United States Court of Appeals 

for the Federal Circuit ______________________ 

INTELLECTUAL VENTURES I LLC, 

INTELLECTUAL VENTURES II LLC,

Plaintiffs-Appellants

v.

CAPITAL ONE BANK (USA), NATIONAL 

ASSOCIATION, CAPITAL ONE FINANCIAL 

CORPORATION, CAPITAL ONE, NATIONAL 

ASSOCIATION,

Defendants-Appellees

______________________ 

2014-1506

______________________ 

Appeal from the United States District Court for the 

Eastern District of Virginia in No. 1:13-cv-00740-AJTTCB, Judge Anthony J. Trenga.

______________________ 

Decided: July 6, 2015

______________________ 

NICKOLAS BOHL, Feinberg Day Alberti & Thompson 

LLP, Menlo Park, CA, argued for plaintiffs-appellants. 

Also represented by MARC BELLOLI, ELIZABETH DAY,

CLAYTON W. THOMPSON, II; THOMAS RICHARD BURNS, JR., 

Adduci, Mastriani & Schaumberg, LLP, Washington, DC; 
2 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL

ERIC F. CITRON, Goldstein & Russell, P.C., Bethesda, MD; 

THOMAS GOLDSTEIN, Washington, DC.

MATTHEW J. MOORE, Latham & Watkins LLP, Washington, DC, argued for defendants-appellees. Also represented by ABBOTT B. LIPSKY, JR., GABRIEL BELL,

MARGUERITE M. SULLIVAN, JAMES SCOTT BALLENGER;

JEFFREY G. HOMRIG, Menlo Park, CA; ROBERT A. ANGLE, 

DABNEY JEFFERSON CARR, IV, Troutman Sanders LLP, 

Richmond, VA.

JAMES QUARLES, III, Wilmer Cutler Pickering Hale 

and Dorr LLP, Washington, DC, for amicus curiae 

Askeladden, L.L.C. Also represented by RICHARD 

ANTHONY CRUDO, GREGORY H. LANTIER. 

______________________ 

Before DYK, REYNA, and CHEN, Circuit Judges.

DYK, Circuit Judge. 

Plaintiffs Intellectual Ventures I LLC and Intellectual 

Ventures II LLC (collectively, “Intellectual Ventures”)

asserted infringement of claims of three patents against 

defendants Capital One Bank (USA), NA, Capital One 

Financial Corporation, and Capital One, NA (collectively, 

“Capital One”). The three patents were U.S. Patent Nos. 

8,083,137, 7,603,382, and 7,260,587 (“the ’137 patent,” 

“the ’382 patent,” and “the ’587 patent,” respectively). 

Following the district court’s claim construction of the 

term “machine readable instruction form” in the ’587 

patent, the parties stipulated to non-infringement of the 

asserted claims of that patent. The district court also 

determined that the asserted claims of the ’137 patent 

claimed ineligible subject matter and the asserted claims 

of the ’382 patent claimed ineligible subject matter and 

were also indefinite under 35 U.S.C. § 112(b). Intellectual 
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 3

Ventures appeals the district court’s invalidity determinations with respect to the ’137 and ’382 patents and its 

claim construction with respect to the ’587 patent.

We affirm, concluding that the asserted claims of the 

’137 and ’382 patents claim unpatentable abstract ideas 

and that the district court’s claim construction with 

respect to the ’587 patent was correct.1

BACKGROUND

Intellectual Ventures owns the three patents at issue, 

the first two of which generally relate to activities on the 

Internet, and the third of which generally relates to 

photography organization using a computer. The ’137 

patent, entitled “Administration of Financial Accounts,” 

claims methods of budgeting, particularly methods of 

tracking and storing information relating to a user’s 

purchases and expenses and presenting that information 

to the user vis-à-vis the user’s pre-established, selfimposed spending limits. The ’382 patent, entitled “Advanced Internet Interface Providing User Display Access 

of Customized Webpages,” claims methods and systems 

for providing customized web page content to the user as 

a function of user-specific information and the user’s 

navigation history. The ’587 patent, entitled “Method for 

Organizing Digital Images,” claims methods for scanning 

hard-copy images onto a computer in an organized manner. 

On June 19, 2013, Intellectual Ventures filed suit in 

the United States District Court for the Eastern District 

1 Capital One filed a counterclaim alleging antitrust violations by Intellectual Ventures. The district 

court dismissed for failure to state a claim, and Capital 

One cross-appealed. On April 7, 2015, we granted Capital 

One’s motion to dismiss the cross-appeal. 

 
4 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL

of Virginia against Capital One, alleging infringement of 

claims 5–11 of the ’137 patent, claims 1–5, 16, 17, and 19–

22 of the ’382 patent, and claims 1 and 18 of the ’587 

patent. On December 18, 2013, the district court issued 

its claim construction order, construing terms for all three 

patents. The representative asserted claim of the ’587 

patent (claim 1) claims a method of organizing digital 

images in which hard-copy images are scanned into a 

computer and sorted according to an associated machine 

readable instruction form. The district court construed 

“digitally scanning a plurality of hard copy prints [that 

have been grouped into one or more categories, each 

category separated by] an associated machine readable 

instruction form” as requiring the “associated machine 

readable instruction form” be in a hard-copy, rather than 

electronic, form. Because of that construction, Intellectual Ventures stipulated to non-infringement of all asserted 

claims of the ’587 patent. 

On April 16, 2014, the district court granted summary 

judgment with respect to the asserted claims of the ’137 

and ’382 patents. The district court concluded that the 

asserted claims of the ’137 and ’382 patents claimed 

ineligible subject matter in violation of 35 U.S.C. § 101. 

The district court also determined that, based on its 

construction of “interactive interface,” the asserted claims 

of the ’382 patent were indefinite under 35 U.S.C. 

§ 112(b). The district court thus held invalid all of the 

asserted claims of both patents. 

Intellectual Ventures appealed. We have jurisdiction 

pursuant to 28 U.S.C. § 1295(a)(1). We review summary 

judgment determinations de novo. Laber v. Harvey, 438 

F.3d 404, 415 (4th Cir. 2006). Patent eligibility under 

§ 101 is an issue of law we review de novo. In re BRCA1- 

& BRCA2-Based Hereditary Cancer Test Patent Litig., 774 

F.3d 755, 758 (Fed. Cir. 2014). We review the district 

court’s claim construction based on intrinsic evidence and 
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 5

the district court’s ultimate claim construction de novo. 

See Warsaw Orthopedic, Inc. v. NuVasive, 778 F.3d 1365, 

1369 (Fed. Cir. 2015) (citing Teva Pharm. USA, Inc. v. 

Sandoz, Inc., 135 S. Ct. 831, 841 (2015)).

DISCUSSION

I 

We first address patent eligibility with respect to the 

’137 and ’382 patents. An invention is patent-eligible if it 

fits into one of four statutory categories: processes, machines, manufactures, and compositions. 35 U.S.C. § 101. 

But there is an implicit exception. “Laws of nature, 

natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 

(2014) (citation omitted). To determine whether an 

invention claims ineligible subject matter, we engage in a 

two-step process. First, “we determine whether the 

claims at issue are directed to one of [the] patentineligible concepts”—laws of nature, natural phenomena, 

or abstract ideas. Id. at 2355. “The ‘abstract ideas’ 

category embodies ‘the longstanding rule’ that ‘[a]n idea of 

itself is not patentable.’” Id. (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). An abstract idea does not 

become nonabstract by limiting the invention to a particular field of use or technological environment, such as the 

Internet. See Alice, 134 S. Ct. at 2358 (limiting an abstract idea to a particular technological environment, 

such as a computer, does not confer patent eligibility); 

Bilski v. Kappos, 561 U.S. 593, 612 (2010) (“[L]imiting an 

abstract idea to one field of use . . . d[oes] not make the 

concept patentable.”).

If we determine that the patent is drawn to an abstract idea or otherwise ineligible subject matter, at a 

second step we ask whether the remaining elements, 

either in isolation or combination with the non-patentineligible elements, are sufficient to “‘transform the 
6 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL

nature of the claim’ into a patent-eligible application.” 

Alice, 134 S. Ct. at 2358 (quoting Mayo Collaborative 

Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297

(2012)). Put another way, there must be an “inventive 

concept” to take the claim into the realm of patenteligibility. Id. at 2355. A simple instruction to apply an 

abstract idea on a computer is not enough. Alice, 134 S. 

Ct. at 2358 (“[M]ere recitation of a generic computer 

cannot transform a patent-ineligible idea into a patenteligible invention. Stating an abstract idea ‘while adding 

the words “apply it’’ is not enough for patent eligibility.’” 

(quoting Mayo, 132 S. Ct. at 1294)).

Nor, in addressing the second step of Alice, does

claiming the improved speed or efficiency inherent with 

applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun

Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 

2012) (“[T]he fact that the required calculations could be 

performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject 

matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 

1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 

(2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an 

otherwise abstract concept does not meaningfully limit

claim scope for purposes of patent eligibility.” (citations 

omitted)). 

A 

The ’137 patent generally relates to budgeting, or, as 

the district court described it, “utiliz[ing] user-selected 

pre-set limits on spending that are stored in a database 

that, when reached, communicates a notification to the 

user via a device.” J.A. 780. Claim 5 is representative 

and provides:

A method comprising:
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 7

storing, in a database, a profile keyed to a user 

identity and containing one or more user-selected 

categories to track transactions associated with 

said user identity, wherein individual userselected categories include a user pre-set limit; 

and

causing communication, over a communication 

medium and to a receiving device, of transaction 

summary data in the database for at least one of 

the one or more user-selected categories, said 

transaction summary data containing said at least 

one user-selected category’s user pre-set limit.

’137 patent col. 10 ll. 4–15. 

Here, the patent claims are directed to an abstract 

idea: tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting). 

Although Intellectual Ventures argues the claims are not 

“[d]irected or [d]rawn to an [a]bstract [i]dea,” Appellant’s 

Br. 30, Intellectual Ventures admits budgeting “undoubtedly . . . is an abstract idea.” Appellant’s Br. 31. And 

while the claims recite budgeting using a “communication 

medium” (broadly including the Internet and telephone 

networks), that limitation does not render the claims any

less abstract.

The abstract idea here is not meaningfully different 

from the ideas found to be abstract in other cases before 

the Supreme Court and our court involving methods of 

organizing human activity. In Bilski, the Supreme Court 

determined that a claim directed to a method of hedging 

risk was directed to an abstract idea. 561 U.S. at 599, 

613. In Alice, the Supreme Court held that a computerbased implementation of a method of mitigating settlement risk using a third-party intermediary was drawn to 

an abstract idea. 134 S. Ct. at 2351–52. Our cases have 

rejected similar concepts as being directed towards ineli-
8 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL

gible subject-matter.2 In light of these precedents, we 

conclude that the asserted claims are equally drawn to an 

abstract idea.

2 See Cybersource Corp. v. Retail Decisions, Inc., 

654 F.3d 1366, 1370, 1373 (Fed. Cir. 2011) (holding that 

“a method for verifying the validity of a credit card transaction over the Internet” was directed to an abstract idea 

or unpatentable mental process); Fort Props., Inc. v. Am. 

Master Lease LLC, 671 F.3d 1317, 1318, 1320 (Fed. Cir. 

2012) (concluding that a patent claiming an “investment 

tool designed to enable property owners to buy and sell 

properties without incurring tax liability” was drawn to 

an abstract idea); Dealertrack, Inc. v. Huber, 674 F.3d 

1315, 1331, 1334 (Fed. Cir. 2012) (determining that a 

computer-implemented method of managing a credit 

application was drawn to a patent-ineligible abstract 

idea); Bancorp, 687 F.3d at 1269, 1277, (holding that a 

patent claiming “systems and methods for administering 

and tracking the value of life insurance policies in separate accounts” was directed to an abstract idea); Accenture 

Global Servs., GmbH v. Guidewire Software, Inc., 728 

F.3d 1336, 1339, 1342 (Fed. Cir. 2013) (determining that 

claims to automated methods for generating task lists to 

be performed by an insurance organization were directed 

to a patent-ineligible abstract idea); Ultramercial, Inc. v. 

