NOTE: This disposition is nonprecedential.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 JOHN DEMARCO, Young Basile Hanlon & 

MacFarlane, P.C., Houston, TX, argued for plaintiff-appellant.

 RYAN RONALD SMITH, Wilson, Sonsini, Goodrich & 

Rosati, PC, Palo Alto, CA, argued for defendants-appellees. 

______________________ 

Before DYK, SCHALL, and REYNA, Circuit Judges. 

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2 MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION

Opinion for the court filed by Circuit Judge DYK. 

Opinion concurring-in-part and dissenting-in-part filed by 

Circuit Judge SCHALL. 

Dyk, Circuit Judge. 

Mantissa Corporation (“Mantissa”) appeals from a final 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 conclude that we lack the authority to determine whether the 

district court properly construed the term “OFF.” We affirm. 

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 protect 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 infringement of claims 1, 3, 7, 8, 10–13, and 15 of the ’658 patent. 

Independent claim 1 of the ’658 patent is representative1: 

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 Claim 13 was withdrawn from 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 transactions, comprising:

setting scope of use, defined by the entity 

via a network, for the financial account, including at least:

(a) the financial account to either 

OFF or ON;

(b) for a plurality of individual categories, whether each category is 

authorized or unauthorized for 

transactions using the financial account, each category representing a 

different type of transaction partner; and

(c) a geographical scope reflecting a 

geographic area in which transactions 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 unauthorized;

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4 MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION

denying when the financial account 

is ON, the proposed transaction 

falls within a category that is authorized 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 otherwise 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 “transaction 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 accordance with the joint motion, Mantissa agreed to withdraw

claim 13 and not assert it against First Financial. Pursuant to the stipulation, the district court entered final judgment under Fed. R. Civ. P. 54(b). J.A. 18. 

Case: 22-1963 Document: 60 Page: 4 Filed: 02/14/2024
MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION 5

Mantissa appeals. We have jurisdiction pursuant to 28 

U.S.C. § 1295(a)(1). 

DISCUSSION 

I. Transaction Partner

“We review claim construction based on intrinsic evidence de novo and review any findings of fact regarding extrinsic 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 certainty, those skilled in the art about the scope of the invention.” 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) (footnote omitted). 

A 

At the district court, First Financial relied on testimony from its expert, Dr. Rhyne, to support its argument 

that the term “transaction partner” is indefinite. The district court concluded that Dr. Rhyne was a person of ordinary 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 systems for processing and authorizing transactions in a financial 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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6 MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION

and whether the district court erred in relying on his testimony to determine that “transaction partner” was indefinite. 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 indefiniteness 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 extrinsic 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 identity 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 entity by placing limitations or conditions on its use, and 

whereby the entity’s use-enabling identification information 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 identity 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 account 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, healthcare 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 partner.” 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 preliminary amendment filed almost nine years later. Neither 

the preliminary amendment nor the communication between the patent examiner and the applicant discussed or 

explained the meaning of “transaction partner.” There is 

also no commonly accepted definition for “transaction partner.” The key issue on appeal is who or what is a “transaction 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 proposed transaction (e.g., sale) is authorized. Mantissa’s construction 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 financial 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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8 MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION

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 institution, brokerage firm, insurance provider, hospital, 

medical caregiver, computer, corporation, or family member. User [] may also in theory be an imposter.” ’658 patent, 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 embodiment 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 financial 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 construing “transaction partner” to mean “seller.” 

C 

At oral argument, Mantissa argued that even if its proposed construction of “seller” does not solve the indefiniteness problem, “transaction partner” could be construed 

more broadly to mean “a party to a transaction”—a construction 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 exacerbates the indefiniteness problem rather than solves it. 

The claims require defining “for a plurality of individual categories, whether each category is authorized or unauthorized for transactions using the financial account, 

each category representing a different type of transaction 

partner.” ’658 patent, col. 15, ll. 20–29. The proposed definition of “transaction partner” includes multiple transactions—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 transaction, 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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10 MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION

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 transaction); 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 defined as “a party to a transaction” (a conclusion not supported 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 identity owner’s financial account from unauthorized transactions. 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 categorizing is to determine whether a potential party is authorized 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 adequate guidance as to the identity of the “transaction partner,” 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. Actavis 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 “individual categories” creates a “zone of uncertainty,” Nautilus, 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 construction 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 indefiniteness 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 indefiniteness of the term “transaction partner.” The joint stipulation 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 argument, 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 jurisdiction is to review “a final decision of a district court of the 

United States.” 28 U.S.C. § 1295(a)(1). The claim construction issue is not at issue in the final decision here. 

Therefore, we lack jurisdiction to review it. We have declined 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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12 MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION

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 infringement”); 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 infringement 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 construction 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 currently stayed pending this appeal, and in at least those 

cases, Mantissa agreed “to be bound by the claim construction 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 indeed prohibited, from issuing opinions in such circumstances. 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 construction 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 district 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 appeal. 

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).

Case: 22-1963 Document: 60 Page: 13 Filed: 02/14/2024
NOTE: 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.

______________________ 

SCHALL, Circuit Judge, concurring-in-part and dissentingin-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 Instruments, Inc., 572 U.S. 898, 901 (2014). For our part, we have 

stated that “[o]nly if a disputed claim term remains ambiguous after analysis of the intrinsic evidence should the 

court rely on extrinsic evidence.” Actelion Pharms. Ltd. v. 

Case: 22-1963 Document: 60 Page: 14 Filed: 02/14/2024
2 MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION

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 evidence 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 after examining the intrinsic evidence: that those claims are 

indefinite.

The claim term at issue is “transaction partner.” It appears in both independent claims at issue, claims 1 and 7. 

The majority holds these claims indefinite because it concludes that “the specification and claims fail to provide adequate 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 appeal, Mantissa argued that, in the context of the ’658 patent, 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 constructions proposed by either party”). In my view, for the following reasons, the correct construction of “transaction 

partner” is “party to a transaction.”1

1 At the conclusion of oral argument before us, counsel 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 transactions, comprising:

setting scope of use, defined by the entity 

via a network, for the financial account, including at least:

. . . 

(b) for a plurality of individual categories, whether each category is 

authorized or unauthorized for 

transactions using the financial account, each category representing a 

different type of transaction partner; . . . 

. . . 

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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4 MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION

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 transactions, . . . , the method comprising:

setting scope of use, as defined by the entity 

via a network, for the financial account, including at least:

. . . 

(b) setting a category status for 

each category of a plurality of categories as either authorized or unauthorized 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 account;

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 impermissible when . . . the proposed 

transaction falls within a category 

having an unauthorized category 

status;

. . . 

setting the response status to permissible when . . . the proposed 

transaction falls within a category 

having an authorized category status . . . . 

’658 patent, col. 16 ll. 12–56 (emphasis added). 

The preambles of both claims 1 and 7 refer to controlling “use of an entity’s financial account to facilitate transactions.” 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 representing a [ ] type of transaction partner.” I believe that 

the plain language of the claims (references to facilitating 

transactions followed by references to “transaction partner”) 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 unauthorized, 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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6 MANTISSA CORPORATION v. FIRST FINANCIAL CORPORATION

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 authorized or unauthorized.

The specification further supports this conclusion. It 

recites that an embodiment of the claimed invention comprises “receiving, at a service provider, a request to determine 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 certain 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 include 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 refer 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.

Case: 22-1963 Document: 60 Page: 19 Filed: 02/14/2024
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 provider, 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 independent 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 construction 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.

Case: 22-1963 Document: 60 Page: 20 Filed: 02/14/2024