Advanced Software Design Corporation et al v. Federal Reserve Bank of St. Louis et al

Filing 107

MEMORANDUM OPINION. For the reasons stated above, the preceding definitions shall apply to the patent claim terms in the 624 and 110 patents. Disputes over remaining claim terms may be raised in the context of summary judgment motions or at trial, through proposed jury instructions. So ordered. Signed by Honorable Catherine D. Perry on 12/23/08. (KLH)

UNITED STATES DISTRICT COURT E A S T E R N DISTRICT OF MISSOURI E A S T E R N DIVISION A D V A N C E D SOFTWARE D E S IG N CORPORATION, et al., Plaintiffs, vs. F IS E R V , INC., Defendant. ) ) ) ) ) ) ) ) ) )

C ase No. 4:07CV185 CDP

M E M O R A N D U M OPINION P lain tiffs Advanced Software and Calin Sandru hold two patents, Nos. 6 ,5 4 9 ,6 2 4 and 6,792,110, that cover an "apparatus and method for enhancing the secu rity of negotiable instruments." Plaintiffs claim that defendant Fiserv, Inc. is in frin g in g both patents. The parties dispute numerous claim terms, and have p resen ted arguments on claim construction during a two-day Markman hearing. This order resolves some of the issues relating to some of the claim terms. Disputes over claim terms not addressed in this order will be resolved at a later stag e, either through summary judgment motions or rulings on proposed jury in s tru c tio n s . I. L eg a l standards governing claim construction C laim construction is a matter of law. Markman v. Westview Instruments, In c ., 517 U.S. 370, 388-89 (1996). In construing a claim, a court looks first to the in trin sic evidence of record, that is, the claim's language, the specification and the

p ro secu tio n history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (F ed . Cir. 1996). Intrinsic evidence is "the most significant source of the legally o p e ra tiv e meaning of disputed claim language." Id. W ith in the realm of intrinsic evidence, the appropriate starting point in co n stru in g patent claims is always the claim language itself. Comark C o m m u n ica tio n s, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). The w o rd s of a claim are generally given "their ordinary and customary meaning," V itro n ics Corp., 90 F.3d at 1582, which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., a s of the effective filing date of the patent application." Phillips v. AWH Corp., 4 1 5 F.3d 1303, 1313 (Fed. Cir. 2005) (citation omitted). A person of ordinary sk ill in the art reads 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, in c lu d in g the specification." Id. A patentee may assign a special definition to a word, so long as that d efin itio n is clearly stated in the patent specification or prosecution history. Vitronics Corp., 90 F.3d at 1582. To determine whether a patentee has used any te rm s in a manner inconsistent with their ordinary meaning, a court must review th e specification, which is usually "dispositive" and always "highly relevant" to th e claim construction analysis. Id. The Federal Circuit has noted that it is

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"en tirely appropriate for a court . . . to rely heavily on the written description for g u id a n c e as to the meaning of the claims." Phillips, 415 F.3d at 1317. In Phillips, th e court cautioned against elevating dictionary definitions above the express or im p lied definitions of claim terms found in the specification.1 Id. at 1320-22. A lth o u g h claim terms are to be interpreted in light of the specification and w ith a view to ascertaining the invention, "it does not follow that limitations from th e specification may be read into the claims." Comark, 156 F.3d at 1186 (q u o tin g Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988)). The Federal C ircu it has recognized that there sometimes is a "fine line between reading a claim in light of the specification, and reading a limitation into the claim from the s p e cific atio n ." Comark, 156 F.3d at 1186. Where a term is "not so amorphous th at one of skill in the art can only reconcile the claim language with the in v en to r's disclosure by recourse to the specification," reading a limitation from th e specification into the terms is inappropriate. Id. at 1187. See also E.I. du Pont d e Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.

