Datatreasury Corporation v. Wells Fargo & Company et al

Filing 731

RESPONSE in Opposition re #710 MOTION for Summary Judgment for Claim Invalidity Based on Indefiniteness of U.S. Patent No. 5,265,007 filed by Datatreasury Corporation. (Attachments: #1 Exhibit A#2 Exhibit B#3 Exhibit C#4 Exhibit D#5 Exhibit E#6 Exhibit Declaration of Nicole Reed)(Reed, Nicole)

Datatreasury Corporation v. Wells Fargo & Company et al

Doc. 731 Att. 4

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

Document 731

Filed 06/25/2007

Page 1 of 9

EXHIBIT "D"

Dockets.Justia.com

EXHIBIT "D"

Claim 1 `007 No. ' 007 Claim Terms for Construction DTC Proposed Construction Intrinsic and Extrinsic Evidence

1.

"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)

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: Electronic communications links, which may include conventional telephone links by modem connections and the like, and software. 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

Intrinsic Evidence `007 Patent, at Fig. 1 Col. 6:22-24 ("Communications to and from the switch may occur through conventional telephone links by modem connections and the like.") Prosecution History, Amendment after Final Office Action, p. 8 Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons

2.

"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

Intrinsic Evidence `007 Patent, at Col. 3:35-39 ("By means of the central accounting system, each member will be able electronically to inquire into the accounting system throughout the day, on a real time basis, to manage and reconcile funds in anticipation of settlement.") 5:25 ("At a predetermined time,")

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)

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.

4:50; ("Each participant in the proposed association...") 6:20-22; ("Software adapted to the system described herein may be devised by persons of skill in the financial programming computer arts.") 1 `007 Patent, at Fig. 1 Col. 6:22-24 ("Communications to and from the switch may occur through conventional telephone links by modem connections and the like.") Prosecution History, Amendment after Final Office Action, p. 8 Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons

3.

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

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 instruments. Corresponding Structure:

Intrinsic Evidence `007 Patent, at Fig. 1 Col. 1:62-65 ("In its function, the association would provide a central accounting means such as a conventional programmable computer or other central processing unit for the computation of the settlements among participating banks. ") 2:39-45 ("central control means monitors on a real time basis the actual sending and receipt of, and the dollar amount of items being cleared, as reported by the participants, and records the sending and receipt of the aggregate amount of the actual financial instruments transported, as reported by the participants, . . . ") 6:9-14 (A "central control means" or "switch" that may be "an appropriately programmed digital computer having means for

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

receipt and transmission of data.") 6:22-24; ("Communications to and from the switch may occur through conventional telephone links by modem connections and the like.") 6:61-64 (""real time" reports of shipment and receipt are made to and accessible from the control means") 7:14-20 ("The control means monitors information about shipment and receipts from each participant . . . Each participant can address the system to determine, at any point in time, anticipated (shipped and in transit) and received checks and the accompanying "cash letter" . . .") Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons

4.

"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)

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 ("In its function, the association would provide a central accounting means such as a conventional programmable computer or other central processing unit for the computation of the settlements among participating banks. ") 2:39-49 ("central control means monitors on a real time basis the actual sending and receipt of, and the dollar amount of items being cleared, as reported by the participants, and records the sending and receipt of the aggregate amount of the actual financial instruments transported, as reported by the participants, . . . and thereafter calculates the net settlements among the participants and initiates the corresponding debits and credits necessary to effect settlement among members . .

.") 6:20-22 ("Software adapted to the system described herein may be devised by persons of skill in the financial programming computer arts.") 6:11-16 ("The switch may be an appropriately programmed digital computer having means for receipt and transmission of data as well as further arithmetic and algorithmic means, to reconcile or calculate debits and credits anticipated in an essentially `real time' basis among the participating members.") Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons 5. "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 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-plus-function format subject to 35 U.S.C. § 112(6) 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 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 ("settlements accomplished by the national association described herein would preferably occur after the daily scheduled local clearinghouse settlements are accomplished.") 6:60-64; ("A number of significant advantages are achieved through the system control means by which shipment and receipt schedules are fixed and "real time" reports of shipment and receipt are made to and accessible from the control means.") 10:7-16; ("C. a time control for determining the time of physical transport of financial instruments between and among the participants according to a predetermined time cycle, and for determining the occurrence of a final settlement by the clearinghouse participants at a pre-determined time until after a time that certain pre-determined local settlements in the localities, by the participants in the localities, are completed. ")

2:55-66 ("In the system of the invention, physical transport of financial instruments between and among the members is controlled by a predetermined time schedule, and the national settlement of the individual members of the association is achieved at a time not later than local settlements by members of the national association are completed. ") 3:9-16 ("In the United States Federal Reserve System, settlements accomplished by the national association described herein would preferably occur after the daily scheduled local clearinghouse settlements are accomplished. Strict adherence to a time schedule prescribed by the association for providing debit and credit advice and the physical exchange of items is required. ") 3:39-42 ("In accordance with a strictly defined time schedule, all activity must be confirmed by the receiving bank prior to final settlement.") 5:35-39 ("Thus, if membership in a check clearing association controlled by the means of the invention included 40 participants, each participant would usually send out in accordance with a fixed and predetermined processing time schedule, checks and accompanying cash letters to up to potentially 39 other participants.") 6:9-23 ("The "switch" is the central control means in which information about the Los Angeles transmittal is immediately entered. The switch may be an appropriately programmed digital computer having means for receipt and transmission of data as well as further arithmetic or algorithmic means, to reconcile or calculate debits and credits anticipated in an essentially "real time" basis among the participating members. Net settlement occurs at a single predetermined time each day when final debits and credits among the members are calculated and effected through Federal Reserve accounts. Software adapted to the system described herein may be devised by persons of skill in the financial programming computer arts.")

Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons Claim 4 `007 6. "means for calculating debits and credits owing from or payable (1) to one member to another member and (2) from or to one member to all other members, based upon the value of instruments reported by a participant as having been sent and received" is in means-plus-function format subject to 35 U.S.C. § 112(6) 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, at Fig. 1 Col. 6:20-22 ("Software adapted to the system described herein may be devised by persons of skill in the financial programming computer arts.") 2:39-49 ("central control means monitors on a real time basis the actual sending and receipt of, and the dollar amount of items being cleared, as reported by the participants, and records the sending and receipt of the aggregate amount of the actual financial instruments transported, as reported by the participants, . . . and thereafter calculates the net settlements among the participants and initiates the corresponding debits and credits necessary to effect settlement among members . . .") 1:62-65 ("The clearinghouse is independent of conventional geographical and institutional boundaries such as Federal Reserve districts, as well as time zones.") 6:11-16 ("The switch may be an appropriately programmed digital computer having means for receipt and transmission of data as well as further arithmetic and algorithmic means, to reconcile or calculate debits and credits anticipated in an essentially `real time' basis among the participating members.")

Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons 7. "means for receiving and recording a participant's reports of the value and transit status of the instruments to be cleared as having been sent and received with respect to all participants in the system" is in means-plus-function format subject to 35 U.S.C. § 112(6) This term should be construed under 35 U.S.C. § 112(6). Function: receiving and recording a participant's reports of the value and transit status of the instruments to be cleared as having been sent and received with respect to all participants in the system Corresponding Structure: Software associated with an accounting system running on the central processing unit (CPU).

Intrinsic Evidence `007 Patent, at Col. 6:20-24 ("Software adapted to the system described herein may be devised by persons of skill in the financial programming computer arts.") 1:62-66 ("the association would provide a conventional programmable computer or other central processing unit") 2:2-4 ("received electronically by the association's accounting means") 2:11-12 ("prepared by the central accounting means of the association") 3:31 ("the association's accounting system") Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons

8.

"means for monitoring on a real time as reported basis (1) the actual sending from and receipt by a participant of the value of instruments being cleared as reported by the participants, and (2) the sending from and receipt by a participant of the actual instruments being cleared, said means for monitoring being operatively interconnected to the

This term should be construed under 35 U.S.C. § 112(6). Function: Monitoring on a real time as reported basis. Corresponding Structure: Software associated with a conventional programmable computer or central processing unit [Fig. 1 (CPU)] operably

Intrinsic Evidence `007 Patent, at Col. 6:20-22 ("Software adapted to the system described herein may be devised by persons of skill in the financial programming computer arts.") 1:62-65; ("The clearinghouse is independent of conventional geographical and institutional boundaries such as Federal Reserve districts, as well as time zones.")

means for calculating whereby debits and credits owing from one member to another may be determined and monitored on a continuous basis in real time as reports of the value and transit status of the instruments to be cleared are reported by the participants and received by the processing unit" is in means-plusfunction format subject to 35 U.S.C. § 112(6)

interconnected with software associated with the accounting system on the CPU.

Fig. 1 6:9-14 (The specification discloses a "central control means" or "switch" that may be "an appropriately programmed digital computer having means for receipt and transmission of data.") 2:39-45 (The "central control means monitors on a real time basis the actual sending and receipt of, and the dollar amount of items being cleared, as reported by the participants, and records the sending and receipt of the aggregate amount of the actual financial instruments transported, as reported by the participants, . . . ") 6:61-64 ("`real time' reports of shipment and receipt are made to and accessible from the control means"); 7:14-20 ("The control means monitors information about shipment and receipts from each participant . . . Each participant can address the system to determine, at any point in time, anticipated (shipped and in transit) and received checks and the accompanying "cash letter" . . .") Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons