Mantissa Corporation v. First Financial Corporation, First Financial Bank, N.a.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MANTISSA CORPORATION,
Plaintiff-Appellant
v.
FIRST FINANCIAL CORPORATION, FIRST
FINANCIAL BANK, N.A.,
Defendants-Appellees
______________________
2022-1963
______________________
Appeal from the United States District Court for the
Northern District of Illinois in No. 1:17-cv-09174, Judge
Virginia M. Kendall.
______________________
Decided: February 14, 2024
______________________
ANTHONY J OHN D EMARCO, Young Basile Hanlon &
MacFarlane, P.C., Houston, TX, argued for plaintiff-appel-
lant.
RYAN RONALD S MITH , Wilson, Sonsini, Goodrich &
Rosati, PC, Palo Alto, CA, argued for defendants-appellees.
______________________
Before D YK, SCHALL , and REYNA, Circuit Judges.
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 2
Opinion for the court filed by Circuit Judge D YK.
Opinion concurring-in-part and dissenting-in-part filed by
Circuit Judge S CHALL .
Dyk, Circuit Judge.
Mantissa Corporation (“Mantissa”) appeals from a fi-
nal judgment of invalidity with respect to certain claims of
U.S. Patent No. 9,361,658 (“’658 patent”). We conclude
that the district court correctly determined that the term
“transaction partner” is indefinite and affirm the judgment
of the district court that claims 1, 3, 7, 8, 10–12, and 15 of
the ’658 patent are invalid for indefiniteness. We also con-
clude that we lack the authority to determine whether the
district court properly construed the term “OFF.” We af-
firm.
BACKGROUND
Mantissa owns the ’658 patent, titled “System and
Method for Enhanced Protection and Control Over the Use
of Identity.” The patent concerns an improved way to pro-
tect against identity theft, fraud, and other unauthorized
uses of identifying information. Mantissa brought suit
against First Financial Corporation and First Financial
Bank, N.A. (collectively, “First Financial”) in the District
Court for the Northern District of Illinois, alleging infringe-
ment of claims 1, 3, 7, 8, 10–13, and 15 of the ’658 patent.
Independent claim 1 of the ’658 patent is representa-
tive1:
1 Claims 1, 7, and 13 are independent claims.
Claims 3 and 5 depend from claim 1. Claims 8, 10, 11, 12,
and 15 depend from claim 7. Claim 13 was withdrawn from
the suit.
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 3
1. A method for a service provider to control use of
an entity’s financial account to facilitate transac-
tions, comprising:
setting scope of use, defined by the entity
via a network, for the financial account, in-
cluding at least:
(a) the financial account to either
OFF or ON;
(b) for a plurality of individual cat-
egories, whether each category is
authorized or unauthorized for
transactions using the financial ac-
count, each category representing a
different type of transaction part-
ner; and
(c) a geographical scope reflecting a
geographic area in which transac-
tions are authorized;
receiving, via a network from a source
other than the entity, an inquiry regarding
a proposed transaction that would use the
financial account;
determining, relative to the scope of use,
whether the financial account may or may
not be used for the proposed transaction,
comprising:
denying when the financial account
is OFF;
denying when the financial account
is ON and the proposed transaction
falls within a category that is unau-
thorized;
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 4
denying when the financial account
is ON, the proposed transaction
falls within a category that is au-
thorized and when a location of the
proposed transaction is outside of
the geographical area;
permitting when (a) the financial
account is ON, (b) the proposed
transaction falls within a category
that is authorized, (c) a location of
the proposed transaction is inside
the geographical area, and (d) the
proposed transaction is not other-
wise impermissible; and
responding to the inquiry by providing, via
a network to the source, first information
based on the result of the determining.
’658 patent, col. 15, ll. 20–53 (emphasis added).
At the claim construction phase, the parties disputed
two terms: (1) “transaction partner” and (2) “OFF.” The
district court determined that “transaction partner” was
indefinite and construed “OFF” to mean “a status in which
any use of the financial account is to be denied.” Mantissa
Corp. v. First Fin. Corp., No. 17 C 9174, 2022 WL 1487577,
at *8, *10 (N.D. Ill. May 11, 2022).
