Promontory Interfinancial Network, LLC v. Anova Financial Corporation
Filing
66
OPINION AND ORDER. (Signed by District Judge Mark S. Davis on 1/24/2014). (bgra)
UNITED
STATES
EASTERN
DISTRICT
DISTRICT
Norfolk
PROMONTORY
NETWORK,
OF
FILED
COURT
VIRGINIA
Division
JAN 24 2014
CLERK, US DISTRICT COURT
INTERFINANCIAL
NORFOLK, VA
LLC,
Plaintiff,
Civil No.
v.
2:13cv243
ANOVA FINANCIAL CORPORATION,
Defendant.
OPINION AND ORDER
This
matter
is
before
the
Court
following
a
Markman
hearing, conducted for the purpose of construing eight disputed
claim
terms.
submitted
Markman
by
After
the
hearing,
careful
parties
the
and
Court
consideration
the
arguments
issues
this
of
the
briefs
advanced
Opinion
at
and
the
Order
detailing the claim constructions in this case.
I.
At
FACTUAL AND PROCEDURAL
issue in this
plaintiff
Promontory
BACKGROUND
case are nine related patents
Interfinancial
Network,
held by
LLC,
("Promontory"),1 and four related patents held by defendant Anova
• Promontory's patents are as follows: 7,596,522; 7,603,307; 7,899,745;
7,899,746; 7,899,747; 7,921,057; 8,036,986; 8,051,004; 8,051,005.
Financial
parties'
Corporation
patents
are
("Anova").2
directed
Generally
toward
a
speaking,
financial
system/method that facilitates the depositing of
through
claim
matching
methods
relationship
depositors
and
systems
with
a
with
that
single
banks.
bank
but
transaction
funds in banks
Promontory's
preserve
a
patents
depositor's
obtain
both
the
direct
benefit
of
deposit insurance from the Federal Deposit Insurance Corporation
("FDIC")
in excess of the amount that could otherwise be offered
by such single bank.
that
provide
liquid
Anova's patents claim methods and systems
deposit
opportunities
for
depositors
that
are more desirable to banks because they are packaged in a way
that increases the stability of the funds.
In the instant case,
party
is
patents.
at
violating
the
each party has asserted that the other
first
valid
The parties have identified numerous
least one party contends
However,
the
thirteen
terms
claim
party's
terms.
parties
have
and
enforceable
claim terms
that
require construction by the Court.
stipulated
and
reduced
the
This
Court's
Markman
to
constructions
outstanding
dispute
construction
of
for
to
eight
all
terms
identified as requiring construction is set forth below.
2 Anova's
8,301,560.
patents
are as follows:
Patents
for
7,895,099;
both parties
their final 3 numbers (e.g.
'099).
will
be
7,904,372;
8,090,651;
abbreviated herein
by
II.
In
Markman
CLAIM CONSTRUCTION PROCEDURE
v.
Westview
Instruments,
the
Supreme Court succinctly explained the basis for,
of,
United
States
and importance
claim construction:
the
The Constitution empowers Congress "[t]o promote
Progress of Science and useful Arts, by securing
for
limited
Times
to
Authors
and
Inventors
the
exclusive Right
to
their respective Writings
and
Discoveries."
Art. I, § 8, cl. 8.
Congress first
exercised this authority in 1790, when it provided for
the issuance of "letters patent," Act of Apr.
10,
1790, ch.
7,
§ 1, 1 Stat.
109,
which,
like their
modern counterparts, granted inventors "the right to
exclude others from making, using, offering for sale,
selling,
or importing the patented invention,"
in
exchange
for
full
disclosure
of
an invention,
H.
Schwartz, Patent Law and Practice 1, 33 (2d ed. 1995) .
It has
long
been understood
that
a
patent must
describe the exact scope of an invention and its
manufacture to "secure to [the patentee] all to which
he is
still
419,
these
of
a
entitled, [and] to apprise the public of what is
open to them."
McClain v. Ortmayer, 141 U.S.
Under the modern American system,
424 (1891).
objectives are served by two distinct elements
patent
document.
First,
it
contains
a
specification describing the invention "in such full,
clear, concise,
and exact terms as to enable any
person skilled in the art ... to make and use the
same."
35 U.S.C. § 112; see also 3 E. Lipscomb,
Walker on Patents §10:1, pp. 183-184 (3d ed. 1985)
(Lipscomb)
(listing
the
requirements
for
a
specification).
Second, a patent includes one or more
"claims,"
which
"particularly
poin[t]
out
and
distinctly
clai[m]
the
subject
matter
which
the
applicant regards as his invention."
35 U.S.C. § 112.
"A claim covers and secures a process, a machine, a
manufacture, a composition of matter, or a design, but
never
the
function
or
result
of
either,
nor
the
scientific
explanation
of
their
operation."
6
Lipscomb § 21.17, at 315-316.
The claim "define[s]
the scope of a patent grant," 3 id. § 11:1, at 280,
and functions to forbid not only exact copies of an
invention, but products that go to "the heart of an
invention but avoids the literal language of the claim
by making
82.
.
.
a
noncritical
change,"
Schwartz,
supra,
at
.
Characteristically, patent lawsuits charge what
is known as infringement, Schwartz, supra, at 75, and
rest
on
allegations
that
the
defendant
"without
authority
ma[de],
use[d]
or
[sold
the]
patented
invention, within the United States during the term of
the patent therefor . . . ."
35 U.S.C. § 271(a).
Victory in an infringement suit requires a finding
that the patent claim "covers the alleged infringer's
product or process," which in turn necessitates a
determination
Schwartz,
of
supra,
"what
at
80;
the
words
in
the
claim
mean."
see also 3 Lipscomb § 11:2,
at
288-290.
Markman v. Westview Instruments,
It
is
requires
well-settled
"the
properly
of
1454
that
"[i]t
"First,
claims
1998)
370,
claims
are
a
of
infringement
the court determines
asserted";
compared
to
the
and second,
the
allegedly
Inc.,
138 F.3d
(citing Markman,
517 U.S.
v. FAS Techs.,
(en banc)
In conducting this analysis,
is
373-74 (1996).
determination
Cybor Corp.
(Fed. Cir.
at 371-73).
a
the patent
construed
infringing device."
1448,
that
a two-step analysis:
scope and meaning
517 U.S.
'bedrock principle'
of
it must be remembered
patent
law
that
*the
claims of a patent define the invention to which the patentee is
entitled the right
F.3d 1303, 1312
Water,
inc.
1111,
1115
Conceptronic,
to exclude.'"
(Fed. Cir. 2005)
Phillips
(en banc)
v. AWH Corp.,
(quoting Innova/Pure
v. Safari Water Filtration Systems,
(Fed.
Inc.,
Cir.
2004));
see
90 F.3d 1576, 1582
Inc.,
Vitronics
381 F.3d
Corp.
(Fed. Cir. 1996)
we look to the words of the claims themselves,
nonasserted,
415
v.
("First,
both asserted and
to define the scope of the patented invention.").
A.
The Federal
of
a
claim
meaning,'"
Claim Construction Principles
Circuit has
'are
and
generally
that
"the
repeatedly stated that
given
their
ordinary
ordinary
and
"the words
and
customary
customary
meaning
of
a
claim term is the meaning that the term would have to a person
of
ordinary skill
invention."
90
F.3d
which
the
Phillips,
at
to
in
1582).
begin
415
This
claim
art
in
question
F.3d at
provides
1312-13
"an
interpretation"
at
the
of
the
(quoting Vitronics,
objective
and
time
is
baseline
based
upon
from
"the
well-settled understanding that inventors are typically persons
skilled
in
the
field
of
the
invention
and
that
patents
are
addressed to and intended to be read by others of skill in the
pertinent art."
Id. at 1313.
As noted by the Federal Circuit:
It is the person of ordinary skill in the field of the
invention through whose eyes the claims are construed.
Such person
patent
is
deemed
documents
to
with
read
an
the
words
used
understanding
of
meaning in the field,
and to have knowledge
special
usage
meaning
inventor's
words
and
that
are
in
the
used
to
in
the
their
of any
field.
The
describe
the
invention-the
inventor's
lexicography-must
be
understood and interpreted by the court as they would
be understood and interpreted by a person in that
field of
technology.
Thus
the court starts the
decisionmaking process by reviewing the same resources
as would that person, viz., the patent specification
and the prosecution history.
Id.
(quoting
F.3d 1473,
Multiform
1477
Desiccants,
(Fed. Cir.
1998)).
Inc.
v.
However,
Medzam,
Ltd.,
133
"*[i]n some cases,
the ordinary meaning of claim language as understood by a person
of skill in the art may be readily apparent even to lay judges,
and
the
claim
construction
application
of
(Fed.
Finally,
Cir.
when
cannot
add
"abstract
such
the
understood words.'"
805
in
widely
(quoting
construing
subtract
policy
little more
meaning
terms
from
considerations"
and
the
to
415
claims
1339-40
(Fed. Cir.
1584
(Fed.
matter how great the
see Quantum Corp.
Cir.
1995)
("[I]t is
temptations of
at
v.
1314).
the
or
or
SmithKline Beecham Corp. v. Apotex Corp.,
F.3d 1577,
commonly
phrases,
broaden
than
483 F.3d 800,
F.3d
scope.
2005);
of
Stryker Corp.,
Phillips,
claim
words
involves
accepted
Acumed LLC v.
2007)
or
cases
Court
appeal
narrow
to
their
403 F.3d 1331,
Rodime,
PLC,
65
well settled that no
fairness or policy making,
courts do not redraft claims.").
B.
In
the
Types of Evidence to Be Considered
determining
Court
Circuit
first
has
substantial
terms,"
and
the
meaning of
examines
stated
guidance
the
that
as
"[b]ecause
disputed
claim
"the
to
the
language.
claims
meaning
claim
terms
consistently throughout the patent,
terms
or phrases,
The
themselves
of
Federal
provide
particular
claim
normally
used
are
the usage of a term in one
claim can often illuminate the meaning of the same term in other
claims."
The
Phillips,
claims,
415 F.3d at 1314.
however,
"do
not
read in view of the specification,
Id.
at
1315
(quoting Markman v.
stand
alone"
and
"'must
be
of which they are a part.'"
Westview Instruments,
Inc.,
52
F.3d 967,
979
(Fed.
90 F.3d at 1582
Cir.
1995)
(en banc));
("[T]he specification is always highly relevant
to the claim construction analysis.
it
is
the
term.");
see also Vitronics,
single
best
Multiform
guide
to
Dessicants,
Usually,
the
133
it is dispositive;
meaning
F.3d
at
of
a
1478
disputed
("The
best
source for understanding a technical term is the specification
from which
it
history.").
describes
arose,
The
the
informed,
as
needed,
specification,
manner
patented invention,
and
and
required
of
making
claims
must be
to be consistent with the specification . . . ."