The Phillips Court specifically rejected the approach endorsed by the Federal Circuit in Texas Digital Sys. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002). In Texas Digital, the court limited the role of the specification in claim construction to serving as a check on the dictionary meaning of a claim term if the specification requires the court to conclude that fewer than all the dictionary definitions apply, or if the specification contains a specific alternative definition or disavowal. Id. at 1202. In Phillips, the court held that the Texas Digital approach improperly restricted the role of the specification by essentially elevating abstract definitions over the contextual use of the terms. 415 F.3d at 1320-21. -3-

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1 9 8 8 ) (stating that the specification can supply understanding of unclear terms, but sh o u ld never trump the clear meaning of the claim terms). A court may also consider the patent's prosecution history, which contains "th e complete record of all the proceedings before the Patent and Trademark O ffice, including any express representations made by the applicant regarding the s co p e of the claims." Id. Indeed, the prosecution history is "of primary s ig n ific an c e in understanding the claims." Markman, 52 F.3d at 980. Although th e prosecution history is always relevant to claim construction, it cannot be used to infer the intentional narrowing of a claim term, unless there has been a "clear d isav o w al" of the claim coverage. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 3 1 4 F.3d 1313, 1327 (Fed. Cir. 2003). An example of such disavowal is when the ap p lican t amends a claim to overcome a rejection by the Examiner. Id. E x trin sic evidence, i.e., evidence that is external to the patent and p ro secu tio n history, is not to be consulted when the intrinsic evidence is u n eq u iv o cal. Bell & Howell Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 7 0 1 , 706 (Fed. Cir. 1997); Vitronics Corp., 90 F.3d at 1583 ("[W]here the public reco rd unambiguously describes the scope of the patented invention, reliance on an y extrinsic evidence is improper."). It is appropriate, however, "for a court to co n su lt trustworthy extrinsic evidence to ensure that the claim construction . . . is n o t inconsistent with clearly expressed, plainly apposite and widely held

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u n d erstan d in g s in the pertinent technical field." Pitney Bowes, Inc. v. HewlettP a cka rd Co., 18 F.3d 1298, 1308 (Fed. Cir. 1999). In the end, "extrinsic evidence m ay be useful to the court, but it is unlikely to result in a reliable interpretation of p a te n t claim scope unless considered in the context of the intrinsic evidence." Phillips, 415 F.3d at 1319. II. T h e invention T h e invention disclosed in the `624 and `110 patents is an apparatus and m eth o d for enhancing the security of checks. The invention works by applying p rin cip les of cryptography ­ a branch of mathematics that deals with encoding and d e c o d in g written information. The invention calls for a bar code or other m ach in e-read ab le item to be printed on the check face to authenticate that the ch eck has not been altered or forged. According to the claim terms, the invention can work in one of two ways. T h e first way in which the invention can work involves using what is known in the art as a "public key encryption scheme." In this method, check information, fo r example the dollar amount, is taken from the check face and encrypted using a k n o w n cryptographic algorithm. The encryption process generates a "control co d e" that is then printed on the check. The control code can only be read and u n d e rs to o d by someone with the means to decode it. A check authenticator such as a bank takes the control code, decodes it, and then compares the result to the

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d o llar amount printed on the check. If the two numbers match, the check is v alid ated . If the numbers do not match, the check is invalid and will not be h o n o re d . T h e second scheme disclosed by the patent does not use a decoding step. Rather, it works by doing the encoding step twice. This scheme is referred to g e n e ra lly as a "private key" encryption scheme. As with a public key scheme, ch eck information is encoded, and a control code is printed on the check. However, the mathematics of this private key scheme are such that the encoding p ro cess is not reversible. There is no way to "get back" the original message u sin g the control code, because the control code cannot be decoded. Therefore, in o rd er to authenticate the check, a validator must read the dollar amount off the ch eck face and re-encrypt it to generate a second control code. The second control co d e is then compared to the first control code. The check is authentic only if the tw o control codes match. In both the public key scheme and the private key scheme, the mathematics th at drive the algorithms are widely known. There is nothing "secret" or p ro p rietary about how the math converts check information into a control code. The security of both systems rests instead on the use of keys ­ mathematical fig u res that are entered into a widely-known algorithm.

