Solutran, Inc. v. U.S. Bancorp et al
MEMORANDUM OPINION AND ORDER denying 170 Motion for Summary Judgment; granting 183 Motion for Summary Judgment. The remaining issues are set for trial on March 6, 2018. A pretrial order will follow. (Written Opinion) Signed by Judge Susan Richard Nelson on 11/27/2017. (SMD)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Case No. 13-cv-2637 (SRN/BRT)
U.S. Bancorp and Elavon, Inc.,
U.S. Bancorp and Elavon, Inc.
David J. Wallace-Jackson, Robert J. Gilbertson, and Sybil L. Dunlop, Greene Espel
PLLP, 222 South Ninth Street, Suite 2200, Minneapolis, Minnesota, for Plaintiff and
Ben D. Kappelman, Kenneth E. Levitt, Peter M. Lancaster, Dorsey & Whitney LLP, 50
South Sixth Street, Suite 1500, Minneapolis, Minnesota 55402, and J. Thomas Vitt, Jones
Day, 90 South Seventh Street, Suite 4950, Minneapolis, Minnesota 55402, for
Defendants and Counter-claimants.
SUSAN RICHARD NELSON, United States District Judge
This matter comes before the Court on the parties’ cross-motions for summary
judgment. (See Pl.’s Mot. for Summ. J. [Doc. No. 183]; Defs.’ Mot. for Summ. J. [Doc.
No. 170].) For the reasons that follow, Plaintiff’s motion is granted, and Defendants’
motion is denied.
Plaintiff Solutran, Inc. (“Solutran”) is the owner by assignment of United States
Patent No. 8,311,945 (the “’945 Patent”), which claims a system and method for
processing check transactions. (See Compl. ¶ 10 [Doc. No. 1].) According to Solutran,
its system improves on legacy check processing systems by eliminating the need for
merchants to scan checks after they are received, and by speeding the rate at which the
merchant’s account would be credited with a payment.
(See Pl.’s Opening Claim
Construction Br. at 4–6 [Doc. No. 78].) Solutran’s check processing system is marketed
as “Solutran’s POS [Point of Sale] Imaging Network,” or “SPIN.” (See Compl. ¶ 9.)
On September 25, 2013, Solutran filed suit against Defendants U.S. Bancorp and
its subsidiary, Elavon, Inc. (collectively, “US Bank”), alleging infringement of the ’945
Patent. (See generally id.) In particular, Solutran contends that US Bank’s competing
“Electronic Check Service,” or “ECS,” system is practically identical to SPIN, and
infringes at least one of the claims of the ’945 Patent. (See generally id.) US Bank has
consistently denied any infringement and brings counterclaims in its own right against
Solutran, seeking declaratory judgments of non-infringement and patent invalidity. (See
generally Am. Answer [Doc. No. 17].)
In February 2014, US Bank petitioned for a Covered Business Model (“CBM”)
review of the ‘945 Patent before the U.S. Patent and Trademark Office’s Patent Trial and
Appeal Board (“PTAB”), arguing that: (1) the patent was invalid under 35 U.S.C. § 101;
and (2) the patent’s claims were unpatentable under 35 U.S.C. § 103 as obvious. See US
Bancorp v. Solutran, Inc., No. CBM2014-00076, 2014 WL 3943913, at *1 (PTAB Aug.
7, 2014). The PTAB rejected US Bank’s § 101 argument, but instituted the CBM
proceeding based on the § 103 argument. See id. at *6–13. While the CBM review was
underway, this Court stayed proceedings in this district court action. (See Sept. 18, 2014
Order to Stay [Doc. No. 50].) After the PTAB found that the challenged claims in the
‘945 Patent were not unpatentable as obvious, see US Bancorp v. Solutran, 2015 WL
4698463, at *10–16 (PTAB Aug. 5, 2015), aff’d, No. 2016-1302, 668 Fed. App’x 363
(Fed. Cir. 2016), this Court lifted the stay. (See Jan. 12, 2016 Text-Only Order [Doc. No.
Following extensive motion practice and discovery, the Court heard the parties’
claim construction arguments on August 30, 2016. (See Aug. 30, 2016 Minute Entry
[Doc. No. 87].) In total, the parties asked the Court to construe eight different terms
found variously in claims 1, 2, 4, and 5 of the ’945 Patent. See Solutran, Inc. v. U.S.
