Pi-Net International Inc. v. JPMorgan Chase & Co.
MEMORANDUM OPINION re 59 MOTION for Partial Summary Judgment of Indefiniteness. Signed by Judge Richard G. Andrews on 4/7/2014. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PI-NET INTERNATIONAL INC.,
Civil Action No. 12-282-RGA
JPMORGAN CHASE & CO.,
George Pazuniak, Esq. (argued), O'KELLY ERNST & BIELLI, LLC, Wilmington, DE.
Attorney for Plaintiff Pi-Net International Inc.
Jessica Raatz, Esq., SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP, Wilmington, DE;
Douglas R. Nemec, Esq. (argued), SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP,
New York, NY; Edward L. Tulin, Esq., SKADDEN, ARPS, SLATE, MEAGHER & FLOM
LLP, New York, NY; Andrew Gish, Esq., SKADDEN, ARPS, SLATE, MEAGHER & FLOM
LLP, New York, NY.
Attorneys for Defendant JPMorgan Chase & Co.
In March 2012, plaintiff Pi-Net International, Inc. filed patent infringement actions
against Bank of America, N.A., Merrill Lynch, Pierce, Fenner & Smith, Inc., JPMorgan Chase &
Co., UBS Financial Services Inc., Sovereign Bank, N.A., and Citizens Financial Group, Inc.
alleging infringement of U.S. Patent Nos. 5,987,500 (the '"500 patent"), 8,037,158 (the'" 158
patent"), and 8,108,492 (the '" 492 patent"). The defendants sought leave to file the instant
motion for partial summary judgment of indefiniteness, representing to the Court that a favorable
resolution would "drastically reduce the scope of this case" by invalidating 90% of the asserted
claims. (D.I. 45 at 2). Because of the potential for judicial efficiency, the Court granted the
motion. (D.I. 58).
The defendants filed their motion for partial summary judgment on March 5, 2013. (D .I.
59). At issue are five terms found in many of the three patents' asserted claims. These terms
are: 1) "means for transmitting a transaction request from said transactional application," 2)
"means for processing said transaction request," 3) "a computer system executing the Back-end
transactional application for processing the transaction request in real-time," 4) "keeping a
transaction flow captive," and 5) "routed transactional data structure." (D.I. 60 at 1-2).
JPMorgan 1 contends that the first two terms are computer-implemented means-plus-function
terms for which no algorithm is disclosed. (!d.). The third term should be construed as a meansplus-function term, JPMorgan argues, because "computer system" does not connote sufficiently
definite structure to a person having ordinary skill in the art ("PHOSITA"). (Id. at 2). Finally,
JPMorgan asserts that the last two terms are insolubly ambiguous because the patentee did not
The cases against the other defendants are either dismissed or stayed.
define them in the specification or the prosecution history and they do not have a generally
accepted meaning to a PHOSITA. (!d.).
Pi-Net argues that all five terms are definite. Pi-net claims that the first term has a clearly
identified structure in the specification, and no algorithm is required for the second term because
the claimed function can be performed by a general purpose computer without special
programming. (D.I. 66 at 10-13). The third term does not contain the word "means," and Pi-Net
maintains that JPMorgan has failed to overcome the accompanying rebuttable presumption
against applying§ 112, ~ 6 in this situation. (!d. at 14-16). Pi-Net argues that the final two
terms, which were added during the patents' prosecution to overcome prior art, have support in
the specification and prosecution history. (!d. at 16-18). In support of its position on each of the
terms, Pi-Net submitted a declaration from its expert, Dr. Bardash. (D.I. 66-1).
I. LEGAL STANDARD
"The court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter oflaw." FED.
R. CIV. P. 56(a). A "material fact" is one that "could affect the outcome" of the proceeding. See
Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011). The moving party bears the burden of
demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 586 n.10 (1986). The court will "draw all reasonable
inferences in favor ofthe nonmoving party, and it may not make credibility determinations or
weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
If the moving party is able to demonstrate an absence of disputed material facts, the
nonmoving party then "must come forward with 'specific facts showing that there is a genuine
issue for trial."' Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986); see also Matsushita,
475 U.S. at 587. The mere existence of some evidence in support of the nonmoving party,
however, will not be sufficient for denial of a motion for summary judgment. Anderson, 477
U.S. at 249. Rather, the nonmoving party must present enough evidence to enable a jury to
reasonably find for it on that issue. !d. If the nonmoving party fails to make a sufficient
showing on an essential element of its case with respect to which it has the burden of proof, the
moving party is entitled to judgment as a matter oflaw. See Celotex Corp. v. Catrett, 477 U.S.
Indefiniteness is a legal question that must be decided by the Court. Biomedino, LLC v.
Waters Techs. Corp., 490 F.3d 946, 949 (Fed. Cir. 2007) ("A determination that a patent claim is
invalid for failure to meet the definiteness requirement of 35 U.S .C § 112, paragraph 2, is 'a
legal conclusion .... "' (quoting Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of
Westchester, Inc., 336 F.3d 1308, 1318 (Fed. Cir. 2003))). All valid patents must "conclude with
one or more claims particularly pointing out and distinctly claiming the subject matter which the
inventor or a joint inventor regards as the invention." 35 U.S.C. § 112(b) (2012). The principal
justification for the definiteness requirement "is to ensure that the claims are written in such a
way that they give notice to the public of the extent of the legal protection afforded by the patent,
so that interested members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe." All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d
774, 779-80 (Fed. Cir. 2002).
This requirement "does not compel absolute clarity," and "[o]nly claims 'not amenable to
construction' or 'insolubly ambiguous' are indefinite." Datamize, LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1347-48 (Fed. Cir. 2005) ("[W]e also follow the requirement that clear and
convincing evidence be shown to invalidate a patent."). Indeed, a claim will be found
sufficiently definite so long as "one skilled in the art would understand the bounds of the claim
when read in light ofthe specification." Exxon Research & Eng'g Co. v. United States, 265 F.3d
1371, 1375 (Fed. Cir. 2001) ("If the meaning ofthe claim is discernible, even though the task
may be formidable and the conclusion may be one over which reasonable persons will disagree,
we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.").
An additional set of principles governs the determination of definiteness for means-plus-
function terms. The Federal Circuit has recognized a presumption in favor of applying 35 U.S.C.
§ 112, ~ 62 whenever the word "means" is used in the claim language to describe a limitation.
See Net Money!N, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366 (Fed. Cir. 2008) ("A claim element
that contains the word 'means' and recites a function is presumed to be drafted in means-plusfunction format under 35 U.S.C. § 112 ~ 6."). The presumption can be overcome "where the
claim, in addition to the functional language, recites structure sufficient to perform the claimed
function in its entirety." Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003).
In order for there to be sufficient structure, the claim language must specify "the exact structure
that performs the functions in question without need to resort to other portions of the
specification or extrinsic evidence for an adequate understanding of the structure." TriMed, Inc.
v. Stryker Corp., 514 F.3d 1256, 1259-60 (Fed. Cir. 2008).
Once it has been determined that the term is written as a means-plus-function limitation,
courts employ a two-part test to construe the term. First, the court is required to determine the
claimed function. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed.
Cir. 2006). The second step is to "identifY the corresponding structure in the written description
ofthe patent that performs that function." !d. The identified structure is required to "permit one
Now § 112(£).
of ordinary skill in the art to 'know and understand what structure corresponds to the means
limitation.'" Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (quoting
Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007)). Otherwise, the
term is invalid. !d.
In the special case where the corresponding structure of a means-plus-function term is a
computer, the patent must disclose an algorithm for performing the claimed function. "[S]imply
disclosing a computer as the structure designated to perform a particular function" is insufficient
to limit the scope of the claim under§ 112, ~ 6 because "a general purpose computer
programmed to carry out a particular algorithm creates a 'new machine' .... " Aristocrat Techs.
Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) ("[A] general purpose
computer 'in effect becomes a special purpose computer once it is programmed to perform
particular functions pursuant to instructions from program software.'" (quoting WMS Gaming,
Inc. v. Int'l Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999))).
The Federal Circuit carved out an exception to this rule, holding that it is "not necessary
to disclose more structure than the general purpose processor" when the claimed functions "can
be achieved by any general purpose computer without special programming." In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). This exception
is a "narrow" one, and an algorithm need not be disclosed "only in the rare circumstances where
any general-purpose computer without any special programming can perform the function."
Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364-65 (Fed. Cir. 2012).