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In the case of the public key scheme, two keys are used ­ one for encryption an d one for decryption. A particular public key scheme that is known in the art an d is discussed in the patent is the RSA 2 scheme. In RSA, the encryption and d ecryp tio n keys are two numbers in a specific mathematical relationship. The two n u m eric keys work as exponents. To encrypt a certain numeric message, the sen d er would raise that number to a power using the encryption exponent. To d ecryp t the message, the receiver would take the received code and raise it to a p o w er using the decryption exponent.3 RSA works as a cryptographic scheme b ecau se the two exponents cannot be easily derived from one another. That is, if a p a rtic u la r person knows the encryption exponent, he or she cannot thereby use that in fo rm atio n to figure out the decryption exponent, or vice versa. This system is called a "public key" system because one key can be made public without co m p ro m isin g the secrecy of the remaining key. C o n v ersely, in the private key scheme, any key or keys must be kept secret if th e scheme is to remain secure. The preferred embodiment disclosed in the sp ecificatio n discusses a private key scheme modeled after an algorithm known in

RSA is a public key cryptography scheme proposed in 1977 and named for the mathematicians who proposed it, Rivest, Shamir, and Adleman. D.R. Hankerson, et al., Coding Theory and Cryptography 284 (2d ed. 2000). This is an oversimplification of the RSA scheme. In practice the exponentiation occurs over a particular modulus. The security of RSA rests on the theory that factoring a particularly large modulus is believed to be an intractable problem. See generally Hankerson, et al., supra note 3, at 284-85. -73

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th e art as a Cycle Redundancy Check (CRC). In this scheme, the numeric in fo rm atio n to be encoded is concatenated (placed end to end) in a string with two p riv ate keys and a third key that is derived from the other two. This long string is th en divided by a large polynomial. As with normal long division, the result of th is dividing step is a quotient and a remainder. The quotient is then discarded, an d the remainder becomes the control code.4 The keys that are concatenated with th e original information are never disclosed to the public. Like the RSA scheme, th e CRC is a widely known method for authenticating data. The keys are what m ak es the scheme unique to a particular user. T ak en as a whole, Sandru's patents disclose an invention that uses known p u b lic and private key cryptographic schemes to authenticate checks. In p ro se cu tin g his patent before the Patent and Trademark Office, Sandru d istin g u ish ed his invention from prior art disclosed by Thomas Chapman in Patent N o . 5,432,506. The Chapman patent is entitled "Counterfeit Document Detection S ystem ." Like Sandru's invention, Chapman's invention is designed to au th en ticate checks. Chapman's patent, however, does not rely on known m a th e m a tic al algorithms like RSA or CRC. Instead, Chapman discloses an

This shows why the private key scheme disclosed in the specification of the patents is irreversible. Where the control code is simply the remainder of a division problem, retrieving the original dividend is not possible unless both the quotient and the remainder are known. For example if a number is divided by 5 and the remainder is 2, the original number could be 12, 17, or infinitely more possibilities. -8-

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in v en tio n that relies on specific tables and formulas to encode check data. For ex am p le, Chapman's invention selects certain characters from the face of the ch eck (these characters might be numbers or letters, and might be taken from the p a y ee field, the check amount field, the date field, or elsewhere). Each character is then represented as a one or two digit number, according to a value assigned to th at character on a pre-determined table. The numbers are entered into a simple a lg e b ra ic formula that uses addition, subtraction and multiplication to generate a u n iq u e code. That code is analogous to Sandru's "control code" that is then p rin ted on the check. S an d ru and Advanced Software argue that the patents at issue in this case are n o th in g like the Chapman patent because Chapman's patent does not disclose a "k ey-b ased " cryptographic scheme. That is, there is no numeric string that, along w ith the check data, is plugged into a widely-known mathematical algorithm. It is at least arguable, however, that the entire Chapman scheme is itself a "key" ­ the tab le and the formula taken together are a "secret" scheme that make the en cryp tio n possible. In any event, Sandru's representations before the PTO and h is efforts to distinguish his invention from Chapman's are important elements to co n sid er when interpreting the Sandru patents' claim terms.