Bancorp, No. 13-cv-2637 (SRN/BRT), 2017 WL 2274959, at *2 (D. Minn. May 24,
2017). At this stage of the litigation, however, the application of only one of those terms
is disputed: “comparing by a computer said digital images with said data in the data file
to find matches.” 1 This term appears in claims 1(d), 4(e), and 5(e) of the ’945 patent—
for illustrative purposes, and to provide needed context, the Court will reproduce claim 1
in full here:
A method for processing paper checks, comprising:
a) electronically receiving a data file containing data captured at a
merchant’s point of purchase, said data including an amount of a
transaction associated with MICR 2 information for each paper
check, and said data file not including images of said checks;
b) after step a) crediting an account for the merchant;
c) after step b), receiving said paper checks and scanning said
checks with a digital image scanner thereby creating digital
images of said checks and, for each said check, associating said
digital image with said check’s MICR information; and
d) comparing by a computer said digital images with said data in
the data file to find matches.
(Compl., Ex A (“’945 Patent”) at 10:54-67 (emphasis added).)
The Court issued its claim construction order on May 24, 2017. The parties
responded by filing their cross-motions for summary judgment the following month.
(See generally Pl.’s Mot. for Summ. J.; Defs.’ Mot. for Summ. J.) Solutran contends that
the undisputed record evidence shows that US Bank’s ECS service practices “every
single step” of claims 1, 2, 3, and 5 of the ’945 Patent. (See Pl.’s Mem. in Supp. of Mot.
For simplicity, the Court will generally refer to this term as the “comparing step” from
this point on.
“MICR” stands for “magnetic ink character recognition.” See Solutran, 2017 WL
2274959, at *13.
for Summ. J. (“Pl.’s Mem. in Supp.”) at 1 [Doc. No. 185].) 3 It notes that US Bank now
argues non-infringement solely on the basis of the comparing step. (See id.) In its view,
however, the Court’s construction of this term resolves the issue in its favor, and thus a
judgment of infringement is warranted here. (See id.) US Bank, however, argues the
opposite in its own motion—that the Court’s construction makes clear that its service
does not infringe the ’945 Patent. (See Defs.’ Mem. in Supp. of Mot. for Summ. J.
(“Defs.’ Mem. in Supp.”) at 2 [Doc. No. 172].) In the alternative, US Bank also contends
that all asserted claims are invalid because they are too abstract to qualify for patent
protection under 35 U.S.C. § 101. (See id.)
The Court heard oral argument on the parties’ motions on August 11, 2017, and
the matter is now ripe for disposition.
Standard of Review
Summary judgment is appropriate if “the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
Fed. R. Civ. P. 56(a). A fact is “material” only if it may affect the outcome of the
lawsuit. TCF Nat’l Bank v. Mkt. Intelligence, Inc., 812 F.3d 701, 707 (8th Cir. 2016).
Likewise, an issue of material fact is “genuine” only if “the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986).
The moving party bears the burden of
The Court’s citations refer to the parties’ original pagination in their memoranda, as
opposed to the ECF pagination.
establishing a lack of genuine issue of fact, Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986), and the Court must view the evidence and any reasonable inferences in the light
most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 587 (1986). In responding to a motion for summary judgment,
however, the nonmoving party may not rest on mere allegations or denials, but must
“demonstrate on the record the existence of specific facts which create a genuine issue for
trial.” Krenik v. Cty. of Le Sueur, 47 F.3d 953, 957 (8th Cir. 1995).
The Issue of Infringement
A determination of infringement requires a two-step analysis. See Transclean
Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1370 (Fed. Cir. 2002). First, the Court
must determine the scope and meaning of the patent claims asserted. See Phil-Insul
Corp. v. Airlite Plastics Co., 854 F.3d 1344, 1358 (Fed. Cir. 2017). Second, the properly
construed claims are compared to the allegedly infringing device or process. See id.
Although the second inquiry is one of fact, Transclean Corp., 290 F.3d at 1370, the Court
may decide infringement on summary judgment if there are no genuine issues of material
fact requiring determination at trial.
See, e.g., 3M Co. v. Mohan, No. 09-cv-1413
(ADM/FLN), 2010 WL 3200052, at *2 (D. Minn. Aug. 9, 2010) (“Courts routinely grant
summary judgment and find infringement as a matter of law where there is no factual
dispute on the infringement question.”). Where, as here, “there is no dispute regarding
the operation of the accused system, [the] issue [of infringement] reduces to a question
of claim interpretation and is amenable to summary judgment.” MyMail, Ltd. v. Am.
