Joao Bock Transaction Systems v. First National Bank et al

Filing 255

MEMORANDUM Opinion and Order Signed by the Honorable Harry D. Leinenweber on 6/24/2013:Mailed notice(wp, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

JOAO BOCK TRANSACTION SYSTEMS,
LLC,
Case No. 11 C 6472

Plaintiff,

Hon. Harry D. Leinenweber

v.
FIRST NATIONAL BANK, et al.,
Defendants.

MEMORANDUM OPINION AND ORDER
Before the Court are the parties’ proposed constructions of
terms contained in Plaintiff Joao Bock Transactions Systems, LLC’s
patent.

The Court construes the terms as detailed below.
I.

BACKGROUND

In this case for monetary and injunctive relief, Plaintiff
Joao

Bock

Transactions

Systems,

LLC

contends

that

Defendants

Barrington Bank & Trust Company N.A., American Chartered Bank,
Bridgeview Bank Group, Citizens First National Bank, Northbrook
Bank and Trust Company f/k/a First Chicago Bank & Trust Company,
Hinsdale Bank & Trust Company, Lake Forest Bank and Trust Company,
Libertyville Bank & Trust Company, and North Shore Community Bank
& Trust Company’s (hereinafter, collectively, the “Defendants”) are
infringing upon Plaintiff’s United States Patent No. 6,047,270 (the
“‘270 Patent”).

A.

The Parties

Raymond Joao, (“Joao”) is a licensed patent attorney.

He

holds more than nineteen patents and has more than thirty pending
applications.

In April 2000, Joao and another inventor, Robert

Bock (“Bock”), obtained the ‘270 Patent entitled, “Apparatus and
Method for Providing Account Security.” Joao and Bock assigned the
‘270 Patent to an entity called Joao Bock Transaction Systems, LLC
(hereinafter, “Joao Bock” or “Plaintiff”), a limited liability
company in New York.

Joao Bock is the legal owner of the ‘270

Patent and thus has the right (1) to exclude others from making,
using,

selling,

offering

to

sell

or

importing

the

patented

invention in the ‘270 Patent; (2) to sublicense the ‘270 Patent;
and (3) to sue for infringement and recover past damages.

Joao

Bock filed the instant suit in this Court on September 15, 2011.
Defendants
Illinois.

are

all

banks

or

financial

institutions

in

Joao Bock’s Complaint alleges that Defendants have

infringed upon a number of claims in the ‘270 Patent through
Defendants’ internet banking services.

In Plaintiff’s Complaint,

it originally named an additional nine financial institutions as
defendants.

However, those entities have since been dismissed

voluntarily.

See ECF Nos. 152, 155, 178, 179, 180, 181, 189, 231,

246, & 248.

- 2 -

B.

The ‘270 Patent

The ‘270 Patent was issued on April 4, 2000.
continuation-in-part

of

three

other

patent

It is a

applications

(No. 09/169,053, No. 08/873,945 and No. 08/694,199), that were
filed in the late 1990’s.

The invention relates to methods and

systems that provide electronic account security.

The electronic

account security is accomplished by (a) allowing restrictions to be
placed on an electronic account; and/or (b) providing an account
user

notification

of

transactions;

and/or

(c)

generating

transaction records for an account user or account.
Plaintiff has related patents that utilize some of the same
terms as the ‘270 Patent.
Patent
No.

No.

6,529,725

7,096,003

(“the

Notably, Plaintiff contends that U.S.

(“the
‘003

‘725

Patent)

Patent”)
contain

and
much

U.S.
of

Patent

the

same

specifications and terms as the ‘270 Patent.
II.

LEGAL STANDARD

Determining the meaning of a patent claim is a matter of law
for a judge to decide.

Markman v. Westview Instruments, Inc., 517

U.S. 370, 391 (1996).

The scope of the patent, delineated by the

claims, defines what rights the patentee has to exclude.
v.

AWH

Corp.,

415

F.3d

1303,

1312

(Fed.

Cir.

2005)

Phillips
(citing

Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1115 (Fed. Cir. 2004)).

- 3 -

Claims are construed from the perspective of a person of
ordinary skill in the art of the invention.

Id. at 1315.

The

claim words are given their “ordinary and customary reading,” which
is the meaning understood at the time of invention by a person
having ordinary skill in the art.

Id. at 1312-13.

Therefore,

courts begin their construction of claims with the intrinsic
evidence of a patent and with the same resources that a person of
ordinary skill would also review.

Multiform Desiccants, Inc. v.

Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
Intrinsic evidence includes a patent’s claims, specifications,
and prosecution history.

McDavid Knee Guard, Inc. v. Nike USA,

Inc., 809 F.Supp.2d 863, 868 (N.D. Ill. 2011) (citing Phillips, 415
F.3d at 1313).
determining
limitation.”
With

This evidence is the court’s “primary focus in

the

ordinary

and

customary

meaning

of

a

claim

Phillips, 415 F.3d at 1316.

respect

to

intrinsic

evidence,

“the

most

important

indicator of the meaning” of a claim term is the context and usage
in the claim language itself.

Middleton, Inc. v. Minn. Mining &

Mfg. Co., 311 F.3d 1384, 1387 (Fed. Cir. 2002).

Courts also look

at the language of non-asserted claims since the usage of a term in
one claim often illuminates the meaning of a term in other claims.
Phillips, 415 F.3d at 1314 (citing Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

- 4 -

Additionally,

claims

must

be

read

in

light

of

the

specification, which include a written description of the patent
that enables one skilled in the art to make and use the invention.
Markman, 517 U.S. at 385-386.

The Federal Circuit emphasizes that

the specification is critical to review because a “patentee may
choose to be his own lexicographer” and assign special definitions
to the words in the claims which may be inconsistent with their
ordinary meaning.
Another

Vitronics Corp., 90 F.3d at 1582.

piece

prosecution history.
(Fed. Cir. 2001).

of

intrinsic

evidence

is

the

patent’s

Gart v. Logitech, Inc., 254 F.3d 1334, 1341
This is the complete record of proceedings

before the Patent and Trademark Office.

