## Facts

- Interactive Gift Express, Inc. (IGE) owned U.S. Patent No. 4,528,643 (the Freeny patent) covering systems that reproduce selected information onto “material objects” at “point-of-sale locations” using an information manufacturing machine (IMM).
- The patented model contemplated reproducing information onto a customer-selected medium at the site of purchase rather than centrally manufacturing and shipping finished media to retailers.
- CompuServe and other defendants provided online distribution systems that delivered information to consumers by downloading it to the consumer’s computer or storage device, often at the consumer’s home, without requiring purchase of a physical medium such as a CD-ROM.
- In the district court, IGE submitted a binding claim-construction report defining “point-of-sale location” as “a location where a consumer goes to purchase material objects embodying predetermined or preselected information.”
- The district court largely adopted IGE’s definition but added that a “point-of-sale location” could not be the consumer’s home and construed four other claim terms in ways unfavorable to IGE.
- Based on those constructions, IGE stipulated to noninfringement, and the district court entered judgment for defendants.
- IGE appealed the constructions of five claim terms; defendants argued IGE waived broader constructions or was judicially estopped by its earlier positions and stipulation.

## Issues

1. Whether “point-of-sale location,” construed in view of the intrinsic record, categorically excludes a consumer’s home.
2. Whether the district court erred as a matter of law in construing four additional disputed claim terms that formed the basis for the stipulated noninfringement judgment.
3. Whether waiver or judicial estoppel barred IGE from challenging claim constructions on appeal given its binding claim-construction submission and litigation positions.

## Decision

- The Federal Circuit held the district court erred as a matter of law in construing each of the five disputed claim terms that led to IGE’s noninfringement stipulation.
- On “point-of-sale location,” the court rejected a categorical exclusion of the consumer’s home where neither the claims nor the specification required that limitation; under the adopted definition, a consumer’s home could qualify.
- The court recognized waiver and judicial estoppel doctrines and noted IGE’s binding positions, but concluded those doctrines did not change the result.
- The Federal Circuit vacated the judgment of noninfringement and remanded for further proceedings under the corrected constructions.

## Legal Principles

- Claim construction is a legal question reviewed on appeal, grounded primarily in intrinsic evidence: claim language, specification, and prosecution history; extrinsic evidence is secondary.
- Courts may not import limitations into claim terms that are not compelled by the claim language or the specification.
- A party’s litigation positions may constrain arguments through waiver or judicial estoppel, but those doctrines do not justify affirming claim constructions that add non-textual limitations unsupported by the intrinsic record.
- When a noninfringement judgment is entered based on a stipulation expressly dependent on particular claim constructions, reversal of those constructions warrants vacatur of the stipulated judgment and remand.

## Conclusion

The Federal Circuit vacated a stipulated noninfringement judgment after concluding the district court materially misconstrued multiple claim terms, including by improperly excluding the consumer’s home from “point-of-sale location,” and remanded for further proceedings under corrected constructions.


Interactive Gift Express, Inc. v. CompuServe, Inc., 256 F.3d 1323 (Fed. Cir. 2001)