       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
                ______________________

    E2INTERACTIVE, INC., AND INTERACTIVE
   COMMUNICATIONS INTERNATIONAL, INC.,
             Plaintiffs-Appellees,

                           v.

           BLACKHAWK NETWORK, INC.,
                Defendant-Appellant.
               ______________________

                      2013-1151
                ______________________

    Appeal from the United States District Court for the
Western District of Wisconsin in No. 09-CV-0629, Magis-
trate Judge Stephen L. Crocker.
                 ______________________

                Decided: March 12, 2014
                ______________________

    ROBIN L. MCGRATH, Paul Hastings LLP, of Atlanta,
Georgia, argued for plaintiffs-appellees. With her on the
brief was FRANK G. SMITH, III, Alston & Bird LLP, of
Atlanta, Georgia.

    ALAN M. FISCH, Fisch Hoffman Sigler LLP, of Wash-
ington, DC, argued for defendant-appellant. With him on
the brief were JASON F. HOFFMAN, R. WILLIAM SIGLER, and
THOMAS C. CHEN.
                 ______________________
2           E2INTERACTIVE, INC.   v. BLACKHAWK NETWORK, INC.




    Before DYK, MOORE, and WALLACH, Circuit Judges.
MOORE, Circuit Judge.
    Blackhawk Network, Inc. (Blackhawk) appeals from
the district court’s entry of a final judgment of infringe-
ment of U.S. Patent No. 7,578,439 based on the court’s
construction of certain claim terms. Because the court
erroneously construed one of the disputed claim terms, we
reverse the judgment of infringement.
                       BACKGROUND
     The ’439 patent relates to prepaid stored-value cards
(e.g., gift cards). Such cards may be purchased and used
by consumers at point-of-sale terminals operated by third
party retailers. The retailers transmit various possible
transaction requests (e.g., card activation or purchasing
goods) from the terminals to entities that process the
requests. The ’439 patent discloses selective processing of
these transactions by determining whether the requesting
terminal is authorized to make the particular transaction
being requested. See ’439 patent, col. 4 ll. 14–13, col. 5 ll.
48–60.
   Claim 1 is representative of the asserted claims (em-
phases added):
    A computer-implemented method for processing a
    stored-value card transaction request in a card
    data management system having a central proces-
    sor in communication with . . . point-of-sale ter-
    minals . . . , each of the one or more terminals
    having a unique terminal identifier . . . , the
    method comprising:
    receiving the stored-value card transaction re-
       quest from a requesting terminal, . . . the
       transaction request comprising
E2INTERACTIVE, INC.   v. BLACKHAWK NETWORK, INC.          3



      a requesting terminal identifier, . . . ;
   determining if the requesting terminal is author-
     ized to request the requested transaction type for
     the stored value card; . . . .
Asserted claim 19 recites a computer program for per-
forming the steps of claim 1.
    e2Interactive, Inc. and Interactive Communications
International, Inc. (collectively, InComm) sued Black-
hawk, alleging that Blackhawk’s transaction processing
platform infringes the asserted claims. A jury returned a
verdict of infringement and awarded InComm nearly $3.5
million as a reasonable royalty. After the district court
entered a final judgment of infringement in favor of
InComm, Blackhawk filed a motion for relief from the
judgment, arguing that the court’s construction of various
claim terms, including the “determining” step, was erro-
neous. The court denied the motion. E2Interactive, Inc. v.
Blackhawk Network, Inc., No. 09-cv-629-slc (W.D. Wisc.
Oct. 22, 2012), ECF No. 517. Blackhawk appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).
                         DISCUSSION
    Claim construction is an issue of law that we review
de novo. Lighting Ballast Control LLC v. Philips Elecs. N.
Am. Corp., No. 2012-1014, 2014 WL 667499, at *1, *16
(Fed. Cir. Feb. 21, 2014) (en banc). The central issue in
this appeal is whether the asserted claims require using
the recited “terminal identifier” for determining if the
terminal is authorized to make the requested transaction.
The district court concluded that the asserted claims lack
such a requirement. Final Pretrial Conference Order at 3,
E2Interactive, No. 09-cv-629-slc (W.D. Wisc. Feb. 17,
2012), ECF No. 414; Summary Judgment Order at 30,
E2Interactive, No. 09-cv-629-slc (W.D. Wisc. Dec. 13,
2011), ECF No. 258. It considered InComm’s statements
made during reexamination of the ’439 patent (Control
4           E2INTERACTIVE, INC.   v. BLACKHAWK NETWORK, INC.