Examples of functions that can be carried out by a general purpose computer without special
programming include: processing, receiving, and storing. See In re Katz, 639 F.3d at 1316
("Katz has not claimed a specific function performed by a special purpose computer, but has
simply recited the claimed functions of 'processing,' 'receiving,' and 'storing."'). By contrast,
any function that involves "more than merely plugging in a general-purpose computer" requires
special programming. Ergo Licensing, LLC, 673 F.3d at 1365 (finding claim language reciting
function of "controlling the adjusting means" to require special programming).
Several recent decisions have addressed the functional capabilities of a general purpose
computer. The U.S. District Court for the District of Colorado held that a multi-tasking
processing means for "coordinating data transfer" could be accomplished by a general purpose
computer without special programming. EdiSync Sys., Inc. v. Centra Software, Inc., 2012 WL
2196047, at *15-17 (D. Colo. June 15, 2012) ("[T]he functions associated with these terms can
be implemented by a general purpose processor and do not constitute specific computerimplemented functions to which corresponding algorithms must be disclosed."). I previously
held that a general purpose computer without special programming could perform the function of
displaying an icon. United Video Props., Inc. v. Amazon. com, Inc., 2012 WL 2370318, at* 11
(D. Del. June 22, 2012) ("'[D]isplaying' an icon is a common function that can be achieved by
any general purpose computer without special programming."); see also Soft View LLC v. Apple
Inc., 2013 WL 4758195, at *11 (D. Del. Sept. 4, 2013) (finding no algorithm required for the
"processing means" claim element because that function could be achieved by a general purpose
computer without special programming).
A. "means for transmitting" and "means for processing"
JPMorgan has failed to meet its burden of proving that a "means for transmitting" and a
"means for processing" are indefinite computer-implemented means-plus-function terms.
Pursuant to § 112, ~ 6's structure requirement, the patentee must disclose an algorithm for
carrying out the claimed function unless it could be accomplished by a general purpose computer
without special programming-the Katz exception. JPMorgan argues that both3 of these terms
are of the computer-implemented means-plus-function variety. As such, the terms are indefinite
unless a general purpose computer without special programming can perform the claimed
function or an algorithm is disclosed. At this stage, the Court cannot rule out the possibility that
a general purpose computer without special programming could perform the claimed function, or
that an algorithm is disclosed. Therefore, JPMorgan did not prove indefiniteness by clear and
convincing evidence. See Datamize, LLC, 417 F.3d at 1348.
The patents cover a method and apparatus for providing real-time, two way transactions
via the internet. For example, at the time of the invention, internet users could browse their
accounts on the bank's website, but they could not make transactions as if they were interacting
with a live teller at the bank. '500 patent, 7:8-10. The present invention permits the bank4 to
interact in real-time with the internet user; the bank might include in its point of service
application access to checking and savings accounts, which would permit the user to transfer
money from one account to the other in real-time. Id. at 6:40-7:12. Claim one ofthe '500
patent, which is representative and contains both terms, recites:
A configurable value-added network switch for enabling real-time
transactions on a network, said configurable value-added network switch
means for switching to a transactional application in response to a user
specification from a network application, said transactional application providing a
Pi-Net never explicitly agrees that "means for transmitting" is a computer-implemented term. Instead, Pi-Net
contends that it is a regular means-plus-function term with the "Exchange" as the corresponding structure. (D.I. 66
at 10). The "Exchange" is comprised of a web page and a point-of-service (POSvc) application, which is fancy
terminology for an application displayed on a web page. (!d. at 11). The Court is skeptical of Pi-Net's position that
the Exchange, as opposed to a computer or computer program, is the proper structure for this term because the
Exchange exists on either a web server or computer system. See '500 patent, 6: 14-16 (explaining that the Exchange
can reside either on a web server or "on a separate computer system that resides on the Internet").
The computer systems utilized by the bank or other entity with which the user interacts are referred to as "back
office computers" or "back office processes."
user with a plurality of transactional services managed by at least one value-added
network service provider, said value-added network service provider keeping a
transaction flow captive, said plurality of transactional services being performed
interactively and in real time;
means for transmitting a transaction request from said transactional
means for processing said transaction request.
!d., claim 1.
