Every Penny Counts, Inc. v. Wells Fargo Bank, N.A.

Filing 96

CLAIM CONSTRUCTION ORDER. Signed by Judge Steven D. Merryday on 3/18/2014. (BK)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
EVERY PENNY COUNTS, INC.,
Plaintiff,
v.

CASE NO.: 8:11-cv-2826-T-23TBM

WELLS FARGO BANK, N.A.,
Defendant.
____________________________________/
ORDER
Every Penny Counts (EPC) sues (Doc. 16) Wells Fargo for infringing U.S.
Patents 7,571,849 and 8,025,217. The patents are quite similar, and each describes –
through long sections of identical text – a system of automated saving or automated
charitable giving. For example, the dollars and cents amount of a purchase by a bank
customer with a credit card is “rounded up” to the next dollar, and the difference
between the dollars and cents amount of the purchase and the dollar to which the
amount is “rounded up” is withdrawn from the bank account of the bank customer
(“the customer account”) and deposited into a recipient account (“the provider
account”) for personal saving or charitable giving. Disputing the meaning of several
terms, the parties submit Markman briefs. (Docs. 58, 59, 63, 64)
CLAIM CONSTRUCTION
1. ‘849 Patent – “Rounder Amount”
Wells Fargo defines “rounder amount” as the “amount of excess funds
produced through rounding, i.e., produced by applying a rounder function to a

transaction amount and then subtracting the coin amount1 of the transaction amount
from the result.” (Doc. 59 at 5-6 (footnote added)) EPC defines “rounder amount”
as the “amount of excess payment produced by applying the determinant2 to the
account entry.” (Doc. 63 at 3, 9 (footnote added)) “The parties agree that ‘rounder
amount’ is ‘excess funds’ or ‘excess payment,’ but [the parties] dispute whether a
‘rounder amount’ is produced through [only] rounding, as Wells Fargo contends, or
whether ‘rounder amount’ does not [necessarily] involve rounding, as EPC
contends.” (Doc. 59 at 6; accord Doc. 63 at 3)
“[T]he words of a claim are generally given their ordinary and customary
meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal
quotation marks omitted). Wells Fargo argues, convincingly and without objection,
that the ordinary and customary meaning of “rounder amount” entails rounding.
EPC argues that the patent expands the concept of rounding to include, not just
“conventional” rounding, but an additur (i.e., “a fixed dollar amount [that] is added
such as $1 or $2”) and a percentage of the transaction amount (i.e., “where the
amount added is a percentage of the transaction amount”). (Doc. 63 at 4) For
example, suppose the transaction amount is $10.20. According to EPC, the
invention (1) can round to the next dollar and deposit 80¢ into the provider account,

1

The “coin amount” is the cents portion of a transaction amount; e.g., a $14.56 transaction
amount has a coin amount of $0.56. ‘849 patent, col. 13, ll. 6-7 (“The coin amount is the presence of
coins in the face amount, i.e. check for $10.14.”).
2

“Determinant” is discussed later in this order.

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(2) can deposit a $1.00 additur into the provider account, or (3) can deposit 10% of
the transaction amount (i.e., $1.02) into the provider account.
Although “rounder amount,” by the plain and ordinary meaning of
“rounding,” entails rounding, not additurs or percentages, “it is always necessary to
review the specification to determine whether the inventor has used any terms in a
manner inconsistent with their ordinary meaning.” Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
To expand “rounder amount” beyond rounding, EPC cites the patent’s
definition of rounder transaction (not the definition of rounder amount). “Rounder
transaction” is defined as “the numerical function applied against the face amount or
the entry itself, i.e., $1.00, $3.00, 2%, or a specific number $1.50 to create excess funds.”
‘849 patent, col. 13, ll. 2-3 (emphasis added). EPC’s argument for the expansion of
“rounding” relies entirely on the definition’s use of 2% (a percentage) and $1.50 (an
additur) as examples of a rounder transaction. In short, EPC’s argues that the
presence of the examples is inexplicable unless the patent’s use of “rounding” is
understood to include a percentage of the transaction amount and an additur.
EPC’s argument that “rounder amount” implicates additurs is inconsistent
with the claims. “It is a bedrock principle of patent law that the claims of a patent
define the invention to which the patentee is entitled the right to exclude.” Phillips,
415 F.3d at 1312 (internal quotation marks omitted). Each ‘849-patent claim
encompasses a “method for performing a payment transaction, the method

