Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 1 of 25 PageID #: 6773
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`PI-NET INTERNATIONAL INC.,
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`Plaintiff,
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`v.
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`JPMORGAN CHASE & CO.,
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`Defendant.
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`Civ. No. 12-282-SLR
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`George Pazuniak, Esquire of O'Kelly Ernst & Bielli, LLC, Wilmington, Delaware.
`Counsel for Plaintiff.
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`Robert Scott Saunders, Esquire and Jessica Raatz, Esquire of Skadden, Arps, Slate,
`Meagher & Flam LLP, Wilmington, Delaware. Counsel for Defendant. Of Counsel:
`Danie A. DeVito, Esquire, Douglas R. Nemec, Esquire, Edward L. Tulin, Esquire and
`Andrew Gish, Esquire of Skadden, Arps, Slate, Meagher & Flam LLP.
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`MEMORANDUM OPINION
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`Dated: May\~, 2014
`Wilmington, Delaware
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`PI-NET INTERNATIONAL INC.,
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`Plaintiff,
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`v.
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`JPMORGAN CHASE & CO.,
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`Defendant.
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`Civ. No. 12-282-SLR
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`George Pazuniak, Esquire of O'Kelly Ernst & Bielli, LLC, Wilmington, Delaware.
`Counsel for Plaintiff.
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`Robert Scott Saunders, Esquire and Jessica Raatz, Esquire of Skadden, Arps, Slate,
`Meagher & Flam LLP, Wilmington, Delaware. Counsel for Defendant. Of Counsel:
`Danie A. DeVito, Esquire, Douglas R. Nemec, Esquire, Edward L. Tulin, Esquire and
`Andrew Gish, Esquire of Skadden, Arps, Slate, Meagher & Flam LLP.
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`MEMORANDUM OPINION
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`Dated: May\~, 2014
`Wilmington, Delaware
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`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 2 of 25 PageID #: 6774
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`RMo~ge
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`I. INTRODUCTION
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`Plaintiff Pi-Net International, Inc. ("plaintiff') filed a complaint alleging patent
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`infringement against JPMorgan Chase & Co. ("defendant") on March 1, 2012 alleging
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`infringement of three patents: U.S. Patent Nos. 5,987,500 ("the '500 patent"), 8,037,158
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`("the '158 patent"), and 8,108,492 ("the '492 patent") (collectively, the "patents-in-suit").
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`(D.I. 1) Defendant answered the complaint, asserting affirmative defenses of invalidity
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`and non-infringement, on May 23,2012. (D.I. 11)
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`Presently before the court are several motions for summary judgment:
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`defendant's motion for summary judgment of non-infringement (D. I. 113) and for
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`invalidity of the patents-in-suit (D.I. 121), as well as defendant's motion for partial
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`summary judgment of laches for the '500 patent (D.I. 111). Plaintiff moved to strike
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`defendant's opening brief in support of its partial summary judgment of laches for the
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`'500 patent. (D.I. 132) The parties also filed motions to exclude testimony:
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`defendant's motion to exclude certain testimony of Stevan Porter (D. I. 109) and
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`plaintiffs motions to exclude the expert testimony of Susan Spielman (D .I. 115), certain
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`testimony by Michael Siegel (D.I. 117), and certain testimony by Dawn Hall (D.I. 119).
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`The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`II. BACKGROUND
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`A. The Parties
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`Plaintiff is a California corporation with a principal place of business in Menlo
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`Park, California. (D.I. 1 at~ 1) Plaintiff provides innovative software products, services
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`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 3 of 25 PageID #: 6775
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`and solutions that enable distributed transaction processing and control over public and
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`private networks, including (without limitation) the Internet and the World-Wide Web.
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`Plaintiff owns the patents-in-suit. (/d.) Defendant is a Delaware corporation with a
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`registered agent in Wilmington, Delaware and an office in New York, New York. (D. I.