Teva Pharms.
see
Markman,
USA,
Inc.,
517
347 F.3d 1367,
U.S.
at
389
the
as
process
"[t]hus
by
1371
prosecution
by
and
statute,
using
construed so as
Merck & Co. v.
(Fed. Cir.
(referencing
the
the
2003);
"standard
construction rule that a term can be defined only in a way that
comports with the instrument as a whole");
Phillips, 415 F.3d at
1316 ("[0]ur cases recognize that the specification may reveal a
special definition given
to a claim term by the patentee that
differs from the meaning it would otherwise possess.
In such
cases, the inventor's lexicography governs.").
In
addition
considers
the
any
complete
to
the
relevant
record
Trademark Office
of
claims
and
specification,
prosecution history,
the
("PTO"),
proceedings
which
before
the
the
Court
consists
Patent
of
and
including the prior art cited during
the examination of the patent and any subsequent reexaminations.
Phillips,
415
F.3d at
1317.
The prosecution history "provides
evidence of how the PTO and the inventor understood the patent"
and
"can
often
demonstrating
whether
the
inform
how
the
inventor
prosecution,
making
otherwise be."
Id.
inventor
the
the
history
part
of
purpose
claim
scope
of
represents
an
the
eBay, Inc.,
The
1352
Court
may
Int'l,
(Fed. Cir. 2010)
549 F.3d 1394,
it
and
of
would
see
the
to
prosecution
exclude
time,
any
because
ongoing negotiation between
useful
Trading Technologies
than
same
less
is
course
by
(Fed. Cir. 2005)
is
specification
thus
the
90 F.3d at 1582-83);
'it often lacks
595 F.3d 1340,
in
consulting
"At
language
invention
narrower
the PTO and the inventor,
purposes.'"
the
invention
construction
interpretation).
and
claim
Inc., 402 F.3d 1371, 1384
that
prosecution history
the
understood
the
claim
of
(citing Vitronics,
(indicating
disclaimed
meaning
limited
Chimie v. PPG Indus.,
as
the
for
the clarity of the
claim
Inc.
v.
construction
eSpeed,
Inc.,
(quoting Netcraft Corp. v.
1401 (Fed. Cir. 2008)).
also
examine
extrinsic
evidence,
which
includes
"all evidence external to the patent and prosecution
history,
including expert and inventor testimony,
and learned treatises."
technical
dictionaries
Markman, 52 F.3d at 980.
may
provide
the
Court
dictionaries,
For example,
with
a
better
understanding of the underlying technology and the way in which
one of skill in the art might use
the claim terms.
Phillips,
415
F.3d
at
1318;
see
also
Vitronics,
90
F.3d
at
1584
n.6.
"However, while extrinsic evidence 'can shed useful light on the
relevant
art,'
[the
Federal
'less significant
than
legally
operative
meaning
F.3d at
1317
388 F.3d 858,
Finally,
Federal
Circuit
the intrinsic
of
(quoting C.R.
862
Circuit
Bard,
(Fed. Cir.
with
explained
that
it
record in determining
language.'"
Inc.
v.
Phillips,
U.S.
Surgical
is
the
415
Corp.,
2004)).
respect
has
claim
has]
to
noted
general
that
usage
dictionaries,
"[d]ictionaries
or
the
comparable
sources are often useful to assist in understanding the commonly
understood meaning
interpretation,"
of words
and
that
and have been used
"[a]
dictionary
value of being an unbiased source
advance of
litigation.'"
Vitronics,
90
cautions that
F.3d
at
in claim
definition
has
the
'accessible to the public in
Phillips,
1585) .3
...
415
However,
F.3d at 1322
the
(quoting
Federal
Circuit
"'a general-usage dictionary cannot overcome art-
specific evidence of
the meaning'
of a claim term,"
that
"the
3 In Phillips, the Federal Circuit expressly discounted the approach
taken in Texas Digital Systems,
Inc. v. Telegenix,
(Fed. Cir. 2002), in which the court
dictionary definitions of claim terms.
1319-24 ("Although the concern expressed
was valid, the methodology it adopted
extrinsic sources such as dictionaries,
and too little on intrinsic sources, in
Inc.,
308 F.3d 1193
placed greater emphasis on
See Phillips, 415 F.3d at
by the court in Texas Digital
placed too much reliance on
treatises, and encyclopedias
particular the specification
and prosecution history.").
The Phillips opinion reaffirmed the
approach used in Vitronics, Markman, and Innova as the proper approach
for claim construction, but acknowledged that there was "no magic
formula," and that a district court is not "barred from considering
any particular sources ... as long as those sources are not used to
contradict claim meaning that is unambiguous in light of the intrinsic
evidence."
Id.
at 1324.
use of
the dictionary may extend patent protection beyond what
should properly be afforded by the inventor's patent,"
and that
"[t]here is no guarantee that a term is used in the same way in
a treatise as it would be by the patentee."
at
1322
Comm'n,
(quoting Vanderlande Indus.
Nederland BV v.
366
Cir.
"different
F.3d 1311,
dictionaries
1321
(Fed.
may contain
2004)).
somewhat
definitions for the same words," and "[a]
or
fall based upon the preferences
editor,
Phillips,
of
to
Int'l Trade
Additionally,
different
sets
of
claim should not rise
a particular dictionary
or the court's independent decision,
specification,
415 F.3d
uninformed by the
rely on one dictionary rather
than another."
Id.
With the foregoing principles in mind,
the Court will now
examine the patents at issue in this case and the disputed claim
terms identified by the parties.
III.
ANALYSIS OF THE IDENTIFIED CLAIM TERMS
In advance of the Markman hearing conducted by this Court,
the
parties
includes
submitted
a
joint
ECF No. 48-2.
found in the Anova patents,
chart
that
Two of the agreed upon terms are
and
found in the Promontory patents.
the
construction
thirteen agreed upon claim terms and eight disputed
claim terms.
of
claim
parties'
stipulated
eleven
agreed upon
The Court adopts all thirteen
constructions
terms.
10
terms are
of
the
agreed
upon
As
to
the
eight
Promontory's patents,
Anova's
patents.
disputed
terms,
three
terms
are
found
in
and the remaining five terms are found in
The
Court
begins
with
the
terms
found
in
Promontory's patents.
A.
1.
Promontory's Patents
"processor"
a. Proposed Constructions & Court Ruling
Promontory:
"A system component responsible for allocating
potential deposit amounts to multiple banks or responsible
for one or all of the following: maintaining customer
account records, maintaining Settlement Accounts, serving
as issuing and paying agent on behalf
of Receiving
Institutions with respect to deposits established through
the Interbank Deposit Service, and serving as subcustodian
for Relationship Banks. The functions of the Processor may
be performed by one or more entities"
Anova: "One or more computers that
interbank deposit placement system"
are
components
of
an
Court:
"A system component responsible
for allocating
potential deposit amounts to multiple banks or responsible
for one or all of the following: maintaining customer
account records, maintaining Settlement Accounts, serving
as issuing and paying agent on behalf of Receiving
Institutions with respect to deposits established through
the Interbank Deposit Service,
for Relationship Banks.
and serving as subcustodian
The functions of the Processor may
be performed by one or more entities"
b.
Discussion
Promontory's proposed construction of this disputed term is
drawn
directly
from
the
express
definition
set
forth
in
the
specification of each of the nine Promontory patents before this
Court.
See Phillips,
415 F.3d at 1316
li
(indicating that Federal
Circuit
cases
"special
differs
recognize
that when
definition given
from
the meaning
to
it
a
the specification includes
claim term by the patentee
would otherwise possess
inventor's lexicography governs").
not a model of clarity,
in advance of
.
that
. the
Although such definition is
it was authored and relied upon by the
patentee in submitting the patent application,
the PTO
.
a
the patent's
issuance,
was
reviewed by
and is
consistent
with the remainder of the specification and the claim terms.
In
contrast,
Anova's
proposed
definition,
direct and concise than Promontory's proposal,
although
more
seeks to read an
additional requirement into the disputed term in that it
to require that a "processor"
is always
neither
the prosecution history supports
the
the specification nor
construction
additional
proposed
limitation
by
into
Anova,
such
"a computer."
seeks
which
claim,
seeks
the
to
Court
Because
read
adopts
an
the
construction proposed by Promontory, which is directly supported
by the express definition provided in the specification.
Beginning with the claim language, across Promontory's nine
patents
in
the word
claims
claims
"processor"
reciting
reciting a
a
appears
"computer
"computer
numerous
program
times,
product"
implemented method,"
in claims reciting an "automated method."
sometimes
sometimes
and sometimes
Across many of
such
claims,
most notably those that expressly recite a computer,
appears
from
the
context
of
the
12
claim
language
in
that
it
the word
"processor"
frequently
component).
within
large
its
However,
patents
deposits,
refers
to
Promontory
recite
making
an
no
a
is
computer
correct
in
(Fed. Cir.
separate
2005)
mention
of
a
a
(citing Tandon Corp.
v.
1017,
1023
(Fed.
difference
appears
to
only
the
in
in
of
claims
processing
See,
e.g.,
424 F.3d 1136,
meaning
United States
Cir.
when the word "automated"
the preamble
other
computer.
Inc.,
computer
("When different words or phrases are used
claims,
F.2d
that
"automated method"
'746 Claim 1; see also Nystrom v. TREX Co.,
1143
(or
Int'l
1987))).
is used,
claim.
It
with
Trade
also
presumed."
Comm'n,
notable
831
that
it sometimes only appears in
Compare
preamble),
is
is
'746
'057
Claim 1
Claim
("automated"
1
("automated"
appears in preamble and "automatically" appears in method steps
(c)
and
(d) ) .
expressly
Accordingly,
reference
a
not
computer,
only
they
do
also
certain
claims
do
necessarily
not
not
require automation as to all method steps.4
Moving beyond the claim language,
patents
share
evidence
same
supports
Promontory.
definition
the
the
First,
of
the
term
specification,
proposed
the
all of Promontory's nine
such
construction
specification
"processor"
and
which
advanced
includes
does
intrinsic
not
an
by
express
limit
such
4 Stated differently, while certain steps involved in the processing of
a large deposit may be required to occur through an automated process,
the claims do not necessarily require that all method steps be
automated.
For example, it appears that the "receipt" of an order
from a bank to process a large deposit may, under certain claims, not
require a computer nor require an automated process.
