Fintiv, Inc. v. Paypal Holdings, Inc.

134 F.4th 1377

• Court: Court of Appeals for the Federal Circuit
• Decided: April 30, 2025
• Docket: 23-2312
• Status: Published

Opinion

Case: 23-2312 Document: 50 Page: 1 Filed: 04/30/2025

United States Court of Appeals for the Federal Circuit ______________________

FINTIV, INC., Plaintiff-Appellant

v.

PAYPAL HOLDINGS, INC., Defendant-Appellee ______________________

2023-2312 ______________________

Appeal from the United States District Court for the Western District of Texas in No. 6:23-cv-00490-ADA, Judge Alan D. Albright. ______________________

Decided: April 30, 2025 ______________________

MEREDITH LEIGH MARTIN ADDY, AddyHart P.C., At- lanta, GA, argued for plaintiff-appellant. Also represented by CHARLES A. PANNELL, III; BENJAMIN CAPPEL, Chicago, IL; JECEACA AN, Kasowitz Benson Torres LLP, New York, NY; MARCUS BARBER, JOHN DOWNING, DARCY L. JONES, HEATHER KIM, THUCMINH NGUYEN, JONATHAN K. WALDROP, Redwood Shores, CA; PAUL GUNTER WILLIAMS, Atlanta, GA.

ROBERT N. KANG, Winston & Strawn LLP, San Fran- cisco, CA, argued for defendant-appellee. Also represented by EIMERIC REIG-PLESSIS; NIMALKA R. WICKRAMASEKERA, Case: 23-2312 Document: 50 Page: 2 Filed: 04/30/2025

Los Angeles, CA; BARRY KENNETH SHELTON, Shelton Co- burn LLP, Austin, TX. ______________________

Before PROST, TARANTO, and STARK, Circuit Judges. PROST, Circuit Judge. Fintiv, Inc. (“Fintiv”) sued PayPal Holdings, Inc. (“Pay- Pal”) for patent infringement in the U.S. District Court for the Western District of Texas. Relevant here, Fintiv as- serted U.S. Patent Nos. 9,892,386 (“the ’386 patent”), 11,120,413 (“the ’413 patent”), 9,208,488 (“the ’488 pa- tent”), and 10,438,196 (“the ’196 patent”) (collectively, “the asserted patents”). After claim construction, the district court determined certain claim terms in the asserted pa- tents were subject to 35 U.S.C. § 112 ¶ 6 1 and held the as- serted claims invalid as indefinite. Fintiv, Inc. v. PayPal Holdings, Inc., No. 23-0490, 2023 WL 5423082 (W.D. Tex. July 21, 2023) (“Claim Construction Order”). Fintiv ap- peals. For the reasons below, we affirm the district court’s indefiniteness determination. BACKGROUND The asserted patents generally relate to a “cloud-based transaction system,” also referred to as a “‘monetary trans- action system’, ‘mobile wallet platform’, ‘mobile wallet pro- gram’, ‘mobile wallet transaction system’, ‘mobile financial services (mFS) platform’ or ‘electronic payment system.’”

1 The Leahy-Smith America Invents Act (“AIA”) re- named § 112 ¶¶ 2 and 6 as, respectively, § 112(b) and (f). AIA, Pub. L. No. 112-29, sec. 4(c), 125 Stat. 284, 296 (2011). Because the applications resulting in the asserted patents were filed before September 16, 2012, we refer to the pre- AIA version of § 112. See id. sec. 4(e), 125 Stat. at 297; see also Media Rights Techs., Inc. v. Cap. One Fin. Corp., 800 F.3d 1366, 1371 n.1 (Fed. Cir. 2015). Case: 23-2312 Document: 50 Page: 3 Filed: 04/30/2025

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’488 patent col. 6 ll. 30–35. The ’386 and ’413 patents share a common specification and claim priority to provisional applications filed on June 3, 2011, and August 10, 2011. The ’488 and ’196 patents share a common specification and claim priority to a provisional application filed on No- vember 21, 2011. The specifications for all four asserted patents are substantially similar. The terms at issue are the payment-handler terms. 2 As relevant to this appeal, the payment-handler terms appear as follows in the asserted claims: a payment handler service operable to use [applica- tion programming interfaces (“APIs”)] of different payment processors including one or more APIs of banks, credit and debit cards processors, bill pay- ment processors. ’386 patent claims 1–3 (emphasis added). a payment handler configured to use APIs of differ- ent payment processors including one or more APIs of banks, credit and debit cards processors, and bill payment processors. ’413 patent claim 1 (emphasis added); see also id. claim 2 (similar). a payment handler that exposes a common API for interacting with different payment processors. ’488 patent claim 1 (emphasis added); ’196 patent claim 1 (same). Aside from the claims, the only textual description of the payment-handler terms in the asserted patents is nearly identical to the claim language. See, e.g., ’386

2 For simplicity, we refer to the terms “payment han- dler” and “payment handler service” in the asserted pa- tents as “the payment-handler terms.” Case: 23-2312 Document: 50 Page: 4 Filed: 04/30/2025

patent col. 13 ll. 29–34 (“Payment handler 105 is config- ured to wrap APIs of different payment processors, such as, for example, banking accounts, credit/debit cards or proces- sor 121. Payment handler 105 exposes a common API to facilitate interactions with many different kinds of pay- ment processors.” (emphasis in original)); ’413 patent col. 14 ll. 8–13 (same); ’488 patent col. 10 ll. 4–9 (same); ’196 patent col. 10 ll. 21–26 (same). The payment-handler terms also appear in Figures 1 and 20A–22J in the ’386 pa- tent, Figures 1 and 20A–22J in the ’413 patent, Figure 1 in the ’488 patent, and Figure 1 in the ’196 patent. At claim construction, the district court ruled from the bench that the payment-handler terms are indefinite. J.A. 3489 (48:5–8). Fintiv filed a motion for reconsidera- tion of the court’s construction of the payment-handler terms. J.A. 3438–54. The court heard argument on Fin- tiv’s motion for reconsideration and then issued a written opinion denying Fintiv’s motion for reconsideration and finding the asserted claims invalid due to indefiniteness. In particular, the district court evaluated whether the pay- ment-handler terms are means-plus-function terms subject to § 112 ¶ 6 and, if so, whether the asserted patents’ speci- fications disclose adequate corresponding structure to avoid indefiniteness. Claim Construction Order, 2023 WL 5423082, at *7–10. On the first issue, the district court found that the pay- ment-handler terms invoke § 112 ¶ 6. The court first noted that because the claim terms at issue do not use the word “means,” a presumption exists that the claim terms do not invoke § 112 ¶ 6. Id. at *7. It also noted that this presump- tion can be overcome “by showing that the claim limitation recites ‘function without reciting sufficient structure for performing that function.’” Id. (quoting Williamson v. Cit- rix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in relevant part)). The court found that PayPal over- came this presumption because the payment-handler terms are “drafted in a format consistent with traditional Case: 23-2312 Document: 50 Page: 5 Filed: 04/30/2025

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means-plus function limitations, and merely replaces the term means with the term payment handler or payment handler service.” Id. (cleaned up). It also found the “con- necting terms, ‘that,’ ‘operable to,’ and ‘configured to,’ are used to describe the function performed by the ‘payment handler’ and ‘payment handler service,’” and “[t]hese terms are consistently used by terms found to invoke section 112, ¶ 6, and do not themselves[] impart structure.” Id. Next, the district court found that the specifications of the asserted patents fail to disclose adequate structure cor- responding to the claimed functions of “us[ing] APIs of dif- ferent payment processors including one or more APIs of banks, credit and debit cards processors, bill payment pro- cessors” and “expos[ing] a common API for interacting with different payment processors.” Id. at *9 (alterations in original) (quoting ’386 patent claim 1; ’488 patent claim 1). Specifically, the court found that the specifications “dis- close no structure at all, much less an algorithm for per- forming the recited functions.” Id. Accordingly, the court held the claims at issue invalid as indefinite and entered final judgment. Fintiv timely appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). DISCUSSION I “Regarding questions of claim construction, including whether claim language invokes [§ 112 ¶ 6], the district court’s determinations based on evidence intrinsic to the patent as well as its ultimate interpretations of the patent claims are legal questions that we review de novo.” Wil- liamson, 792 F.3d at 1346. “To the extent the district court, in construing the claims, makes underlying findings of fact based on extrinsic evidence, we review such findings of fact for clear error.” Id. Case: 23-2312 Document: 50 Page: 6 Filed: 04/30/2025

