Datatreasury Corporation v. Wells Fargo & Company et al

Filing 763

RESPONSE in Opposition re #740 MOTION for Summary Judgment for Invalidity Based on Indefiniteness of '868 Patent filed by Datatreasury Corporation. (Attachments: #1 Exhibit A#2 Exhibit B#3 Exhibit C#4 Affidavit Declaration of Niclole Reed#5 Text of Proposed Order Order)(Reed, Nicole)

Datatreasury Corporation v. Wells Fargo & Company et al

Doc. 763 Att. 3

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

Document 763

Filed 08/09/2007

Page 1 of 11

EXHIBIT "C"

Dockets.Justia.com

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

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No.

'868 Claim Terms for Construction Claim 1

DTC Proposed Construction

Intrinsic and Extrinsic Evidence

1.

"program means for separating and bundling and for translating said records" 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: Separating and bundling and for translating said records. Corresponding Structure: Data processing and signal generation procedures along with file format translation protocols.

Intrinsic Evidence: `868 Patent at Col. 3:5-10 ("...separating and translating the first data file into one or more data files and data file formats corresponding to each of the designated receiving institutions, and transmitting the separated and translated data files to each of the receiving institutions.") 6:6-10 ("A processor, within translator 1, employing data processing and signal generation procedures, translates the first data file format received from originating institution O1 into a second data file format selected by the institution that is the intended recipient of the financial instrument information R1.") 6:27 -7:5 ("In the preferred embodiment, the receiving institution determines the data file format in which it desires to receive the financial instrument information. (As explained above, a specific data file format has associated with it a particular arrangement of information within individual data fields dependent upon the format utilized (ACH, ECP, etc.)). The information contained in the data file is authenticated to ensure that the data arrangement corresponds to the parameters associated with the format utilized. In the simplified example of FIG. 1, originating institution 01, a bank of deposit of a financial instrument, transfers a data file containing information about that instrument in the ECP data file format to translator 1 through communication link 11 and specifies receiving institution RI as the intended recipient thereof. The receiving institution's selected data file format is ACH. The translator receives the first data file format (ECP),

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DTC Proposed Construction

Intrinsic and Extrinsic Evidence recognizes that R1 is the receiving institution and that R1 has selected a second data file format (ACH) in which it is capable of receiving information. Using a logical sequence of data interpretation and signal generation steps, translator 1 translates the ECP information from 01 into the ACH format to be received by R1 by way of the communication link 12 between the translator and R1. The paper check is presented to R1 by direct physical transport or clearinghouse mechanism 8 from O1. The processing of the funds representing the physical instrument may be effected by way of settlement mechanism 16, to which the translated data is also sent, as shown by the dashed lines 15 in FIG. 1. The funds represented by the physical instrument may also be exchanged between originating institution O1 and R1 directly as illustrated by path 14. In a multiple institution application a single data file transferred by an originating institution to the translator in a first file format may contain comingled financial instrument information intended for multiple receiving institutions. The single data file includes separate and unique header records for instruments associated with each receiving institution. Upon receipt of this data file, the system determines which financial instrument information is intended for a receiving institution and translates that information to a different format selected by that particular receiving institution. In this manner, an originating institution can transfer one data file containing information intended for a plurality of receiving institutions. The system translates and compiles the information consistent with the second data file format selected by each receiving institution.") 8:20-32 ("The system's master processor 21 identifies and segregates the information designated for each of

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Intrinsic and Extrinsic Evidence the receiving institutions from each file received. Based on the data file format selected by each receiving institution, master processor 21, according to a file format translation protocol, translates the data file received from each of the originating institutions O1, O2,. . . ON, into a second data file format selected by each of the receiving institutions R1, R2, . . . RN. The information contained in the data file which is intended for each receiving institution is stored in memory M23, M24 . . . MN uniquely allocated to each receiving institution R1, R2 . . . RN respectively.") 8:59 ­ 9:8 ("By way of example, originating institution O2 determines a first file format, such as ACH, in which it will transfer a single data file containing co-mingled financial instrument information to the system with the intended recipients as receiving institutions R1 and R2 which have selected to receive data files, for example, in the ECL and ECP formats respectively. The system segregates the received ACH information designated for each receiving institution; translates the segment of the ACH data file into the ECL format for receiving institution R1; translates the ACH segment of the data file into the ECP format for receiving institution R2; and stores each translated data file in separate memory categories M23 and M24 uniquely accessible by receiving institutions R1 and R2 respectively. The receiving institutions can retrieve information contained in the data files through communication links 12a and 12b upon demand, based on instructions by the originating institution or within a prearranged time period.") 10:8-26 ("The trailer file record includes total cash letter count, total detail record count, dollar hash totals and filler fields.

