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United States Automobile Association v. Wells Fargo Bank, N.A.

United States District Court, E.D. Texas, Marshall Division

June 13, 2019

UNITED STATES AUTOMOBILE ASSOCIATION, Plaintiff,
v.
WELLS FARGO BANK, N.A., Defendant. Disputed Term Plaintiff's Proposed Construction Defendant's Proposed Construction Disputed Term Plaintiff's Proposed Construction Defendant's Proposed Construction Disputed Term Plaintiff's Proposed Construction Defendant's Proposed Construction Disputed Term Plaintiff's Proposed Construction Defendant's Proposed Construction Disputed Term Plaintiff's Proposed Construction Defendant's Proposed Construction Disputed Term Plaintiff's Proposed Construction Defendant's Proposed Construction Disputed Term Plaintiff's Proposed Construction Defendant's Proposed Construction Disputed Term Plaintiff's Proposed Construction Defendant's Proposed Construction

          CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE.

         Before the Court is the opening claim construction brief of United States Automobile Association (“Plaintiff”) (Dkt. No. 81, filed on April 11, 2019), [1] the response of Wells Fargo Bank, N.A. (“Defendant”) (Dkt. No. 84, filed on April 25, 2019), and Plaintiff's Reply (Dkt. No. 85, filed on May 2, 2019). The Court held a hearing on claim construction on May 23, 2019, after first providing the parties with a list of preliminary constructions of the disputed terms. Having considered the arguments and evidence presented by the parties at the hearing and in their briefing, the Court issues this Order.

         Table of Contents

         I. BACKGROUND ............................................................................................................... 3

         II. LEGAL PRINCIPLES ..................................................................................................... 4

         A. Claim Construction ................................................................................................. 4 B. Departing from the Ordinary Meaning of a Claim Term ........................................ 7

         III. CONSTRUCTION OF DISPUTED TERMS ................................................................. 9

A. The Deposit Terms .................................................................................................. 9
B. “mobile device” and “mobile computing device” ................................................ 18
C. “monitoring criterion” ........................................................................................... 23
D. The Capture Terms ............................................................................................... 28
E. “feedback” and “feedback information” ............................................................... 37
F. “identification information pertaining to the instrument” .................................... 39
G. “indicia” ................................................................................................................ 41
H. “instrument” .......................................................................................................... 44
I. “alignment guide” ................................................................................................. 46

         IV. CONCLUSION ............................................................................................................... 47

         I. BACKGROUND

         Plaintiff alleges infringement of four U.S. Patents: No. 8, 699, 779 (the “'779 Patent”), No. 8, 977, 571 (the “'571 Patent”), No. 9, 366, 517 (the “'517 Patent”), and No. 9, 818, 090 (the “'090 Patent”) (collectively, the “Asserted Patents”). The '779 and '517 Patents (the “'779 Patent Family”) are related through continuation applications and thus share a substantially identical specification (outside the claim sets). The '571 and '090 Patents (the “'571 Patent Family”) are related through continuation applications and thus share a substantially identical specification (outside the claim sets). The '779 Patent Family lists an effective filing date of August 28, 2009. The '571 Patent Family lists an effective filing date of August 21, 2009.

         In general, the Asserted Patents are directed to technology for capturing images of checks or other instruments or documents in a form suitable to serve the purpose of the document in place of the document. The disclosures of the patents are directed primarily to mobile check deposit and thus are directed to systems and methods for capturing check images that are suitable for the check-deposit process. The primary difference between the '571 Patent Family and the '779 Patent Family is in the quality-control aspect of the image capture: the '571 Patent Family focuses on monitoring criteria to ensure quality images, while the '779 Patent Family focuses on an alignment guide to ensure quality images.

