United States District Court, D. Minnesota
Solutran, Inc. Plaintiff,
U.S. Bancorp and Elavon, Inc., Defendants. U.S. Bancorp and Elavon, Inc. Counter-claimants,
Solutran, Inc. Counter-defendant.
J. Wallace-Jackson, Robert J. Gilbertson, and Sybil L. Dunlop
for Plaintiff and Counter-defendant.
Kappelman, Kenneth E. Levitt, Peter M. Lancaster, Dorsey
& Whitney LLP for Defendants and Counter-claimants.
MEMORANDUM OPINION AND ORDER
RICHARD NELSON, United States District Judge
matter is before the Court on the parties' requests for
claim construction, as found in their Joint Status Report
Regarding Claim Construction [Doc. No. 77] and supporting
briefs (Plaintiff's Opening Claim Construction Brief
[Doc. No. 78], Defendants' Opening Claim Construction
Brief [Doc. No. 80], Plaintiff's Responsive Brief [Doc.
No. 83], Defendants' Responsive Brief [Doc. No. 85],
Defendants' Additional Claim Construction Brief [Doc. No.
152, Ex. 1], and Plaintiff's Response to Defendants'
Additional Claim Construction Brief [Doc. No. 165]).
patent infringement lawsuit concerns United States Patent No.
8, 311, 945 (the “'945 Patent”), titled
“System and Method for Processing Check and Check
Transactions.” (Compl. [Doc. No. 1] ¶ 10.)
Plaintiff Solutran, Inc. (“Solutran”) alleges
that it is the owner by assignment of all rights in the
'945 Patent, and that Defendants U.S. Bancorp
(“U.S. Bank”) and its subsidiary, Elavon, Inc.
(“Elavon”), have infringed the '945 Patent by
“using, offering to sell, and selling the methods
claimed in that patent.” (Id. at ¶¶
10, 16.) In particular, Solutran contends that
Defendants' “Electronic Check Service”
(“ECS”) product copies Solutran's patented
process, which it markets as “Solutran's POS
Imaging Network” (“SPIN”). (Id. at
1, 9, 11.) This infringement has, according to Solutran,
caused it harm and bears the potential for irreparable injury
unless corrected by the Court. (Id. at 17.)
Defendants deny that ECS infringes upon the '945 Patent,
and in their own right bring claims seeking declaratory
judgments of non-infringement and patent invalidity. (Am.
Answer [Doc. No. 17] ¶ 11; Countercls. [Doc. No. 17]
Abstract of the '945 Patent describes the invention as
A method of processing paper checks that divides into two
independent paths the processing of a data file representing
a check and the digital image of the check. The data files
and image files are separated both in time and in space, with
the data files being used to promptly initiate the transfer
of funds to and from appropriate accounts, while the paper
checks, at a remote location and typically lagging in time,
are scanned to create digital image files and deposited as an
image or substitute check if deemed ACH ineligible. The
method provides for the comparison of data files to image
files, based on MICR information, to find any unmatching or
mismatched items for exception processing and a process to
manage ACH-ineligible items as an image or substitute check.
(Compl., Ex. A.). Figure 3 of the Specification provides a
schematic representation of a preferred embodiment of
(Id. at 4:30-34 & Fig. 3.) Figure 4 is a further
depiction of the system and method of Figure 3, “with
additional details shown regarding processing of
(Id. at 4:35-37 & Fig. 4.) Finally, Figure 6
shows “three categories of exceptions and the steps
followed for each type of exception.”
(Id. at 9:27-28 & Fig. 6.)
total, the '945 Patent makes six claims, three of which
(claims 1, 4, and 5) are independent, and three of which (2,
3, and 6) are dependent. For purposes of this matter, the
parties dispute the meaning of eight separate
terms found variously in claims 1, 2, 4, and 5.
(Joint Status Report Regarding Claim Construction
(“Joint Status Report”) at 1-5.) All disputed
terms are found in at least claims 1, 2, and 5 which are
reproduced here in whole or part for illustrative purposes:
1. A method for processing paper checks, comprising:
a) electronically receiving a data file containing data
captured at a merchant's point of purchase, said
data including an amount of a transaction associated with
MICR information for each paper check, and said data
file not including images of said checks;
b) after step a), crediting an account for the
c) after step b), receiving said paper checks and
scanning said checks with a digital image scanner thereby
creating digital images of said checks and, for each said
check, associating said digital image with said check's
MICR information; and
d) comparing by a computer said digital images, with said
data in the data file to find matches.
2. A method according to claim 1, further comprising the step
e) providing exception processing procedures for any
unmatched or mismatched digital images and data in the data
5. A method for processing paper checks, comprising:
a) electronically receiving data files from more than one
merchant, each data file containing data captured at a
merchant's point of purchase, said data including an
amount of a transaction associated with MICR information for
each paper check in a batch of paper checks, and said data
file not including images of said checks;
b) storing data from said data files in association with a
respective merchant identifier;
. . . .
(Compl., Ex. A at 10:54-11:5; 12:3-11 (emphasis added to
denote disputed terms).)
claim construction, i.e., the interpretation of the patent
claims that define the scope of the patent, is a matter of
law exclusively for the court. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996). Proper claim
construction requires an examination of the intrinsic
evidence of record, including the claim language, the
specification, and the prosecution history. Computer
Docking Corp. v. Dell, Inc., 519 F.3d 1366, 1373 (Fed.
Cir. 2008) (citing Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed Cir. 1996)). In all
instances, however, the court must begin with the words of
the claims themselves, which are “of primary
importance, in the effort to ascertain precisely what it is
that is patented.” Phillips v. AWH Corp., 415
F.3d 1303, 1312 (quoting Merrill v. Yeomans, 94 U.S.
568, 570 (1876)); see also Clare v. Chrysler Group
LLC, 819 F.3d 1323, 1327 (Fed. Cir. 2016) (“The
language of the claims determines what the patentee regards
as the invention and defines what the patentee is entitled to
exclude.”) (citation omitted). The words of a claim
generally carry “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
resources exist to aid the court in understanding how such a
person would understand the scope of a claim term. “To
begin with, the context in which a term is used in the
asserted claim can be highly instructive.” Id.
at 1314. Likewise, other claims of the patent in question can
be “valuable sources of enlightenment as to the meaning
of a claim term.” Id. (citing
Vitronics, 90 F.3d at 1582). “For example, the
presence of a dependent claim that adds a particular