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Promontory Interfinancial Network, LLC v. Anova Financial Corp.

United States District Court, Fourth Circuit

January 24, 2014



MARK S. DAVIS, District Judge.

This matter is before the Court following a Markman hearing, conducted for the purpose of construing eight disputed claim terms. After careful consideration of the briefs submitted by the parties and the arguments advanced at the Markman hearing, the Court issues this Opinion and Order detailing the claim constructions in this case.


At issue in this case are nine related patents held by plaintiff Promontory Interfinancial Network, LLC, ("Promontory"), [1] and four related patents held by defendant Anova Financial Corporation ("Anova").[2] Generally speaking, both parties' patents are directed toward a financial transaction system/method that facilitates the depositing of funds in banks through matching depositors with banks. Promontory's patents claim methods and systems that preserve a depositor's direct relationship with a single bank but obtain the 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. Anova's patents claim methods and systems that provide liquid 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, each party has asserted that the other party is violating the first party's valid and enforceable patents. The parties have identified numerous claim terms that at least one party contends require construction by the Court. However, the parties have stipulated to constructions for thirteen terms and reduced the outstanding dispute to eight claim terms. This Court's Markman construction of all terms identified as requiring construction is set forth below.


In Markman v. Westview Instruments, the United States Supreme Court succinctly explained the basis for, and importance of, claim construction:

The Constitution empowers Congress "[t]o promote the 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 entitled, [and] to apprise the public of what is still open to them." McClain v. Ortmayer , 141 U.S. 419, 424 (1891). Under the modern American system, these objectives are served by two distinct elements of a 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 a noncritical change, " Schwartz, supra, at 82....
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 of "what the words in the claim mean." Schwartz, supra, at 80; see also 3 Lipscomb § 11:2, at 288-290.

Markman v. Westview Instruments , 517 U.S. 370, 373-74 (1996).

It is well-settled that a determination of infringement requires a two-step analysis: "First, the court determines the scope and meaning of the patent claims asserted"; and second, "the properly construed claims are compared to the allegedly infringing device." Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) (citing Markman , 517 U.S. at 371-73). In conducting this analysis, it must be remembered that fl[i]t is a bedrock principle' of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc. , 381 F.3d 1111, 1115 (Fed. Cir. 2004)); see Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("First, we look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention.").

A. Claim Construction Principles

The Federal Circuit has repeatedly stated that "the words of a claim are generally given their ordinary and customary meaning, '" and that "the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips , 415 F.3d at 1312-13 (quoting Vitronics , 90 F.3d at 1582). This provides "an objective baseline from which to begin claim interpretation" and is based upon "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 is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field. The inventor's words that are used to 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 Multiform Desiccants, Inc. v. Medzam, Ltd. , 133 F.3d 1473, 1477 (Fed. Cir. 1998)). However, "[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 claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.'" Acumed LLC v. Stryker Corp. , 483 F.3d 800, 805 (Fed. Cir. 2007) (quoting Phillips , 415 F.3d at 1314). Finally, when construing claim terms and phrases, the Court cannot add or subtract words from the claims or appeal to "abstract policy considerations" to broaden or narrow their scope. SmithKline Beecham Corp. v. Apotex Corp. , 403 F.3d 1331, 1339-40 (Fed. Cir. 2005); see Quantum Corp. v. Rodime, PLC , 65 F.3d 1577, 1584 (Fed. Cir. 1995) ("[I]t is well settled that no matter how great the temptations of fairness or policy making, courts do not redraft claims.").

B. Types of Evidence to Be Considered

In determining the meaning of disputed terms or phrases, the Court first examines the claim language. The Federal Circuit has stated that "the claims themselves provide substantial guidance as to the meaning of particular claim terms, " and "[b)ecause claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims." Phillips , 415 F.3d at 1314.

