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`EXHIBIT C
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`EXHIBIT C
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`

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`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 1 of 21 PageID #: 798
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 12-280-RGA
`
`C.A. No. 12-282-RGA
`
`C.A. No. 12-355-RGA
`
`)))))))))))))
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`PI-NET INTERNATIONAL, INC.,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`BANK OF AMERICA, N.A. and MERRILL
`LYNCH, PIERCE, FENNER & SMITH
`INCORPORATED,
`
`
`Defendants-Counterclaimants.
`
`
`PI-NET INTERNATIONAL INC.,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`JPMORGAN CHASE & CO.,
`
`
`Defendant.
`
`
`PI-NET INTERNATIONAL, INC.,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`CITIZENS FINANCIAL GROUP, INC.,
`
`
`Defendant.
`
`
`
`
`
`
`
`DECLARATION OF MICHAEL BARDASH
`
`I, Michael Bardash, hereby declare:
`
`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 2 of 21 PageID #: 799
`
`
`
`1.
`
`For complete background information and a detailed curriculum vitae, please see
`
`Background
`
`Exhibit A.
`
`2.
`
`I have been requested by counsel for Pi-Net International, Inc. to consider certain
`
`claim limitations of three United States Patents, and determine whether the claim limitations are
`
`definite to one of ordinary skill in the art, and, if so, the construction or understanding of those
`
`claims as they would be understood by a person of ordinary skill in the art, all as of the time
`
`frame of 1995-1996.
`
`Materials Considered
`
`3.
`
`In connection with the preparation of this declaration, I have reviewed the
`
`following materials, which are identified by the Appendix identifications that I understand have
`
`been submitted to the Court:
`
`a. U.S. Patent No. 5,987,500 (“the ‘500 Patent”) (Appendix A), and its prosecution
`
`history (Appendix D);
`
`b. U.S. Patent No. 8,037,158 (“the ‘158 Patent”) (Appendix B), and its prosecution
`
`history (Appendix E);
`
`c. U.S. Patent No. 8,108,492 (“the ‘492 Patent”) (Appendix C), and its prosecution
`
`history (Appendix F); and
`
`d. Defendants’ motion for summary judgment (marked as DI-60 and DI-61).
`
`Opinion
`
`4.
`
`I begin by noting that all three Patents share a common specification. As best
`
`shown in Figures 5C and 5D, the patents disclose a point-of-service (or POSvc) application, or
`
`Web application. The POSvc Application is displayed on a Web page and it encapsulates a
`
`
`
`- 2 -
`
`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 3 of 21 PageID #: 800
`
`transactional data structure called an “object” that is displayed on the Web page. That object,
`
`which contains attributes and information entries, is specific to a given web transaction in a
`
`POSvc application.
`
`5.
`
`The desired transaction is executed when the object is transmitted/routed between
`
`the POSvc Application and a Web merchant’s services, such as Bank services. The specification
`
`presents the example where (among other possibilities) Bank services are provided by the Web
`
`Merchant (presumably a bank), and the Banking POSvc Application (Web application) allows
`
`web users to transfer funds between checking and savings account. Other POSvc Applications
`
`(“Car Dealer” or “Pizzeria”) are also available to the user. As per the specification, the invention
`
`links a user with an online service from a Web application or POSvc application 510(1), using
`
`“object routing.” (Appendix C, ‘492 Patent 7:4-9; 7:62-8:39; Figs. 5A, B, C & D, and 8).
`
`6.
`
`Simple Object Access Protocol or SOAP is one embodiment of the object routing
`
`described in the Patents. SOAP is one of the more common request routing protocols currently
`
`in use on the internet. SOAP relies on an XML (eXtensible Markup Language) structure that is
`
`an encapsulated object containing structured data, as described in the Patents. Indeed, SOAP
`
`uses the terminology of “attributes” and “entries.” Normally, one or more attributes within a
`
`SOAP “payload” define the “object identity” of the individual data structure specific to the
`
`POSvc application on a Web page with “information entries and attributes” and this “object
`
`identity” is routed via an open channel exactly as described in the Patents, over an online service
`
`network across the Web. More specifically, SOAP requests in a Web transaction from a Web
`
`application are comprised of header fields and a message body fields that includes attributes and
`
`information entries as described in the Patents. This structured information specific to online
`
`
`
`- 3 -
`
`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 4 of 21 PageID #: 801
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`services, encapsulated as an “object” from a Web page, is routed to a Web merchant’s services,
`
`such as for example, the Back-office of a Web merchant, over the OSI Application layer.
`
`7.
`
`I will now consider the claim terms in order.
`
`Term A
`
`“means for transmitting a transaction request from said transactional application”
`
`Patent No. 5,987,500 Claims 1 and 35
`
`8.
`
`A person skilled in the art would recognize that the structure for this means plus
`
`function element is the “Exchange.” This is apparent from the following statements in the
`
`Patents:
`
`Having accessed Web server 104, user 100 can decide that he
`desires to perform real-time transactions. When Web server 104
`receives user 100’s indication that he desires to perform real-time
`transactions, the request is handed over to an exchange component.
`Thus, from Web page 105, for example, user 100 can select button
`500, entitled “Transactions” and Web server 104 hands user 100’s
`request over to the exchange component.
`
`(Appendix A, ‘500 Patent at 5:61-6:3). The Patent further states:
`
`
`Once Bank POSvc application 510 has been activated, user 100
`will be able to connect to Bank services and utilize the application
`to perform banking transactions, thus accessing data from a host or
`data repository 575 in the Bank “Back Office.” … This connection
`between user 100 and Bank services is managed by exchange 501.
`As illustrated in FIG. 5D, once the connection is made between
`Bank POSvc application 510(1), for example, and Bank services,
`an operator agent on Web server 104 may be activated to ensure
`the availability of distributed functions and capabilities.
`
`(‘500 Patent at 6:54-65). In addition, the Exchange is shown as the structure for transmitting the
`
`transaction request in Figure 4B.
`
`9.
`
`Thus, the Exchange corresponds to the “means for transmitting a transaction
`
`request from said transactional application.”
`
`
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`- 4 -
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`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 5 of 21 PageID #: 802
`
`
`
`The Exchange itself is The Exchange itself is shown in the following Figures 4B and 5C & D4B and 5C & D of the
`
`
`
`10.
`
`Patents:
`
`Figure 4B
`
`Figure 5C
`
`
`
`Figure 5DFigure 5D
`
`
`
`
`
`
`
`
`
`
`
`All three Figures show that the Exchange includes a All three Figures show that the Exchange includes a Web page and a list of list of POSvc Applications
`
`
`
`
`
`
`
`510. Figures 5C & D show that the Exchange sits on a Web serverFigures 5C & D show that the Exchange sits on a Web server, but the Patent adds that the , but the Patent adds that the
`
`
`
`
`
`Exchange can also be elsewhere located: “Exchange can also be elsewhere located: “For the purposes of illustration, exchange 501 in Fig. For the purposes of illustration, exchange 501 in Fig.
`
`
`
`
`
`5D is shown as running on a different computer system (Web server 104) from the computer running on a different computer system (Web server 104) from the computer running on a different computer system (Web server 104) from the computer
`
`
`
`
`
`systems of the Web merchants running POSvc applications (computer system 200).systems of the Web merchants running POSvc applications (computer system 200).systems of the Web merchants running POSvc applications (computer system 200). Exchange
`
`
`
`
`
`501 may, however, also be on the same computer system as one or more of the computer systems501 may, however, also be on the same computer system as one or more of the computer systems501 may, however, also be on the same computer system as one or more of the computer systems
`
`
`
`of the Web merchants.” (Appendixendix C at 6:58-64).
`
`11.
`
`
`
`
`
`The specification also specification also states that “Exchange 501 comprises Web page 505 and s that “Exchange 501 comprises Web page 505 and
`
`
`
`
`
`point-of-service (POSvc) applications 510. Exchange 501 also conceptually includes a switching service (POSvc) applications 510. Exchange 501 also conceptually includes a switching service (POSvc) applications 510. Exchange 501 also conceptually includes a switching
`
`
`
`
`
`component and an object routing cocomponent and an object routing component,” and “Exchange 501 processes the consumer's mponent,” and “Exchange 501 processes the consumer's
`
`
`
`
`
`request and displays an exchange Web page 505 that includes a list of POSvc Application request and displays an exchange Web page 505 that includes a list of POSvc Application request and displays an exchange Web page 505 that includes a list of POSvc Application
`
`
`
`applications 510 accessible by exchange 501.” applications 510 accessible by exchange 501.” (Appendix C at 6:18-21, 3921, 39-41).
`
`
`
`
`
`- 5 -
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`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 6 of 21 PageID #: 803
`
`12.
`
`A “Web page” is a generally-recognized term. It is web document or other web
`
`resource rendered through a web browser. As stated in the Patent, “Web browsers are software
`
`interfaces that run on Web clients to allow access to Web servers via a simple user interface.”
`
`(Appendix C at 1:37-39) (The Patent also states that any Web browser may be employed).
`
`13.
`
`The term “Point-of-Service Application” or “POSvc Application” is apparently a
`
`term coined by the inventor, and is element “510” in the Patent figures. The Patents explain that
`
`“POSvc Application 510 are transactional applications, namely applications that are designed to
`
`incorporate and take advantage of the capabilities provided by the present invention.” (Appendix
`
`C at 6:22-25). When the POSvc Application is invoked or activated, the user:
`
`will be able to connect to Bank services and utilize the application
`to perform banking transactions, thus accessing data from a host or
`data repository 575 in the Bank “Back Office.” … As illustrated in
`FIG. 5D, once the connection is made between Bank POSvc
`application 510(1), for example, and Bank services, an operator
`agent on Web server 104 may be activated to ensure the
`availability of distributed functions and capabilities.
`
`(Appendix C at 6:65-7:9). The POSvc Application itself
`
`is displayed via the graphical user interface component. One
`embodiment of the present invention supports HyperText Markup
`Language as the graphical user interface component. Virtual
`Reality Markup Language and Java™ are also supported by this
`embodiment.
`
`(Appendix C at 6:44-48).
`
`14.
`
`A POSvc Application is best shown in Figures 5C and 5D:
`
`
`
`
`
`
`
`
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`- 6 -
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`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 7 of 21 PageID #: 804
`
`
`
`15.
`
`
`
`
`
`In short, as shown above, a list of available POSvc Applications are presented to In short, as shown above, a list of available POSvc Applications are presented to In short, as shown above, a list of available POSvc Applications are presented to
`
`
`
`
`
`the user on the web page. When the user selects a particular POSvc application, a web server the user on the web page. When the user selects a particular POSvc application, a web server the user on the web page. When the user selects a particular POSvc application, a web server
`
`
`
`request activates the selected POSvc application request activates the selected POSvc application (Web application) and that POSvand that POSvc Application
`
`
`
`
`
`
`
`in turn connects to Bank or other Web merchant services, and user 100 will be able to access in turn connects to Bank or other Web merchant services, and user 100 will be able to access in turn connects to Bank or other Web merchant services, and user 100 will be able to access
`
`
`
`
`
`data from a host or data repository 575 in the Bank Backdata from a host or data repository 575 in the Bank Back-Office and thus perform Web banking Office and thus perform Web banking
`
`
`
`
`
`transactions using the Web applicationtransactions using the Web application. This connection between user 100 and Bank services is . This connection between user 100 and Bank services is
`
`
`
`
`
`managed by Exchange 501. The critical point is that, as shown in Figure 5D, the POSvc managed by Exchange 501. The critical point is that, as shown in Figure 5D, the POSvc managed by Exchange 501. The critical point is that, as shown in Figure 5D, the POSvc
`
`
`
`
`
`Application displays the “object” data structure with its attributes and it provides a mechanism to Application displays the “object” data structure with its attributes and it provides a mechanism to Application displays the “object” data structure with its attributes and it provides a mechanism to
`
`
`
`
`
`retrieve (or send) information entries from send) information entries from (or to) the service provider’s system corresponding to the service provider’s system corresponding to
`
`
`
`- 7 -
`
`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 8 of 21 PageID #: 805
`
`the Web transaction request. Thus, with the webpage and POSvc Application (collectively the
`
`Exchange 501), the user can transmit a transaction request from the transactional application.
`
`16.
`
`In light of the above analysis, my opinion is that a person skilled in the art would
`
`understand the term “means for transmitting a transaction request from said transactional
`
`application” and would understand that the structure performing the function is the structure that
`
`the ‘500 Patent defines as the Exchange.
`
`Term B
`
`“means for processing said transaction request”
`
`Patent No. 5,987,500 Claims 1 and 35
`
`17.
`
`This limitation in the ‘500 Patent is directed to the processing of the Web
`
`transaction request, and specifically the function is to process the Web transaction request
`
`transmitted from the transactional application.
`
`18.
`
`The Patent claims are directed to the “front-end” (a Web application with an
`
`object identity data structure with information entries and attributes to connect a Web transaction
`
`request from the POSvc Application to the Bank’s services).
`
`19.
`
`The Patent further states that:
`
`For the purposes of illustration, exchange 501 in FIG. 5D is shown
`as running on a different computer system (Web server 104) from
`the computer systems of the Web merchants running POSvc
`applications (computer system 200). Exchange 501 may, however,
`also be on the same computer system as one or more of the
`computer systems of the Web merchants.
`
`Once Bank POSvc application 510 has been activated, user 100
`will be able to connect to Bank services and utilize the application
`to perform banking transactions, thus accessing data from a host or
`data repository 575 in the Bank "Back Office."
`
`
`
`- 8 -
`
`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 9 of 21 PageID #: 806
`
`
`
`(‘500 Patent, Appendix A at 6:6:47-58). Figure 5D, which is cited in the abovecited in the above excerpt, shows the
`
`
`
`
`
`POSvc applications running on POSvc applications running on a “web server 104,” “computer system 200computer system 200” and connecting with
`
`
`
`
`
`the “host or data repository 575or data repository 575” in the Bank Back Office:
`
`
`
`20.
`
`
`
`
`
`A “web server” is a wellA “web server” is a well-known and recognized structure. A computer system is known and recognized structure. A computer system is
`
`
`
`also, and, in any event, the Patent the Patent describes “computer system 200” in Figure 2 and in Figure 2 and in the
`
`
`
`
`
`accompanying text as follows:as follows:
`
`
`In general, such computer systems as illustrated by FIG.In general, such computer systems as illustrated by FIG. 2
`
`
`comprise a bus 201 for communicating information, a processor comprise a bus 201 for communicating information, a processor comprise a bus 201 for communicating information, a processor
`
`
`202 coupled with the bus 201 for processing information, main 202 coupled with the bus 201 for processing information, main 202 coupled with the bus 201 for processing information, main
`
`
`memory 203 coupled with the bus 201 for storing information and memory 203 coupled with the bus 201 for storing information and memory 203 coupled with the bus 201 for storing information and
`
`
`instructions for the processor 202, a readinstructions for the processor 202, a read-only memory 204 only memory 204
`
`coupled with the bus 201 for storing static information and d with the bus 201 for storing static information and
`
`
`instructions for the processor 202, a display device 205 coupled instructions for the processor 202, a display device 205 coupled instructions for the processor 202, a display device 205 coupled
`
`
`with the bus 201 for displaying information for a computer user, an with the bus 201 for displaying information for a computer user, an with the bus 201 for displaying information for a computer user, an
`
`
`input device 206 coupled with the bus 201 for communicating input device 206 coupled with the bus 201 for communicating input device 206 coupled with the bus 201 for communicating
`
`
`information and command selections to the processor 202, and a on and command selections to the processor 202, and a on and command selections to the processor 202, and a
`
`
`mass storage device 207, such as a magnetic disk and associated mass storage device 207, such as a magnetic disk and associated mass storage device 207, such as a magnetic disk and associated
`
`
`disk drive, coupled with the bus 201 for storing information and disk drive, coupled with the bus 201 for storing information and disk drive, coupled with the bus 201 for storing information and
`
`
`instructions. A data storage medium 208 containing digital instructions. A data storage medium 208 containing digital instructions. A data storage medium 208 containing digital
`
`
`information is configured to operate with mass storage device 207 s configured to operate with mass storage device 207 s configured to operate with mass storage device 207
`
`
`to allow processor 202 access to the digital information on data to allow processor 202 access to the digital information on data to allow processor 202 access to the digital information on data
`
`storage medium 208 via bus 201. storage medium 208 via bus 201.
