throbber
Paper 33
`Trials@uspto.gov
`571-272-782 Entered: August 14, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`NAUTILUS HYOSUNG INC.,
`Petitioner,
`
`v.
`
`DIEBOLD NIXDORF, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00034
`Patent 7,314,163 B1
`____________
`
`
`Before BARBARA A. BENOIT, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`I. INTRODUCTION
`This is a covered business method (“CBM”) patent review, under § 18
`of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 331 (2011).1 We have jurisdiction to hear this review under
`35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 328(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
`that Petitioner has shown by a preponderance of the evidence that claims 1–
`24 of U.S. Patent No. 7,314,163 B1 (Ex. 1001, “the ’163 patent” or “the
`challenged patent”) are unpatentable.
`
`A. Procedural History
`Nautilus Hyosung Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting a covered business method patent review of claims 1–24 (the
`“challenged claims”) of the ’163 patent, owned by Diebold Nixdorf, Inc.2
`(“Patent Owner”). We instituted a covered business method patent review
`for the challenged claims of the ’163 patent. Paper 9 (“Inst. Dec.”), 44.
`
`
`1 See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1310 (Fed. Cir. 2015)
`(describing transitional program for review of covered business method
`patent under 35 U.S.C. §§ 321–29, pursuant to the AIA).
`2 Patent Owner informed the Board of a name change from Diebold, Inc. to
`Diebold Nixdorf, Inc. and that real party-in-interest Diebold Self-Service
`Systems Division of Diebold, Inc. would be referred to as Diebold Self-
`Service Systems Division of Diebold Nixdorf, Inc. Paper 18 (Updated
`Patent Owner Mandatory Notice). Patent Owner indicated that the renaming
`“does not at this time reflect any change in corporate structure and does not
`presently involve the addition or removal of any real party-in-interest.” Id.
`2
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 16, “PO Resp.”), to which Petitioner filed a Reply
`(Paper 19), which was corrected on the same day (Paper 21, “Reply”). An
`oral hearing was held and a transcript of the hearing has been entered into
`the record. Paper 32 (“Tr.”).
`
`B. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 2; Paper 5 (Patent Owner’s Mandatory
`Notices). Petitioner and Patent Owner represent that the challenged patent is
`being asserted against Petitioner in an United States district court
`proceeding—Diebold, Inc. v. Nautilus Hyosung Inc., No. 1:15-cv-2153
`(N.D. Ohio)—and an United States International Trade Commission (“ITC”)
`investigation—In the Matter of Certain Automated Teller Machines, ATM
`Modules, Components Thereof, and Products Containing Same, No. 337-
`TA-972.3 Pet. 2, Paper 5.
`
`
`3 In the ITC investigation, the Administrative Law Judge made a
`determination regarding whether claims 20–24 of the ’163 patent were
`directed to ineligible subject matter under 35 U.S.C. § 101. Ex. 1026, 27.
`An issue arose during the oral hearing for this covered business method
`patent review regarding what effect, if any, the ruling in the ITC
`investigation should have on this proceeding. Tr. 36:8–20, 37:19–38:2,
`41:10–42:4. Subsequently, we gave the parties an opportunity to brief the
`issue. Paper 28 (“Order”); Paper 29 (“Petitioner’s Br.”); Paper 30 (“Patent
`
`
`
`3
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`C. The Challenged Patent
`The ’163 patent is titled “Check Accepting and Cash Dispensing
`Automated Bank Machine System and Method.” Ex. 1001, [54]. The patent
`issued from an application filed on April 16, 2007, which claimed through a
`series of various applications the benefit of the filing date of November 27,
`2000. Id. at [45], 1:8–32.
`
`1. The Written Description
`The challenged patent describes techniques for an automated banking
`machine that accepts check deposits. Ex. 1001, Abstract. A check imaging
`device of the automated banking machine generates a digital image of a
`check deposited by a customer. Id. The automated banking machine
`modifies the check image data to produce a modified check image that
`excludes sensitive check information, such as the customer’s account
`number in the check’s magnetic link character recognition (or micr) line.
`Id.; see also Ex. 1009, 4:14–15 (describing a micr line as typically including
`a code identifying the issuing bank, the account number, and the check
`number). Figure 1 is reproduced below.