         The abstracts of the '571 Patent Family are identical and provide:

An image of a check that is in the field of view of a camera is monitored prior to the image of the check being captured. The camera is associated with a mobile device. When the image of the check in the field of view passes monitoring criteria, an image may be taken by the camera and provided from the mobile device to a financial institution. The image capture may be performed automatically as soon as the image of the check is determined to pass the monitoring criteria. The check may be deposited in a user's bank account based on the image. Any technique for sending the image to the financial institution may be used. Feedback may be provided to the user of the camera regarding the image of the check in the field of view.

         The abstracts of the '779 Patent Family are identical and provide:

An alignment guide may be provided in the field of view of a camera associated with a mobile device used to capture an image of a check. When the image of the check is within the alignment guide in the field of view, an image may be taken by the camera and provided from the mobile device to a financial institution. The alignment guide may be adjustable at the mobile device. The image capture may be performed automatically by the camera or the mobile device as soon as the image of the check is determined to be within the alignment guide. The check may be deposited in a user's bank account based on the image. Any technique for sending the image to the financial institution may be used.

         Claim 1 of the '571 Patent and Claim 9 of the '779 Patent, exemplary monitoring-criterion and alignment-guide claims respectively, recite as follows:

'571 Patent 1
A non-transitory computer-readable medium comprising computer-readable instructions for depositing a check that, when executed by a processor, cause the processor to: monitor an image of the check in a field of view of a camera of a mobile device with respect to a monitoring criterion using an image monitoring and capture module of the mobile device; capture the image of the check with the camera when the image of the check passes the monitoring criterion; and provide the image of the check from the camera to a depository via a communication pathway between the mobile device and the depository.
'779 Patent 10
A non-transitory computer-readable medium comprising instructions for depositing a check, said instructions being executed by a processor of a mobile device to:
project an alignment guide in a display of the mobile device, the display of the mobile device displaying a field of view of a camera of the mobile device; monitor an image of the check that is within the field of view of the camera; determine whether the image of the check aligns with the alignment guide; automatically capture the image of the check when the image of the check is determined to align with the alignment guide; and transmit the image of the check from the mobile device to a deposit system.

         II. LEGAL PRINCIPLES

         A. Claim Construction

         “It 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 Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861. The general rule-subject to certain specific exceptions discussed infra-is that each claim term is construed according to its ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption that claim terms carry their accustomed meaning in the relevant community at the relevant time.”) (vacated on other grounds).

         “The claim construction inquiry … begins and ends in all cases with the actual words of the claim.” Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n all aspects of claim construction, ‘the name of the game is the claim.'” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)). First, a term's context in the asserted claim can be instructive. Phillips, 415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim's meaning, because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term's meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314-15.

         “[C]laims ‘must be read in view of the specification, of which they are a part.'” Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[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.'” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.'” Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the specification-even if it is the only embodiment-into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).

         The prosecution history is another tool to supply the proper context for claim construction because, like the specification, the prosecution history provides evidence of how the U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history may be “unhelpful as an interpretive resource”).

         Although extrinsic evidence can also be useful, 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., 388 F.3d at 862). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent and its prosecution history in determining how to read claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim construction:

In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871) (a patent may be “so interspersed with technical terms and terms of art that the testimony of scientific witnesses is indispensable to a correct understanding of its meaning”). In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the “evidentiary underpinnings” of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015).

         B. Departing from the Ordinary Meaning of a Claim Term

         There are “only two exceptions to [the] general rule” that claim terms are construed according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution.”[2] Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal.”). The standards for finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.

         To act as his own lexicographer, the patentee must “clearly set forth a definition of the disputed claim term, ” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee's lexicography must appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.

         To disavow or disclaim the full scope of a claim term, the patentee's statements in the specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.”). “Where an applicant's statements are amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).

         III. CONSTRUCTION OF DISPUTED TERMS

         A. The Deposit Terms

Disputed Term [3]
Plaintiff's Proposed Construction
Defendant's Proposed Construction

“A non-transitory computer-readable medium comprising [computer-readable] instructions for depositing a check”

• '779 Patent Claim 10

• '571 Patent Claims 1, 9

The preamble is limiting.