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III. D isp u ted claim terms B e fo re the Markman hearing, the parties submitted a joint notice of disputed claim terms that listed 29 separate terms on which the parties had differing in terp retatio n s. The parties have since agreed on constructions for five of the 29 te rm s . Of the remaining 24 terms, 14 were argued at the Markman hearing, and ten were submitted solely on briefs. I will not be resolving all of these disputes in th is order. I do not believe that resolution of every disputed term is essential to th is case. Moreover, I believe that conflicts over certain terms will be more ap p ro p riately resolved in the context of the parties' disputes on the merits of the case. This order sets forth meanings for the eight key terms that go to the heart of th e parties' disagreements. The parties may argue for a particular construction of a n y remaining terms in the context of summary judgment motions or proposed ju ry instructions at trial. C la im 1of the `110 Patent and Claim 1 of the `624 patent each provides co n tex t for the eight disputed terms. Claim 1 of the `110 patent claims: 1 . A process of validating a negotiable financial instrument made by a p ayo r, in which selected information found on the financial instrument w h ich varies for each instantiation of the financial instrument made by th e same payor is encrypted in combination with key information not fo u n d on the financial instrument to generate a control code which is p rin ted on the financial instrument along with the selected information, th e process comprising: reading the selected information from the financial instrument; and

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o n e of (i) decrypting the control code to thereby obtain decrypted in fo rm atio n whereby the cheque validator may refuse to honour th e financial instrument if the selected information found on the fin an cial instrument does not match the decrypted information, an d (ii) re-encrypting the selected information as presented on th e financial instrument to re-obtain a second control code, w h e re b y the cheque validator may refuse to honour the financial in stru m en t if the second control code does not match the control co d e printed on the financial instrument. C laim 1 of the `624 patent claims: 1 . A process for enhancing the security of a cheque, comprising: sele ctin g private and public encryption keys associated with one of a ch eq u e payor and cheque validator; selecting information found on the cheque wherein the selected in fo rm a tio n varies for each instantiation of the cheque presented b y the same payor; encrypting a combination of the selected information and one of the p riv ate and public keys with a practicably secure cryptographic sch em e to thereby generate a control code; printing the selected information and the control code on the cheque; reading the selected information from the cheque; decrypting the control code using the other of the private and public en cryp tio n keys to thereby obtain decrypted information; and the cheque validator refusing to honour the cheque if the selected in fo rm a tio n found on the cheque does not match the decrypted i n fo r m a t i o n . T h e parties have stipulated that any terms appearing in both the `110 and `624 p a te n ts should be given the same meaning in both patents. The two claims quoted

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a b o v e use different wording and sentence construction, but the parties agree that th e claims both disclose the same essential check authenticating scheme.5 The term s to be construed in Claim 1 are as follows. A. "E n cryp t in combination with" and "Encrypt a combination of"

T h e primary dispute between the parties centers around the meaning of these tw o phrases, which the parties agree should be construed together. The `110 p a te n t speaks of "selected information . . . encrypted in combination with key in fo rm atio n ," while the `624 patent uses the phrase "encrypting a combination of th e selected information and one of the private and public keys." A d v a n c ed Software maintains that these phrases simply mean that the check in fo rm atio n to be encoded is encrypted using the appropriate key. Since the p aten ts focus only on key-based cryptographic systems that are widely known, the lan g u ag e here directs that the "key" or "key information" is applied to the "selected information." F iserv , however, argues that these phrases describe a two-step process for en cryp tio n . First, the selected information is combined with the key information.