13
term to a computer,
but instead indicates that the functions of
the "processor" may be performed by one or more entities.
e.g.,
'522
6:41-51
(defining
"processor"
in
the specification entitled "Definitions").
acted as
its
Innovative
own lexicographer
Properties
Co.
v.
1365, 1372 (Fed. Cir. 2003)
to
define
Avery
the
See,
subsection
Promontory has
"processor."
Dennison
Corp.,
of
thus
See 3M
350
F.3d
(indicating that the rule counseling
against importing limitations into the claims "must be strictly
enforced" where a patentee provides an express definition of the
disputed claim term in the specification and such definition is
"devoid" of the limitation sought to be read into the claims) .
Second,
Promontory
cites
to
examples
within
the
specification
that lend support to the express "lexicographer" definition set
forth therein.
In such instances, the specification appears to
use the word "processor" to refer to the person or entity that
performs the processing and not to a "computer."
49
See '522 3:46-
(indicating that a deposit "may be titled in the name of the
Processor
order)");
(as
subcustodian
'522 12:32-37
for
the
bank
that
placed
the
(indicating that "the Processor" acts as
"issuing agent for the bank");
'522
13:46-38
(indicting that
interest rates for unmatched deposits are determined "through a
procedure established by the Processor").
Notwithstanding
should
adopt
its
the
above,
proposed
Anova
construction
14
argues
based
that
on
the
a
Court
purported
concession
made
However,
such
vacuum,
a
by
Promontory
argument
single
has
out
is:
force
sentence
Promontory submitted to
"[T]he
during
only
if
contained
the
PTO.
'processor'
patent
one
in
a
prosecution.
considers,
written
in
a
filing
The statement Anova singles
referred
to
throughout
the
specification, when programmed to perform the steps shown in the
flowcharts and diagrams, becomes a special purpose computer,
thereby a new machine."
No.
44-1.
Anova
references
the
use
specification,"
claim
scope
however,
Anova Markman Reply Ex.
contends
of
the
that,
word
because
processor
and
1 at 11, ECF
such
statement
"throughout
the
Promontory engaged in a wholesale disavowal
in
each
of
its
nine
patents.
Such
of
argument,
fails for a number of reasons.
First,
the opening paragraph of Promontory's submission to
the PTO reveals that the remarks therein were merely an effort
to
"preemptively
claims under the
comparison
of
address"
a
potential
"Oncken" prior art.
Promontory's
claimed
rejection
Id.
at
invention
3.
and
of
certain
The detailed
Oncken
that
follows on the next several pages has little, if anything, to do
with whether or not the claimed "processor"
is a "computer."
Accordingly, Anova's characterization of Promontory's statements
as a clear disavowal of claim scope is not compelling.
Second,
PTO,
in
section six of
Promontory's
submission
Promontory explains that the claims being discussed,
15
to
the
Claims
1-20,
545
are not prohibited by 35
F.3d
943
"directed
namely
Markman
(Fed.
toward
a
Cir.
a
2008)
different
manufacture"
Reply
U.S.C.
Ex.
and In re
banc)
(en
because
statutory
as
contrasted
at
1
§ 101
10.
class
with
a
Bilski,
they
of
invention,
process.
Promontory
then
are
Anova
posited
an
alternative preemptive defense in the event the PTO (improperly)
interpreted
claims.
claims
1-20
Promontory
interpretation,
as
method
noted
claims
that,
rather
under
than
such
product
hypothetical
the claims are still patentable because "claims
1-20 recite a computer-implemented process that is clearly tied
to a particular machine."
Promontory stated that
the
specification,
programmed
section
that
to
such
is only then that
the word "processor"
as used throughout
the
filing
such preemptive
hypothetical
It
becomes
perform
six of
Id. at
a
special
that
purpose
claimed
steps.
in
entirety,
its
comments,
rejection
11.
made
would
in
an
itself
computer
Id.
when
Considering
this
Court
effort
to
(in the
finds
thwart
eyes
of
a
the
filer) be based on a misinterpretation of the very nature of the
claims
(product
clear disavowal
Co.
v.
Tredegar
(indicating that
vs.
method)
is
of claim scope.
Corp.,
a
725
court
F.3d
should
insufficient
to
constitute
a
See 3M Innovative Properties
1315,
"not
1322
rely on
(Fed.
the
Cir.
2013)
prosecution
history to construe the meaning of the claim to be narrower than
it would otherwise be unless
a patentee limited or surrendered
16
claim scope through a clear and unmistakable disavowal"
Trading Tech.
1582-83))
595
F.3d at
1352,
Vitronics,
as
noted
above,
by
Promontory,
Promontory
lays
in
out
the
the
same
for
"an
entity
that
manages
Markman Reply Ex.
1 at 3
then states:
[Promontory's]
the
"In
processor
claimed steps."
that
Id.
(emphasis added).
the
funds)."
Anova
Promontory's filing
instructions
(emphasis added).
between
distribution
claimed invention,
executes
filing
noting that each
(allocation or assignment of a large deposit of
is
F.3d at
PTO
similarities
the "Oncken" prior art and the claims at issue,
provided
90
(emphasis added).
Third,
discussed
Int'l,
(citing
that
to
entity
perform
the
Such statement clearly
suggests a broad meaning of the term "processor" to include the
processing
entity,
and
thus
does
not
limit
such
term
to
a
computer.
In sum,
in
context,
Promontory's
does
not
statement
constitute
disavowal of claim scope.5
to
a
the PTO,
"clear
Accordingly,
when considered
and
unmistakable"
the Court adopts the
broad definition of "processor" set forth in the specification.
See
Home Diagnostics,
Inc.
v.
LifeScan,
Inc.,
381
F.3d
1352,
5 Even if this Court found that Promontory made a clear disavowal, the
context of
such statement would limit it
to
the claims being
discussed, that is, the claims that expressly require a computer.
See
Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir.
2004)
(indicating that the patentee's statements to the PTO to
distinguish claims that include a certain feature from the prior art
"do not rise to the level of a clear disavowal of scope with respect
to" other claims that do not include such limitation).
17
1357
(Fed.
broadly
Cir.
and
2004)
expect
("A
patentee
enforcement
of
may
the
claim
full
an
invention
scope
of
that
language absent a clear disavowal or contrary definition in
specification.");
156
F.3d
1351,
ambiguity
need
"facilitate
product";
a
PPG
1355
not
Industries
(Fed.
be
comparison
rather,
after
v.
Cir.
resolved
Guardian
1998)
by
between
defining
(recognizing
the
the
Industries
Court
claim
a
claim
in
and
Corp.,
that
order
the
"with
the
all
to
accused
whatever
specificity and precision" that is warranted in a specific case,
"the
the
task
of
accused
determining
product
is
whether
for
the
the
construed claim
finder
of
fact").
reads
on
Anova's
efforts to read the word "computer" into the construction of the
term
"processor"
in
all
claims,
including
those
that
never
reference a computer, is therefore rejected.6
2.
"process large deposits"
a. Proposed Constructions & Court Ruling
Promontory:
Plain meaning or alternatively:
functions with the large deposits"
"performing
Anova: "Automatically allocate portions of large deposits
among multiple banks so that the entire deposit is fully
insured"
Court: Plain meaning
6 The Court also reject's Anova's suggestion that the Merriam Webster
dictionary supports its construction.
As highlighted by Promontory at
the Markman hearing, Anova's brief selectively quotes the Merriam
Webster dictionary definition in a manner that excludes the very first
definition of "processor," defined as "one that processes."
Merriam
Webster's Collegiate Dictionary at 929 (10th Ed. 1997).
18
b.
Discussion
In light of the numerous patents involved,
welcomed candor regarding the crux of
best
course
dispute
toward
is
to
construction
into the
resolving
address
of
the
the
instant
the
crux
and the parties'
the instant dispute,
instant
head
claim
on.
term seeks
to
two
definition that do not otherwise appear
language.
First,
deposits must be
Anova
contends
"automatic."
construction
Anova's
read
the
proposed
limitations
in
the
claim
that the processing of large
Second,
Anova contends
that
the
processing of large deposits must result in the entire deposit
being
"fully
insured."
Across
Promontory's nine patents,
hot
most,
embodiments
operated on
computers,
embodiments
of
the Court has no doubt that many,
if
would
that
the
numerous
utilize
is
an
highly
"automatic"
effective at
system,
allocating
large deposits in a manner that all but guarantees that they are
fully insured.
That said,
Anova has
failed to demonstrate that
the patents require such steps or results in all embodiments.
First,
as
to
the
proposed requirement
that
deposits
are
processed "automatically," although many claims in Promontory's
patents
use
the
word
"automated,"
even
more
do
not.
claims that do use such term, as previously discussed,
at times only appears in the preamble,
some,
but
processed.
not
all,
See
method
'746
Claim
steps
1;
19
to
the term
and at times appears in
describing
'057
As
Claim
how
1.
a
The
deposit
fact
is
that
individual
method
performed
steps
that
"automatically"
are
individual
method
performed
"automatically"
"automatic"
Inc.
v.
2012)
in
steps
that
requirement
Marchon
do
indicate
located
expressly
indicate
a
not
universal.
Inc.,
strong
672
that
immediately
is
is
Eyewear,
not
F.3d
they
adjacent
that
to
they are
indicator
that
See Aspex
1335,
are
1349
the
Eyewear,
(Fed.
Cir.
(explaining that when "adjacent claims use different terms
parallel
settings"
[differing]
Similarly,
terms
while
it
were
many
supports
not
of
meant
the
to
finding
have
Promontory's
the
that
same
claims
use
"the
two
meaning").
the
phrase
"computer program product" or "computer implemented method," not
only are these not universal,
language
do
implemented
Court
not
require
system
rejects
that
operate
Anova's
but
the claims
each
step
that
in
"automatically."
proposal
to
include such
such
computer
Accordingly,
the
read
the
limitation
import
the
requirement
"automatically" into the instant term.7
Second,
as
to
Anova's
attempt
to
that the deposit be "fully insured," both the claim construction
rules
governing
a
claim's
preamble
and
the
patents'
specification militate against such interpretation.
shared
Considering
7 Moreover, Anova's proposal is not a natural reading of the claims.
Notably,
many of Promontory's
claims
include a
step referencing
"receiving at the processor orders ... to process large deposits."
See, e.g., '057 Claim 1.
If Anova's construction was adopted, the
orders received from banks would have to be orders to "automatically
allocate" the deposit into portions across many banks.
It is however,
highly
doubtful
that
any
bank
order
would
request "automatic" allocation,
rather,
merely request appropriate allocation.
20
itself
such
require
orders
are
or
even
likely
to
first the claim language itself,
the Federal Circuit has offered
the following summary of the rules governing interpretation of a
claim's preamble:
Whether to treat a preamble term as a claim limitation
is "determined on the facts of each case in light of
the
claim
as
the patent."