The Court is not convinced that a general purpose computer without special programming
in 19975 was incapable of performing the "processing" and "transmitting" functions. In fact, the
Federal Circuit has explicitly recognized "processing" as a function capable of being performed
by a general purpose computer. In re Katz, 639 F.3d at 1316 ("Absent a possible narrower
construction of the terms 'processing,' 'receiving,' and 'storing,' discussed below, those
functions can be achieved by any general purpose computer without special programming."); see
also SoftView LLC v. Apple Inc., 2013 WL 4758195, at *11 (finding that a general purpose
computer without special programming could perform the "processing means" function). There
is also a claim construction issue regarding the "processing" term. Specifically, what processing
activity by the "back office computers" is required and whether that is included in the term's
scope. At oral argument, Pi-Net's counsel stated that the whole point ofthe invention was to
connect two computer systems to facilitate the real-time transaction, and that the specific
computer systems used by the entity doing the processing were not important. (D.I. 104 at 41-42
("[A] general purpose computer, in this kind of a situation, is perfectly fine, because we are not
trying to change the back office processes. We're letting them stay the way they are. Our point
is only to connect to them, and that is what-this is what [our expert] Dr. Bardash said, again, in
his Declaration.")). Despite the representation that the invention does not cover what the back
1997 is the filing date for the earliest of the three patents at issue.
office computers actually do in responding to the request, the patent claims "a means for
processing said transaction request." Whether the patent can properly claim this without some
disclosure as to the functions and processes that those back office computers perform is a matter
best suited for claim construction. This issue must be decided before summary judgment of
indefiniteness could be granted.
The "transmitting" claim term presents a more difficult issue. In arguing that an
algorithm is required for the "transmitting" function, JPMorgan cites to the Federal Circuit's
recent decision in Function Media, L.L.C. v. Google, Inc. 708 F.3d 1310 (Fed. Cir. 2013). In
Function Media, the Federal Circuit affirmed the district court's finding 6 that the term "means
for transmitting" was indefinite for failure to disclose an algorithm. !d. at 131 7. The patentee
argued that the structure for the "means for transmitting" was computer software and cited
portions of the specification that purported to reference programs that perform the transmission,
including the "PGP." Brief of Plaintiff-Appellant at 25, Function Media, L.L.C. v. Google, Inc.,
708 F.3d 1310 (Fed. Cir. 2013) (No. 2012-1020). In addition, the patentee asserted that a
PHOSITA would be able to write an operative computer program to perform the function based
on the disclosures in the specification. !d. at 26.
The Federal Circuit began by explaining that an algorithm is required when dealing with
a "special purpose computer-implemented means-plus-function limitation." Function Media,
L.L. C., 708 F .3d at 1317-19. The references to the specification are insufficient to support a
finding of definiteness, the Federal Circuit stated, because "[t]hese citations all explain that the
software automatically transmits, but they contain no explanation of how the PGP software
performs the transmission function." !d. at 1318. The court also noted that, "[h]aving failed to
The district court in Function Media construed the claim terms before the Federal Circuit issued the Katz decision.
Function Media, L.L.C. v. Google, Inc., 2009 WL 3260566 (E.D. Tex. Oct. 9, 2009).
provide any disclosure of the structure for the 'transmitting' function, [the patentee] cannot rely
on the knowledge of one skilled in the art to fill in the gaps." !d. at 1319. Therefore, the claim
was held to be indefinite.
The Federal Circuit did not address whether a general purpose computer was insufficient
to perform the claimed function. Neither party cited the Katz case in their briefs to the Federal
Circuit, nor did the patentee argue that a general purpose computer without special programming
would be sufficient to perform the claimed function. See Brief of Plaintiff-Appellant at 22-29,
Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310 (Fed. Cir. 2013) (No. 2012-1020); Brief
for Defendant-Appellee Google, Inc. at 57-62, Function Media, L.L.C. v. Google, Inc., 708 F.3d
1310 (Fed. Cir. 2013) (No. 2012-1 020); Reply Brief of Plaintiff-Appellant at 29-30, Function
Media, L.L.C. v. Google, Inc., 708 F.3d 1310 (Fed. Cir. 2013) (No. 2012-1020). Instead, the
main thrust of the patentee's argument appeared to be that the specification provided sufficient
guidance on how the claimed structure performed the "transmitting" function. Thus, Function
Media did not decide whether "means for transmitting" necessarily required a special purpose
The term at issue in Function Media is nearly identical to the "transmitting" function in
the '500 patent, and the Federal Circuit found that term indefinite for failing to disclose an
algorithm. Despite the apparent strength of JPMorgan's position, however, summary judgment
at this juncture is premature. The Court has not yet held a claim construction hearing to construe
the terms at issue, and, as noted above, Pi-Net contests whether the "transmitting" term is
properly construed as a computer-implemented means-plus-function term. 7 This construction
must be done in order to identifY the function and corresponding structure. Once the function
Pi-Net also has not yet responded to JPMorgan's argument regarding Function Media because that precedent was
first cited in JPMorgan's reply brief.