`
`Owner’s Br.”). Both parties agree, as do we, that the ITC ruling does not
`have a preclusive effect on this proceeding. Texas Instruments Inc. v. United
`States Int’l Trade Comm’n, 851 F.2d 342 (Fed. Cir. 1988) (holding
`“decisions of the ITC involving patent issues have no preclusive effect in
`other forums”); see Tandon Corp. v. United States Int’l Trade Comm’n, 831
`F.2d 1017, 1019 (Fed. Cir. 1987) (holding ITC’s determinations regarding
`patent issues should be given no res judicata or collateral estoppel effect);
`Patent Owner Br. 2; Petitioner’s Br. 2.
`4
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`
`Figure 1 shows exemplary automated banking machine 10 that
`accepts deposits. Id. at 10:8–10, 13:15–19. Automated banking machine 10
`includes function buttons 14 through which a customer provides inputs to
`the machine. Id. at 13:23–28. In an exemplary embodiment, automated
`banking machine 10 includes a cash dispensing mechanism that dispenses
`cash to a customer through cash outlet 28. Id. at 14:4–9. The exemplary
`embodiment further includes deposit accepting opening 30 “to accept
`deposits in the form of sheets, envelopes, and other items.” Id. at 14:9–14.
`Automated banking machine 10 also includes a printer to provide receipts.
`Id. at 13:54–57. As shown in Figure 1, automated banking machine 10
`includes printer outlet 26. Figure 72 is reproduced below.
`
`
`
`5
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`
`Figure 72 is a representation of a front side of check 422. Id. at
`12:54–55. The front side of check 422 includes payor name 424, payee
`name, check number data 428, date data 430, legal amount 432, courtesy
`amount 434, micr line 436, and authorized signature of payor 438.
`
`2. Illustrative Claims
`Petitioner challenges all twenty-four claims4 of the challenged patent.
`Claims 1, 20, and 24 are independent claims. Claims 1 and 20 as well as
`claim 4, which depends ultimately from claim 1, are illustrative of the
`claimed subject matter:
`1. A method comprising:
`(a) operating a machine to generate check image data
`corresponding to at least one side of a check, wherein the at least
`one side includes visual features, wherein the check image data
`includes visual feature data corresponding to the visual features,
`wherein the machine includes a check imaging device and at least
`
`4 We understand that “data” is plural for “datum.” We follow the practice of
`the challenged patent and parties in referring to “data” as singular and do so
`for consistency.
`
`6
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`one processor in operative connection with the check imaging
`device; and
`(b) operating the machine to modify the check image data
`generated in step (a) to produce modified check image data,
`wherein at least some visual feature data included in the check
`image data is not included in the modified check image data.
`4. The method according to claim 3 wherein the machine
`comprises an automated banking machine including a cash
`dispenser, wherein step (c) includes operating the automated
`banking machine to receive the at least one check from a user of
`the automated banking machine during a check cashing
`transaction, and further comprising (d) operating the machine to
`dispense cash during the check cashing transaction.
`Ex. 1001, 70:33–46, 70:58–65.
`20. A method comprising:
`(a) operating a check imaging device of a cash dispensing
`machine to image check data on a check, wherein the check data
`includes micr line data and signature data, wherein the machine
`includes least one processor in operative connection with the
`check imaging device;
`(b) generating check image data corresponding to check
`data imaged in step (a), wherein the check image data includes
`micr line image data representative of the micr line data, wherein
`the check
`image data
`includes signature
`image data
`representative of the signature data; and
`(c) modifying the check image data generated in step (b)
`to produce modified check image data, wherein at least a portion
`of the micr line image data included in the check image data is
`not included in the modified check image data.
`Id. at 72:26–42.
`
`
`
`7
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`D. Covered Business Method Patent
`AIA section 18 establishes a post-grant review proceeding “for review
`of the validity of covered business method patents.” § 18(a)(1). The statute
`defines a “covered business method patent” as “a patent that claims a
`method or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service, except that the term does not include patents for
`technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301. In other
`words, only patents that claim “a financial activity element” are eligible for
`covered business method patent reviews and only if the patent is not for a
`technological invention. Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848
`F.3d 1370, 1381 (Fed. Cir. 2017) (“Necessarily, the statutory definition of a
`CBM patent requires that the patent have a claim that contains, however
`phrased, a financial activity element”); see also id. at 1377 (“The statutory
`definition by its terms makes what a patent ‘claims’ determinative of the
`threshold requirement for coming within the defined class.”). A patent need
`have only one claim directed to a covered business method to be eligible for
`review. Id. at 1381 (requiring “a claim”); see Transitional Program for
`Covered Business Method Patents--Definitions of Covered Business Method
`Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736
`(Aug. 14, 2012); see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
`1306, 1326–27 (Fed. Cir. 2015) (accepting single claim analysis to
`determine whether to institute a covered business method patent review).
