United States District Court, D. Massachusetts
MEMORANDUM OF DECISION ON DEFENDANT SCVNGR INC.'S MOTION FOR SUMMARY JUDGMENT (Docket No. 17)
TIMOTHY S. HILLMAN, District Judge.
Plaintiff Jack Barron ("Plaintiff") filed a complaint against Defendant SCVNGR d/b/a LevelUp ("LevelUp" or "Defendant") alleging Defendant has infringed U.S. Patent No. 7, 499, 873 ("the '873 patent"). Defendant filed two counterclaims, seeking declaratory judgment of non-infringement (Count I) and patent invalidity (Count II). Defendant now moves for summary judgment on Plaintiff's sole claim of infringement and its corresponding counterclaim for declaratory judgment of non-infringement. For the reasons set forth below, the motion is granted.
The '873 patent, entitled "Communication Through a Financial Services Network, " describes and claims methods for communicating a message from a sender to a recipient in possession of a unique identifier. Each claim of the '873 requires that the message be communicated at a "transaction terminal." A transaction terminal is described as, by way of example, but not limited to, a point of sale ("POS") terminal or automatic teller machine ("ATM") terminal. For example, two of the independent claims recite:
1. A method of communicating a message from a sender to recipient in possession of a unique identifier by use of which the recipient can perform a financial transaction at a transaction terminal, the method comprising:
receiving the message from the sender, the message including a reference to the unique identifier;
storing the message in a computer memory;
performing the financial transaction at the transaction terminal, using the unique identifier;
detecting performance of the financial transaction at the transaction terminal; and transmitting the message from the computer memory in which it is stored to the transaction terminal for display to the recipient at the transaction terminal, incidental to the financial transaction performed and any message generated in response to performance of the financial transaction, the message being independent of the financial transaction performed.
9. A computer-implemented method of enhancing financial transaction services, the method comprising:
providing a computer network including a transaction terminal through which financial transactions are communicated; performing a financial transaction; communicating a message from a sender to a recipient through the computer network, wherein the message is transmitted to the recipient through the transaction terminal incidental to performance by the recipient of the financial transaction and any message generated in response to performance of the financial transaction.
The '873 patent teaches a method which allows a sender to communicate a stored message to a recipient through a financial communication network. The patent notes that this method provides a means for messages to reach those who do "not have access to a conventional landline or cellular telephone, or to an internet-connected computer or other conventional communication device." The method allows a sender to input a message into a system that then stores the message and forwards it to the intended recipient at a transaction terminal when the recipient attempts to use the transaction terminal to perform a financial transaction.
Defendant created a mobile phone application ("app") that allows users to pay for goods and services by scanning a two-dimensional bar code. Merchants can install a LevelUp scanner which can read the two dimensional LevelUp barcode either from a display on the customer's mobile phone or from a printed card. The LevelUp scanner then sends the encoded information and the transaction amount entered by the merchant to a LevelUp server. The LevelUp server retrieves the customer's stored account information and transmits the transaction for authorization. The customer may receive messages, including receipts, from LevelUp via email or via the ...