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Solutran, Inc. v. U.S. Bancorp

United States District Court, D. Minnesota

May 24, 2017

Solutran, Inc. Plaintiff,
v.
U.S. Bancorp and Elavon, Inc., Defendants. U.S. Bancorp and Elavon, Inc. Counter-claimants,
v.
Solutran, Inc. Counter-defendant.

          David J. Wallace-Jackson, Robert J. Gilbertson, and Sybil L. Dunlop for Plaintiff and Counter-defendant.

          Ben D. Kappelman, Kenneth E. Levitt, Peter M. Lancaster, Dorsey & Whitney LLP for Defendants and Counter-claimants.

          MEMORANDUM OPINION AND ORDER

          SUSAN RICHARD NELSON, United States District Judge

         I. INTRODUCTION

         This 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]).

         II. BACKGROUND

         This 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] ¶¶ 9-12.)

         The Abstract of the '945 Patent describes the invention as follows:

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 Solutran's model:

(Image Omitted)

(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 exceptions.”

(Image Omitted)

(Id. at 4:35-37 & Fig. 4.) Finally, Figure 6 shows “three categories of exceptions and the steps followed for each type of exception.”

(Image Omitted)

(Id. at 9:27-28 & Fig. 6.)

         In 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[1] 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 merchant;
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 of:
e) providing exception processing procedures for any unmatched or mismatched digital images and data in the data file.
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).)

         III. DISCUSSION

         A. Legal Standard

         Patent 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 1313.

         Several 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 ...


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