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Intrinsic and Extrinsic Evidence

Thus, the system described herein increases the number of institutions which can exchange financial instrument information and the speed of the exchange, while reducing the expense thereof, by providing a common central facility which translates information contained in a first data file format transferred by an originating institution into a second data file format selected by the institution that is to receive the information. Previously, institutions which desired to exchange financial instrument information among and between themselves were required to enter into multiple bilateral agreements between each participating institution and expend substantial development costs, including both software and hardware, to support creation of data files in multiple standard formats. Financial institutions which formerly could not exchange financial information which represented physical instruments and/or electronic funds transfers because of dissimilar data file format processing, are now capable of accessing a system which translates their present data file format into one or more standard formats.") 10:59 ­ 11:2 ("a processor for separating said co-mingled records of financial instrument information into separate bundles corresponding to each of the one or more predetermined institution designated by the originating institution to receive said records and for translating the records in each bundle of said financial instrument information records from said first data file format into a data file format selected by the predetermined institution designated to receive the information, said processor including program means for separating and bundling and for translating such records;")

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'868 Claim Terms for Construction

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Intrinsic and Extrinsic Evidence

Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons 2. "means for transmitting a bundle of said stored financial instrument information from the addressable storage media to the institution designated to receive the information upon the receipt of an instruction" 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: Transmitting a bundle of said stored financial instrument information from the addressable storage media. Corresponding Structure: Communication link 12.

Intrinsic Evidence `868 Patent, at Fig. 1; Fig. 2; Col. 1:43-62 ("Financial institutions which exchange financial instrument information electronically must communicate data in the same data file formats. Several distinct formats are currently used to process financial instrument transactions, such as payment of checks, electronically. An originating institution in receipt of a check deposited by a customer transmits data derived from Magnetic Ink Character Recognition (MICR) line codes from the check, including the check amount, account number, serial number and routing transit number, and/or other information, in one of several standardized formats. If the format required by the receiving (payor) institution is different, dedicated software is required to translate the originator's file into a format readable by the receiving institution. If this is the case, substantial monetary investment is required to provide both hardware and software capabilities at the originating and/or receiving institution to allow the exchange of electronic check data if different data formats are involved with respect to the receiving or originating institutions. Usually, institutions using different formats do not communicate on a bilateral basis.") 4:65 ­ 5:1 ("Many financial institutions are now capable of transmitting and receiving data files, however they are not usually capable of exchanging data files in a plurality of different file formats

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Intrinsic and Extrinsic Evidence associated with other institutions.") 5:27-28 ("The link facilitates the transfer of data files containing financial instrument information.") 8:4-11 ("The present system enables the originating institutions O1, O2 . . . ON to transfer a data file in a first file format (ACH, ECL, etc.) containing financial instrument information to the system via communication links referenced generally at 11a, 11b, 11n. Security procedures are provided which limit only authorized originating and receiving institutions to effect one or more of the reception, transmission, translation and storage of the data files within the system.") 8:35-41 ("Communication links, referenced generally at 12a, 12b, 12n, enable each receiving institution to retrieve the information contained in the data files from memory M23, M24....MN upon demand, based on instructions by the originating institution(s) or within a prearranged time period.The present system also includes communication link 30 for transmitting all or a portion of the information contained in the data file to one or more of a plurality of settlement mechanisms referenced generally at 31.") 8:48-52 ("The communication links 11a, 11b, 11n and 12a, 12b, 12n are typically bi-directional to allow return transmissions such as confirmation of receipt and communication in general to and from the institutions and the system.") 9:5-9 ("The receiving institutions can retrieve information contained in the data files through communication links 12a and 12b upon demand, based on instructions by the originating institution or within a prearranged time period.") Extrinsic Evidence