Online, Inc., 476 F.3d 1372, 1378 (Fed. Cir. 2007).
A patent is infringed if every limitation set forth in a claim is present in an accused
product or process, either literally or through the doctrine of equivalents.
Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc., 347 F.3d 1314, 1324 (Fed. Cir.
2003). Because only literal infringement is alleged here, Solutran bears the burden of
proving that the accused process contains each limitation of an asserted claim. See id.
Although at this point in the proceedings, US Bank contends only that its process does
not meet the requirements of the ’945 Patent’s comparing step, that step is a required
element of all asserted claims. See Hutchins v. Zoll Med. Corp., 492 F.3d 1377, 1382
(Fed. Cir. 2007) (citing 35 U.S.C. § 112, ¶ 4 (pre-AIA)) (noting that limitations in each
independent claim are incorporated into every dependent claim). Accordingly, Solutran’s
infringement argument rises or falls on the application of that step to the accused process.
See Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994).
The Court’s Construction of the “Comparing Step”
The purpose of claim construction is “to arrive at the true and consistent scope” of
the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995),
aff’d, 517 U.S. 370 (1996). A claim term can have only correct meaning, see Linear
Tech. Corp. v. Monolithic Power Sys., Inc., No. 06-cv-476 (GMS), 2007 WL 6126455, at
*2 n.2 (D. Del. Nov. 20, 2007), and in exercising its duty to define that meaning, this
Court endeavors always to state its determination with clarity and precision, “for the
protection of the patentee [and the benefit of the public].”
Instruments, Inc., 517 U.S. 370, 390 (1996).
Markman v. Westview
The parties’ submissions here, however, suggest that the Court was not as clear in
defining the comparing step as it had originally intended. As noted above, that step
requires “comparing by a computer said digital images with said data in the data file to
find matches.” One of the key disputed points between the parties in interpreting this
term was whether the phrase “said data” necessarily incorporated the definition of that
phrase found in claim 1(a), 4 which provides in part for “electronically receiving a data
file containing data captured at a merchant’s point of purchase, said data including an
amount of a transaction associated with MICR information . . . .” (See ’945 Patent at
10:55-58 (emphasis added).) See Solutran, 2017 WL 2274959, at *6. US Bank argued
that the phrase must be interpreted uniformly across the claims, and that its explicit
reference to the transaction amount meant that the comparing step should be read as
requiring that the transaction amount be involved in any comparison. See id. In contrast,
Solutran argued that the phrase could be left to its plain meaning, but that in any event,
US Bank’s interpretation was improper. See id. The Court construed the term, and there
the matter rested for the moment. See id. at *6-8.
Now, however, the parties once again debate a matter of interpretation—this time
with regard to the boundaries of the Court’s construction. (See Pl.’s Mem. in Supp. at 919; Defs.’ Mem. in Opp’n to Pl.’s Mot. for Summ. J. (“Defs.’ Mem. in Opp’n”) at 2-11
[Doc. No. 203].) Both parties agree on one thing: that the Court made clear that the “said
data” referenced in the comparing step must include, at minimum, the amount of the
transaction. (See Pl.’s Mem. in Supp. at 12; Defs.’ Mem. in Opp’n at 6-7.) Where they
As well as claims 4(a) and 5(a).
differ, however, is whether the Court also meant to be understood as requiring that the
transaction amount found in “said data” must be independently considered as part of the
comparing process. Because the parties do not apparently dispute that US Bank’s process
relies on MICR information and not the transaction amount in conducting its own
comparison, resolution of this issue is effectively dispositive of Solutran’s infringement
claim. (See, e.g., Defs.’ Mem. in Opp’n at 17.)
Having carefully reviewed the parties’ arguments on the matter, the Court clarifies
its initial construction of the comparing step as follows: (1) the data captured at the
merchant’s point of purchase must include the transaction amount; (2) the transaction
amount must be one of the elements of the “said data” in the “data file,” the latter of
which must then be compared with the digital images; and (3) the “match” being made as
part of the comparison step can involve, but need not necessarily involve, the transaction
amount. In other words, additional data from the data file, such as MICR information,
can independently form the basis of the match for purposes of claim 1(d), 4(e), and 5(e).
While the transaction amount must be in the “said data” grouping, it need not be
separately singled out and directly compared against a similar datum in the digital image.
