United States Court of Appeals 

for the Federal Circuit ______________________ 

CONTENT EXTRACTION AND TRANSMISSION 

LLC,

Plaintiff-Appellant,

v.

WELLS FARGO BANK, NATIONAL ASSOCIATION,

Defendant-Appellee,

AND

THE PNC FINANCIAL SERVICES GROUP, INC. AND

PNC BANK, N.A.,

Defendants-Appellees.

- - - - - - - - - - - - - - - - - - - - - - - - - 

DIEBOLD, INCORPORATED,

Plaintiff-Counterdefendant-Cross Appellant,

v.

CONTENT EXTRACTION AND TRANSMISSION 

LLC,

Defendant-Counterplaintiff-Appellant,

AND

MITCHELL MEDINA, CATHERINE ELIAS, AND 

JEAN-MARC ZIMMERMAN,

Defendants,
2 CONTENT EXTRACTION v. WELLS FARGO BANK

AND

JOHN DOE COMPANIES 1-100, JOHN DOE 

COMPANIES 1-99, TD BANK GROUP, AND TD 

BANK, N.A. 

Third-Party Defendants. 

______________________ 

2013-1588, -1589,

2014-1112, -1687

______________________ 

Appeals from the United States District Court for the 

District of New Jersey in Nos. 12-CV-2501, 12-CV-6960, 

and 12-CV-7640, Judge Michael A. Shipp.

______________________ 

Decided: December 23, 2014

______________________ 

ANATOLY S. WEISER, Zimmerman & Weiser LLP, of 

Westfield, New Jersey, argued for plaintiff-appellant 

Content Extraction and Transmission LLC. With him on 

the brief was JEAN-MARC ZIMMERMAN. 

FREDERICK L. WHITMER, Kilpatrick, Townsend & 

Stockton LLP, of New York, New York, argued for defendant-appellee Wells Fargo Bank, National Association. 

Of counsel on the brief for defendant-appellees The PNC 

Financial Services Group, Inc., et al. was NOAM J.

KRITZER, Bakos & Kritzer of Florham Park, New Jersey. 

ROY H. WEPNER, Lerner, David, Littenberg, Krumholz 

& Mentlik, LLP, of Westfield, New Jersey, argued for

plaintiff-counterdefendant-cross appellant Diebold, Incorporated. With him on the brief were ARNOLD I. RADY and 

BRIAN D. HILL. 

______________________ 
CONTENT EXTRACTION v. WELLS FARGO BANK 3

Before DYK, TARANTO, and CHEN, Circuit Judges.

CHEN, Circuit Judge.

Content Extraction and Transmission LLC and its 

principals (collectively, CET) appeal from the grant of a 

motion to dismiss under Rule 12(b)(6) of the Federal 

Rules of Civil Procedure (FRCP), in which the United 

States District Court for the District of New Jersey held 

that the claims of CET’s asserted patents are invalid as 

patent-ineligible under 35 U.S.C. § 101. Cross-appellant 

Diebold, Inc. (Diebold) appeals from the district court’s 

dismissal of its tortious interference and Racketeer Influenced and Corrupt Organizations Act (RICO) claims 

against CET in a related action. We affirm the district 

court’s dismissal of both CET’s and Diebold’s claims. 

BACKGROUND

CET owns U.S. Patent Nos. 5,258,855 (’855 patent), 

5,369,508 (’508 patent), 5,625,465 (’465 patent), and 

5,768,416 (’416 patent) (collectively, the asserted patents). 

The ’508, ’465, and ’416 patents are continuations of the 

’855 patent, and share substantially the same specification. The four patents contain a total of 242 claims. The 

claims generally recite a method of 1) extracting data 

from hard copy documents using an automated digitizing 

unit such as a scanner, 2) recognizing specific information 

from the extracted data, and 3) storing that information 

in a memory. This method can be performed by software 

on an automated teller machine (ATM) that recognizes 

information written on a scanned check, such as the 

check’s amount, and populates certain data fields with 

that information in a computer’s memory. 

Claim 1 of the ’855 patent recites: 
4 CONTENT EXTRACTION v. WELLS FARGO BANK

A method of processing information from a diversity of types of hard copy documents, said method 

comprising the steps of:

(a) receiving output representing a diversity of types of hard copy documents from 

an automated digitizing unit and storing 

information from said diversity of types of 

hard copy documents into a memory, said 

information not fixed from one document 

to the next, said receiving step not preceded by scanning, via said automated digitizing unit, of a separate document 

containing format requirements;

(b) recognizing portions of said hard copy 

documents corresponding to a first data 

field; and

(c) storing information from said portions 

of said hard copy documents corresponding to said first data field into memory locations for said first data field.

’855 patent, 16:19–34.

In April and November 2012 respectively, CET filed 

infringement actions against appellees Wells Fargo Bank, 

N.A. (Wells Fargo) and The PNC Financial Services 

Group, Inc. and PNC Bank, N.A. (collectively, PNC), 

alleging that they were using ATMs with check deposit 

software that infringed its patents. In December 2012, 

Diebold, the manufacturer of Wells Fargo’s and PNC’s 

ATMs, filed an action against CET seeking 1) a declaratory judgment that its ATMs did not infringe CET’s asserted patents and that CET’s patents were invalid, and 2)

injunctive and monetary relief for tortious interference 

and violations of the RICO Act arising from CET’s act of 
CONTENT EXTRACTION v. WELLS FARGO BANK 5

filing allegedly baseless infringement suits against Wells 

Fargo, PNC, and other Diebold customers. CET counterclaimed against Diebold by asserting direct and indirect 

infringement of its patents. The district court eventually 

consolidated the three inter-related actions between CET 

and Wells Fargo, PNC, and Diebold for pretrial purposes.

Relevant here, PNC subsequently moved to dismiss 

CET’s complaint in its entirety pursuant to FRCP

12(b)(6), on the ground that each claim of the asserted 

patents was invalid as patent-ineligible under 35 U.S.C. 

§ 101. PNC focused its arguments on two claims: claim 1 

of the ’855 patent and claim 1 of the ’416 patent. PNC 

contended that these two claims were representative, and 

that none of the other claims included anything more 

than minor changes in format or phrasing. In its opposition to PNC’s motion, CET did not challenge PNC’s characterization of claim 1 of the ’855 patent or claim 1 of the 

’416 patent as representative, instead focusing its arguments on defending those two claims.

The district court agreed that all CET’s asserted 

claims were invalid as patent-ineligible under § 101, 

granted PNC’s motion, and dismissed CET’s complaints 

against both PNC and Wells Fargo. Content Extraction & 

Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, No.

12-6960, 2013 WL 3964909, at *5, *14 (D.N.J. July 31, 

2013) (CET). In light of this holding, the district court 

also dismissed Diebold’s request for a declaratory judgment of invalidity and noninfringement as moot. Lastly, 

the district court dismissed Diebold’s RICO and tortious 

interference claims against CET, concluding that CET’s 

act of filing lawsuits against Diebold’s customers—such as 

Wells Fargo and PNC—was protected under the NoerrPennington doctrine, as established in E. R.R. Presidents 

Conference v. Noerr Motor Freight, Inc., 365 U.S. 127 

(1961), and United Mine Workers of Am. v. Pennington, 

381 U.S. 657 (1965). CET appealed and Diebold cross-
6 CONTENT EXTRACTION v. WELLS FARGO BANK

appealed the district court’s order dismissing the parties’ 

complaints. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(1). 

STANDARD OF REVIEW

We review a district court’s dismissal for failure to 

state a claim under the law of the regional circuit. In re 

Bill of Lading Transmission & Processing Sys. Patent 

Litig., 681 F.3d 1323, 1331 (Fed. Cir. 2012). The Third 

Circuit reviews challenges to a dismissal for failure to 

state a claim under FRCP 12(b)(6) de novo. Sands v. 