The claims, however, "do not stand alone" and "must be read in view of the specification, of which they are a part.'" Id . at 1315 (quoting Markman v. Westview Instruments, Inc. , 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)); see also Vitronics , 90 F.3d at 1582 ("[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."); Multiform Dessicants , 133 F.3d at 1478 ("The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history."). The specification, as required by statute, describes the manner and process of making and using the patented invention, and "[t]hus claims must be construed so as to be consistent with the specification..." Merck & Co. v. Teva Pharms. USA, Inc. , 347 F.3d 1367, 1371 (Fed. Cir. 2003); see Markman , 517 U.S. at 389 (referencing the "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 ("[O]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 to the claims and specification, the Court considers any relevant prosecution history, which consists of the complete record of the proceedings before the Patent and Trademark Office ("PTO"), 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 inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id . (citing Vitronics , 90 F.3d at 1582-83); see Chimie v. PPG Indus., Inc. , 402 F.3d 1371, 1384 (Fed. Cir. 2005) (indicating that the purpose of consulting the prosecution history as part of claim construction is to exclude any disclaimed interpretation). "At the same time, because prosecution history represents an ongoing negotiation between the PTO and the inventor, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.'" Trading Technologies Int'l, Inc. v. eSpeed, Inc. , 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Netcraft Corp. v. eBay, Inc. , 549 F.3d 1394, 1401 (Fed. Cir. 2008)).

The Court may also examine extrinsic evidence, which includes "all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman , 52 F.3d at 980. For example, technical dictionaries may provide the Court 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 Circuit has] explained that it is less significant than the intrinsic record in determining the legally operative meaning of claim language.'" Phillips , 415 F.3d at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp. , 388 F.3d 858, 862 (Fed. Cir. 2004)).

Finally, with respect to general usage dictionaries, the Federal Circuit has noted that "[d]ictionaries or comparable sources are often useful to assist in understanding the commonly understood meaning of words and have been used.. in claim interpretation, " and that "[a] dictionary definition has the value of being an unbiased source accessible to the public in advance of litigation.'" Phillips , 415 F.3d at 1322 (quoting Vitronics , 90 F.3d at 1585).[3] However, the Federal Circuit cautions that "a general-usage dictionary cannot overcome artspecific evidence of the meaning' of a claim term, " that "the 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." Phillips , 415 F.3d at 1322 (quoting Vanderlande Indus. Nederland BV v. Int'l Trade Comm'n , 366 F.3d 1311, 1321 (Fed. Cir. 2004)). Additionally, "different dictionaries may contain somewhat different sets of definitions for the same words, " and "[a] claim should not rise or fall based upon the preferences of a particular dictionary editor, or the court's independent decision, uninformed by the specification, to 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.


In advance of the Markman hearing conducted by this Court, the parties submitted a joint claim construction chart that includes thirteen agreed upon claim terms and eight disputed claim terms. ECF No. 48-2. Two of the agreed upon terms are found in the Anova patents, and eleven agreed upon terms are found in the Promontory patents. The Court adopts all thirteen of the parties' stipulated constructions of the agreed upon terms.

As to the eight disputed terms, three terms are found in Promontory's patents, and the remaining five terms are found in Anova's patents. The Court begins with the terms found in Promontory's patents.

A. Promontory's Patents

1. "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 are components of an interbank deposit placement system"
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, and serving as subcustodian for Relationship Banks. 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 (indicating that Federal Circuit cases recognize that when the specification includes a "special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.. the inventor's lexicography governs"). Although such definition is not a model of clarity, it was authored and relied upon by the patentee in submitting the patent application, was reviewed by the PTO in advance of the patent's issuance, and is consistent with the remainder of the specification and the claim terms.

In contrast, Anova's proposed definition, although more direct and concise than Promontory's proposal, seeks to read an additional requirement into the disputed term in that it seeks to require that a "processor" is always "a computer." Because neither the specification nor the prosecution history supports the construction proposed by Anova, which seeks to read an additional limitation into such claim, the Court adopts 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 the word "processor" appears numerous times, sometimes in claims reciting a "computer program product" sometimes in claims reciting a "computer implemented method, " and sometimes in claims reciting an "automated method." Across many of such claims, most notably those that expressly recite a computer, it appears from the context of the claim language that the word "processor" frequently refers to a computer (or computer component). However, Promontory is correct that other claims within its patents recite an "automated method" of processing large deposits, making no mention of a computer. See, e.g., 746 Claim 1; see also Nystrom v. TREX Co., Inc. , 424 F.3d 1136, 1143 (Fed. Cir. 2005) ("When different words or phrases are used in separate claims, a difference in meaning is presumed." (citing Tandon Corp. v. United States Int'l Trade Comm'n, F.2d 1017, 1023 (Fed. Cir. 1987))). It is also notable that when the word "automated" is used, it sometimes only appears in the preamble to the claim. Compare 746 Claim 1 ("automated" appears only in preamble), with 057 Claim 1 ("automated" appears in preamble and "automatically" appears in method steps (c) and (d)). Accordingly, not only do certain claims not expressly reference a computer, they also do not necessarily require automation as to all method steps.[4]