Such evidence could be

relevant to the Court’s construction because the applicant may have
made express representations regarding the scope of the invention
during

the

prosecution.

Vitronics

Corp.,

90

F.3d

at

1582.

Furthermore, “the prosecution history limits the interpretation of
claim terms so as to exclude any interpretation that was disclaimed
during prosecution.”

Southwall Tech., Inc. v. Cardinal IG Co., 54

F.3d 1570, 1576 (Fed. Cir. 1995).
If a claim term remains ambiguous after an examination of
intrinsic evidence, the court may resort to extrinsic evidence.
Extrinsic

evidence

includes

expert

dictionaries, and learned treatises.

and

inventor

testimony,

Phillips, 415 F.3d at 1317.

However, extrinsic evidence is less reliable and less persuasive

- 5 -

than intrinsic evidence since such evidence is not part of the
patent and was not created concurrently with the prosecution of the
patent.

Id. at 1317-19.

Relying on extrinsic evidence is only

proper if the claim term remains ambiguous after looking at the
intrinsic evidence.

Interactive Gift Express, Inc. v. Compuserve,

Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001).
III.

ANALYSIS

The parties have identified the following ten terms in the
‘270

Patent

for

the

Court’s

construction:

“electronic

money

account” (Independent Claims 1, 9, 19, 31); “one of . . . and
. . .” (Independent Claims 1, 9, 19, 31); “one of a limitation and
a restriction” (Independent Claims 1, 9); “processor” (Independent
Claims 1, 19); “processing/processes’” (Independent Claims 1, 9,
19, 31); “an [apparatus/method] for providing account security”
(Independent Claims 1, 19, (apparatus), Independent Claims 9, 31
(method));

“transaction”

“receiver”

(Independent

(Independent
Claim

1);

Claims

1,

9,

19,

“communication

31);

device”

(Independent Claims 19, 31); and “notification signal” (Dependent
Claim 3).

The Court will construct each in turn.

See Joint Claim

Construction Chart Pursuant to L.P.R. 4.2(f), ECF No. 233.
A.

“Electronic Money Account”

The term “electronic money account” appears in Claims 1, 9,
19, and 31 of the ‘270 Patent.

Joao Bock’s proposed construction

of “electronic money account” is:
- 6 -

an electronic or digital account for money,
cash, credit, currency, electronic payment
system or brokerage system, including the
following: credit cards, charge cards, debit
cards
and/or
currency
or
smart
cards,
electronic money, electronic cards, electronic
cash, electronic cash cards, and/or digital
cash, digital cash cards, financial accounts
for
banking,
electronic
banking,
mobile
banking, electronic brokerage, brokerage,
checking, automated teller machine, electronic
checking, savings, money market, electronic
payment systems accounts, and/or other similar
types
of
financial
accounts,
cellular
communication
accounts,
and/or
wireless
communication accounts, as a person of
ordinary skill in the art would understand.
Pl.’s L.P.R. 4.2(c) Resp. Claim Construction Br. at 5.

Joao Bock

argues this definition is supported by the claim language as well
as the specification.
Defendants,

on

the

other

hand,

argue

that

the

phrase

“electronic money account” means “an account for money that is only
exchanged electronically.”
at 4 (emphasis added).

Defs.’ Opening Claim Construction Br.

Defendants contend that this is a specific

type of account separate and distinct from checking, savings or
credit card accounts that may be accessed electronically as well as
tangibly. Defendants allege PayPal accounts are an example of such
an account.
plain

They argue this definition is supported by the term’s

meaning,

the

specification,

and

extrinsic

evidence.

Defendants provide a dictionary definition and a report from the
U.S. Department of Treasury that recites definitions of “electronic
money” as “money represented, held, and used in electronic form.”

- 7 -

See id.; Ex. 14, ECF No. 223-16, Page ID #3064.

Because the Court

finds the term can be defined through the claim language and
specification, the Court finds Defendants’ reliance on extrinsic
evidence inappropriate.

See Interactive Gift Express, Inc., 256

F.3d at 1331.
What is more persuasive is Defendants’ argument with respect
to the doctrine of prosecution history estoppel.
Joao

Bock

cancelled

a

number

of

rejected

Defendants claim

claims

during

the

prosecution of the ‘270 Patent, and one of those rejected claims
included “an apparatus or method for providing security of a
wireless communication account.”
at 9.

Defs.’ Opening Construction Br.

Defendants argue that since the “wireless communication

account” claim was rejected, Joao Bock cannot now argue that an
“electronic

money

account”

includes

wireless

communication

accounts.
“[T]he doctrine of prosecution history estoppel prevents a
patent owner from recapturing through the doctrine of equivalents
subject matter surrendered to acquire the patent.” Duramed Pharm.,
Inc. v. Paddock Labs., Inc., 644 F.3d 1376, 1380 (Fed. Cir. 2011).
Prosecution history estoppel generally arises, “when an amendment
is made to secure the patent and the amendment narrows the patent’s
scope.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,
535 U.S. 722, 736 (2009).

- 8 -

After reviewing the prosecution history of the ‘270 Patent,
Defendants are correct.

It is apparent that Joao Bock sought

initially to have Claim 1 encompass “[a] transaction authorization,
notification and/or security apparatus, which comprise[d]:

a

device for issuing an authorization request for one of a brokerage
transaction,

an

electronic

communication device.”
(emphasis added).

cash

transaction

and

a

wireless

See J.A., ECF No. 222-1, Page ID# 2300

This claim was rejected.

Claim 1 now reads:

An apparatus for providing account security,
comprising: a receiver for receiving one of a
limitation and a restriction on usage of an
electronic money account wherein said one of a
limitation and a restriction are received from
an account holder . . . a processor for
processing a transaction on the electronic
money account in conjunction with said one of
a limitation and a restriction.
‘270 Patent, Claim 1, col. 71 lines 1-12 (emphasis added).
In light of this, the Court concludes that an “electronic
money account” cannot include wireless communication accounts.

