Alexsam Inc V Simon Property Group Lp

Court Listener

Automated Summary

Key Facts

AlexSam, Inc. owns U.S. Patent No. 6,000,608, which discloses a multifunction card system that can be activated at existing standard retail point-of-sale devices. AlexSam sued Simon Property Group, L.P. and Blackhawk Network, Inc. for patent infringement. The district court granted summary judgment of non-infringement, finding the accused point-of-sale devices were not 'unmodified' as required by the claims. The parties stipulated to the Datastream claim construction of 'unmodified existing standard [retail] point-of-sale device,' which means a terminal that has not been reprogrammed, customized, or otherwise altered with respect to its software or hardware for use in the card system. The Federal Circuit affirmed the district court's decision, finding AlexSam failed to provide sufficient evidence that the accused devices were unmodified.

Issues

  • Challenge to the stipulated and long-applied construction of 'unmodified existing standard [retail] point-of-sale device' as used in patent claims. The court addresses whether AlexSam's attempt to broaden the scope of 'unmodified' after stipulating to the Datastream construction is permissible under applicable precedent.
  • Whether AlexSam provided sufficient evidence to establish a genuine dispute of material fact regarding whether the accused point-of-sale devices were 'unmodified' under the Datastream construction, and whether the district court correctly applied this construction in granting summary judgment of non-infringement.

Holdings

The Federal Circuit affirmed the U.S. District Court for the Eastern District of Texas's grant of summary judgment of non-infringement. The court held that the district court correctly applied the stipulated Datastream claim construction of "unmodified existing standard [retail] point-of-sale device" and that AlexSam failed to provide sufficient evidence to establish a genuine dispute of material fact regarding whether the accused point-of-sale devices were actually "unmodified" as required by the patent claims. The court also concluded that AlexSam's challenge to the stipulated construction was waived.

Remedies

The appellate court affirmed the district court's grant of summary judgment of non-infringement to Simon Property Group, L.P. and Blackhawk Network, Inc., holding that AlexSam did not provide sufficient evidence to establish a genuine dispute of material fact regarding whether the accused point-of-sale devices were 'unmodified' under the stipulated claim construction.

Legal Principles

  • Summary judgment is appropriate when, drawing all justifiable inferences in the nonmovant's favor, the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. The court reviews a district court's summary judgment decision under applicable regional circuit precedent.
  • By stipulating to the claim construction that the district court adopted, the parties waived their right to challenge this construction on appeal. The court applies the stipulated Datastream construction of 'unmodified existing standard [retail] point-of-sale device' as a terminal that has not been reprogrammed, customized, or otherwise altered with respect to its software or hardware for use in the card system.
  • To establish patent infringement, the plaintiff must show that the accused systems' point-of-sale devices have not been reprogrammed, customized, or otherwise altered with respect to their software for use in the card system. AlexSam failed to provide sufficient evidence that the accused systems were not actually modified, as the evidence was substantially the same as in prior IDT litigation where infringement was not established.

Precedent Name

  • Digital-Vending Servs. Int'l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270 (Fed. Cir. 2012)
  • AlexSam, Inc. v. IDT Corp., 715 F.3d 1336 (Fed. Cir. 2013)
  • AlexSam, Inc. v. Gap, Inc., 621 F. App'x 983 (Fed. Cir. 2015)
  • Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353 (Fed. Cir. 2016)

Cited Statute

United States Code

Judge Name

  • HUGHES, Circuit Judge
  • PROST, Circuit Judge
  • TARANTO, Circuit Judge

Passage Text

  • We agree with AlexSam that a point-of-sale device can be altered in certain respects while still being 'unmodified' for purposes of infringement. However, the Datastream construction, as it has long been applied, specifies what an 'unmodified [retail] point-of-sale device' is: a point-of-sale device that has not been 'reprogrammed, customized, or otherwise altered with respect to its software or hardware for use in the card system.'
  • The district court concluded there was no genuine dispute of material fact about whether the accused point-of-sale devices were 'unmodified' because AlexSam's evidence was 'substantially the same as that presented in IDT.' AlexSam's expert testified that no modification is 'required' to the devices, but this testimony remains insufficient under IDT because AlexSam failed to present sufficient evidence that the accused systems had not been 'reprogrammed, customized, or otherwise altered with respect to [their] software for use in the card system.'
  • The district court correctly applied the stipulated Datastream claim construction and AlexSam did not provide sufficient evidence to establish a genuine dispute of material fact over whether the accused devices were 'unmodified.' We have considered AlexSam's additional arguments and find them unpersuasive. We affirm.