329 F.3d 823,
a
whole
and
the
invention
described
in
Storage Tech. Corp. v. Cisco Sys., Inc.,
831 (Fed. Cir. 2003).
While there is no
simple test for determining when a preamble limits
claim scope, we have set forth some general principles
to guide that inquiry.
"Generally," we have said,
"the preamble does not limit the claims."
Allen Eng'g
Corp.
v.
Bartell
Indus.,
Inc.,
299
F.3d
1336,
1346
(Fed. Cir. 2002).
Nonetheless, the preamble may be
construed
as
limiting
"if
it
recites
essential
structure or steps, or if it is 'necessary to give
life, meaning, and vitality' to the claim."
Catalina
Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002), quoting Pitney Bowes, Inc.
v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999).
A preamble is not regarded as
limiting,
however, "when the claim body describes a structurally
complete invention such that deletion of the preamble
phrase does not affect the structure or steps of the
claimed invention."
Catalina, 289 F.3d at 809.
If
the preamble
"is
reasonably susceptible
to
being
construed to be merely duplicative of the limitations
in the body of the claim (and was not clearly added to
overcome a [prior art] rejection), we do not construe
it to be a separate limitation."
Symantec Corp. v.
Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1288-89
(Fed. Cir. 2008) . We have held that the preamble has
no separate limiting effect if, for example,
"the
preamble merely gives a descriptive name to the set of
limitations in the body of the claim that completely
set forth the invention."
Automation, Inc., 206 F.3d
IMS Tech., Inc. v.
1422, 1434-35 (Fed.
Haas
Cir.
2000).
American Medical Systems,
1358-59 (Fed Cir. 2010)
Inc.
v. Biolitec,
(emphasis added).
21
Inc.,
618 F.3d 1354,
Here,
across
it
is
in
Promontory's
the
nine
preamble
to
patents
where
large deposits being processed "so
fully insured."
are
repeated
However,
references,
each
that
independent
the
claims
one
form
reference
the large deposits
within the body of
in
claim
or
the claims,
another,
to
are
there
deposits
being "partitioned" into deposit portions that do not exceed the
"established
therefore
deposit
insurance
"reasonably
limit."
susceptible
to
The
being
preambles
construed
to
are
be
merely duplicative of the limitations in the body of the claim."
Symantec
governing
Corp.,
522
F.3d
at
law,
the
language
1288-89.
in
the
Accordingly,
preamble
under
should
not
the
be
interpreted to be a separate limitation requiring full insurance
in all instances.
The above
the
shared
is
further supported by a review of
specification
Specifically,
achieving
conclusion
of
the
language
full
systems/methods,
following
insurance
such goal
is
is
Promontory's
a
nine
indicates
that
although
the
claimed
and thus,
need not
goal
aspirational,
patents.
of
be achieved in order to practice the patent:
(1) The customer is responsible for ensuring that he
or she is fully covered by deposit insurance in all
deposits (as is currently the case with all other bank
accounts)
but the IDPS 100 attempts to ensure that the
deposits transferred through the IDPS 100 are fully
insured. Each customer may be required or requested to
identify, at the time he or she places a deposit,
information to the IDPS 100 regarding all banks in
which it otherwise does not want to place deposits
(which would
include
all
banks
22
in which
the
customer
maintains an account).
In situations where the initial
run of the algorithm places a deposit in a bank where
a particular customer has already insured deposits,
the IDPS 100 reallocates such new deposit to another
bank;
(2) In accordance with the present invention, the IDPS
100 is an order placement engine that executes an
order
placement
process.
The
order
placement
process
utilizes a sophisticated algorithm that automatically
matches orders based on a pre-defined set of rules.
This ensures an order placement and execution utility
that seeks to optimize, inter alia, three different
variables . . . [including] Maximiz[ing]the percentage
of Lending Bank deposits that are fully insured.
(3) The order placement and execution utility seeks to
optimize several different variables including:
Maximize the percentage of the Lending Bank deposits
that are fully insured. In order to minimize costs to
the IDPS 100 and risk to the Lending Bank, the IDPS
100 attempts to maximize the amount of any Lending
Bank deposits used to cover mismatches that are fully
insured.
'522 15:22-31; 16:64-17:6, 17:52-53, 18:21-25 (emphasis added).
Based on the above,
"plain
term,
always
meaning
as
a
little
F.3d at 805
although
and
of
one,"
more
of
appropriate
comprehending
and
than
commonly
adopts
rejected
thus
is
in some
the
has
the
for
[claim]
cases
the
words
claim
application
of
understood words.'"
(quoting Phillips,
the Court
affirmatively
Anova,
task
difficult
accepted meaning
483
construction"
"[t]he
"'involves
the Court agrees with Promontory that a
the
23
the
limitations
dispute
as
not
widely
Acumed LLC,
a plain meaning construction,
"resolved"
is
construction
415 F.3d at 1314)).
additional
instant
to
Here,
it
proposed
the
has
by
proper
interpretation of the instant claim.
Beyond
2008)
Innovation
Tech.
Co.,
("When the parties
proper
scope
of
these
F.3d 1197,
1206-07
F.3d
02 Micro Int'l Ltd.
1351,
raise an actual
claims,
resolve that dispute.");
626
521
Cf.
the
Finjan,
(Fed.
Cir.
(Fed.
Cir.
dispute regarding the
court,
Inc.
1360
v.
not
the
jury,
must
v. Secure Computing Corp.,
2010)
(finding
"no 02
Micro
problem" where the district court not only adopted a "plain and
ordinary
meaning"
defendant's
construction,
attempt
to
import
a
but
also
limitation
rejected
into
the
the
disputed
claim language because, by rejecting such improper construction,
the district court's ruling resolved the legal dispute and did
not
improperly reserve a
legal
question
for resolution by the
jury).
3.
"order matching process"
a. Proposed Constructions & Court Ruling
Promontory:
Plain
meaning,
or
alternatively:
"order
matching function"
Anova: "An operation that automatically matches orders"
Court: Plain meaning
b.
It
Discussion
is
apparent
from
the briefs
parties recognize that the dispute as
before
the
Court
that
the
to the instant claim term
rises and falls with the resolution of the dispute on the prior
claim
term-"process
large
deposits."
24
The Court,
in agreement
with such viewpoint,
expressly incorporates herein its analysis
for
that
the
prior
term
rejects
the
inclusion
of
the
word
"automatically."
Having concluded that
"automatically"
into
the
it
is not
instant
proper
term,
it
to read the word
is
apparent
that
neither party's proposed construction ("order matching function"
or "an operation that . . . matches orders")
the claim language itself.
Inc.,
is
103
F.3d 1554,
a matter
scope,
to
of
1568
See U.S.
(Fed.
resolution
clarify
and
of
when
Cir.
adds any clarity to
Surgical Corp.
1997)
("Claim construction
disputed meanings
necessary
v. Ethicon,
to
and
explain
technical
what
the
patentee covered by the claims
. . . [i]t is not an obligatory
exercise
Accordingly,
in
redundancy.").
the
Court
adopts
Promontory's prosed "plain meaning" construction, as the jury is
more than capable of understanding the everyday words that make
up the disputed term, and both Promontory's alternative proposal
and Anova's proposal with
the
word
"automatically"
removed are
merely synonyms for the claim language itself.
B.
1.
"depositor"/ and
2.
Anova Patents
"depositor group"
a. Proposed Constructions & Court Ruling
Promontory (for both terms): Indefinite, or alternatively:
"A group of individuals or entities that pool funds for
deposit purposes and that are permitted to deposit funds in
a
NOW account"
25
Anova - depositor:
"An individual or entity
seeking to place funds in one or more banks"
placing
or
Anova
depositor
group:
"A
group
of
one
or
more
individuals and/or one or more entities placing or seeking
to place funds in one or more banks"
Court - depositor:
"An individual or entity
seeking to place funds in one or more banks"
placing
or
Court - depositor group: "A group of individuals and/or
entities placing or seeking to place funds in one or more
banks"
b.
Discussion
Each
of
Anova's
four
patents
specification the same express,
of
the
term
expressly
"pooled
define
Promontory argues
interchangeably,
have
the
same
depositor
than
and
indefinite.
thus,
as
"depositor
they
depositor
the
or
use
these
group,"
be
its
do
not
"depositor."
three
terms
interpreted
defined
Promontory
in
definition
patents
group"
expressly
group"
term
argues
to
"pooled
that
if
do
mean
something
different
they
are
undefined
and
thus
Anova counters by acknowledging that although its
have
one
or
notwithstanding such mistakes,
interchangeably.
statements
includes
The
should all
Alternatively,
"depositor
may
Promontory's
group."
the Anova patents
meaning
or
"pooled
patents
that
group."
"depositor"
terms
suit
and somewhat narrow,
depositor
the
in
Anova
position would
in
the
more
the
terms
further
ignore
specification
26
typographical
at
issue are not
contends
multiple
indicating
errors,
that
used
adopting
clear
and
express
that
the
claimed
invention
is
depositor
groups."
merit,
not
limited
to
the
Although
each
narrowly
party's
defined
position
has
having viewed the claims and specifications as
Anova's
position
is
more
compelling,
and
the
"pooled
some
a whole,
Court
therefore
adopts Anova's construction for the term "depositor" and Anova's
amended proposed construction for the term "depositor group."8
Beginning
across
the
(3)
the
four patents
the singular;
groups,"
with
(2)
claim
at
language
issue reference:
"depositors,"
indicating,
itself,
(1)
various
claims
"depositor"
in
"depositor group," or "depositor
at a minimum,
a plurality of depositors;
or
"pooled depositor group," which is expressly defined in the
specification of Anova's patents as "[a] group of individuals or
entities
that
pool
funds
for
deposit
purposes
permitted to deposit funds in a NOW account.
43
(emphasis
dispute
lies
added).
in
the
The
above
driving
force
emphasized
Promontory's construction is adopted,
and
. . ."
behind
language,
that
are
'099 3:41-
the
instant
because
if
every claim across Anova's
four patents would be limited to depositors that both pool their
8 Promontory argues
that
Anova's
initial
proposed
construction
of
"depositor group" could be interpreted as permitting a "group of one."
Although Anova disagrees with such contention,
Anova subsequently
advanced a modified construction of "depositor group" to alleviate
Promontory's
"group of one"
concerns.
Anova Markman Reply 19.
Because the Court finds that Anova's modified proposal eliminates any
chance of confusion, without materially changing Anova's proposal, the
Court adopts Anova's modified construction of such term.