To

hold otherwise, would effectively broaden Claim 1 to include terms
which

were

rejected

prosecution.

explicitly

during

the

‘270

Patent’s

Thus, the Court strikes “wireless communication

accounts” from Plaintiff’s proposed definition.
Defendants next argue that Joao Bock’s proposed definition
fails

because

Defendants

this

point

definition

out

that

renders

Joao

Bock’s

the

term

meaningless.

proposed

construction

includes both accounts for electronic money and credit card, charge

- 9 -

card, and debit card accounts.

They claim if the Court accepted

Plaintiff’s definition, this would cause the words “electronic
money” to lack meaning.
While at first blush this argument seems convincing, after
reviewing the specification, the Court finds this case to be an
instance where the inventors acted as their “own lexicographer[s]”
and intended the meaning of “electronic money account” to encompass
more than accounts that can only be accessed electronically.

See

AIA Eng’g Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264, 1278 (Fed.
Cir. 2011) (reinforcing the well-established principle that an
inventor

can

act

as

his

own

lexicographer

inventor’s lexicography governs).

and

in

those

the

The Court finds the language in

dependent Claim 4 particularly persuasive.

Claim 4 states:

The apparatus of claim 1, wherein said
transaction involves at least one of a good, a
service, cash, a cash instrument, a cash
derivative, a security, a stock, a bond, a
derivative instrument, a stock derivative, a
bond derivative, a commodity, a mutual fund
share, a future, an option, an index fund
derivative, electronic money, electronic cash,
electronic currency, digital money, digital
cash, digital currency, an electronic money
account,
a
digital
money
account,
an
electronic
money
checking
account,
an
electronic money savings account, an automated
teller
machine
account,
a
clearing
transaction, a check clearing transaction, an
account charging transaction, and a chargeback transaction.
‘270 Patent, col. 71, lines 34-46.

- 10 -

It is difficult to fathom how an apparatus could provide
account security for transactions involving electronic savings and
checking accounts if “electronic money accounts” only encompassed
accounts like PayPal.

In fact, it is worth noting that PayPal

accounts did not even exist until December 1998, after Plaintiff’s
applications for the ‘270 Patent were filed. Kassidy Emmerson, The
History of Paypal, (Feb. 13, 2006), http://voices.yahoo.com/thehistory-paypal16349.html.

This timetable makes it unlikely that

Plaintiff intended “electronic money accounts” to only include
accounts similar to PayPal.

See Energy Transp. Grp., Inc. v.

William Demant Holding A/S, 697 F.3d 1342, 1349 (Fed. Cir. 2012)
(words of a claim are generally given their ordinary meaning “that
the term would have to a person of ordinary skill in the art in
question

at

the

time

of

the

invention”)

(emphasis

added).

Accordingly, the Court disagrees with Defendants’ contention that
“electronic

money

accounts”

encompass

only

electronic

money

accounts similar to PayPal.
Instead,

the

Court

finds

the

specification

supports

Plaintiff’s proposed construction. See ‘270 Patent col. 3 lines 830, col. 4 lines 33-43 (stating that the invention provides a
method for providing financial transaction authorization and/or
security in conjunction with “credit card, charge card, debit card,
and/or currency or smart card use, financial account, brokerage
account, electronic money account, electronic cash account . . .”).
- 11 -

The fact that Plaintiff chose to use the term “electronic money
account” in Claims 1, 9, 19, and 31, and “brokerage account” in
Claims 11, 18, 32, and 46 does not render the other specifications
that reference credit cards and electronic checking and saving
accounts meaningless.

Accordingly, the Court adopts Joao Bock’s

proposed definition of the term “electronic money accounts,” but
strikes

the

term

“wireless

communication

accounts”

from

its

definition.
B.

“One of . . . and . . .”

The term “one of . . . and . . .” appears in Claims 1, 9, 19,
and 31.

Joao Bock’s proposed definition is “only one item from the

list.”

Id.

To illustrate this construction, it provides the

following example:

“one of A, B, and C means only A or only B or

only C.” Id.
Joao Bock contends that support for this definition lies in
another court’s construction of one of its related patents, the
‘725 Patent.

The ‘725 Patent was issued in March 2003 and is a

device that provides online notification to an account holder that
a transaction is occurring on his bank account.

See Joao v. Sleepy

Hollow Bank, 348 F.Supp.2d 120, 124 (S.D.N.Y. 2004).

In Sleepy

Hollow, the court construed the term “at least one of . . . and
. . .” to mean “one or more of one of the items contained in the
list.”

Id. at 126.

Joao Bock argues that the Court should apply

the same definition to the term here.
- 12 -

Defendants construe the term “one of . . . and . . .” to mean
“one of each item on a list.”
Br. at 10.

Defs.’ Opening Claim Construction

To illustrate, they allege that “one of A, B, and C

means one A, one B and one C.”

Id.

Defendants claim this

definition is supported by plain meaning and the specification and
argue the court’s construction in Sleepy Hollow is inapplicable
because the term in that case is distinguishable from the one here.
With respect to the applicability (or lack thereof) of Sleepy
Hollow, Defendants are correct.

In that case, the court construed

the term “at least one of . . . and . . .”
F.Supp.2d at 126 (emphasis added).
“at least.”

Sleepy Hollow, 348

The term here omits the words

In light of this distinction and the fact that the

court in Sleepy Hollow stated explicitly that its decision had
“absolutely no precedential value for any other patent,” causes the
Court to decline Plaintiff’s request to simply adopt the Sleepy
Hollow court’s construction.

Id.

