Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Solutran, Inc. v. Elavon, Inc.

United States Court of Appeals, Federal Circuit

July 30, 2019

SOLUTRAN, INC., Plaintiff-Cross-Appellant
v.
ELAVON, INC., U.S. BANCORP, Defendants-Appellants

          Appeals from the United States District Court for the District of Minnesota in No. 0:13-cv-02637-SRN-BRT, Judge Susan Richard Nelson.

          Robert James Gilbertson, Greene Espel, PLLP, Minneapolis, MN, argued for plaintiff-cross-appellant. Also represented by Sybil Louise Dunlop, David Wallace-Jackson.

          John Thomas Vitt, Jones Day, Minneapolis, MN, argued for defendants-appellants. Also represented by Gregory A. Castanias, Washington, DC; Peter McCreery Lancaster, Timothy J. Droske, Ben Desmond Kappelman, Dorsey & Whitney LLP, Minneapolis, MN.

          Before Chen, Hughes, and Stoll, Circuit Judges.

          Chen, Circuit Judge.

         U.S. Bancorp and its affiliate Elavon, Inc. (collectively, U.S. Bank) appeal orders in the United States District Court for the District of Minnesota (1) denying U.S. Bank's motion for summary judgment that claims 1-5 of U.S. Patent No. 8, 311, 945 ('945 patent), assigned to Solutran, Inc. (Solutran), are invalid under 35 U.S.C. § 101 for failing to recite patent-eligible subject matter and (2) granting Solutran's motion for summary judgment that Solutran's products infringe claims 1-5 of the '945 patent. Solutran cross-appeals, arguing that the district court abused its discretion when it denied Solutran the ability to amend its complaint to include a claim for willful infringement after the deadline set out in the scheduling order.

         Because we agree with U.S. Bank that claims 1-5 of Solutran's patent are invalid under § 101, we reverse.

         Background

         A. The '945 Patent

         The '945 patent, issued in 2012, describes a system and method for processing paper checks. '945 patent. The patent explains that in the past, the payee would transport the check to his or her own bank to be read and processed, then the payee's bank would transport the check to the payor's bank, where it also would be read and processed. Id. at col. 1, ll. 30-39. At this point, the payor's bank would debit the payor's account and transfer the money to the payee's bank, which would credit the payee's account. Id. at col. 1, ll. 39-45.

         The Background section of the '945 patent explains that the digital age ushered in a faster approach to processing checks, where the transaction information-e.g., amount of the transaction, routing and account number- on the check is turned into a digital file at the merchant's point of sale (POS) terminal. Id. at col. 1, l. 51 - col. 2, l. 8, col. 4, ll. 51-58 (at the point of purchase, "the merchant keys, or applies amount captured at POS, into the terminal the amount of the purchase" and "passes the check through a MICR (magnetic ink character recognition) reader to capture the consumer's account number, routing number of the financial institution holding the account, and the check number"). The digital check information is sent electronically over the Internet or other network, id. at col. 1, ll. 54- 61, and the funds are then transferred electronically from one account to another. Id. at col. 2, ll. 5-8. By converting the check information into digital form, it no longer was always necessary to physically move the paper check from one entity to another to debit or credit the accounts. Id. at col. 2, ll. 1-5. But retaining the checks was still useful for, among other things, verifying accuracy of the transaction data entered into the digital file. Id. at col. 2, ll. 11-15. It was well-known that merchants could optionally capture a digital image of the check at the point of purchase. Id. at col. 2, ll. 61-63, col. 4, ll. 58-59, FIG. 1; see also id. at col. 2, ll. 30-31 ("The original check can be scanned and its digital image stored for later use . . . .").

         The patent also discloses a method proposed by the National Automated Clearing House Association (NACHA) for "back office conversion" where merchants scan their checks in a back office, typically at the end of the day, id. at col. 2, l. 65 - col. 3, l. 1, "instead of at the purchase terminal," id. at col. 5, ll. 2-4, FIG. 2. A scanner captures an image of the check, and MICR data from the check is stored with the image. Id. at col. 3, ll. 1-2. An image file containing this information can be transferred to a bank or third-party payment processor. Id. at col. 3, ll. 2-4.

         The patent describes its invention as a system and method of electronically processing checks in which (1) "data from the checks is captured at the point of purchase," (2) "this data is used to promptly process a deposit to the merchant's account," (3) the paper checks are moved elsewhere "for scanning and image capture," and (4) "the image of the check is matched up to the data file." Id. at col. 3, ll. 16-46. The proffered benefits include "improved funds availability" for merchants and allegedly "reliev[ing merchants] of the task, cost, and risk of scanning and destroying the paper checks themselves, relying instead on a secure, high-volume scanning operation to obtain digital images of the checks." Id. at col. 3, ll. 46-62. Solutran explains that its method allows merchants to get their accounts credited sooner, without having to wait for the check scanning step.

         The court treated claim 1 as representative, which the parties do not ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.