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comprising: . . . generating a rounder amount based on the transaction amount and the
determinant . . . .” ‘849 patent, col. 17, ll. 53-54 (emphasis added). The claims
establish that a rounder amount is claimed only if “generat[ed] . . . based on the
transaction amount.” If an additur were used, the supposed “rounder amount”
equals the additur – no need to “generat[e]” the rounder amount exists and the
additur is not derived from, dependent on, a function of, or otherwise “based on the
transaction amount.” (Doc. 58 at 10 (describing the additur as “fixed”)) The
additur, to which the rounder amount is equal, is not “based on” the transaction
amount because the additur and the rounder amount remain constant despite a
change in the transaction amount. For example, EPC’s Markman brief contains a
sample additur of $1.00. Despite the sample transaction amount of $1.70, the additur
remains $1.00; no change in the transaction amount affects the $1.00. Thus, the
claims exclude the use of an additur. Lacks Indus., Inc. v. McKechnie Vehicle
Components USA, Inc., 322 F.3d 1335, 1343-44 (Fed. Cir. 2003) (rejecting a party’s
proposed construction because the “proposed construction is simply not consistent
with the language of the claims”); see also Johnson & Johnston Associates Inc. v. R.E.
Serv. Co., Inc., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (“[W]hen a patent drafter
discloses but declines to claim subject matter, . . . [the drafter] dedicates that
unclaimed subject matter to the public.”).
In contrast to EPC’s argument for claiming an additur, EPC’s argument that
“rounder amount” includes a percentage of the transaction amount is consistent with

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the claims. A rounder amount that is calculated by multiplying a percentage by a
transaction amount is “generated” (by the multiplication), and the “generated”
rounder amount is “based on the transaction amount” because the product yielded by
the multiplication changes with the transaction amount. However, “[t]he plain and
ordinary meaning of claim language controls [e.g., ‘rounder amount’ entails
rounding], unless that meaning . . . is overcome by a special definition that appears in
the intrinsic record with reasonable clarity and precision. Vagueness and inference
cannot overcome an ordinary meaning of a claim term . . . .” Northern Telecom Ltd. v.
Samsung Elecs. Co., 215 F.3d 1281, 1295 (Fed. Cir. 2000) (citation omitted).
Although the definition of “rounder transaction” identifies 2% as an example,
the patent’s expansion of “rounding” is not reasonably clear. The definition of
“rounder transaction” and other definitions in the patent are drafted so poorly that
the terms are nearly impossible to understand.3 Worse yet, the patent lacks a
definition for many terms that are confusingly similar. For example, although the
patents (poorly) define “rounder amount” and “rounder transaction,” the patents

3

The March 5, 2014, order offers a sample of the ‘217 patent’s staggering number of errors.
(Doc. 95 at 7-8) The ‘849 patent is no different. Clearly, no one – not even the patent examiner –
fully read either patent before issuance. Additional errors, which are not discussed in the March 5,
2014, order, are in Figures 9C and columns 14 of the ‘849 patent and ‘217 patents. Columns 14
discuss the invention’s application to a deposit or interest. However, the text purports to “regard []
deposits or fee income” and, later, a “deposit or interest fee.” Simultaneously, the text purports to
describe the steps depicted in Figure 9C, but Figure 9C describes the steps for a “debit or
withdrawal.” All three statements are incorrect; the text and Figure 9C should purport to describe
the steps for processing a deposit or interest. The text’s error is (presumably) a result of carelessness
and confusion. The cause of the figure’s error is more difficult to diagnose – perhaps forgetfulness or
a combination of laziness and deception. Regardless of the cause, rather than depicting the steps for
a deposit or interest, Figure 9C is a slightly-manipulated but functionally identical version of Figure
9B. (Figure 9C has a new title and the steps are re-numbered.)