and structure are decided, the Court will be in a better position to determine whether the
Exchange, or any other disclosed structure, is sufficient to support a finding that the terms are
definite. Thus, an issue of material fact remains that prevents the Court from granting summary
judgment in JPMorgan's favor at this time.
Moreover, even if the Katz exception does not apply to either term, the flow chart in
Figure 8, common to all three patent specifications, might be sufficient to satisfy the algorithm
requirement. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011)
("Precedent and practice permit a patentee to express that procedural algorithm in any
understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any
other manner that provides sufficient structure." (internal quotation marks omitted)). "[T]he
amount of detail that must be included in the specification depends on the subject matter that is
described and its role in the invention as a whole." Id. The requisite level of detail is not
discussed in the current briefing. Although unlikely, it is possible that the flow chart in Figure 8
detailing the steps of the invention constitutes sufficient structure. Id. ("[T]he patent need only
disclose sufficient structure for a person of skill in the field to provide an operative software
program for the specified function."). This would also prevent a finding of indefiniteness.
In summary, JPMorgan argues strenuously that the terms are invalid because the
functions at issue require more than simply plugging in a general purpose computer. In order for
the Court to agree with JPMorgan on this issue, an issue for which JPMorgan carries the burden
ofproofby clear and convincing evidence, an expert opinion comparing the functional
capabilities of a general purpose computer during the relevant time frame with the disputed
functionalities might have been helpful. JPMorgan has not provided any such expert declaration
or affidavit stating that a general purpose computer without special programming would be
unable to perform the "processing" and "transmitting" functions. Based on the current record,
and without the benefit of a claim construction hearing, it is difficult to say that no disputed issue
of material fact exists regarding whether the claimed functions could have been performed by a
general purpose computer without special programming.
B. "a computer system executing the Back-end transactional application for
processing the transaction request in real-time"
The term, "a computer system executing the Back-end transactional application for
processing the transaction request in real-time" is not properly construed as a means-plusfunction term. A claim term that does not contain the word "means" is presumptively not subject
to§ 112 ~ 6. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002).
The presumption "can be overcome if it is demonstrated that 'the claim term fails to recite
sufficiently definite structure or else recites function without reciting sufficient structure for
performing that function."' Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354,
1358 (Fed. Cir. 2004) (quoting CCS Fitness, 288 F.3d at 1369); Mass. Inst. ofTech. & Elecs.for
Imaging, Inc. v. Abacus Software, 462 F .3d 1344, 1354 (Fed. Cir. 2006) ("MIT') ("Claim
language that further defines a generic term like 'mechanism' can sometimes add sufficient
structure to avoid 112 ~ 6.").
This presumption, however, "is a strong one that is not readily overcome." Lighting
World, 382 F.3d at 1358; Flo Healthcare Solutions, LLC v. Kappas, 697 F.3d 1367, 1374 (Fed.
Cir. 2012) ("When the claim drafter has not signaled his intent to invoke§ 112, ~ 6 by using the
term 'means,' we are unwilling to apply that provision without a showing that the limitation
essentially is devoid of anything that can be construed as structure. Thus, we will not apply §
112, ~ 6 if the limitation contains a term that 'is used in common parlance or by persons of skill
in the pertinent art to designate structure."' (internal citations omitted)). Even though a term
might not bring a particular structure to mind, that is not dispositive and the court can look to the
dictionary to see if the term is one that is "understood to describe structure, as opposed to a term
that is simply a nonce word or a verbal construct that is not recognized as the name of structure
and is simply a substitute for the term 'means for."' !d. at 1360; MIT, 462 F.3d at 1354.
JPMorgan asserts that "a computer system executing the Back-end transactional
application for processing the transaction request in real-time" should be governed by§ 112, ~ 6
because the patentee replaced the word "means" with "the equally generic term 'computer
system."' (D.I. 60 at 11). The U.S. District Court for the Northern District of California recently
endorsed this position, albeit in an unreported decision. See Soque Holdings (Bermuda) Ltd. v.
Keyscan, Inc., 201 0 WL 2292316, at *11 (N.D. Cal. June 7, 201 0) (construing "computer
displaying, in response to the scanner sensing a document, a plurality of user-selectable options
for processing image data from said scanner" as a means-plus-function term). In Soque, the
court found that referencing "a 'computer' provides no basis to distinguish the structure from any
other general purpose computer; thus, 'computer' does not adequately describe a specific
structure." !d. at *12. Accordingly, the court determined that the term was properly construed as
a means-plus-function term and that an algorithm must be disclosed. !d. ("[I]f 'computer' is
insufficient structure for a 'means' limitation, the naked term 'computer' cannot describe
sufficient structure when recited directly in the claim limitation. An algorithm of some naturethat discloses how the plurality of user-selectable options is generated-is necessary to save this
claim from indefiniteness.").
In order to reach the requirement to disclose an algorithm, the presumption against
applying§ 112, ~ 6, which by itself is a difficult burden, must first be overcome. See Flo
Healthcare Solutions, LLC, 697 F.3d at 1374; Lighting World, 382 F.3d at 1358. The claim term
here is not "devoid of anything that can be construed as structure" because it recites a "computer
system." Flo Healthcare Solutions, LLC, 697 F.3d at 1374. A computer system is a physical
structure that is sufficient to prevent JPMorgan from rebutting the presumption. Further,
assuming JPMorgan has overcome the strong presumption against applying§ 112, -,r 6 to a claim
term that does not contain the word "means," it is possible that a general purpose computer
without special programming would be able to perform the claimed executing and processing
functions. See Section II.A, supra. If a general purpose computer without special programming
is sufficient, the patentee is not required to disclose an algorithm to maintain validity. See In re
Katz, 639 F .3d at 1316. Therefore, the Court is not convinced that it should invalidate this term,
prior to an actual claim construction hearing, on the grounds that it is an invalid means-plusfunction term.
C. "keeping a transaction flow captive" and "routed transactional data structure"
The Court is not persuaded that "keeping a transaction flow captive" and "routed
transactional data structure" are indefinite. A claim term is only indefinite if it is not amenable
to construction or is insolubly ambiguous. Datamize, LLC, 417 F.3d at 1347. This is true even if
discerning the meaning of a claim term is a formidable task. Exxon Research & Eng 'g Co., 265
F.3d at 1375.
JPMorgan argues that the terms at issue here are indefinite because neither the
specification nor the prosecution history define the terms and they lack a generally understood
meaning in the art. (D.I. 60 at 16). There is no dispute that both terms were added to overcome
a prior art reference, and therefore they are not defined in the specification. (D.I. 66 at 17).
JPMorgan criticizes Dr. Bardash's declaration as insufficient to support his opinion that the
disputed terms possess a generally understood meaning in the art. (D.I. 60 at 17-19). In his
declaration, Dr. Bardash states that the plain claim language, specification, and prosecution
history would allow a PHOSITA to understand each term, and he provides a proposed definition
that is consistent with the PHOSITA's understanding. (D.I. 66-1 at 15-21). Dr. Bardash
supports his position by citing to relevant portions of the specification and prosecution history
for both terms. (!d.). Although it does appear that the link between Dr. Bardash' s cited passages
and his proposed definitions is somewhat tenuous in places, there is no competing declaration or
affidavit from a JPMorgan expert for the Court to rely upon. (!d. (citing a prosecution history
argument focusing on the invention's ability to allow a user to connect to multiple services as
support for his definition of"keeping a transaction flow captive")). Without an opposing expert
to identifY the deficiencies, if any, in Dr. Bardash' s declaration, it is difficult to say that his
opinion regarding a PHOSITA's understanding of the claim language is incorrect. Therefore, the
record currently before the Court is insufficient to support a finding by clear and convincing
evidence that "keeping a transaction flow captive" and "routed transactional data structure" are
For the reasons set forth above, JPMorgan's motion for partial summary judgment is
denied. An appropriate order consistent with this memorandum opinion will follow.
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