Based on the district court’s determination that “trans-
action partner” is indefinite, the parties filed a joint motion
for entry of final judgment. Thus, all of the asserted claims,
except claim 13, were invalidated as indefinite because
they included the term “transaction partner.” In accord-
ance with the joint motion, Mantissa agreed to withdraw
claim 13 and not assert it against First Financial. Pursu-
ant to the stipulation, the district court entered final judg-
ment under Fed. R. Civ. P. 54(b). J.A. 18.
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 5
Mantissa appeals. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).
D ISCUSSION
I. Transaction Partner
“We review claim construction based on intrinsic evi-
dence de novo and review any findings of fact regarding ex-
trinsic evidence for clear error.” Grace Instrument Indus.
v. Chandler Instruments Co., 57 F.4th 1001, 1008 (Fed. Cir.
2023). “[A] patent is invalid for indefiniteness if its claims,
read in light of the specification delineating the patent, and
the prosecution history, fail to inform, with reasonable cer-
tainty, those skilled in the art about the scope of the inven-
tion.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
898, 901 (2014). “The ultimate conclusion that a claim is
indefinite under 35 U.S.C. § 112, ¶ 2 is a legal conclusion,
which we review de novo.” Cox Commc’ns, Inc. v. Sprint
Commc’n Co., 838 F.3d 1224, 1228 (Fed. Cir. 2016) (foot-
note omitted).
A
At the district court, First Financial relied on testi-
mony from its expert, Dr. Rhyne, to support its argument
that the term “transaction partner” is indefinite. The dis-
trict court concluded that Dr. Rhyne was a person of ordi-
nary skill in the art (“POSA”) and relied on his testimony
to conclude that “transaction partner” was indefinite.
Mantissa argues that the district court’s definition of a
POSA is incorrect because it did not require that a POSA
have “at least three years of experience in the field of sys-
tems for processing and authorizing transactions in a fi-
nancial account over a computer network,” Appellant
Opening Br. 18 (emphasis omitted), that under the correct
definition Dr. Rhyne was not a POSA, and that the district
court erred in considering his testimony.
On appeal, both parties devote considerable attention
to the arguments of whether Dr. Rhyne qualifies as a POSA
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 6
and whether the district court erred in relying on his testi-
mony to determine that “transaction partner” was indefi-
nite. We do not need to address this issue because in this
case the issue of indefiniteness can be resolved based on
the intrinsic evidence alone, as both parties agree. Oral
Arg. at 4:42–5:06 (Mantissa agreeing we can rule on indef-
initeness based on the intrinsic record), 24:22–25:00 (First
Financial agreeing we can rule on indefiniteness based on
the intrinsic record); see Interval Licensing LLC v. AOL,
Inc., 766 F.3d 1364, 1370 n.6 (Fed. Cir. 2014) (noting it was
“unnecessary” to rely on expert testimony or “any other ex-
trinsic evidence” to conclude the claims were indefinite).
B
Here the intrinsic evidence establishes that the claims
are indefinite. The patent aims to address the problems of
identity theft, fraud, and unauthorized access to an iden-
tity holder’s account or identifying information “by giving
an individual or other entity increased control over implied
or direct use of his identity.” ’658 patent, col. 2, ll. 16–18.
The invention “provides protection of the identity of an en-
tity by placing limitations or conditions on its use, and
whereby the entity’s use-enabling identification infor-
mation is not fully needed to authorize a transaction.” Id.,
col. 1, ll. 22–25. As part of the invention, use restrictions
on an account (e.g., permitting uses only during certain
times of day or prohibiting certain uses altogether, etc.) can
be put in place such that “[a]ttempts to use [the] identity
outside the authorized scope will be denied, preventing
misuse before it takes place and identifying a possible
fraud in progress . . . .” ’658 patent, col. 5, ll. 57–60.
The invention involves, at least, three entities: an iden-
tity owner, a service provider, and a user. An identity
owner is a person with identifying information who is the
owner of an account or location. A service provider is a
computer operator or automated program that authorizes
or denies transactions involving the account or location
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 7
based on information it receives from the identity owner.