McCormick, 502 F.3d 263, 267 (3d Cir. 2007). We review 

the district court’s determination of patent eligibility 

under § 101 de novo. Dealertrack, Inc. v. Huber, 674 F.3d 

1315, 1333 (Fed. Cir. 2012). 

DISCUSSION

An invention is patent-eligible if it claims a “new and 

useful process, machine, manufacture, or composition of 

matter.” 35 U.S.C. § 101. The Supreme Court, however,

has long interpreted § 101 and its statutory predecessors 

to contain an implicit exception: “laws of nature, natural 

phenomena, and abstract ideas” are not patentable. Alice 

Corp. Pty Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 

2347, 2354 (2014). We focus here on whether the claims

of the asserted patents fall within the excluded category 

of abstract ideas. 

The Supreme Court’s two-step framework, described 

in Mayo and Alice, guides our analysis. Id. at 2355 (citing 

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 

U.S. __, 132 S. Ct. 1289, 1296–97 (2012)). We first determine whether a claim is “directed to” a patent-ineligible 

abstract idea. If so, we then consider the elements of the 

claim—both individually and as an ordered combination—

to assess whether the additional elements transform the 
CONTENT EXTRACTION v. WELLS FARGO BANK 7

nature of the claim into a patent-eligible application of 

the abstract idea. Id. This is the search for an “inventive 

concept”—something sufficient to ensure that the claim 

amounts to “significantly more” than the abstract idea 

itself. Id.

The Supreme Court has not “delimit[ed] the precise 

contours of the ‘abstract ideas’ category.” Id. at 2357. We 

know, however, that although there is no categorical

business-method exception, Bilski v. Kappos, 561 U.S. 

593, 606, 608 (2010), claims directed to the mere formation and manipulation of economic relations may 

involve an abstract idea. See Alice, 134 S. Ct. at 2356–57. 

We have also applied the Supreme Court’s guidance to 

identify claims directed to the performance of certain 

financial transactions as involving abstract ideas. See

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

Cir. 2014) (creating a transaction performance guaranty 

for a commercial transaction on computer networks such 

as the Internet); Accenture Global Servs., GmbH v. 

Guidewire Software, Inc., 728 F.3d 1336, 1338 (Fed. Cir. 

2013) (generating rule-based tasks for processing an 

insurance claim); Bancorp Servs., L.L.C. v. Sun Life 

Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. 

Cir. 2012) (managing a stable value protected life insurance policy); Dealertrack, 674 F.3d at 1333 (processing 

loan information through a clearinghouse).

Applying Mayo/Alice step one, we agree with the district court that the claims of the asserted patents are 

drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) 

storing that recognized data in a memory. The concept of 

data collection, recognition, and storage is undisputedly 

well-known. Indeed, humans have always performed 

these functions. And banks have, for some time, reviewed 

checks, recognized relevant data such as the amount, 
8 CONTENT EXTRACTION v. WELLS FARGO BANK

account number, and identity of account holder, and 

stored that information in their records.

CET attempts to distinguish its claims from those 

found to be abstract in Alice and other cases by showing 

that its claims require not only a computer but also an 

additional machine—a scanner.1 Appellant’s Br. 31–32. 

CET argues that its claims are not drawn to an abstract

idea because human minds are unable to process and 

recognize the stream of bits output by a scanner. Id. at

29. However, the claims in Alice also required a computer

that processed streams of bits, but nonetheless were 

found to be abstract. See 134 S. Ct. at 2358. Similar to 

how the computer-implemented claims in Alice were 

directed to “the concept of intermediated settlement,” id. 

at 2356, and the claims in Dealertrack were directed to 

the concept of “processing information through a clearinghouse,” 674 F.3d at 1333, CET’s claims are drawn to the 

basic concept of data recognition and storage. 

