successful in arguing that the accused
`Vcom ATMs infringe under the doctrine of equivalents.
`The “all limitations rule” restricts the doctrine of
`equivalents by preventing its application when doing
`so would vitiate a claim limitation. Carnegie Mellon
`Univ. v. Hoffmann–La Roche Inc., 541 F.3d 1115, 1129
`(Fed.Cir.2008). “In determining whether a finding of
`infringement under the doctrine of equivalents would
`vitiate a claim limitation, we must consider the totality
`of the circumstances of each case and determine whether
`the alleged equivalent can be fairly characterized as an
`insubstantial change from the claimed subject matter
`without rendering the pertinent limitation meaningless.”
`Id.
`
`Here, the claims expressly require a connection to the
`Internet. Omitting that limitation while asserting the
`doctrine of equivalents would violate the “all limitations
`rule.” Moreover, this is not a case in which the
`accused products practice a close equivalent of the
`disputed limitation. A connection to a private network is
`substantially different from a connection to the Internet.
`As relevant to this appeal, most of the varied services
`contemplated by the patent would be unavailable to the
`ATM if it were connected only to a private network.
`Private networks and the Internet also differ dramatically
`with respect to considerations such as security and
`simplicity of remote access. Accordingly, private networks
`and the Internet are not *476 equivalents for the
`purposes of the patents at issue. The district court
`therefore correctly held that the accused Vcom ATMs
`do not infringe the asserted claims under the doctrine of
`equivalents.
`
`C
`
`**7 The final issue presented by this appeal is whether
`the district court correctly determined that claims 1–3 and
`5 of the ′457 patent are invalid for indefiniteness. In light
`of our decision sustaining the Board's order affirming the
`examiner's rejection of the asserted claims of the ′457
`patent (including claims 1–3 and 5) for obviousness, we
`
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`In re Transaction Holdings Ltd., LLC, 484 Fed.Appx. 469 (2012)
`
`need not reach the issue of indefiniteness. Accordingly, we
`do not address the invalidity portion of the district court's
`summary judgment in this case.
`
`All Citations
`
`AFFIRMED.
`
`484 Fed.Appx. 469, 2012 WL 1392647
`
`Footnotes
`1
`ATL has not separately addressed the rejection of claim 3, so that claim stands or falls with the other claims.
`
`End of Document
`
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