A user is the entity that maintains the account or location
and is in some circumstances either seeking permission
from the service provider to access the identity owner’s ac-
count or location or seeking permission for third parties to
access the account or location. The patent provides many
examples of users, which include credit card companies or
banks who hold the accounts of identity owners, health-
care related organizations who manage medical records for
identity owners, lenders to identity owners, and security
companies who control a specific secure location belonging
to identity owners.
The asserted claims also refer to a “transaction part-
ner.” The term “transaction partner” does not appear in the
specification. Indeed, the term “transaction partner” does
not appear in the claims or specification in U.S. Application
No. 11/115,239, the application to which the ’658 patent
claims priority. Instead, the term first appeared in a pre-
liminary amendment filed almost nine years later. Neither
the preliminary amendment nor the communication be-
tween the patent examiner and the applicant discussed or
explained the meaning of “transaction partner.” There is
also no commonly accepted definition for “transaction part-
ner.” The key issue on appeal is who or what is a “transac-
tion partner” in the context of the patent claims.
In its briefing, Mantissa contended that “a POSA would
be able to decide that ‘transaction partner’ means ‘seller.’”
Appellant Opening Br. 27. A transaction partner would
seek permission to engage in a transaction with a user (e.g.,
a credit company) who would determine whether a pro-
posed transaction (e.g., sale) is authorized. Mantissa’s con-
struction may make sense in some contexts, such as if the
user is a credit card company seeking permission from a
service provider for a transaction partner to access a finan-
cial account maintained by the credit card company and
the transaction partner is a seller seeking to process a
charge to an individual’s credit card account. But the
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 8
claims and specification are not so limited, and “[i]t cannot
be sufficient that a court can ascribe some meaning to a
patent’s claims . . . .” Nautilus, 572 U.S. at 911 (emphasis
omitted); see also TVnGO Ltd. (BVI) v. LG Elecs. Inc., 861
F. App’x 453, 458–59 (Fed. Cir. 2021) (non-precedential)
(“Even if it may be possible to ‘ascribe some meaning’ to the
disputed limitation, . . . more is required: one of ordinary
skill must have reasonable certainty.”).
The specification makes clear that the claims cover a
broad array of scenarios involving financial accounts where
construing “transaction partner” to mean “seller” would not
make sense. For example, the specification recites a “[u]ser
[] may be, by way of non-limiting example, a credit card
company, credit reporting agency, merchant, banking in-
stitution, brokerage firm, insurance provider, hospital,
medical caregiver, computer, corporation, or family mem-
ber. User [] may also in theory be an imposter.” ’658 pa-
tent, col. 8, ll. 17–23; see also id., col. 9, ll. 13–14, col. 14, ll.
21–27. In many of these situations there is no seller, and
the term “transaction partner” in these contexts cannot
mean “seller.”
For example, the specification describes an embodi-
ment where the user is a credit reporting agency seeking
to “determine if [a] loan applicant had an identity account
profile” and provide “a credit worthiness report for the loan
applicant” to a bank. ’658 patent, col. 12, ll. 12–17. When
the credit reporting agency is seeking access to the finan-
cial account of the loan applicant, it is not maintaining an
account or engaging in a transaction involving a seller of
goods or services. As another example, a family member
might seek to access the identity owner’s financial account,
but the family member is not maintaining an account or
engaging in a transaction with a seller. In addition, the
specification describes a situation where “a merchant user”
requests permission for “a purchase at 3:00 AM” that is not
authorized. ’658 patent, col. 11, ll. 40–50. In this scenario,
the merchant or “seller” is identified as the “user.” Id. If
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 9
the seller is the user who is seeking permission to use the
account, it would seem that whoever is on the other side of
the transaction would not be characterized as a “seller.”
Given how broadly the specification defines users and
transactions, the intrinsic evidence does not support con-
struing “transaction partner” to mean “seller.”