Application of the Construction
In light of this updated—and, hopefully, clearer—construction, the Court
concludes that summary judgment is warranted in favor of Solutran on the issue of
infringement. The parties do not contest that US Bank’s process involves a comparison
step that is designed to match the digital image of the check with data captured in a data
file. (See, e.g., Defs.’ Mem. in Opp’n at 9; Pl.’s Mem. in Supp. at 10.) Nor do they
contest that US Bank captures the transaction amount as part of the data captured at the
point of purchase. (See, e.g., Defs.’ Mem. in Opp’n at 9.) Although it is apparent that the
accused process does not rely on the transaction amount for purposes of forming matches
(rather, it uses MICR information), that fact is not dispositive of infringement. In light of
the Court’s construction of claim 1(d), so long as US Bank captures the transaction
amount and makes a match using some element (or elements) of the data in the data set,
then its process infringes upon that claim. Here, this is exactly what the ECS system
As Defendants disputed infringement solely as to the comparing step, and do not,
apparently, contest infringement as to all other steps of the asserted claims, resolution of
this matter in favor of Solutran necessarily resolves the parties’ infringement dispute.
The Court accordingly grants Solutran’s motion for summary judgment of infringement,
and denies US Bank’s corresponding motion for non-infringement.
Invalidity Under 35 U.S.C. § 101
US Bank alternatively argues that the ‘945 Patent is invalid under 35 U.S.C. § 101.
It contends that Solutran’s core claimed invention is an abstract concept, and that
Solutran has not added significantly more to that abstract concept. (See Defs.’ Mem. in
Supp. at 12–25.) While the ‘945 Patent contains three independent claims, the parties
acknowledge that the language in the other claims is similar or nearly identical to the
language in Claim 1. (See id. at 22; Pl.’s Mem. in Opp’n at 15.) Because independent
Claim 1 is representative of the ‘945 Patent, the analysis of this claim is representative of
the other two independent claims. See Intellectual Ventures, LLC v. Erie Indem. Co.,
__Fed. App’x__, No. 2017-1147, 2017 WL 5041460, at * 2 (Fed. Cir. Nov. 3, 2017)
(examining a representative claim for purposes of § 101 analysis).
Section 101 provides that only “inventions” are patent-eligible, and are granted to
“[w]hoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101.
Addressing the language of § 101, the Supreme Court has stated, “In choosing such
expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly
contemplated that the patent laws would be given wide scope.” Bilski v. Kappos, 561
U.S. 593, 609 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)).
The Federal Circuit advises that “[a] § 101 analysis begins by identifying whether
an invention fits within one of the four statutorily provided categories of patent-eligible
subject matter: processes, machines, manufactures, and compositions of matter.”
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir. 2014). Here, the
invention at issue is claimed to be a “process,” which falls within one of the four
statutory classes. Section 100(b) defines this class, stating, “The term ‘process,’ means
process, art or method, and includes a new use of a known process, machine,
manufacture, composition of matter, or material.” 35 U.S.C. § 100(b). The Supreme
Court has further stated that “[a] process is a mode of treatment of certain materials to
produce a given result. It is an act, or a series of acts, performed upon the subject-matter
to be transformed and reduced to a different state or thing. If new and useful, it is just as
patentable as is a piece of machinery.” Diamond v. Diehr, 450 U.S. 175, 18
(1981) (citation omitted).
Despite § 101’s broad reading of patent eligibility, the Supreme Court has long
recognized three “implicit exception[s]” to the subject matter of patents for “laws of
nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
134 S. Ct. 2347, 2354 (2014) (citing Assoc. for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 133 S. Ct. 2107, 2116 (2013)). A process that attempts to patent an
abstract idea is not patentable under § 101. See Bilski, 561 U.S. at 609. The rationale for
this exclusionary principle lies in the concern that general “building blocks of human
ingenuity,” such as abstract ideas, should not be limited for future innovations. Alice,
134 S. Ct. at 2354.
However, courts should “tread carefully in construing this
exclusionary principle lest it swallow all of patent law,” see id. at 2354, because “all
inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71 (2012).
Courts apply a two-step test to challenges to the eligibility of patent subject matter
under § 101. See id. at 79. First, courts must “determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355. If they are, courts then
examine the elements of the disputed claims to determine whether they contain an
inventive concept that sufficiently “transform[s]” the abstract idea into a patent-eligible
application. Id. at 2357 (citing Mayo, 566 U.S. at 79).
Both steps of the Alice framework involve “overlapping scrutiny of the content of
the claims.” Elec. Power Grp., LLC v. Alstom S.A., 1353 (Fed. Cir. 2016). But the
Federal Circuit has observed that the first step in the § 101 inquiry is a “meaningful one,”
given that “a substantial class of claims are not directed to a patent-ineligible concept.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Therefore, the
step-one analysis may sometimes resolve the § 101 inquiry. See Elec. Power, 830 F.3d at
135. In other words, if the Court determines that the challenged claim is not directed to
an abstract idea, it need not reach step two. Alice, 134 S. Ct. at 2355. However, if the
Court finds otherwise, it then moves to the second step, examining the elements of the
disputed claim to determine whether the claim contains a sufficiently transformative
inventive concept so as to be patent eligible. Id. (citing Mayo, 566 U.S. at 79).
US Bank argues that the ‘945 Patent specification emphasizes either the “abstract
idea of delaying and outsourcing the scanning of paper checks” or the single, abstract
concept of converting a customer’s check electronically and crediting the merchant’s
account prior to imaging the check. (See Defs.’ Mem. in Supp. at 14, 21–23.) The Court
finds that US Bank’s characterization fails to consider the character of the claims as a
In conducting the “directed to” inquiry at step 1, courts must not simply ask
whether the claims involve a patent-ineligible concept because, again, on some level, all
patent-eligible claims involving physical products and actions involve laws of nature,
natural phenomena, or abstract ideas. Enfish, 822 F.3d at 1335 (citing Mayo, 566 U.S. at
71–72). Rather, the “directed to” inquiry requires the Court to consider whether, in light
of the patent specification, the character of the claim as a whole “is directed to excluded
subject matter.” Id. (citations omitted). US Bank fails to do so. See Diehr, 450 U.S. at
Rather, as Solutran asserts, US Bank’s characterization omits the physical
processing of checks from the point of sale to a different location, and in a particular
sequence. (See Pl.’s Mem. in Opp’n at 18–19.)
In so doing, US Bank improperly
construes Claim 1 to “a high level of abstraction.” Enfish, 822 F.3d at 1337.
The character of Claim 1, recited on page 4, supra, is directed to a physical
process for processing paper checks in which data captured from a paper check at the
merchant’s point of purchase is used to credit a merchant’s account, while the same paper
check is scanned at a later time and in a different location to create an image of that
check. Specifically, in Claim 1(a), a data file is electronically captured from a paper
check at the merchant’s point of sale; in 1(b), the merchant’s account is credited; in 1(c),
the paper check is received, at a later time and place, and scanned to create an image; and
in 1(d), the files are brought back together to compare digital images with the data file to
find matches. (See ‘945 Patent, Ex. A to Ernstene Aff. at 10:54-67 [Doc. No. 187-1].)
When focusing on the claimed advance of the ‘945 Patent over the prior art—as
the Federal Circuit instructs courts to consider, see Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)—the ‘945 Patent purportedly
improves upon the prior art through the processing of paper checks, via two-paths, at
different times and locations, and the physical movement of paper checks. (See ‘945
Patent, Ex. A to Ernstene Aff. (Abstract)) (“The data files and image files are separated
both in time and in space, with the data files being used to promptly initiate the transfer
of funds to and from appropriate accounts, while the paper checks, at a remote location
and typically lagging in time, are scanned to create digital image files and deposited as an
image or substitute check if deemed ACH ineligible.”). This claimed advance is not
directed to an abstract idea. Additional language found in the ‘945 Patent emphasizes
that the claimed invention is rooted in an enhanced processing method and a palpable
application of that process, in a different time and place.
The “Summary of the
Invention” describes the processing of paper checks, along with their physical
transportation, (see id. at 4:6–18), Figure 3 of the ‘945 Patent also depicts this physical
transfer and delivery with the image of a truck, (see id. (Fig. 3)) (illustrating ‘945 Patent,
5:50–52), and Figure 4 explains additional details of the process, including the “divergent
flows” for the point-of-sale data, the physical checks, and images of the checks. (See id.
(Fig. 4)) (illustrating ‘945 Patent, 6:22–26).
In US Bank’s earlier, unsuccessful § 101 challenge before the PTAB, the Board
found that US Bank improperly focused on “each method step individually without
accounting sufficiently for the claims as a whole.” 5 US Bancorp, 2014 WL 3943913, at
*8. Examined as a whole, the PTAB found that the basic, core concept of Claim 1 is a
method of processing paper checks, “which is more akin to a physical process than an
Moreover, the Board found that “there is nothing immediately
US Bank asserts that the PTAB’s earlier rejection of its § 101 challenge should not
affect this Court’s present determination. (See Defs.’ Mem. in Supp. at 26–27; Defs.’
Reply at 3 [Doc. No. 206].) Solutran concedes that “present law does not clearly
establish” that the doctrine of estoppel applies to bar US Bank from reasserting its § 101
argument here. (See Pl.’s Mem. in Opp’n at 8 & n.10 [Doc. No. 194].) While the
Federal Circuit has found that estoppel does not preclude the assertion of non-instituted
grounds in a CBM or IPR proceeding, see, e.g., Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1053 (Fed. Cir. 2017), the Supreme Court has not considered this
issue. Accordingly, this Court does not assign preclusive effect to the PTAB’s findings
on § 101 validity. However, it finds the PTAB’s guidance persuasive.
apparent about this basic, core concept that would indicate that it is directed to an abstract
idea at all.” Id. While the PTAB acknowledged that Claim 1 recited some fundamental
economic practices, such as “crediting an account for a merchant,” it could not
“disembody such recitations from the claim viewed as a whole.” Id. The PTAB pointed
to other substantive limitations in Claim 1—“receiving said paper checks and scanning
said checks with a digital scanner” and “comparing by a computer said digital images”—
that narrow the claim. Id.
While there is no definitive test to determine what constitutes an “abstract idea,”
courts frequently compare the challenged claims “to those claims already found to be
directed to an abstract idea in previous cases.”
134 S. Ct. at 2357).
Enfish, 822 F.3d at 1334 (citing Alice,
In Bilski, 561 U.S. at 609–12, the Supreme Court cited as
“guideposts” three abstract-idea decisions involving patented processes: Gottschalk v.
Benson, 409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 564 (1978); and Diehr, 450 U.S.
at 175. It noted that in Gottschalk, 409 U.S. at 67, an algorithm used to convert binarycoded decimal numerals into pure binary code was not a patent eligible process under §
101, and any contrary conclusion “would wholly pre-empt the mathematical formula and
in practical effect would be a patent on the algorithm itself.” Bilski, 561 U.S. at 609–10
(quoting Gottschalk, 409 U.S. at 72). In Flook, 437 U.S. at 585–86, the Supreme Court
evaluated the § 101 eligibility of a patent for monitoring the conditions during the
catalytic conversion process in the petrochemical and oil-refining industries. The Court
held that the bar against patenting abstract ideas “cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment” or adding
“insignificant postsolution activity.” Bilski, 561 U.S. at 610 (quoting Diehr, 450 U.S. at
191–92). Finally, in Diehr, 450 U.S. at 177, the Court held that a new process for curing
synthetic rubber, involving the use of a mathematical formula in several of the steps,
completed by a computer, was not an abstract idea.
The Court underscored the
importance of considering the invention as a whole, and stated that although an abstract
idea is not patent eligible, “an application of a law of nature or mathematical formula to a
known structure or process may well be deserving of patent protection.” Id. at 187–88.
Relying on this precedent, the Court in Bilski held that a patent claiming a general
method for hedging risk in the energy commodities market was abstract, and therefore
not patent-eligible under § 101. 561 U.S. at 611. The Court found that hedging is a
“fundamental economic practice long prevalent in our system of commerce and taught in
any introductory finance class,” and it “is an unpatentable abstract idea, just like the
algorithms at issue in [Gottschalk] and Flook.” Id. at 611–12.
The PTAB considered this precedent in US Bank’s petition for CBM review,
finding the ‘945 patent’s claims unlike the fundamental economic practices in Alice and
Bilski, the mathematical formulas in Flook, or the basic tools of scientific and
technological work in Gottschalk. US Bancorp, 2014 WL 3943913, at *8.
suggests that the PTAB failed to adequately consider the then-recent Alice decision, and
failed to solicit any briefing from the parties on the effect of that case. (See Defs.’ Mem.
in Opp’n at 26; Defs.’ Reply at 3.) But the PTAB’s ruling cites Alice several times and
follows the two-step procedure that Alice and Mayo prescribe. See U.S. Bancorp, 2014
WL 3943913, at *6–8.