No. 90/011,070) to overcome the examiner’s determination
that the asserted claims would have been obvious based
in part on U.S. Patent No. 5,812,668 (Weber). Summary
Judgment Order at 26–28. The court concluded, however,
that InComm’s statements did not amount to a clear and
unmistakable disclaimer. Id. at 28.
    Blackhawk argues that the claims require using the
terminal identifier to determine whether a terminal is
authorized to request a particular transaction. 1 It argues
that during reexamination, InComm acknowledged that
Weber discloses a transaction request that includes a
terminal identifier, but overcame the examiner’s rejection
by arguing that Weber fails to disclose using the terminal
identifier as a basis for determining if a terminal is au-
thorized to perform the requested transaction. Black-
hawk argues that InComm’s statements clearly and
unmistakably require using the terminal identifier to
determine terminal authorization.
     InComm responds that the court’s construction is cor-
rect. It argues that the plain language of the asserted
claims simply requires determining terminal authoriza-
tion, without requiring the use of any particular type of
information. InComm argues that Blackhawk’s proposed
construction would exclude disclosed embodiments in
which the determining step does not require using the
terminal identifier. See ’439 patent, col. 4 ll. 13–31, col. 5
ll. 48–60. It argues that the statements it made during
reexamination to distinguish Weber do not amount to a
clear and unmistakable disclaimer because it did not


    1   Blackhawk also challenges the court’s construc-
tion of the “initiating” step and an evidentiary ruling.
Because our holding that the determining step requires
using the terminal identifier is sufficient to reverse the
judgment of infringement, we need not address these
other issues.
E2INTERACTIVE, INC.   v. BLACKHAWK NETWORK, INC.         5



make an affirmative statement about the scope of the
asserted claims. InComm argues that “[r]ather than
constituting commentary on what is required or excluded
by the independent claims, the statements [about Weber]
merely respond to findings by the Examiner that certain
attributes were disclosed in the prior art, by explaining
that such attributes were in fact not disclosed.” Appel-
lees’ Br. at 45.
    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. He stated that “Weber


   2   We base our holding only on the portions of the
reexamination cited in this opinion. We need not decide
whether the other aspects of the prosecution history on
which Blackhawk relies establish a disclaimer.
6           E2INTERACTIVE, INC.   v. BLACKHAWK NETWORK, INC.



discloses a protocol for request messages that includes
terminal ID (‘TID’) . . . . Yet Weber fails to disclose using
the TID, or any terminal identifier, as a basis for authoriz-
ing a terminal to perform a requested transaction type . . . .
Thus, Weber fails to disclose a determination that a
requesting terminal is authorized to request the request-
ed transaction type.” J.A. 1198 (emphasis added); see also
J.A. 1199–1200 (“Weber . . . fails to disclose the use of the
TID as a basis for authorizing a terminal to perform a
transaction type indicated in the request . . . .”). The
expert further clarified that the asserted claims require
using the terminal identifier to determine terminal au-
thorization by arguing that “the identity of the particular
terminal transmitting a transaction requested is not
considered relevant by Weber to the ultimate determina-
tion as to whether a particular transaction is authorized.”
J.A. 1199.
    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. InComm’s argument that Weber did
not render the claims obvious because it does not disclose
E2INTERACTIVE, INC.   v. BLACKHAWK NETWORK, INC.          7



use of the terminal identifier in the determination of
terminal authorization was a disclaimer of claim scope.
The examiner relied on InComm’s arguments to confirm
the patentability of the asserted claims: “the terminal ID
in Weber is not used for transaction authorization and
therefore does not teach making a determination of
whether a uniquely identified terminal is authorized for
the particular transaction type indicated within the
request.” J.A. 1376.
     InComm’s statements clearly and unmistakably indi-
cate that the asserted claims require using the terminal
identifier to determine if a terminal is authorized to make
the requested transaction. InComm repeatedly distin-
guished Weber on this basis. InComm’s characterization
of its statements as mere explanations of Weber’s disclo-
sure that did not address the scope of the asserted claims
is without merit. InComm unambiguously argued that
Weber fails to disclose the recited determining step, and
the examiner expressly relied on those arguments to
confirm the patentability of the asserted claims over
Weber. J.A. 1245, 1376.
    We hold that through clear and unmistakable dis-
claimer, 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.
                        REVERSED