C
At oral argument, Mantissa argued that even if its pro-
posed construction of “seller” does not solve the indefinite-
ness problem, “transaction partner” could be construed
more broadly to mean “a party to a transaction”—a con-
struction not offered at the district court or in the briefing
in this court. Oral Arg. at 11:24–12:15. Even assuming
that this argument is not forfeited, this construction exac-
erbates the indefiniteness problem rather than solves it.
The claims require defining “for a plurality of individ-
ual categories, whether each category is authorized or un-
authorized for transactions using the financial account,
each category representing a different type of transaction
partner.” ’658 patent, col. 15, ll. 20–29. The proposed def-
inition of “transaction partner” includes multiple transac-
tions—those between the user and the identity owner, the
user and the service provider, the identity owner and a
third party, the user and a third party, and possibly other
combinations of entities. The specification indicates that
there are, or at least can be, multiple parties to each trans-
action, which includes the user, the identity owner, and the
service provider. See ’658 patent, col. 9, ll. 13–18 (“In a
preferred embodiment, [the] user [] is a lending institution
such as a bank, [the] identity owner [] is a person, and [the]
service provider [] is a form of company that preferably
would use, . . . electronic methodology such as a computer
server to provide a network through which all parties to
the transaction can communicate.” (emphasis added)), Fig.
2 (illustrating how the service provider connects to the user
and identity owner). Based on the specification, any one of
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 10
these parties, in addition to others, such as third-party
merchants, would be “a party to a transaction.”
There are also many examples of different transactions
involving financial accounts. See, e.g., id., col. 2, l. 66–col.
3, l. 2; id., col. 8, ll. 45–55 (making a credit card transac-
tion); id., col. 11, ll. 40–59 (making a purchase); id., col. 12,
ll. 7–19 (applying for a loan); id., col. 13, l. 64–col. 14, l. 3
(withdrawing money from a bank account). Under the
newly proposed definition, if transaction partner were de-
fined as “a party to a transaction” (a conclusion not sup-
ported by the patent), a POSA would not understand with
reasonable certainty how to categorize different types of
transaction partners for the purpose of protecting an iden-
tity owner’s financial account from unauthorized transac-
tions. To construe the term “transaction partner” to
include each of the multiple parties to the multiple types of
transactions simply makes no sense if the purpose of cate-
gorizing is to determine whether a potential party is au-
thorized or unauthorized to engage in a transaction. For
example, the identity owner and service provider—who are
parties to a transaction—do not require authorization.
Because the specification and claims fail to provide ad-
equate guidance as to the identity of the “transaction part-
ner,” the term “transaction partner” is indefinite. In other
cases, we have found terms to be indefinite when a POSA
could not identify with reasonable certainty the identity of
what the term refers to. See HZNP Medicines LLC v. Ac-
tavis Lab’ys UT, Inc., 940 F.3d 680, 689–91 (Fed. Cir. 2019)
(finding the term “Impurity A” indefinite when “the written
description provides no clue as to the identity of” it). Given
the breadth of transactions described, the dearth of details
defining the contours of “transaction partner” and the “in-
dividual categories” creates a “zone of uncertainty,” Nauti-
lus, 572 U.S. at 909 (quoting United Carbon Co. v. Binney
& Smith Co., 317 U.S. 228, 236 (1942)). The public is not
apprised of what is claimed by the patent. See id. We agree
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 11
with the district court that the term “transaction partner”
is indefinite, and the asserted claims are invalid.
II. OFF
Mantissa asks us to review the district court’s construc-
tion of “OFF.” We lack the jurisdiction to do so because the
decision in the district court under review did not rest on
any such determination. While the claim construction may
have consequences for other cases, it has no significance for
this case.
In the joint stipulation to enter final judgment at the
district court, Mantissa acknowledged that the district
court’s holding that claims 1 and 7 are invalid for indefi-
niteness rendered all but one of the asserted claims invalid,
and the one remaining claim was withdrawn. The parties
agree that the judgment of invalidity rests on the indefi-
niteness of the term “transaction partner.” The joint stip-
ulation does not mention, let alone explain, the effect of the
district court’s construction of the term “OFF” on the issue
of infringement or any other dispositive issue. At oral ar-
gument, both parties agreed that the construction of “OFF”
would not affect the final judgment. Oral Arg. at 17:54–
18:27, 33:25–34:03.