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`11 at 11 3) Defendant is a global financial services firm that operates in various
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`locations, including the United States of America, conducting business in the fields of
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`investment banking, financial services for consumers and small businesses,
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`commercial banking, financial transaction processing, asset management, and private
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`equity. (/d.)
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`B. Technology Overview
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`The patents-in-suit generally claim a system and method for online transactions,
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`wherein a user takes an action at the "front-end" that causes data to be routed through
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`a system and used as a basis to execute a transaction at the "back-end," thereby
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`completing a non-deferred (or "real time") transaction. Plaintiff accuses six online
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`banking instrumentalities of infringing the '500 patent and the '492 patent: Account
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`Transfers; Payments; Customer Center; Account Activity (Business Card); Wire
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`Transfers; and Chase Mobile Application, QuickPaysm ("Mobile QuickPay"). Only the
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`Account Transfers instrumentality is accused of infringing the '158 patent. With the
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`exception of Mobile QuickPay, all of the accused instrumentalities are accessible to
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`defendant's customers through its website. (D. I. 114 at 4-5)
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`Ill. STANDARDS OF REVIEW
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`A. Summary Judgment
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`2
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`"The court shall grant summary judgment if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law." Fed. R. Civ. P. 56(a). The moving party bears the burden of
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`demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus.
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`Co. v. Zenith Radio Corp., 415 U.S. 574, 586 n.10 (1986). A party asserting that a fact
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`cannot be-or, alternatively, is-genuinely disputed must support the assertion either
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`by citing to "particular parts of materials in the record, including depositions, documents,
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`electronically stored information, affidavits or declarations, stipulations (including those
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`made for the purposes of the motions only), admissions, interrogatory answers, or other
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`materials," or by "showing that the materials cited do not establish the absence or
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`presence of a genuine dispute, or that an adverse party cannot produce admissible
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`evidence to support the fact." Fed. R. Civ. P. 56(c)(1 )(A) & (8). If the moving party has
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`carried its burden, the nonmovant must then "come forward with specific facts showing
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`that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation
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`marks omitted). The court will "draw all reasonable inferences in favor of the
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`nonmoving party, and it may not make credibility determinations or weigh the evidence."
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`Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
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`To defeat a motion for summary judgment, the non-moving party must "do more
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`than simply show that there is some metaphysical doubt as to the material facts."
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`Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d
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`584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more
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`than just bare assertions, conclusory allegations or suspicions to show the existence of
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`a genuine issue") (internal quotation marks omitted). Although the "mere existence of
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`3
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`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 5 of 25 PageID #: 6777
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`some alleged factual dispute between the parties will not defeat an otherwise properly
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`supported motion for summary judgment," a factual dispute is genuine where "the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving party."
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`Anderson v. Liberty Lobby, Inc., 411 U.S. 242,247-48 (1986). "If the evidence is
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`merely colorable, or is not significantly probative, summary judgment may be granted."
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`/d. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 411 U.S.
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`317, 322 (1986) (stating entry of summary judgment is mandated "against a party who
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`fails to make a showing sufficient to establish the existence of an element essential to
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`that party's case, and on which that party will bear the burden of proof at trial").
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`B. Infringement
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`A patent is infringed when a person "without authority makes, uses or sells any
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`patented invention, within the United States ... during the term of the patent." 35
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`U.S.C. § 271 (a). A two-step analysis is employed in making an infringement
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`determination. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.
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`Cir. 1995). First, the court must construe the asserted claims to ascertain their meaning
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`and scope. See id. Construction of the claims is a question of law subject to de novo
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`review. See CyborCorp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998). The
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`trier of fact must then compare the properly construed claims with the accused
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`infringing product. See Markman, 52 F.3d at 976. This second step is a question of
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`fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
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`"Direct infringement requires a party to perform each and every step or element
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`of a claimed method or product." BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373,
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`4
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`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 6 of 25 PageID #: 6778
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`1378 (Fed. Cir. 2007), overruled on other grounds by692 F.3d 1301 (Fed. Cir. 2012).
