Stoneeagle Services, Inc. v. Pay-Plus Solutions, Inc. et al

Filing 197

ORDER: Plaintiff StoneEagle Services, Inc.'s Opening Claim Construction Brief 122 is GRANTED IN PART. Defendants Pay-Plus Solutions, Inc. and Premier Healthcare Exchange, Inc.'s Markman Motion to Construe Claims 127 is GRANTED IN PART. The claim language in dispute in this case shall be construed as set forth in this Order. Signed by Judge Virginia M. Hernandez Covington on 6/4/2015. (KNC)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
STONEEAGLE SERVICES, INC.,
Plaintiff,
v.

Case No.: 8:13-cv-2240-T-33MAP

PAY-PLUS SOLUTIONS, INC., and
PREMIER HEALTHCARE EXCHANGE, INC.,
Defendants.
_______________________________/
ORDER
This cause comes before the Court pursuant to Plaintiff
StoneEagle Services, Inc.’s Opening Claim Construction Brief
(Doc. # 122), Defendants Pay-Plus Solutions, Inc. and Premier
Healthcare Exchange, Inc.’s Markman Motion to Construe Claims
(Doc. # 127), and the claims construction hearing held on May
11, 2015 (Doc. # 183).

The claim language in dispute in this

case shall be construed as set forth in this Order.
I.

Background
In this patent infringement action, Plaintiff alleges

that Defendants willfully infringed Plaintiff’s rights under
two patents: Reissue Patent No. US RE43,904 E (“the 904
Patent”) and Reissue Patent No. US RE44,748 E (“the 748
Patent”). (Doc. # 66 at ¶¶ 1, 8-10 & Ex. A, B). Both patents
cover a health care provider reimbursement system, by which

a payor, such as an insurance company, makes “a virtual
payment to a medical provider by transmitting a stored-value
card

account

payment

of

the

authorized

benefit

amount,

together with an explanation of benefits.” (Id. at ¶¶ 14-16
& Ex. A, B). Plaintiff alleges that Defendants’ health care
benefits

payment

processing

system,

“Pay-Plus™

Select,”

directly competes with Plaintiff’s patented system. (Id. at
¶¶

17-18).

Specifically,

Plaintiff

“asserts

different

infringement positions against the Pay-Plus™ Select service:
(1) the ‘one-fax system’ allegedly infringes all of the
asserted claims; and (2) the ‘two-fax system’ and ‘hardcopy
mailing system’ each allegedly infringe claims 7, 13, 19, and
25 of the 748 Patent.” (See Doc. # 143 at 8).
To determine whether Defendants infringed the 904 and
748 Patents, it is first necessary to determine the scope of
protection the Patents afford. The parties disagree about the
proper construction of language contained in several claims
of the 904 and 748 Patents; specifically, claims 2, 7, 12,
17, and 22 of the 904 Patent and claims 7, 13, 19, and 25 of
the 748 Patent.
The function of patent claims is “(a) to point out what
the invention is in such a way as to distinguish it from what
was previously known, i.e., from the prior art; and (b) to

2

define the scope of protection afforded by the patent. In
both of those aspects, claims are not technical descriptions
of the disclosed inventions but are legal documents like the
descriptions of lands by metes and bounds in a deed which
define the area conveyed but do not describe the land.” In re
Vamco Mach. & Tool, 752 F.2d 1564, 1577 n.5 (Fed. Cir.
1985)(emphases in original). A patent’s claims thus describe
the outer bounds of the exclusive rights conveyed by the
patent. Ice House Am., LLC v. Innovative Packaging Techs.,
Inc., No. 3:05-cv-1294-J-33TEM, 2008 WL 2856674, at *3 (M.D.
Fla. July 22, 2008) clarified on denial of reconsideration,
No. 3:05-CV-1294-J-33TEM, 2008 WL 3305232 (M.D. Fla. Aug. 7,
2008).
In Markman v. Westview Instruments, Inc., the Supreme
Court held that the language of a patent claim must be
construed by the court, and not the jury. 517 U.S. 370, 391
(1996). This holds true even where conflicting evidence is
presented in support of alternative proposed constructions.
Id. at 389–90. To that end, the parties have presented
evidence on the meaning of disputed language in the patents
in suit. (See Doc. ## 122, 127, 183). The Court now determines
the meaning of this disputed language.
II. Legal Standard

3

“Patent

infringement

actions

are

composed

of

two

phases.” Alps S., LLC v. Ohio Willow Wood Co., No. 8:08-cv1893-T-33MAP, 2010 WL 2347046, at *1 (M.D. Fla. May 19, 2010)
report and recommendation adopted, No. 8:08-cv-1893-T-33MAP,
2010 WL 2293274 (M.D. Fla. June 7, 2010). “First, in the claim
construction

phase,

the

court

determines

the

scope

and

meaning of the patent claims as a matter of law, and second,
the claims are compared to the allegedly infringing device.”
Id. (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1454 (Fed. Cir. 1998)).
The

construction

of

claims

is

based

primarily

on

intrinsic evidence: the claim language, the specification,
and the prosecution history. Id. The claim language itself is
first in importance when construing the meaning and scope of
the patent. Id. Generally, the rule for claim interpretation
is that:
[T]erms in the claim are to be given their ordinary
and accustomed meaning. General descriptive terms
will ordinarily be given their full meaning:
modifiers will not be added to broad terms standing
alone. In short, a court must presume that the terms
in the claim mean what they say, and, unless
otherwise compelled, give full effect to the
ordinary and accustomed meaning of the claim terms.
Thus, if the claim is unambiguous and clear on its
face, the court need not consider the other
intrinsic evidence in construing the claim.

4

Id. (quoting Johnson Worldwide Assocs., Inc. v. Zebco Corp.,
175 F.3d 985, 989 (Fed. Cir. 1999)). The court must determine
what the claim language would have meant to “a person of
ordinary skill in the art in question at the time of the
invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005).
“When the meaning of words in a claim is in dispute, the
specification and prosecution history can provide relevant
information about the scope and meaning of the claim.” Electro
Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994). “The specification contains a written
description of the invention which must be clear and complete
enough to enable those of ordinary skill in the art to make
and use it.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576,

1582

(Fed.

Cir.

1996).

The

prosecution

history

“contains the complete record of all the proceedings before
the

Patent

and

Trademark

Office,

including

any

express

representations made by the applicant regarding the scope of
the claims.” Id.
“The [c]ourt must be careful, however, to avoid reading
limitations from the specification into the claim.” Ice House
Am., LLC, 2008 WL 2856674, at *3. “The claim is what limits
the scope of the patent, not the specification.” Id. The

5

[c]ourt [should] be equally careful to avoid reading the
claims too broadly, as would be done if the [c]ourt read claim
language according to its dictionary definition rather than
in the context of the specification.”

Id.