Although the two patents disclose essentially the same invention, it is important to note some differences between the two claims quoted above. First, the `110 patent speaks of "key information," while the `624 patent uses the term "private and public encryption keys" and "private and public keys." Second, the `110 patent uses the phrase "encrypted in combination with," while the `624 patent refers to "encrypting a combination of." Finally, Claim 1 of the `110 patent discloses both a "public key" encryption scheme in clause (i) and a "private key" encryption scheme in clause (ii). Claim 1 of the `624 patent only discloses a "public key" encryption scheme, although the preferred embodiment discussed in that patent is essentially the same CRC "private key" scheme discussed in the `110 patent. - 12 -

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T h en , the combination is itself encrypted using the cryptographic algorithm. The k ey is not merely "used" to encrypt, rather the key is encrypted along with the ch eck information. B o th parties claim support for their respective positions in the patent text and th e file history. Advanced Software, for its part, argues that the "combination" lan g u ag e in both patents was necessary because it distinguishes Sandru's in v en tio n from the prior art disclosed in the Chapman patent. By using the phrase "en cryp ted in combination with," Sandru is making clear that the encryption key, lik e the check information to be encoded, is inserted into the known cryptographic alg o rith m . The key and the algorithm are separate. This is unlike the situation in C h ap m an , where the "key" is derived from the check information by using the alg o rith m . The "combination" here is still a one-step process that simply uses the k e y and the algorithm to transform the check information into a control code. F iserv disputes this construction by pointing out that plaintiffs' arguments h ere are different from the arguments they raised before the Patent and Trademark O ffice. See Phillips, 415 F.3d at 1317 (quoting Graham v. John Deere Co., 383 U .S . 1, 33 (1966)) ("An invention is construed not only in light of the claims, but also with reference to the file wrapper or prosecution history in the Patent O ffice."). The parent patent to the patents in suit here is Patent No. 6,233,340. It

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w a s this `340 Patent that Sandru had to distinguish from the Chapman patent when arg u in g before the PTO. T h e patent examiner initially rejected the claims in Sandru's `340 Patent b ecau se of Chapman. The examiner noted that "Chapman does not explicitly te ac h encrypting the encryption key along with the selected information," however "it is very old and well-known in the art of cryptography to utilize an encryption alg o rith m in which the encryption `key' is incorporated into the end result of the alg o rith m ." Sandru did not respond to this assertion by correcting the examiner's in terp retatio n of his patent. Sandru did not argue that the difference between his p aten t and Chapman's patent is that Sandru uses keys and Chapman does not. He d id not argue that the "in combination with" language merely claims that the alg o rith m uses a key. In s te ad , Sandru argued that, since the "key" in Chapman was in essence d e riv e d from the check information, there would be no value to encrypting the key a lo n g with the check information ­ the process would not result in any added secu rity. Furthermore, argued Sandru, to the extent that the "key" in Chapman is th e algorithm itself, it would not be possible to encrypt a combination of the key an d the selected information. Fiserv argues that this prosecution history supports its interpretation of the patent. Given the chance to explain the language of his p aten t, Sandru emphasized the combination step as an integral part of his

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in v en tio n that is separate from the encryption itself. Sandru did not claim that the p aten t language merely teaches the use of a key to perform encryption. See C h im ie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) ("The purpose o f consulting the prosecution history in construing a claim is to exclude any in terp retatio n that was disclaimed during prosecution."). M o reo v er, Fiserv argues that the text of the claim terms and the patent sp ecificatio n further supports its interpretation. Although the claim terms in the `1 1 0 patent refer both to public key cryptography like RSA and private key system s, the patent specification emphasizes private key systems like the CRC d escrib ed in the preferred embodiment. In the Summary of the Invention section o f the `624 Patent, Sandru describes one step in the encryption process as "e n c ry p tin g a combination of the selected information and the encryption key." Then, when the control code is later validated, Sandru says that a validator "can re ad the un-encrypted selected information from the negotiable instrument, reco m b in e it with the encryption key and re-encrypt the combination according to said scheme." Thus, Sandru emphasizes "re-combining" as its own step separate fro m "re-encrypt[ing] the combination." When discussing alternative em b o d im en ts such as RSA, Sandru continues to state that the invention calls for "en cryp tin g a combination of the selected information and one of the private and