The preamble is not limiting.

“A system for depositing a check”

• '779 Patent Claim 1

The preamble is limiting.

The preamble is not limiting.

“depositing a check”

• '779 Patent Claims 1, 10

• '571 Patent Claims 1, 9

No additional construction necessary.

Alternatively:

• provide a check image to a depository for presentment and clearing in order for money to be credited to an account

No construction necessary.

Alternatively:

• provide a check image and/or check information to a depository (such as a bank) for money to be credited to an account

“deposit system”

• '779 Patent Claim 10

• '571 Patent Claim 9

No additional construction necessary.

Alternatively:

• a system that allows for providing a check image for presentment and clearing in order for money to be credited to an account

No construction necessary.

Alternatively:

• a system for providing a check image and/or check information to a depository (such as a bank) for money to be credited to an account

“depository”

• '779 Patent Claim 1

• '571 Patent Claim 1

No additional construction necessary.

Alternatively:

• a bank or other entity that provides check image deposit functionality to a plurality of users. Check image deposit is the act of providing a check image to a depository for presentment and clearing in order for money to be credited to an account

No construction necessary.

Alternatively:

• the entity (such as a bank) to whom a user provides a check image and/or check information for money to be credited to an account

         Because the parties' arguments and proposed constructions with respect to these terms are related, the Court addresses the terms together.

         The Parties' Positions

         Plaintiff submits: The preambles of Claims 1 and 9 of the '571 Patent, Claim 20 of the '090 Patent, and Claims 1, 10, and 19 of the '779 Patent are limiting because they provide antecedent basis for terms in the bodies of the claims and because they recite key features of the inventions of the patents. The deposit terms, namely, “depositing a check, ” “deposit system, ” and “depository, ” refer to a check deposit that inherently includes presentment and clearing of the check. It is only after the check is processed via presentment and clearing, and the funds credited to the appropriate account, that the check is deposited. For check-image deposits, this image must meet certain standards in order to be processed through the deposit of funds. Thus, depositing a check image is a “relatively involved technical process” that is “not amenable to a short construction, but instead best explained to the jury via expert testimony.” Dkt. No. 81 at 6-13, 24- 27.

         In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: '779 Patent figs.8, 9, col.2 ll.24-29, col.3 ll.38-42, col.3 ll.55-58, col.3 l.65 - col.4 l.2, col.4 ll.51-52, col.5 ll.55-58, col.8 l.61 - col.9 l.4, col.10 ll.16-17, col.11 ll.44-51, col.13 ll.44-48, col.14 ll.3-10; '571 Patent figs. 8, 9, col.2 ll.23- 28, col.3 ll.9-12, col.3 ll.37-42, col.3 ll.47-54, col.3 ll.59-61, col.4 ll.17-22, col.7 ll.52-57, col.12 ll.19-25, col.15 ll.43-49, col.16 ll.51-54, col.18 ll.2-6; '571 Patent File Wrapper November 8, 2018 Petition for Covered Business Method Review at 13, CBM2019-00004 (Plaintiff's Ex. 8, Dkt. No. 81-8 at 25); '090 Patent File Wrapper November 8, 2018 Petition for Covered Business Method Review at 13, CBM2019-00002 (Plaintiff's Ex. 9, Dkt. No. 81-9 at 25). Extrinsic evidence: Calman Decl.[4] ¶¶ 55-67, 99 (Plaintiff's Ex. 5, Dkt. No. 81-5); Usapkar Dep.[5] at 40:10- 24 (Plaintiff's Ex. 6, Dkt. No. 81-6); Saffici Decl.[6] at ¶ 19 (Plaintiff's Ex. 7, Dkt. No. 81-7); Saffici Dep.[7] at 18:16-21, 19:14 - 21:3, 21:5-21, 28:9-12, 39:2 - 40:13, 43:25 - 44:10, 46:16 - 47:9 (Plaintiff's Ex. 10, Dkt. No. 81-10); Knight Dep.[8] at 34:16-20, 34:25 - 37:10 (Plaintiff's Ex. 11, Dkt. No. 81-11); Alexander Dep.[9] at 38:17-21 (Plaintiff's Ex. 14, Dkt. No. 81-14).

