Every Penny Counts, Inc. v. Wells Fargo Bank, N.A.
4 F. Supp. 3d 1286
M.D. Fla.2014Background
- EPC sued Wells Fargo for infringement of claims 1–2 of the '217 patent and claims 4 & 6 of the '849 patent; Wells Fargo moved for partial summary judgment that those claims are indefinite.
- Claim 1 of the '217 patent describes a system with an information processor and a data store containing "data identifying the customer, the rounding determinant, the managed institution, and the account," plus machine-readable instructions to calculate rounders, determine excess, withdraw from a customer account, and transfer to a provider account.
- Wells Fargo contended key claim terms were indefinite: (1) "the account" (no clear antecedent) and (2) "the managed institution" (ambiguous whether manager or managed entity).
- For the '849 patent, Wells Fargo argued "total rounder amount" is indefinite because the specification never defines how to compute it (sum of individual rounders vs. a single rounder computed from summed transactions).
- The court reviewed the claim language, specification, and prosecution history principles for indefiniteness and analyzed whether each disputed term produced an "insoluble ambiguity" such that skilled artisans could not discern claim scope.
Issues
| Issue | Plaintiff's Argument (EPC) | Defendant's Argument (Wells Fargo) | Held |
|---|---|---|---|
| Meaning of "the account" in '217 claim 1 | "The account" refers to the customer account (listed with "customer") | Ambiguous: could mean customer account, provider account, both, or another account; lacks antecedent basis | Term is indefinite in isolation but not insolubly ambiguous; overall claim remains definite and claim survives |
| Meaning of "the managed institution" in '217 claim 1 | Means the institution that provides/maintains the customer account | Ambiguous: could be institution managing provider account or customer account; awkward phrasing (managed vs. managing) | Awkward but discernible from spec as the institution managing the customer account; not insolubly ambiguous |
| "Total rounder amount" in '849 claims 4 & 6 | (implicitly) consistent with defined "rounder amount" reading | Ambiguous: could be sum of individual rounder amounts or a single rounder computed from summed transactions | "Total rounder amount" means the sum of rounder amounts; not indefinite |
| Whether defects render claims invalid for indefiniteness | EPC: specification and claim context yield reasonable certainty of scope | Wells Fargo: claim language and drafting errors create fatal ambiguity | Court: denies Wells Fargo's motion; claims are not invalid for indefiniteness under clear-and-convincing standard |
Key Cases Cited
- Praxair, Inc. v. ATMI, Inc., 548 F.3d 1306 (Fed. Cir. 2008) (indefiniteness is a matter of claim construction and claim-construction principles apply)
- Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366 (Fed. Cir. 2006) (failure of explicit antecedent basis does not always render a claim indefinite; scope must be reasonably ascertainable to skilled artisan)
- Bose Corp. v. JBL, Inc., 274 F.3d 1354 (Fed. Cir. 2001) (interpretive principles used to assess claim scope in absence of explicit antecedent basis)
- DDR Holdings, LLC v. Hotels.com, 954 F. Supp. 2d 509 (E.D. Tex. 2013) (summary of the clear-and-convincing standard for indefiniteness in district court context)
- Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 723 F.3d 1363 (Fed. Cir. 2013) (example of invalidation for indefiniteness where ambiguous measurement method rendered the claimed invention unknowable)