With some exceptions not applicable here, our jurisdic-
tion is to review “a final decision of a district court of the
United States.” 28 U.S.C. § 1295(a)(1). The claim con-
struction issue is not at issue in the final decision here.
Therefore, we lack jurisdiction to review it. We have de-
clined to address issues in similar circumstances when it is
not possible to discern from the stipulated judgment how a
district court’s ruling on an issue would be dispositive. See
AlterWAN, Inc. v. Amazon.com, Inc., 63 F.4th 18, 22 (Fed.
Cir. 2023) (declining to address claim construction issues
when “the stipulate[d judgment] d[id] not provide sufficient
detail to allow us to resolve the claim construction issues
presented on appeal”); Jang v. Bos. Sci. Corp., 532 F.3d
1330, 1336 (Fed. Cir. 2008) (declining to address a claim
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 12
construction ruling when “it is impossible to discern from
the stipulated judgment which of the district court’s claim
construction rulings would actually affect the issue of in-
fringement”); Fresenius USA, Inc. v. Baxter Int’l, Inc., 582
F.3d 1288, 1304 (Fed. Cir. 2009) (“Fresenius gave this court
little guidance and cited no record support regarding why
a modified claim construction would affect the infringe-
ment judgment, the validity judgment, or both. For that
reason alone, we may decline to consider Fresenius’s claim
construction arguments.”); Mass. Inst. of Tech. & Elecs. for
Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1350
(Fed. Cir. 2006) (declining to address a district court’s
claim constructions that “would not affect the judgment of
non-infringement”).
The parties ask us to address the district court’s con-
struction of “OFF” because the same term is “pending claim
construction under the same patent-in-suit in at least three
parallel litigations,” Appellee Br. 25–26, which are cur-
rently stayed pending this appeal, and in at least those
cases, Mantissa agreed “to be bound by the claim construc-
tion on the two overlapping terms/phrases in” this case.
Minute Entry, Mantissa Corp. v. Fiserve Sols., LLC, No.
19-cv-03204, ECF No. 42. We have refrained, and are in-
deed prohibited, from issuing opinions in such circum-
stances. See Personalized User Model, LLP v. Google Inc.,
797 F.3d 1341, 1349–50 (Fed. Cir. 2015) (“Despite PUM’s
concerns that the construction might be given preclusive
effect in future litigation involving its related patents, we
may not provide an advisory opinion on the meaning of a
claim term that does not affect the merits of this appeal
and thus is not properly before us.”).2
2 This is not a situation in which we originally had
jurisdiction to address the issue, and the claim construc-
tion issue became moot on appeal as to the particular case.
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 13
CONCLUSION
We affirm the district court’s determination that the
term “transaction partner” is indefinite and affirm the dis-
trict court’s determination that claims 1, 3, 7, 8, 10–12, and
15 are invalid for indefiniteness. We decline to address the
district court’s construction of “OFF.”3
AFFIRMED
Under such circumstances collateral consequences would
perhaps justify finding that the issue was not moot on ap-
peal.
3 Because we lack authority to rule on the issue, the
parties would not be collaterally estopped from contesting
the issue in the other cases that adopted the district court’s
claim construction. See Best Med. Int’l, Inc. v. Elekta Inc.,
46 F.4th 1346, 1352–53 (Fed. Cir. 2022); SkyHawke Techs.,
LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed. Cir.
2016); see also Restatement (Second) of Judgments § 28
(1982).
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N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MANTISSA CORPORATION,
Plaintiff-Appellant
v.
FIRST FINANCIAL CORPORATION, FIRST
FINANCIAL BANK, N.A.,
Defendants-Appellees
______________________
2022-1963
______________________
Appeal from the United States District Court for the
Northern District of Illinois in No. 1:17-cv-09174, Judge
Virginia M. Kendall.
______________________
S CHALL , Circuit Judge, concurring-in-part and dissenting-
in-part.