The court may also consider extrinsic evidence. Alps S.,
LLC, 2010 WL 2347046, at *3. Extrinsic evidence is evidence
that is external to the patent, such as expert testimony and
dictionaries. Id. The purpose of this evidence is to:
provide background on the technology at issue, to
explain how an invention works, to ensure that the
court’s understanding of the technical aspects of
the patent is consistent with that of a person of
skill in the art, or to establish that a particular
term in the patent or the prior art has a particular
meaning in the pertinent field.
Phillips, 415 F.3d at 1318.
III. Discussion
A. Stipulated Phrase
The parties agree that the phrase “stored-value card”
should be construed as “credit card, debit card, or EFT card.”
(See Doc. # 122 at 6).
B. Disputed Terms/Phrases
Plaintiff provided the Court with a list of terms to
construe, whereas Defendants request that this Court construe
the entirety of various phrases. (See Doc. ## 122, 127). At

6

this stage of the proceeding, the Court is called upon to
determine what the claim language would have meant to a person
of ordinary skill in the relevant art at the time of the
invention. Phillips, 415 F.3d at 1313. “[T]he person of
ordinary skill in the art is deemed to read the claim term
not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire
patent, including the specification.” Id. Thus, the Court
finds it appropriate to construe the various phrases provided
by Defendants, which encompass several of the terms proffered
by Plaintiff. See Medrad, Inc. v. MRI Devices, Corp., 401
F.3d 1313, 1319 (Fed. Cir. 2005)(“We cannot look at the
ordinary meaning of the term . . . in a vacuum.

Rather, we

must look at the ordinary meaning in the context of the
written description and the prosecution history.”). To the
extent Defendants have not provided a phrase for this Court
to construe, this Court will construe the isolated terms
provided by Plaintiff.
1. 904 Patent
i.

Explanation of Benefits

Plaintiff requests the following construction for this
term: “information describing medical services provided to a
patient by a health care provider, an amount billed by the

7

health care provider, and an amount paid by the patient’s
insurance company.” (Doc. # 122 at 7). According to Plaintiff,
this construction “comports with the contextual use of the
phrase” in the claims, the specification of the 904 Patent,
and “with the meaning understood in the medical payments
industry.” (Id.).
Defendants

contend,

however,

that

Plaintiff’s

construction is flawed as it “(1) conflicts with the use of
the term in the claims and specification and (2) excludes
embodiments of the invention.” (Doc. # 127 at 29). To that
end, Defendants argue that the claims refer to “explanation
of benefits” as a “tangible item,” rather than just “abstract
information.” (Id.). Furthermore, Defendants suggest that the
904 Patent’s specification describes that “explanation of
benefits”
categories

can

include

proposed

more
by

than

the

Plaintiff.

three

informational

(Id.).

Therefore,

Defendants posit that the term “explanation of benefits”
should be given its “plain and ordinary meaning.” (Id.).
According to the background section of the 904 Patent,
“the [explanation of benefits] lists the amount the health
care provider billed the Payer’s company and the amount the
Payer’s company paid on the claim. It may also list the
contractual discount amount and the patient responsibility.”

8

(Doc. # 66-1). At the Markman hearing, Plaintiff admitted
that “explanation of benefits” could contain information,
including but not limited to the information set forth in its
proposed

construction.

Also

at

the

Markman

hearing,

Defendants did not dispute that “explanation of benefits” was
not limited to a “tangible” form as they proposed.
Therefore, the Court construes the term “explanation of
benefits”

as

follows:

“information

describing,

but

not

limited to, the amount the health care provider billed the
Payer’s company, the amount the Payer’s company paid on the
claim, and the contractual discount amount and the patient
responsibility.”
ii.

Intercepting the Explanation of Benefits and
Payment
Information
Transmitted
from
the
Administrator to the Health Care Provider

Plaintiff contends that this phrase should be construed
as:

“receiving,

[explanation

of

retrieving,
payment]

or

sent

otherwise

or

conveyed

obtaining
from

the

administrator to the health care provider.” (Doc. # 122 at
16). According to Plaintiff, the 904 Patent specification
describes that the administrator generates the explanation of
benefits, which may then be merged with other information and
that

the

merged

explanation

of

benefits

and

payment

information is transmitted to the health care provider. (See

9

Doc. # 183). Thus, Plaintiff submits that the 904 Patent
requires

that

retransmit

the

an

interim

party

explanation

of

receive,
benefits

gather,
and

and

payment

information. (Id.).
To

the

contrary,

Defendants

suggest

the

following

construction: “receiving, retrieving or otherwise acquiring
an explanation of benefits and payment information from a
transmission of that information that is sent directly from
an administrator to a health care provider.” (Doc. # 127 at
19)(emphasis added). Defendants argue that the plain meaning
of this phrase “expressly requires” such a construction.
(Id.).
“In the absence of an express intent . . . the words
[of claims] are presumed to take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the
art.” Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334
F.3d 1294, 1298 (Fed. Cir. 2003). “The prosecution history
and patent specification are to be applied to narrow the scope
of

a

claim

where

the

patentee

argued

a

narrow

claim

construction to obtain allowance of the claim by the Patent
Office.” Golden Voice Tech. & Training, L.L.C. v. Rockwell
Firstpoint Contact Corp., 267 F. Supp. 2d 1190, 1196 (M.D.

10

Fla. 2003). The United States Court of Appeals for the Federal
Circuit stated:
Even where the ordinary meaning of the claim is
clear,
it
is
well-established
that
“[t]he
prosecution history limits the interpretation of
claim terms so as to exclude any interpretation
that was disclaimed during prosecution.”
Id. (quoting Pall Corp. v. PTI Techs., Inc., 259 F.3d 1383,
1392—93

(Fed.

Cir.

2001)).

Thus,

“narrowing

claim

interpretation will be adopted if the accused infringer can
establish

that

the

patentee

‘defined’

the

claim

as

‘excluding’ a broader interpretation ‘with reasonable clarity
and deliberateness.’” Id.
A

review

of

the

904

Patent

as

a

whole

fails

to

demonstrate that the addition of the term “directly” is
required, as suggested by Defendants. To that end, Defendants
have failed to establish that the claims, specification, and
prosecution history of the 904 Patent demonstrate that the
patentee,

Mr.

Robert

Allen,

defined

the

claims

–

with

reasonable clarity and deliberateness – to mandate a narrower
interpretation (i.e., use of term “directly”). For support,
the Court points to the “Detailed Description of the Preferred
Embodiment” as an example, which states:
In FIG. 3, insured having coverage provided by
payer consumes services by health care provider.

11

Health care provider then submits a benefit claim
to administrator which adjudicates the benefit
claim in accordance with pre-existing guidelines.
If payment is appropriate on the benefit claim, a
transfer of funds is made between payer’s account
and its funding account (to which administrator has
access). Stored-value card processor then loads
funds from funding account onto a stored-value card
account.
The
stored-value
card
account
is
chargeable only on a medical services terminal and
it cannot be charged over the amount loaded onto
it. The card number, the security verification
code, and the expiration date of the debit card
account are merged with the explanation of benefits
generated by administrator into image file which is
then transmitted back to health care provider.
(Doc. # 66-1 at 8). There is no requirement – explicit or
otherwise – that such transmission shall go directly from
administrator

to

health

care

provider,

as

suggested

by

Defendants.
At the Markman hearing, Defendants indicated that they
agreed to construe the term “intercepting” as “obtaining;”
however,

did

not

agree

to

the

additional

language

-

“receiving, retrieving, or otherwise obtaining” - proposed by
Plaintiff. Thus, as the parties agree to a definition –
“obtaining” – the Court is satisfied with this construction.
Therefore,

taking

into

consideration

other

constructions, as detailed below, the phrase “intercepting
the

explanation

of

benefits

12

and

payment

information

transmitted
provider”

from
shall

the

administrator

be

construed

as

to

the

health

follows:

care

“obtaining

information describing, but not limited to, the amount the
health care provider billed the Payer’s company; the amount
the Payer’s company paid on the claim; and the contractual
discount amount and the patient responsibility and payment
information, which is sent or conveyed from the administrator
to the health care provider.”
iii.