Hulu LLC, 772 F.3d 709, 712, 714 (Fed. Cir. 2014) (holding that a computer- and Internet-based implementation 

of displaying an advertisement in exchange for access to 

copyrighted media was directed to an abstract idea);

buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351, 1355

(Fed. Cir. 2014) (determining that a claim directed toward 

guaranteeing a party’s performance in an online transaction was directed to an abstract idea); OIP Techs., Inc. v. 

Amazon.com, Inc., No. 2012-1696, 2015 WL 3622181, at 

 
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 9

Moving to step two of the Alice framework, it is clear 

that the claims contain no inventive concept. The recited 

elements, e.g., a database, a user profile (“a profile keyed 

to a user identity,” ’137 patent col. 10 l. 5), and a communication medium, are all generic computer elements. 

Instructing one to “apply” an abstract idea and reciting no 

more than generic computer elements performing generic 

computer tasks does not make an abstract idea patenteligible. See Alice, 134 S. Ct. at 2359–60 (holding patentineligible claims that “amount to nothing significantly 

more than an instruction to apply the abstract 

idea . . . using some unspecified, generic computer” and in 

which “each step does no more than require a generic 

computer to perform generic computer functions” (internal quotation marks, citation omitted)); Ultramercial, 772 

F.3d at 716 (“Adding routine[,] additional steps . . . does 

not transform an otherwise abstract idea into patenteligible subject matter.”); Bancorp, 687 F.3d at 1274, 1278 

(appending generic computer components does not “salvage an otherwise patent-ineligible process”); CyberSource, 654 F.3d at 1375 (“[T]he incidental use of a 

computer to perform the [claimed process] does not impose a sufficiently meaningful limitation on the claim’s 

*3–4 (Fed. Cir. June 11, 2015) (holding that methods of 

offer-based price optimization in an e-commerce environment were drawn to an abstract idea); see also SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 

950, 951, 954 (Fed. Cir. 2014) (determining that a computer-implemented method for “guiding the selection of a

therapeutic treatment regimen for a patient with a known 

disease or medical condition” was directed to an abstract 

idea); Planet Bingo LLC v. VKGS LLC, 576 F. App’x 1005, 

1006 (Fed. Cir. 2014) (determining that claims to a computer-aided management system for bingo games was 

directed to an abstract idea).

 
10 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL

scope.”). Indeed, the budgeting calculations at issue here

are unpatentable because they “could still be made using 

a pencil and paper” with a simple notification device, 

Cybersource, 654 F.3d at 1371 (quoting Parker v. Flook, 

437 U.S. 584, 586 (1978) (punctuation omitted)), even in 

real time as expenditures were being made. 

B 

The ’382 patent generally relates to customizing web 

page content as a function of navigation history and 

information known about the user.3 Claim 1 is representative and provides:

A system for providing web pages accessed from a 

web site in a manner which presents the web pages tailored to an individual user, comprising:

an interactive interface configured to provide dynamic web site navigation data to the user, the interactive interface comprising:

a display depicting portions of the web site visited 

by the user as a function of the web site navigation data; and

a display depicting portions of the web site visited 

by the user as a function of the user’s personal 

characteristics.

’382 patent col. 7 ll. 13–22. The district court construed 

“interactive interface” to mean “a selectively tailored 

medium by which a web site user communicates with a 

web site information provider.” J.A. 756. The district 

3 Because the asserted claims of the ’382 patent are 

invalid for claiming ineligible subject matter, we do not 

reach the question of whether “interactive interface” is 

indefinite.

 
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 11

court construed “[d]isplay depicting portions of the web 

site visited by the user as a function of the user’s personal 

characteristics” to mean “[a] display depicting portions of 

the web site visited by the user preselected by a web page 

manager by matching personal characteristics in a user 

profile automatically downloaded from the interactive 

interface based on information identifiers for portions of 

the web site.” J.A. 757. Finally, the parties stipulated 

that “[d]ynamic web site navigation data” meant “[d]ata 

representing portions of the web site visited by the user.” 