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`"If any claim limitation is absent from the accused device, there is no literal infringement
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`as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247
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`(Fed. Cir. 2000). If an accused product does not infringe an independent claim, it also
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`does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier,
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`Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989). However, "[o]ne may infringe an
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`independent claim and not infringe a claim dependent on that claim." Monsanto Co. v.
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`Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton
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`Canvas, 870 F.2d at 1552) (internal quotations omitted). A product that does not
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`literally infringe a patent claim may still infringe under the doctrine of equivalents if the
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`differences between an individual limitation of the claimed invention and an element of
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`the accused product are insubstantial. See Wamer-Jenkinson Co. v. Hilton Davis
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`Chern. Co., 520 U.S. 17, 24 (1997). The patent owner has the burden of proving
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`infringement and must meet its burden by a preponderance of the evidence. See
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`SmithKiine Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988)
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`(citations omitted).
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`When an accused infringer moves for summary judgment of non-infringement,
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`such relief may be granted only if one or more limitations of the claim in question does
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`not read on an element of the accused product, either literally or under the doctrine of
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`equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005);
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`see also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002)
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`("Summary judgment of non infringement is ... appropriate where the patent owner's
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`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 7 of 25 PageID #: 6779
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`proof is deficient in meeting an essential part of the legal standard for infringement,
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`because such failure will render all other facts immaterial."). Thus, summary judgment
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`of non-infringement can only be granted if, after viewing the facts in the light most
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`favorable to the non-movant, there is no genuine issue as to whether the accused
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`product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v.
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`Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
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`C. Invalidity
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`1. Indefiniteness
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`The definiteness requirement is rooted in§ 112, 1J 2, which provides that "the
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`specification shall conclude with one or more claims particularly pointing out and
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`distinctly claiming the subject matter which the applicant regards as his invention." "A
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`determination of claim indefiniteness is a legal conclusion that is drawn from the court's
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`performance of its duty as the construer of patent claims." Personalized Media Comm.,
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`LLC v. lnt'l Trade Com'n, 161 F.3d 696, 705 (Fed. Cir. 1998).
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`Determining whether a claim is definite requires an analysis of
`whether one skilled in the art would understand the bounds of the
`claim when read in light of the specification ... If the claims read in
`light of the specification reasonably apprise those skilled in the art
`of the scope of the invention, § 112 demands no more.
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`/d. (citing Miles Lab., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993)).
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`Under 35 U.S.C. § 1121J 6, "[a]n element in a claim for a combination may be
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`expressed as a means or step for performing a specified function without the recital of
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`structure ... in support thereof, and such claim shall be construed to cover the
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`corresponding structure ... described in the specification and equivalents thereof." This
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`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 8 of 25 PageID #: 6780
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`allows "the use of means expressions in patent claims without requiring the patentee to
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`recite in the claims all possible structures that could be used as means in the claimed
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`apparatus." Medica/Instrumentation and Diagnostics Corp. v. Elekta AB. 344 F.3d
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`1205,1211 (Fed. Cir. 2003) (citing 0./. Corp. v. TekmarCo., 115 F.3d 1576,1583 (Fed.
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`Cir. 1997)). The quid pro quo is the "duty [of the patentee] to clearly link or associate
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`structure to the claimed function." Budde v. Harley-Davidson, Inc., 250 F.3d 1369,
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`1377 (Fed. Cir. 2001) (citations omitted). "The price that must be paid for use of that
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`convenience is limitation of the claim to the means specified in the written description
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`and equivalents thereof." 0./. Corp., 115 F.3d at 1583.
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`Whether the written description adequately sets forth the structure corresponding
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`to the claimed function must be considered from the perspective of a person skilled in
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`the art. Telcordia Techs., Inc. v. Cisco Sys., 612 F.3d 1365, 1376 (Fed. Cir. 2010)
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`(citing Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1365--66 (Fed. Cir. 2003)). "The
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`question is not whether one of skill in the art would be capable of implementing a
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`structure to perform the function, but whether that person would understand the written
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`description itself to disclose such a structure."
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`/d. (citing Tech. Licensing Corp. v.