Single-Use

Plaintiff requests that this Court construe this term
“in the same manner as it was construed by the PTAB1:”
“associated with a single type of card to be used with a
single type of services terminal and no other type of payment
terminal for a single payment.” (Doc. # 122 at 10). Plaintiff
posits

that

fundamental

such
utility

construction
and

is

advantage

“consistent
of

the

with

invention

a
as

described in the specification – to reconcile each singlepayment with a single card charged for that approved benefit.”
(Id.).
Defendants do not suggest that the PTAB’s construction
is wrong, but point out that “the PTAB’s construction [of the

1 PTAB stands for Patent Trial and Appeal Board.
13

phrase single-use] does not necessarily reflect how one of
skill in the art would understand the terms after reading the
entire patent under Phillips. The PTAB ‘employ[s] different
evidentiary standards and rules for claim construction than
district courts.’” (Doc. # 151 at 19). Thus, Defendants
propose construing this term as “single account that is used
for a single benefit payment.” (Id.).
Upon review of the 904 Patent as a whole, the Court
adopts Plaintiff’s construction in part. For the reasons
discussed below; in particular, in the Court’s discussion on
the phrase “unique, single-use stored-value card account,”
the Court finds it necessary to delete from Plaintiff’s
proposed construction the phrase “single type of services
terminal.” Therefore, the Court construes the term “singleuse” as follows: “associated with a single type of card to be
used for a single payment.”
iv.

Loading a Unique, Single-Use Stored-Value Card
Account by One or More Computers with an Amount
Equal to a Single Adjudicated Benefit Payment

Plaintiff submits that this phrase should be construed
as: “using one or more computers to designate for, fund, or
otherwise associate funds with a one of a kind, credit card,
debit card, or EFT card account, which card account is
associated with a single type of card to be used with a single

14

type of services terminal and no other type of payment
terminal for a single payment, in an amount equal to a single,
adjudicated benefit payment.” (Doc. # 122 at 18). Plaintiff
argues

that

this

construction

is

“consistent

with

the

contextual use of the terms in the respective claims, the
specification as a whole, and the opinion of Defendants’ own
expert” – Mr. Thomas N. Turi. (Id. at 11).
Defendants argue against Plaintiff’s construction as
“[Plaintiff]
[‘loading’

proposes
and

the

‘funding’].

exact
But,

same

construction

[Plaintiff’s]

for

proposed

construction seeks to broaden the two simple terms to also
include (i) ‘designating for’ and (ii) ‘associating funds
with.’ In other words, [Plaintiff] argues that ‘funding’
means ‘funding’ and two other alternatives to ‘funding.’”
(Doc. # 169 at 10-11)(internal citations omitted)(emphasis in
original).

Instead,

Defendants

propose

the

following

construction of this phrase: “funding a unique, single-use
stored-value card account with money in an amount equal to a
single,

adjudicated

benefit

payment

using

one

or

more

computers.” (Id.).
To support their position, Defendants provide that (1)
claim 7 of the 904 Patent requires “loading,” which Defendants
argue equals “funding” the account and (2) claims 17 and 22

15

of the 904 Patent expressly require “funding” or a “system
operable to fund” a single-use stored-value card account with
an amount equal to the approved payment by one or more
computers. (Id.).
The parties agree that “loading” means “funding,” albeit
Plaintiff seeks additional alternatives to funding. However,
upon review of the 904 Patent as a whole, the Court finds it
unnecessary to add the additional alternatives as requested
by Plaintiff. Namely, as suggested by Defendants, it is
unclear

what

“associating

Plaintiff
funds

means

with,”

by

and

“designating
therefore,

for”

or

Plaintiff’s

construction “injects ambiguity into the claims” of the 904
Patent. (See Doc. # 151 at 21). Rather, “loading” should be
afforded its customary and ordinary meaning, which the Court
finds is “funding.”
Thus, taking into consideration other constructions, the
Court construes the phrase “loading a unique, single-use
stored-value card account by one or more computers with an
amount equal to a single adjudicated benefit payment” as
follows: “funding – by one or more computers - an account –
that is only used once – [for funding a credit, debit, or EFT
card] that is associated with a single type of card to be

16

used for a single payment, to an amount equal to a single
adjudicated benefit payment.”
v.

Merging . . . Into a Computer Generated Image
File, Merging . . . Into a Document by one or
More Computers, Merging . . . Into an Electronic
File by Said One or More Computers, and Merge
. . . in an Electronic File

Plaintiff suggests that the terms “merge” and “merging”
should be construed as: “combining together, combine.” (Doc.
# 122 at 12). According to Plaintiff, these terms are “nontechnical terms that are used in the 904 Patent in keeping
with their ordinary meaning.” (Id.). To further support its
position, Plaintiff points to the dictionary definition of
the

term

“merge”

–

“to

join

together;

unite;

combine.”

(Id.)(citing www.merriam-webster.com). Plaintiff also turns
to Defendants’ expert – Mr. Turi – who Plaintiff contends
similarly equated the term “merge” with “combine.” (Id.).
Defendants submit that, in the context of the relevant
Patents, the proper construction of the above phrases is:
“using a computer to combine into one [image file/electronic
document/electronic
number,

the

file]

adjudicated

the

stored-value

benefit

payment

card

account

amount,

the

expiration date, the card verification value code, and the
explanation of benefits.” (Doc. # 127 at 12)(emphasis added).
According to Defendants, the plain language of the 904 Patent

17

(and 748 Patent) requires “merging” into a single electronic
file or document both the (1) stored-value card payment
information and (2) an explanation of benefits. (Id.)
As set forth in Baldwin Graphic Systems, Inc. v. Siebert,
Inc., “an indefinite article ‘a’ or ‘an’ in patent parlance
carries the meaning of ‘one or more’ in open-ended claims
containing the transitional phrase ‘comprising.’” 512 F.3d
1338, 1342-43 (Fed. Cir. 2008)(quoting KCJ Corp. v. Kinetic
Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). “The
subsequent use of definite articles ‘the’ or ‘said’ in a claim
to refer back to the same claim term does not change the
general plural rule, but simply reinvokes that non-singular
meaning.” Id.
The exceptions to this rule are “extremely limited:” a
patentee must “evince[ ] a clear intent” to limit “a” or “an”
to “one.” Id. at 1342. Thus, an exception only arises “where
the language of the claims themselves, the specification, or
the prosecution history necessitate a departure from the
rule.” Id.; see C.I.R. v. Driscoll, 669 F.3d 1309, 1312 (11th
Cir. 2012)(“[A]s the Federal Circuit noted, its rule that ‘a
. . . means more than one,’ does not apply where language,
history, or context require a departure from that rule.”).