Moving beyond the claim language, all of Promontory's nine patents share the same specification, and such intrinsic evidence supports the proposed construction advanced by Promontory. First, the specification includes an express definition of the term "processor" which does not limit such term to a computer, but instead indicates that the functions of the "processor" may be performed by one or more entities. See, e.g., 522 6:41-51 (defining "processor" in the subsection of the specification entitled "Definitions"). Promontory has thus acted as its own lexicographer to define "processor." See 3M Innovative Properties Co. v. Avery Dennison Corp. , 350 F.3d 1365, 1372 (Fed. Cir. 2003) (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." See 522 3:46-49 (indicating that a deposit "may be titled in the name of the Processor (as subcustodian for the bank that placed the order)"); 522 12:32-37 (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 the above, Anova argues that the Court should adopt its proposed construction based on a purported concession made by Promontory during patent prosecution. However, such argument has force only if one considers, in a vacuum, a single sentence contained in a written filing Promontory submitted to the PTO. The statement Anova singles out is: "[T]he processor' referred to throughout the specification, when programmed to perform the steps shown in the flowcharts and diagrams, becomes a special purpose computer, and thereby a new machine." Anova Markman Reply Ex. 1 at 11, ECF No. 44-1. Anova contends that, because such statement references the use of the word processor "throughout the specification, " Promontory engaged in a wholesale disavowal of claim scope in each of its nine patents. Such argument, however, 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 address" a potential rejection of certain claims under the "Oncken" prior art. Id . at 3. The detailed comparison of Promontory's claimed invention and 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, in section six of Promontory's submission to the PTO, Promontory explains that the claims being discussed, Claims 1-20, are not prohibited by 35 U.S.C. § 101 and In re Bilski , 545 F.3d 943 (Fed. Cir. 2008) (en banc) because they are "directed toward a different statutory class of invention, namely a manufacture" as contrasted with a process. Anova Markman Reply Ex. 1 at 10. Promontory then posited an alternative preemptive defense in the event the PTO (improperly) interpreted claims 1-20 as method claims rather than product claims. Promontory noted that, under such hypothetical interpretation, the claims are still patentable because "claims 1-20 recite a computer-implemented process that is clearly tied to a particular machine." Id . at 11. It is only then that Promontory stated that the word "processor" as used throughout the specification, becomes a special purpose computer when programmed to perform the claimed steps. Id . Considering section six of such filing in its entirety, this Court finds that such preemptive comments, made in an effort to thwart a hypothetical rejection that would itself (in the eyes of the filer) be based on a misinterpretation of the very nature of the claims (product vs. method) is insufficient to constitute a clear disavowal of claim scope. See 3M Innovative Properties Co. v. Tredegar Corp. , 725 F.3d 1315, 1322 (Fed. Cir. 2013) (indicating that a court should "not rely on the prosecution history to construe the meaning of the claim to be narrower than it would otherwise be unless a patentee limited or surrendered claim scope through a clear and unmistakable disavowal" (citing Trading Tech. Int'l, 595 F.3d at 1352, Vitronics , 90 F.3d at 1582-83)) (emphasis added).

Third, as noted by Promontory, in the same PTO filing discussed above, Promontory lays out the similarities between the "Oncken" prior art and the claims at issue, noting that each provided for "an entity that manages the distribution (allocation or assignment of a large deposit of funds)." Anova Markman Reply Ex. 1 at 3 (emphasis added). Promontory's filing then states: "In [Promontory's] claimed invention, that entity is the processor that executes instructions to perform the claimed steps." Id . (emphasis added). 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, Promontory's statement to the PTO, when considered in context, does not constitute a "clear and unmistakable" disavowal of claim scope.[5] Accordingly, the Court adopts the broad definition of "processor" set forth in the specification. See Home Diagnostics, Inc. v. LifeScan, Inc. , 381 F.3d 1352, 1357 (Fed. Cir. 2004) ("A patentee may claim an invention broadly and expect enforcement of the full scope of that language absent a clear disavowal or contrary definition in the specification."); PPG Industries v. Guardian Industries Corp. , 156 F.3d 1351, 1355 (Fed. Cir. 1998) (recognizing that all ambiguity need not be resolved by the Court in order to "facilitate a comparison between the claim and the accused product"; rather, after defining a claim "with whatever specificity and precision" that is warranted in a specific case, "the task of determining whether the construed claim reads on the accused product is for the finder of fact"). 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: "performing functions with ...

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