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`Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008). Ultimately, if no corresponding
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`structure is disclosed in the specification, the claim term must be construed as
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`indefinite. See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir.
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`2007) ("If there is no structure in the specification corresponding to the
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`means-plus-function limitation in the claims, the claim will be found invalid as
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`indefinite.").
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`2. Enablement and written description
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`The statutory basis for the enablement and written description requirements, 35
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`U.S.C. § 112111, provides in relevant part:
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`The specification shall contain a written description of the
`invention, and of the manner and process of making and
`using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or
`with which it is most nearly connected, to make and use the
`same ....
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`"The enablement requirement is met where one skilled in the art, having read the
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`specification, could practice the invention without 'undue experimentation."' Streck, Inc.
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`v. Research & Diagnostic Systems, Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012) (citation
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`omitted). "While every aspect of a generic claim certainly need not have been carried
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`out by the inventor, or exemplified in the specification, reasonable detail must be
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`provided in order to enable members of the public to understand and carry out the
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`invention." Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
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`The specification need not teach what is well known in the art. /d. (citing Hybritech v.
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`Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)). A reasonable
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`amount of experimentation may be required, so long as such experimentation is not
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`"undue." ALZA Corp. v. Andrx Pharms., Inc., 603 F.3d 935, 940 (Fed. Cir. 2010).
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`"Whether undue experimentation is needed is not a single, simple factual
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`determination, but rather is a conclusion reached by weighing many factual
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`considerations." Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1378
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`(Fed. Cir. 2009) (citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Federal
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`Circuit has provided several factors that may be utilized in determining whether a
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`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 10 of 25 PageID #: 6782
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`disclosure would require undue experimentation: (1) the quantity of experimentation
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`necessary; (2) the amount of direction or guidance disclosed in the patent; (3) the
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`presence or absence of working examples in the patent; (4) the nature of the invention;
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`(5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability
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`of the art; and (8) the breadth of the claims. In re Wands, 858 F .2d at 737. These
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`factors are sometimes referred to as the "Wands factors." A court need not consider
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`every one of the Wands factors in its analysis, rather, a court is only required to
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`consider those factors relevant to the facts of the case. See Streck, Inc., 655 F.3d at
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`1288 (citing Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir.
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`1991 )).
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`The enablement requirement is a question of law based on underlying factual
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`inquiries. See Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287,
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`1298-99 (Fed. Cir. 2010) (citation omitted); Wands, 858 F.2d at 737. Enablement is
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`determined as of the filing date of the patent application. In re '318 Patent Infringement
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`Litigation, 583 F.3d 1317, 1323 (Fed. Cir. 2009) (citation omitted). The burden is on
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`one challenging validity to show, by clear and convincing evidence, that the
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`specification is not enabling. See Streck, Inc., 665 F.3d at 1288 (citation omitted).
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`A patent must also contain a written description of the invention. 35 U.S.C. §
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`112, ,-r 1. The written description requirement is separate and distinct from the
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`enablement requirement. See Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336,
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`1351 (Fed. Cir. 2011 ). It ensures that "the patentee had possession of the claimed
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`invention at the time of the application, i.e., that the patentee invented what is claimed."
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`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 11 of 25 PageID #: 6783
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`LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir.
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`2005). The Federal Circuit has stated that the relevant inquiry- "possession as shown
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`in the disclosure"- is an "objective inquiry into the four corners of the specification from
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`the perspective of a person of ordinary skill in the art. Based on that inquiry, the
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`specification must describe an invention understandable to that skilled artisan and show
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`that the inventor actually invented the invention claimed." Ariad, 598 F. 3d at 1351.
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`This inquiry is a question of fact: "the level of detail required to satisfy the written
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`description requirement varies depending on the nature and scope of the claims and on
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`the complexity and predictability of the relevant technology." /d. (citation omitted).
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`While compliance with the written description requirement is a question of fact, the
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`issue is "amenable to summary judgment in cases where no reasonable fact finder
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`could return a verdict for the non-moving party." /d. at 1307 (citing Invitrogen Corp. v.
