Promontory Interfinancial Network, LLC v. Anova Financial Corporation, No. 2:2013cv00243 - Document 66 (E.D. Va. 2014)

Court Description: OPINION AND ORDER. (Signed by District Judge Mark S. Davis on 1/24/2014). (bgra)

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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 repeatedly stated that "the words their ordinary and ordinary "the given customary and 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 of Patent 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. the meaning inventor limited the that the purpose history part of claim disclaimed scope of represents an the 595 F.3d 1340, eBay, Inc., The useful Trading Technologies 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 less purposes.'" than same specification is course by (Fed. Cir. 2005) is 'it often lacks thus the 90 F.3d at 1582-83); the PTO and the inventor, and in consulting "At language invention narrower construction interpretation). prosecution history the Inc., 402 F.3d 1371, 1384 (indicating as claim invention (citing Vitronics, Chimie v. PPG Indus., the understood the claim of 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 specification includes a it the meaning to 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 patent only one if contained the PTO. 'processor' 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 PPG F.3d 1351, 1355 ambiguity need not "facilitate product"; a Industries (Fed. be comparison rather, after v. Cir. resolved Guardian 1998) by between defining (recognizing the the Industries Court claim a claim Corp., that all order in and the to the "with accused whatever specificity and precision" that is warranted in a specific case, "the the task of accused determining product is whether the for finder the construed claim 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 deposit The 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 Corp., 522 F.3d at governing 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 indicates is goal full systems/methods, following insurance such goal is Promontory's a aspirational, nine patents. that although the claimed and thus, need not 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 521 claims, the Finjan, 626 (Fed. 1206-07 F.3d 02 Micro Int'l Ltd. 1351, raise an actual resolve that dispute."); F.3d 1197, Cf. 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)" and meaning Liebel-Flarsheim Co. Cir. term in v. than Medrad, (indicating that "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, patent the phrase adherence to a "pooled depositor group" dependent refers claim 9 as do each of Claims 10-13, 20, which are all dependent on Claim 9. 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. as argued by Promontory, 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, vis-a-vis it interpreted as could be other claims terms "pooled in the the phrasing of '651 depositor an example patent group" the claims of support and that precede interchangeable the use, finding that the group" are used "depositor distinctively in a manner that does not suggest interchangeable use. Specifically, dependent Claim limitation 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 of and suggesting by groups" that the other 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 fact may be limit the Services F.3d 1270, 2003) invention the Digital-Vending Inc., Cir. 1274 scope Int'l, (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 that more restrictive and used the separately Fiber funds source" Composites, (discussing "based on phrases 26.14 the 'the LLC, 474 term "stable when Andersen F.3d 1369 (Fed. of sense claim that different and Corp. Cir. differentiation," notion intended, deposits" See 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 intended. 1361, the the accounts as that "core deposits" defined when "doctrine common term "wherein The Court agrees with such claim language demonstrates the "stable limitation funds deposited in '372 Claims 13, used 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 funds creates various Honeywell 1332, Anova's "stable" invention (citing F.3d specification of patented aggregating exclude." Comm'n, need for new types that to patents sources, such depositors 1338 (Fed. to Cir. acknowledge and explain stability prior Int'l, through deposit, it appears to the Court that a laymen, let alone one skilled in the art, the would be on notice as to 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 to deposit must always generate "a higher yield." Again, consideration of the context of the prosecution document relied on by Promontory reveals sought by Promontory is not warranted. Anova's argument before the higher yield, but rather, provided under 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

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