27
funds and are qualified to deposit their pooled funds in a "NOW
Account."9
Considering
terms
both
themselves,
parties'
the
Court
arguments
agrees
with
regarding
Anova
the
the
that
claim
claim
terms reveal that "depositor" refers to a singular individual or
entity,
that
"depositor
group"
refers
to
a
plurality
of
depositors, and that "pooled depositor group" is a subset of the
broader
"depositor
permitted
patent,
term
to
the
in
group"
utilize
claims
the
a
and
NOW
take
limited
account.
the
independent
is
familiar
claims
to
pooled
depositors
Beginning with
form of
the
'099
using a broader
("depositor,"
"depositors,"
"depositor group," or "depositor groups," appear in independent
Claims
1,
specific
2,
7,
11
dependent
and 12)
claims
and then using a narrower
(the
more
narrowly
depositor groups"
appears in dependent Claims
format
Anova's
supports
"depositor
groups(s)"
contention
have
depositor
groups."
See
358
898,
(Fed.
F.3d
910
a
that
different
2004)
defined
"pooled
6 and 16).
Such
"depositor(s)"
meaning
Liebel-Flarsheim Co.
Cir.
term in
v.
than
Medrad,
(indicating
that
and
"pooled
Inc.,
"[t]he
juxtaposition of independent claims lacking any reference to
proposed
limitation]
with
dependent
claims
that
add
[a
[such]
9 As defined in Anova's patents and explained by the parties, a "NOW
Account" is a negotiated order of withdrawal account with a commercial
bank that places no limits on deposit and withdrawal activity.
According
to
the
specification
of
Anova's
patents,
"commercial
businesses are not permitted to deposit funds in a NOW account."
'099
3:45-47.
28
limitation provides
independent
strong support
claims
were
not
for
[the]
intended
argument
to
that
require
the
[such
limitation]" and that although the resulting presumption can be
overcome,
"where the limitation that is sought to be 'read into'
an independent claim already appears in a dependent claim,
doctrine
of
Phillips,
415
claim
F.3d
differentiation
at
1315
(noting
is
at
that
its
"the
the
strongest");
presence
of
a
dependent claim that adds a particular limitation gives rise to
a presumption that the limitation in question is not present in
the independent claim").
Moreover,
the internal phrasing of
Claims
Anova
they
6 and 16
contrast
support
"depositor
group"
with
as
appear
to directly
"pooled depositor
group"
by
stating: "wherein the depositor groups comprise pooled depositor
groups and wherein the accounts comprise master negotiated order
of withdrawal accounts."
'099 Claims 6, 16; see '560 Claims 9,
24 (same); see also Curtiss-Wright Flow Control Corp. v. Velan,
Inc.,
438 F.3d 1374,
1380
(Fed.
Cir.
2006)
(explaining
that
because the controlling statute requires that "a dependent claim
must add a limitation to those recited in the independent claim
. . . reading an additional limitation from a dependent claim
into an independent
limitation
claim would not only make
superfluous,
it
might
invalid").
29
render
the
that additional
dependent
claim
The
text
indicates
that
"depositors,"
"depositor"
standpoint,
a
claims
themselves
"depositor,"
plural,
or
and
the use of
that
in and of
a
also
singular,
"depositor
denote
First
a writing
groups"
the
can
corporation.
of
of
single
most
is
not
obviously,
refers
to
itself suggests
as
individual
a
a
as
term
single
grammatical
within the context
"depositors"
that
same
the
or
from
clearly
the
group(s),"
the word "depositor"
also
rather
and
"depositor"
"depositor
refers
to a
single person or entity.
Second,
references
using
the
'099
patent
as
an
example,
Claim
7
"matching the deposit need with the deposit account
postings in a manner that provides deposit insurance for funds
deposited by
the
depositor,
wherein matching
the
deposit
need
with the deposit account postings includes auctioning available
deposits of the at least one depositor to the commercial banks."
'099 Claim 7 (emphasis added).
second
emphasized
portion,
Such phrasing,
further
suggests
refers to a single individual or entity.
any
doubt
remains,
the
next
three
particularly the
that
However,
dependent
"depositor"
to the extent
claims
state
follows:
8.
The
method
of
claim
7
wherein
the
depositor
comprises an individual entity.
9. The method of claim 8 wherein the individual entity
comprises a human being.
10.
The
method
of
claim
8
entity comprises a corporation.
30
wherein
the
individual
as
'099 Claims 8-10.10
"comprises"
in
Although Promontory is correct that the word
the
limited to," CIAS,
1360
(Fed. Cir.
patent
context
means
"including,
Inc. v. Alliance Gaming Corp.,
2007),
but
not
504 F.3d 1356,
the most natural reading of Claims 8-10,
when considered in conjunction with independent Claim 7, is that
"depositor"
can denote
Every Penny Counts,
(Fed.
Cir.
2009)
claim
language
a
Inc.
singular person
v. Am.
("'The
and
Express Co.,
construction
most
or
naturally
invention will
corporation.
563 F.3d 1378,
that
aligns
be,
in
See
stays
with
the
true
the
description of
the
end,
construction.'"
1381
to
the
patent's
the correct
(quoting Phillips, 415 F.3d at 1316)).
Third, because Promontory contends that every depositor is
necessarily
a
notes
if
that
would be no
pooled
discrete
places,
and
of
Promontory's
multiple
construction
difference between
depositor group."
use
group
'099 Claim 7,
terms
claim
to
refer
depositors,
were
adopted,
"one depositor"
14.
to
construction
However,
such
rules
the
and
Court
there
"a single
the patent claims
depositors
indicate
in
that
different
the
Court
should not ignore the patentee's decision to use different terms
in
similar
contexts
Innova/Pure Water,
to
Inc.,
refer
to
381 F.3d at
different
1119
things.
See
(indicating that "all
claim terms are presumed to have meaning in a claim," and that
10 Claims 25-28 of the '560 patent and '651 patent similarly reference
"one depositor" and indicate
being or a corporation.
that
31
such
depositor
comprises
a
human
"when
an
applicant
permissible
terms
to
to
uses
infer
reflect
different
that
a
he
terms
in
intended his
differentiation
in
a
claim
choice
the
of
it
is
different
meaning
of
those
terms").
In
contrast
to
the
above,
the
claims
of
the
'651
present an example of what is
either clumsy use of
"pooled
less
depositor
group,"
clear distinction between
and
to
"depositor group."
"depositor groups"
or
consistent
the phrases
Specifically,
the phrase
adherence
"pooled depositor
dependent
claim 9
as do each of Claims 10-13,
20, which are all dependent on Claim 9.
patent
to
a
group"
refers
16-17 and 19-
In contrast,
Claim 21,
which is also dependent on Claim 9, references "pooled depositor
groups"
such
in a manner that,
term
is
being
"depositor groups"
20.
used
as
interchangeably
discussed in Claims
suggests that
with
9-13,
the
16-17,
phrase
and 19-
Although the Court agrees with Promontory that the phrasing
of Claim 21,
it
as argued by Promontory,
could be
vis-a-vis
the phrasing of
interpreted as
other
claims
terms
"pooled
in
the
'651
depositor
an
example
patent
group"
the claims
of
support
and
that precede
interchangeable
the
finding
"depositor
group"
that
are
use,
the
used
distinctively in a manner that does not suggest interchangeable
use.
Specifically,
dependent
limitation
Claim
to
24
similar to
of
the
the
'651
'099 patent and
patent
adds
the previously stated method claim:
32
'372 patent,
the
following
"wherein
the
depositor
the
groups
accounts
accounts."
comprise
comprise
"pooled
a
terms
another
manner'"
group"
should not
be
restricts
order
that
should
the
to
withdrawal
As discussed above,
be
given
1325
contain
invention
of
wherein
"depositor group"
415 F.3d at
read
and
a
in
and
different
(indicating that
limitation
exactly
the
'where
[same]
(quoting TurboCare Div. of Demag Delaval Turbomachinery
Corp. v. Gen.
Elec.
Co.,
(alteration in original);
1250 (Fed. Cir.
purpose
negotiated
groups
(emphasis added).
See Phillips,
claim
depositor
strong indicator
depositor
constructions.
"claim
master
'651 Claim 24
such phrasing is
pooled
that
2011)
is
264 F.3d 1111,
1123
(Fed.
see also In re Tanaka,
Cir.
2001)))
640 F.3d 1246,
(noting that "each claim of a patent has a
separate
and
distinct
from
the
remaining
claims").
In addition to its argument with respect to Claim 21 of the
'651 patent,
Promontory argues that the Court should not place
much reliance on Claims 6 and 16 of the '099 patent and Claim 24
of
both
the
'651
patent
and
'560
patent
as
a
result
phrasing of dependent claims 48-50 of the '372 patent.
such dependent
claims
refers
back
to an
independent
of
the
Each of
claim
(1,
14, and 27) discussing "depositor groups" and claims the method,
product,
or system of
depositor
groups
accounts
comprise
the previously stated claim
comprise
master
depositor
groups
negotiated
33
order
and
of
"wherein the
wherein
the
withdrawal
accounts."
'372
Claims
48-50
(emphasis
added).
Promontory
interprets such language as another example of Anova failing to
draw
a
meaningful
"pooled depositor
Claims
48-50
distinction
groups."
should
between
Anova
track
the
"depositor
counters
language
by
of
groups"
suggesting
the
other
and
that
three
patents and that the omission of the word "pooled" is an obvious
scrivener's
the
error.
reference
in
Anova's
Claims
position
48-50
to
is
arguably supported by
"master
negotiated
order
of
withdrawal accounts."
Based only on the claim language,
distinguishes
group(s)"
groups"
other
between
"one
depositor"
(a
self-defined
subset
arguably
of
blurs
the
an
inherently
construction dilemma.
not
stand
specification,
at
1315
the
However,
and
line
Markman,
133 F.3d at 1478
if
as
between
not
but
in
"depositor
impossible,
claim
it is axiomatic that the claims
"'must
be
read
52
F.3d
at
in
view
Phillips,
979);
see
of
the
415 F.3d
Multiform
(indicating that the specification
"best source for understanding a
specification,
groups),
the Court would be faced
of which they are a part.'"
(quoting
Dessicants,
is
alone"
difficult,
"depositor
and "pooled depositor
depositor
groups" and "pooled depositor groups,"
"do
(singular),
(multiple persons or entities),
instances
with
which in most instances
required by statute,
technical
The
describes the manner and
process of making and using the patented invention,
34
term").
and "[t]hus
claims
must
be
construed
specification . . . ."
despite
Here,
and then,
as
to
be
consistent
with
the
Merck & Co., 347 F.3d at 1371.
the
specification where
so
fact
that
there
are
instances
in
the
the term "pooled depositor groups" is used
a few words or sentences later,
the shortened phrase
"depositor group" is used to refer back to the "pooled depositor
group"
being
discussed,
abundantly clear that,
see,
e.g.,
as a whole,
treat such terms as synonyms.