`
`
`
`- 9 -
`
`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 10 of 21 PageID #: 807
`
`Processor 202 may be any of a wide variety of general purpose
`processors or microprocessors ….
`
`In general, processor 202 retrieves processing instructions and data
`from a data storage medium 208 using mass storage device 207
`and downloads this information into random access memory 203
`for execution. ….
`
`The preferred embodiment of the present invention is implemented
`as a software module, which may be executed on a computer
`system such as computer system 200 in a conventional manner.
`Using well known techniques, the application software of the
`preferred embodiment is stored on data storage medium 208 and
`subsequently loaded into and executed within computer system
`200. Once initiated, the software of the preferred embodiment
`operates in the manner described below.
`
`(‘500 Patent, Appendix A at 3:55 to 4:44)
`
`21.
`
`In addition, the inventor added more detail in the Patent as to the “Back Office” in
`
`Figure 4 (both Figures 4A and B show the same “Back Office” structure), which describes a
`
`“Back Office,” which includes also components that would be viewed as parts of the “computer
`
`system 200”:
`
`
`
`
`
`22.
`
`Thus, the means for processing the transaction request are well-identified and
`
`explained in the Patent. In my opinion, a person skilled in the art would recognize that the
`
`
`
`- 10 -
`
`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 11 of 21 PageID #: 808
`
`“means for processing said transaction request” is exactly that – the structures that are used to
`
`process the request, and these include the “computer system 200” connecting to the “host or data
`
`repository 575 in the Bank ‘Back Office.’” Because these are Web applications and Web
`
`transactions, the structures would also include “Web server 104.” If more detail was required,
`
`the skilled artisan had the above-quoted description and Figure 4B to consult. It is my opinion
`
`that a person skilled in the art would be able to implement the function of “processing said
`
`transaction request” based on the disclosure of the Patent, and utilizing the structures depicted
`
`above.
`
`Term C
`
`“computer system executing the Back-end transactional application
`
`for processing the transaction request in real-time”
`
`U.S. Patent No. 8,108,492 Claims 1-8
`
`23.
`
`I understand that Defendants argue that this limitation in the ‘492 Patent is
`
`indefinite on the grounds that it is a means-plus-function element governed by 35 U.S.C. §112(f),
`
`and Plaintiff argues that it is not. Whether this is a means-plus-function limitation is a legal
`
`question that I will not address.
`
`24.
`
`Even if this limitation in the ‘492 Patent was a means-plus-function limitation, it
`
`would basically be the ‘492 Patent’s counterpart to the limitation “means for processing said
`
`transaction request” that I discussed above with respect to the ‘500 Patent. I incorporate my
`
`discussion of Term B, and reach the same conclusions.
`
`25.
`
`The words of this claim term, and the term itself, are used in common parlance
`
`and by persons of skill in the pertinent art to designate structure.
`
`
`
`- 11 -
`
`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 12 of 21 PageID #: 809
`
`26.
`
`The term “computer system” has a common meaning both in common parlance
`
`and to one skilled in the art. It means “The configuration that includes all the functional
`
`components of a computer and its associated hardware.” (Microsoft Computer Dictionary 3d
`
`Edition, 1997).
`
`27.
`
`“Computer system” has been similarly identified as “A complete, working
`
`computer. Computer systems will include the computer along with any software and peripheral
`
`devices that are necessary to make the computer function. It is clearly understood by someone
`
`“skilled in the art” that, for example, every computer system, requires an operating system.”
`
`This is corroborated by common public domain articles (Webopedia,
`
`http://www.webopedia.com/TERM/C/computer_system.html,
`
`http://www.en.wikipedia.org/wiki/Operating_system, and PC Magazine
`
`http://www.pcmag.com/encyclopedia_term/0,2542,t=computer+system&i=40175,00.asp).