Fintiv offers two main arguments on appeal—first, that the district court erred in concluding that the pay- ment-handler terms invoke § 112 ¶ 6; and second, that the district court erred in concluding that the specifications fail to disclose algorithmic structure for the claimed functions. We address each argument in turn. II A The first step of a § 112 ¶ 6 analysis is to determine whether the claim term at issue is in means-plus-function format. Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367, 1372–73 (Fed. Cir. 2020). The issue here is whether the payment-handler terms invoke § 112 ¶ 6, which the district court found they did. For the reasons below, we agree with the district court. Here, the payment-handler terms obviously do not use the word “means.” Thus, there is a rebuttable presumption that § 112 ¶ 6 does not apply. Williamson, 792 F.3d at 1348. That presumption “can be overcome and [§ 112 ¶ 6] will apply if the challenger demonstrates that the claim term fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. (second alteration in origi- nal) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)); see also id. at 1349. We agree with the district court that PayPal has over- come this presumption because the payment-handler terms recite function without reciting sufficient structure for performing that function. Claim Construction Order, 2023 WL 5423082, at *7–8. The relevant claim language of the ’386 and ’413 patents recites “a payment handler [service] [operable/configured] to use APIs of different pay- ment processors including one or more APIs of banks, credit and debit cards processors, bill payment processors,” ’386 patent claims 1–3; ’413 patent claims 1–2, while the Case: 23-2312 Document: 50 Page: 7 Filed: 04/30/2025

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’488 and ’196 patents recite “a payment handler that ex- poses a common API for interacting with different payment processors,” ’488 patent claim 1; ’196 patent claim 1. The district court found that, like the claims in Williamson, the payment-handler terms are “drafted in a format consistent with traditional means-plus function limitations” and “merely replace[] the term ‘means’ with the [payment-han- dler terms].” Claim Construction Order, 2023 WL 5423082, at *7 (cleaned up) (quoting Williamson, 792 F.3d at 1350). It also credited PayPal’s expert testimony that the payment-handler terms “provide[ ] no structure beyond a blank box, and critically, that a [person of ordinary skill in the art (“POSA”)] would not have understood how to im- plement the recited functions.” Id. at *8 (internal citation omitted). On appeal, Fintiv argues that both the “handler” terms by themselves and the payment-handler terms as a whole identify structure. Appellant’s Br. 20–33. We disagree. The district court correctly analogized “handler” with the nonce term “module,” which we have determined was “simply a generic description of software or hardware that performs a specified function.” Claim Construction Order, 2023 WL 5423082, at *8 (quoting Williamson, 792 F.3d at 1350). And in concluding that “handler” does not connote sufficient structure to a POSA, the district court credited technical dictionaries that demonstrated “that the term ‘handler’ does not impart any structure.” Id. at *7. As to the prefix “payment,” the district court found that this pre- fix does not impart structure onto “handler” and merely de- scribes the function of the handler: to perform payment functions. Id. The facts here are analogous to the facts in Rain Computing, Inc. v. Samsung Electronics America, Inc., where we concluded that “user identification module” invokes § 112 ¶ 6. 989 F.3d 1002, 1006 (Fed. Cir. 2021). The court reasoned that “the prefix ‘user identification’” does not “impart structure because it merely describes the function of the module: to identify a user,” so “the claim Case: 23-2312 Document: 50 Page: 8 Filed: 04/30/2025

language fails to provide any structure for performing the claimed functions.” Id. Fintiv also contends that extrinsic sources, such as the Internet Open Trading Protocol (“IOTP”), support its argu- ment that the payment-handler terms as a whole connote structure. See, e.g., Appellant’s Br. 29–31; Reply Br. 17–20. We disagree. The district court found that the IOTP sug- gests that the payment-handler terms “can refer to many different entities in a payment system with different struc- tures.” Claim Construction Order, 2023 WL 5423082, at *7. Thus, on this record, we agree with the district court that “handler” alone and the payment-handler terms as a whole fail to provide any structure for performing the claimed functions. Cf. Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1348 (Fed. Cir. 2016) (“Irre- spective of whether the terms ‘symbol’ and ‘generator’ are terms of art in computer science, the combination of the terms as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the function being performed.”). Fintiv next argues that the claims’ connecting terms— “that,” “operable to,” and “configured to”—which appear in the asserted claims are “more often used with structural terms rather than non-structural ones.” Appellant’s Br. 25; see also Reply Br. 2–3. Fintiv cites to four cases that use identical or nearly identical connecting words as the as- serted claims to support its argument. See Appellant’s Br. 25–26 (citing Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369–70 (Fed. Cir. 2022); Zeroclick LLC v. Apple Inc., 891 F.3d 1003, 1006 (Fed. Cir. 2018); Apex Inc. v. Raritan Comput., Inc., 325 F.3d 1364, 1368 (Fed. Cir. 2003); Per- sonalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 699, 705 (Fed. Cir. 1998)). Fintiv fails to meaningfully explain how the connecting words in these cases that deal with dif- ferent patents are dispositive here other than to state that these connecting words are identical or nearly identical to the connecting words in the asserted claims. In fact, we Case: 23-2312 Document: 50 Page: 9 Filed: 04/30/2025