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employ, not only those terms, but “rounder,” “rounder number,” “rounder
percentage,” “rounder contribution,” “rounding determinant,” “rounder
instructions,” “rounder account contribution,” “rounder transaction contribution,”
“rounder system,” “rounder account,” “rounder activity,” and “total rounder
amount,” each without an explicit definition. In short, the patent’s disconcerting
combination of an inadequate or confusing definition for some terms and entire lack
of definition for other terms creates an inadequately differentiated mass of similar,
specialized terms and easily suffices to defeat the patentee’s attempt to counterintuitively define rounding. Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364,
1370 (Fed. Cir. 2005) (“[The patent] fails to redefine [the patent term] . . . in clear
enough terms to justify such a counterintuitive definition.”); Abbott Labs. v. Syntron
Bioresearch, Inc., 334 F.3d 1343, 1354 (Fed. Cir. 2003) (“[T]he patentee’s lexicography
must, of course, appear with reasonable clarity, deliberateness, and precision before it
can affect the claim.” (internal quotation marks omitted)); Northern Telecom Ltd. v.
Samsung Elecs. Co., 215 F.3d 1281, 1295 (Fed. Cir. 2000) (“Vagueness and inference
cannot overcome an ordinary meaning of a claim term . . . .”).
However, even after straining to decipher the patent’s definitions of “rounder
transaction” and “rounder amount,” the objective reader finds that the patent’s
passing mention of a percentage is too inconspicuous and insufficiently declaratory.
Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991), explains:
[Patent law] requires that an inventor particularly point out and
distinctly claim the subject matter of his invention. It would run

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counter to this statutory provision for an applicant for patent to
expressly state throughout his specification and in his claims that his
invention includes [a limitation, e.g., rounding,] and then be allowed
to avoid that claim limitation in a later infringement suit by pointing to
one paragraph in his specification stating an alternative that lacks that
limitation, and thus interpret the claim contrary to its plain meaning.
Such a result would encourage an applicant to escape examination of a
more broadly-claimed invention by filing narrow claims and then, after
grant, asserting a broader scope of the claims based on a statement in
the specification of an alternative never presented in the claims for
examination.

(citations omitted).
Finally, even if the patent’s counterintuitive expansion of rounding were
sufficiently clear and sufficiently conspicuous, the expansion is incompatible with
EPC’s construction of “rounder amount.” EPC argues that a “rounder amount” can
equal a percentage of a transaction amount. Using an example, EPC states that a
10% rounder transaction and a $1.70 transaction amount generate a 17¢ rounder
amount because 10% of $1.70 is 17¢, or expressed symbolically, 0.10 × $1.70 =
$0.17. (Doc. 58 at 10) Similarly, using EPC’s construction of “rounder amount,” if
the rounder transaction is 10% and the transaction amount is $10.20, the rounder
amount is $1.02 because 10% of $10.20 is $1.02, or expressed symbolically, 0.10 ×
$10.20 = $1.02. However, these examples and EPC’s construction of “rounder
amount” are incompatible with the patent. The patent defines “[t]he rounder
amount” as “the amount of excess funds produced by applying the rounder
transaction to the entry minus the coin amount.” ‘849 patent, col. 13, ll. 8-11. The
patent defines “[t]he rounder transaction” as “the numerical function applied against

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the face amount or the entry itself,4 i.e., $1.00, $3.00, 2%, or a specific number $1.50
to create excess funds.” ‘849 patent, col. 13, ll. 1-3 (footnote added). Again, suppose
that the transaction amount is $10.20 (which gives a coin amount of 20¢) and
suppose that the rounder transaction is 10%. Applying the patent’s definition, the
rounder transaction is $1.02 because 10% of $10.20 is $1.02, or expressed
symbolically, 0.10 × $10.20 = $1.02. Applying the patent’s definition of “rounder
amount” – which is based on the rounder transaction – the rounder amount is the
excess funds generated by subtracting 20¢ from the sum of $10.20 and $1.02, or
expressed symbolically, ($10.20 + $1.02) – $0.20.5 This calculation, which results in
$11.02, generates 82¢ in excess of $10.20. Accordingly, using the patent’s definitions,
the rounder amount is 82¢. However, as already discussed, EPC argues that if the
rounder transaction is 10% and the transaction amount is $10.20, the rounder
amount is $1.02, not 82¢ (because 10% of $10.20 is $1.02, or expressed symbolically,
0.10 × $10.20 = $1.02). Thus, EPC’s interpretation of “rounder amount” is
incompatible with the patent.
4

The “face amount” and the “entry” are identical. Compare ‘849 patent, col. 14, ll. 61-62
(“[T]he rounder amount is added to the face amount to determine the total withdrawal”), with ‘849
patent, col. 16, ll. 57-58 (“[T]he rounder amount is added to the entry amount to determine the total
withdrawal.”).
5

The patent’s definition of “rounder amount” is “the amount of excess funds produced by
applying the rounder transaction to the entry minus the coin amount.” The definition is ambiguous
because “rounder amount” could mean either “the amount of excess funds produced by applying the
rounder transaction to the entry [and subtracting] the coin amount [from the sum]” (e.g., ($10.20 +
$1.02) – $0.20) or “the amount of excess funds produced by applying the rounder transaction to [the
difference created by] the entry minus the coin amount” (e.g., $10.20 + ($1.02 – $0.20)). This order
uses the first definition. However, even if the second definition is used, EPC’s interpretation of
“rounder amount” remains in conflict with the patent; e.g., ($10.20 + $1.02) – $0.20 =
$10.20 + ($1.02 – $0.20) = $11.02.

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Recognizing the problem, EPC argues that the patent defines “rounder
amount” (broadly) as “the amount of excess payment” and that the broad definition
should control because the narrow definition is intended to define “[t]he rounder
amount” in only the preferred embodiment, i.e., the “conventional” rounding
embodiment. For support, EPC cites a portion of the patent’s definitions section. In
whole, the section states:
The face or entry amount means the actual amount of the check/ATM
withdrawal or credit/debit card charges prior to any rounder activity.
The rounder transaction is the numerical function applied against the
face amount or the entry itself, i.e., $1.00, $3.00, 2%, or a specific
number $1.50 to create excess funds. In the preferred embodiment this
will be a whole dollar amount such as $1.00, $5.00, $10.00, etc. added
to the entry.
The coin amount is the presence of coins in the face amount, i.e. check
for $10.14.
The rounder amount is the amount of excess funds produced by
applying the rounder transaction to the entry minus the coin amount,
i.e. $10.14 using a $1.00 rounder will produce $0.86 as the rounder
amount of excess funds.
The total withdrawal will be the rounder amount plus the entry
amount which will be debited against the checking account or credit
card balance to determine the new account balance.

‘849 patent, col. 12, 13, ll. 65-67, 1-15. Citing one sentence in the definition of
rounder transaction (not rounder amount), EPC argues that the patent’s definition of
rounder amount applies to only the preferred embodiment. However, EPC’s
argument is flawed.

