NOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2007-1247 EMERGIS TECHNO LOGIES, INC. (formerly known as BCE Emer gis Technologies, Inc.), Plaintiff-Appellant,

v. PNM RESOURCES, TNMP, and FIRST CHOICE POWER, Defendants-Appellees.

- - - - - - - - - - - - 2007-1252 EMERGIS TECHNO LOGIES, INC. (formerly known as BCE Emer gis Technologies, Inc.), Plaintiff-Appellant,

v. OTTER TAIL CORPORATION, Defendant-Appellee. David K. Callahan , Kirkland & Ellis, LLP, of Chicago, Illinois, argued for plaintiffappellant. With him on the brief were Joseph J. Jacobi and Alison Aubry Richards

. Douglas D. Salyers , Troutman Sanders, LLP, of Atl anta, Georgia, for defendantsappellees PNM Resources, et al. With him on the brief was James Hunt Yancey, Jr . Of counsel was Alice Tomlinson Lorenz , Miller Stratvert, P.A., of Albuquerque, New Mexico. J. Thomas Vitt , Dorsey & Whitney, LLP, of Minneapolis, Minnesota, argued for defendant-appellee Otter Tail Corporat ion. With him on the brief was Bart B. Torvik. Appealed from: United States District Court District of New Mexico Magistrate Judge Leslie C. Smith Appealed from: United Stated Distric t Court District of Minnesota Chief Magistrate Judge Raymond L. EricksonNOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2007-1247 EMERGIS TECHNOL OGIES, INC. (formerly known as BCE Emer gis Technologies, Inc.), Plaintiff-Appellant,

v. PNM RESOURCES, TNMP, and FIRST CHOICE POWER, Defendants-Appellees.

------------------------- 2007-1252 EMERGIS TECHNO LOGIES, INC. (formerly known as BCE Emer gis Technologies, Inc.), Plaintiff-Appellant,

v. OTTER TAIL CORPORATION, Defendant-Appellee.

Appeal from the United States District Court for the District of New Mexico in case no. 06-CV-0100, Magistrate Judge Leslie C. Smith. Appeal from the United States District Court for the District of Minnesota in case no. 06- CV-348, Chief Magistrate Judge Raymond L. Erickson.

__________ ________________ DECIDED: January 31, 2008

__________________________Before GAJARSA and DYK, Circuit Judges , and MORAN, District Judge

. ∗ MORAN, District Judge

. Pending before us are two separate app eals arising from Plaintiff-Appellant Emergis Technologies, Inc.’s patent prosec utions. In Appeal No. 2007-1247, Emergis appeals the order of the District Court for t he District of New Mexico granting summary judgment of non-infrin gement of United Stat es Patent No. 6,044,362 (“the ‘362 patent”) in favor of Defendants-Appellees PNM Re sources, TNMP, and First Choice Power (collectively “the PNM appellees”). In Appeal No. 2007-1252, Emergis appeals the order of the District Court for the Distric t of Minnesota granting summary judgment of non-infringement of the ‘ 362 patent in favor of Defendant-Appellee Otter Tail Corporation. Although each app eal is factually unique, they present similar legal issues, and we have consolidated them for disposition in this decision. We affirm the decision of the district courts that none of the accused products infringes on the ‘362 patent. But, in doing so , in Appeal No. 2007-1247, we correct the district court’s construction of the term “customer invoice account number.” BACKGROUND The ‘362 patent relates to a system fo r automated electronic billing and payment. Customers enroll in the system and it then presents bills to the customers electronically. After receiving the electronic invoices, the customers make payments online through the system. The system accepts the payments and r outes them to the invoicer’s financial institution.

∗ Honorable James B. Moran, Senior Di strict Judge, United States District Court for the Northern District of Illinois, sitting by designation.
2007-1247, 2007-1252 2According to the ‘362 patent, existing online payment systems contained a great deal of complexity and were too expensive. The ‘362 patent attempted to solve these problems by creating a process that is “a simple, straight forward system and method of automated electronic invoicing a nd payment that directly involves the invoicer and the customer, while, at the same time, does not require a third party service provider.” ‘362 patent, col. 1, ll. 53-56. The ‘362 patent contains ninety-nine claims, of whic h six are independent. Claim 1 is representative and provides in relevant part: An automated electronic invoicing and payment system for providing remote customer review of aut omated billing from an invoicer, wherein the customer payment instructions are sent from the customer directly to the invoicer , said system comprising: (a) invoice presentation electronics ad apted to present customer billing data for customer review and to request payment instructions relating to automated billing to said customer; and (b) a remote electronic customer aut horization interface adapted to: (i) receive the customer billing data for customer review and the request for payment instructions from said in voice presentation electronics, (ii) provide the customer billing data for customer review and the request for payment instructions to the custom er; (iii) receive customer payment instructions from the customer in response to the request for payment instructions; and (iv) transmit the customer payment instructions from the customer directly to said invoicer, sa id payment instructions including at least a customer invoice account number and an associ ated customer payment account. ‘362 patent, col. 8, ll. 44-65 (emphasis added). The PNM appellees are electric and gas utilities and transmission companies that offer their customers two online payment systems: Vended Solu tions and Internal Solution. Vended Solutions allows customers to pay their bills via a website maintained by BillMatrix, a third party comp any. Internal Solution allows customers to pay their bills on the PNM appellees’ websites via a one-time bank draft.

2007-1247, 2007-1252 3Emergis brought suit against the PNM ap pellees and alleged that both Vended Solutions and Internal Solution infringed on t he ‘362 patent. The district court construed eleven claim terms, of which two are rele vant on appeal. The court construed the requirement that customer paym ent instructions be sent “dir ectly” from the customer to mean “the customer sends payment instructi ons to the invoicer without reliance on upon or through a third party service provider.” The court next construed the term “customer invoice account number” to mean “a number or other identifier a ssociated with the customer’s account for it s purchase of goods and services from the invoicer.” The PNM appellees moved for summary j udgment and the district court granted the motion. The court found that Vended Solutions was operated by a third party service provider that was not controlled in any way by the PNM appellees, and thus customer payment instructi ons were not made directly to the PNM appellees. The district court also found that the Inte rnal Solution system—although operated by the PNM appellees—did not infringe because cust omers entered their account number to log on to the system and not in response to a request for paym ent instructions from the system. Otter Tail owns an electric utility that allo ws customers to pay their bills online via a service called “ePay.” Emergis brought suit against Otter Tail and alleged that ePay infringed on the ‘362 patent. As relevant here, the district court construed the requirement that customer paym ent instructions be sent “dir ectly” from the customer to mean “the payment instructions mu st be sent from the customer directly to the invoicer without the intervention of any third-party service provider.” Because ePay was

2007-1247, 2007-1252 4operated by Princeton eCom, a third party se rvice provider, the district court granted summary judgment on behalf of Otter Tail. Emergis filed timely appeals of both j udgments. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION We review a district court’s claim construction and grant of summary judgment without deference. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc) (claim construction); Johns Hopkins Univ. v. CellPro, Inc. , 152 F.3d 1342, 1353 (Fed. Cir. 1998) (grant of summary judgment). We dr aw all reasonable inferences in favor of the non-movant. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 255 (1986). Summary judgment is only appropriate if no genuine issues of material fact exist and the movant is entitled to judgment as a matter of law. Celotex Corp. v. Catrett , 477 U.S. 317, 322 (1986). I. “Directly” We first review the district courts’ cons tructions of the term “directly.” Emergis argues that both district courts were incorre ct when they construed the term “directly” to require that a customer’s payment instructions be sent from the customer to the invoicer without the intervention of any third party serv ice provider. Emergis contends that the inventor’s preferred embodiment of the invention permitt ed an invoicer to use an outside company for such tasks as webserver hosting, and that the term “directly” simply means a system that does not utilize a customer-chos en consolidator. We cannot agree. The specification does not make any such dist inction and instead describes the third party

2007-1247, 2007-1252 5provider system as prior art without distinction as to who c hooses the third party service provider. The specification cr iticizes the use of any third party service provider and the prior art diagram included in th e specification refers generally to “3rd party service providers” without making any distinction as to different types of providers. We thus agree with both district courts t hat the term “directly” precludes the use of any third party service provider. With this claim construction in mind we tu rn to the issue of infringement. Emergis argues that, even under the dist rict courts’ constructions of the term “directly,” the Vended Solutions and ePay systems literally infringe on the ‘362 patent because the operators of those systems, BillMatrix and Princeton eC om, act as agents for the invoicers and, as agents, cannot be considered third-party service providers. But there is no evidence in the record that the re lationship between BillMatrix and Princeton eCom and their respective in voicers extends beyond the typi cal business relationship of servicer and client. BillMatrix and Princeton eCom are their own l egal entities that are not operated or controlled by t he invoicers. The mere fact that a business relationship exists between these parties does not dissolv e their independence, wh ether or not they are agents for some purposes. Moreover, B illMatrix and Princeton eCom are not just providing a passive service like the lockbox service that financial institutions often provide to their customers. Instead, they ma intain the web system and initiate the billing process with customers of t he invoicers. In sum, bec ause BillMatrix and Princeton eCom are independent third party service providers, we affirm the district courts’ decisions that Vended Solutions and eP ay do not infringe the ‘362 patent. II. “Customer Invo ice Account Number”

2007-1247, 2007-1252 6However, this does not resolve the infr ingement questions as to PNM’s internal solution, which, unlike PNM’s vended soluti on and Otter Tail’s ePay system, does not use a third party service provider. We thus tu rn next to the district court’s construction of the term “customer invoice account num ber.” The PNM appelle es argue that the district court incorrectly construed the term to mean “a number or other identifier associated with the cust omer’s account for its purchase of goods and services from the invoicer.” They argue in stead that the term should be construed to mean only an invoice number. To arrive at its construction the dist rict court relied on the explanation of Emergis’s counsel. At a hearing, counsel ex plained that an invoicer needs to have three distinct pieces of information in order to properly credit the cu stomer’s invoice: (1) the account on which the customer is paying, (2) the amount the customer is paying, and (3) how the customer is paying. An in voice number is not necessary. The court found that the spec ification, which provided that “ [t]he invoice presen tment electronics may include a memory device to store informa tion relating to customer bills and account information” supported its interpretation that the term “customer invoice account number” referred to th e customer’s unique account and not individual invoices. We cannot agree with the district court’ s construction. The summary of the invention used the phrases “invoice account number” and “customer invoice number” interchangeably, but “invoice account num ber” was never used interchangeably with “account number” or “customer number.” Because the summary of the invention supports a narrow interpretation of the term, we hold that the correct construction of “customer invoice account number” is onl y an invoice number. Further, because

2007-1247, 2007-1252 72007-1247, 2007-1252 8 Emergis does not dispute that the PNM appellees do not use invoice numbers as part of the Internal Solution system, we affirm the dist rict court’s judgment t hat Internal Solution does not infringe on the ‘362 patent. The decision of the District Court for the District of Minnesota is AFFIRMED . The decision of the District Court for the District of New Mexico is AFFIRMED IN PART and REVERSED IN PART

.