         Defendant responds: The preambles of Claims 1 and 9 of the '571 Patent, and Claims 1 and 10 of the '779 Patent are not limiting because the claim bodies are structurally complete without reference to the preambles. (Defendant notes that Claims 14-20 of the '571 Patent, Claim 20 of the '090 Patent, Claims 19-23 of the '779 Patent, and Claims 2-4, 11, 15, and 16 of the '517 Patent have been statutorily disclaimed and need not be construed.) Even if the preambles provide antecedent basis for some terms, the rest of the preambles are not thereby limiting. Specifically, even if “check” in the preambles is limiting, the “deposit” aspect of the preambles is not. As used in the Asserted Patents, “deposit” is distinct from presentment and clearing. “Deposit” is something that can be done by a user of mobile device. “Presentment” and “clearing” are performed by a financial institution. The check “deposit” is simply “a person submitting the check to their bank” and is distinct from deposit of funds that may result from a check deposit. Dkt. No. 84 at 9-15.

         In addition to the claims themselves, Defendant cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: '779 Patent col.3 ll.9-13, col.5 ll.4-6, col.8 l.61 - col.9 l.4; '571 Patent figs.8, 9, col.3 ll.8-12, col.3 ll.37-42, col.4 ll.18-22, col.5 ll.27-29, col.12 ll.19-25, col.15 ll.43-49, col.16 ll.51-56, col.18 ll.2-6. Extrinsic evidence: Saffici Decl. at ¶¶ 17-19 (Defendant's Ex. C, Dkt. No. 84-3); Calman Dep.[10] at 62:16-18, 63:25 - 64:11, 66:10- 23 (Defendant's Ex. E, Dkt. No. 84-5); Liang Dep.[11] at 38:10-15, 48:20 - 49:8 (Defendant's Ex. F, Dkt. No. 84-6); Calman Decl. ¶ 58 (Plaintiff's Ex. 5, Dkt. No. 81-5); Saffici Dep. at 18:16-21 (Plaintiff's Ex. 10, Dkt. No. 81-10); U.S. Patent No. 8, 708, 227.

         Plaintiff replies: Depositing a check is key to the invention and references to “depositing a check” in the preambles should therefore be given limiting effect. Further, “depositing a check” is specifically described in the patents as distinct from simply submitting a check to a bank. It requires the deposit of funds into an account. Dkt. No. 85 at 7-12.

         Plaintiff cites further intrinsic and extrinsic evidence to support its position: Intrinsic evidence: '779 Patent, at [57] Abstract, col.2 ll.59-61, col.6 ll.32-35, col.12 ll.26-28, col.13 l.28 - col.14 l.10, col.14 ll.30-33, col.14 ll.36-37, col.15 ll.24-40; '517 Patent col.13 ll.1-33, col.13 l.56 - col.14 l.30; '571 File Wrapper November 8, 2018 Petition for Covered Business Method Review at 12-13, CBM2019-00004 (Plaintiff's Reply Ex. 3, Dkt. No. 85-3 at 25-26). Extrinsic evidence: U.S. Patent No. 6, 356, 836, at [57] Abstract, col.3 ll.26-45 (Plaintiff's Reply Ex. 4, Dkt. No. 85-4); Calman Dep. at 63:11-14 (Plaintiff's Reply Ex. 5, Dkt. No. 85-5); Saffici Dep. at 39:2 - 40:13 (Plaintiff's Reply Ex. 6, Dkt. No. 85-6); Liang Dep. at 49:12-13 (Plaintiff's Reply Ex. 7, Dkt. No. 86).