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have rejected the argument that the connecting term “con- figured to” necessarily avoided means-plus-function claim- ing. Rain Computing, 989 F.3d at 1006. Our case law does not provide for a blanket rule that these connecting words (i.e., “that,” “operable to,” and “configured to”) automati- cally suggest terms are structural. As we have explained, the applicability of § 112 ¶ 6 depends on the specific con- text of the patent at issue. Williamson, 792 F.3d at 1350–51 & n.5; see also Advanced Ground, 830 F.3d at 1348 (analyzing whether a claim term is in means-plus-function format by looking to the “combination of the terms as used in the context of the relevant claim language” (emphasis added)). The determination of whether the payment-han- dler terms invoke § 112 ¶ 6 turns on how those terms are used in the asserted patents. None of the cases cited by Fintiv discuss the payment-handler terms, much less in the context of the asserted patents. As with the claims in Rain Computing, 989 F.3d at 1006, here, the purely func- tional claim language reciting that the payment-handler terms are configured or operated to complete an action pro- vides no structure. Fintiv also argues that our decision in Dyfan controls here. Specifically, Fintiv argues that the payment-handler terms are a class of software structures under Dyfan. We disagree. In Dyfan, the issue before our court was whether the claim terms “code” and “application” were in means-plus- function format. Because these terms did not include the word “means,” there was a presumption that the terms were not in means-plus-function format. We ultimately held that the patent challenger failed to overcome this pre- sumption. 28 F.4th at 1366–68. This court relied on the unrebutted testimony from the patent challenger’s own ex- pert testifying that a POSA would have (1) understood the “code” / “application” limitations “connote a class of struc- tures” and (2) known the recited claim functions could be Case: 23-2312 Document: 50 Page: 10 Filed: 04/30/2025

implemented using “off-the-shelf” code or applications. Id. at 1367–68. Fintiv relies on Dyfan to argue that § 112 ¶ 6 does not apply because (1) certain dictionary definitions for “han- dler” and “service” relate to software and (2) that software is a definite class of structure. But Dyfan is distinguisha- ble from the facts here. Unlike in Dyfan, where the expert’s testimony that the term “code” / “application” connoted software structure to a POSA was unrebutted, here, nei- ther expert testified that the payment-handler terms con- noted structure. See Claim Construction Order, 2023 WL 5423082, at *8. As used in the claims, the payment-han- dler terms are no more than a “black box recitation of struc- ture” that can operate as a substitute for “means,” Williamson, 792 F.3d at 1350, and “a POSA would not have understood how to implement the recited functions,” Claim Construction Order, 2023 WL 5423082, at *8. Fintiv next argues that the claim language defines the “inputs, outputs, and operation of the ‘payment handler.’” Appellant’s Br. 34–40. Fintiv cites to Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014), to support its argument, but that case is distinguishable from the facts here. In Apple—a pre-Williamson case—“the claim language and specification outline[d] the rules that the [claim term] follow[ed],” so the claim language provided sufficiently definite structure and the patent “recite[d] a claim term with a known meaning.” Id. at 1303. In con- trast, here, the claims and specifications, including the fig- ures in the asserted patents, do not provide sufficiently definite structure to the “inputs, outputs, connections, and operation” of the payment-handler terms. 3 In fact, the sole

3 Fintiv argues that the figures in the asserted pa- tents show “the various process flows in and out of the pay- ment handler and how it fit[s] within the broader system.” Case: 23-2312 Document: 50 Page: 11 Filed: 04/30/2025