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`Clontech Labs., Inc., 429 F.3d 1052, 1072-73 (Fed. Cir. 2005)).
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`IV. DISCUSSION
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`A. Indefiniteness
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`1. The '492 patent
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`The claims and specification of a patent serve an important public notice
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`function, apprising others of what is available to them. See, e.g., Johnson & Johnston
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`Associates Inc. v. R.E. Service Co., Inc., 285 F.3d 1046, 1052 (Fed. Cir. 2002) (citing
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`Mahn v. Harwood, 112 U.S. 354, 361 ( 1884)) (claims give notice to the public of the
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`scope of the patent); Superior Fireplace Co. v. Majestic Prods. Co., 270 F .3d 1358,
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`1371 (Fed. Cir. 2001). "Because claims delineate the patentee's right to exclude, the
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`patent statute requires that the scope of the claims be sufficiently definite to inform the
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`public of the bounds of the protected invention, i.e., what subject matter is covered by
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`the exclusive rights of the patent. Otherwise, competitors cannot avoid infringement,
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`defeating the public notice function of patent claims." Halliburton Energy Svcs. v. M-
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`ILLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008) (citing Athletic Alternatives, Inc. v. Prince
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`Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996)).
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`Plaintiff asserted independent claims 1 and 10 and dependent claims 2-8 and
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`11. Independent claim 1 of the '492 patent recites:
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`A system, comprising:
`a Web server, including a processor and a memory, for offering one or
`more Web applications as respective point-of-service applications in a
`point-of-service application list on a Web page;
`each Web application of the one or more Web applications for requesting
`a real-time Web transaction;
`a value-added network (VAN) switch running on top of a facilities network
`selected from a group consisting of the World Wide Web, the Internet and
`an e-mail network, the
`VAN switch for enabling the real-time Web transactions from the one or
`more Web applications;
`a service network running on top of the facilities network for connecting
`through the Web server to a back-end transactional application; and
`a computer system executing the Back-end transactional application for
`processing the transaction request in real-time
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`('492 patent, 9:50-67)
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`The limitations "value-added network ('VAN') switch," "switching," "service
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`network," and "computer system executing the back-end transactional application for
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`processing the transaction request in real-time" are indefinite for the reasons set forth in
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`the claim construction order. The court concludes, therefore, that independent claims 1
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`and 10 (which each contain three of these limitations) are invalid for indefiniteness.
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`11
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`Claims 2-8 are dependent on claim 1 and each recites the limitation "VAN switch."
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`Claim 3 additionally recites the limitation "switching," claim 6 the limitation "service
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`network," and claim 8 the limitation "computer system." Therefore, each of these
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`dependent claims is invalid. Claim 11 depends on claim 10 and further describes that
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`"the real-time Web transactions are Web transactions from the Web application
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`accessing a value-added network service." This description does not illuminate the
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`meaning of the indefinite limitations "VAN switch," "switching," and "service network,"
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`found in independent claim 10. Claim 11 is invalid. The court grants defendant's
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`motion for summary judgment of invalidity as to the asserted claims of the '492 patent.
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`2. The '500 patent
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`Plaintiff asserted independent claims 1, 10, and 35, as well as dependent claims
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`2-6, 12, 14-16 of the '500 patent. Independent claim 1 recites:
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`A configurable value-added network switch for enabling real-time
`transactions on a network, said configurable value-added network switch
`compromising:
`means for switching to a transactional application in response to a user
`specification from a network application, said transactional application
`providing a user with a plurality of transactional services managed by at
`least one value-added network service provider, said value-added network
`service provider keeping a transaction flow captive, said plurality of
`transactional services being performed interactively and in real time;
`means for transmitting a transaction request from said transactional
`application; and
`means for processing said transaction request.