Instead, the Court looks to the

claim language and specification for guidance.
Claim 9 of the ‘270 Patent provides:
A method for providing account security,
comprising: receiving one of a limitation and
a restriction on usage of an electronic money
account, wherein said one of a limitation and
a restriction are received from an account
holder;
storing said
restriction;

one

of

a

- 13 -

limitation

and

a

processing a transaction on the electronic
money account in conjunction with said one of
a limitation and a restriction; and
generating a first signal, wherein said first
signal contains information for one of
approving and disapproving the transaction.
‘270 Patent, Claim 9, col. 72, lines 9-21 (emphasis added).
If the Court simply examined the plain and ordinary meaning of
the phrase, Defendants construction of the terms would be correct.
See, SuperGuide v. Direct TV Enters., Inc., 358 F.3d 870, 886 (Fed.
Cir. 2004) (citing William Strunk, Jr. & E.B. White, The Elements
of Style 27 (4th Ed. 2000)) (stating “[a]n article of a preposition
applying to all the members of the series must either be used only
before the first term or else be repeated before each term.”).
Here, the phrase “one of” precedes a list or a pair of items and
Joao Bock chose to separate the items using the word “and,” which
implies a conjunctive list.
However, if the Court were to adopt this definition, this
would

render

meaningless.

a

substantial

portion

of

Plaintiff’s

claims

For example, take the phrase “wherein said first

signal contains information for one of approving and disapproving
the transaction.”
(emphasis

added).

‘270 Patent, Claim 9, col. 72, lines 9-21
A

single

signal

disapprove a single transaction.

would

both

approve

and

The same holds true for the

phrase, “transmitting said second signal one of to the account
holder and to a communication device associated with the account
- 14 -

holder.”

‘270 Patent, Claim 31, col. 75, lines 16-26 (emphasis

added).

To interpret this phrase to mean that a signal must

transmit to both an account holder and also a communication device
associated with the account holder is duplicative. Thus, the Court
finds the phrase, “one of . . . and . . .” means “one or more of
the items in the list” or “either or both of the items in the
list.”
Additional support is found in the specification.

See ‘270

Patent Col. 9, Lines 10-13 (“the present invention provides an
apparatus

and

fraudulent

a

and/or

method

to

prevent

unauthorized

use

and/or
of

drastically

credit

cards

.

limit
.

.”)

(emphasis added). The specifications continue in this vein, making
repeated references to the “Internet and/or the World Wide Web,”
and to communication devices that “receive and/or transmit signals,
data, and/or information . . .”

Id. at Col. 11, line 16; Col. 12,

lines 23-25.
Finally,

the

Court

finds

support

in

Sun

Pharmaceutical

Industries, Ltd. v. Eli Lilly and Company, 611 F.3d 1381 (Fed. Cir.
2010).

There, the Federal Circuit reaffirmed its holding in

Phillips and held that the courts should construe claim terms “in
light of the entirety of the patent, including its specifications
. . . [and] [t]he construction that stays true to the claim
language and most naturally aligns with the patent’s description of
the invention will be . . . the correct construction.”
- 15 -

Id. at 1388

(citations
apparatus

omitted).
and

a

The

method

‘270

for

Patent

providing

is

summarized

financial

as

“an

transaction

authorization, notification and/or security, and in particular,
provides

an

apparatus

and

a

method

for

providing

financial

transaction authorization, notification, and/or security . . .”
‘270 Patent, col. 4, lines 30-36. This description aligns with the
Court’s construction of “one of . . . and . . .” and avoids a
hyper-technical
meaning.

construction

that

would

See Lisle Corp. v. A.J. Mfg.

result

in

an

absurd

Co., 398 F.3d 1306,

1313–1314 (Fed. Cir. 2005).
Therefore, in the context of the ‘270 Patent, the Court
defines the phrase “one of . . . and . . .” in connection with a
list or a pair of items to mean “one or more of the items in the
list” or “either or both of the items in the list.”

Like the Court

in Sleepy Hollow, the Court notes that this definition is adopted
solely for the claims in the ‘270 Patent and has no precedential
value for other patents.
C.

Sleepy Hollow, 348 F.Supp.2d at 126.

“One of a Limitation and a Restriction”

The phrase “one of a limitation and a restriction” appears in
Claims 1 and 9.

Joao Bock’s proposed definition is, “only a

limitation as defined herein or only a restriction as defined
herein.”

Joint Claim Construction Chart at 4; ECF No. 233 at

Page ID#3847.

Joao Bock then defines limitations or restrictions

as things “that limit[] or restrict[] or something that bounds or

- 16 -

restrains or confines within bounds or a restraining or confining
or bounding rule or a condition or a restraint.”

Id.

Joao Bock

explains that the terms are defined in the specification and that
the

specification

“interchangeably.”

indicates

the

terms

are

to

be

used

Pl.’s L.P.R. 4.2(c) Resp. Claim Construction

Br. at 12.
Defendants do not propose a definition for this term and
instead argue the term is “insolubly ambiguous.”
Construction Br. at 13.

Defs.’ Claim

They contend that because neither the

claims nor the specification distinguish a “restriction” from a
“limitation,” a person of ordinary skill in the art would not be
able to do so, and this renders the entire term indefinite.
The Federal Circuit directs courts to apply general principles
of

claim

indefinite.

construction

when

determining

whether

a

term

is

Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325,

1332-33 (Fed. Cir. 2010).

That is, the Court will first consider

the intrinsic evidence “consisting of the claim language, the
specification, and the prosecution history.”

Biosig Instruments,

Inc. v. Nautilus, Inc., No. 2012-1289, 2013 WL 1776745 at *4 (Fed.
Cir. Apr. 26, 2013).

A claim is indefinite only if it is “not

amenable to construction” or “insolubly ambiguous.”

Datamize, LLC

v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).
In relevant part Claim 9 reads, “[a] method for providing
account security, comprising:

receiving one of a limitation and a
- 17 -

restriction on usage of an electronic money account, where said one
of a limitation and a restriction are received from an account
holder.”

‘270 Patent, Claim 9, col. 72, lines 9-14 (emphasis

added). In light of the Court’s prior construction that the phrase
“one of . . . and . . .” means either or both of the items in the
list,

the

Court

reads

the

phrase

“one

of

limitation

and

restriction” as “either a limitation or a restriction or both a
limitation and restriction.”
As support for its construction, Joao Bock points to the
specification.

