Intellectual Ventures I LLC v. Capital One Bank (USA) , 792 F.3d 1363 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL VENTURES I LLC,
INTELLECTUAL VENTURES II LLC,
Plaintiffs-Appellants
v.
CAPITAL ONE BANK (USA), NATIONAL
ASSOCIATION, CAPITAL ONE FINANCIAL
CORPORATION, CAPITAL ONE, NATIONAL
ASSOCIATION,
Defendants-Appellees
______________________
2014-1506
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:13-cv-00740-AJT-
TCB, Judge Anthony J. Trenga.
______________________
Decided: July 6, 2015
______________________
NICKOLAS BOHL, Feinberg Day Alberti & Thompson
LLP, Menlo Park, CA, argued for plaintiffs-appellants.
Also represented by MARC BELLOLI, ELIZABETH DAY,
CLAYTON W. THOMPSON, II; THOMAS RICHARD BURNS, JR.,
Adduci, Mastriani & Schaumberg, LLP, Washington, DC;
2 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
ERIC F. CITRON, Goldstein & Russell, P.C., Bethesda, MD;
THOMAS GOLDSTEIN, Washington, DC.
MATTHEW J. MOORE, Latham & Watkins LLP, Wash-
ington, DC, argued for defendants-appellees. Also repre-
sented by ABBOTT B. LIPSKY, JR., GABRIEL BELL,
MARGUERITE M. SULLIVAN, JAMES SCOTT BALLENGER;
JEFFREY G. HOMRIG, Menlo Park, CA; ROBERT A. ANGLE,
DABNEY JEFFERSON CARR, IV, Troutman Sanders LLP,
Richmond, VA.
JAMES QUARLES, III, Wilmer Cutler Pickering Hale
and Dorr LLP, Washington, DC, for amicus curiae
Askeladden, L.L.C. Also represented by RICHARD
ANTHONY CRUDO, GREGORY H. LANTIER.
______________________
Before DYK, REYNA, and CHEN, Circuit Judges.
DYK, Circuit Judge.
Plaintiffs Intellectual Ventures I LLC and Intellectual
Ventures II LLC (collectively, “Intellectual Ventures”)
asserted infringement of claims of three patents against
defendants Capital One Bank (USA), NA, Capital One
Financial Corporation, and Capital One, NA (collectively,
“Capital One”). The three patents were U.S. Patent Nos.
8,083,137, 7,603,382, and 7,260,587 (“the ’137 patent,”
“the ’382 patent,” and “the ’587 patent,” respectively).
Following the district court’s claim construction of the
term “machine readable instruction form” in the ’587
patent, the parties stipulated to non-infringement of the
asserted claims of that patent. The district court also
determined that the asserted claims of the ’137 patent
claimed ineligible subject matter and the asserted claims
of the ’382 patent claimed ineligible subject matter and
were also indefinite under 35 U.S.C. § 112(b). Intellectual
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 3
Ventures appeals the district court’s invalidity determina-
tions with respect to the ’137 and ’382 patents and its
claim construction with respect to the ’587 patent.
We affirm, concluding that the asserted claims of the
’137 and ’382 patents claim unpatentable abstract ideas
and that the district court’s claim construction with
respect to the ’587 patent was correct. 1
BACKGROUND
Intellectual Ventures owns the three patents at issue,
the first two of which generally relate to activities on the
Internet, and the third of which generally relates to
photography organization using a computer. The ’137
patent, entitled “Administration of Financial Accounts,”
claims methods of budgeting, particularly methods of
tracking and storing information relating to a user’s
purchases and expenses and presenting that information
to the user vis-à-vis the user’s pre-established, self-
imposed spending limits. The ’382 patent, entitled “Ad-
vanced Internet Interface Providing User Display Access
of Customized Webpages,” claims methods and systems
for providing customized web page content to the user as
a function of user-specific information and the user’s
navigation history. The ’587 patent, entitled “Method for
Organizing Digital Images,” claims methods for scanning
hard-copy images onto a computer in an organized man-
ner.
On June 19, 2013, Intellectual Ventures filed suit in
the United States District Court for the Eastern District
1 Capital One filed a counterclaim alleging anti-
trust violations by Intellectual Ventures. The district
court dismissed for failure to state a claim, and Capital
One cross-appealed. On April 7, 2015, we granted Capital
One’s motion to dismiss the cross-appeal.
4 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
of Virginia against Capital One, alleging infringement of
claims 5–11 of the ’137 patent, claims 1–5, 16, 17, and 19–
22 of the ’382 patent, and claims 1 and 18 of the ’587
patent. On December 18, 2013, the district court issued
its claim construction order, construing terms for all three
patents. The representative asserted claim of the ’587
patent (claim 1) claims a method of organizing digital
images in which hard-copy images are scanned into a
computer and sorted according to an associated machine
readable instruction form. The district court construed
“digitally scanning a plurality of hard copy prints [that
have been grouped into one or more categories, each
category separated by] an associated machine readable
instruction form” as requiring the “associated machine
readable instruction form” be in a hard-copy, rather than
electronic, form. Because of that construction, Intellectu-
al Ventures stipulated to non-infringement of all asserted
claims of the ’587 patent.
On April 16, 2014, the district court granted summary
judgment with respect to the asserted claims of the ’137
and ’382 patents. The district court concluded that the
asserted claims of the ’137 and ’382 patents claimed
ineligible subject matter in violation of 35 U.S.C. § 101.
The district court also determined that, based on its
construction of “interactive interface,” the asserted claims
of the ’382 patent were indefinite under 35 U.S.C.
§ 112(b). The district court thus held invalid all of the
asserted claims of both patents.
Intellectual Ventures appealed. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1). We review summary
judgment determinations de novo. Laber v. Harvey, 438
F.3d 404, 415 (4th Cir. 2006). Patent eligibility under
§ 101 is an issue of law we review de novo. In re BRCA1-
& BRCA2-Based Hereditary Cancer Test Patent Litig., 774
F.3d 755, 758 (Fed. Cir. 2014). We review the district
court’s claim construction based on intrinsic evidence and
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 5
the district court’s ultimate claim construction de novo.
See Warsaw Orthopedic, Inc. v. NuVasive, 778 F.3d 1365,
1369 (Fed. Cir. 2015) (citing Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015)).
DISCUSSION
I
We first address patent eligibility with respect to the
’137 and ’382 patents. An invention is patent-eligible if it
fits into one of four statutory categories: processes, ma-
chines, manufactures, and compositions. 35 U.S.C. § 101.
But there is an implicit exception. “Laws of nature,
natural phenomena, and abstract ideas are not patenta-
ble.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354
(2014) (citation omitted). To determine whether an
invention claims ineligible subject matter, we engage in a
two-step process. First, “we determine whether the
claims at issue are directed to one of [the] patent-
ineligible concepts”—laws of nature, natural phenomena,
or abstract ideas. Id. at 2355. “The ‘abstract ideas’
category embodies ‘the longstanding rule’ that ‘[a]n idea of
itself is not patentable.’” Id. (quoting Gottschalk v. Ben-
son, 409 U.S. 63, 67 (1972)). An abstract idea does not
become nonabstract by limiting the invention to a particu-
lar field of use or technological environment, such as the
Internet. See Alice, 134 S. Ct. at 2358 (limiting an ab-
stract idea to a particular technological environment,
such as a computer, does not confer patent eligibility);
Bilski v. Kappos, 561 U.S. 593, 612 (2010) (“[L]imiting an
abstract idea to one field of use . . . d[oes] not make the
concept patentable.”).
If we determine that the patent is drawn to an ab-
stract idea or otherwise ineligible subject matter, at a
second step we ask whether the remaining elements,
either in isolation or combination with the non-patent-
ineligible elements, are sufficient to “‘transform the
6 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2358 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012)). Put another way, there must be an “inventive
concept” to take the claim into the realm of patent-
eligibility. Id. at 2355. A simple instruction to apply an
abstract idea on a computer is not enough. Alice, 134 S.
Ct. at 2358 (“[M]ere recitation of a generic computer
cannot transform a patent-ineligible idea into a patent-
eligible invention. Stating an abstract idea ‘while adding
the words “apply it’’ is not enough for patent eligibility.’”
(quoting Mayo, 132 S. Ct. at 1294)).
Nor, in addressing the second step of Alice, does
claiming the improved speed or efficiency inherent with
applying the abstract idea on a computer provide a suffi-
cient inventive concept. See Bancorp Servs., LLC v. Sun
Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir.
2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not mate-
rially alter the patent eligibility of the claimed subject
matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269,
1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347(2014) (“[S]imply appending generic computer functionali-
ty to lend speed or efficiency to the performance of an
otherwise abstract concept does not meaningfully limit
claim scope for purposes of patent eligibility.” (citations
omitted)).
A
The ’137 patent generally relates to budgeting, or, as
the district court described it, “utiliz[ing] user-selected
pre-set limits on spending that are stored in a database
that, when reached, communicates a notification to the
user via a device.” J.A. 780. Claim 5 is representative
and provides:
A method comprising:
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 7
storing, in a database, a profile keyed to a user
identity and containing one or more user-selected
categories to track transactions associated with
said user identity, wherein individual user-
selected categories include a user pre-set limit;
and
causing communication, over a communication
medium and to a receiving device, of transaction
summary data in the database for at least one of
the one or more user-selected categories, said
transaction summary data containing said at least
one user-selected category’s user pre-set limit.
’137 patent col. 10 ll. 4–15.
Here, the patent claims are directed to an abstract
idea: tracking financial transactions to determine wheth-
er they exceed a pre-set spending limit (i.e., budgeting).
Although Intellectual Ventures argues the claims are not
“[d]irected or [d]rawn to an [a]bstract [i]dea,” Appellant’s
Br. 30, Intellectual Ventures admits budgeting “undoubt-
edly . . . is an abstract idea.” Appellant’s Br. 31. And
while the claims recite budgeting using a “communication
medium” (broadly including the Internet and telephone
networks), that limitation does not render the claims any
less abstract.
The abstract idea here is not meaningfully different
from the ideas found to be abstract in other cases before
the Supreme Court and our court involving methods of
organizing human activity. In Bilski, the Supreme Court
determined that a claim directed to a method of hedging
risk was directed to an abstract idea. 561 U.S. at 599,
613. In Alice, the Supreme Court held that a computer-
based implementation of a method of mitigating settle-
ment risk using a third-party intermediary was drawn to
an abstract idea. 134 S. Ct. at 2351–52. Our cases have
rejected similar concepts as being directed towards ineli-
8 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
gible subject-matter. 2 In light of these precedents, we
conclude that the asserted claims are equally drawn to an
abstract idea.
2 See Cybersource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370, 1373 (Fed. Cir. 2011) (holding that
“a method for verifying the validity of a credit card trans-
action over the Internet” was directed to an abstract idea
or unpatentable mental process); Fort Props., Inc. v. Am.
Master Lease LLC, 671 F.3d 1317, 1318, 1320 (Fed. Cir.
2012) (concluding that a patent claiming an “investment
tool designed to enable property owners to buy and sell
properties without incurring tax liability” was drawn to
an abstract idea); Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1331, 1334 (Fed. Cir. 2012) (determining that a
computer-implemented method of managing a credit
application was drawn to a patent-ineligible abstract
idea); Bancorp, 687 F.3d at 1269, 1277, (holding that a
patent claiming “systems and methods for administering
and tracking the value of life insurance policies in sepa-
rate accounts” was directed to an abstract idea); Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1339, 1342 (Fed. Cir. 2013) (determining that
claims to automated methods for generating task lists to
be performed by an insurance organization were directed
to a patent-ineligible abstract idea); Ultramercial, Inc. v.
Hulu LLC, 772 F.3d 709, 712, 714 (Fed. Cir. 2014) (hold-
ing that a computer- and Internet-based implementation
of displaying an advertisement in exchange for access to
copyrighted media was directed to an abstract idea);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351, 1355
(Fed. Cir. 2014) (determining that a claim directed toward
guaranteeing a party’s performance in an online transac-
tion was directed to an abstract idea); OIP Techs., Inc. v.
Amazon.com, Inc., No. 2012-1696, 2015 WL 3622181, at
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 9
Moving to step two of the Alice framework, it is clear
that the claims contain no inventive concept. The recited
elements, e.g., a database, a user profile (“a profile keyed
to a user identity,” ’137 patent col. 10 l. 5), and a commu-
nication medium, are all generic computer elements.
Instructing one to “apply” an abstract idea and reciting no
more than generic computer elements performing generic
computer tasks does not make an abstract idea patent-
eligible. See Alice, 134 S. Ct. at 2359–60 (holding patent-
ineligible claims that “amount to nothing significantly
more than an instruction to apply the abstract
idea . . . using some unspecified, generic computer” and in
which “each step does no more than require a generic
computer to perform generic computer functions” (inter-
nal quotation marks, citation omitted)); Ultramercial, 772
F.3d at 716 (“Adding routine[,] additional steps . . . does
not transform an otherwise abstract idea into patent-
eligible subject matter.”); Bancorp, 687 F.3d at 1274, 1278
(appending generic computer components does not “sal-
vage an otherwise patent-ineligible process”); Cyber-
Source, 654 F.3d at 1375 (“[T]he incidental use of a
computer to perform the [claimed process] does not im-
pose a sufficiently meaningful limitation on the claim’s
*3–4 (Fed. Cir. June 11, 2015) (holding that methods of
offer-based price optimization in an e-commerce environ-
ment were drawn to an abstract idea); see also Smart-
Gene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x
950, 951, 954 (Fed. Cir. 2014) (determining that a com-
puter-implemented method for “guiding the selection of a
therapeutic treatment regimen for a patient with a known
disease or medical condition” was directed to an abstract
idea); Planet Bingo LLC v. VKGS LLC, 576 F. App’x 1005,
1006 (Fed. Cir. 2014) (determining that claims to a com-
puter-aided management system for bingo games was
directed to an abstract idea).
10 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
scope.”). Indeed, the budgeting calculations at issue here
are unpatentable because they “could still be made using
a pencil and paper” with a simple notification device,
Cybersource, 654 F.3d at 1371 (quoting Parker v. Flook,
437 U.S. 584, 586 (1978) (punctuation omitted)), even in
real time as expenditures were being made.
B
The ’382 patent generally relates to customizing web
page content as a function of navigation history and
information known about the user. 3 Claim 1 is repre-
sentative and provides:
A system for providing web pages accessed from a
web site in a manner which presents the web pag-
es tailored to an individual user, comprising:
an interactive interface configured to provide dy-
namic web site navigation data to the user, the in-
teractive interface comprising:
a display depicting portions of the web site visited
by the user as a function of the web site naviga-
tion data; and
a display depicting portions of the web site visited
by the user as a function of the user’s personal
characteristics.
’382 patent col. 7 ll. 13–22. The district court construed
“interactive interface” to mean “a selectively tailored
medium by which a web site user communicates with a
web site information provider.” J.A. 756. The district
3 Because the asserted claims of the ’382 patent are
invalid for claiming ineligible subject matter, we do not
reach the question of whether “interactive interface” is
indefinite.
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 11
court construed “[d]isplay depicting portions of the web
site visited by the user as a function of the user’s personal
characteristics” to mean “[a] display depicting portions of
the web site visited by the user preselected by a web page
manager by matching personal characteristics in a user
profile automatically downloaded from the interactive
interface based on information identifiers for portions of
the web site.” J.A. 757. Finally, the parties stipulated
that “[d]ynamic web site navigation data” meant “[d]ata
representing portions of the web site visited by the user.”
J.A. 757.
At step one of the Alice framework, it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a “fundamen-
tal . . . practice long prevalent in our system . . . .” Alice,
134 S. Ct. at 2356. As noted, the claim relates to custom-
izing information based on (1) information known about
the user and (2) navigation data.
With respect to the first aspect, at oral argument In-
tellectual Ventures admitted that tailoring content based
on the viewer’s location or address would satisfy the “as a
function of the user’s personal characteristics” limitation.
This sort of information tailoring is “a fundamen-
tal . . . practice long prevalent in our system . . . .” Id.There is no dispute that newspaper inserts had often been
tailored based on information known about the custom-
er—for example, a newspaper might advertise based on
the customer’s location. Providing this minimal tailor-
ing—e.g., providing different newspaper inserts based
upon the location of the individual—is an abstract idea.
With respect to the second aspect, the specification
provides an example of tailoring information based on
navigation data. The specification describes tailoring a
portion of the website’s logo throughout the day. If a user
accesses the website in the early morning, the website
12 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
will use that navigation data (i.e., information relating to
when the user navigated to the website) to “customize”
the website by modifying the logo to look like a rising sun.
’382 patent col. 5 ll. 9–10. Conversely, if the user accesses
the website in the late evening, the website will “custom-
ize” the logo to look like a moon with stars. ’382 patent
col. 5 ll. 11–12. At oral argument, Intellectual Ventures
did not challenge the conclusion that tailoring content
based on the time of day at which the user viewed the
content is within the scope of the claim limitation. Tailor-
ing information based on the time of day of viewing is also
an abstract, overly broad concept long-practiced in our
society. There can be no doubt that television commer-
cials for decades tailored advertisements based on the
time of day during which the advertisement was viewed.
For example, a television channel might choose to present
a commercial for children’s toys during early morning
cartoon programs but beer during an evening sporting
event. An advertisement taking into account the time of
day and tailoring the information presented to the user
based on that information is another “fundamen-
tal . . . practice long prevalent in our system . . . .” Alice,
134 S. Ct. at 2356.
Turning to the second step of Alice, here there is no
inventive concept that would support patent eligibility.
As discussed above, our precedent is clear that merely
adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility
on an otherwise abstract idea. Intellectual Ventures
argues that claims limited to dynamic presentation of
data—that is, that the claimed invention in “real time”
customizes the web page based on the information it
knows about the particular viewer—supplies an inventive
concept. The claims are not so limited. Although the
claim includes a “dynamic” limitation, the specification
makes clear that determining whether the user falls into
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 13
one category or another (e.g., whether the viewer is a
“Generation X’er” or an “older individual”) and then
presenting the user a pre-created advertisement based on
the category determination, satisfies the dynamic re-
quirement. At oral argument, counsel for Intellectual
Ventures admitted that the web site might have a series
of pre-designed advertisements, which, based on the
user’s information, the web site would then choose be-
tween and present to the user. Moreover, the fact that
the web site returns the pre-designed ad more quickly
than a newspaper could send the user a location-specific
advertisement insert does not confer patent eligibility.
See Bancorp, 687 F.3d at 1278; CLS Bank, 717 F.3d at
1286.
Intellectual Ventures argues that the “interactive
interface” is a specific application of the abstract idea that
provides an inventive concept. But nowhere does Intellec-
tual Ventures assert that it invented an interactive
interface that manages web site content. Rather, the
interactive interface limitation is a generic computer
element. At Intellectual Ventures’ urging, “interactive
interface” was broadly construed by the district court to
mean “a selectively tailored medium by which a web site
user communicates with a web site information provider.”
J.A. 756. Intellectual Ventures describes the “interactive
interface” as “tasked with tailoring information and
providing it to the user.” Appellant’s Br. 43. Elsewhere,
Intellectual Ventures equates the “interactive interface”
with the “web page manager,” which “tailors the web page
to the specific individual based on the profile.” At oral
argument, Intellectual Ventures described the interactive
interface as “software” and agreed that it “is basically the
brains of the outfit.” Oral Argument Tr. 16:24–16:40.
Nowhere in these vague and generic descriptions of the
“interactive interface” does Intellectual Ventures suggest
an “inventive concept.” Alice, 134 S. Ct. at 2355. Rather,
14 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
the “interactive interface” simply describes a generic web
server with attendant software, tasked with providing
web pages to and communicating with the user’s comput-
er.
Steps that do nothing more than spell out what it
means to “apply it on a computer” cannot confer patent-
eligibility. Alice, 134 S. Ct. at 2359 (warning against a
§ 101 analysis that turns on the draftsman’s art (citing
Flook, 437 U.S. at 593)). Requiring the use of a “software”
“brain” “tasked with tailoring information and providing
it to the user” provides no additional limitation beyond
applying an abstract idea, restricted to the Internet, on a
generic computer. The district court properly determined
that the asserted claims of the ’382 patent:
consist[] of nothing more tha[n] the entry of data
into a computer database, the breakdown and or-
ganization of that entered data according to some
criteria, . . . and the transmission of information
derived from that entered data to a computer us-
er, all through the use of conventional computer
components, such as a database and processors,
operating in a conventional manner.
J.A. 784. These elements do not confer patent eligibility.
See Alice, 134 S. Ct. at 2359–60; Ultramercial, 772 F.3d at
716; Dealertrack, 674 F.3d at 1333; Fort Props., 671 F.3d
at 1317, 1323; CyberSource, 654 F.3d at 1375.
Finally, Intellectual Ventures argues that the claims
are patentable in light of our recent decision in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014). The patent at issue in that case dealt with a
problem unique to the Internet: Internet users visiting
one web site might be interested in viewing products sold
on a different web site, but the owners of the first web site
did not want to constantly redirect users away from their
web site to a different web site. Id. at 1257–58. The
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 15
claimed solution used a series of steps that created a
hybrid web page incorporating “look and feel” elements
from the host web site with commerce objects from the
third-party web site. Id. The patent at issue in DDR
provided an Internet-based solution to solve a problem
unique to the Internet that (1) did not foreclose other
ways of solving the problem, and (2) recited a specific
series of steps that resulted in a departure from the
routine and conventional sequence of events after the
click of a hyperlink advertisement. Id. at 1256–57, 1259.
The patent claims here do not address problems unique to
the Internet, so DDR has no applicability.
The asserted claims of the ’382 patent claim an ab-
stract idea and do not otherwise claim an inventive con-
cept.
II
We finally address claim construction with respect to
the ’587 patent. Claim 1 is representative and provides:
A method of automatically organizing digital im-
ages obtained from a plurality of hard copy prints,
each of said hard copy prints having an image
thereon, comprising the steps of:
digitally scanning a plurality of hard copy prints
that have been grouped into one or more catego-
ries, each category separated by an associated ma-
chine readable instruction form as to obtain a
digital file of each of said images and digitally as-
sociating said one or more categories with said
digital images in accordance with said associated
machine readable instruction form executed by a
computer;
storing said digital images files and associated
categories on a digital storage medium; and
16 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
producing a product incorporating images from
one or more of said categories as required by a
customer.
’587 patent col. 20 ll. 13–29 (emphasis added).
At claim construction, the parties disputed whether
the “associated machine readable instruction form” must
be in a hard-copy format and scanned into the computer
along with the hard-copy pictures, or whether a wholly
electronic embodiment of the instruction form could
satisfy the claim limitation. Intellectual Ventures argued
that the machine readable instruction forms need not be
in a hard-copy format. Capital One argued that the forms
must be in a hard-copy format. In the claim construction
order, the district court concluded “that the ‘machine
readable instruction form’ refers to a hard copy form that
is presented and scanned along with the hard copy images
and which physically separates the categories of images,
as defined by the user.” J.A. 760.
We conclude that the district court was correct to re-
quire that the machine readable instructions be in hard-
copy for three reasons.
First, the language of the claim itself suggests that
the machine readable instructions are used to physically
separate the hard-copy prints. The claim provides for
“separat[ing]” the hard-copy prints before scanning “by an
associated machine readable instruction form.” ’587
patent col. 20 ll. 19–22. This necessarily suggests that
the machine readable instruction form is also in hard
copy, as physical separation of the hard-copy prints before
scanning can only be achieved by something that is itself
a physical embodiment.
Second, the specification consistently describes the
machine readable instruction form as a hard-copy docu-
ment and thus in no way contradicts the plain meaning of
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 17
the claim language. See, e.g., ’587 patent figs. 6A, 7
(showing hard-copy machine readable instruction form
74); ’587 patent col. 6 ll. 50–55 (describing that instruc-
tion form 74 is physically placed in front of the hard-copy
prints before the prints are scanned); ’587 patent col. 7 ll.
26–36 (explaining that instructions are written on form
74 and then form 74 is scanned prior to the hard-copy
prints associated with that form); ’587 patent col. 8 ll. 18–
41 (depicting instruction form 74 as being physically
placed in an envelope with the images associated with the
information written on the form).
Intellectual Ventures argues that the specification
discloses non-hard-copy embodiments, relying on col. 5 ll.
35–40 and col. 5 l. 61–col. 6 l. 4. Although it is true that
the first passage describes an embodiment in which the
instruction form is provided to the user via HTML, that
passage also describes providing the user with hard-copy
labels onto which the HTML form can be printed. Thus,
even when the specification discusses delivering the
instruction form to the customer in a non-hard-copy
format, the specification nonetheless describes that in-
struction form as ultimately being printed out on a hard-
copy document. See ’587 patent col. 5 ll. 39–40. The
second passage states: “While in the particular embodi-
ment illustrated, the instructions would typically be
provided on a hard-copy document, the instructions may
be provided in an audio or visual format.” But the in-
structions described there refer to instructions that are
provided to the user instructing him or her on how to use
the product embodying the claimed method—not the
machine readable instruction forms referenced in the
claim. The fact that these user instructions were dis-
closed in non-hard-copy embodiments, but the machine
readable instruction form was not, only emphasizes that
the machine readable instruction form was limited to a
hard-copy format. There is no disclosure in the specifica-
18 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL
tion of the machine readable instruction form being
anything other than a hard-copy document.
Third, the prosecution history suggests that the
machine readable instructions must be in hard copy. In
response to an office action, the applicant stated, “Claim 1
clearly provides steps for obtaining of digital images and
instructions by digitally scanning, clearly a physical step,
from hard copy prints.” J.A. 468. The applicant’s state-
ment treats the “images and instructions” collectively and
as involving scanning, “clearly a physical step.” J.A. 468.
Additionally, in the same response, the applicant re-
marked: “this claim is directed to a method of automati-
cally organiz[ing] digital images obtained from a plurality
[of] hard copy prints by scanning a plurality of hard copy
prints that have been grouped into one or more categories,
each category separated by a machine readable instruc-
tion form.” Id. (emphasis added). The applicant describes
using the machine readable instruction form to “sepa-
rate[]” the “hard copy” prints prior to scanning. As with
the claim language itself, this suggests that the machine
readable instruction form is also in hard copy.
In light of the claim language, the specification, and
the prosecution history, we conclude that a person of
ordinary skill in the art would have understood the claim
as requiring the machine readable instruction form to be
in a hard-copy format. The district court’s claim construc-
tion on this issue was correct.
CONCLUSION
We affirm the district court’s judgment of invalidity
with respect to the claims of the ’137 and ’382 patents and
the judgment of non-infringement of the asserted claims
of the ’587 patent based on the district court’s claim
construction.
AFFIRMED
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 19
COSTS
Costs to appellees.