J.A. 757.

At step one of the Alice framework, it is often useful to 

determine the breadth of the claims in order to determine 

whether the claims extend to cover a “fundamental . . . practice long prevalent in our system . . . .” Alice, 

134 S. Ct. at 2356. As noted, the claim relates to customizing information based on (1) information known about 

the user and (2) navigation data.

With respect to the first aspect, at oral argument Intellectual Ventures admitted that tailoring content based 

on the viewer’s location or address would satisfy the “as a 

function of the user’s personal characteristics” limitation. 

This sort of information tailoring is “a fundamental . . . practice long prevalent in our system . . . .” Id. 

There is no dispute that newspaper inserts had often been 

tailored based on information known about the customer—for example, a newspaper might advertise based on 

the customer’s location. Providing this minimal tailoring—e.g., providing different newspaper inserts based 

upon the location of the individual—is an abstract idea.

With respect to the second aspect, the specification 

provides an example of tailoring information based on 

navigation data. The specification describes tailoring a 

portion of the website’s logo throughout the day. If a user 

accesses the website in the early morning, the website 
12 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL

will use that navigation data (i.e., information relating to 

when the user navigated to the website) to “customize” 

the website by modifying the logo to look like a rising sun. 

’382 patent col. 5 ll. 9–10. Conversely, if the user accesses 

the website in the late evening, the website will “customize” the logo to look like a moon with stars. ’382 patent 

col. 5 ll. 11–12. At oral argument, Intellectual Ventures 

did not challenge the conclusion that tailoring content 

based on the time of day at which the user viewed the 

content is within the scope of the claim limitation. Tailoring information based on the time of day of viewing is also 

an abstract, overly broad concept long-practiced in our 

society. There can be no doubt that television commercials for decades tailored advertisements based on the 

time of day during which the advertisement was viewed. 

For example, a television channel might choose to present 

a commercial for children’s toys during early morning 

cartoon programs but beer during an evening sporting 

event. An advertisement taking into account the time of 

day and tailoring the information presented to the user 

based on that information is another “fundamental . . . practice long prevalent in our system . . . .” Alice, 

134 S. Ct. at 2356.

Turning to the second step of Alice, here there is no 

inventive concept that would support patent eligibility. 

As discussed above, our precedent is clear that merely 

adding computer functionality to increase the speed or 

efficiency of the process does not confer patent eligibility 

on an otherwise abstract idea. Intellectual Ventures 

argues that claims limited to dynamic presentation of 

data—that is, that the claimed invention in “real time” 

customizes the web page based on the information it 

knows about the particular viewer—supplies an inventive 

concept. The claims are not so limited. Although the 

claim includes a “dynamic” limitation, the specification 

makes clear that determining whether the user falls into 
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 13

one category or another (e.g., whether the viewer is a 

“Generation X’er” or an “older individual”) and then 

presenting the user a pre-created advertisement based on 

the category determination, satisfies the dynamic requirement. At oral argument, counsel for Intellectual 

Ventures admitted that the web site might have a series 

of pre-designed advertisements, which, based on the 

user’s information, the web site would then choose between and present to the user. Moreover, the fact that 

the web site returns the pre-designed ad more quickly 

than a newspaper could send the user a location-specific 

advertisement insert does not confer patent eligibility. 

See Bancorp, 687 F.3d at 1278; CLS Bank, 717 F.3d at 

1286.

Intellectual Ventures argues that the “interactive 

interface” is a specific application of the abstract idea that 

provides an inventive concept. But nowhere does Intellectual Ventures assert that it invented an interactive 

interface that manages web site content. Rather, the 

interactive interface limitation is a generic computer 

element. At Intellectual Ventures’ urging, “interactive 

interface” was broadly construed by the district court to 

mean “a selectively tailored medium by which a web site 

user communicates with a web site information provider.” 

J.A. 756. Intellectual Ventures describes the “interactive 

interface” as “tasked with tailoring information and 

providing it to the user.” Appellant’s Br. 43. Elsewhere, 

Intellectual Ventures equates the “interactive interface” 

with the “web page manager,” which “tailors the web page 

to the specific individual based on the profile.” At oral 

argument, Intellectual Ventures described the interactive 

interface as “software” and agreed that it “is basically the 

brains of the outfit.” Oral Argument Tr. 16:24–16:40. 

Nowhere in these vague and generic descriptions of the 

“interactive interface” does Intellectual Ventures suggest 

an “inventive concept.” Alice, 134 S. Ct. at 2355. Rather, 
14 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL

the “interactive interface” simply describes a generic web 

server with attendant software, tasked with providing 

web pages to and communicating with the user’s computer.

Steps that do nothing more than spell out what it 

means to “apply it on a computer” cannot confer patenteligibility. Alice, 134 S. Ct. at 2359 (warning against a 

§ 101 analysis that turns on the draftsman’s art (citing 

Flook, 437 U.S. at 593)). Requiring the use of a “software” 

“brain” “tasked with tailoring information and providing 

it to the user” provides no additional limitation beyond 

applying an abstract idea, restricted to the Internet, on a 

generic computer. The district court properly determined 

that the asserted claims of the ’382 patent: 

consist[] of nothing more tha[n] the entry of data 

into a computer database, the breakdown and organization of that entered data according to some 

criteria, . . . and the transmission of information 

derived from that entered data to a computer user, all through the use of conventional computer 

components, such as a database and processors, 

operating in a conventional manner.

J.A. 784. These elements do not confer patent eligibility. 

See Alice, 134 S. Ct. at 2359–60; Ultramercial, 772 F.3d at 

716; Dealertrack, 674 F.3d at 1333; Fort Props., 671 F.3d 

at 1317, 1323; CyberSource, 654 F.3d at 1375. 

Finally, Intellectual Ventures argues that the claims 

are patentable in light of our recent decision in DDR 

Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. 

Cir. 2014). The patent at issue in that case dealt with a 

problem unique to the Internet: Internet users visiting 

one web site might be interested in viewing products sold 

on a different web site, but the owners of the first web site 

did not want to constantly redirect users away from their 

web site to a different web site. Id. at 1257–58. The 
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 15

claimed solution used a series of steps that created a 

hybrid web page incorporating “look and feel” elements

from the host web site with commerce objects from the 

third-party web site. Id. The patent at issue in DDR

provided an Internet-based solution to solve a problem 

unique to the Internet that (1) did not foreclose other 

ways of solving the problem, and (2) recited a specific 

series of steps that resulted in a departure from the 

routine and conventional sequence of events after the 

click of a hyperlink advertisement. Id. at 1256–57, 1259. 

The patent claims here do not address problems unique to 

the Internet, so DDR has no applicability. 

The asserted claims of the ’382 patent claim an abstract idea and do not otherwise claim an inventive concept.

II

We finally address claim construction with respect to 

the ’587 patent. Claim 1 is representative and provides:

A method of automatically organizing digital images obtained from a plurality of hard copy prints, 

each of said hard copy prints having an image 

thereon, comprising the steps of:

digitally scanning a plurality of hard copy prints 

that have been grouped into one or more categories, each category separated by an associated machine readable instruction form as to obtain a 

digital file of each of said images and digitally associating said one or more categories with said 

digital images in accordance with said associated 

machine readable instruction form executed by a 

computer;

storing said digital images files and associated 

categories on a digital storage medium; and
16 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL

producing a product incorporating images from 

one or more of said categories as required by a 

customer.

’587 patent col. 20 ll. 13–29 (emphasis added). 

At claim construction, the parties disputed whether 

the “associated machine readable instruction form” must 

be in a hard-copy format and scanned into the computer 

along with the hard-copy pictures, or whether a wholly 

electronic embodiment of the instruction form could

satisfy the claim limitation. Intellectual Ventures argued 

that the machine readable instruction forms need not be 

in a hard-copy format. Capital One argued that the forms 

must be in a hard-copy format. In the claim construction 

order, the district court concluded “that the ‘machine 

readable instruction form’ refers to a hard copy form that 

is presented and scanned along with the hard copy images 

and which physically separates the categories of images, 

as defined by the user.” J.A. 760.