For the second step of our analysis, we determine

whether the limitations present in the claims represent a 

patent-eligible application of the abstract idea. Alice, 134 

S. Ct. at 2357. For the role of a computer in a computerimplemented invention to be deemed meaningful in the 

context of this analysis, it must involve more than performance of “well-understood, routine, [and] conventional 

activities previously known to the industry.” Id. at 2359 

(quoting Mayo, 132 S. Ct. at 1294 (internal quotation 

1 We note that some of CET’s claims do not explicitly require the use of either a computer or scanner, and 

refer instead to a generic “application unit” and “automated digitizing unit.” See, e.g., ’855 patent, 18:52–19:3. 

We assume for purposes of PNC’s motion to dismiss, 

however, that these claims require the presence of both a 

computer and a scanner. 

 
CONTENT EXTRACTION v. WELLS FARGO BANK 9

marks and brackets omitted)). Further, “the mere recitation of a generic computer cannot transform a patentineligible abstract idea into a patent-eligible invention.” 

Id. at 2358. 

Applying Mayo/Alice step two, we agree with the district court that the asserted patents contain no limitations—either individually or as an ordered combination—

that transform the claims into a patent-eligible application. CET conceded at oral argument that the use of a 

scanner or other digitizing device to extract data from a 

document was well-known at the time of filing, as was the 

ability of computers to translate the shapes on a physical 

page into typeface characters. Oral Arg. at 3:35–3:55; 

16:12–16:17, available at http://oralarguments.

cafc.uscourts.gov/default.aspx?fl=2013-1588.mp3. CET’s 

claims merely recite the use of this existing scanning and 

processing technology to recognize and store data from 

specific data fields such as amounts, addresses, and dates. 

See id. There is no “inventive concept” in CET’s use of a 

generic scanner and computer to perform well-understood, 

routine, and conventional activities commonly used in

industry. See Alice, 134 S. Ct. at 2359. At most, CET’s 

claims attempt to limit the abstract idea of recognizing 

and storing information from hard copy documents using 

a scanner and a computer to a particular technological 

environment. Such a limitation has been held insufficient 

to save a claim in this context. See Alice, 134 S. Ct. at 

2358; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–

16 (Fed Cir. 2014); buySAFE, 765 F.3d at 1355. 

CET next argues that the failure of PNC or the district court to individually address every one of its claims 

is inconsistent with the statutory presumption of validity 

that requires proving the invalidity of each claim by clear 

and convincing evidence. See Dana Corp. v. Am. Axle & 

Mfg., Inc., 279 F.3d 1372, 1376 (Fed. Cir. 2002). The 

district court, however, correctly determined that address-
10 CONTENT EXTRACTION v. WELLS FARGO BANK

ing each claim of the asserted patents was unnecessary. 

After conducting its own analysis, the district court 

determined that PNC is correct that claim 1 of the ’855 

patent and claim 1 of the ’416 patent are representative, 

because all the claims are “substantially similar and 

linked to the same abstract idea.” CET, 2013 WL 

3964909, at *5 (citing Bilski, 561 U.S. at 612). Moreover, 

CET never asserted in its opposition to PNC’s motion that 

the district court should have differentiated any claim 

from those identified as representative by PNC. Nor did 

CET identify any other claims as purportedly containing 

an inventive concept. If CET disagreed with PNC’s or the 

district court’s assessment, CET could have identified 

claims in its opposition brief that it believed would not be 

fairly represented by claims 1 of the ’855 and ’416 patents 

for purposes of PNC’s § 101 challenge. Regardless, we 

have reviewed all the claims of CET’s asserted patents, 

and agree with the district court that, for the purposes of 

PNC’s § 101 challenge, 1) the claims of the asserted 

patents are substantially similar in that they recite little 

more than the same abstract idea, and 2) claim 1 of the 

’855 patent and claim 1 of the ’416 patent are representative. 

CET argues on appeal that certain dependent claims

recite additional steps, such as extracting and detecting 

specific data fields, repeating some steps, and storing data 

as images or text, rendering those claims patent-eligible. 

Appellant’s Br. 40–41. For instance, CET notes that 

dependent claim 44 of the ’416 patent additionally requires: “defining a set of symbols which designate fields of 

information required by an application program; and 

detecting the presence of a particular one of said defined 

set of symbols on a hard copy document and extracting a 

field of information required by an application program 

based on said detecting.” Id. This limitation merely 

describes generic optical character recognition technology, 

which CET conceded was a routine function of scanning 
CONTENT EXTRACTION v. WELLS FARGO BANK 11

technology at the time the claims were filed. Oral Arg. at 

3:35–3:55, 16:12–16:17, available at http://oralarguments.

cafc.uscourts.gov/default.aspx?fl=2013-1588.mp3. Indeed, 

all of the additional limitations in the claims cited in 

CET’s appeal brief recite well-known, routine, and conventional functions of scanners and computers. Thus, 

while these claims may have a narrower scope than the 

representative claims, no claim contains an “inventive 

concept” that transforms the corresponding claim into a 

patent-eligible application of the otherwise ineligible 

abstract idea.

Finally, CET contends that the district court erred by 

declaring its claims patent-ineligible under § 101 at the 

pleading stage without first construing the claims or 

allowing the parties to conduct fact discovery and submit 

opinions from experts supporting their claim construction 

positions. Although the determination of patent eligibility requires a full understanding of the basic character of 

the claimed subject matter, claim construction is not an 

inviolable prerequisite to a validity determination under 

§ 101. See Ultramercial, 772 F.3d at 714–15; Bancorp, 

687 F.3d at 1273–74. The district court construed the 

terms identified by CET “in the manner most favorable to 

[CET],” necessarily assuming that all of CET’s claims 

required a machine, even though several claims do not 

expressly recite any hardware structures. See supra note 

1; CET, 2013 WL 3964909, at *12. Nonetheless, the 

district court determined the claims of the asserted patents were patent-ineligible. Likewise, we conclude that 

even when construed in a manner most favorable to CET, 

none of CET’s claims amount to “significantly more” than 

the abstract idea of extracting and storing data from hard 

copy documents using generic scanning and processing 

technology. The district court’s resolution of PNC’s motion to dismiss at the pleading stage was therefore proper. 
12 CONTENT EXTRACTION v. WELLS FARGO BANK

DIEBOLD’S CROSS-APPEAL

We turn next to Diebold’s appeal from the district 

court’s dismissal of its tortious interference and RICO 

violation claims against CET. Diebold’s claims all arise 

from the following predicate act: the filing of allegedly 

frivolous infringement suits by CET against Wells Fargo, 

PNC, and other Diebold customers in an attempt to 

obtain nuisance settlements from them. The district 

court, however, concluded that the Noerr-Pennington

doctrine immunized CET from both Diebold’s tortious 

interference and RICO violation claims.2

Under Noerr-Pennington, a person’s act of petitioning 

the government is presumptively shielded from liability 

by the First Amendment against certain types of claims. 

See BE & K Const. Co. v. N.L.R.B., 536 U.S. 516, 525 

(2002) (quoting Cal. Motor Transp. Co. v. Trucking Unlimited, 404 U.S. 508, 511, (1972)); Sosa v. DIRECTV, 

Inc., 437 F.3d 923, 930, 931 (9th Cir. 2006) (applying 

Noerr-Pennington to bar a RICO violation claim); Pers. 

Dep’t, Inc. v. Prof’l Staff Leasing Corp., 297 F. App’x 773, 

779 (10th Cir. 2008) (holding that Noerr-Pennington can

provide immunity from liability arising from a tortious 

2 We note that other circuits have held that the act 

of filing a lawsuit, even one which is frivolous, does not by 

itself constitute an act of “extortion” under the Hobbs Act, 

18 U.S.C. § 1951(b)(2), and therefore cannot constitute a 

predicate act under RICO. See, e.g., Deck v. Engineered 

Laminates, 349 F.3d 1253, 1258 (10th Cir. 2003); Raney v. 

Allstate Ins. Co., 370 F.3d 1086, 1088 (11th Cir. 2004). 