         At the hearing, the parties argued the effect of Plaintiff's statutory disclaimer of certain claims of the patents. Defendant argued that Plaintiff's proposed construction of the Deposit Terms threatens to improperly recapture the claim scope disclaimed by the Plaintiff, citing Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379 (Fed. Cir. 1998). Plaintiff argued that the disclaimed claims can have no effect on claim construction and that its construction is a narrowing construction of retained claims and therefore is not an attempt to recapture disclaimed subject matter.

         Analysis

         The dispute distills to two issues. First, whether the preambles of Claim 9 of the '571 Patent and Claims 1 and 10 of the '779 Patent are limiting. They are. Second, whether “depositing a check” necessarily includes or follows presentment and clearing. It does not, though it is not simply submitting a check image or information to a depository.

         On the record before the Court, the Court declines to determine whether Plaintiff's advocated claim construction, or the Court's adopted construction, improperly recaptures the subject matter disclaimed by the Plaintiff. Doing so would require construction of the disclaimed claims without the benefit of argument or evidence on the issues specific to those claims. Further, the Federal Circuit has suggested that a recapture analysis is not properly part of claim construction. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1331-32 (Fed. Cir. 2007). MBO Labs. found error in a district court's application of the recapture rule in a claim-construction proceeding. Id. Specifically, the district court narrowly construed claims that were broadened through reissuance of the patent-at-issue in light of disclaimers made in prosecuting the original application. Id. The Federal Circuit held this approach to be error, stating that “[w]hether those broadened claims are invalidated by the recapture rule is an issue separate from construction.” Id. The Federal Circuit's predecessor court, the Court of Claims, also provides guidance on this issue. In Soundscriber Corp. v. United States, the court instructed: “The construction of a patent, after a disclaimer has been properly entered, must be the same that it would have been if the matter so disclaimed had never been claimed.” 360 F.2d 954, 961 (Ct. Cl. 1966). Thus, “structures defined by a claim which has been disclaimed may be covered by other claims not disclaimed.” Id. Soundscriber is precedential through the Federal Circuit's adoption of the “body of law represented by the holdings of the Court of Claims and the Court of Customs and Patent Appeals announced before the close of business on September 30, 1982.” S. Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc). With this guidance from the Federal Circuit, the Court construes the claim terms at issue here without regard to whether the proper construction of the claims somehow violates the recapture rule.

         It is not necessarily improper to consult the disclaimed claims in construing the Deposit Terms. In Vectra, the Federal Circuit held that in a broadening-reissue context, statutorily disclaimed claims are treated as if they “never existed.” 162 F.3d at 1383-84. This does not mean, however, that the disclaimed claims are erased entirely from the intrinsic record. Indeed, Vectra instructs that “[t]he public is entitled to rely upon the public record of a patent in determining the scope of the patent's claims.” Id. at 1383. This “public record, ” i.e., the intrinsic evidence, includes the disclaimed claims. Id. at 1383-84. As previously held by this Court, “the prosecution history presenting [disclaimed] claims is still available, despite the disclaimer, as evidence that can be consulted by the Court during claim construction.” Allergan Sales, LLC v. Sandoz, Inc., No. 2:12-CV-00207-JRG, 2013 U.S. Dist. LEXIS 126418, at *22 (E.D. Tex. Sep. 4, 2013). Thus, the Court considers the disclaimed claims as part of the intrinsic record that may be consulted in construing the claims.

         The preambles of Claim 9 of the '571 Patent and Claims 1 and 10 of the '779 Patent are limiting. Each of these preambles is “necessary to give life, meaning, and vitality to the claim.” See NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305 (Fed. Cir. 2005). For example, the “non-transitory computer-readable medium” claims are all directed to instructions for configuring a processor to perform certain functions. Without reference to the preamble it is not clear whether the claim covers the medium holding the instructions for the processor or performance of the functions irrespective of a processor. It is only in the context of the preamble that the claim is properly understood to cover the structure dictated by processor performance. Similarly, the preambles provide antecedent basis for “check” and “mobile device” limitations found in the bodies of the claims. And the Court agrees with Plaintiff that the “depositing a check” aspect of the preamble also provides important context for understanding the claims. The “check” of the preamble is subject to a series of quality-control functions that must be met to submit the check to a “depository.” These are properly understood in the context of depositing a check. Thus, the preambles provide life, meaning, and vitality to the claims and are therefore limiting.[12]