`
`
`
`8
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`In our Decision to Institute, we determined, as a threshold matter in
`considering whether to institute a review, that the challenged patent is
`eligible for a covered business method patent review. Inst. Dec. 8–14; see
`AIA § 18(a)(1)(E) (“[t]he Director may institute a transitional proceeding
`[under § 18] only for a patent that is a covered business method patent.”).
`More specifically, we determined that the challenged patent claims a
`method or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service. Inst. Dec. 9–10. As noted in our Decision to Institute,
`claim 1 recites “operating a machine to generate check image data
`corresponding to . . . one side of a check.” Ex. 1001, 70:34–41; Inst.
`Dec. 10. Claim 4 additionally limits the claimed machine to “an automated
`banking machine including a cash dispenser” and requires “operating the
`[automated banking] machine to dispense cash during the check cashing
`transaction.” Ex. 1001, 70:58–65; Inst. Dec. 10 (quoting claim 4).
`We also concluded that the technological features of the claimed steps
`were directed to using known technologies and so did not fall within the
`technological invention exception. Inst. Dec. 12 (citing 77 Fed. Reg. at
`48,764 (indicating use of known technologies does not render a patent a
`technological invention)); see also id. at 13 (“The subject matter of claim 4,
`as a whole, does not require any specific, unconventional software, computer
`equipment, processing capabilities, or other technological features to
`produce the required functional result.”). In concluding claim 4 requires
`only the use of known prior art technology, we relied on indications in the
`9
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`Specification of the challenged patent regarding automated banking
`machines. Id. at 13 (“Moreover, the Specification indicates that
`‘[a]utomated banking machines are known in the prior art’ and ‘are
`commonly used to carryout transactions such as dispensing cash . . . and/or
`receiving deposits from users.’ [Ex. 1001,] 1:44–47. The Specification also
`indicates, in its ‘background art’ section, that imaging devices may be used
`to process deposited checks or other instruments. Id. at 1:42, 2:60–61; see
`also id. at 2:30–31 (indicating a deposited check is a type of instrument).”).
`We further concluded, based on statements in the Specification, that the
`purpose of the claimed subject matter is to address the business problem of
`reducing the risk of fraud by removing sensitive information from an image
`of a check. Inst. Dec. 13 (quoting Ex. 1001, 35:17–22).
`After institution of the covered business method patent review, Patent
`Owner did not contest whether the challenged patent is a covered business
`method patent. See generally PO Resp. Having reviewed afresh the
`challenged claims and supporting Specification, we conclude that our initial
`finding in the Decision to Institute was correct. Specifically, we conclude
`that the ’163 patent is eligible for a covered business method patent review.
`
`E. Instituted Grounds of Unpatentability
`We instituted a covered business method patent review of the
`challenged patent based on the following grounds set forth by Petitioner in
`its Petition.
`
`
`
`10
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`Basis5
`
`Challenged Claim(s)
`
`Reference(s)
`
`§ 101
`§ 102
`§ 103
`§ 103
`§ 103
`
`1–24
`1–3 and 5
`1–3, 5, and 13–24
`4
`16–18
`
`
`Riach6
`Riach and Graf7
`Riach, Graf, and Gustin8
`Riach, Graf, and Anderson9
`
`Inst. Dec. 43–44.
`
`II. DISCUSSION
`To prevail in challenging claims 1–24 of the ’163 patent, Petitioner
`must demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d).
`
`A. Claim Construction
`In a covered business method patent review, a claim in an unexpired
`patent shall be given its broadest reasonable construction, in light of the
`specification of the patent in which it appears. 37 C.F.R. § 42.300(b);
`
`
`5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the challenged patent was filed before March 16,
`2013, we refer to the pre-AIA version of §§ 102 and 103 in this decision.
`6 U.S. Patent No. 5,751,842, issued May 12, 1998 (Ex. 1008, “Riach”).
`7 U.S. Patent No. 5,631,984, issued May 20, 1997 (Ex. 1009, “Graf”).
`8 U.S. Patent No. 5,897,625, issued Apr. 27, 1999 (Ex. 1010, “Gustin”).
`9 U.S. Patent No. 5,581,682, issued Dec. 3, 1996 (Ex. 1019, “Anderson”).
`11
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`see Versata Dev. Grp., 793 F.3d at 1328 (affirming use of broadest
`reasonable construction standard in a covered business method patent
`review); cf. In re Cuozzo Speed Techs., LLC, LLC v. Lee, 136 S. Ct. 2131,
`2144 (2016) (regarding a similar broadest reasonable construction standard
`for an inter partes review, the Supreme Court held that 37 C.F.R.
`§ 42.100(b) “represents a reasonable exercise of the rulemaking authority
`that Congress delegated to the Patent Office”). Under the broadest
`reasonable construction standard, claim terms are presumed to be given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). To rebut this presumption by
`acting as a lexicographer, the patentee must give the term a particular
`meaning in the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In addition,
`the broadest reasonable construction of a claim term cannot be so broad that
`the construction is unreasonable under general claim construction principles.
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
`(discussing broadest reasonable construction in the context of an inter partes
`review). We construe the challenged claims according to these principles.
`
`1. “Modifying the check image data . . . to produce
`modified check image data”
`A central issue in this proceeding is the scope of “modifying the check
`image data . . . to produce modified check image data” having certain
`characteristics, required by independent claims 1 and 20. Ex. 1001, 72:38–
`12
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`42 (claim 20, step (c) reciting “modifying the check image data . . . to
`produce modified check image data” having certain characteristics); id. at
`70:42–64 (claim 1, step (b) reciting “to modify the check image data . . . to
`produce modified check image data” having certain characteristics).
`As made clear by its contentions regarding the asserted prior art in its
`Petition and expressly in its Reply, Petitioner contends that “modifying . . .
`to produce” encompasses copying a portion of the original check image data
`to create a new image—the recited modified image. Pet. 30 (indicating a
`prior art reference describes that “[t]he modified image that is extracted . . .
`excludes other portions of the original image of the check.”); Pet. 44
`(contending that the asserted reference “produces a [new] image . . . that
`includes a blank region as modified . . . data in place of the original [data]
`image in the full check image”); Reply 3 (asserting that “[a]ny operation that
`processes original image data to produce different image data should be
`considered ‘modifying’ the original image data” and so would include
`changing, altering, “limiting, reducing, redacting, cropping, omitting, or
`extracting/copying some, but not all, of a check image”); Reply 3–6.
`Patent Owner, however, contends that “modifying” in claim 20 means
`changing or altering and precludes making an exact copy. PO Resp. 8–10
`(“When an image or a portion of an image is copied, a person of ordinary
`skill in the art would understand that the image data is replicated exactly.
`This process does not change the original image data, and, because the copy
`is exact, the copied image data is also not changed unless some additional
`
`
`
`13
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`processing is performed. Thus, copying is not modifying.”) (citations
`omitted).
`In the Decision to Institute, we did not expressly construe any terms.
`Inst. Dec. 8. In the context of determining whether one of Petitioner’s
`asserted grounds met the threshold required for institution, we determined
`that, based on the pre-institution record, claim 1 did not preclude producing
`modified check image data by copying some, but not all, portions of the
`generated check image data. Id. at 28.
`We begin our analysis with the language of the claims themselves.
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (“It
`is a bedrock principle of patent law that the claims of a patent define the
`invention to which the patentee is entitled the right to exclude.” (quotation
`marks and citation omitted)). Independent claims 1 and 20 do not specify
`how modifying the original check image data to produce the modified data is
`to be performed. Rather, independent claims 1 and 20 each describe the
`result of the modification—producing a modified check image data that does
`“not include” some types of data included in the original check image data.
`Claim 20 requires that the modified check image data not include “at least a
`portion of the micr line image data,” whereas claim 1 requires that the
`modified check image data not include “at least some visual feature data.”
`Ex. 1001, 72:38–42 (claim 20 reciting “wherein at least a portion of the micr
`line image data included in the check image data is not included in the
`modified check image data”); id. at 70:42–46 (claim 1 reciting “wherein at
`least some visual feature data included in the check image data is not
`14
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`included in the modified check image data”); see id. at 72:61–64 (claim 24
`reciting an “article of computer readable media bear instructions . . . to carry
`out the method steps recited in claim 20”).