`
`28.
`
`The remainder of the term specifies what that computer system does:
`
`Once Bank POSvc application 510 has been activated, user 100
`will be able to connect to Bank services and utilize the application
`to perform banking transactions, thus accessing data from a host or
`data repository 575 in the Bank "Back Office." The Bank Back
`Office comprises legacy databases and other data repositories that
`are utilized by the Bank to store its data.
`
`(Appendix C, ‘492 Patent at 6:65-7:4).
`
`29.
`
`The ‘492 Patent shows the computer system. See the annotated Figure 5D from
`
`paragraph 19, above, and the accompanying description. Figure 5D shows an object or the
`
`transactional data structure being routed to the “Back end.” The Patent describes this limitation
`
`as follows:
`
`
`
`In general, such computer systems as illustrated by FIG. 2
`comprise a bus 201 for communicating information, a processor
`202 coupled with the bus 201 for processing information, main
`memory 203 coupled with the bus 201 for storing information and
`
`- 12 -
`
`

`

`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 13 of 21 PageID #: 810
`
`instructions for the processor 202, a read-only memory 204
`coupled with the bus 201 for storing static information and
`instructions for the processor 202, a display device 205 coupled
`with the bus 201 for displaying information for a computer user, an
`input device 206 coupled with the bus 201 for communicating
`information and command selections to the processor 202, and a
`mass storage device 207, such as a magnetic disk and associated
`disk drive, coupled with the bus 201 for storing information and
`instructions. A data storage medium 208 containing digital
`information is configured to operate with mass storage device 207
`to allow processor 202 access to the digital information on data
`storage medium 208 via bus 201.
`
`Processor 202 may be any of a wide variety of general purpose
`processors or microprocessors ….
`
`In general, processor 202 retrieves processing instructions and data
`from a data storage medium 208 using mass storage device 207
`and downloads this information into random access memory 203
`for execution. ….
`
`The preferred embodiment of the present invention is implemented
`as a software module, which may be executed on a computer
`system such as computer system 200 in a conventional manner.
`Using well known techniques, the application software of the
`preferred embodiment is stored on data storage medium 208 and
`subsequently loaded into and executed within computer system
`200. Once initiated, the software of the preferred embodiment
`operates in the manner described below.
`
`(Appendix C, ‘492 Patent at 4:3-57)
`
`30.
`
`Another structure for the limitation disclosed in the Patent is the “Back Office” as
`
`depicted in Figures 4 (both Figures A and B show the same “Back Office” structure):
`
`
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`- 13 -
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`

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`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 14 of 21 PageID #: 811
`
`
`
`
`
`31.
`
`Thus, the Patent well-describes the “computer system executing the Back-end
`
`transactional application for processing the transaction request in real-time”
`
`32.
`
`Figure 4, as shown above, identifies the elements the inventor envisioned as being
`
`the components of a “computer system executing the Back-end transactional application for
`
`processing the transaction request in real-time.”
`
`33.
`
`The inventor also stated that the “Back-Office” system “comprises legacy
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`databases and other data repositories that are utilized by the Bank to store its data.” (Appendix C
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`at 7:2-4).
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`34.
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`Therefore, the claim term is not only understandable to a person skilled in the art,
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`but the words are commonly used. And, the inventor has defined the term in the ‘492 Patent, in a
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`way that is consistent with how the term would be understood by one skilled in the art.
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`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 15 of 21 PageID #: 812
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`Term D
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`“keeping a transaction flow captive”
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`Patent No. 5,987,500 Claims 1, 10 and 35 (All Claims)
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`35.
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`Defendants argue that the term “keeping a transaction flow captive” is indefinite.
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`I disagree. In my opinion, considering the plain language of the claim, the specification and the
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`prosecution history, a person skilled in the art understands that the term means “maintain
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`continuous control (over a real-time Web transaction).”
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`36.