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`('500 patent, 9:44-58)
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`The court concluded that certain limitations of the asserted claims, "VAN switch,"
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`"switching," "value-added network system," and each of the "means" limitations were
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`indefinite for the reasons set forth in the claim construction order. Independent claim 1
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`12
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`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 14 of 25 PageID #: 6786
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`and 35 each require the "means for switching," "means for transmitting," and "means for
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`processing" limitations. Claim 1 additionally recites the "VAN switch" limitation and
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`claim 35 the "value-added network system" limitation. Independent claim 10 recites the
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`limitations "VAN switch" and "switching." Therefore, independent claims 1, 10, and 35
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`are invalid for indefiniteness. Dependent claims 2-5 each recite the limitation "VAN
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`switch" and add additional indefinite "means" limitations as discussed in the claim
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`construction order. Each of dependent claims 2-5 is likewise invalid.
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`Dependent claim 6 recites: "The configurable value-added network switch as
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`claimed in claim 5 wherein said host means contains data corresponding to said
`
`transaction request." ('500 patent, 10:17 -20) The court concluded that dependent claim
`
`5's limitation "means for coupling said means for transmitting to a host means" was
`
`indefinite as discussed in the claim construction order. The claim language of
`
`dependent claim 6 further defines the "host means,"1 but does not clarify the meaning
`
`of "VAN switch," therefore, claim 6 is invalid for indefiniteness.
`
`Dependent claim 11 recites:
`
`The method for configuring said value-added network switch as claimed in
`claim 10 wherein said step of switching to a transactional application
`further comprises the steps of:
`receiving said user specification;
`enabling a switch to said transactional application; and
`activating said transactional application.
`
`1The limitation "host means" is a means-plus-function claim and, as discussed in
`the claim construction order, the specification provides insufficient structure. Claim 35
`recites "a host means for processing." (12:52) The limitation "host means" is indefinite.
`
`13
`
`
`
`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 15 of 25 PageID #: 6787
`
`('500 patent 1 0:49-54) The court analyzed the limitation "switching" in the claim
`
`construction order, concluding that the specification does not disclose how the VAN
`
`switch or the switching service (within the VAN switch) accomplishes "switching."
`
`Dependent claim 11 adds details to the limitation "switching to a transactional
`
`application in response to a user specification from a network application," however,
`
`these details do not further describe how the "receiving," "enabling," and "activating"
`
`would be accomplished. Therefore, the dependent claim does not provide definiteness
`
`to the limitations "VAN switch" or "switching," and dependent claim 11 is invalid for
`
`indefiniteness.
`
`Dependent claim 12 recites:
`
`The method for configuring said value-added network switch as claimed in
`claim 11 wherein said step of activating said transactional application
`further includes a step of creating a transaction link between said network
`application and said transactional application.
`
`('500 patent, 1 0:55-60) This dependent claim adds the step of "creating a transaction
`
`link," but again does not provide any information on how this step would be
`
`accomplished by the invention. Therefore, dependent claim 12 does not supply
`
`definiteness to the limitations "VAN switch" or "switching," and is invalid for
`
`indefiniteness.
`
`Similarly, dependent claim 14 provides information on the "step of receiving said
`
`user specification" in claim 11:
`
`The method for configuring said value-added network switch as claimed in
`claim 11 wherein said step of receiving said user specification further
`comprises steps of:
`presenting said user with a list of transactional applications, each of said
`transactional application being associated with a particular Internet service
`provider; and
`
`14
`
`
`
`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 16 of 25 PageID #: 6788
`
`submitting said user specification according to a user's selection of said
`transactional application from said list of transactional applications.
`
`('500 patent, 11 :2-12) The additional steps of "presenting said user with a list of
`
`transactional applications" and "submitting said user specification" do not illustrate how
`
`the "switching" is accomplished by the VAN switch (or the switching service) and,
`
`therefore, claim 14 is indefinite.
`
`Dependent claim 15 further defines the "step of processing said transaction
`
`request" of claim 10 as " compris[ing] the step of transmitting said transaction request to
`
`a host means." (11:12-16) Dependent claim 16 further defines the "host means" of
`
`claim 15, as "contain[ing] data corresponding to said transaction request." Neither of
`
`these dependent claims clarify the indefinite limitations "VAN switch" or "switching;"
`
`these dependent claims (15 and 16) are invalid as indefinite. Based on the above
`
`analysis of each of the asserted claims, the court grants defendant's motion for
`
`summary judgment of invalidity as to each of the asserted claims of the '500 patent.