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textual support in the specifications for the payment-han- dler terms merely parrots the claim language. See ’386 pa- tent col. 13 ll. 29–34; ’413 patent col. 14 ll. 8–13; ’488 patent col. 10 ll. 4–9; ’196 patent col. 10 ll. 21–26. We therefore affirm the district court’s conclusion— based on the intrinsic evidence and extrinsic evidence— that the payment-handler terms invoke § 112 ¶ 6. 4 B Having determined that the payment-handler terms invoke § 112 ¶ 6, we proceed to the second step of the anal- ysis: identifying the corresponding structure described in the specification. “Structure disclosed in the specification qualifies as corresponding structure if the intrinsic evi- dence clearly links or associates that structure to the func- tion recited in the claim.” Williamson, 792 F.3d at 1352 (cleaned up). And “[e]ven if the specification discloses cor- responding structure, the disclosure must be of adequate corresponding structure to achieve the claimed function.” Id. (cleaned up). “If the function is performed by a general- purpose computer or microprocessor, then the second step generally further requires that the specification disclose

Appellant’s Br. 35. PayPal responds that “none of these figures show how the payment handler ‘use[s] APIs of dif- ferent payment processors’ or ‘exposes a common API for interacting with different payment processors.’” Appellee’s Br. 56 (emphasis in original). We agree with PayPal. 4 This appeal is not the first instance that we have held a claim term with more than one word to invoke § 112 ¶ 6. See, e.g., Media Rights, 800 F.3d at 1371–75 (“compli- ance mechanism”); Advanced Ground, 830 F.3d at 1348 (“symbol generator”); Diebold Nixdorf, Inc. v. ITC, 899 F.3d 1291, 1297–302 (Fed. Cir. 2018) (“cheque standby unit”); Rain Computing, 989 F.3d at 1005–07 (“user identification module”). Case: 23-2312 Document: 50 Page: 12 Filed: 04/30/2025

the algorithm that the computer performs to accomplish that function.” Rain Computing, 989 F.3d at 1007 (citation omitted). And finally, the claims are indefinite if the spec- ification fails to disclose adequate corresponding structure to perform the claimed function. Traxcell Techs., LLC v. Sprint Commc’ns Co., 15 F.4th 1121, 1134 (Fed. Cir. 2021) (citing Williamson, 792 F.3d at 1351–52). We agree with the district court that the asserted claims “fail to disclose sufficient structure to perform the functions of ‘us[ing] APIs of different payment processors including one or more APIs of banks, credit and debit cards processors, bill payment processors’ and ‘expos[ing] a com- mon API for interacting with different payment proces- sors.’” Claim Construction Order, 2023 WL 5423082, at *9 (alterations in original) (quoting ’386 patent claim 1; ’488 patent claim 1). In particular, the district court found that the specifications of the asserted patents do not disclose any algorithm to perform the recited function. The court explained that the specifications “merely refer[] to the ge- neric process of translating APIs,” and a POSA would not understand where the wrapping of the APIs occur. Id. It found that “there is significant ambiguity in the specifica- tion,” and a POSA “would not understand to what entity the payment handler’s ‘common API’ is exposed.” Id. On appeal, Fintiv argues that the asserted patents identify a two-step algorithm for a payment handler: (1) “wrap[s] APIs of different payment processors, such as, for example banks . . .” and (2) “exposes a common API to facilitate interactions with many different kinds of pay- ment processors.” Appellant’s Br. 45 (cleaned up). We dis- agree. Fintiv’s purported two-step algorithm merely recites the asserted claims’ language. The specifications do not provide additional disclosures other than reciting the function of the payment-handler terms using generic terms without providing any details about an algorithm to carry out the functions of using APIs of different payment pro- cessors including one or more APIs of banks, credit and Case: 23-2312 Document: 50 Page: 13 Filed: 04/30/2025

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debit cards processors, bill payment processors, and expos- ing a common API for interacting with different payment processors. 5 We have held that describing “the results of the operation of an unspecified algorithm” is not sufficient to transform the disclosure of a general-purpose computer into the disclosure of sufficient structure to satisfy § 112 ¶ 6. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1335 (Fed. Cir. 2008). Without an algo- rithm to achieve these functionalities—and, more gener- ally, given the specifications’ failure to disclose adequate corresponding structure—we hold the payment-handler terms indefinite. CONCLUSION We have considered Fintiv’s remaining arguments and find them unpersuasive. For the foregoing reasons, we af- firm. AFFIRMED

5 Fintiv also argues that the proper function being performed by the payment-handler terms is “interacting with different payment processors.” Reply Br. 21. We dis- agree. Fintiv’s characterization of the claimed functions is too broad and not supported by the claim language, which requires exposing a common API and using APIs of differ- ent payment processors.