Datatreasury Corporation v. Wells Fargo & Company et al

Filing 648

JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 (Melsheimer, Thomas)

Datatreasury Corporation v. Wells Fargo & Company et al

Doc. 648

Case 2:06-cv-00072-DF-CMC

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION DATATREASURY CORPORATION, Plaintiff v. WELLS FARGO & COMPANY, et al. Defendants JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 Pursuant to the Court's Second Amended Docket Control Order, the Parties1 hereby submit this Joint Claim Construction and Prehearing Statement in compliance with Patent Rule 4-3. Each Defendant joins this Joint Claim Construction and Prehearing Statement solely with respect to those terms found in claims asserted against it. The Parties expressly reserve the right to modify this Joint Claim Construction Statement should the Court issue any relevant claim construction rulings between now and the Markman hearing scheduled for September 24, 2007. I. P.R. 4-3(a) Pursuant to P.R. 4-3(a), the Parties present the agreed construction of the claim terms, phrases, or clauses, contained in Exhibit A. 2:06-CV-72 DF

1

First Citizens Bancshares, Inc., HSBC North America Holdings Inc., and Union BanCal Corporation join this Statement subject to, and without waiver of, their lack of personal jurisdiction defenses.

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II.

P.R. 4-3(b) Pursuant to P.R. 4-3(b), the Parties present the disputed constructions of the

following claim terms, phrases, or clauses, contained in Exhibit B (the "'007 Patent"), Exhibit C (the "'868 Patent"), Exhibit D (the "'759 Patent"), and Exhibit E (the "'778 Patent"). Exhibits B thru E include citations to example intrinsic and extrinsic evidence asserted to support the parties' respective claim constructions. For brevity, terms and phrases are defined only once, where they first appear. For purposes of presenting the disputed constructions in Exhibits B thru E, the Defendants' constructions are placed in the following groups: "Defendant Group 1": Bank of America Corporation Bank of America, National Association Bank of Tokyo-Mitsubishi UFJ, LTD BB&T Corporation Branch Banking and Trust Company Citizens Financial Group, Inc. City National Bank City National Corporation Comerica Bank & Trust, National Association Comerica Incorporated Deutsche Bank Trust Company Americas First Citizens Bancshares, Inc. First Citizens Bank & Trust Company First Data Corporation HSBC Bank USA, National Association HSBC North America Holdings Inc. Lasalle Bank Corporation Lasalle Bank, National Association M&T Bank M&T Bank Corporation National City Bank National City Corporation Remitco, LLC Telecheck Services, Inc. The Bank of New York The Bank of New York Co, Inc. The Clearing House Payments Company, L.L.C.
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U.S. Bancorp U.S. Bank, National Association UBS Americas, Inc. Union Bank of California, National Association UnionBanCal Corporation Wachovia Bank, National Association Wachovia Corporation "Defendant Group 2": KeyBank, National Association KeyCorp PNC Bank, National Association PNC Financial Services Group, Inc. The parties expressly reserve the right to modify this identification of intrinsic and extrinsic evidence, including the right to cite additional evidence not identified herein, to support their respective claim constructions. III. P.R. 4-3(c) The Court' s Second Amended Docket Control Order has designated 4 hours for each side to present at the Claim Construction Hearing on September 24, 2007, with the hearing to continue September 25th if necessary. No Party currently proposes to change the Court' s Scheduling Order. IV. P.R. 4-3(d) Pursuant to P.R. 4-3(d), the parties state as follows: A. Terry Geer and David James may testify at the Claim Construction

Hearing as to the various structural embodiments representing certain means-for applications. B. If required or helpful to the Court, " Defendant Group 1" proposes to call

Dr. Dewayne E. Perry as an expert witness providing testimony for the construction of the means-plus-function claim terms for which he is identified below. Dr Perry may be

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called on to explain the technology, the states-of-the-art at the time the patent application was filed and/or issued, the meaning of claim terms as they would be understood by those of ordinary skill in the art at the time of the invention, the proper construction of various claim terms in light of the intrinsic and extrinsic evidence, and the level of ordinary skill in the relevant art. Dr. Perry may also be called if required or helpful to the Court as a rebuttal witness to testimony provided by Plaintiff at the Claim Construction Hearing. Dr. Perry may testify to the lack of corresponding structure sufficient to perform the claimed function(s). Specifically, with respect to the " means-plus-function" terms that recite a computer-implemented function(s), Dr. Perry may provide testimony supporting the following: · The identified " means-plus-function" claim terms recite a computerimplemented function(s) which require a CPU, a microprocessor, a programmed computer, and/or software to perform it/them. It is well known in the art that a stand-alone processor or CPU could not perform the functions in the identified " means-plus-function" claim terms without associated software and/or programming. For each identified " means-plus-function" term, the patent does not provide a flowchart, mathematical equations, source code, or detailed descriptions in the specification that could constitute an algorithm for performing the functions of any of the computer-implemented meansplus-function limitations.

·

·

" Defendant Group 1" reserves the right to call Mr. Karl Sammons if required or helpful to the Court as a rebuttal witness to testimony provided by Plaintiff at the Claim Construction Hearing. Mr. Sammons may be called on to explain the technology, the states-of-the-art at the time the patent application was filed, the meaning of claim terms as they would be understood by those of ordinary skill in the art at the time of the invention, the proper construction of various claim terms in light of the intrinsic and extrinsic evidence, and the level of ordinary skill in the relevant art.
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C.

" Defendant Group 2" does not intend to call any witnesses. " Defendant

Group 2" reserves the right to rely on the testimony of witnesses offered by other parties in this case or related cases in support of its claim constructions. V. P.R. 4-3(e) Pursuant to P.R. 4-3(e), the parties state as follows: A. Plaintiff foresees no need for a prehearing conference on claim

construction issues, other than for limiting the number of terms for construction at the Markman hearing. B. At present, " Defendant Group 1" is unaware of any additional issues

which might require the scheduling of a prehearing conference. If such issues later arise, " Defendant Group 1" will inform the Court and the parties involved and propose dates for a prehearing conference. C. At present, " Defendant Group 2" is unaware of any additional issues

which might require the scheduling of a prehearing conference. If such issues later arise, " Defendant Group 2" will inform the Court and the parties involved and propose dates for a prehearing conference.