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First, by default, if a patentee clearly attempts to define a word and the
definition is not explicitly limited to a certain embodiment, the definition applies to
each embodiment. For example, Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v.
Mutual Pharmaceutical Co., 384 F.3d 1333, 1340 (Fed. Cir. 2004), adopts a patent’s
(unusually narrow) definition of “solubilizer” despite the patentee’s argument that
the definition applies to only the preferred embodiment. Astrazeneca states, “We
might agree [with the patentee] if the specification stated, for example, ‘a solubilizer
suitable for the preparations according to the invention,’ but in fact, the specification
definitively states ‘the solubilizers suitable for the preparations according to the
invention.’” Similarly, the ‘849 patent definitively states, “The rounder amount is the
amount of excess funds produced by applying the rounder transaction to the entry
minus the coin amount . . . .” ‘849 patent, col. 13, ll. 8-11 (emphasis added).
Second, EPC is correct that a sentence can qualify portions of the patent by
employing words that establish the limitation. The patent effectively demonstrates
this technique several times. For example, the patent clearly explains – in a standalone paragraph elsewhere in the patent – that subsequent discussion applies when
the rounder transaction is $1.00. The paragraph–sentence states, “The following will
assume the application of a $1.00 rounder transaction.” ‘849 patent, col. 13,
ll. 56-57. Elsewhere, the patent offers another explicit, stand-alone sentence that
limits subsequent discussion. ‘849 patent, col. 13, ll. 56-57 (“The following
information will provide clarity for the steps that will be detailed in FIG. 9A-E and

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FIG. 10A-E.”). In contrast, the sentence cited by EPC states, “In the preferred
embodiment this [the rounder transaction] will be a whole dollar amount such as
$1.00, $5.00, $10.00, etc. added to the entry.” This sentence – which is included in
the paragraph defining “rounder transaction” – identifies the preferred embodiment
of a rounder transaction. The sentence utterly fails to limit the subsequent definitions
to the preferred embodiment.
Third, the sentence’s failure to qualify the subsequent definitions is
corroborated by the subsequent definitions. No other definition – neither the
definition of coin amount nor the definition of total withdrawal – is limited to a certain
embodiment. If the “narrow” definition of rounder amount is limited to one
embodiment, as EPC argues, the definition is the only definition in a list of five
definitions that applies exclusively to one embodiment.
Fourth, in the definition of “rounder transaction,” the 2% example appears
among the $1.00 and $3.00 examples without any indication that the invention
should handle the 2% example differently. See ‘849 patent, col. 13, ll. 1-3 (“The
rounder transaction is the numerical function applied against the face amount or the
entry itself, i.e., $1.00, $3.00, 2%, or a specific number $1.50 to create excess
funds.”). Accordingly, the patent cues the reader to process a percentage no
differently.

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As discussed above, the “narrow” definition of rounder amount contains no
indication that the definition is limited to a preferred embodiment, and the patent
affirmatively suggests that the definition is broadly applicable. Although this is
sufficient to discredit EPC’s argument, EPC’s argument is further discredited by the
inadequacies of the broad “definition.”
First, “[t]o act as its own lexicographer, . . . the patentee must ‘clearly express
an intent’ to redefine the term.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365-66 (Fed. Cir. 2012) (stating further that “clear lexicography” is needed and
that “a patentee must clearly set forth a definition of the disputed claim term other
than its plain and ordinary meaning”); accord Elekta Instrument S.A. v. O.U.R. Sci. Int’l,
Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (“Absent express intent to impart a novel
meaning, claim terms take on their ordinary meaning.”). However, the broad
“definition” fails to clearly express an intent to re-define “rounder amount.” The
broad “definition” is off-handedly written in the middle of a paragraph and is part of
a larger sentence. In full, the sentence states, “The amount of excess payment called
a rounder amount is then added to the face amount of the draft and the total number
is then debited (as in withdrawals or account fees) or added (as in deposits or interest
payments) to the account balance.” ‘849 patent, col. 11, ll. 26-32. The patent’s midparagraph broad “definition,” which is part of a larger sentence, fails to express a
clear intent to re-define the term. This failure is especially apparent when the
“definition” is juxtaposed to the patent’s explicit and purposeful definition (i.e., “The