The Supreme Court has instructed that, under pre-AIA
35 U.S.C. § 112, ¶2, “a patent is invalid for indefiniteness
if its claims, read in light of the specification delineating
the patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the
scope of the invention.” Nautilus, Inc. v. Biosig Instru-
ments, Inc., 572 U.S. 898, 901 (2014). For our part, we have
stated that “[o]nly if a disputed claim term remains ambig-
uous after analysis of the intrinsic evidence should the
court rely on extrinsic evidence.” Actelion Pharms. Ltd. v.
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 2
Mylan Pharms. Inc., 85 F.4th 1167, 1174 (Fed. Cir. 2023)
(citing Pickholtz v. Rainbow Techs., Inc., 284 F.3d 1365,
1372–73 (Fed. Cir. 2002)). I agree with the majority that,
in this case, it is not necessary to resort to extrinsic evi-
dence in order to determine whether claims 1, 3, 7, 8, 10–
12, and 15 of the ’658 patent are indefinite. However, I do
not agree with the conclusion that the majority reaches af-
ter examining the intrinsic evidence: that those claims are
indefinite.
The claim term at issue is “transaction partner.” It ap-
pears in both independent claims at issue, claims 1 and 7.
The majority holds these claims indefinite because it con-
cludes that “the specification and claims fail to provide ad-
equate guidance as to the identity of the ‘transaction
partner.’” Maj. Op. 10. In my view, however, examination
of the claims and specification does reveal the meaning of
“transaction partner.”
Both before the district court and in its briefing on ap-
peal, Mantissa argued that, in the context of the ’658 pa-
tent, the term “transaction partner” means “seller.” See
J.A. 555, Appellant’s Br. 25. The majority correctly rejects
this construction. However, even if we disagree with the
claim construction urged upon us by Mantissa, we are free
to examine the intrinsic record ourselves and arrive at
what we believe is the correct construction. See Praxair,
Inc. v. ATMI, Inc., 543 F.3d 1306, 1323–24 (Fed. Cir. 2008)
(adopting “a new claim construction on appeal,” and noting
that “the court has an independent obligation to construe
the terms of a patent [and] need not accept the construc-
tions proposed by either party”). In my view, for the follow-
ing reasons, the correct construction of “transaction
partner” is “party to a transaction.”1
1 At the conclusion of oral argument before us, coun-
sel for Mantissa stated that he agreed with this
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 3
I begin with the claim language. Claim 1 of the ’658
patent recites in pertinent part:
1. A method for a service provider to control use
of an entity’s financial account to facilitate trans-
actions, comprising:
setting scope of use, defined by the entity
via a network, for the financial account, in-
cluding at least:
. . .
(b) for a plurality of individual cat-
egories, whether each category is
authorized or unauthorized for
transactions using the financial ac-
count, each category representing a
different type of transaction part-
ner; . . .
. . .
receiving, via a network from a source
other than the entity, an inquiry regarding
a proposed transaction that would use the
financial account;
determining, relative to the scope of use,
whether the financial account may or may
not be used for the proposed transaction,
comprising:
. . .
construction. Oral arg. 35:02–13; see also id. at 3:22–37
(“Our position is that ‘transaction partner’ refers to the
parties to a transaction . . . .”).
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 4
denying when . . . the proposed
transaction falls within a category
that is unauthorized;
. . .
permitting when . . . the proposed
transaction falls within a category
that is authorized, . . . .
’658 patent, col. 15 ll. 20–53 (emphasis added).
Claim 7 of the ’658 patent recites in pertinent part:
7. A method for a service provider to control use
of an entity’s financial account to facilitate trans-
actions, . . . , the method comprising:
setting scope of use, as defined by the entity
via a network, for the financial account, in-
cluding at least:
. . .
(b) setting a category status for
each category of a plurality of cate-
gories as either authorized or un-
authorized for transactions using
the financial account, each category
representing a type of transaction
partner; . . .
. . .
receiving, via a network from a source
other than the entity, an inquiry regarding
a proposed transaction on the financial ac-
count;
determining, relative to the scope of use, a
response status to the inquiry reflecting
whether the financial account may or may
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 5
not be used for the proposed transaction,
comprising:
. . .
setting the response status to im-
permissible when . . . the proposed
transaction falls within a category
having an unauthorized category
status;
. . .
setting the response status to per-
missible when . . . the proposed
transaction falls within a category
having an authorized category sta-
tus . . . .