         “Depositing a check” is used in the Asserted Patents to describe the process of providing a check to a depository in a form suitable to allow funds to be deposited into an account. For example, the patents explain:

Once the check has been signed, it is usually deemed negotiable, meaning the check may be validly transferred to the payee upon delivery. By signing and transferring the check to the payee, the payor authorizes funds to be withdrawn from the payor's account on behalf of the payee.
While a check may provide a payor with a convenient and secure form of payment, receiving a check may put certain burdens on the payee, such as the time and effort required to deposit the check. For example, depositing a check typically involves going to a local bank branch and physically presenting the check to a bank teller. To reduce such burdens for the payee, systems and methods have been developed to enable the remote deposit of checks. For example, the payee may capture a digital image of a check using a mobile device. The financial institution may then receive from the payee the digital image of the check. The financial institution may then use the digital image to credit funds to the payee. However, such a technique requires the efficient and accurate detection and extraction of the information pertaining to a check in the digital image.

'571 Patent col.1 ll.13-33; '779 Patent col.1 ll.13-33. This suggests that depositing a check is more than just providing it to the institution, it involves providing it in a form to enable actual crediting of funds to the deposit account. The patents elsewhere refer to the deposit process as depositing the check into an account: “The user 102 may deposit a check 108 or other negotiable instrument in the account 160 either electronically or physically.” '571 Patent col.3 ll.8-10; '779 Patent col.3 ll.9-11. “The user 102 may deposit the check 108 into account 160 by making a digital image of the check 108 and sending the image file containing the digital image to financial institution 130.” '571 Patent col.3 ll.42-45; '779 Patent col.3 ll.43-46. Again, this suggests that while presenting a check to an institution is part of “depositing a check” it is not all of it, the check must be in a suitable form. “[T]he digital image may be processed and funds associated with the check or negotiable instrument in the digital image may be deposited in a user's bank account.” '571 Patent col.3 ll.39-42; '779 Patent col.3 ll.40-43. This is depicted in Figures 8 and 9 of the patents (which differ slightly between the '571 Patent Family and the '779 Patent Family). These figures depict implementations of check-deposit methods, each culminating in “deposit funds into account.” '571 Patent fig.8 (item 870), fig.9 (item 980), col.15 ll.10-12, col.17 ll.13-15; '779 Patent fig.8 (item 870), fig.9 (item 980), col.12 ll.26-28, col.14 ll.36-38. This suggests that depositing a check can include the deposit of the associated funds. Indeed, Claim 19 of the '779 Patent, directed to processor-executable instructions for “depositing a check, ” includes a distinct step of “deposit funds of the check into an account.” '779 Patent col.20 ll.26-27. Claim 10 of that patent, also directed to processor-executable instructions for “depositing a check, ” does not. This suggests that while check deposit may include deposit of funds, it does not necessarily require deposit of funds. Ultimately, depositing a check requires provision of the check in a form suitable to allow the funds associated with the check to be deposited into the deposit account, whether or not the funds are actually deposited.

         Depositing a check does not necessarily require or follow presentment and clearing. The patents are clear that presentment and clearing may, but do not necessarily, precede the transfer of funds to the deposit account. For example, the patents provide:

The depository 204, in an implementation, after receiving the image(s) of the check 108 from the user 102, may use a clearinghouse 210 to perform the check clearing operations. As described with respect to the system 100 of FIG. 1, check clearing operations are used by banks to do the final settlement of the check 108, such as removing funds from the account of the payor and transferring those funds to the user's bank. The user's bank may choose to make the funds available to the user 102 immediately and take on the risk that the check 108 does not ...

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