In pertinent part it states:

The
limitations
and/or
restrictions
may
include types of transactions which are
allowed and/or authorized, the goods and/or
services which may be purchased with the card,
the vendors, stores and/or service provider
which may be authorized to accept the card,
limits on the dollar amounts of transactions
pertaining to each authorized vendor, seller
and/or
service
provider,
daily
spending
limits, and/or geographical area or location
wherein authorized card use may be limited
and/or authorized times for card usage . . .
‘270 Patent, Col. 18, lines 11-20 (emphasis added).
Defendants argue the specification does not save the phrase
from being indefinite. Defendants rely on PureChoice v. Honeywell,
International, Inc., 333 Fed.Appx. 544, 549 (Fed. Cir. 2009)
(unpublished) as support.
misplaced.

The Court finds Defendants’ reliance

In Honeywell, the Federal Circuit determined that two

claim limitations were impossible to differentiate and thus were
invalid for indefiniteness.

Id.
- 18 -

In making this finding, the

Federal Circuit reasoned that because the inventor had the patent
reexamined and during reexamination split a single term into two
terms

that

indefinite.

were

identical

in

meaning,

the

two

claims

were

Id. at 548-49.

The phrase here is distinguishable from that in Honeywell.
Unlike Honeywell, in this case, the specification provides a
sufficient record for the Court to understand the relationship
between “limitation” and “restriction.”

Id.

It is clear from the

specification that Joao Bock intended the words “limitation” and
“restriction” to be used interchangeably.

Particularly persuasive

is the fact that the two words are separated frequently by the
article “and/or.”
This
infringer

See, e.g., ‘270 Patent, Col. 18, lines 11-20.

evidence,

combined

with

claiming

indefiniteness

the
must

fact

that

present

an

accused

“clear

and

convincing evidence” that the term is indefinite, causes the Court
to reject Defendants’ indefiniteness argument.

See, Bid for

Position, LLC v. AOL LLC, 601 F.3d 1311, 1317-18 (Fed. Cir. 2010)
(declining to find a term indefinite and instead finding “bid” and
“value of the bid” had the same meaning because the claim language
and specification used the terms interchangeably).
Therefore, the Court finds a person ordinarily skilled in the
art would understand the phrase “one of limitation and restriction”
to mean “something that limits and/or restricts, and/or something

- 19 -

that restrains, and/or something that bounds or confines within
bounds.”

ECF No. 233 at 4.
D.

“Processor”

The word “processor” appears in Claims 1, 19, 26, and 51.

In

relevant part, Claim 1 provides:
. . . a processor for processing a transaction
on the electronic money account in conjunction
with said one of a limitation and a
restriction, wherein said processor generates
a first signal, and further wherein said first
signal contains information . . .
‘270 Patent, Claim 1, col. 71, lines 2-3; 10-15 (emphasis added).
Joao Bock sets forth the following definition for the term
“processor”:
a device which performs an operation, an
action, or a function, on, with, or regarding,
data or information, or a device which
performs a number of operations, actions, or
functions, on with, or regarding, data or
information or a device which performs an
operation, an action, or a function, or a
device which performs a number of operations,
actions, or functions . . .
ECF No. 233 at 4.
Joao

Bock

contends

this

definition

is

supported

by

the

specification.

It references the specification that describes the

functions

a

of

“central

processing

computer.”

See

Pl.’s

L.P.R. 4.2(c) Responsive Claim Construction Br. at 15.
Defendants argue that the term “processor” is not disclosed in
the specification, and is instead only mentioned in the claims and
abstract, which fail to provide guidance.
- 20 -

As a result, Defendants

rely on extrinsic evidence and propose that the term “processor”
means “that part of a computer containing the circuits required to
interpret and execute instructions.” Defs.’ Claim Construction Br.
at 14.

Defendants contend this definition is the plain and

ordinary meaning of the word.
After examining the specification referenced by Joao Bock, it
is clear that its definition is dependent upon the Court equating
the term “processor” with “central processing computer.”
generally, ‘270 Patent, Col. 19, lines 8-10, 21-25.

See

However, the

Court does not find the two terms synonymous in the context of the
‘270 Patent.

Unlike the terms “restriction” and “limitation” that

appear in the same sentence and are regularly separated with the
article “and/or,” the words “processor” and “central processing
computer” are not.

As such, the Court declines to adopt the same

definition for both terms.
F.3d

1343,

1348

(Fed.

See, Comaper Corp. v. Antec, Inc., 596

Cir.

2010)

(stating

that

there

is

an

inference that two different terms used in a patent have different
meanings).
As Defendants note, the specification does not assign or
suggest

a

particular

definition

to

the

term

“processor.”

Therefore, in order to determine the ordinary and customary meaning
of the claim term as viewed by a person of ordinary skill in the
art, it is appropriate to consult a dictionary definition for
guidance.

See Phillips, 415 F.3d at 1322-23.

- 21 -

Defendants provide

a

dictionary

from

McGraw-Hill’s

Technological Terms.

Dictionary

of

Scientific

and

Defs.’ Claim Construction Br. at 15 citing

McGraw-Hill Dictionary of Scientific and Technological Terms, 356,
1676 (6th Ed. 2003).

It defines “processor” as “a device that

performs one or many functions, usually a central processing unit.”
Id. It then defines a central processing unit as “[t]he part of a
computer containing the circuits required to interpret and execute
instructions.”

Id.

While the Court agrees with Defendants with respect to their
reliance on extrinsic evidence, the Court finds that an alternative
source more appropriate.

It is well established that the relevant

inquiry the courts undergo during the claim construction phase is
to determine how a person of ordinary skill in the art would define
a term at the time of the patent’s filing date.
at 1313 (emphasis added).
1997.

Phillips, 415 F.3d

The ‘270 Patent was filed on August 25,

Accordingly, Defendants’ reliance on a source published in

2003 is inappropriate.
In Symantec Corporation v. Computer Associates International,
the

Federal

Circuit

vacated

and

remanded

a

district

court’s

decision on infringement, and reasoned that the lower court defined
the word “computer” inappropriately.

Symantec Corporation v.

Computer Associates International, 522 F.3d 1279, 1291 (Fed. Cir.
2008).

In redefining “computer,” the Federal Circuit referenced

the Dictionary of Computing.

Id.
- 22 -

The Court references the same source here.

At the time Joao

Bock filed the application for the ‘270 Patent, the Dictionary of
Computing

defined

the

term

“processor”

usually/often the central processor.”
(4th Ed. 1997).

as:

“a

computer,

Dictionary of Computing 388

It then defined central processor as “[t]he

principal operating part of a computer.

It is usually defined as

the *ALU (arithmetic and logic unit) and *the control unit (CU)
. . .”

Id. at 68.

In light of this evidence, the Court finds that a person of
ordinary skill in the art of computer science would define the term
“processor” to be a “principal operating part of a computer.”
E.

Id.

“Processing”/”Processes”

Related to the term “processor,” the words “processing or
processes” appear in a number of Joao Bock’s claims.

Joao Bock

urges the Court to define these words to mean the following:
performing an operation, an action, or a
function, on, with, or regarding, data or
information, or performing a number of
operations, actions, or functions, on, with or
regarding, data or information, or performing
an operation, an action, or a function, or
performing a number of operations, actions, or
functions
Pl.’s L.P.R. 4.2(c) Resp. Claim Construction Br. at 17.
Defendants argue this construction is disjunctive, confusing,
ambiguous, and arbitrary.
“processing”

to

mean

They propose that the Court define
“assembling,

compiling,

generating,

interpreting, computing and otherwise acting on information in a
- 23 -

computer,”

and

generates . . .”

“processes”

to

mean

“assembles,

compiles,

Defs.’ Opening Claim Construction at 15.

Similar to the term “processor,” the specifications and claim
language do not provide guidance in constructing a definition for
the words “processes” and “processing.”

As a result, the Court

references extrinsic evidence to resolve any ambiguities.
Phillips, 415 F.3d at 1312.

See

While the Dictionary of Computing did

not provide a definition for “processing” at the time of the
invention, Alan Freedman’s, The Computer Glossary did.

It defined

“processing” as “[m]anipulating data within the computer.”
Freedman, The Computer Glossary 422 (6th Ed. 1993).

Alan

It also noted

that “[t]he term [processing] is used to describe a variety of
computer functions and methods . . .”

Id.

It defined “process”

as, “[t]o manipulate data in the computer,” adding that “[t]he
computer is said to be processing no matter what action is taken
upon the data.”

Id.

The Court finds these definitions more

understandable than either of the parties’ proposed definitions and
adopts them for the terms “processing” and “processes.”
F.

“An [apparatus/method] for providing account security”
The next term the parties ask the Court to construct is “an

[apparatus/method] for providing account security.”

This phrase

appears in the preambles of asserted independent Claims 1, 9, 19,
and 31.

The parties dispute whether the preambles are limiting.

- 24 -

Defendants contend the preambles are not limitations. Because
of this, they argue that the term does not require construction.
Joao Bock avers that the preambles give the claims life and meaning
and therefore are proper for the Court to construe.
A preamble is the introductory paragraph that appears in a
patent immediately before a claim.

See Bicon, Inc. v. Straumann,

Co., 441 F.3d 945, 949 (Fed. Cir. 2006).
not

considered

to

be

a

claim

Generally, a preamble is

limitation

if

“the

claim

body

describes a structurally complete invention such that deletion of
the preamble phrase does not affect the structure or steps of the
claimed invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).

A preamble is not

limiting if it merely provides “a descriptive name to the set of
limitations in the body of the claim that completely set forth the
invention.”

IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d

1422, 1434–35 (Fed. Cir. 2000).
However, there is not a “litmus test that defines when a
preamble limits [a] claim[‘s] scope.”

Id.

The Federal Circuit

instructs that “when the preamble is essential to understand the
limitations or terms in the claim body, the preamble limits claim
scope.”
during

Id.
the

Additionally, if an inventor relies on the preamble
patent’s

prosecution

to

distinguish

the

claimed

invention from prior art, this transforms the preamble into a claim

- 25 -

limitation. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368 (Fed. Cir. 2001).
Because the preamble language here does not provide “essential
structure or steps” or give vitality to the claims, it is not a
claim limitation.

Catalina, 289 F.3d at 808.

The Court finds the

preamble and claim language in Claim 31 particularly illuminating.
Claim

31

reads,

comprising:

“[a]

method

for

providing

account

security,

processing a first signal, wherein said first signal

contains information corresponding to a transaction occurring on an
electronic money account . . .”
(emphasis added).

‘270 Patent, Col. 75, lines 16-20

The highlighted phrase does not provide the

essential steps or structure of the ‘270 Patent and instead only
describes the use of the invention.

The Federal Circuit has held

that preambles of this nature do not limit claims “because the
patentability of the apparatus . . . depends on the claimed
structure, not on the use or purpose of that structure.” Catalina,
289 F.3d at 809; see also, Chicago Mercantile Exch., Inc. v. Tech.
Research Grp., LLC, 721 F.Supp.2d 785, 797 (N.D. Ill. 2010).
It is also worth noting that Joao Bock did not rely on the
preamble to distinguish the ‘270 Patent from prior art.

Instead,

Joao Bock asserted that its invention was unique because the prior
art did not “disclose or suggest storing the one of a limitation
and a restriction on the usage or the brokerage account or the
electronic money account . . .”

J.A. at 56, ECF No. 222-2 at

- 26 -

Page ID #2378.

While the Court acknowledges that the applicants

stated during prosecution that their invention involved “a method
for providing account security,” they distinguished their invention
from prior works by noting what their method was comprised of, not
its use.

See id. at Page ID #2377 (“applicant submits that Wong,

Blonder, or any combination thereof does not disclose or suggest a
method for providing account security, comprising receiving one of
a limitation and a restriction on usage of a . . .”).

Accordingly,

the Court finds the preamble language does not limit the invention
and therefore does not require construction.

See, generally, STX,

LLC v. Brine, Inc., 211 F.3d 588, 591 (Fed. Cir. 2000).
G.