’658 patent, col. 16 ll. 12–56 (emphasis added).
The preambles of both claims 1 and 7 refer to control-
ling “use of an entity’s financial account to facilitate trans-
actions.” At the same time, both claims include a step of
“setting scope of use . . . for the financial account.” That
step requires setting, for a “plurality of [ ] categories,”
whether each category is “authorized or unauthorized for
transactions using the financial account, each category rep-
resenting a [ ] type of transaction partner.” I believe that
the plain language of the claims (references to facilitating
transactions followed by references to “transaction part-
ner”) compels the conclusion that a “transaction partner” is
a party to a transaction. This is further supported, I think,
by the claimed steps of setting parameters regarding
whether certain transactions with certain categories of
“transaction partner[s]” will be authorized or unauthor-
ized, followed by “permitting” or “denying” a proposed
transaction based in part upon whether the proposed
transaction pertains to a category of transaction partner
that is authorized or unauthorized. To me, it is clear from
this claim language that the claims pertain to permitting
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 6
or denying a proposed transaction in which the financial
account would be used, based upon whether the party to
the transaction is one that falls into a category that is au-
thorized or unauthorized.
The specification further supports this conclusion. It
recites that an embodiment of the claimed invention com-
prises “receiving, at a service provider, a request to deter-
mine whether the use of an entity’s identity by a party is
authorized for a requested application.” ’658 patent col. 3
ll. 34–35 (emphasis added). Of particular significance, it
seems to me, the specification provides the example that
“an identity owner 30 who spends too much money at a cer-
tain store or type of store can set identity attributes 13 in
account profile 14 to deny requests from that store or type
of store.” Id. col. 6 ll. 47–51. And, the specification recites
at length the various types of situations in connection with
which the claimed invention may be employed. These in-
clude credit card use, making a request for a loan, and bank
account withdrawals. Id. col. 2 l. 64–col. 3 l. 2, col. 3 ll. 4–
6, col. 5 ll. 48–50, 54–55, col. 6 ll. 47–51, col. 13 l. 64–col. 14
l. 3. Each of these situations involves a “transaction” in
which a party to a transaction who is separate and distinct
from the “entity” seeks to use what claims 1 and 7 both re-
fer to as the entity’s “financial account.” Id. col. 15 l. 21,
col. 16 l. 14.2 In sum, a “party to a transaction” is plainly
the “transaction partner” of claims 1 and 7.
The majority’s view is that the specification provides
“multiples parties to each transaction,” i.e., the user, the
2 The specification also refers to situations involving
gaining access to medical records. ’658 patent col. 3 ll. 2–
4, col. 3 l. 6, col. 5 ll. 51–53, col. 6 ll. 40–47. At first glance,
these situations do not appear to fall within the scope of
the claims of the ’658 patent, which pertain to “financial
transactions,” although I recognize there may be financial
transactions that pertain to medical records.
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MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 7
identity owner, the service provider, or a third party, any
one of which could be a “party to a transaction.” Maj. Op.
9–10. To the extent that is the case, I believe, though, that
the claim language clarifies that a “transaction partner” is
something or someone that could enter into a transaction
using the financial account, authorization for the use of
which must be obtained, and would not be the service pro-
vider, entity, or financial account owner. Thus, one of skill
in the art would be informed of the scope of the invention
with reasonable certainty.
In my view, the district court thus erred in holding in-
dependent claims 1 and 7 of the ’658 patent and the related
dependent claims indefinite. I would therefore reverse the
decision of the district court and remand the case to the
court for further proceedings.
Finally, the majority holds that, because there has
been no final judgment relating to the district court’s con-
struction of the term “OFF” appearing in claims 1, 3, 7, 8,
10–12, and 15 of the ’658 patent, we cannot consider that
issue. I agree with this holding. Accordingly, I join that
part of the majority opinion.
For the foregoing reasons, I respectfully concur-in-part
and dissent-in-part.
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