US Bank also asserts that two cases involving check-related patents provide
sufficient bases for invalidating the ‘945 Patent. (Def.’s Mem. in Supp. at 13) (citing
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347
(Fed. Cir. 2014); Fidelity Nat’l Servs. v. DataTreasury Corp., CBM 2014-00020, 2015
WL 1967327, at *5–6 (PTAB April 29, 2015), aff’d 669 Fed. App’x 572 (Fed. Cir.
2016)). Content Extraction involved a claim directed to a computerized technique that
recognized data in scanned documents and stored that data in appropriate data fields in a
computer. 776 F.3d at 1345. But unlike here, the claimed advance was not based on
when or how the hard copy documents were scanned, manipulated, or transported—
instead, the claimed advance was simply in the computer recognition process.
DataTreasury is similarly inapplicable, because the patent owner did not assert that the
claimed advance was something more than the encrypted transferring of information, and
instead argued that the presence of a tangible object precluded a finding that the claim
was directed to an abstract idea. 2015 WL 1967327, at *10. Here, however, Claim 1 is
directed to an improved technique for processing physical checks that emphasizes both
the processing and the transportation of the checks. 6
US Bank also cites authority for the proposition that patents involving computer
functions are frequently found to be abstract at step one. (See Defs.’ Mem. in Supp. at
19) (citing Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016)
Moreover, DataTreasury was decided by the PTAB only four months prior to the
PTAB’s ruling on US Bank’s petition. As Solutran observes, DataTreasury lacks
persuasive authority, “given that the PTAB also considered and rejected the same type of
section 101 challenge to the ‘945 Patent itself.” (Pl.’s Mem. in Opp’n at 22.)
(generating a second computer menu from a first menu and sending it elsewhere); Elec.
Power, 830 F.3d at 1353–54 (using a “process of gathering and analyzing information of
a specified content, then displaying the results”); Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015) (using organizational and product group
hierarchies to determine price); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1348 (Fed. Cir. 2015) (retaining information from the navigation of online forms);
Content Extraction, 776 F.3d at 1347 (collecting data, recognizing certain data from the
collected group, and storing recognized data)). The Court does not dispute this general
observation. But while the ‘945 patent’s claims may involve the use of scanning or
imaging devices as part of the patented process, the patent does not claim advances over
the prior art based on the processing, gathering, or manipulation of data via computer.
See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(finding a process that began with data, added an algorithm, and ended with data in a new
form was directed to an abstract idea).
The Court similarly finds inapposite US Bank’s authority regarding the abstract
character of claims for fundamental economic practices, (see Defs.’ Mem. in Supp. at 23)
(citing Alice, 134 S. Ct. at 2356), methods of organizing human activity (see id.) (citing
Planet Bingo LLC v. VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014), and
mental processes. (See id.) (citing CyberSource Corp. v. Decisions, Inc., 654 F.3d 1366,
1371 (Fed. Cir. 2011)). As noted, the Court agrees with the PTAB that simply because
individual elements of Claim 1 recite isolated, fundamental economic practices, such as
“crediting an account for a merchant,” when viewed as a whole, the claim’s limitations
demonstrate that the claim is not directed to an abstract concept. See US Bancorp, 2014
WL 3943913, at *8. Neither is the core concept of Claim 1 a method of organizing
human activity similar to the commercial practice of hedging in Alice, nor is it a mental
process that can be performed by human thought alone, like the method claim in
CyberSource for verifying the validity of a credit card transaction over the internet.
Rather, the character of Claim 1 is directed to a physical process for processing paper
checks that captures data from a paper check at the merchant’s point of purchase, and
uses the data to credit a merchant’s account, while the same paper check is later scanned
in a different location to create an image of that check.
Because the Court finds that Claim 1 of the ‘945 Patent is not directed to an
abstract idea, it need not examine the claim under step two. However, even if Claim 1
were directed to an abstract idea, it would nevertheless satisfy the second step of the
Again, at the second step of the analysis, courts consider whether the challenged
claim contains an “inventive concept” that transforms the abstract concept into a
patentable claim under § 101. Courts examine whether the limitations in the claim
represent a patent-eligible application of the abstract idea. See Alice, 134 S. Ct. at 2357.