Treating meritless litigation as a form of extortion punishable under RICO would substantially chill even valid 

court petitioning, as it could subject almost any unsuccessful lawsuit or set of lawsuits to a colorable claim of a 

RICO violation. Deck, 349 F.3d at 1258. 

 
CONTENT EXTRACTION v. WELLS FARGO BANK 13

interference claim). To overcome this presumptive immunity, a plaintiff must establish that the defendant’s 

instigation of litigation was merely a “sham.” Prof’l Real 

Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 

508 U.S. 49, 60 (1993) (PRE). This two-part test requires 

the plaintiff to show not only that the litigation was 

objectively baseless, but also that the defendant subjectively intended to harm the plaintiff through the abuse of 

a governmental process itself, as opposed to harms flowing from the outcome of that process. See id.

The district court found that Diebold established the 

first, but not the second prong of the PRE sham litigation 

test. In an oral ruling, the district court held that Diebold 

successfully alleged objective baselessness based on the 

district court’s own analysis of CET’s patent claims as 

ineligible under § 101, and “[Diebold’s] allegations that 

[CET]’s litigation conduct was solely designed to engender 

settlement” with Diebold’s customers. J.A. 687–89. 

However, the district court also determined that Diebold 

had not shown CET subjectively intended to harm 

Diebold through its instigation of litigation, as required 

under prong two of the PRE test. Id. Although we agree 

with the district court’s ultimate conclusion regarding 

CET’s immunity, we find instead that Diebold’s allegation 

fails the first prong of the PRE test, and thus the district 

court’s analysis under the second prong was unnecessary. 

Under the first prong, a “sham” lawsuit must be objectively baseless “in the sense that no reasonable litigant 

could realistically expect success on the merits.” Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 

1059, 1071 (Fed. Cir. 1998) (quoting PRE, 508 U.S. at 50). 

Given the focus on the act of filing the complaint as the 

actionable event, CET’s infringement suits, though unsuccessful, were not objectively baseless. This is because 

the state of the law of § 101 was deeply uncertain at the 

time CET filed its complaints against Wells Fargo and 
14 CONTENT EXTRACTION v. WELLS FARGO BANK

PNC in 2012. Compare Ultramercial, Inc. v. Hulu, LLC, 

657 F.3d 1323, 1327–28 (Fed. Cir. 2011) (subsequently 

vacated), with Dealertrack, 674 F.3d at 1333–35. See also

CLS Bank Int’l v. Alice Corp. Pty Ltd., 717 F.3d 1269, 

1273 (Fed. Cir. 2013) (en banc), cert. granted, 134 S. Ct. 

734 (2013), and aff’d, 571 U.S. __, 134 S. Ct. 2347 (2014). 

Under these circumstances, we cannot conclude that as a 

matter of law, no reasonable litigant in 2012 could have 

expected success on at least one of CET’s claims.

The Supreme Court has held that “even unsuccessful 

but reasonably based suits advance some First Amendment interests,” and therefore should receive protection

under the First Amendment. BE & K, 536 U.S. at 532. 

Although we conclude the claims of CET’s asserted patents are invalid under § 101, we decline to find CET’s 

infringement suits against Wells Fargo and PNC to be 

objectively baseless at the time they were filed. Therefore, since the act of filing its suits was shielded from 

liability by the Noerr-Pennington doctrine, the district 

court correctly dismissed Diebold’s tortious interference 

and RICO violation claims against CET. 

CONCLUSION

We affirm the district court’s grant of PNC’s motion to 

dismiss under FRCP 12(b)(6) on the ground that the 

claims of CET’s asserted patents are invalid as patentineligible under § 101. Because CET’s infringement suits 

against Wells Fargo and PNC were not objectively baseless, we also affirm the district court’s dismissal of 

Diebold’s tortious interference and RICO violation claims. 

Finally, because the claims of CET’s asserted patents are 

invalid under § 101, we need not reach the district court’s 

dismissal of Diebold’s request for a declaratory judgment

of noninfringement and invalidity. 

AFFIRMED
CONTENT EXTRACTION v. WELLS FARGO BANK 15

COSTS

No costs.