`
`3. The '158 patent
`
`Plaintiff asserted dependent claim 4 of the '158 patent, which claim depends
`
`from independent claim 1. Independent claim 1 of the'158 patent recites:
`
`A method for performing a real time Web transaction from a Web
`application over a digital network atop the Web, the method comprising:
`providing a Web page for display on a computer system coupled to an
`input device;
`providing a point-of-service application as a selection within the Web
`page, wherein the point-of-service application provides access to both a
`checking and savings account, the point-of-service application operating
`in a service network atop the World Wide Web;
`accepting a first signal from the Web user input device to select the
`point-of-service application;
`accepting subsequent signals from the Web user input device; and
`
`15
`
`
`
`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 17 of 25 PageID #: 6789
`
`transferring funds from the checking account to the savings account in
`real-time utilizing a routed transactional data structure that is both
`complete and non-deferred, in addition to being specific to the
`point-of-service application, the routing occurring in response to the
`subsequent signals.
`
`('158 patent, 9:40-1 0:15) Dependent claim 4 recites "[t]he method of claim 1, wherein
`
`object routing is used to complete the transfer of funds in a Web application." ('158
`
`patent, 10:21-22)
`
`The court concluded that the "service network" limitation, found in claim 1, is
`
`indefinite as detailed in the claim construction order. Claim 4's further limitation of
`
`"object routing," construed by the court as "system for transmitting data on a network
`
`using the TransWeb Management Protocol in which a unique IP address is
`
`hierarchically assigned to each object, e.g., each bank account," does not further
`
`describe the indefinite limitation "service network." Therefore, claim 4 is invalid for
`
`indefiniteness, and defendant's motion for summary judgment is granted in this regard.
`
`B. Enablement
`
`"To be enabling, the specification of a patent must teach those skilled in the art
`
`how to make and use the full scope of the claimed invention without 'undue
`
`experimentation."' ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir.
`
`201 0) (citations omitted). The specification need not disclose what is well-known in the
`
`art. Genentech, 108 F.3d at 1366. "[T]he rule that a specification need not disclose
`
`what is well known in the art is 'merely a rule of supplementation, not a substitute for a
`
`basic enabling disclosure."' ALZA, 603 F.3d at 940-41 (quoting Auto. Techs. lnt'l, Inc.
`
`v. BMW of N. Am., Inc., 501 F.3d 1274, 1282 (Fed. Cir. 2007)).
`
`16
`
`
`
`Case 1:12-cv-00282-SLR Document 165 Filed 05/14/14 Page 18 of 25 PageID #: 6790
`
`The three patents-in-suit share a specification, which purports to present "a
`
`configurable value-added network switching and object routing method and apparatus .
`
`. . . " ('492 patent, 9:38-39) The specification distinguishes the invention from Common
`
`Gateway Interface ("CGI"), a standard interface for running external programs on a web
`
`server, stating that "CGI scripts provide only limited two-way capabilities," while the
`
`invention allows web merchants to "provide real-time transactional capabilities to users."
`
`(/d., 5:49-58) The specification presents the concept of a "VAN switch," which allows
`
`"multi-protocol object routing."
`
`(/d., 7:62-63) However, the specification does not
`
`actually define, in language that would allow a person of ordinary skill in the art to make
`
`and use the invention, what a "VAN switch" is and how it accomplishes "object routing"
`
`or real-time transactions. Instead, the specification presents an abstract concept of
`
`real-time transactions, in which a merchant and a user interact. Genentech, 108 F.3d
`
`at 1366 ("Patent protection is granted in return for an enabling disclosure of an
`
`invention, not for vague intimations of general ideas that may or may not be workable.").
`
`The specification discloses a proprietary protocol, Trans Web TM M
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