18

Here, the abstract for the 904 Patent (and 748 Patent)
states that the Patent involves “[a] method of facilitating
payment of health care benefits to on behalf of a payer
comprising the step of electronically transmitting a storedvalue card account payment of the authorized benefit amount
concurrently with an explanation of benefits.” (See Doc. ##
66-1, 66-2)(emphasis added). Plaintiff argues that the rule
of singularity is inappropriate because while the prosecution
history dealt with a claim that used the word “concurrently,”
that word does not appear within the claims of the 904 Patent
(and 748 Patent). (Doc. # 171 at 5). Rather, Plaintiff submits
that

the

“concurrently”

language

is

an

artifact

of

the

prosecution history of the 686 parent patent, which is why
both the 904 and 748 Patent have identical specifications.
(See Doc. # 183). Therefore, Plaintiff suggests that if this
Court adopts Defendants’ construction, it would improperly
limit every “merging” term contained in the 904 Patent (and
748 Patent). (Doc. # 171 at 8).
To the contrary, Defendants point to the prosecution
history of the relevant Patents, and argue that “the claims
must be understood to require creating and transmitting a
single electronic file containing [explanation of benefits]
and card payment information.” (Doc. # 127 at 15). According

19

to Defendants, Plaintiff’s original claims attempted to cover
transmitting the explanation of benefits and card information
at the same time (i.e., concurrently). (Id.).
However, Defendants provide that the original claims
were rejected in view of a prior art reference that already
disclosed such “concurrent transmission,” and in response,
Plaintiff “cancelled its initial claims and submitted new
claims

explicitly

limited

to

claimed

transmission

of

a

‘computer-generated image file’ containing ‘both’ the payment
information

and

the

explanation

of

benefits.”

(Id.).

Plaintiff’s amendment was successful. (Id.).
According

to

Defendants,

“[i]n

the

Notice

of

Allowability, the [Patent and Trademark Office] explained
that the claims were allowed, in part, because the prior art
failed to disclose ‘creating a computer-generated image file
containing the stored-value card account number . . . [and]
an explanation of benefits.’” (Id.). Therefore, Defendants
argue that Plaintiff “surrendered that claim scope during
prosecution of its original patents,” and Plaintiff is thus
“estopped

from

asserting

that

products

that

transmit

[explanation of benefits] and payment information in separate
files, even if they are transmitted concurrently, fall within
the scope of its claims.” (Id.)(citing Festo Corp. v. Shoketsu

20

Kinzoku

Kogyo

Kabushiki

Co.,

535

U.S.

722,

733

(2002)(“Estoppel is a ‘rule of patent construction’ that
ensures that claims are interpreted by reference to those
‘that have been cancelled or rejected.’”); MBO Labs. v.
Becton, Dickinson & Co., 602 F.3d 1306, 1313 (Fed. Cir.
2010)(“[A] patentee’s reissue claims are invalid when the
patentee broadens the scope of the claim in reissue to cover
subject matter that he surrendered during prosecution of the
original claim.”)).
To support their position, Defendants rely on Tivo, Inc.
v. EchoStar Communications Corp., 516 F.3d 1290 (Fed. Cir.
2008). In Tivo, the court was asked to determine whether the
relevant

term

limitation.

“50X

Id.

at

DVRs”

1302.

satisfied

The

defendant

the

“assembles”

argued

that

the

“‘assembles’ limitation covers only the assembly of audio and
video components into a single, interleaved MPEG stream.” Id.
However,

the

plaintiff

suggested

that

the

“‘assembles’

limitation also covers the assembly of each component, audio
and video, into its own separate stream.” Id. Upon review,
the Tivo court indicated that:
Unlike the case in Baldwin Graphic, where the
claims and the written description could be read to
encompass
either
a
singular
or
plural
interpretation of “a” or “an,” the claims and

21

written description in this case make clear that
the singular meaning applies. The pertinent claim
language refers to “assembl[ing] said video and
audio components into an MPEG stream,” which in
context clearly indicates that two separate
components are assembled into one stream, not that
the video components are assembled into one stream
and the audio components into a second stream.
Id. Here, the Court cannot overlook the fact that the Tivo
court found that the claim language “clearly indicates,” that
the written description requires a “singular meaning.” That
is not the case here. Rather, as in Baldwin Graphic, the Court
finds that the written description could be read as a singular
or plural interpretation.
In

Baldwin

Graphic,

the

Court

was

tasked

with

determining whether the district court erred in, among other
things, construing the term “a pre-soaked fabric roll” as “a
single presoaked fabric roll.” 512 F.3d at 1338. The Baldwin
Graphic

court

disagreed

with

the

district

court’s

construction. Id. at 1342-43. In doing so, the court found
that the record was devoid of a “clear indication that the
applicant departed from the general rule for the ‘a.’” Id. at
1343.

Further,

the

court

noted

“[n]othing

in

the

claim

language, specification, or prosecution history compels an
exceptional reading of ‘a’ in this case.” Id. The court also

22

determined that the patent’s specification did not require a
singular reading: “Under the terms of this description, the
plastic sleeve could be in intimate contact with multiple
fabric rolls . . . This description contains no requirement,
implicit or explicit, that the plastic sleeve must be in
intimate contact with the entire fabric roll.” Id. Therefore,
the Baldwin Graphic court concluded that “a pre-soaked fabric
roll” is not limited to a “single roll.” 512 F.3d at 1338.
Here,

like

in

Baldwin

Graphic,

upon

review

of

the

prosecution history, specification, and the context of the
904 Patent (and 748 Patent), the Court finds that the term
“merge”

does

singularity.

not
The

illustrations;
position.

(Doc.

require
Court

application

notes

specifically,
#

151

at

that

figure

11).

the

rule

of

Defendants

rely

on

4,

However,

of

to

bolster

figure

4

their
is

an

“exemplary embodiment” and not the only embodiment of the
relevant Patents. To that end, as articulated by Plaintiff,
both Patents state that “matters contained in the . . .
description or shown in the accompanying drawings shall be
interpreted as illustrative and not in a limiting sense.”
(Doc. ## 171 at 8, 66-1 at 8, 66-2 at 9). Thus, the Court is
not persuaded by Defendants’ argument.