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rounder amount is . . . .”). Unlike the broad “definition,” the “narrow” definition
fully describes rounding6 and is grouped with other definitions. Also, the broad
“definition” fails to “clearly express an intent” to re-define rounder amount because
the broad “definition” is compatible with rounding. If a patent broadly describes a
term and if that description is compatible with the ordinary and customary meaning
of the term, the description fails to re-define the term. For example, suppose a patent
describes “watch” as “an object worn on the wrist.” Although the “definition” might
establish that – for purposes of the patent – a pocket watch is not a “watch,” the
“definition” fails to expand “watch” to include anything worn around the wrist (such
as a bracelet). Despite the presence of the broad “definition,” if the patent uses
“watch,” the term still denotes a timepiece (and not a bracelet). Accordingly,
because the ‘849 patent’s broad “definition” of a “rounder amount” is compatible
with rounding, the “definition” fails to “clearly express an intent” to re-define
rounder amount to include an operation that is not “rounding,” understood in the
ordinary sense.
Second, the broad “definition” of rounder amount – which is the “amount of
excess payment” – fails for lack of precision. Northern Telecom Ltd. v. Samsung Elecs.
Co., 215 F.3d 1281, 1295 (Fed. Cir. 2000) (“The plain and ordinary meaning of claim

6

EPC argues that “a calculation that ‘rounds’ $10.00 up to $11.00[] is not [] true [‘rounding’]
in any conventional definition of the term.” This argument is incoherent. “Rounding up” to the
nearest whole dollar from $10.00 to $11.00 admittedly might occur less frequently than (say,
approximately one in a hundred instances), but is wholly indistinguishable from, “rounding up”
from any other amount less than $11.00 but greater than or equal to $10.00.

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language controls, unless that meaning . . . is overcome by a special definition that
appears in the intrinsic record with reasonable . . . precision.”). Even EPC
acknowledges that the rounder amount is not any amount of excess payment.
Instead, the rounder amount is an excess payment generated by rounding or,
perhaps, by adding an additur or a percentage. An excess amount that is calculated
by some fourth means is – even according to EPC – not a rounder amount.7 Thus,
the broad “definition” – which applies to any excess amount, no matter how the
amount is calculated – lacks the precision required by Northern Telecom.
Accordingly, a “rounder amount” is generated through rounding and includes
neither an additur nor a percentage of the transaction amount.8

7

For example, the invention could generate a “rounder amount” by finding the third root of
the transaction amount.
8

Although EPC chose otherwise, EPC could have argued that the example (in the patent) of
the invention’s application to a deposit demonstrates that the “narrow” definition of rounder amount
applies to only the preferred embodiment. For simplicity, the parties’ briefs and this order largely
ignore the invention’s application to a deposit. However, in a strikingly inefficient and error-filled
use of words, the specification clarifies that the invention – by “revers[ing] the process” – can apply
to a deposit. ‘849 patent, col. 14, ll. 10-40. In the usual circumstance – when the invention applies to
a withdrawal – the rounder amount is added to the transaction amount, the addition of which
increases the total withdrawal from the customer account. When the invention processes a deposit,
the rounder amount is subtracted from the deposit, the subtraction of which reduces the total amount
deposited into the customer account. The patent explains that in the preferred embodiment (1) the
coin amount is removed from the check and is deposited into the provider account and (2) the
remainder of the deposit is placed into the customer account. Thus, if a customer has a check for
$10.14, the provider account receives 14¢ and the customer account receives the remaining $10.00.
EPC could have argued that this example shows that the “narrow” definition of rounder amount is
not global because the definition is incompatible with the deposit example. However, the argument
fails. The definition of rounder amount explains that the rounder transaction is “applied” to the
rounder entry and that the coin amount is subtracted from the result. The use of “applied” shows
that the invention is not limited to adding the rounder transaction. (But even if the patent said
“added,” subtraction is achievable by adding a negative number.) In the $10.14 example, the
rounder transaction is $0.00 and the coin amount is 14¢. Using the patent’s definitions, the rounder
transaction ($0.00) is subtracted from the transaction amount ($10.14) and the coin amount (14¢) is
(continued...)