Elements of a claim that consist of merely routine data gathering or involve a general
computer function or activity do not meet this standard. OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Nor do claims that are limited to a specific
technological environment. See Elec. Power, 830 F.3d at 1354. However, claims that
involve a “specific, discrete implementation” of an abstract concept have been found to
be sufficiently inventive, even if none of the individual claim limitations are inventive
when considered separately. See Bascom Global Internet Servs. v. AT & T Mobility LLC,
827 F.3d 1341, 1350 (Fed. Cir. 2016).
US Bank contends that Solutran’s claimed invention is “nothing more than a
trivial application of computers and scanning equipment to conventional check
processing.” (See Defs.’ Mem. in Supp. at 15, 20.) But “new steps in a process may be
patentable even though all the constituents of the combination were well known and in
common use before the combination was made.” Diehr, 450 U.S. at 188. While US
Bank argues that component parts of the claimed invention were known conventions, (see
Defs.’ Reply at 13), it fails to consider the ordered combination of the elements in Claim
1, focusing instead on the individual elements. Nor does it argue that these combined
elements were a known convention. Rather, as Solutran notes, “Claim 1’s elements
describe a new combination of steps, in an ordered sequence, that was never found before
in the prior art and has been found to be a non-obvious improvement over the prior art by
both the USPTO examiner and the PTAB’s three-judge panel (affirmed by the Federal
Circuit).” (Pl’s Mem. in Opp’n at 27.) The ordered combination captures data from a
paper check at the merchant’s point of sale in order to credit the merchant’s account,
while the same check is later scanned at a different location to create an image. The
image and the data are then reunited and compared to find matches. While US Bank
asserts that the claim fails to recite that the checks are “transported,” (see Defs.’ Reply at
13), Claim 1(c) indicates that the paper checks are “receiv[ed].” This Court previously
construed “receiving said paper checks” as “the paper checks are received from a location
different from where the checks are scanned” in its claim construction ruling, see
Solutran, 2017 WL 2274959, at *5. This construction sufficiently conveys that the
checks are moved from one location to another.
Specifically with respect to patented “processes” under § 101, one means by
which courts evaluate their patent eligibility is the “machine-or-transformation test.” See
Bilski, 561 U.S. at 602–03. Under this test, a claimed invention is not deemed patentable
if it is not tied to a machine and does not transform an article. Id. The Supreme Court
has held that this is not the sole means by which to decide whether an invention is a
patent-eligible process, but it is “a useful and important clue, an investigative tool.” Id. at
The Court agrees with Solutran that the ‘945 Patent’s claims pass the machine-ortransformation test. As Solutran explains, “the physical paper check is transformed into a
different state or thing, namely into a digital image.” (Pl.’s Mem. in Opp’n at 29.) In
Bilski, the Federal Circuit stated that the transformation of raw, physical data, into a
visual depiction of that object satisfies the transformation part of the machine-ortransformation test. 545 F.3d at 962–63. Moreover, the transformation here is “central to
the purpose of the claimed process,” id. at 962, and “impose[s] a meaningful limit on the
scope of the claim.” Versata Dev., 793 F.3d at 1335. Solutran explains that receiving
and scanning paper checks after they have been moved from the merchant’s point of sale
is central to the purpose of the ‘945 Patent: “If this step (c) were removed from the
claims, then step (d) would be incomprehensible and steps (a) and (b) would merely
describe relatively routine practices found in [point of purchase] check transactions. Step
(c) therefore is not ‘mere data gathering’ or ‘routine, post-solution activity,’ but imposes
a meaningful limit on the claimed process.” (Pl.’s Mem. in Opp’n at 30–31.) The Court
therefore finds that even if it reaches step 2 in the analysis, the elements of Claim 1
contain a sufficiently transformative inventive concept so as to be patent eligible.
Accordingly, for all of the reasons set forth above, the Court finds that the claims
of the ‘945 Patent are not abstract, but rather, are patent eligible under § 101.
Defendant’s summary judgment motion is therefore denied on this basis as well.
THEREFORE, IT IS HEREBY ORDERED THAT:
1. Plaintiff’s Motion for Summary Judgment [Doc. No. 183] is GRANTED; and
2. Defendants’ Motion for Summary Judgment [Doc. No. 170] is DENIED; and
3. The remaining issues are set for trial on March 6, 2018. A pretrial order will
Dated: November 27, 2017
s/Susan Richard Nelson
Susan Richard Nelson
United States District Judge
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