23

Furthermore, the Patent materials are devoid of any
indication that the plain language of the claims “clearly
indicate” that the relevant information should be merged into
a “single” or “one” file or document. Finally, Defendants
suggest that the Patent and Trademark Office examiner allowed
the Patents’ claims because the prior art “fails to disclose
the stored value card is loaded with funds equal to the
authorized benefit payment, and creating a computer-generated
image file containing the stored-value card account number,
a card verification value code, and expiration date, and an
explanation of benefits.” (Doc. # 127 at 15). However, even
if true, this contention does not suggest that the 904 Patent
(and 748 Patent) requires merger of this relevant information
into a “single” or “one” file or document.
Further, it is telling that the PTAB determined that
“[a] relevant definition of the term ‘merge’ is ‘[t]o combine
two or more items, such as lists, in an ordered way and
without changing the basic structure of either.’” (Doc. #
122-6 at 12)(emphasis in original). The PTAB found that this
definition was “consistent with the [s]pecification (e.g.,
the depiction in Fig. 4) of the 904 patent,” and that this
was the broadest reasonable construction. (Id.). The Court
recognizes that the standard required of the PTAB is different

24

than

the

standard

required

of

this

Court

at

the

claim

construction phase; however, the Court finds that the PTAB’s
construction is helpful to its present analysis.
Both parties agree that the terms “merge” and “merging”
equate to “combine,” although the parties disagree as to
whether it is to “combine” the information into one single
document or file. Therefore, the Court determines that the
appropriate construction of the phrases: (1) “merging . . .
into a computer generated image file” is “combining . . .
into a computer generated electronic file that contains an
image;” (2) “merging . . . into a document by one or more
computers” as “combining . . . by one or more computers a
writing conveying information that can be stored as a file;”
(3) “merging . . . into an electronic file by said one or
more computers” as “combining . . . into an electronic file
by said one or more computers;” and (4) “merge . . . in an
electronic file” as “combine . . . in an electronic file.”
vi.

Image File

Plaintiff

requests

a

construction

of

this

term

as

follows: “an electronic file that contains an image,” which
Plaintiff

argues

is

consistent

with

the

904

Patent

specification, claim 2 of the 904 Patent, and the PTAB’s
construction of the term. (Doc. # 122 at 13). At the Markman

25

hearing, Defendants indicated that they did not disagree with
Plaintiff’s construction, but did not think a construction of
this term was necessary for the jury. However, this Court
finds that construction of this phrase is appropriate under
the circumstances as the Court finds that it would be helpful
to the trier of fact. Therefore, as the parties do not
disagree on Plaintiff’s proposed construction of the term,
the

Court

will

construe

the

term

“image

file”

as

“an

electronic file that contains an image.”
vii.

Transmitting and Transmitted

Plaintiff contends that these terms mean: “sending or
conveying from one person or place to another” and “sent or
conveyed from one person or place to another.” (Doc. # 122 at
13). Plaintiff argues that these terms “are common, nontechnical terms that are used in the 904 Patent in keeping
with their ordinary meaning.” (Id.). To that end, Plaintiff
points to the dictionary definition of the term “transmit” - “to send or convey from one person or place to another.”
(Id.)(citing www.merriam-webster.com).
Defendants, however, submit that the 904 Patent should
be read in the computer context, and the terms “transmitting”
and

“transmitted”

should

be

given

their

ordinary

and

customary meaning: “electronically transmitting.” (Doc. # 127

26

at 28). While the Court agrees with Defendants that the
ordinary meaning of these terms should apply, the Court
disagrees that such meaning of these terms establishes that
the

terms

construed

“transmitting”
as

and

“transmitted”

“electronically

should

transmitting”

be
and

“electronically transmitted.”
Some of the claims within the 904 Patent explicitly
require “computer generated” activity, while others do not.
Therefore,

the

Court

declines

to

read

the

“electronic”

limitation into claims where such limitation is not explicit
in the claim language itself. Doing otherwise “would add
redundancy to the claims where the limitation is explicit and
improperly narrow claims where it is absent.” (See Doc. # 171
at 6).
For example, if this Court were to construe these terms
as suggested by Defendants, claim 12 of the 904 Patent would
read in relevant part, “wherein the stored-value card account
number is linked to a unique, single-use stored-value card
account

pre-funded

with

an

amount

equal

to

a

single,

adjudicated benefit payment, and wherein the document is
electronically

[electronically

sent

or

conveyed]

to

the

health care provider as payment for the medical services by

27

aid

one

or

more

computers.”

(Doc.

#

66-1

at

9).

Such

repetitive language is unnecessary.
The Court finds that the ordinary and customary meaning
of these terms is “sending or conveying from one person or
place to another” and “sent or conveyed from one person or
place to another.” Therefore, the terms “transmitting” and
“transmitted” shall be construed as follows: “sending or
conveying from one person or place to another” and “sent or
conveyed from one person or place to another.”
viii.

Document

Plaintiff
follows:

“a

requests

written,

a

construction

printed,

or

of

this

electronic

term

matter

as

that

provides information.” (Doc. # 122 at 14). According to
Plaintiff, such construction is consistent with the ordinary
meaning of that term, which is defined as “a writing conveying
information.” (Id.)(citing www.merriam-webster.com).
Defendants
“directed

to

submit

that

computerized

the

asserted

systems

and

Patents
methods

are
for

transmitting payment and explanations of benefit to health
care providers.” (Doc. # 127 at 17). To that end, Defendants
contend that “[a] person of ordinary skill in the art would
understand

[this]

claim

term

to

be

within

the

specific

computer context.” (Doc. # 151 at 5). Therefore, Defendants

28

posit that the term “document” should be construed as: “a
piece of text considered to be a single item and usually
stored as a file.” (Id.). However, as stated previously, (1)
there is no clear intent in the 904 Patent that the patentee,
Mr. Allen, sought to have “document” defined as a “single
item” and (2) the Court declines to generally read the
“electronic” limitation into the claims of the 904 Patent
where such limitation is not explicit in the claim language
itself. Accordingly, the term “document” will be construed as
follows: “a writing conveying information that can be stored
as a file.”
ix.

Unique

Defendants request that this Court construe several
phrases that contain the term “unique”:
a. Unique, Stored-Value Card Account
Plaintiff proposes that the term “unique” be construed
as “one of a kind.” (Doc. # 122 at 15). Plaintiff provides
that this term is “a common, non-technical term that is used
in the 904 Patent in keeping with its ordinary meaning.”
(Id.).

Furthermore,

Plaintiff

points

to

the

dictionary

definition of “unique” – “being the only one” - to support
its

position.

(Id.)(citing

www.merriam-webster.com).

The

Court notes that at the Markman hearing, Plaintiff indicated

29

that what is being conveyed by the ordinary meaning of the
term “unique” in the 904 Patent is that an individual has an
account

that

is

not

going

to

be

reused.

To

that

end,

Plaintiff’s description of the term’s ordinary meaning is in
line with Defendants’ proposed construction stated below –
“only used once.”
Defendants

contend

that

“with

regard

to

the

term

‘unique’ the specification is silent on the meaning.” (Doc.
# 127 at 22). Therefore, Defendants suggest that in context
“the term ‘unique’ as used to modify ‘stored-value card
account’ means an account that is only used once.” (Id.).
Thus, Defendants request the proposed construction for the
phrase “unique, stored-value card account”: “an account (for
funding a credit, debit, or EFT card) that is only used once.”
(Doc. # 169 at 9). As Plaintiff admits that what is being
conveyed is in line with Defendants’ proposed construction,
the Court adopts Defendants’ proposed construction.
b. Unique, Single-Use Stored-Value Card Account
Plaintiff construes this phrase as: “a one of a kind,
credit card, debit card, or EFT card account, which card
account is associated with a single type of card to be used
with a single type of services terminal and no other type of
payment terminal for a single payment.” (Doc. # 122 at 20).

