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, Greene Espel PLLP, for Plaintiff and
Kappelman, Kenneth E. Levitt, Peter M. Lancaster, Dorsey
& Whitney LLP, and J. Thomas Vitt, Jones Day, for
Defendants and Counter-claimants.
MEMORANDUM OPINION AND ORDER
RICHARD NELSON, UNITED STATES DISTRICT JUDGE
matter comes before the Court on the parties'
cross-motions for summary judgment. (See Pl.'s
Mot. for Summ. J. [Doc. No. 183]; Defs.' Mot. for Summ.
J. [Doc. No. 170].) For the reasons that follow,
Plaintiff's motion is granted, and Defendants' motion
Solutran, Inc. (“Solutran”) is the owner by
assignment of United States Patent No. 8, 311, 945 (the
“'945 Patent”), which claims a system and
method for processing check transactions. (See
Compl. ¶ 10 [Doc. No. 1].) According to Solutran, its
system improves on legacy check processing systems by
eliminating the need for merchants to scan checks after they
are received, and by speeding the rate at which the
merchant's account would be credited with a payment.
(See Pl.'s Opening Claim Construction Br. at 4-6
[Doc. No. 78].) Solutran's check processing system is
marketed as “Solutran's POS [Point of Sale] Imaging
Network, ” or “SPIN.” (See Compl.
September 25, 2013, Solutran filed suit against Defendants
U.S. Bancorp and its subsidiary, Elavon, Inc. (collectively,
“US Bank”), alleging infringement of the '945
Patent. (See generally id.) In particular, Solutran
contends that U.S. Bank's competing “Electronic
Check Service, ” or “ECS, ” system is
practically identical to SPIN, and infringes at least one of
the claims of the '945 Patent. (See generally
id.) U.S. Bank has consistently denied any infringement
and brings counterclaims in its own right against Solutran,
seeking declaratory judgments of non-infringement and patent
invalidity. (See generally Am. Answer [Doc. No.
February 2014, U.S. Bank petitioned for a Covered Business
Model (“CBM”) review of the ‘945 Patent
before the U.S. Patent and Trademark Office's Patent
Trial and Appeal Board (“PTAB”), arguing that:
(1) the patent was invalid under 35 U.S.C. § 101; and
(2) the patent's claims were unpatentable under 35 U.S.C.
§ 103 as obvious. See U.S. Bancorp v. Solutran,
Inc., No. CBM2014-00076, 2014 WL 3943913, at *1 (PTAB
Aug. 7, 2014). The PTAB rejected U.S. Bank's § 101
argument, but instituted the CBM proceeding based on the
§ 103 argument. See Id. at *6-13. While the CBM
review was underway, this Court stayed proceedings in this
district court action. (See Sept. 18, 2014 Order to
Stay [Doc. No. 50].) After the PTAB found that the challenged
claims in the ‘945 Patent were not unpatentable as
obvious, see U.S. Bancorp v. Solutran, 2015 WL
4698463, at *10-16 (PTAB Aug. 5, 2015), aff'd,
No. 2016-1302, 668 Fed. App'x 363 (Fed. Cir. 2016), this
Court lifted the stay. (See Jan. 12, 2016 Text-Only
Order [Doc. No. 62].)
extensive motion practice and discovery, the Court heard the
parties' claim construction arguments on August 30, 2016.
(See Aug. 30, 2016 Minute Entry [Doc. No. 87].) In
total, the parties asked the Court to construe eight
different terms found variously in claims 1, 2, 4, and 5 of
the '945 Patent. See Solutran, Inc. v. U.S.
Bancorp, No. 13-cv-2637 (SRN/BRT), 2017 WL 2274959, at
*2 (D. Minn. May 24, 2017). At this stage of the litigation,
however, the application of only one of those terms is
disputed: “comparing by a computer said digital images
with said data in the data file to find
matches.” This term appears in claims 1(d), 4(e),
and 5(e) of the '945 patent- for illustrative purposes,
and to provide needed context, the Court will reproduce claim
1 in full here:
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
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
d) comparing by a computer said digital images with said
data in the data file to find matches.
(Compl., Ex A (“'945 Patent”) at 10:54-67
Court issued its claim construction order on May 24, 2017.
The parties responded by filing their cross-motions for
summary judgment the following month. (See generally
Pl.'s Mot. for Summ. J.; Defs.' Mot. for Summ. J.)
Solutran contends that the undisputed record evidence shows
that U.S. Bank's ECS service practices “every
single step” of claims 1, 2, 3, and 5 of the '945
Patent. (See Pl.'s Mem. in Supp. of Mot. for
Summ. J. (“Pl.'s Mem. in Supp.”) at 1 [Doc.
No. 185].) It notes that U.S. Bank now argues
non-infringement solely on the basis of the comparing step.
(See id.) In its view, however, the Court's
construction of this term resolves the issue in its favor,
and thus a judgment of infringement is warranted here.
(See id.) U.S. Bank, however, argues the opposite in
its own motion-that the Court's construction makes clear
that its service does not infringe the '945
Patent. (See Defs.' Mem. in Supp. of Mot. for
Summ. J. (“Defs.' Mem. in Supp.”) at 2 [Doc.
No. 172].) In the alternative, U.S. Bank also contends that
all asserted claims are invalid because they are too abstract
to qualify for patent protection under 35 U.S.C. § 101.
Court heard oral argument on the parties' motions on
August 11, 2017, and the matter is now ripe for disposition.
Standard of Review
judgment is appropriate if “the movant shows that there
is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). A fact is “material” only if
it may affect the outcome of the lawsuit. TCF Nat'l
Bank v. Mkt. Intelligence, Inc., 812 F.3d 701, 707 (8th
Cir. 2016). Likewise, an issue of material fact is
“genuine” only if “the evidence is such
that a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). The moving party bears
the burden of establishing a lack of genuine issue of fact,
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986),
and the Court must view the evidence and any reasonable
inferences in the light most favorable to the nonmoving
party. Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 587 (1986). In responding to a
motion for summary judgment, ...