`Other claims—claims 6 and 11–13—similarly specify the results of
`the required modification without specifying how the modification is to be
`performed. Rather than specifying that some data “is not included” in the
`modified check image data as in independent claims 1 and 20, however,
`claims 6 and 11–13 specify that certain data of the “modified check image
`data” “differ from the original” data in the modified check image. For
`example, claim 13 requires that the modified micr line image data differs
`from the original micr line image data included in the modified check image
`data. Id. at 71:52–59 (claim 13 reciting “wherein [modifying the check
`image data] includes modifying the original micr line image data to produce
`modified micr line image data, wherein the modified micr line image data
`differs from the original micr line image data”). Similarly, claim 6 requires
`that modified signature image data “differs from” the original signature
`image data included in the check image data. Ex. 1001, 71:7–12 (claim 6
`reciting “wherein the check image data includes original signature image
`data corresponding to the signature, wherein [modifying the check image
`data] includes modifying the original signature image data to produce
`modified signature image data, wherein the modified signature image data
`differs from the original signature image data”). Along these lines,
`claims 11 and 12 each require the modified check writer (or endorser)
`signature image data “differs from” the original check writer (or endorser)
`15
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`signature image data included in the check image data. Id. at 71:34–41
`(claim 11 reciting “wherein the check image data includes original check
`writer signature image data corresponding to the check writer signature,
`wherein [modifying the check image data] includes modifying the original
`check writer signature image data to produce modified check writer
`signature image data, wherein the modified check writer signature image
`data differs from the original check writer signature image data”) (emphasis
`added); id. at 71:44–51 (claim 12 reciting “wherein [modifying the check
`image data] includes modifying the original check endorser signature image
`data to produce modified check endorser signature image data, wherein the
`modified check endorser signature image data differs from the original
`check endorser signature image data”) (emphasis added).
`In contrast to the claims that require a result but not a manner of
`modifying, other claims specify the manner of modifying the check image
`data. Claims 8–11 and 16–18 require, by additionally reciting or through
`dependency, “step (b) includes producing the modified . . . data by masking
`the original . . . image data.” Ex. 1001, 71:20–31 (claims 8–10), 72:5–16
`(claims 16–18). Claims 10 and 18 each additionally require a particular way
`of modifying the modified image data—“modifying the modified . . . image
`data by removing the at least one masking image from the modified . . .
`image data.” Id. at 71:29–31, 72:14–16.
`Notably, claim 19 specifies a manner of modifying that involves
`“changing” at least some of the original image data to produce modified
`image data. Id. at 72:19–25 (claim 19 reciting “wherein the check image
`16
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`data includes original character image data corresponding to the characters
`[of the visual feature imaged], wherein [modifying the check image data]
`includes changing at least one character in the original character image data
`to produce modified character image data”).
`We next turn to the Specification regarding its descriptions of
`“modifying.” 37 C.F.R. § 42.300(b) (“In a covered business method patent
`review, a claim in an unexpired patent shall be given its broadest reasonable
`construction, in light of the specification of the patent in which it appears.”)
`(emphasis added). The Specification does not set forth a particular meaning
`for “modifying” that has requisite clarity, deliberativeness, or precision to
`overcome the presumption that a term is to be given its ordinary and
`customary meaning. Paulsen, 30 F.3d at 1480. The Specification describes
`the purpose of not including “the actual data of the original check”—to
`address the business problem of “reduc[ing] the risk that sensitive
`information included in an image of a check will be subject to unwanted
`disclosure.” Ex. 1001, 35:17–22.
`The Specification indicates that “[t]he modification of the image
`data . . . results in the particular visual feature being different when an image
`of the check is printed by a receipt printer.” Id. at 35:39–43. The
`Specification also describes one of “a number of ways” to make at least a
`portion of the micr line unreadable by “having the computer modify the
`image data to mask the micr line so that at least a portion of the micr line is
`not visible by having an image overlying the micr line.” Id. at 35:47–54.
`The Specification continues by describing an “example applying a graphic
`17
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`such as a black box so that it is printed in the area where the micr line would
`normally appear.” Id. at 35:54–57.
`Moreover, the Specification expressly indicates that “[o]f course,
`these approaches are merely exemplary.” Id. at 36:9–10. The Specification
`further includes broad language that the written description includes
`exemplary embodiments and “the invention is not limited to the features
`shown or described.” Id. at 70:11–17. Accordingly, the Specification does
`not limit the manner of modifying but presents some examples of doing so.
