`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