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p u b lic keys." Consequently, argues Fiserv, the patent consistently refers to the m eth o d of "combining" and then "encrypting" as a two-step process. A d v an ced Software and Sandru counter this argument by claiming that one o f ordinary skill in the art would not read such a limitation into the claim terms. Particularly in the case of RSA, say the plaintiffs, encrypting the key along with th e selected information would not make any sense. In RSA, there are two keys, an d each one performs a specific function (the encryption key and the decryption k e y ). Under Fiserv's construction, the RSA encryption step would result in an en cryp ted combination of the selected information and the key. When the control co d e is decrypted, the encryption key would be revealed. The whole point of u sin g RSA ­ i.e., having one key public and one key private ­ would be u n d erm in ed . Moreover, argues Advanced Software, combining the key and the s ele cte d information prior to the encryption would make the encryption step tech n ically impossible, because no computer could store such a large number. F is erv responds by noting (as the patent examiner in the `340 patent did) that en cryp tin g a message along with its encryption key is still well-known in the art an d is not in itself something that would undermine every encryption. Though the p a te n t specification uses concatenation as a type of "combining," there are other w a ys that key information could be combined with selected information that w o u ld not immediately reveal the private key. In any event, Fiserv argues that

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ev en if a particular embodiment of the invention might be infeasible or might u n d erm in e the integrity of the encryption scheme, this is not a reason to depart fro m the plain language of the patent. Construing a patent's terms so as to ensure th at the patent is useful and workable is not a goal of claim construction. T h e root of the parties' disagreement is the extent to which the patent sp ecificatio n informs the meaning of the words used in the patent claims. The sp ecificatio n teaches that the encryption keys are concatenated with (i.e., c o m b in e d with) the selected information and that the combination is then en cryp ted to produce a control code. The phrase "in combination with" or "a co m b in atio n of" makes sense in this context. The specification helps explain and g iv es an example of what is meant by a "combination." However, claim terms are n o t to be limited by embodiments set forth in the specification. Comark, 156 F.3d at 1186; but see Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1 3 4 6 -4 7 ("The specification is the single best guide to the meaning of a disputed term ."). The claim terms here broadly cover both the private key scheme in the p referred embodiment and public key schemes like RSA. The patents do not s p e cify how key information and selected information are to be "combined" when u s in g an RSA scheme or any scheme other than the one outlined in the preferred e m b o d im e n t.

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C o n sid erin g all of the arguments presented by the parties on this issue, I co n clu d e that Fiserv's construction of these terms is the construction that is more co n sisten t with the terms' ordinary and customary meaning according to the cu sto m ary understanding of a person of ordinary skill in the art reading the terms in the context of the intrinsic record. Kyocera, 545 F.3d at 1346. The `624 patent, in particular, refers to "a combination of" items. The items that make up the co m b in atio n are the encryption key and the selected information. The word "co m b in atio n " as it is used in Claim 1 of the `624 patent is a noun. It is the thing that is encrypted. Therefore, the process described as a whole in Claim 1 n ecessarily has two steps: one of combining (or creating the combination), and one o f encrypting the combination. If the patentee had sought to say "encryption using an encryption key" or "encrypting selected information by applying an encryption k ey," he could have done so. The word "combination" is specifically and rep eated ly used in the patents, and that word must provide some added meaning to th e claim terms. Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (F ed . Cir. 2005) ("A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so."). The added meaning here is su p p lied by the specification, which teaches a two-step process of combination an d encryption. See E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co.,

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8 4 9 F.2d 1430, 1433 (Fed. Cir. 1988) ("It is entirely proper to use the specification to interpret what the patentee meant by a word or phrase in the claim."). A d v an ced Software's argument that this construction makes the invention n o n sen sical is not persuasive. The specification shows how key information and selected information can be combined through concatenation. But the patent claim s are not limited to combining elements in this particular way. "Combining" in this context is not a specific mathematical operation.6 Even in situations where a public key system is used, the combination step can take any number of forms, b u t the patent still speaks of "combining" the elements prior to encryption. The p aten t claims state that the selected information and the key information are co m b in ed , and that the encryption of these two elements together makes up the co n tro l code. The extent to which this method of encryption is practical or feasib le is not relevant to claim construction. See SmithKline Beecham Corp. v. A p o tex Corp., 403 F.3d 1331, 1339 (Fed. Cir. 2005) ("The scope of patent claims can neither be broadened nor narrowed based on abstract policy considerations reg ard in g the effect of a particular meaning."). The claims must be construed in acco rd an ce with their plain meaning to one of ordinary skill in the art.

During testimony at the Markman hearing, the defendants' expert witness demonstrated how other types of "combination" processes beyond concatenation, such as an "XOR operation," could be used in the RSA context. - 19 -

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A c c o rd in g ly , "E n cryp ted in combination with" and "encrypt a combination of" means p e rfo rm in g mathematical operations of an algorithm which, first, combines "selected information" and one or more of the specified "keys" and second, g en erates a control code by encrypting the combined "selected information" and "k ey" or "key information." B. R elated claim terms

A number of the remaining disputed claim terms are integral to the main d isp u te that I have discussed above. These terms are interrelated and dependant u p o n one another for their meaning. See Kyocera, 545 F.3d at 1347 (quoting H o c k er so n -H a lb e r sta d t, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1 9 9 9 )) ("Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation."). For reasons that follow from my p rev io u s discussion and use of these terms, the following definitions shall apply: "E n c ry p te d" or "encrypting" means applying a known cryptographic scheme o r algorithm to obtain a control code. "K ey information," "key," "keys," and "encryption keys" means a piece of in fo rm atio n that is used with a cryptographic algorithm to encrypt and/or decrypt th e selected information, whereas the cryptographic algorithm can be widely d istrib u ted without compromising security.

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"C o n tro l code" and "generate a control code" means the end product of the en cryp tio n process that is then printed on the check. "D ecryp t," "decrypting" and "decrypted" means the reverse process of "en cryp tin g ," applied to a control code and using the proper key. C. "V a ries for each instantiation"

T h e `624 patent refers to "selected information [that] varies for each in stan tiatio n of the cheque." Similar language appears in the `110 patent. Fiserv arg u es that this phrase implies that for each check, the "selected information" to be en cryp ted must always be different and unique to that check. Advanced Software arg u es that Fiserv's proposed definition is inconsistent with the ordinary meaning o f the word "varies." According to Advanced Software, a quantity that "varies" ch an g es between instances, but it is not always different. Advanced Software's reading of the term "varies for each instantiation" is m o re consistent with the plain language of the claim and the context of the patent as a whole. To insist that the "selected information" must be different in every in stan ce would unduly limit the invention in a way the patent does not co n tem p late. There is no reason why the payee, check amount, or check date w o u ld necessarily be unique to every check. These data fields would "vary" from o n e check to the next, but it is still possible that the same payee might receive

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m u ltip le checks, or the same amount could be written on multiple checks. A c c o rd in g ly , "V a ries for each instantiation" means variable and generally not common to all checks issued by the same payor, but not necessarily distinct and unique to ev ery check. D. T erm s with a plain and ordinary meaning

"U n less the intrinsic evidence compels a contrary conclusion, the claim lan g u ag e carries the meaning accorded those words in the usage of skilled artisans a t the time of invention." SmithKline, 403 F.3d 1331 at 1339. With respect to the term s "print" or "printing," and "match," the parties have failed to demonstrate th at these words should be accorded any particular or unique meaning in light of th e patents' context. Thus, I find that the following terms have a plain and o rd in ary meaning as understood by someone in the art at the time of invention: "P rin t" and "printing" have their plain and ordinary meaning. "M a tc h " has its plain and ordinary meaning. IV . C o n c lu s io n F o r the reasons stated above, the preceding definitions shall apply to the p aten t claim terms in the `624 and `110 patents. Disputes over remaining claim term s may be raised in the context of summary judgment motions or at trial,

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th ro u g h proposed jury instructions. S o ordered.

C A T H E R IN E D. PERRY U N IT E D STATES DISTRICT JUDGE D ated this 23rd day of December, 2008.

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