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`In this case, I start with the prosecution history where the term was first
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`introduced. The United States Patent and Trademark Office had rejected then-proposed claims
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`as obvious in view of a prior art publication by Davison. (Appendix D at 9). In response, the
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`inventor amended the claims to include the element “said value-added network service provider
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`keeping a transaction flow captive” to distinguish over the art. (Appendix D at 14, 15). The
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`inventor then argued:
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`Contrary to the present invention, the CGI forms-based application
`in Davison is customized to a particular operation or service. The
`CGI application does not allow a user to connect to a variety of
`services on the Web and to perform real-time transactions on those
`services nor does it allow the value-added network service
`provider to keep the transaction flow captive at the network entry
`point. Instead, the CGI application can only allow a user to interact
`with a single service. As described in the Background section of
`the present application at page 4, a CGI application is not a viable
`solution for merchants with a large number of services because
`such an application does not provide true real-time, bi-directional
`capabilities on the Web.
`
`In the present invention, in contrast, a user can connect to various
`services and complete robust real-time, interactive transactions on
`those services. The present invention allows the user to switch
`between transactional applications which are associated with
`various value-added network service providers and content owners.
`Each transactional application is capable of providing the user with
`a complete set of transactional services offered by a certain
`network merchant (i.e. a certain network service provider). For
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`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 16 of 21 PageID #: 813
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`example, if the user selects a Bank transactional application, the
`Bank application is activated and the user is connected to a variety
`of Bank services. The user can perform any Bank transaction in
`real time and interactively. … Unlike the CGI forms-based
`application in Davison, which connects the user only to a certain
`service, the transactional application in the present invention
`connects the user to a complete set of services rendered by at least
`one merchant associated with this transactional application.
`
`(Appendix D at 21-22).
`
`37.
`
`Thus, the term was introduced by the inventor as a readily understandable
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`shorthand for maintaining continuous control of a transaction at the network entry point, to
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`distinguish the prior art’s CGI. This element is clearly defined and supported by the
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`specification which indicates continuous control over a real-time Web transaction from a POSvc
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`application on a Web page. Thus, the algorithm shown in block 806 through block 818 in Fig. 8
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`and the accompanying description at Appendix A, ‘500 Patent at 9:17-31 shows keeping a
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`transaction flow captive. The Patent also says that:
`
`[T]he present invention is implemented to function as a routing
`switch in application layer 307. Application layer routing creates
`an open channel for the management, and the selective flow of data
`from remote databases on a network.
`
`(Appendix A, ‘500 Patent at 5:13-15). Further:
`
`Switching service 702 … performs a number of tasks including the
`routing of user connections to remote VAN switches, described in
`the paragraph above, multiplexing and prioritization of requests,
`and flow control. Switching service 702 also facilitates open
`systems’ connectivity with both the Internet (a public switched
`network) and private networks including back office networks,
`such as banking networks.
`
`(Appendix A, ‘500 Patent at 8:44-53). The ability of the invention to keep a Web transaction
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`captive, is described in the “straight through processing” that begins with the user choosing an
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`action or Web transaction (like transfer funds between bank accounts). The user fills in the
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`entries/attributes in the Web application and connects to a Web merchant’s service as described
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`Case 1:12-cv-00355-RGA Document 61-1 Filed 04/01/13 Page 17 of 21 PageID #: 814
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`throughout the specification, such as at 6:66 to 7:28; 8:7-18; and Figures 5D. The transaction is
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`captive until the Web merchant’s service returns the requested information, through the
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`application layer of the OSI model via the service network on the Web to the user.
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`38.
`
`A real-time Web transaction from a POSvc Application is inherently captive. As
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`shown in the transaction flow in Figures 4B and 5D, an object data structure is displayed on the
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`Web page with which the user interacts and personalizes, and then this personalized data
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`structure is routed to Web merchant’s services, thereby keeping the transaction captive until the
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`results of the Web transaction are returned to the user in real-time or user completes his Web
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`transaction in real-time.
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`39.
`
`Thus, a person skilled in the art would readily recognize from the prosecution
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`history the meaning of the term, and that meaning corresponds to recognized portions of the
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`specification. The term is a shorthand statement in common parlance of an aspect of the
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`invention that is clearly disclosed, and, indeed, highlighted, in the specification.
`
`
`
`Term E
`
`“a routed transactional data structure that is both complete and n