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Dated: April 13, 2007

Respectfully submitted,

By: /s/ Thomas M. Melsheimer by permission on behalf of the Plaintiff: Edward L. Von Hohn, Attorney in Charge State Bar No. 09813240 Rod Cooper State Bar No. 90001628 Edward Chin State Bar No. 50511688 NIX PATTERSON & ROACH LLP 5215 N. O' Connor Blvd. Ste. 1900 Irving, Texas 75039 972.831.1188 (telephone) 972.692.5445 (facsimile) [e-mail] [e-mail] [e-mail] C. Cary Patterson State Bar No. 15587000 Brady Paddock State Bar No. 00791394 Anthony Bruster State Bar No. 24036280 R. Benjamin King State Bar No. 24048592 NIX PATTERSON & ROACH L.L.P. 2900 St. Michael Drive, Suite 500 Texarkana, Texas 75503 903.223.3999 (telephone) 903.223.8520 (facsimile) [e-mail] [e-mail] [e-mail] Joe Kendall State Bar No. 11260700 Karl Rupp State Bar No. 24035243 PROVOST * UMPHREY, L.L.P. 3232 McKinney Avenue, Ste. 700 Dallas, Texas 75204 214.744.3000 (telephone)

By: /s/ Thomas M. Melsheimer Thomas M. Melsheimer Texas Bar No. 13922550 FISH & RICHARDSON P.C. 1717 Main Street Suite 5000 Dallas, TX 75201 214-747-5070 (Telephone) 214-747-2091 (Telecopy) Robert E. Hillman FISH & RICHARDSON P.C. 225 Franklin Street Boston, MA 02110-2804 617-542-5070 (Telephone) 617-542-8906 (Telecopy) Robert M. Parker Robert Christopher Bunt PARKER & BUNT, P.C. 100 E. Ferguson, Suite 1114 Tyler, Texas 75702 903-531-3535 (Telephone) 903-533-9687 (Telecopy) Michael E. Jones Texas Bar No. 10929400 E. Glenn Thames, Jr. Texas Bar No. 00785097 POTTER MINTON 500 Plaza Tower 110 North College, Suite 500 Tyler, TX 75702 ATTORNEYS FOR DEFENDANTS BANK OF AMERICA CORPORATION, BANK OF AMERICA, NATIONAL ASSOCIATION By:/s/ Thomas M. Melsheimer by permission on behalf of the following counsel: Danielle Williams KILPATRICK STOCKTON LLP 1001 West Fourth Street Winston-Salem, NC 27101 Bill Boice

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214.744.3015 (facsimile) [e-mail] [e-mail] Eric M. Albritton State Bar ;No. 00790215 ALBRITTON LAW FIRM P.O. Box 2649 Longview, Texas 75606 903.757.8449 (telephone) 903.758.7397 (facsimile) [e-mail] T. John Ward, Jr. State Bar No. 00794818 LAW OFFICE OF T. JOHN WARD, JR. P.O. Box 1231 Longview, Texas 75601 903.757.6400 (telephone) 903.757.2323 (facsimile) [e-mail] ATTORNEYS FOR PLAINTIFF DATATREASURY CORPORATION

Audra Dial KILPATRICK STOCKTON LLP 1100 Peachtree Street, Suite 2800 Atlanta, Georgia 30309-4530 Kenneth Godlewski Stephen Baskin KILPATRICK STOCKTON LLP 607 14th Street, NW, Suite 900 Washington, DC 20005-2018 ATTORNEYS FOR DEFENDANTS BB&T CORPORATION, BRANCH BANKING & TRUST CO., COMERICA BANK & TRUST, N.A., COMERICA, INC., M&T BANK, M&T CORPORATION, WACHOVIA CORPORATION, WACHOVIA BANK, N.A. Raymond Sweigart Jack Barufka Scott Pivnick PILLSBURY WINTHROP SHAW PITTMAN LLP 1650 Tysons Blvd. McLean, VA 22102-4859 ATTORNEYS FOR DEFENDANTS BANK OF NEW YORK CO., INC., THE BANK OF NEW YORK, UNION BANK OF CALIFORNIA, N.A., UNIONBANCAL CORPORATION David L. Ward, Jr. Donalt J.Eglinton WARD AND SMITH, P.A. 1001 College Court New Bern, NC 28562 Larry Carlson David Taylor BAKER BOTTS L.L.P. 2001 Ross Avenue Dallas, TX 75201-2980 ATTORNEYS FOR DEFENDANTS FIRST CITIZENS BANCSHARES, INC., FIRST CITIZENS BANK & TRUST CO. James H. Carter James T. Williams Jane Jaang SULLIVAN & CROMWELL LLP

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125 Broad Street New York, New York 10004-2493 ATTORNEYS FOR DEFENDANTS THE CLEARINGHOUSE PAYMENTS CO., L.L.C. F/K/A SMALL VALUE PAYMENTS CO., L.L.C. Glen Boudreaux Tim Leonard Edward J. Nicholas BOUDREAUX LEONARD HAMMOND CURCIO 2 Houston Center 909 Fannin Street, Suite 2350 Houston, TX 77010 ATTORNEYS FOR DEFENDANTS HSBC NORTH AMERICA HOLDINGS, INC., HSBC BANK USA, N.A. Irah Donner WILMER, CUTLER, PICKERING, HALE & DORR 399 Park Ave. New York, NY 10022 ATTORNEY FOR DEFENDANTS HSBC NORTH AMERICA HOLDINGS, INC., HSBC BANK USA, N.A. Sam Baxter Lead Attorney Texas Bar No. 01938000 [e-mail] McKOOL SMITH, P.C. 505 East Travis Street, Suite 105 Marshall, Texas 75670 903-927-2111 (Telephone) 903-927-2622 (Telecopy) Theodore Stevenson, III Texas Bar No. 19196650 [e-mail] L. David Anderson Texas Bar No. 00796126 [e-mail] McKOOL SMITH P.C. 300 Crescent Court, Suite 1500 Dallas, TX 75201 214-978-4000 (Telephone) 214-978-4044 (Telecopy)
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Peter J. Ayers Texas Bar No. 24009882 [e-mail] Geoffrey L. Smith Texas Bar No. 24041939 [e-mail] McKOOL SMITH P.C. 300 W. 6th Street, Suite 1700 Austin, Texas 78701 512-692-8700 (Telephone) 512-692-8744 (Telecopy) ATTORNEYS FOR DEFENDANTS PNC FINANCIAL SERVICES GROUP, INC., PNC BANK NATIONAL ASSOCIATION, KEYCORP, AND KEYBANK NA Theodore Stevenson, III Lead Attorney Texas Bar No. 19196650 [e-mail] Garret W. Chambers Texas Bar No. 00792160 [e-mail] L. David Anderson Texas Bar No. 00796126 [e-mail] McKOOL SMITH, P.C 300 Crescent Court, Suite 1500 Dallas, TX 75201 214-978-4000 (Telephone) 214-978-4044 (Telecopy) Peter J. Ayers Texas Bar No. 24009882 [e-mail] Geoffrey L. Smith Texas Bar No. 24041939 [e-mail] McKOOL SMITH P.C. 300 W. 6th Street, Suite 1700 Austin, Texas 78701 512-692-8700 (Telephone) 512-692-8744 (Telecopy) COUNSEL FOR FIRST DATA CORPORATION, TELECHECK SERVICES, INC.;REMITCO, LLC, DEUTSCHE BANK TRUST COMPANY AMERICAS, BANK OF TOKYOMITSUBISHI UFJ, LTD. Edward G. Poplawski (Pro Hac Vice)
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[e-mail] Jeffrey A. Finn (Pro Hac Vice) [e-mail] Carissa A. Tener (Pro Hac Vice) [e-mail] SIDLEY AUSTIN L.L.P. 555 West Fifth Street, Suite 4000 Los Angeles, California 90013 213-896-6000 (Telephone) 213-896-6600 (Telecopy) Sidney Calvin Capshaw, III State Bar No. 03783900 Andrew W. Spangler State Bar No. 20401960 Elizabeth L. DeRieux State Bar No. 05770585 Brown McCarroll 1127 Judson Road, Suite 220 Longview, TX 75601 P.O. Box 3999 Longview, TX 75606-3999 903-236-9800 Fax: [phone] [e-mail] [e-mail] [e-mail] COUNSEL FOR LASALLE BANK CORPORATION AND LASALLE BANK NA Jerry L. Beane Texas Bar No. 01966000 [e-mail] Gerald C. Conley Texas Bar No. 04664200 [e-mail] Kay Lynn Brumbaugh Texas Bar No. 00785152 [e-mail] Tonya M. Gray Texas Bar No. 24012726 [e-mail] ANDRWS KURTH LLP 1717 Main Street, Suite 3700 Dallas, TX 75201 214-659-4400 (Telephone) 214-659-4401 (Telecopy) ATTORNEYS FOR DEFENDANTS COMPASS BANCSHARES, INC. AND COMPASS BANK, FIRST HORIZON NATIONAL
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CORPORATION FIRST TENNESSEE BANK, N.A. William L. LaFuze Texas Bar No. 11792500 [e-mail] D. Ferguson McNiel Texas Bar No. 13830300 [e-mail] VINSON & ELKINS LLP 2300 First City Tower 1001 Fannin St. Houston, TX 77002 713-758-2595 (Telephone) 713-615-5017 (Telecopy) Scott W. Breedlove Texas Bar No. 00790361 [e-mail] VINSON & ELKINS LLP 3700 Trammell Crow Center 2001 Ross Ave. Dallas, TX 75201-2975 214-220-7700 (Telephone) 214-220-7716 (Telecopy) Harry Lee Gillam, Jr. Texas Bar No. 07921800 [e-mail] Melissa Richards Smith Texas Bar No. 24001351 [e-mail] GILLAM & SMITH LLP 110 South Bolivar, Suite 204 Marshall, TX 75670 903-934-8450 (Telephone) 903-934-9257 (Telecopy) ATTORNEYS FOR UBS AMERICAS, INC. Edward G. Poplawski (Pro Hac Vice) [e-mail] Jeffrey A. Finn (Pro Hac Vice) [e-mail] Carissa A. Tener (Pro Hac Vice) [e-mail] SIDLEY AUSTIN L.L.P. 555 West Fifth Street, Suite 4000 Los Angeles, California 90013 213-896-6000 (Telephone) 213-896-6600 (Telecopy) Kurt M. Sauer
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DAFFER MCDANIEL The Chase Building 700 Lavaca, Suite 720 Austin, TX 78701-3119 Sidney Calvin Capshaw, III State Bar No. 03783900 Andrew W. Spangler State Bar No. 20401960 Elizabeth L. DeRieux State Bar No. 05770585 Brown McCarroll 1127 Judson Road, Suite 220 Longview, TX 75601 P.O. Box 3999 Longview, TX 75606-3999 903-236-9800 Fax: [phone] [e-mail] [e-mail] [e-mail] ATTORNEYS FOR CITY NATIONAL BANK CITY NATIONAL CORP. Melvin R. Wilcox, III [e-mail] SMEAD, ANDERSON & DUNN LLP 2110 Horseshoe Lane P.O. Box 3343 Longview, TX 75606 903-232-1892 (Telephone) 903-232-1881 (Telecopy) Of Counsel: John J. Feldhaus [e-mail] Anthony H. Son [e-mail] FOLEY & LARDNER LLP 3000 K Street, N.W. Washington, DC 20007 202-672-5300 (Telephone) ATTORNEYS FOR U.S. BANCORP, U.S. BANK, NATIONAL ASSOCIATION, NATIONAL CITY CORPORATION AND NATIONAL CITY BANK, ZIONS BANCORPORATION AND ZIONS FIRST NATIONAL BANK John H. McDowell, Jr.
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[e-mail] Greg Perrone [e-mail] HUGHES & LUCE LLP 1717 Main Street, Suite 2800 Dallas, TX 75201 214-939-5413 (Telephone) 214-939-5849 (Telecopy) ATTORNEYS FOR BANCORPSOUTH, INC., AND BANCORPSOUTH BANK Jeffrey Standley [e-mail] STANDLEY LAW GROUP LLP 495 Metro Place South, Suite 210 Dublin, OH 43017 614-792-5555 (Telephone) 614-792-5536 (Telecopy) Claude Welch [e-mail] 115 W. Shepherd Ave. Lufkin, TX 75904-3808 936-639-3311 (Telephone) 936-639-3049 (Telecopy) ATTORNEYS FOR CITIZENS FINANCIAL GROUP, INC.

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CERTIFICATE OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on April 13, 2007, to all counsel of record who are deemed to have consented to electronic service via the Court' s CM/ECF system per Local Rule CV-5(a)(3). /s/ Tim K. Brown Tim K. Brown

90219375.doc

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EXHIBIT A
DataTreasury Corporation v. Wells Fargo & Company, et al. P.R. 4-3(a) AGREED CONSTRUCTIONS

'007 Patent
Claim Term Function: Physically transporting the instruments from an institution at one site to each other of the institutions at the other sites. Corresponding Structure: Air and/or ground transportation. A document in writing by which some financial obligation by one person to pay another is represented, such as a check, paper, cash items, money orders, share orders, drafts, notes, bonds, coupons. Inside. Agreed Construction

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Claim 1

The "means for sending" includes a further means-plus-function limitation of "means for physically transporting the instruments from an institution at one site to each other of the institutions at the other sites" subject to 35 U.S.C. § 112(6)

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"financial instrument"

"within"

'868 Patent
Claim Term Agreed Construction A document in writing by which some financial obligation by one person to pay another is represented, such as a check, paper, cash items, money orders, share orders, drafts, notes, bonds, coupons.

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Claim 1

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"financial instrument"

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Claim 2 Data contained in the data file that identifies the originating or receiving institution.

"identifying information"

'759 Patent
Claim Term A document in writing by which some financial obligation by one person to pay another is represented, such as a check, paper, cash items, money orders, share orders, drafts, notes, bonds, coupons. Standards set by the payee's collecting and clearing bank for submitting financial instruments into the payment system. The system by which checks are collected and cleared among banks. The check payment system includes institutions such as the Federal Reserve Banks, correspondent banks, The National Clearinghouse Association and like mechanisms. A machine well-known in the industry for sorting instruments into discrete groups. A listing of checks and the amounts of the checks drawn on a particular institution or group of institutions in a particular area. Agreed Construction

Claim 1

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"financial instrument"

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"parameters determined by the payee's collecting and clearing bank"

"check payment system"

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"sorter"

"cash letters"

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"discrete groups"

Separate groups that are determined by predetermined sort patterns and/or instructions from the payee's collecting and clearing bank.

Claim 11 Standards set by the bank of subsequent deposit for submitting financial instruments into the payment system. The payee's depository bank.

"parameters determined by the bank of subsequent deposit"

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"bank of first deposit"

'778 Patent
Claim Term Agreed Construction A document in writing by which some financial obligation by one person to pay another is represented, such as a check, paper, cash items, money orders, share orders, drafts, notes, bonds, coupons. Information that ensures proper routing through the payment system. A machine well-known in the industry for sorting instruments into discrete groups. A form or invoice containing relevant information about the identity of the payor and the purpose of the payment to the payee.

Claim 1

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"financial instrument"

"routing information"

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"sorter"

"payment stub identifier"

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"in accordance with predetermined criteria established by the bank" Commands to control communication between the payee, the depository bank, and the payment system. A central control/processor unit coordinates and synchronizes communications. Electronic information, the equivalent of a cash letter, is included with each electronic bundle. Record generated by adding document identifiers and routing information to the first information record of each instrument.

According to criteria established in advance by the bank.

"process control instructions"

"controller for controlling and coordinating transmissions"

"associating said bundles with electronic cash letter information"

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"unique record"

Claim 5 Controlling the process of the delivery of instruments and cash letters into the payment system. A payment stub or invoice containing information about the payor's account with the payee, or an order form or the like containing relevant information about the identity of the payor and the purpose of the payment, which usually accompany instruments sent by payor. A central control/processor unit coordinates and synchronizes communications.

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"coordinating the delivery of the instruments and cash letters into the payment system"

"payment form"

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"coordinating the transmissions of information"

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EXHIBIT B

DataTreasury Corporation v. Wells Fargo & Company, et al. P.R. 4-3(b) PARTIES DISPUTED CONSTRUCTIONS FOR U.S. PATENT NO. 5,265,007
Plaintiff Construction "Defendant Group 1" Construction "Defendant Group 2" Construction

No.

'007 Claim Terms for Construction Preamble is not limiting and the language in preamble does not need to be construed. See, e.g., Catalina Mktg. Int'l Inc. v. Coolsavings.com Inc., 289 F.3d 801 (Fed. Cir. 2002); DeGeorge v. Bernier, 768 F.2d 1318 (Fed. Cir. 1985). Preamble contains limiting terms, including term(s) requiring construction(s).

Claim 1

2

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1.

Preamble should be construed as limiting

2.

"pre-selected financial institutions"

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"pre-selected institutions"

"participants" (Claim 4)

3

Financial institutions that have been previously chosen to be direct participants in a central check clearing system other than the Federal Reserve System. Intrinsic Evidence: (2:28-32); (3:21-28); (4:22-40); (5:2645); (6:25-51); Language of Claim 1 and 4; FIG 1; Amendment (Dec. 8, 1992) at 9; Amendment (Jan. 2, 1992) at 3 Extrinsic Evidence:

Members of a centralized clearinghouse association that settle financial transactions with each other, each located in a specific and exclusive geographical region. Intrinsic Evidence:

Plaintiff' construes "pre-selected financial institutions" and "pre-selected institutions" to be "Financial institutions which have previously been selected to be members of or participants in the central check clearing system or a local clearinghouse as to clearing the financial instrument." Plaintiff construes "participants" to be "members of the clearinghouse association." Intrinsic Evidence:

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Col. 2:28-32; Col. 2:66-Col. 3:3; Col. 3: 21-28; Col. 4:22-40; Col. 5:26-45; Col. 6:25-59; Fig. 1; Amendment, pp. 2-3 (May 29, 1991); Amendment, pp. 2-3 (Jan. 2, 1992); Amendment, pp. 8-9 (Dec. 8, 1992).

2

For brevity, terms and phrases are defined only once, where they first appear.

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3

The terms that share common constructions are grouped together. Terms located in different claims are annotated with the claim number where the claim is found. Plaintiff opposes the grouping of claim terms from different claims and notes its objection for the Court.

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No. `007 Patent at 1:44-52; 2:30-37; 2:663:7; 3:24-28; 5:13-18; 7-34-38; 10:25 Extrinsic Evidence: Webster's Encyclopedic Unabridged Dictionary of the English Language, Random House, Inc., p. 1138 (1994) (defining "preselect" as "to select in advance; choose beforehand.") (Exhibit F). Plaintiff's construction for "participants" (Claim 4) is as follows: "preselect", Webster's Encyclopedic Unabridged Dictionary of the English Language, Random House, Inc. (1994) ­ "to select in advance; choose beforehand."

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

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3. Alternatively, Plaintiff's construction is: The instrument processing location of a participating institution.

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"preselected site"

This language is in the preamble and does not need to be construed.

The specific and exclusive geographical region of a financial institution that has been previously chosen to be a direct participant in a central check clearing system other than the Federal Reserve System. Intrinsic Evidence:

A place within a specific and exclusive geographical region. Intrinsic Evidence: Col. 1:44-Col. 2:16; Col. 2:28-32; Col. 2:66-Col. 3:3; Col. 3:21-28; Col. 4:2249; Col. 5:10-25; Col. 5:26-45; Col. 6:25-59; Col. 7:1-13; Fig. 1; Amendment, pp. 2-3 (May 29, 1991); Amendment, pp. 2-3 (Jan. 2, 1992); Amendment, pp. 8-9 (Dec. 8, 1992).

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(2:28-32); (3:21-28); (4:22-40); (4:4149); (5:10-25); (5:26-45); (6:25-51); (7:1-13); Language of Claims 1 and 4; Objects of the Invention; FIG 1; Amendment (May 29, 1991) at 3; Amendment (Jan. 2, 1992) at 34; Amendment (Dec. 8, 1992) at 9 Extrinsic Evidence: "preselect", Webster's Encyclopedic Unabridged Dictionary of the English Language, Random House, Inc.

.

Page 20 of 78

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B2

No. (1994) ­ "to select in advance; choose beforehand." "site", The Oxford English Dictionary (2d ed. 1989) ­ "2. a. the situation or position of a place, town, building, etc., esp. with reference to the surrounding district or locality." This term should be construed under 35 U.S.C. § 112(6). Function: Sending and receiving the instruments. Corresponding Structure: Air or ground transportation and a preselected institution's physical facility. Intrinsic Evidence `007 Patent, at Fig. 1; Col. 6:22-24; and potentially the file history. Extrinsic Evidence: Testimony from Dr. Perry. Corresponding Structure: Specification does not disclose structure sufficient to perform the recited function. Function: Sending and receiving the instruments. This term should be construed under 35 U.S.C. § 112(6).

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

Case 2:06-cv-00072-DF-CMC

4.

This term should be construed under 35 U.S.C. § 112(6). Function: Sending and receiving the instruments. Corresponding Structure: The structure disclosed in the specification of the '007 patent that corresponds to this element is the structure disclosed in the specification for the "means for physically transporting instruments..." and the "means for physically accepting the instruments...," if any.

Document 648

"means within each of the preselected institutions...for sending and receiving the instruments, said means for sending including means for physically transporting the instruments from an institution at one site to each other of the institutions at the other sites, said means for receiving including means for physically accepting the instruments transported from the other institutions" is in meansplus-function format subject to 35 U.S.C. § 112(6) This term should be construed under 35 U.S.C. § 112(6). Function: Sending and receiving the instruments. Corresponding Structure: Air or ground transportation and a preselected institution's physical facility. Intrinsic Evidence This term should be construed under 35 U.S.C. § 112(6). Function: Physically accepting the instruments transported from other institutions. Corresponding Structure: Specification does not disclose structure sufficient to perform the recited function.

Filed 04/13/2007

5.

This term should be construed under 35 U.S.C. § 112(6). Function: Physically accepting the instruments transported from the other institutions. Corresponding Structure: The specification of the '007 patent does not disclose structure sufficient to perform the recited function.

The "means for receiving" includes a further means-plusfunction limitation of "means for receiving including means for physically accepting the instruments transported from the other institutions" subject to 35 U.S.C. § 112(6)

Page 21 of 78

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B3

No. `007 Patent, at Fig. 1; Col. 6:22-24; and potentially the file history. This term should be construed under 35 U.S.C. § 112(6). This term should be construed under 35 U.S.C. § 112(6). Function: Sending to and receiving from a central processing unit connected to each institution information reporting in real time in correspondence with the occurrence of an event (a) the value of the instruments transported; and (b) the transport status of the instruments with respect to their having been sent and received. Corresponding Structure: Specification does not disclose structure sufficient to perform the recited function. Intrinsic Evidence: (6:20-22); Amendment After Final Office Action (May 6, 1993) at 8 Extrinsic Evidence: Testimony from Dr. Perry. A conventional programmable computer. Intrinsic Evidence A single central processing unit, connected to all originating and receiving institutions and through which all data files are transmitted. Intrinsic Evidence: A single master conventional programmable computer. Function: Sending to and receiving from a central processing unit connected to each institution information reporting in real time in correspondence with the occurrence of an event (a) the value of the instruments transported; and (b) the transport status of the instruments with respect to their having been (i) sent and (ii) received Corresponding Structure: Electronic communications links, which may include conventional telephone links by modem connections and the like, and software. Intrinsic Evidence `007 Patent, at Fig. 1 Col. 6:22-24, and potentially the file history.

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

Case 2:06-cv-00072-DF-CMC

6.

This term should be construed under 35 U.S.C. § 112(6). Function: Sending to and receiving from a central processing unit connected to each institution information reporting in real time in correspondence with the occurrence of an event (a) the value of the instruments transported; and (b) the transport status of the instruments with respect to their having been (i) sent and (ii) received. Corresponding Structure: The specification of the '007 patent does not disclose structure sufficient to perform the recited function. Intrinsic Evidence: Col. 6:20-24; Amendment After Final Action, p. 8 (May 5, 1993).

"means within each of the preselected institutions... for sending to and receiving from a central processing unit connected to each institution information reporting in real time in correspondence with the occurrence of an event (a) the value of the instruments transported; and (b) the transport status of the instruments with respect to their having been (i) sent and (ii) received" is in means-plus-function format subject to 35 U.S.C. § 112(6)

Document 648 Filed 04/13/2007

Page 22 of 78

7.

"central processing unit"

Intrinsic Evidence: Fig. 1; Col. 1:62-66; Col.2:1-7; Col. 6:9-22; Amendment, pp. 2-3 (May 15,

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B4

No. `007 Patent, at Col. 9:1-2; 9:10; 1:6266; 6:11-16. (1:62-68); (2:22-23); (5:66); (6:11-22); (7:15-17); FIG 1; The language of Claims 1 and 4; Amendment (Dec. 8, 1992) at 9; Amendment (May 15, 1991) at 2; Amendment (May 29, 1991) at 2; Amendment (May 29, 1991) at 2; Amendment (May 14, 1992) at 8-9; Amendment (May 6, 1993) at 8, 12 Extrinsic Evidence: "processor", Academic Press Dictionary of Science and Technology (1993) ­ "a device that interprets and executes instructions." "centralized data processing", The New Webster's Comprehensive Dictionary CD-11 (1985) ­ "the handling of all data in one place." The actual time during which something takes place. Intrinsic Evidence `007 Patent, at Col. 2:40, 6:60-64; 7:14-34. Extrinsic Evidence: Merriam Webster Online Dictionary at http://www.mw.com/dictionary/realtime (defining "real time" as "the actual time during which something takes place"). Instantaneous, instantaneously. Intrinsic Evidence: (1:65-2:8); (2:32-50); (3:29-42); (4:110); (6:1-11); (6:9-24); (6:25-27); (6:52-56); (6:55-66); (7:14-31); Amendment (June 29, 1993) at 8-9 Extrinsic Evidence: "real time", The Random House Handbook of Business Terms (1988) ­ "See interactive processing"; Immediate; immediately. Intrinsic Evidence:

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

Case 2:06-cv-00072-DF-CMC
1991); Amendment, pp. 2-3 (May 29, 1991); Amendment, pp. 2-3 (Jan. 2, 1992); Request for Consideration of Amendment, pp. 8-9 (May 14, 1992); Amendment, pp. 8-9 (Dec. 8, 1992); Amendment After Final Action, p. 8, 12 (May 5, 1993).

Document 648

8.

"real time"

Filed 04/13/2007

"in real time"

Col. 1:66-2:7; Col. 2:32-50; Col. 3:2942; Col. 3:67-Col. 4:10; Col. 5:63Col.6:34; Col. 6:52-66; Col. 7:14-31; Amendment, p. 11 (Dec 8, 1992); Amendment, pp. 8-9 (June 29, 1993). Extrinsic Evidence: Webster's Encyclopedic Unabridged Dictionary, (1996); International Dictionary of Data Communications

Page 23 of 78

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B5

No. "interactive processing" ­ "also called real time. Immediate and instantaneous processing of data entered in a computer, such that the operator need not wait until a batch is collected." "real time", Random House Webster's Unabridged Dictionary (2d ed. 1998) ­ "at once, instantaneously." The actual time during which something takes place. Intrinsic Evidence `007 Patent, at Col. 2:40, 6:60-64; 7:14-34. Intrinsic Evidence: (1:65-2:8); (2:32-50); (3:29-42); (4:110); (5:63-66); (6:1-11); (6:9-24); (6:25-27); (6:52-56); (6:55-66); (7:1431); Amendment (June 29, 1993) at 8-9; Amendment (Dec 8, 1992) at 11 Extrinsic Evidence: "real time", The Random House Handbook of Business Terms (1988) ­ See "interactive processing"; "interactive processing" ­ "also called real time. Immediate and instantaneous processing of data entered in a computer, such that the operator need not wait until a batch is collected." "real time", Random House Extrinsic Evidence: Merriam Webster Online Dictionary at http://www.mw.com/dictionary/realtime (defining "real time" as "the actual time during which something takes place"). Instantaneous in correspondence with the occurrence of the physical sending and receiving of the financial instruments.

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

Case 2:06-cv-00072-DF-CMC
(1998); Random House Webster's Computer and Internet Dictionary, 3rd Ed. (1999).

9.

"real time in correspondence with the occurrence of an event"

Immediately when the instruments are sent and received. Intrinsic Evidence: Col. 1:66-2:7; Col. 2:32-50; Col. 3:2942; Col. 3:67-Col. 4:10; Col. 5:63Col.6:34; Col. 6:52-66; Col. 7:14-31; Amendment, p. 11 (Dec 8, 1992); Amendment, pp. 8-9 (June 29, 1993). Extrinsic Evidence: Webster's Encyclopedic Unabridged Dictionary, (1996); International Dictionary of Data Communications (1998); Random House Webster's Computer and Internet Dictionary, 3rd Ed. (1999).

Document 648 Filed 04/13/2007 Page 24 of 78

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B6

No. Webster's Unabridged Dictionary (2d ed. 1998) ­ "at once, instantaneously." Does not need to be construed separately.

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

10.

"value of the instruments transported"

"the value of the instruments sent and received" Intrinsic Evidence `007 Patent, at Col. 2:32-50.

The aggregate total dollar amount of the financial instruments physically sent and received. Intrinsic Evidence: Col.5:17-22; Col. 5:63-Col.6:34.

Case 2:06-cv-00072-DF-CMC

The construed phrase should be just "value of the instruments" as that appears several times in Claim 1. The construction should be "the total dollar amount of the financial instruments being delivered."

Document 648

11. Function: Receiving from the central processing unit a calculated value (a) on a real time basis and (b) on a regular periodic settlement basis, information regarding the debits and credits owing to or payable by an institution with respect to each other of the institutions with regard to instruments sent and received. Corresponding Structure: Accounting system; related software; electronic communications links. Intrinsic Evidence: 007 Patent, at Fig. 1; Col. 3:35-39, 5:25, 4:50; 6:20-24; possibly the file history.

This term should be construed under 35 U.S.C. § 112(6).

This term should be construed under 35 U.S.C. § 112(6). Function: Receiving from the central processing unit a calculated value (a) on a real time basis and (b) on a regular periodic settlement basis, information regarding the debits and credits owing to or payable by an institution with respect to each other of the institutions with regard to instruments sent and received. Corresponding Structure: Specification does not disclose structure sufficient to perform the recited function. Intrinsic Evidence: (6:20-24); Amendment After Final Office Action (May 6, 1993) at 8

This term should be construed under 35 U.S.C. § 112(6). Function: Receiving from the central processing unit a calculated value (a) on a real time basis and (b) on a regular periodic settlement basis, information regarding the debits and credits owing to or payable by an institution with respect to each other of the institutions with regard to instruments sent and received. Corresponding Structure: The specification of the '007 patent does not disclose structure sufficient to perform the recited function. Intrinsic Evidence: Col. 6:20-24; Amendment After Final Action, p. 8 (May 5, 1993).

Filed 04/13/2007

"means within each of the preselected institutions... for receiving from the central processing unit a calculated value (a) on a real time basis and (b) on a regular periodic settlement basis, information regarding the debits and credits owing to or payable by an institution with respect to each other of the institutions with regard to instruments sent and received" is in means-plusfunction format subject to 35 U.S.C. § 112(6)

Page 25 of 78

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B7

No. Extrinsic Evidence: Testimony of Terry L. Geer Testimony of David James Testimony from Dr. Perry. A calculation and transfer of amounts owed and payable between financial institutions. Intrinsic Evidence: Abstract; 2:9-16; 2:32-39, 2:47-49; 3:5-9. (1:10-19); (2:9-17); (2:31-54); (3:516); (3:29-54); (4:10-14); (4:30-40); Amendment (May 29, 1991) at 5; Amendment (Jan. 2, 1992) at 2; Amendment (Dec. 8, 1992) at 10 Extrinsic Evidence: "settlement", Dictionary of Banking Terms (Barron's 1990) ­ "the accounting process recording the respective debit and credit positions of the two parties involved in a transfer of funds." Settlement of credit and debit balances between institutions. Intrinsic Evidence: Extrinsic Evidence:

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

12.

"settlement"

A calculation and transfer of amounts owed to and payable between and among financial institutions. Intrinsic Evidence: Col. 1:10-19; Col. 2:9-17; Col. 2:32-54; Col.3:5-16; Col. 3:29-54; Col.4:10-14; Col. 4:22-40; Col.6:16-20; Fig. 1; Amendment, p. 5 (May 29, 1991); Amendment, pp. 2-4 (Jan 2, 1992); Amendment, pp. 9-10 (Dec 8, 1992). Extrinsic Evidence: Dictionary of Banking (1994).

Case 2:06-cv-00072-DF-CMC Document 648

Filed 04/13/2007

13.

"regular periodic settlement"

Settlement occurring at predetermined time intervals. Intrinsic Evidence:

(This term has been shortened from previously identified "regular periodic settlement basis")
4

DTC construes "regular periodic settlement" to be "settlement of credit and debit balances between institutions at predetermined time intervals." DTC construes "final settlement" to be "final settlement of credit and debit

A final calculation and transfer of amounts owed to and payable between direct participants in the central check clearing system occurring at pre-determined time intervals. Intrinsic Evidence:

Page 26 of 78
Col. 1:10-19; Col. 1:62-66; Col. 2:9-17; Col. 2:32-54; Col.3:5-16; Col. 3:29-54; Col.4:10-14; Col. 4:22-40; Col.6:7-20;

"final settlement" (Claim 4)

4

The terms that share common constructions are grouped together. Terms located in different claims are annotated with the claim number where the claim is found. Plaintiff opposes the grouping of claim terms from different claims and notes its objection for the Court.

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B8

No. balances between institutions." Intrinsic Evidence: `007 Patent, at Abstract Col. 2:9-16; 2:32-39; 2:47-49 Extrinsic Evidence: Dictionary of Banking (1994). (1:10-19); (1:62-68); (2:9-17); (2:3154); (3:5-16); (3:29-54); (4:10-14); (4:22-40); (4:30-40); (6:7-20); Language of Claims 1 and 4; FIG 1; Amendment (Dec. 8, 1992) at 9; Amendment (Jan. 2, 1992) at 2-4; Amendment (May 29, 1991) at 5; Amendment (Dec. 8, 1992) at 10 Extrinsic Evidence: "settlement", Dictionary of Banking Terms (Barron's 1990) ­ "the accounting process recording the respective debit and credit positions of the two parties involved in a transfer of funds." This term should be construed under 35 U.S.C. § 112(6). Function: Continuously monitoring on a real time basis, as reported by each institution by the means for sending information within each institution (a) (i) the sending and receipt status of the instruments and (ii) the value of the instruments sent and received, as reported by each of the institutions, and (b) the status in transit of the instruments with respect to their having been (i) sent and (ii) received, as reported by each of the institutions, according to the reporting of an institution's sending and receiving of This term should be construed under 35 U.S.C. § 112(6). Function: Continuously monitoring on a real time basis, as reported by each institution by the means for sending information within each institution (a) (i) the sending and receipt status of the instruments and (ii) the value of the instruments sent and received, as reported by each of the institutions, and (b) the status in transit of the instruments with respect to their having been (i) sent and (ii) received, as reported by each of the institutions, according to the reporting of an institution's

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

Case 2:06-cv-00072-DF-CMC
Fig. 1; Amendment, p. 5 (May 29, 1991); Amendment, pp. 2-4 (Jan 2, 1992); Amendment, pp. 9-10 (Dec 8, 1992).

Document 648

14.

This term should be construed under 35 U.S.C. § 112(6). Function: Continuous monitoring on a real time basis, as reported by each institution by the means for sending information within each institution: (a) (i) the sending and receipt status of the instruments and (ii) the value of the instruments sent and received, as reported by each of the institutions, and (b) the status in transit of the instruments with respect to their having been (i) sent and (ii) received, as reported by each of the institutions, according to the reporting of an institution' sending and receiving of s

Filed 04/13/2007

"means for continuous monitoring on a real time basis, as reported by each institution by the means for sending information within each institution (a) (i) the sending and receipt status of the instruments and (ii) the value of the instruments sent and received, as reported by each of the institutions, and (b) the status in transit of the instruments with respect to their having been (i) sent and (ii) received, as reported by each of the institutions, according to the reporting of an institution' s

Page 27 of 78

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B9

No. instruments. sending and receiving of instruments. Corresponding Structure: Specification does not disclose structure sufficient to perform the recited function. Intrinsic Evidence: (1:62-66); (6:11-22) Extrinsic Evidence: Testimony from Dr. Perry. Intrinsic Evidence: instruments. Corresponding Structure: A conventional programmable computer or central processing unit [1:62-65; Fig. 1 (CPU)], electronic communications links [Fig. 1], which may include conventional telephone links by modem connections and the like [6:22-24], and related software Intrinsic Evidence: `007 Patent, at Fig. 1 Col. 1:62-65 ; 2:39-45; ; 6:9-14; 6:2224; 6:61-64 ; 7:14-20 Extrinsic Evidence: Testimony of Terry L. Geer Testimony of David James

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

sending and receiving of instruments," is in means-plusfunction format subject to 35 U.S.C. § 112(6)

Corresponding Structure: The specification of the '007 patent does not disclose structure sufficient to perform the recited function.

Case 2:06-cv-00072-DF-CMC
Col. 1:62-66; Col. 2:32-50; Col. 6:9-24; Col. 6:60-66; Col. 7:14-31; Fig. 1.

Document 648

15. Or, alternatively, Information about whether the instruments have been sent or received. Intrinsic Evidence: 2:5; 2:37-39; 4:15-22; 5:60-65; 6:2527; 8:9-15 Information about transport of financial instruments sent and

"the sending and receipt status of the instruments"

Information about the sending and receipt status of the instruments.

Does not need to be construed separately.

Information about whether the instruments have been physically sent and received. Intrinsic Evidence: Col. 1:66-2:8; Col. 2:32-50; Col. 3:1820; Col. 4:15-37; Col.5:61-66; Col.6:25-27; Col. 6:60-64; Amendment, pp. 12-13 (Dec. 8, 1992).

Filed 04/13/2007

Page 28 of 78

16.

"the status in transit of the instruments"

Does not need to be construed separately.

Electronic tracking information that can be used to identify the location of the

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B10

No. received by the pre-selected financial institutions. instruments in real time. Intrinsic Evidence: Intrinsic Evidence: 2:37-39; 4:15-22; 5:60-65; 6:25-27; 8:9-15 This term should be construed under 35 U.S.C. § 112(6). Function: Calculating debits and credits among the participating members. Corresponding Structure: Software on a conventional programmable computer or central processing unit (CPU). Intrinsic Evidence: `007 Patent, Fig. 1 Col. 1:62-65; 2:39-49; 6:20-22; 6:1116 Extrinsic Evidence: Testimony of Terry L. Geer Testimony of David James This term should be construed under 35 U.S.C. § 112(6).

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

Col. 1:66-2:8; Col. 2:32-50; Col. 3:1820; Col. 4:15-37; Col.5:61-66; Col.6:25-27; Col. 6:60-64; Amendment, pp. 12-13 (Dec. 8, 1992). This term should be construed under 35 U.S.C. § 112(6).

Case 2:06-cv-00072-DF-CMC

17.

Document 648

"means for calculating debits and credits, based on the value of the instruments sent and received by the institutions, as monitored on a real time basis from information reported by the institutions, of (a) the amount owing from or payable to each one of the pre-selected institutions with respect to each of the other institutions and (b) an aggregate amount owing from or payable to each one of the pre-selected institutions with respect to all of the other institutions" is in means-plusfunction format subject to 35 U.S.C. § 112(6) Function: Calculating debits and credits, based on the value of the instruments sent and received by the institutions, as monitored on a real time basis from information reported by the institutions, of (a) the amount owing from or payable to each one of the pre-selected institutions with respect to each of the other institutions and (b) an aggregate amount owing from or payable to each one of the pre-selected institutions with respect to all of the other institutions. Corresponding Structure: Specification does not disclose structure sufficient to perform the recited function. Intrinsic Evidence: (1:62-66); (6:11-22); (6:20-22); FIG 1 Extrinsic Evidence: Testimony from Dr. Perry.

Function: Calculating debits and credits, based on the value of the instruments sent and received by the institutions, as monitored on a real time basis from information reported by the institutions, of (a) the amount owing from or payable to each one of the pre-selected institutions with respect to each of the other institutions and (b) an aggregate amount owing from or payable to each one of the preselected institutions with respect to all of the other institutions. Corresponding Structure: The specification of the '007 patent does not disclose structure sufficient to perform the recited function. Intrinsic Evidence: Col. 1:62-66; Col. 2:9-12; Col. 2:32-50; Col. 6:11-22; Fig. 1.

Filed 04/13/2007 Page 29 of 78

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B11

No.

'007 Claim Terms for Construction This term should be construed under 35 U.S.C. § 112(6). Function: Sending to each institution the information monitored with respect to the instruments sent to an institution and the value of such instruments. Corresponding Structure: Electronic communications links, which may include conventional telephone links by modem connections and the like. Corresponding Structure: Specification does not disclose structure sufficient to perform the recited function. Intrinsic Evidence: (6:20-22); FIG 1 Extrinsic Evidence: Testimony from Dr. Perry. This term should be construed under 35 U.S.C. § 112(6). Function: Cycling interrelated with the central processing unit (a) for controlling the physical transport of the financial instruments among the institutions and (b) for controlling the means for calculating such that a final calculation . . . does not occur until predetermined local settlements . . . are completed. Corresponding Structure: Rules and This term should be construed under 35 U.S.C. § 112(6). Intrinsic Evidence: Function: Sending to each institution the information monitored with respect to instruments sent to an institution and the value of such instruments. This term should be construed under 35 U.S.C. § 112(6).

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

18.

This term should be construed under 35 U.S.C. § 112(6). Function: Sending to each institution the information monitored with respect to instruments sent to an institution and the value of such instruments. Corresponding Structure: The specification of the '007 patent does not disclose structure sufficient to perform the recited function. Intrinsic Evidence: Col. 6:20-24; FIG 1

Case 2:06-cv-00072-DF-CMC

"means for sending to each institution the information monitored with respect to instruments sent to an institution and the value of such instruments" is in means-plusfunction format subject to 35 U.S.C. § 112(6)

Document 648

`007 Patent, at Fig. 1; Col. 6:22-24; potentially the file history.

Filed 04/13/2007

19.

This term should be construed under 35 U.S.C. § 112(6).

Page 30 of 78

"a cycling means interrelated with the central processing unit (a) for controlling the physical transport of the financial instruments among the institutions and (b) for controlling the means for calculating such that a final calculation of the debits and credits owing from or payable to, with respect to each of the institutions with regard to each other of the institutions, comprising the occurrence of the regular periodic settlement

Functions: 1. Controlling on a regular and periodic basis the physical transport of the financial instruments among the institutions; and 2. Controlling on a regular and periodic basis the means for calculating such that a final calculation of the debits and credits owing from or payable to, with respect to each of the

Functions: Controlling the physical transport of the financial instruments among the institutions and controlling the means for calculating such that a final calculation of the debits and credits owing from or payable to, with respect to each of the institutions with regard to each other of the institutions, comprising the occurrence of the regular periodic settlement among the institutions, does not occur until pre-

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B12

No. parameters regarding time scheduling where such rules and schedules are interrelated with the central processing unit (CPU). Intrinsic Evidence: `007 Patent, at Col. 3:10-25; 6:60-64;10:7-16; 2:55-66; 3:9-16; 3:39-42; 5:35-39; 6:9-23 Extrinsic Evidence: Testimony of Terry L. Geer Testimony of David James Corresponding Structure: Specification does not disclose structure sufficient to perform the recited function. Extrinsic Evidence: Testimony from Dr. Perry. "Final Calculation"--No construction is necessary. "Debits and credits"--Credits are the amounts owed by an institution; debits are the amounts payable to an institution.

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction determined local settlements by the institutions in the pre-selected sites with institutions that are not among the number of pre-selected financial institutions, are completed. Corresponding Structure: The specification of the '007 patent does not disclose structure sufficient to perform the recited functions. Intrinsic Evidence: Col. 2:13-16; Col. 2:55-61; Col. 4:7-14; FIG 1; Amendment, pp. 11, 13-14 (Dec. 8, 1992).

Case 2:06-cv-00072-DF-CMC

among the institutions, does not occur until pre-determined local settlements by the institutions in the pre-selected sites with institutions that are not among the number of pre-selected financial institutions, are completed" is in means-plusfunction format subject to 35 U.S.C. § 112(6)

institutions with regard to each other of the institutions, comprising the occurrence of the regular periodic settlement among the institutions, does not occur until pre-determined local settlements by the institutions in the pre-selected sites with institutions that are not among the number of pre-selected financial institutions, are completed.

Document 648

20.

Settlement between the member institutions occurs, if at all, at regular intervals. The settlement between members does not occur, however, until each member settles with the non-members of the clearinghouse in the member's locality. Settlement among the direct participants in the central check clearing system occurs after regular, prescheduled settlements in each geographical region between the direct participants in that region and institutions in that region that do not directly participate in the central check clearing system. Intrinsic Evidence: (3:5-16); (3:39-47); (4:50-58); (5:2645); (6:16-20); (6:25-51); FIG 1; Language of Claims 1 and 4; Amendment (Dec. 8, 1992) at 9; Intrinsic Evidence:

Filed 04/13/2007

"a final calculation of the debits and credits . . ., comprising the occurrence of the regular periodic settlement among the institutions, does not occur until pre-determined local settlements by the institutions in the preselected sites with institutions that are not among the number of pre-selected financial institutions, are completed" "Occurrence of the regular periodic settlement among the institutions"--No construction is necessary. "Predetermined local settlements by the institutions in the preselected sites with institutions that are not among the number of preselected financial

Page 31 of 78
Col. 3:5-16; Col. 3:39-47; Col. 4:5058; Col. 5:26-45; Col. 6:16-20; Col. 6:25-59; Fig. 1; Amendment, p. 3 (May 29, 1991); Amendment, pp. 3-4 (Jan 2, 1992); Amendment, p. 9 (Dec 8, 1992); Amendment After Final Action,

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B13

No. institutions"--settlements between a user and non-user of the clearinghouse that occurs at a regular interval. Amendment (May 29, 1991) at 3 Amendment (Jan. 2, 1992) at 3-4 Amendment (May 5, 1993) at 10-11 pp. 10-11 (May 5, 1993). Intrinsic Evidence: `007 Patent, at 3:29-54

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

Claim 2 This term should be construed under 35 U.S.C. § 112(6). This term should be construed under 35 U.S.C. § 112(6). Function: Sorting instruments by site locality of each other of the preselected institutions and in which the instruments by site are sent by site sort category to institutions at sites within the site sort categories. Corresponding Structure: A sorter, air and ground transportation. Intrinsic Evidence: (1:65-68); (4:41-49); (7:1-13) Functions: 1) Sorting by the site locality of each other of the pre-selected institutions, 2) sending the instruments sorted by site category to institutions at sites within the site sort categories Corresponding Structure: 1) For the first function, sorters [7:3] or sort machines [4:46-7] 2) For the second function, a preselected institution's physical facility (i.e., bank, member bank, receiving bank, Participating Bank B), and its relationship with air or ground transportation. [Fig. 1 (solid directional lines); 1:66-2:1; 4:15-22] Intrinsic Evidence: `007 Patent, at 4:46-47; Fig. 1 (solid directional lines); This term should be construed under 35 U.S.C. § 112(6). Function: Sorting instruments by site locality of each other of the preselected institutions and in which the instruments sorted by site are sent by site sort category to institutions at sites within the site sort categories. Corresponding Structure: Sorters and air and ground transportation. Intrinsic Evidence: Col. 1:65-68; Col. 4:41-49; Col. 5:1725; Col. 7:1-13.

Case 2:06-cv-00072-DF-CMC

21.

"means at an institution by which instruments are sorted by the site locality of each other of the pre-selected institutions and in which the instruments sorted by site are sent by site sort category to institutions at sites within the site sort categories" is in meansplus-function format subject to 35 U.S.C. § 112(6)

Document 648 Filed 04/13/2007 Page 32 of 78

EXHIBIT B TO JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT IN COMPLIANCE WITH PATENT RULE 4-3 ­ Page B14

No. Col. 1:66-2:1; 4:15-20; 5:61-63; 6:25 ; 4:41-48

'007 Claim Terms for Construction

Plaintiff Construction

" Defendant Group 1" Construction

" Defendant Group 2" Construction

Claim 4 Preamble is not limiting and the language in preamble does not need to be construed. See, e.g., Catalina Mktg. Int'l Inc. v. Coolsavings.com Inc., 289 F.3d 801 (Fed. Cir. 2002); DeGeorge v. Bernier, 768 F.2d 1318 (Fed. Cir. 1985). This term should be construed under 35 U.S.C. § 112(6). This term should be construed under 35 U.S.C. § 112(6). Preamble contains limiting terms, including term(s) requiring construction(s).

Case 2:06-cv-00072-DF-CMC

22.

Preamble should be construed as limiting

23.

This term should be construed under 35 U.S.C. § 112(6). (1) Function: Sending and receiving financial instruments to be cleared. Corresponding Structure: Air and ground transportation. (2) Function: Sending and receiving in real time information reporting the value and transit status of the financial instruments to be cleared, to a programmed central processing unit. Corresponding Structure: The specification of the '007 patent does not disclose structure sufficient to perform the recited functions. (3) Function: Addressing the central processing unit by which a participant may determine in real time the information received by the processing unit with respect to that participant' s relative credit and debit obligations with respect to other institutions arising

Document 648

(1) Function: Sending and receiving financial instruments to be cleared. Corresponding Structure: Air or ground transportation and a preselected institution's physical facility (i.e., bank, member bank, Participating Bank A/B, sending/receiving bank). (2) Function: Sending and receiving in real time information reporting the value and transit status of the financial instruments to be cleared to a programmed central processing unit. Corresponding Structure: Electronic communications links, which may include conventional telephone links by modem connections and the like. (3) Function: Addressing the central processing unit by which a participant may determine in real time the information received by the

Filed 04/13/2007

"means at each of the participants (1) for sending and receiving financial instruments to be cleared and (2) for sending and receiving in real time information reporting the value and transit status of the financial instruments to be cleared, to a programmed central processing unit, and (3) for addressing the central processing unit by which a participant may determine in real time the information received by the processing unit with respect to that participant' s relative credit and debit obligations with respect to other institutions arising from the instruments that are reported to be sent and received" is in means-plus-function format subject to 35 U.S.C. § 112(6)

Functions: 1) Sending and rece