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2. ‘849 Patent – “Determinant”
Wells Fargo states that “determinant” is defined as a “rule to round that is
applied to the transaction amount(s) to create an excess payment.” (Doc. 59 at 15)
EPC states that “determinant” is defined as a “fixed or variable predetermined
calculation added to or subtracted from each account entry to create an excess
payment.” (Doc. 58 at 8)
“Importantly,” the parties dispute whether “the form the ‘determinant’ may
take is [] limited.” (Doc. 58 at 8) EPC argues that the determinant can denote an
additur, a percentage, or conventional rounding. However, the ‘849-patent claims
explain that a rounder amount is “generat[ed] . . . based on the transaction amount
and a determinant.” E.g., ‘849 patent, col. 17, ll. 53-54. Because the claims discuss
the determinant in the context of only the rounder amount, which excludes an
additur and a percentage, the determinant is similarly limited.
Also, Wells Fargo argues that the determinant is a “rule, not a number or
result.” (Doc. 64 at 15) EPC never explicitly argues that the determinant is a number
and implicitly accepts that the determinant is a rule. (Doc. 58 at 10, which lists three
putative examples of a determinant: “[r]ound up to the next dollar,” “[a]dd 10%,”
and “[a]dd $1.00,” each of which is a rule) Although Wells Fargo acknowledges

8

(...continued)
subtracted from the difference. The calculation yields $10.00, and $10.14 exceeds $10.00 by 14¢. In
accord with the patent’s example, 14¢ is deposited into the provider account and $10.00 is deposited
into the customer account. Thus, the “narrow” definition of rounder amount is compatible with the
patent’s deposit example.

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EPC’s implicit concession (Doc. 64 at 14 (“EPC’s brief recognizes that a determinant
is a rule.”)), Wells Fargo insists that EPC’s use of “calculation” in the proposed
definition of “determinant” shows EPC’s intent to define the determinant as a
number, not a rule. EPC’s silence in response to Wells Fargo’s insistence is
conspicuous.
Notwithstanding Wells Fargo’s thrust and EPC’s parry, the determinant is a
number, not a rule. The specification never defines “determinant” and uses the term
outside the claims only twice. The second use clarifies that the determinant is a
number9 – “Under this system the SP . . . instructs the bank or credit card issuer to
add or subtract a determinant to each transaction . . . .” ‘849 patent, col. 11, ll. 53-58
(emphasis added). Because the determinant is “add[ed] or subtract[ed]” and because
numbers, not rules, are added or subtracted, the determinant is a number, not a rule.
Nonetheless, the two are closely related. For example, if the invention rounds up to
the next dollar, the determinant is $1.00. (The transaction amount [say, $8.23] plus
the determinant [say, $1.00] equals $9.23, minus the coin amount [23¢] equals $9.00,
which is $8.23 rounded up to the nearest dollar.) Thus, although a determinant and a
rule for rounding are closely related, the two are distinguishable.

9

The first use fails to clarify whether the determinant is a rule or a number. See ‘849 patent,
col. 11, ll. 36-39 (“The system is based on the ability to create excess funds by applying a
determinant to the face amount or number of account entries, e.g. checks, ATM withdrawals, credit
and debit drafts.”).

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3. ‘217 Patent – “Rounding Determinant”
The parties agree that “rounding determinant” – which is used in only the
‘217 patent – is identical to “determinant.”
4. ‘217 Patent – “Customer Account (Belonging to the Customer)”
EPC defines “customer account” as “an account owned by the customer” and
states that “customer account” and “customer account belonging to the customer”
are synonymous. Wells Fargo’s only criticism is that EPC’s construction renders
“belonging to the customer” – in the phrase “customer account belonging to the
customer” – superfluous. In an attempt to explain what “belonging to the customer”
contributes to “customer account,” Wells Fargo states – without any justification –
that “belonging to the customer” adds that the customer account is “[a]n account
from which the transaction amount and the calculated excess are withdrawn.”
(Doc. 64 at 18) Wells Fargo’s statement that this addition “gives full effect to all
claim terms” is untenable. “Customer account belonging to the customer” is an
account that the customer controls and that contains funds owned by the customer.
“Customer account” is a shortened form of “customer account belonging to the
customer.”
5. ‘217 Patent – “Provider Account”
The parties agree that a provider account is an account selected to receive
excess funds, but Wells Fargo adds that the customer must select the provider
account. Wells Fargo’s interpretation is incorrect because the interpretation renders

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superfluous portions of the specification. E.g., ‘217 patent, col. 3, ll. 54-57 (“The
money is deposited into an ‘open’ network that will pool and then transfer the once
fragmented funds onto [provider accounts] selected by the [subscriber].”); ‘217
patent, col. 17, ll. 29-31 (“[E]xcess overpayments [are] transferred . . . onto provider
accounts selected by said subscriber/subscribers (SP).”).
6. ‘217 Patent –“Rounder”
Wells Fargo’s Markman briefs conflate “rounder” and “rounder amount” and
define the terms identically.10 (Doc. 64 at 5) Although, to the casual observer,
“rounder” and “rounder amount” appear synonymous, the ‘217 specification
confirms that the patent uses the terms differently. “Rounder” first appears in the
definition of rounder amount; the patent states, “The rounder amount is the amount
of excess funds produced by applying the rounder transaction to the entry minus the
coin amount, i.e. $10.14 using a $1.00 rounder will produce $0.86 as the rounder
amount of excess funds.” ‘217 patent, col. 13, ll. 15-18.11 Although the definition of
“rounder amount” and the paired example are drafted poorly, the example clarifies
that “rounder” and “rounder amount” are distinct – in the example, the rounder is

10

Wells Fargo’s brief addresses primarily whether “rounder” and “rounder amount” are
compatible with an additur or a percentage.
11

Elsewhere, the patents use the same example but with even worse wording. E.g., ‘849
patent, col. 14, ll. 58-60 (“For example, if the fee was for $10.14 a one dollar rounder add another
$0.86 and the net withdrawal would be for $11.00.”).

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$1.00 and the rounder amount is $0.86. Accordingly, EPC has the better
construction – “rounder” is synonymous with “determinant.”12
CONCLUSION
The disputed terms are construed as follows:
Rounder Amount

The amount of excess funds generated
by, first, adding or subtracting the
determinant to or from the transaction
amount and by, second, subtracting
from the sum or the difference the coin
amount

Determinant

A number added or subtracted – during
the calculation of a rounder amount – to
the transaction amount

Rounding Determinant

Determinant

Customer Account (Belonging to the
Customer)

An account that the customer controls
and that contains funds owned by the
customer

12

Wells Fargo fails to raise two problems with EPC’s construction. First, claim 1 of the ‘217
patent speaks of “calculat[ing] rounders.” Although a determinant is not “calculated” in the ordinary
sense of “to calculate,” no plausible definition of rounder involves a calculation. The use of
“calculate” in claim 1 (of the ‘217 patent) conflicts with the specification’s use of “rounder.”
Accordingly, any construction of “rounder” must either conflict with the common meaning of
“calculate” or conflict with the specification. Because the specification’s examples are definitive and
because – as this order and the March 5, 2013, order demonstrate – the patents are filled with
oddities and errors, “rounder” is construed as synonymous with “determinant.” C.f. Northern Telecom
Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1295 (Fed. Cir. 2000) (holding that the specification can
“overcome” the plain and ordinary meaning of a claim if “that [ordinary] meaning renders the claim
unclear”). Second, because both “rounder” and “rounding determinant” are construed to mean
“determinant,” “rounder” and “rounding determinant” are construed as synonymous. However, the
‘217 patent uses each term in the same claim, which usually indicates that the terms are not
synonymous. Nonetheless, “this is simply a case where the patentee used different words to express
similar concepts, even though it may be confusing drafting practice.” Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1120 (Fed. Cir. 2004); see also Nystrom v. TREX Co., Inc., 424
F.3d 1136, 1143 (Fed. Cir. 2005) (“Different terms or phrases in separate claims may be construed to
cover the same subject matter where the written description and prosecution history indicate that
such a reading of the terms or phrases is proper.”).

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Provider Account

An account selected to receive excess
funds

Rounder

Determinant

ORDERED in Tampa, Florida, on March 18, 2014.

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