We conclude that the district court was correct to require that the machine readable instructions be in hardcopy for three reasons.

First, the language of the claim itself suggests that 

the machine readable instructions are used to physically 

separate the hard-copy prints. The claim provides for 

“separat[ing]” the hard-copy prints before scanning “by an 

associated machine readable instruction form.” ’587 

patent col. 20 ll. 19–22. This necessarily suggests that 

the machine readable instruction form is also in hard

copy, as physical separation of the hard-copy prints before 

scanning can only be achieved by something that is itself 

a physical embodiment. 

Second, the specification consistently describes the 

machine readable instruction form as a hard-copy document and thus in no way contradicts the plain meaning of 
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 17

the claim language. See, e.g., ’587 patent figs. 6A, 7

(showing hard-copy machine readable instruction form

74); ’587 patent col. 6 ll. 50–55 (describing that instruction form 74 is physically placed in front of the hard-copy 

prints before the prints are scanned); ’587 patent col. 7 ll.

26–36 (explaining that instructions are written on form 

74 and then form 74 is scanned prior to the hard-copy 

prints associated with that form); ’587 patent col. 8 ll. 18–

41 (depicting instruction form 74 as being physically 

placed in an envelope with the images associated with the 

information written on the form).

Intellectual Ventures argues that the specification 

discloses non-hard-copy embodiments, relying on col. 5 ll. 

35–40 and col. 5 l. 61–col. 6 l. 4. Although it is true that 

the first passage describes an embodiment in which the 

instruction form is provided to the user via HTML, that 

passage also describes providing the user with hard-copy 

labels onto which the HTML form can be printed. Thus, 

even when the specification discusses delivering the 

instruction form to the customer in a non-hard-copy 

format, the specification nonetheless describes that instruction form as ultimately being printed out on a hardcopy document. See ’587 patent col. 5 ll. 39–40. The 

second passage states: “While in the particular embodiment illustrated, the instructions would typically be 

provided on a hard-copy document, the instructions may 

be provided in an audio or visual format.” But the instructions described there refer to instructions that are 

provided to the user instructing him or her on how to use 

the product embodying the claimed method—not the 

machine readable instruction forms referenced in the 

claim. The fact that these user instructions were disclosed in non-hard-copy embodiments, but the machine 

readable instruction form was not, only emphasizes that 

the machine readable instruction form was limited to a 

hard-copy format. There is no disclosure in the specifica-
18 INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL

tion of the machine readable instruction form being 

anything other than a hard-copy document.

Third, the prosecution history suggests that the 

machine readable instructions must be in hard copy. In 

response to an office action, the applicant stated, “Claim 1 

clearly provides steps for obtaining of digital images and 

instructions by digitally scanning, clearly a physical step, 

from hard copy prints.” J.A. 468. The applicant’s statement treats the “images and instructions” collectively and 

as involving scanning, “clearly a physical step.” J.A. 468. 

Additionally, in the same response, the applicant remarked: “this claim is directed to a method of automatically organiz[ing] digital images obtained from a plurality

[of] hard copy prints by scanning a plurality of hard copy 

prints that have been grouped into one or more categories, 

each category separated by a machine readable instruction form.” Id. (emphasis added). The applicant describes 

using the machine readable instruction form to “separate[]” the “hard copy” prints prior to scanning. As with 

the claim language itself, this suggests that the machine 

readable instruction form is also in hard copy. 

In light of the claim language, the specification, and 

the prosecution history, we conclude that a person of 

ordinary skill in the art would have understood the claim 

as requiring the machine readable instruction form to be

in a hard-copy format. The district court’s claim construction on this issue was correct.

CONCLUSION

We affirm the district court’s judgment of invalidity 

with respect to the claims of the ’137 and ’382 patents and 

the judgment of non-infringement of the asserted claims

of the ’587 patent based on the district court’s claim 

construction. 

AFFIRMED
INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL 19

COSTS

Costs to appellees.