“Transaction”

Defendants argue that the Court should define “transaction” to
mean “increasing or decreasing the balance of an electronic money
account.” Defs.’ Opening Claim Construction Br. at 18. Defendants
argue that the claim language supports their definition.
However, after examining all of claims in which the word
“transaction” appears, the Court finds Defendants have referenced
only those claims which support their definition, and ignored those
that contradict it. For example, dependent Claim 73 states, “. . .
an account usage restriction for one of type of transaction, type
of

one

of

good,

service,

security,

stock,

bond,

derivative

instrument, authorized to be involved in the transaction, one of a
goods

provider,

a

service

provider,
- 27 -

a

bank,

and

financial

institution . . .”
transaction

could

‘270 Patent, Col. 81, lines 45-48.
include

all

of

the above,

the

Because a

Court

finds

Defendants’ proposed definition inappropriately narrow.
Defendants’ reliance on the court’s construction in Sleepy
Hollow is equally unavailing.
construed

the

term

“banking

In that case, the district court
transaction,”

Sleepy Hollow, 348 F.Supp.2d at 130.

not

“transaction.”

Thus, the Court declines to

rely on Sleepy Hollow’s construction for guidance here.

See,

generally, Innova/Pure Water, Inc., 381 F.3d at 1119.
Joao Bock proposes that the Court define “transaction” to mean
“an act, an activity, an action, or a process . . . which is being
carried

out

or

performed.”
18.

performed

or

which

has

been

carried

out

or

Pl.’s L.P.R. 4.2(c) Resp. Claim Construction Br. at

It argues this definition is supported by the specification.

In relevant part, it provides, “the apparatus and method of the
present invention may provide for the real-time notification of
banking, financial, brokerage, electronic money, electronic cash
and/or

digital

cash,

transactions

involving

respective

bank

financial, brokerage, and electronic currency accounts and enable
an account owner to monitor, in real-time, all activity involving
his or her bank, financial, brokerage, and/or electronic currency
accounts.”

‘270 Patent, Col. 9, lines 55-62.

The specification

continues stating, “[i]t is still another object of the present
invention

to

provide

an

apparatus
- 28 -

and

a

method

providing

authorization,

notification

and/or

security

in

financial

transactions and/or wireless communication transactions . . .” Id.
at Col. 13 lines 13-18 (emphasis added).
While the Court finds the above useful in determining that
“transaction” includes more than “electronic money accounts,” the
Court finds additional evidence necessary in order to determine how
a person of ordinary skill in the art would define “transaction.”
Joao Bock urges the Court to look to the prosecution history
of the ‘003 Patent.

The ‘003 Patent is entitled, “Transaction

Security Apparatus.”

It relates to a memory device for storing

limitations or restrictions on an account.
Resp. Claim Constr. Br.; Ex. B.
August

22,

2006

(nearly

five

Pl.’s L.P.R. 4.2(c)

The ‘003 Patent was issued on
years

after

the

‘270

Patent).

Defendants argue an examination of the prosecution history of this
patent is improper because the statements Joao Bock relies upon are
“self-serving” and “litigation-inspired.” Defs.’ Reply at 4. They
point out that such statements were filed after the court in Sleepy
Hollow rejected some of its definitions in construing the terms in
the ‘725 Patent.
This Court agrees and declines to examine the prosecution
history of the ‘003 Patent.

See Phillips, 415 F.3d at 1318

(explaining that evidence that “is generated at the time of and for
the purpose of litigation . . . can suffer from bias that is not
present in intrinsic evidence.”); see also, Lear Siegler, Inc. v.

- 29 -

Aeroquip

Corp.,

733

F.2d

881,

889

(Fed.

Cir.

1984)

(“the

litigation-induced pronouncements of [an] inventor . . . have no
effect

on

what

convey . . .”).
evidence

to

the

words

of

that

document

in

fact

do

Accordingly, the Court references extrinsic

resolve

any

remaining

ambiguities.

See

Meyer

Intellectual Properties Ltd. v. Bodum, Inc., 552 F.Supp.2d 810, 812
(N.D. Ill. 2008).

At the time of the invention, the Dictionary of

Computing defined the word “transaction” as “[a]n input message to
a system that, because of the nature of the real world event or
activity that it reflects, requires to be regarded as a single unit
of work and must be processed completely or rejected. . . .”
Dictionary of Computing 509 (4th Ed. 1997).
provided a similar definition.
as

an

“[a]ctivity

or

The Computer Glossary

It defined the word “transaction”

request.”

Alan

Freedman,

The

Computer

Glossary, at 518.
Accordingly, the Court finds a person of ordinary skill in the
art would have defined the word “transaction” to mean “an input
message, activity, or request.”
H.

“Receiver”

The word “receiver” appears in Claim 1 of the ‘270 Patent.
Joao Bock urges the Court to define “receiver” as “a networking
interface or a device for receiving a signal, data, information, or
a message, or a device, for the reception of a signal, data,
information, or a message.”

Pl.’s L.P.R. 4.2(c) Resp. Claim
- 30 -

Construction

Br.

at

21.

Defendants

propose

that

the

Court

construct “receiver” to mean “a device of a banking or financial
institution for receiving signals or data from an outside source
and converting those signal or data to usable form.”

Defs.’

Opening Claim Construction Br. at 20.
The underlying dispute between the parties appears to be
whether a “receiver” must be located at a bank or a financial
institution.
that

the

Defendants argue it must, while Joao Bock insists

embodiments

in

the

‘270

Patent

are

not

limited

to

financial transactions.
Joao Bock has the better argument.

The embodiments of the

‘270 Patent clearly indicate transactions are not limited to
banking

transactions.

See

‘270

Patent

Figs.

1;

4.

Thus,

Defendants proposed construction limiting a receiver to banking or
financial institutions is inaccurate.

See C.R. Bard, Inc. v. U.S.

Surgical Corp., 388 F.3d 858, 865 (Fed. Cir. 2004) (“a construction
that excludes a preferred embodiment is rarely, if ever, correct.”)
(citations omitted).
Claim 1 of the ‘270 Patent reads: “an apparatus for providing
account security comprising: a receiver for receiving one of a
limitation and a restriction on usage of an electronic money
account, wherein said one of a limitation and a restriction are
received from an account holder . . .”

