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

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

July 29, 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

          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. 41, filed on May 17, 2019), [1] the response of Wells Fargo Bank, N.A. (“Defendant”) (Dkt. No. 47, filed on May 31, 2019), [2] and Plaintiff's Reply (Dkt. No. 48, filed on June 7, 2019). The Court held a hearing on the issues of claim construction and claim definiteness on June 27, 2019. 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 ..................................................................................................... 5

A. Claim Construction ................................................................................................. 5
B. Departing from the Ordinary Meaning of a Claim Term ........................................ 8

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

A. The Deposit Terms .................................................................................................. 9
B. The Device Terms ................................................................................................. 20
C. “general purpose computer” and “general purpose image capture device” .......... 26
D. “log file” and “said log file comprising said second image, an identification of said customer-controlled general purpose computer, and an identification of an image capture device that was used to capture said first image” ............................................................................................................ 29
E. “said instructions instructing a depositor to: . . . identify selected points of said initial image to enable cropping of said initial image beyond a boundary of the front side of said check” ............................................................. 34

         IV. CONCLUSION ............................................................................................................... 36

         I. BACKGROUND

         Plaintiff alleges infringement of five U.S. Patents: No. 8, 392, 332 (the “'332 Patent”), No. 8, 708, 227 (the “'227 Patent”), No. 9, 224, 136 (the “'136 Patent”), No. 10, 013, 605 (the “'605 Patent”), No. 10, 013, 681 (the “'681 Patent”) (collectively, the “Asserted Patents”). The '332, '136, and '681 Patents (the “'332 Patent Family”) are related through continuation applications and thus share a substantially identical specification (outside the claim sets). Similarly, the '227 and '605 Patents (the “'227 Patent Family”) are related through continuation applications and thus share a substantially identical specification (outside the claim sets). Each of the Asserted Patents lists an effective filing date of October 31, 2006. The two patent families are directed to related subject matter. '332 Patent col.1 ll.11-17 (noting the related subject matter of U.S. Patent Application No. 11/590, 974, which issued as the '227 Patent); '227 Patent col.1 ll.7-14 (noting the related subject matter of U.S. Patent Application No. 11/591, 247, which is the parent application to the '332 Patent).

         The Court recently construed patents having subject matter related to the subject matter of Asserted Patents. United States Auto. Ass'n v. Wells Fargo Bank, N.A., No. 2:18-cv-00245-JRG, 2019 U.S. Dist. LEXIS 99285 (E.D. Tex. June 13, 2019) (the “'245 Case”). In the '245 Case, the Court considered what it means to deposit a check in the context of “deposit” claim language in the patents there at issue. Id. at *22-26. A similar issue is presented to the Court here.

         The Asserted Patents are directed to technology for facilitating remote deposit of checks.

         The abstracts of the '332, '136, and '227 Patents are identical and provide:

Remote deposit of checks can be facilitated by a financial institution. A customer's general purpose computer and image capture device may be leveraged to capture an image of a check and deliver the image to financial institution electronics. Additional data for the transaction may be collected as necessary. The transaction can be automatically accomplished utilizing the images and data thus acquired.

         The abstract of the '681 Patent provides:

Machine-readable storage media having instructions stored therein that, when executed by a processor of a mobile device, configure the mobile device to capture a check image for deposit and read a MICR line of the received check image. The mobile device is configured to present electronic images of the check to the user after the electronic images are captured. The mobile device may be configured to confirm that the deposit can go forward after optical character recognition (OCR) is performed on the check, the optical character recognition (OCR) determining an amount of the check, comparing the OCR determined amount to an amount indicated by the user, and reading a MICR line of the check.

         The abstract of the '605 Patent provides:

A digital camera processing system with software to manage taking photos with a digital camera. Camera software controls the digital camera. A downloaded software component controls the digital camera software and causes a handheld mobile device to perform operations. The operations may include instructing a user to have the digital camera take photos of a check; displaying an instruction on a display of the handheld mobile device to assist the user in having the digital camera take the photos; or assisting the user as to an orientation for taking the photos with the digital camera. The digital camera processing system may generate a log file including a bi-tonal image formatted as a TIFF image.

         Claim 1 of the '332 Patent and Claim 1 of the '227 Patent, exemplary method and system claims respectively, recite as follows:

'332 Patent Claim 1. A processor-implemented method for processing a check deposit, comprising:
through a processor:
receiving a customer identification of an account for a deposit;
receiving a first image of a front side of a check, wherein said first image is in a first file format, and wherein said first image is received from a customer-controlled general purpose computer;
creating a second image of said front side of a check by converting said first image into a second file format;
generating a log file, said log file comprising said second image, an identification of said customer-controlled general purpose computer, and an identification of an image capture device that was used to capture said first image.

         '227 Patent Claim 1. A system for facilitating deposit of a check, said system comprising:

a memory storing a plurality of processor executable instructions; and
a processor in communication with said memory, said processor configured to execute the plurality of processing instructions to:
provide a remote deposit processing component to a depositor owned device communicatively coupled to a general purpose image capture device;
receive from the remote deposit processing component on the depositor owned device an identification of an account for deposit of a check, and an amount of said check;
provide instructions to the remote deposit processing component, said instructions instructing a depositor to:
position said check with respect to said image capture device to produce an initial image including an image of a front side of said check;
identify selected points of said initial image to enable cropping of said initial image beyond a boundary of the front side of said check; and
approve a cropped portion of said initial image, the cropped portion including said image of the front side of said check; and
receive from said depositor owned device said image of the front side of said check;
analyze said image of the front side of said check to determine whether said image of the front side of said check meets at least one criterion;
perform Optical Character Recognition (OCR) on said image of the front side of said check;
determine whether there is an error in said deposit of said check, by validating a routing number associated with said check, determining whether said check was previously deposited, and comparing said amount of said check to an amount determined by performing OCR on said image; and
initiate said deposit of said check into said account.

         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 has 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 ...

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