30

Conversely, Defendants seek the following construction
of this phrase: “a single account (for funding a credit,
debit, or EFT card) that is only used once for a single
benefit payment.” (Doc. # 127 at 21). To support their
position, Defendants argue that:
Within the context of the patent, “single-use”
means a single account that is used for a single
benefit payment. The specification uses the word
“single” only to describe an account for making a
“single benefit payment” with a card. The patent
further describes “one-time use” cards that can
only be charged for the benefit amount and cannot
be overcharged. [Therefore,] [i]n context, one of
ordinary skill in the art would accord “single-use”
this meaning, requiring a single account for making
a single benefit claim payment . . . [Further,] in
context “unique” as used to modify “store-value
card account” means that [it] is only used once.
(Id. at 22)(internal citations omitted).
Defendants
construction

further

“runs

argue

afoul

of

that
the

Plaintiff’s
doctrine

proposed
of

claim

differentiation as it provides that an independent claim
should not be construed as requiring a limitation added by a
dependent claim.” (Id. at 23). Namely, Defendants contend
that claims 5, 11, 16, 21 and 26 of the 904 Patent provide
that the stored-value card account is only chargeable through
a medical services terminal. (Id.). Therefore, Defendants
request that the Court reject Plaintiff’s effort to read the

31

“medical service terminal” limitation from the dependent
claims (claims 5, 11, 16, 21 and 26) into the remaining
independent claims of the 904 Patent. (Id.).
Under the doctrine of claim differentiation, each claim
in a patent is presumptively different in scope. Comark
Comm’ns., Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed.
Cir. 1998). “[T]he presence of a dependent claim that adds a
particular
limitation

limitation
in

question

raises

a

is

found

not

presumption
in

the

that

the

independent

claim[,] [a]lthough that presumption can be overcome if the
circumstances suggest a different explanation, or if the
evidence favoring a different claim construction is strong.
. . .” Reckitt Benckiser Inc. v. Watson Labs., Inc., 430 F.
App'x 871, 877 (Fed. Cir. 2011); see Karlin Tech., Inc. v.
Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999)
(explaining

that

the

doctrine

of

claim

differentiation

“normally means that limitations stated in dependent claims
are not to be read into the independent claim from which they
depend”).
Here, the specification of the 904 Patent indicates that
“the stored-value card account payment may only be charged
through a medical services terminal.” (See Doc. # 66-1).
Further, claims 5, 11, 16, 21, and 26 provide that the stored-

32

value card account is only chargeable through a medical
services terminal. (Id.). However, in other claims (i.e.,
claim 1), no such limitation exits; the limitation is not
carried

from

Therefore,

the

the

specification

Court

declines

to
to

the

claim

include

itself.

Plaintiff’s

suggested limiting language – “to be used with a single type
of services terminal [(i.e., medical services terminal)] and
no other type of payment terminal” throughout all claims of
the 904 Patent. Accordingly, the Court adopts the following
construction for the phrase “unique, single-use stored-value
card account”: “an account (for funding a credit, debit, or
EFT card) that is only used once and is associated with a
single type of card to be used for a single payment.”
c. A Unique, Single-Use Stored-Value Card
Account Prefunded With an Amount Equal to a
Single, Adjudicated Benefit Payment
Plaintiff construes this phrase as: “a one of a kind,
credit card, debit card, or EFT card account, which card
account is associated with a single type of card to be used
with a single type of services terminal and no other type of
payment terminal for a single payment, in an amount equal to
a single, adjudicated benefit payment.” (Doc. # 122 at 20).
Defendants argue that this phrase should be construed as
“a

unique,

single-use

stored-value

33

card

account

that

is

funded with money in an amount equal to a single, adjudicated
benefit payment before the card information is transmitted to
the health care provider.” (Doc. # 127 at 25). To support
their position, Defendants provide that claim 12 of the 904
Patent includes an additional requirement that the account be
“prefunded” – (i.e., that money be transferred into the
account before the card information is transmitted to the
health care provider.) (Id.). Specifically, Defendants assert
that

the

904

Patent

“specification

describes

that

by

prefunding the card account to the authorized benefit amount,
it is not possible to charge more than the authorized benefit
amount.” (Id. at 25-26). The other asserted claims in the 904
Patent similarly require “loading” or “funding” an account,
but do not include the limitation that the account be funded
with the authorized amount in advance of sending the card
information.

(Id.).

Therefore,

Defendants

argue

that

Plaintiff’s proffered construction reads limitations into the
claims

of

the

904

Patent

that

are

unsupported

by

any

understanding of the word prefunded. (Id.). The Court agrees.
Claim 12 is the only claim in the 904 Patent with the
“prefunded” requirement, and therefore, the Court declines to
adopt Plaintiff’s generalized construction to apply to all
claims of the 904 Patent. Rather, the Court adopts the

34

Defendants’ proffered construction and incorporates it into
previously determined constructions. Thus, the phrase “a
unique, single-use stored-value card account prefunded with
an amount equal to a single, adjudicated benefit payment”
shall be construed as: “an account (for funding a credit,
debit, or EFT card) that is only used once and is associated
with a single type of card to be used for a single payment
that is funded with money in amount equal to a single,
adjudicated benefit payment before the card information is
sent to the health care provider.”
x.

Sending and Send

Plaintiff suggests that the terms “sending” and “send”
should be construed as “delivering” and “deliver.” (Doc. #
122 at 15). Plaintiff argues that these are “common, nontechnical

terms”

that

should

be

afforded

their

ordinary

meaning. (Id.). To support its contention, Plaintiff points
to the dictionary definition of the term “send” as (1)
“deliver” and (2) “to cause to go or be carried, dispatch,
convey, or transmit.” (Id. at 15-16)(citing www.merriamwebster.com). According to Plaintiff, “Defendants do not
propose construing any terms in the 904 patent containing
‘sending’ or ‘send,’ but have not agreed to the construction
proposed by [Plaintiff].” (Id. at 16).

35

Defendants suggest that the term “sending” should be
given its ordinary and customary meaning. (Doc. # 127 at 28).
Defendants further argue that Plaintiff’s construction is not
within the computerized context of the 904 Patent, and thus,
Plaintiff’s construction, attempts to remove any requirement
that the claims be rooted in computer implemented technology.
(Id.).
Here, in the context of the 904 Patent, both parties
agree that the terms “sending” and “send” should be afforded
their ordinary meaning. The Court agrees; and likewise, the
Court finds it unnecessary to construe these common, nontechnical terms. Further, the Court previously determined
that it will not narrow the 904 Patent claims to be read
generally in the computer context.
xi.

Acquiring
a
Single-Use
Stored-Value
Card
Account Number and Loading it With Funds Equal
to the Authorized Amount

Plaintiff suggests the following construction for this
phrase: “obtaining a credit card, debit card, or EFT card
account number associated with a single type of card to be
used with a single type of services terminal and no other
type of payment terminal for a single payment and designating
for, funding, or otherwise associating funds with, such card
account in an amount equal to the authorized amount.” (Doc.

36

# 122 at 17). Plaintiff submits that this construction is a
combination of (1) the stipulated construction of the term
“stored-value card,” (2) Plaintiff’s proposed constructions
for “single-use” and “loading,” and (3) the ordinary meaning
of “acquiring.” (Id.). Plaintiff provides that “acquiring” is
defined as – “to come into possession or control of often by
unspecified means.” (Id.)(citing www.merriam-webster.com).
Thus, according to Plaintiff, the proposed construction of
“acquiring” as “obtaining” is consistent with its ordinary
meaning and its use in the 904 Patent. (Id.).
To begin, Defendants submit that claim 2 of the 904
patent is invalid as indefinite under 35 U.S.C. § 1122 because
it states an impossibility: “loading an ‘account number’ with
funds.” (Doc. # 127 at 26). Specifically, Defendants argue
that the claim requires “loading a single-use, stored-value
card account number with funds in the amount of the authorized
payment.” (Id. at 27)(emphasis in original).

2 Pursuant to 35 U.S.C. § 112(a), “The specification shall
contain a written description of the invention, and of the
manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall
set forth the best mode contemplated by the inventor or joint
inventor of carrying out the invention.”
37

However, the stored-value card account number refers to
a number that identifies an account for funding a credit,
debit, or EFT card. (Id.). Thus, Defendants suggest that the
account number is distinct from the account itself and cannot
be loaded with funds. (Id.). Nevertheless, to the extent this
Court disagrees with Defendants’ “indefiniteness argument,”
Defendants contend that Plaintiff’s proposed construction
should not be adopted. (Doc. # 169 at 11). Noteworthy,
Defendants

do

not

provide

this

Court

with

a

proposed

construction.
“Indefiniteness is a matter of claim construction, and
the same principles that generally govern claim construction
are applicable to determining whether allegedly indefinite
claim language is subject to construction.” Apotex, Inc. v.
UCB, Inc., 970 F. Supp. 2d 1297, 1331 (S.D. Fla. 2013) aff'd,
763 F.3d 1354 (Fed. Cir. 2014)(internal quotations omitted).
Thus, this Court primarily considers the intrinsic evidence
consisting of the claim language, the specification, and the
prosecution

history.

Id.

In

addition,

similar

to

claim

construction, a court may consider certain extrinsic evidence
in resolving disputes regarding indefiniteness. Id.
“A claim is invalid as indefinite . . . if the claim is
not amenable to construction.” Merial Ltd. v. Velcera Inc.,

38

877 F. Supp. 2d 1348, 1359-60 (M.D. Ga. 2012). “Because a
claim is presumed valid, a claim is indefinite only if the
claim is insolubly ambiguous and no narrowing construction
can

properly

be

adopted.”

Id.

(emphasis

added)(internal

quotation marks omitted). In addition, “[a] patent is invalid
for indefiniteness if its claims, read in light of the
patent's

specification

and

prosecution

history,

fail

to

inform, with reasonable certainty, those skilled in the art
about the scope of the invention.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2123 (2014).
Upon

consideration

of

Defendants’

“indefiniteness”

challenge, the Court determines that Defendants have failed
to meet their burden. Defendants have not only failed to prove
indefiniteness clearly and convincingly, they have failed to
present any evidence in support of their position. Rather,
the Court determines that a person skilled in the art –
looking at the 904 Patent as a whole - would understand that
an account for a stored-value card, which is identified by a
number,
should

is
be

associated
construed,

(i.e.,
if

loaded)

possible,

with

as

to

funds.

Claims

sustain

their

validity, Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed.
Cir. 1999), and for the reasons above, the Court finds that
claim 2 is not invalid for indefiniteness.

39

Thus, the Court turns to the construction of this phrase.
Considering the 904 Patent as a whole, and the Court’s
previous

constructions,

the

Court

finds

that

the

proper

construction for the phrase “acquiring a single-use storedvalue card account number and loading it with funds equal to
the authorized amount” is: “obtaining a credit card, debit
card or EFT card account number associated with a single type
of card to be used for a single payment and funding it with
funds equal to the authorized amount.”
xii.

Creating a Computer Generated File Containing
. . . by one or More Computers

According to Plaintiff, this phrase should be construed
as: “using one or more computers to create one or more related
documents that contain . . .” (Doc. # 122 at 19). Plaintiff
contends that this construction uses the ordinary meaning of
the term “file,” which is defined as “an orderly arrangement
of

papers,

cards,

etc.,

www.merriam-webster.com).

as

for

reference.”

Plaintiff

further

(Id.)(citing

provides

that

Defendants’ proposed construction is composed of commonly
understood, non-technical terms that should be accorded their
ordinary meaning and, therefore, no construction is required.
(Id.).

40

Defendants suggest that this phrase should be construed
as “using a computer to generate one computer file containing
the stored-value card account number, the adjudicated benefit
payment amount, the expiration date, the card verification
value code, and the explanation of benefits.” (Doc. # 127 at
18).

To

support

their

position,

Defendants

provide

the

following rationale: (1) claim 7 of both Patents requires
“creating a [ ] file . . . by one or more computers;” (2)
claim 7 of the 904 Patent further specifies that the file is
“computer generated” in addition to specifying that it is
created “by one or more computers;” (3) the file must contain
“the

stored-value

card

account

number,

the

adjudicated

benefit payment amount, a card verification value code, an
expiration date, and the explanation of benefits; and (4)
both patents require “sending the file to the health care
provider.” (Id.). Therefore, Defendants argue that the plain
language of the “creating . . .” phrase, read in the context
of the 904 Patent specification, “requires using a computer
to

generate

a

single

computer

file

containing

the

card

information and the [explanation of benefits].” (Id.).
For the reasons set forth above; specifically, within
the Court’s analysis on the terms “merge” and “merging,” the
Court declines Defendants’ narrow construction. Instead, by

41

incorporating

its

previous

constructions,

the

Court

determines that the construction of the phrase “creating a
computer generated file containing . . . by one or more
computers” is: “using one or more computers to create one or
more computer generated related documents containing. . . .”
xiii.

Stored-Value Card Account Number

Plaintiff submits that the construction of this term
should be “a credit card, debit card, or EFT card account
number.” (Doc. # 122 at 20). However, Defendants argue that
this term should be construed as “a number that identifies or
that is linked to an account for funding a credit, debit, or
EFT card.” (Doc. # 127 at 20)(emphasis added). According to
Defendants, claim 7 of the 904 Patent states that “the storedvalue card account number is linked to a . . . stored-value
card account pre-funded with an amount equal to a single,
adjudicated
Defendants

benefit
contend

payment.”
that

“the

(Id.
card

at

21).

‘account’

Therefore,
holds

funds

(i.e., money) in the amount of the payment, [whereas] the
card account number is the number that identifies or is linked
to

the

account.

It

is

the

card

account

number

that

is

transmitted to the provider in the same file or document as
the EOB.” (Id.)(emphasis added).

42

Upon review of the plain language of the 904 Patent, the
Court

finds

that

adoption

of

Defendants’

proposed

construction is unnecessary to assist the trier of fact.
Rather,

the

Court

determines

that

it

is

appropriate

to

construe this phrase using its plain and ordinary meaning: “a
credit card, debit card, or EFT card account number.”
xiv.

Single-Use Stored-Value Card Account

Based on the Court’s previous constructions, the Court
determines that this phrase should be construed as follows:
“an account (for funding a credit, debit, or EFT card) that
is associated with a single type of card to be used for a
single payment.”
2. 748 Patent
The parties request that this Court construe several
terms and phrases in the 748 Patent that this Court has
already

addressed

in

its

analysis

of

the

904

Patent;

specifically, the following terms and phrases: (1) unique,
(2) unique, stored-value card account, (3) unique, singleuse stored value card account, (4) explanation of benefits,
(5) document, (6) single-use, (7) stored-value card account
number, (8) “merge . . . in a file,” (9) “merging . . . in a
file,” (10) “merging . . .

into a document by one or more

43

computers,” (11) “merge . . . in a file,” and (12) “creating
a file containing . . . by one or more computers.”
For these terms and phrases, this Court incorporates its
previous

analysis.

However,

for

those

terms

and

phrases

applicable only to the 748 Patent, the Court will address
each in turn.
i.

Allocating Funds, Allocated Within an Account
and Allocate Funds

Plaintiff suggests the following construction for these
phrases: “designating for, funding, or otherwise associating
funds for payment with, a particular card account.” (Doc. #
122 at 21).

According to Plaintiff, such construction uses

the ordinary meaning of the term “allocate” together with the
PTAB’s

construction

of

“funds.”3

(Id.

at

22).

However,

Plaintiff acknowledges that the PTAB’s decision related to
the 904 Patent. (Id.). Nonetheless, Plaintiff argues that the
PTAB’s construction of the term “funds” applies equally to
the 748 Patent, which shares the same parent patent and
specification as the 904 Patent. (Id.).
However, Defendants note that the term “funding” and
other similar terms (e.g., “loading”) are used exclusively in

3 The PTAB construed the term “funds” to mean “funds for
payment.” (Doc. # 122-6 at 14).
44

the claims of the 904 Patent, whereas the term “allocating”
is used exclusively in the claims of the 748 Patent. (Doc. #
127 at 28). Thus, Defendants argue that the patentee, Mr.
Allen, has demonstrated a clear distinction between the terms
“allocate” and “fund.” (Id.).
Although

Plaintiff

provides

the

declaration

of

Mr.

Allen to support its position that the terms “allocating”
“allocated”

and

“allocate”

in

the

748

Patent

mean

“designating for or otherwise associating with” (same as used
in 904 Patent), the Court cannot overlook the fact that
different terms were chosen to be used in the 904 Patent and
the 748 Patent, even though the Patents share a parent patent.
Thus,

the

Court

declines

Plaintiff’s

construction,

and

instead, the Court agrees with Defendants that these terms
should be afforded their ordinary and customary meaning.
The Court’s review of the ordinary meaning of “allocate”
is to set apart for a particular purpose, assign, or allot.
Therefore, the Court finds that giving these phrases their
ordinary and customary meaning – as proffered by Defendants
–

the

terms

“allocating

funds,”

“allocated

within

an

account,” and “allocate funds” should be construed as “to set
apart for a particular purpose, assign, or allot.”
ii.

File

45

Plaintiff proposes that the proper construction of this
term is “one or more related documents.” (Doc. # 122 at 23).
Plaintiff argues that this construction “is consistent with
its ordinary meaning and its use in the 748 Patent,” and the
term “file” is defined as “a collection of related data
records.”

(Id.)(citing

the

finds

Court

that

www.merriam-webster.com).
the

phrase

“related

However,

documents”

is

ambiguous, and will not assist the trier of fact.
Defendants provide that “[t]he asserted patents are
directed to computerized systems and methods for transmitting
payment

and

providers.”

explanations
(Doc.

#

127

of

benefit

at

17).

to

health

Understanding

care
this,

Defendants suggest that the “file . . . term[] should be
accorded [its] meaning within that computer context” - “a
collection of information, referred to by file name.” (Id.).
The 748 Patent specification indicates that the “file”
shall contain the following information: (1) stored-value
card account number, (2) the adjudicated benefit payment
amount, (3) a card verification value code, (4) an expiration
date, and (5) the explanation of benefits. (See Doc. # 662). Therefore, the Court finds that this term shall be

46

considered

a

collection

of

information,

which

can

be

contained in one or more documents.
Thus,

combining

aspects

of

both

parties’

proposed

constructions, the Court construes the term “file” as: “one
or more documents containing a collection of information,
referred to by file name.”
iii.

Sending, Sent, and Send

According

to

Defendants,

several

claims

of

the

748

Patent require merging stored value card information and
explanation of benefits into a file or document “by one or
more

computers,”

and

subsequently

sending

that

file

or

document to the health care provider. (Doc. # 151 at 14).

As

such, pursuant to the plain language of the claims, Defendants
provide that the file or document to be “sent” is a computer
file or document. (Id.). Thus, in this context, Defendants
argue that the terms should be interpreted to likewise require
transmission of the file or document by computer means (i.e.,
electronic transmission). (Id.).
According to Plaintiff, however, none of the claims
contained

in

the

748

Patent

require

“electronically

transmitting” a file or document. (Doc. # 171 at 5). For
example, claim 7 of the 748 Patent requires “sending the file
to the health care provider,” without specifying that the

47

“sending” be electronic. (Id.). Plaintiff claims that the
same holds true for claim 13 (“the document is sent to the
health care provider as payment for the medical services”),
and claim 25 (“to send the file to the health care provider
as payment for the benefit claim”). (Id. at 5-6). Furthermore,
Plaintiff argues that claim 19 does not even contain a
“sending” or “transmitting” limitation. (Id. at 6). Thus,
Plaintiff suggests that Defendants’ citation to the abstracts
and specific embodiments described in Plaintiff’s Patents to
support its “electronically transmitting” argument runs afoul
of controlling precedent. (Id. at 5-6).
While the claims contained in the 748 Patent indicate
that the information is merged into a file or document by one
or more computers, the claim language does not limit how the
information is sent to health care provider; specifically,
the

748

Patent

does

not

use

the

term

“electronically

transmitted.” Thus, for this Court to incorporate Defendants’
construction would be to add meaning to the claims that was
not explicitly requested by the patentee. Therefore, the
Court

declines

electronic

to

infer

transmission;

that

the

especially

748

Patent

as

the

904

requires
Patent

explicitly requires, at times, “electronic transmission or
sending” of the merged file or document and the 748 does not.

48

Rather, as set forth above, the Court determines that the
terms “sending” and “send” should be accorded their ordinary
and customary meaning, and therefore, the Court declines to
construe these common, non-technical terms.
iv.

Stored-Value Card Account

Based on this Court’s previous constructions, the Court
determines that the ordinary meaning of this term is “a credit
card, debit card, or EFT card account.”
Accordingly, it is
ORDERED, ADJUDGED, and DECREED:
(1)

Plaintiff

StoneEagle

Services,

Inc.’s

Opening

Claim

Construction Brief (Doc. # 122) is GRANTED IN PART.
(2)

Defendants

Pay-Plus

Solutions,

Inc.

and

Premier

Healthcare Exchange, Inc.’s Markman Motion to Construe
Claims (Doc. # 127) is GRANTED IN PART.
DONE and ORDERED in Chambers in Tampa, Florida, this 4th
day of June, 2015.

Copies: All Counsel of Record

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