‘270 Patent, col. 71,

lines 1-7

Claim 8

(emphasis

added).

Dependent

- 31 -

states,

“the

apparatus of claim 1 further comprising: a receiver for receiving
a reply signal, wherein said reply signal contains information for
one of

approving

and disapproving

the

transaction.”

Id.

at

col. 72, lines 5-8.
The above claims are void of any language that requires a
receiver to convert data as Defendants suggest.
rejects Defendants’ proposed definition.
Bock’s

definition,

Defendants

“networking interface.”

take

Thus, the Court

With respect to Joao

issue

with

the

words,

They claim that neither the specification

nor embodiments support a construction that allows a receiver to be
located in cyberspace.
After examining the specification and embodiments, the Court
finds neither helpful to resolve this dispute.

As a result, the

Court references extrinsic evidence to determine how a person of
ordinary skill in the art would define “receiver.”

At the time of

the invention, The Computer Glossary defined the word, “receiver”
as a “[d]evice that accepts signals.”

Alan Freedman, The Computer

Glossary, 440 (6th Ed. 1993).
The above definition supports the fact that a receiver is
generally

not

located

in

cyberspace

interface” as Plaintiff suggests.

or

on

any

“networking

Accordingly, the Court declines

to define “receiver” as networking interface and instead defines it
as a device that accepts signals, information, data, or other
messages.

- 32 -

I.

“Communication Device”

“Communication device” appears in Claims 3, 19, 31, 51, 83,
and 85.

The parties’ dispute focuses on whether a “communication

device” must include both a transmitter and a receiver or whether
a

communication

device

can

include

either

a

receiver

or

a

transmitter. Defendants argue it must include both while Joao Bock
contends that it can include either or both.
While Defendants’ definition is supported by the plain meaning
of the word communication, the Court finds that here again Joao
Bock intended to be its own lexicographer.

The specification

provides:
the apparatus also comprises a cardholder
communication device which may receive signals
and/or data from either or both of the pointof-sale device and/or the central processing
computer. The communication device may also
be
equipped
with
a
transmitter
for
transmitting signals and/or data to the
central processing computer. In this regard,
the central processing computer transmits
signals and/or data to the communication
device as well as receives signals and/or data
from
the
communication
device.
The
communication device may also transmit signals
and/or data directly to the point-of-sale
device and receive signals and/or data
directly from the point-of-sale device.
‘270 Patent, Col. 5, lines 20-31 (emphasis added).
The above language indicates that the communication device in
the ‘270 Patent may include a receiver, a transmitter, or both.
Furthermore,

Claim

19

provides,

“.

.

.

a

transmitter

for

transmitting said second signal one of to the account holder and to
- 33 -

a communication device associated with the account holder, where
said second signal provides notification of the transaction.”
at col. 73, lines 50-55 (emphasis added).
the

Court

defines

“communication

Id.

In light of the above,

device”

as

a

device

which

transmits and/or receives signals, data, information or messages.
The Court acknowledges that this definition was rejected by
the district court in Sleepy Hollow when it constructed the term
“communication device” in the ‘725 Patent.
F.Supp.2d at 126-27.

Sleepy Hollow, 348

There, however, the court was faced with

specification language that read, “[w]herein the limitation or
restriction is transmitted to a receiver from a communication
device associated with an individual account holder.”
citing ‘725 Patent, col. 48, lines 29-31.
language here is distinct.

Id. at 127

The specification

Accordingly, the Court declines to

adopt the court’s construction of a communication device in Sleepy
Hollow and instead finds Plaintiff acted as its own lexicographer
when it defined a communication device as a device which transmits
and/or receives signals, data, information or messages.

See

Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362,
1365

(Fed.

Cir.

2012)

(when

a

patentee

acts

as

its

own

lexicographer and clearly sets forth a definition that deviates
from the plain and ordinary meaning, the patentee’s definition
controls).

- 34 -

J.

“Notification Signal”

Notification signal appears in dependent Claim 3 of the ‘270
Patent.

Claim 3 recites, “[t]he apparatus of claim 1, further

comprising . . . a transmitter for transmitting a notification
signal to a communication device associated with the account
holder.” ‘270 Patent, 71, lines 20-24. Joao Bock defines the term
as:
a separate message that provides information
which reports an occurrence of a transaction
on or involving an account or a message which
serves to alert one to an occurrence of a
transaction on or involving an account
Pl.’s L.P.R. 4.2(c) Responsive Claim Construction Br. at 24.
Defendants argue that notification signal means “a separate
series of electronic pulses sent to an account holder containing
data reporting the occurrence of a transaction on an electronic
money account.”

Defs.’ Opening Brief at 24.

After examining the intrinsic evidence, the Court finds Joao
Bock’s

definition

more

appropriate.

The

claim

language

and

specification are void of any language which suggests that a
notification

signal

must

be

a

series

of

electronic

pulses.

Instead, the specification states, “the apparatus may communicate
with the desired individual by utilizing multiple notification
and/or reporting avenues and/or devices so as to provide and to
ensure that best efforts are to be made to communicate with the
desired individual as soon as possible.”
- 35 -

‘270 Patent, Col. 12,

lines 7-13; see also id. at lines 25-28 (stating that the present
invention

may

receive

and/or

transmit

signals

to

provide

notification for “a plurality of any of the accounts described
herein.”).

This

construction.

language

aligns

with

Joao

Bock’s

proposed

As a result, the Court defines notification signal

to mean “a separate message that provides information which reports
an occurrence of a transaction on or involving an account, or a
message which serves to alert one to an occurrence of a transaction
on or involving an account.”
IV.

CONCLUSION

The Court finds that a person having ordinary skill in the art
would construe the terms at issue as stated herein.
IT IS SO ORDERED.

Harry D. Leinenweber, Judge
United States District Court
Date: 6/24/2013

- 36 -