`Thus, the plain language of the claims, when read in light of the
`Specification, indicates that “modifying the check image data . . . to produce
`modified check image data” having certain characteristics, as required by
`independent claims 1 and 20, encompasses copying a portion (but not all) of
`the original check image data to create a new image—the recited modified
`image. This is because modifying by copying a portion of the original data
`to produce the required result—modified check image data excluding certain
`types of data in the original check image data—changes or alters the original
`image data in that the modified image is different from the original image.
`This understanding also is supported by the ordinary and customary
`meaning of “modifying” as set forth by the parties. Patent Owner proffers a
`general dictionary definition of “modifying” as meaning “to change or
`alter.” Ex. 2006, 3 (defining “modify” as “to change or alter; esp., to change
`slightly or partially in character, form, etc.”); PO Resp. 8 (citing
`Ex. 2006, 3). Our understanding is supported further by Petitioner’s proffer
`of general dictionary definitions of “change” and “alter” as making different.
`18
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`Ex. 1022, 104 (defining “change” as “to make different; alter”); id. at 18
`(defining “alter” as “to change; make or become different”); Reply 4 (citing
`Ex. 1022, 104, 18). Although Patent Owner and Petitioner each select a
`definition from various dictionary definitions (see Exs. 2006, 1022), the
`dictionary definitions selected by the parties comport with the
`Specification’s use of the term “modify.” For example, as noted previously,
`the Specification indicates that “[t]he modification of the image data . . .
`results in the particular visual feature being different when an image of the
`check is printed by a receipt printer.” Ex. 1001, 35:39–43 (emphasis added).
`We note our agreement with Patent Owner that the ordinary and
`customary meaning of “modifying” requires more than making an exact
`copy because an exact copy is not changed or altered. PO Resp. 8–10 (citing
`Ex. 2003 ¶¶ 26–27; Ex. 2006, 4; Ex. 2005, 73:14–74:4); Ex. 2003 ¶¶ 26–27
`(Dr. Sorenson testifying that one of ordinary skill in the art “would have
`understood modifying data to mean changing or altering the data, and that
`modifying data would not include copying data” because “[w]hen an image
`or a portion of an image is copied, a person of ordinary skill in the art would
`understand that the image data is replicated exactly.”); Ex. 2005, 73:14–74:4
`(Dr. Alexander testifying that modifying has a “common meaning of
`changing, reconfiguring”). The claimed modifying, however, accords with
`Patent Owner’s position that modifying requires more than making an exact
`copy. The claim requires modifying to produce a certain result that
`precludes the modified check data being an exact copy of the original check
`image data—the claim requires that the modified check image data does not
`19
`
`
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`include either a visual feature from the original check image (claim 1) or
`does not include a portion of the micr line image data that was included in
`the check image data (claim 20). Thus, the plain language of the claims
`requires that the modified check image data cannot be an exact copy of the
`original check image data. The plain language of the claims, however, does
`not require a particular manner of modifying the check image data.
`In sum, based on the plain language of the claims, the Specification
`providing non-limiting examples of modifying, and the parties’ proffered
`general dictionary definitions as to how one of ordinary skill in the art would
`understand “modifying,” we conclude that “modifying the check image
`data . . . to produce modified check image data” having certain
`characteristics, required by independent claims 1 and 20, would encompass
`copying a portion (but not all) of the original check image data to produce
`the required modified check image data.
`
`2. “Check image data”
`Independent claim 20 recites “(a) operating a check imaging device of
`a cash dispensing machine to image check data on a check . . . [and]
`(b) generating check image data corresponding to check data imaged in
`step (a).” Ex. 1001, 72:27–34. Patent Owner contends that this requires
`“imag[ing] the check data of an entire check” and not merely a portion of a
`check. PO Resp. 11, 13 (“Image data for part of a check is not image data of
`a check.”). According to Patent Owner, the Specification discloses imaging
`check data of an entire check, one of ordinary skill in the art would
`
`
`
`20
`
`

`

`CBM2016-00034
`Patent 7,314,163 B1
`
`understand the claim to require imaging an entire check because the claim
`uses different terms to refer to imaging part of the check, and one of
`ordinary skill in the art “would understand that an ANSI standard defines
`what is considered in the art to be a check.” Id. at 11–13. In Reply,
`Petitioner contests Patent Owner’s position and contends that check image
`data encompasses image data for a portion (but not all) of a check. Reply 6–
`8.
`
`The claim language does not recite or otherwise expressly require that
`check image data refers to imaging check data of an entire check. The fact
`that the claims refer to

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket