Patent claims are invalid due to lack of written description
Stored Value Solutions, Inc. (“n/k/a”) Ceridian Stored Value Solutions, Inc. v. Card Activiation Technologies, Inc., et al., C. A. No. 09-495-KAJ (designated), July 1, 2011.
Jordan, J. (designated) Declaratory plaintiff’s motion on invalidity due to anticipation and obviousness is granted in part and its motion for partial summary judgment of invalidity due to lack of written description is granted. Declaratory defendant’s motions for summary judgment of validity and motion to exclude expert testimony are denied.
This is a patent infringement case concerning technology for processing electronic transactions which involve an ATM card, prepaid debit card, or phone card. On July 8, 2009, declaratory plaintiff, Stored Valued Solutions, Inc. (“n/k/a”) Ceridian Stored Value Solutions, Inc. (“SVS”) initiated the case to invalidate defendant, Card Activation Technologies, Inc.’s (“CAT”) U.S. Patent No. 6,032,859 (“the ‘859 patent”) entitled “Method for Processing Debit Purchase Transactions Using a Counter-Top Terminal System.” On August 13, 2009, CAT filed its answer. On June 3, 2010, the court adopted the claim construction report and recommendation issued earlier on April 28, 2010, but construed an additional term during summary judgment. On December 17, 2010, the parties cross-moved for summary judgment and CAT moved to exclude expert testimony. Oral argument was held on the motions on March 25, 2011, at which time it appears the court raised sua sponte the possible invalidity of certain asserted claims for lack of written description and invited summary judgment briefing. SVS filed an amended complaint on April 1, 2011 to assert invalidity due to a lack of written description and expert discovery and briefing followed. CAT’s motion to exclude expert testimony was denied, as the expert was qualified, the testimony was reliable, and the testimony “fit” the case. Independent claims 20 and 29 and dependent claims 22-28, 30, 31, and 33-38 were found invalid, over CAT’s objection to the court’s sua sponte raising of the issue, for lack of written description because the reexamined claims included three separate and distinct steps not found described in any single method disclosed in the written description of the ‘859 patent. Claims 1-3, 5-7, 9-14, and 16-19 were found to be anticipated by a single prior art reference under 35 U.S.C. § 102(a). Summary judgment as to obviousness of claims 4 and 15 was denied because a material factual dispute exists. CAT’s motion for summary judgment of validity was denied. The case is scheduled for a July 25, 2011 trial start.