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Testimony from persons of ordinary skill in the art and/or individuals who manage such persons Claim 24 3. "means for transmitting each portion of said separated financial instrument information stored in the memory storage device to, and in the format selected by, the receiving institution associated therewith" 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: Transmitting each portion of said separated financial instrument information stored in the memory storage device to, and in the format selected by, the receiving institution associated therewith. Corresponding Structure: Communication link 12. Intrinsic Evidence: `868 Patent, at Fig. 1; Fig. 2; Col. 5:27-28 ("The link facilitates the transfer of data files containing financial instrument information.") 8:7 ("...to the system via communication links...") 8:35-41 ("Communication links, referenced generally at 12a, 12b, 12n, enable each receiving institution to retrieve the information contained in the data files from memory M23, M24....MN upon demand, based on instructions by the originating institution(s) or within a prearranged time period.The present system also includes communication link 30 for transmitting all or a portion of the information contained in the data file to one or more of a plurality of settlement mechanisms referenced generally at 31.") 8: 48-52 ("The communication links 11a, 11b, 11n, and 12a, 12b, 12n are typically bi-directional to allow return transmissions such as confirmation of receipt and communication in general to and from the institutions and the system. 9:5-9 ("The receiving institutions can retrieve information contained in the data files through communication links 12a and 12b upon demand, based on instructions by the originating institutions or within a prearranged time period.") Extrinsic Evidence

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Intrinsic and Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons

Claim 3 4. "a security mechanism for preventing the unauthorized one or more of the reception, transmission, translation and storage of financial instrument information" is in means-plus-function format subject to 35 U.S.C. § 112(6) Plaintiff contends that this phrase is not governed by 35 USC § 112(6). Software running on a processor which limits only authorized originating and receiving institutions to receive, transmit, translate, and/or store financial instrument information. Intrinsic Evidence `868 Patent, at Col. 6:11-26 ("Security procedures are utilized to limit only authorized originating and receiving institutions to effect one or more of the reception, transmission, translation and storage of the financial instrument information contained in the data file. Procedures are also used to authenticate information contained in the first data file format with respect to predetermined data format parameters. This includes validating that the data file submitted by the originating institution is in a format which the system recognizes; that the data fields with respect to items in the file are accurate according to format parameters; and that the minimum amount of information required to successfully translate the file is present whether the information is to be transmitted to a receiving institution or to one or more settlement mechanisms. (Some formats have optional fields that are not "necessary" for the purposes herein.)") 8:8-23 ("Security procedures are provided which limit only authorized originating and receiving institutions to effect one or more of the reception, transmission, translation and storage of the data files within the system. This ensures that the originating institutions O1, O2 . . . ON and the receiving institutions R1, R2 . . . RN are authorized to access the system, as well as preventing misappropriation of financial information contained in the data files by non-authorized parties. A further data validation protocol is provided to verify that the minimum amount of information to facilitate translation and transfer between the originating and receiving institutions, or from the originating and receiving

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Intrinsic and Extrinsic Evidence institutions to one or more settlement mechanisms, is present in the data file. The system's master processor 21 identifies and segregates the information designated for each of the receiving institutions from each file received.") Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons

Claim 48 5. "security procedures for preventing unauthorized reception, transmission, translation and storage of any financial instrument information within the system" is in means-plusfunction format subject to 35 U.S.C. § 112(6). Software running on a processor which limits only authorized originating and receiving institutions to receive, transmit, translate, and/or store financial instrument information. Intrinsic Evidence `868 Patent at Col. 6:11-26 ("Security procedures are utilized to limit only authorized originating and receiving institutions to effect one or more of the reception, transmission, translation and storage of the financial instrument information contained in the data file. Procedures are also used to authenticate information contained in the first data file format with respect to predetermined data format parameters. This includes validating that the data file submitted by the originating institution is in a format which the system recognizes; that the data fields with respect to items in the file are accurate according to format parameters; and that the minimum amount of information required to successfully translate the file is present whether the information is to be transmitted to a receiving institution or to one or more settlement mechanisms. (Some formats have optional fields that are not "necessary" for the purposes herein.)") 8:8-23 ("Security procedures are provided which limit only authorized originating and receiving institutions to effect one or more of the reception, transmission, translation and storage of the data files within the system. This ensures that the originating institutions

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Intrinsic and Extrinsic Evidence O1, O2 . . . ON and the receiving institutions R1, R2 . . . RN are authorized to access the system, as well as preventing misappropriation of financial information contained in the data files by non-authorized parties. A further data validation protocol is provided to verify that the minimum amount of information to facilitate translation and transfer between the originating and receiving institutions, or from the originating and receiving institutions to one or more settlement mechanisms, is present in the data file. The system's master processor 21 identifies and segregates the information designated for each of the receiving institutions from each file received.") Extrinsic Evidence Testimony from persons of ordinary skill in the art and/or individuals who manage such persons

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