'651
17:11-15,
it
is
the specification does not
Rather,
the specification clearly
and expressly states that the patented invention is not limited
to pooled groups of depositors that qualify for investing in NOW
accounts,
which
is
the
definition
provided
by
specification for "pooled depositor groups."
Anova
in
the
For example,
the
specification of the '099 patent states as follows:
Other
entities,
such
as
individual
depositors
(including corporations and human beings) may also
seek insured, liquid deposit opportunities for their
funds.
These
entities
those described
above
face
the
same
for pooled
Accordingly, there exists
collateralized
deposit
depositors.
difficulties
depositor
a need for an
vehicle
for
as
groups.
insured or
individual
In
order
to
address
the
aforementioned problems
associated with providing cash to commercial banks and
providing insured,
liquid deposit opportunities for
pooled depositor groups and individual depositors, one
aspect
of
the
invention
includes
a
method
and
associated
computer
software
for
facilitating
transactions between depositors and commercial banks.
099 2:4-9,
25-31 (emphasis added).
35
Moreover,
the most direct statement from the specification
of Anova's patents
that
sheds
light on the
instant dispute is
the following:
Although the example described above relates primarily
to banks posting master NOW accounts,
the present
invention is not limited to using master NOW accounts.
For example, corporations are not permitted to deposit
money in master NOW accounts. Accordingly, receiving
money from corporations and having commercial banks
post
accounts
that
are
equivalent
to
master NOW
accounts
in
which
corporations
are
permitted
to
deposit cash is intended to be within the scope of the
invention. In one exemplary implementation, in order
to receive deposits from corporations,
the present
invention may include using a money market deposit
account (MMDA) account. Thus, although the examples
described herein relate to master NOW accounts, it is
understood that MMDA accounts may be used without
departing from the scope of the invention.
'099 8:61-9:8;n see also '099 2:45-48 ("For other entities, such
as
individuals
(including
human
beings
or
corporations),
deposit account may be a money market deposit account (MMDA)
other
time
Accordingly,
or
although
anticipated that
inventions
interest
was
See
is
deposit
abundantly
clear
the primary and preferred use of
to
facilitate
pooled depositor groups,
limited.
it
bearing
banking
the
or
accounts.").
that
its
transactions
Anova
claimed
involving
the claims of such patents are not so
Brookhill-Wilk
1,
LLC,
v.
Intuitive
Surgical,
11 Such language also appears in the following locations: '651 18:4-18;
'560 18:4-18.
Although such language is absent from the '372 patent,
Promontory has not requested a separate construction of "depositor" or
"depositor group" limited to the '372 patent.
Cf. Omega Engineering,
Inc. v. Raytek Corp., 334 F.3d 1314, 1334
(Fed. Cir. 2003) ("[W]e
presume, unless otherwise compelled, that the same claim term in the
same patent or related patents carries the same construed meaning.").
36
Inc. ,
334
F.3d
disclaimer
inventor
of
context.");
1301
particular
anticipated
particular
Phoenix,
1294,
manner
(Fed.
subject
that
does
not
672
("Absent
matter,
the
may
limit
the
Services
F.3d 1270,
2003)
invention
the
Digital-Vending
Inc.,
Cir.
1274
scope
Int'l,
fact
be
(Fed. Cir.
clear
that
used
to
LLC
a
that
v.
2012)
the
in
narrow
Univ.
of
(indicating
in a case where a key limitation appeared in nearly all of
claims across multiple patents,
the shared specification,
a
the
and also appeared repeatedly in
that because such limitation did not
appear in certain method claims in one of the related patents,
it was not a universal limitation appropriate for incorporation
into the Court's construction of the disputed claim language).
Based on the above analysis, the Court rejects Promontory's
attempt
to read into
depositors
must
in
the
all
disputed
instances
terms
be
the
requirement
a pooled group permitted
under banking regulations to deposit funds in a NOW account.
Anova's
distinct
"depositor group"
proposed
Anova's
constructions
are supported by the
Court adopts Anova's
construction
and
intrinsic evidence,
the
for
for
As
"depositor"
construction for the
amended proposed
that
term
the
"depositor"
term
and
"depositor
group. "12
12 In reaching such conclusion, the Court has considered, and rejected,
Promontory's prosecution history disavowal
argument.
The Court
rejects such argument for the same reasons it rejected Anova's
prosecution history disavowal argument as to Promontory's patents.
In
short,
the statements made
to
the PTO fall
37
far short of
the standard
3.
"stable funds source" /
"stable deposits"
a. Proposed Constructions & Court Ruling
Promontory: "Source of pooled
are usable as core deposits"
deposits"
funds that, when deposited,
/ "Deposits usable as core
Anova:
as a whole,
"Source of funds
that,
do not fluctuate
significantly in amount in response to changing conditions
and/or the passage of time" / "Deposits that, as a whole,
do not fluctuate significantly in amount in response to
changing conditions and/or the passage of time"
Court:
"Source
of
pooled
funds
that,
as
a
whole,
do
not
fluctuate significantly in amount in response to changing
conditions and/or the passage of time" / "Deposits that, as
a whole,
do not fluctuate significantly in amount in
response to changing conditions and/or the passage of time"
b.
Discussion
The dispute as to the instant term centers on Promontory's
efforts to equate the claim language "stable deposits" with the
term
"core deposits."
deposits"
and
asserts,
"stable
expressly
however,
funds"
is
that
Anova's
patents
define
the
ambiguous
"stable
definition
and
expressly define
in
"core
funds."
Promontory
the
as
indefinite,
patents
and
to
Promontory
therefore urges the Court to adopt a definition equating "stable
funds" and "stable deposits" with "core deposits," the latter of
which is a more narrow
necessary
innovative
to
constitute a
Properties Co.,
term in that it requires regulatory
"clear and unmistakable disavowal."
725 F.3d at 1322.
Anova's statements
3M
to
the PTO focus on the fact that its patents, unlike the prior art,
involving aggregating funds of multiple investors prior to depositing
them in order to create a more stable funds source.
Such statements
do not clearly disavow the practice of aggregating funds from multiple
individual investors prior to depositing them.
38
classification as
below,
a
"core deposit."
For
the reasons
the Court rejects Promontory's efforts
discussed
to equate the two
terms, and adopts Anova's proposed construction.
Anova's
but not
patents
equivalent,
expressly
provide
definitions
for
the
following
"core deposit"
similar,
and
"stable
funds":
Core deposit: A class of deposits deemed by an agency,
such as
the FDIC,
to
fluctuation
in
total
be stable (constant, minimum
amount,
and
available
at
a
reasonable cost).
Stable funds:
Pooled funds
offered to commercial banks
that preferably do not fluctuate
amount as the interest rate changes.
'099
3:37-40,
57-59
(emphasis
require relative stability of
"core
deposit"
has
a
added).
the
more
significantly
Both
in
terms
plainly
funds being discussed,
restricted
definition
but a
because
regardless of how steady/unfluctuating a specific funding source
proves
such
to be,
source
specification
distinct
if it
cannot
in
does
be
each
definitions
not
satisfy regulatory requirements,
deemed
of
"core."13
Anova's
for such
The
patents
distinct
fact
expressly
terms
goes
that
the
provides
a long way
toward demonstrating that such terms have distinct meanings.
Turning
patent,
each
to
the
of
language
the
three
of
the
claims,
independent
"stable funds source" multiple times,
in
claims
mentions
Anova's
'372
references
a
"stable deposits"
13 Based on the comments of both parties at the Markman hearing, it
appears
to
the Court
that
one skilled in the art would consider both
"core deposits" and "stable deposits" to be desirable to banks.
39
once,
and makes no mention whatsoever of
dependent claims refer back to
or
product
and
add
the
commercial banks report
core deposits."
Anova
used
and
that
restrictive
used
the
separately
Fiber
funds
source"
Composites,
(discussing
"based
on
phrases
26.14
the
'the
LLC,
474
term
"stable
intended.
See
F.3d
1369
of
sense
1361,
claim
when
that
intended,
deposits"
Andersen
(Fed.
and
Corp.
Cir.
different
v.
2007)
which
is
words
or
used in separate claims are presumed to indicate that
the claims have different meanings and scope'"
Tech.
the patentee
differentiation,"
notion
the
the accounts as
that
"core deposits"
defined
when
"doctrine
common
term
"wherein
The Court agrees with
such claim language demonstrates
more
"stable
limitation
funds deposited in
'372 Claims 13,
the
Two
the previously disclosed method
additional
the
"core deposits."
Inc.
v.
Surgical
Dynamics,
Inc.,
177
(quoting Karlin
F.3d
968,
971-72
(Fed. Cir. 1999))); Phillips, 415 F.3d at 1315 (noting that "the
presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is
not present in the independent claim").
that the express reference in the claims
14 A review of the
Promontory's contention
to "core deposits"
'099 patent reveals a similar pattern,
is
use of
"stable funds source" and "stable deposits" in all the independent
claims, and a reference to funds being reported as "core deposits"
found in two dependent claims.
'099 Claims 1-2, 5, 7, 11-12, 15.
In
the '651 and '560 patents, many but not all claims reference "stable
funds"; however,
no claims reference "stable deposits" or "core
deposits."
40
included to reflect the "reporting" of such deposits as core,
as
contrasted with the qualification of
is
such deposits
as
core,
not particularly compelling.15
A
review
section,
of
the
specification,
beyond
the
definition
adds further support for the rejection of Promontory's
proposal
and
the
Although
the
adoption
Court
has
of
Anova's
before
it
prosed
three
construction.
slightly
different
specifications,16 to the extent they discuss "core deposits" and
"stable
deposits/stable
funds
sources,"
the
patents
appear
relatively consistent in their separate treatment of such terms.
Turning to the
'372 patent,
benefit
to
the final sentence of the "Abstract"
explains
the
the
banks
of
the
claimed
methods
and
systems:
"The commercial banks have access to a stable source of
funds that banking regulators may permit to be treated as core
deposits."
'372 Abstract
(emphas is added).
The
"Background
Art" section of the specification likewise explains as follows:
In the banking industry,
it is desirable to maintain a
certain percentage of core deposits.
Core deposits
are deposits that do not change significantly in
amount with fluctuations in the interest rate paid on
the deposits.
Savings account deposits are one
example
States,
bank's
of a bank's core
the percentage of
ability
to
deposits.
In the United
core deposits affects the
maintain
a
favorable
regulatory
rating.
15 Promontory offers no explanation as to why a bank would not report
deposits that qualify as "core deposits" to the appropriate regulatory
agency because,
as explained by the parties,
doing so only benefits
such bank.
16 The '651 patent and '560 patent share a common specification.
41
In addition to core deposits, banks often rely on noncore funding sources, such as brokered CDs.
Brokered
CDs are offered by a bank to retail customers through
a deposit broker.
Brokered CDs are less stable as a
source of funds for banks than core deposits because
depositors in brokered CDs are typically sensitive to
interest rate fluctuations.
Another problem with using brokered CDs to obtain cash
is that in the United States, if a bank maintains too
high of a percentage of brokered deposits, the bank
may be sanctioned by a regulatory agency, such as the
Federal Reserve for federally chartered banks or a
state banking agency for state
chartered banks.
Yet
another
problem
associated
with
using
brokered
deposits is that banks are required to pay a broker's
commission for brokered deposits.
Thus,
in the
banking industry, there exist [sic] a need for a new
way for banks to obtain stable funds.
'372 1:19-41
(emphasis added).
consistent with Anova's
between
stable
Such introductory comments are
contention
deposits
and
core
that
there
deposits,
is
and
a
difference
even
if
not
deemed "core" by a regulatory agency, banks benefit from "stable
deposits/stable funds sources."
Another reference to "core deposits" in the specification
that supports Anova is the statement that the claimed invention
allows banks to "obtain stable money for core deposits and term
funds"
which
percentages
likelihood
allows
of
of
brokered
a
(emphasis added).
broader than
Additionally,
commercial
deposits
favorable
banks
and
regulatory
to
thereby
rating."
"reduce
their
increase
'372
the
7:8-12
Such language suggests that "stable money" is
"core deposits"
because it includes
such phrasing suggests
42
that all
"term funds."
"stable money"
helps
improve
a
bank's
likelihood
of
obtaining
a
favorable
regulatory ruling, even if such deposits are not deemed "core."17
Additional references in the specification to
do
not
suggest
interchangeable
"stable" and
"core
deposits"
use
of
such
terms,
nor do they in any way suggest that a system designed as
claimed must necessarily achieve a deposit that is approved as
"core"
by
appears
to
the FDIC.
be
the
Such a
rating is
aspirational
goal
of
clearly
the
desirable,
claimed
and
invention.
However, the intrinsic evidence does not suggest that achieving
"core" status is a requirement,
except where expressly indicated
in the language of the claims.
Accordingly,
of the intrinsic record,
after consideration
the Court rejects Promontory's efforts
to read "core deposit" into the construction of "stable deposit"
or "stable funds source." 18
17 Such statements also lend context to the specification's earlier
reference to the claimed invention relating to methods, systems, and
computer program products that provide commercial banks with deposit
funds
that
"may
be
stable deposits."
found that
permitted by regulatory authorities
'372 1:7-15 (emphasis added).
to count
as
Although the Court
counsel for neither party provided a clear answer at the
Markman hearing to the Court's inquiry regarding
formal regulatory definition of "stable deposits,"
other various regulatory testing methods discussed
minimum revealed that regulatory agencies evaluate
whether there is a
the algorithms and
by the parties at a
the stability of a
bank's deposits.
It is also abundantly clear that the more stable the
regulatory agency deems the deposits, the better it is for the bank.
18 As an exhibit to its opening claim construction brief, Promontory
submitted a prosecution history document from what appears from the
application number to be Anova's '099 patent.
Promontory Markman
Brief Ex. 16, ECF No. 36-17.
Such filing before the PTO indicates
that Anova modified
the previously asserted claims
to
eliminate the
claim language "usable by the commercial banks as core deposits" and
replaced it with "usable by the commercial banks as stable deposits."
id.
at
2.
Such evidence only bolsters
43
the Court's above conclusion
As
to
the
suitability
Promontory asserts
it
does
not
deposit
Promontory's
Anova's
sufficient
is
standard
"stable."
indefiniteness
construction
removes
the
Even with such change,
is
to
word
construction,
indefinite because
determine whether a
Apparently
argument,
definition for "stable funds"
construction
proposed
that such construction is
create a
particular
of
in
response
Anova's
"preferably"
from
to
proposed
the
express
that is provided in the patents.
Promontory argues
unworkable and will
experts" to define stability.19
that Anova's proposed
result
in a
"battle of
the
Having considered the parties'
briefs and arguments on such issue,
the Court finds that Anova's
proposal is sufficiently definite to assist the trier of fact in
this
case.
proposed
Although
Promontory
construction
does
not
appears
provide
correct
a
that Anova's
narrowly
delineated
definition such that any investment can be instantly classified
as
"stable"
or
"unstable,"
such
fact
does
not
mean
that
one
skilled in the art would not understand such term as used in the
claims.
See Datamize, LLC v.
1342, 1347
(Fed Cir.
2005)
Plumtree Software, Inc., 417 F.3d
("[T]he purpose of the definiteness
that Anova did not use such terms interchangeably,
but instead used
the term "stable" when it meant stable, and "core" when it meant core.
19 Promontory's argument that Anova's patents'
express definition of
"stable funds" is too broad to clearly define what is being referenced
is not unlike Anova's argument that Promontory's patents' definition
of "processor" is too broad to clearly define what is being
referenced.
should not
"processor,"
Just as
be
read
the
this Court concluded that additional limitations
into
Court
Promontory's
concludes
that
"lexicographer"
additional
definition
limitations
of
should
not be read into Anova's "lexicographer" definition of "stable funds."
44
requirement is to ensure that the claims delineate the scope of
the invention using language that adequately notifies the public
of
the
Inc.
patentee's
v.
Int'l
2003))).
the
As
right
Trade
the
the
funds
341
of
of
various
would
be
on
notice
as
1338
patents
sources,
such
depositors
appears to the Court that a laymen,
art,
funds
creates
Honeywell
1332,
Anova's
"stable"
invention
(citing
F.3d
specification of
patented
aggregating
exclude."
Comm'n,
need for new types
that
to
(Fed.
to
Cir.
acknowledge
and explain
stability
prior
Int'l,
through
deposit,
it
let alone one skilled in the
to
the
scope
of
the
claims.
Accordingly, Promontory's indefiniteness argument fails.
As
Promontory
does
not
offer
a
suitable
construction
of
this term that might somehow eliminate some of the "gray area"
that
Promontory
construction,
construction.
the
contends
Court
Anova's
is
created
largely
proposal
by
adopts
resolves
Anova's
Anova's
the
broad
proposed
parties'
claim
dispute and provides a workable definition of
the term that can
be
fact.
understood and
does, however,
applied by
the
finder
of
agree with Promontory (and Anova)
The
Court
that the word
"preferably" should not be included in the construction adopted
by the Court.
Furthermore, although the above analysis jointly
addresses the construction of
"stable funds source"
and "stable
deposits," as to the former,
the Court agrees with Promontory
that Anova's patents expressly define "stable funds" as "pooled"
45
funds.
'099
3:57-59.
As
Anova
has
failed
to
offer
any
compelling justification for dropping the word "pooled" from the
construction
of
"stable
funds
lexicographer definition,
patents,
the
Court
source,"
which appears
inserts
the
word
based
in all
on
Anova's
own
four of Anova's
"pooled"
into
Anova's
proposed definition for "stable funds source."
4.
"aggregating, prior to the depositing of
available for deposit . . . the deposit needs"
the
funds
a. Proposed Constructions & Court Ruling
Promontory: "Combining from disparate sources amounts of
funds desired to be deposited in order to provide a stable
funds source, prior to depositing the funds in one or more
commercial bank accounts, in order to achieve a higher
yield, and where the funds are not deposited upon receipt
in accordance with depositor's preferences and amounts of
the depositor's funds already deposited with particular
banks"
Anova: "Combining from disparate sources amounts of funds
desired to be deposited in order to provide a stable funds
source, prior to depositing the funds in one or more
commercial bank accounts"
Court:
"Combining
from disparate
sources
amounts
of
funds
desired to be deposited in order to provide a stable funds
source,
prior
to
depositing
the
funds
in
one
or
more
commercial bank accounts"
b.
Discussion
A comparison of the parties'
proposed constructions reveals
that the parties are in agreement with respect to the first half
of
Promontory's
proposal,
but
that Promontory is seeking to
engraft two additional requirements onto such construction:
(1)
that the funds are not deposited upon receipt in accordance with
46
the
depositor's
preferences;
and
aggregated in order
to
Promontory,
such additional
based
both of
on
statements
prosecution.
achieve
Anova
a
(2)
that
the
higher yield.
made
requirements
to
the
PTO
For the reasons discussed below,
Promontory's proposed additions,
As
funds
are
argued by
are necessary
during
patent
the Court rejects
and adopts as
its construction
the agreed upon language.
i. "where the funds are not deposited upon receipt
in accordance with depositor's preferences . . ."
As
Anova
argues
prosecution history
in
its
relied
on
reply
by
brief,
a
Promontory
review
reveals
of
the
that
the
disputed statements were made by Anova to the PTO in order to
demonstrate that, unlike the prior art,
Anova's patents cover a
system/method that combines funds from disparate sources prior
to depositing such funds.
Such pre-deposit combination helps
provide a more stable funds source, which both benefits banks,
and benefits investors or investor groups because it makes their
investment more desirable to banks.
It is not entirely clear
why Anova did not stop after saying "[the prior art] discloses
that
funds
from
individual
receipt,"
but
instead
depositor
preferences
already deposited with
Brief Ex.
16 at 14,
went
and
depositors
on
to
amounts
particular
ECF No. 36-17.
are
of
upon
"in
say
deposited
accordance
with
the
banks."
However,
depositor's
funds
Promontory Markman
it is clear from
the context of such writing that it was the first part of that
47
sentence
that
was
advanced by Anova.
stating:
from
one
"Thus,
the
primary
Notably,
because
depositor
other depositors,
are
[the
focus
the
argument
being
Anova summarized such paragraph by
prior
art]
discloses
without
deposited
[the prior
of
regard
art]
teaches
away
that
to
funds
funds
from a
of
system
that aggregates funds from plural different depositor groups as
claimed."
Id.
After considering the context of the document relied on by
Promontory,
the
Court
agrees
with
Anova
that
the
distinction
being made before the PTO was "not that the subject matter of
the
application
never
deposited
funds
from
depositors
in
accordance with their preferences and amounts already on deposit
at other banks,"
Anova Markman Reply 25, but rather,
that
the
prior art never envisioned aggregation of funds prior to deposit
as claimed in Anova's application, see 3M Innovative Properties
Co.,
725
"warn[s]
F.3d
that,
at
1326
because
(indicating
that
Federal
Circuit
the prosecution history represents
ongoing negotiation between the PTO and the inventor,
law
an
it often
lacks the clarity of the specification and thus is less useful
for claim construction purposes")
citations omitted).
(internal quotation marks and
Accordingly, for the same reasons that this
Court previously rejected both Anova's and Promontory's efforts
to demonstrate that the other party disavowed claim scope during
prosecution,
the
Court
finds
that
48
no
clear
disavowal
occurred
that impacts the construction of the instant term.
Because the
portion of the construction that is agreed upon by both parties
already
clearly
must
aggregated
be
indicates
"prior
that
to"
funds
from
multiple
being deposited,
the
investors
additional
limitation sought by Promontory is unnecessary and is therefore
rejected
by
the
Rous sel,
Inc.,
Court.
314
See
F.3d
Amgen
1313,
1325
Inc.
(Fed.
v.
Cir.
Hoechst
2003)
Marion
("'It
is
improper for a court to add extraneous limitations to a claim,
that
is
limitations
added
wholly
apart
from
any
need
to
interpret what the patentee meant by particular words or phrases
in the claim.'"
F.3d 948,
(quoting Hoganas AB v. Dresser Indus.,
950 (Fed.
Inc.,
9
Cir. 1993))).
ii. "in order to earn a higher yield"
The
Court
likewise
rejects
Promontory's
proposal
to read
into the claims the additional requirement that aggregation of
fund sources prior
yield."
Again,
document
relied
to deposit must always generate
consideration of the context of the prosecution
on
by
Promontory
reveals
sought by Promontory is not warranted.
Anova's
argument before
the
higher yield, but rather,
provided
under
"a higher
the
prior
PTO was
that
Notably,
not
the
limitation
the essence of
focused on
earning a
focused on the type of services being
art
as
contrasted
with
the
claimed
invention.
Anova explained to the PTO that while the prior art
focused on
a
"bank to bank"
deposit placement system,
49
Anova's
invention
was
a
deposit
"depositor to bank"
"broker"
service.
As
system
that
explained to
provides
the PTO,
a
Anova's
system "sets the rates for both the depositor and the receiving
banks" and in essence matches deposits seeking "FDIC insurance,
liquidity
and
aggregated higher
yield"
lower cost wholesale funding source."
Ex. 16 at 15-16.
with
banks
seeking
"a
Promontory Markman Brief,
The fact that Anova "summarized" its argument
to the PTO in a manner that referenced its invention as "earning
a higher yield" through aggregating deposits is a far cry from a
clear
disavowal
of
claim
scope
requiring
that
such
system
necessarily earn a higher yield.
The
Court
therefore
finds
that
Anova's
statements
to
the
PTO regarding the foreseeable benefits of
its invention are not
an express relinquishment of claim scope.
See Epistar Corp. v.
International Trade Comm'n, 566 F.3d 1321, 1334 (Fed. Cir. 2009)
(indicating that,
to be successful, the defendant's prosecution
history disavowal argument must "overcome a heavy presumption
that
claim
meaning"
terms
by
carry
demonstrating
relinquished claim scope"
334
F.3d
1314,
Promontory's
their
1323
statements
that
ordinary
"the
and
patentee
customary
expressly
(citing Omega Eng'g v. Raytek Corp.,
(Fed.
to
full
Cir.
the
2003))).
PTO
Notably,
during
just
prosecution
of
as
its
patents were not focused on the limitation that Anova sought to
read
into
the
claims,
Anova's
statements
50
to
the
PTO were
not
focused
on
read into
the
the
"higher
yield"
requirement
instant claim.
Rather,
Promontory
references
seeks
to a
to
"higher
yield" are properly interpreted as Anova's explanation of one of
the
benefits
patent.
None
of
the
of
newly
Anova's
conceptualized
statements,
system
however,
it
sought
to
clearly indicate
that a higher yield must be achieved in each and every instance
when
a
new
Accordingly,
deposit
the
is
Court
made
rejects
through
Promontory's
additional limitations into this claim,
agreed upon portion
of
the
the parties'
claimed
efforts
and adopts
proposals
system.
to
read
the initial
without
further
restriction.
5. "determine whether the first set of requirements matches
the second set of requirements" / "determining whether the
first
set of requirements matches the
second set of
requirements"
a. Proposed Constructions & Court Ruling
Promontory:
Indefinite
Anova: Plain meaning
Court: Plain meaning
b.
Discussion
Promontory's argument as to the instant term is grounded in
a single passage in the specification of Anova's
patents which discusses
invention.
Specifically,
'651 and '560
an exemplary embodiment of
the
claimed
in describing "one embodiment" of the
51
process that "matches" the requirements of the supply and demand
for funds, Anova's patents describe the following:
In one embodiment . . . [o]n control center 106 may
reside a highly flexible allocation model (software)
driven
by
a
matrix
of
parameters
representing
investors'
properties,
account
types,
government
regulations,
geographical
limits,
applies
business
rules,
reconciles
pending
transactions
against
existing databases (i.e. bank holding reports), and a
decision tree which solves equations that enable the
matching the supply of funds with demand for such
funds in real time.
One example of such a model is
ANOVA Corporation's Parametric Model for Allocation of
Investment Funds
'651 6:52-63.
as
used
in
(PAMAIF).RTM.
Promontory does not contend that the word "match"
Anova's
claims
illuminating comparison,
similarly
phrased
Promontory's
meaning"
own patents
Promontory takes
invention,
ambiguous,
matching
is
See
definite
supra
the position that
own proprietary PAMAIF
the
itself
and
in
Promontory previously argued that
"order
construction.
is
process"
and subject
Part
to a
III.A.3.
the
in
"plain
However,
through referencing Anova's
"allocation method"
without
claimed
an
explaining
how
as
one embodiment of
Anova's
algorithm
operates, Anova has rendered its otherwise clear claim language
indefinite.
As described below,
the Court rejects Promontory's
argument and adopts a plain meaning construction of
the instant
term.
A careful
reveals
that
reading of
although
the specification of
the
proprietary
"allocation
mentioned in the specification is not described,
52
Anova's patents
method"
nothing in the
specification
suggests
that
such
method
operates
in
a
manner
that in any way changes the plain meaning of the claim language
that
requires
second
set
"matching"
of
a
first
requirements.
set
of
requirements
Rather,
the
with
described
a
Anova
allocation method acknowledges that different depositors qualify
for
different
place
investment
additional
requiring that
7:3.
The
and
products,
restrictions
on
certain
their
investors
investments,
the investment remain in the state.
referenced
Anova
proprietary
although not described in detail,
may
such
'651
allocation
as
6:64-
method,
is sufficiently described to
illustrate to one skilled in the art that it is but one example
of
how
the
claimed
system
"matches"
the
requirements
of
the
suppliers of funds with the requirements of the banks receiving
such funds.
1296,
See Retractable Techs.,
1305
(Fed.
should
"strive
rather
than
Cir.
to
2011)
capture
strictly
Inc.
(indicating
the
scope
limit[ing]
of
the
mention
system
the
Markman
in
the
undercut
hearing,
the
of
otherwise
the outer bounds
indefinite
claim
language
argued
Anova's
clear
subject
53
F.3d
courts
invention,
the
claims
that
"PAMAIF"
language
of
the
to
to
mere
allocation
the
"PAMAIF match"
of such a match,
not
federal
actual
of
653
415 F.3d at 1323-24)).
because it created the possibility of a
defining
the
Promontory
specification
Becton,
that
scope
disclosed embodiments" (citing Phillips,
At
v.
claims
without
thus resulting in
construction.
Such
argument,
however,
both
discounts
the
otherwise
clear
claim
language indicating that a first set of requirements is matched
with
a
second
set
indicating that
to
trump
of
the
requirements,
v. Medical Technology Inc.,
that
characteristic
the
of
263 F.3d 1356,
district
a
disclosed
court
or
preferred
Cir.
("As
elements
do
not
matter
narrow
of
the
1367
erred
see also In re Johnston,
a
the
case
See Generation II Orthotics
claim term);
2006)
ignores
law
specification generally should not be read
the claim language.
(finding
and
(Fed.
by
Cir.
claim because
2001)
"importing
embodiment"
435 F.3d 1381,
linguistic
Inc.
into
1384
precision,
they can
a
a
(Fed.
optional
always
be
omitted.").
Although the patent does
PAMAIF
allocation
specification,
deposits"
with
method
not
describe exactly how Anova's
operates,20
according
to
the
it operates in a manner that "match[es] pending
"bank
demand"
for
such
deposits.
'651
7:3-9.
Although such proprietary method could conceivably place varying
weight
on
metrics,
any
number
of
factors,
regardless
of
the
precise
such described method is plainly consistent with
the
claim language indicating that a first set of requirements must
20 As a means for comparison, the specification to Promontory's patents
similarly discusses a "sophisticated algorithm that automatically
matches orders based on a pre-defined set of
rules," yet
the
specification does not explain the pre-defined rules or how they match
depositors with banks,
and instead only broadly defines a nonexhaustive list of variables sought to be "optimized." '522 16:6617:7.
Arguably, such language "merely touts the [sophistication] of
[the algorithm] without explaining how it works."
Promontory Markman
Brief 22,
ECF No.
36.
54
be "matched" with a second set of requirements.
Nothing in the
specification suggests,
that PAMAIF in
any
way
process
broadens
of
Wireless
the
"matching"
requirements
of
as posited by Promontory,
common
the
requirements
party
B.
614
F.3d
Corp.,
understanding
Cf.
Ring
1354,
the
party
of
of
A
Inc.
v.
Plus,
1364-65
(Fed.
familiar
with
the
Cingular
Cir.
2010)
(affirming the district court's broad construction of the claim
term "sound presentation"
and noting that
the plaintiff failed
to identify any support in the specification for limiting such
"ordinary
term
with
a
plain
Promontory's position is rejected,
very
limited discussion of
PAMAIF
meaning").
Accordingly,
and the Court finds that the
in
the specification as it
relates to a single embodiment of the invention does not operate
to make
indefinite
the easily understood
claim
language that
appears in every independent claim of the '651 and '560 patents.
The Court thus agrees with Anova and adopts a "plain meaning"
construction of the instant term.
IV.
For
Opinion
the
and
reasons
Order
as
set
the
CONCLUSION
forth
above,
construction
the
of
Court
the
issues
relevant
this
claim
terms in the thirteen patents at issue in this case.
The Clerk is REQUESTED to send a copy of this Opinion and
Order to all counsel of record.
55
It
IS
SO
ORDERED
/S/
Mark S.
UNITED
Norfolk,
Virginia
January QJ{-
, 2014
56
STATES
Davis
DISTRICT JUDGE
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?