United States Court of Appeals 

for the Federal Circuit 

__________________________ 

THE WESTERN UNION COMPANY, 

Plaintiff-Appellee, 

v. 

MONEYGRAM PAYMENT SYSTEMS, INC., 

Defendant-Appellant. 

__________________________ 

2010-1080, -1210 

__________________________ 

Appeal from the United States District Court for the 

Western District of Texas in Case No. 07-CV-0372, Judge 

Sam Sparks. 

____________________________ 

Decided: December 7, 2010 

____________________________ 

DAVID E. SIPIORA, Townsend and Townsend and Crew 

LLP, of Denver, Colorado, argued for plaintiff-appellee. 

With him on the brief were IAN L. SAFFER, AMANDA L.

SWAIM and KEVIN M. BELL. 

WILLIAM F. LEE, Wilmer Cutler Pickering Hale and 

Dorr LLP, of Boston, Massachusetts, argued for defendant-appellant. With him on the brief were JOSEPH J.

MUELLER, MEGAN BARBERO and SYDENHAM B.

ALEXANDER, III ; and William G. McElwain, of Washington, DC. Of counsel on the brief were MARTIN R. LUECK 
WESTERN UNION v. MONEYGRAM 2

and EMMETT J. MCMAHON, Robins, Kaplan, Miller & 

Ciresi LLP, of Minneapolis, Minnesota. 

__________________________ 

Before RADER, Chief Judge, and LOURIE and PROST, 

Circuit Judges. 

LOURIE, Circuit Judge. 

MoneyGram Payment Systems, Inc. (“MoneyGram”) 

appeals from the final judgment of the United States 

District Court for the Western District of Texas in favor of 

the Western Union Company (“Western Union”). A jury 

found infringement of certain claims of U.S. Patents 

6,488,203 (the “’203 patent”); 6,502,747 (the “’747 patent”); 6,761,309 (the “’309 patent”); and 7,070,094 (the 

“’094 patent”), and found those patents not invalid for 

obviousness. The district court denied MoneyGram’s 

renewed motion for judgment as a matter of law (“JMOL”) 

on infringement and invalidity of the asserted patents. 

Western Union Co. v. MoneyGram Int’l, Inc., No. 1:07-cv00372, Dkt. No. 429 (W.D. Tex. Nov. 17, 2009) (“JMOL 

Opinion”). Because we find that the asserted claims in 

the patents in suit would have been obvious to a person of 

ordinary skill in the art at the time of filing, we reverse. 

BACKGROUND

 Western Union owns the ’203, ’747, ’309, and ’094 

patents directed to a system for performing money transfers. The ’203, ’747, and ’309 patents (collectively, the 

“send patents”) specifically relate to methods of sending 

money through a financial services institution (“FSI”). 

The ’094 patent claims methods for receiving transferred 

money. The patented system relates to money transfer 

services such as those offered by Western Union through 

retail locations where a customer may identify a recipient 

and tender an amount to be delivered to the recipient. 
3 WESTERN UNION v. MONEYGRAM

The money transfer service collects the amount from the 

retail location and completes the transaction for the 

customer. Some of the traditional money transfer systems required money senders to fill out forms with transaction information such as recipient information and the 

amount of money to be transferred. The ’203 patent 

claims a method of performing a formless money transfer 

using an electronic transaction fulfillment device 

(“ETFD”). Figure 1 from the ’203 patent depicts an 

embodiment of the patented system. 

Figure 1 of the ’203 patent 

In the patented system, a customer has telephone access to the customer service representative (“CSR”) at the 
WESTERN UNION v. MONEYGRAM 4

financial institution, who obtains details of the transfer 

and “stages” the money transfer for the customer, storing 

the transaction details on a host computer (18). The 

customer is later able to complete the transaction at a 

retail location where an agent is able to retrieve the 

transaction from the computer (18) through an ETFD (22) 

and accept the required amount of money from the customer. Claim 1 is representative of the patented invention: 

1. A method of performing a money transfer send 

transaction, the method comprising: 

providing a sender direct access to an employee of a financial services institution in 

order to receive transaction details from 

the sender; 

storing, on a data base, the transaction 

details provided by the sender, wherein 

the transaction details include a desired 

amount of money to be sent by the sender 

to a recipient; 

establishing a code that corresponds to the 

transaction details stored on the data 

base, wherein the code is established for 

use by the sender during the send transaction; 

storing the code on the data base such that 

the code is useable to identify the send 

transaction on the data base; 
5 WESTERN UNION v. MONEYGRAM

entering the code into an electronic transaction fulfillment device in communication 

with the data base to retrieve the transaction details from the data base after the 

step of storing the code on the data base; 

and 

determining a collect amount, to be collected from the sender, based on the 

transaction details; 

wherein the code is not provided by or to 

the recipient for use by the recipient during the send transaction. 

’203 patent, claim 1 (emphases added). 

Claim 12 is dependent on claim 1 and adds the limitation that an employee of the money transfer business 

provides the transaction identifying code. Claim 16, 

which is also dependent on claim 1, adds the limitation of 

collecting the money from the sender, notifying the database of the collection, and recording the transaction as 

complete. The ’203 patent was filed on October 26, 1999 

and issued on December 3, 2002. The ’747 patent, also 

filed in 1999, and the ’309 patent, filed in 2004, are both 

continuations of the ’203 patent. The ’309 patent claims 

are similar and substantially identical in scope to the ’203 

patent claims. The ’747 patent primarily adds the use of 

internet-based communications, using an internet communications protocol (“the TCP/IP protocol”), to the 

money transfer system and claims the use of a “first 

computer” instead of “the data base” used in the ’203 

patent. Claim 20 is illustrative: 
WESTERN UNION v. MONEYGRAM 6

20. A method of performing a money transfer send 

transaction through a financial services institution, the method comprising: 

receiving transaction details on a first 

computer of the financial services institution, wherein the transaction details are 

provided by a sender and include a desired 

amount of money to be sent by the sender 

to a recipient; 

storing the transaction details on the first 

computer; 

establishing a code that corresponds to the 

transaction details, wherein the code is established for use by the sender during the 

send transaction; 

storing the code on the first computer such 

that the code is useable to identify the 

send transaction; 

receiving the code at the first computer 

from an electronic transaction fulfillment 

device in communication with the first 

computer after the step of storing the code 

on the first computer; 

validating the code received from the 

transaction fulfillment device by comparing the code received from the transaction 
7 WESTERN UNION v. MONEYGRAM

fulfillment device with the code stored on 

the first computer; and 

transmitting a collect amount, to be collected from the sender, from the first computer to the transaction fulfillment device 

if the code received from the transaction 

fulfillment device is valid; 

wherein at least a portion of the method is 

performed using TCP/IP, and wherein the 

code is not provided by or to the recipient 

for use by the recipient during the send 

transaction. 

’747 patent, claim 20 (emphases added). During prosecution of the ’747 and ’309 patents, the inventors filed a 

terminal disclaimer limiting the terms of those patents to 

that of the ’203 patent in response to double patenting 

rejections by the USPTO. 

Like the patented invention, a prior art system owned 

by Orlandi Valuta, another money transfer service company, also employed technology that did not require 

customers to fill out forms to transfer money. Below is a 

figure from Orlandi Valuta’s literature on its “Red Phone” 

system: 
WESTERN UNION v. MONEYGRAM 8

Orlandi Valuta’s Red Phone technology, used as early 

as 1997, required a customer to use a telephone to initiate 

a transaction with an Orlandi Valuta CSR. The telephone 

typically used by the customer was a red colored telephone available at the retail location that automatically 

connected to an Orlandi Valuta CSR in Los Angeles, 

California. The CSR would enter information received 

from the customer into the Orlandi Valuta computer 

system, whereupon the system would fax an invoice to the 

retail location of the customer or to the one that the 

customer had requested. The Orlandi Valuta customer 

would not receive a confirmation number for the transaction, but was simply required to wait at the retail loca-
9 WESTERN UNION v. MONEYGRAM

tion. Upon receipt of the fax, an agent at the retail location would call out the name of the customer, who could 

then tender the required amount to that agent. Western 

Union acquired Orlandi Valuta in 1997, shortly after it 

had developed the formless transfer system. 

The patents in suit claim to solve shortcomings of the 

Orlandi Valuta system. The inventors, Earney Soutenburg and Dean Seifert, both employees of Western Union, 

were also responsible for Orlandi Valuta’s technology 

group following Western Union’s acquisition of that 

company. Prior to developing the patented system, later 

commercialized as Western Union’s “Yellow Phone” 

system, the inventors evaluated Orlandi Valuta’s formless 

money transfer system to determine if Western Union 

could utilize it on a larger scale to support its higher 

volumes of money transfers. The inventors claim that the 

Orlandi Valuta system was not a viable formless option 

for Western Union. 

MoneyGram, also a money transfer service company 

and a direct competitor of Western Union, developed and 

deployed its “FormFree” money transfer system in 2000. 

Like the patented system, the MoneyGram system provided the customer with a confirmation number, which 

when provided by the customer to a retail agent allowed 

for completion of the previously staged transaction. This 

confirmation number was also stored in a Confirmation 

File database along with other information, such as the 

transfer amount, of the staged transaction. In September 

2003, when MoneyGram learned of the patents in suit, it 

developed a work-around to avoid infringement of those 

patent claims. The redesigned system no longer stored 

the desired amount to be sent in the Confirmation File 

database for pending transactions. Instead, the customer 

was required to provide that information again to the 

agent at the retail location where the customer funded 
WESTERN UNION v. MONEYGRAM 10

and completed the transaction. MoneyGram obtained a 

formal noninfringement opinion from outside counsel on 

its redesigned system with regard to Western Union’s 

patents. 

In May 2007, Western Union filed this lawsuit in the 

United States District Court for the Western District of 

Texas, ultimately asserting infringement of claims 1, 12, 

16, and 21 of the ’203 patent; claim 20 of the ’747 patent; 

claims 12 and 22 of the ’309 patent; and claim 2 of the 

’094 patent. In December 2008, the district court construed claims of all four patents at issue. Western Union 

Co. v. MoneyGram Int’l, Inc., No. 1:07-cv-00372, 2008 WL 

5731946 (W.D. Tex. Nov. 6, 2008). In August 2009, the 

district court granted summary judgment that MoneyGram’s design-around system did not infringe the asserted claim of the ’094 patent. Western Union Co. v. 

MoneyGram Int’l., Inc., No. 1:07-cv-00372, Dkt. No. 353 

(W.D. Tex. Aug. 21, 2009). 

The case was tried to a jury in September 2009. During trial, Western Union withdrew its claim of infringement of the ’309 patent and claim 21 of the ’203 patent as 

to MoneyGram’s redesigned system. Following trial, the 

jury found that MoneyGram’s redesigned system infringed claims 1, 12, and 16 of the ’203 patent and claim 

20 of the ’747 patent under the doctrine of equivalents. It 

found that MoneyGram’s pre-design-around system, 

however, literally infringed the same claims as well as 

other claims that Western Union had asserted only 

against the earlier MoneyGram system: claim 21 of the 

’203 patent and claims 12 and 22 of the ’309 patent. On 

claim 2 of the ’094 patent, also asserted only against the 

earlier system, the jury found infringement under the 

doctrine of equivalents. The jury rejected MoneyGram’s 

argument that the asserted patent claims were obvious in 

light of the Orlandi Valuta prior art system. The jury 
11 WESTERN UNION v. MONEYGRAM

awarded Western Union reasonable royalty damages in 

the amount of $16,529,501.81. 

Following trial, MoneyGram renewed its JMOL motion on obviousness of the asserted patent claims based on 

the Orlandi Valuta system, and on noninfringement of the 

asserted patent claims. Western Union renewed its JMOL 

motion on literal infringement of the ’747 patent. The 

court denied all JMOL motions. In deciding MoneyGram’s JMOL motion on obviousness, the court found 

that MoneyGram had waived its argument on the issue. 

JMOL Op., slip op. at 31. Nevertheless, the court proceeded to evaluate MoneyGram’s motion on its merits and 

decided that the jury had a legally sufficient evidentiary 

basis upon which it could conclude that the asserted 

claims were not obvious. Id. at 32. Specifically, regarding 

the Orlandi Valuta prior art system, the court found that 

it did not employ an ETFD terminal at the retail location 

and did not use a code. Id. at 31-32. The court concluded 

that it would not have been obvious for a person of ordinary skill in the art to combine these two elements with 

the existing Orlandi Valuta system. Id. Moreover, it held 

that secondary considerations such as commercial success 

and investments made by both parties in designing systems better than the Orlandi Valuta system weighed 

against a finding of obviousness. Id. Thus, the district 

court denied MoneyGram’s JMOL motion. Lastly, the 

court granted a permanent injunction against MoneyGram. Id. at 60. MoneyGram now appeals the court’s 

rulings on claim construction, infringement, and invalidity of the ’203, ’747, and ’309 patents.1 We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 

 1 Western Union cross-appealed the court’s denial 

of its JMOL motion on literal infringement of the ’747 

patent, which we dismissed as an improper cross-appeal. 
WESTERN UNION v. MONEYGRAM 12

DISCUSSION

Obviousness 

We begin with the district court’s denial of MoneyGram’s JMOL motion on obviousness. We review the 

denial of a JMOL motion de novo, applying law from the 

regional circuit, in this case, the Fifth Circuit. Harris 

Corp. v. Ericsson lnc., 417 F.3d 1241, 1248 (Fed. Cir. 

2005). Under Fifth Circuit law, a motion for judgment as 

a matter of law “should be granted by the trial court if, 

after considering all the evidence in the light [favorable 

to] and with all reasonable inferences most favorable to 

the party opposed to the motion, the facts and inferences 

point so strongly and overwhelmingly in favor of one 

party that the court concludes that reasonable jurors 

could not arrive at a contrary verdict.” Bellows v. Amoco 

Oil Co., 118 F.3d 268, 273 (5th Cir. 1997). 

At the outset, Western Union argues that MoneyGram has waived its right to appeal several issues including obviousness of the asserted patent claims based on the 

Orlandi Valuta system in combination with a keypad. It 

argues that the district court properly found this argument waived below because MoneyGram failed to specifically raise obviousness based on a keypad device in its 

Rule 50(a) motion and that omission ran afoul of the 

purpose of Rule 50. Therefore, Western Union contends, 

MoneyGram cannot attempt to incorporate new prior art 

arguments on appeal. 

We disagree and decide that the district court erred in 

concluding that MoneyGram had waived its obviousness 

argument specifically as it related to Orlandi Valuta. 

Rule 50(a) requires that a motion for judgment as a 

 

Western Union Co. v. MoneyGram Payment Sys., Inc., No. 

2010-1080, Dkt. No. 54 (Fed. Cir. May 3, 2010). 
13 WESTERN UNION v. MONEYGRAM

matter of law “must specify the judgment sought and the 

law and facts that entitle the movant to the judgment.” 

Fed. R. Civ. P. 50(a)(2). We have held that even a cursory 

motion suffices to preserve an issue on JMOL so long as it 

“serves the purposes of Rule 50(a), i.e., to alert the court 

to the party’s legal position and to put the opposing party 

on notice of the moving party’s position as to the insufficiency of the evidence.” Blackboard, Inc. v. Desire2Learn, 

Inc., 574 F.3d 1371, 1379–80 (Fed. Cir. 2009). Fifth 

Circuit law, applicable here, also construes the rule 

liberally, excusing “technical noncompliance” when the 

purposes of the rule are satisfied. Navigant Consulting, 

Inc. v. Wilkinson, 508 F.3d 277, 288-89 (5th Cir. 2007) 

(citation omitted). Applying that liberal standard, we find 

no waiver here. MoneyGram argued in its Rule 50(a) 

motion that it was entitled to JMOL on obviousness on all 

asserted claims of all asserted patents, specifically listing 

Orlandi Valuta as prior art that rendered the claims 

obvious. We agree with MoneyGram that those statements were sufficient to preserve MoneyGram’s obviousness arguments as to Orlandi Valuta. 

On the merits, MoneyGram argues that the claimed 

invention simply takes a known prior art system and adds 

obvious elements, such as the use of an off-the-shelf 

keypad to access transaction information. It contends 

that the patent specification itself concedes the fact that 

the core concept of the claimed invention, namely, the 

idea of providing a customer with direct access to a CSR 

who can store the customer’s transaction details in the 

FSI’s database, was well-known in the prior art. According to MoneyGram, the patented invention simply replaced the fax machine in the Orlandi Valuta system with 

an off-the-shelf keypad—a well-known device in the art. 

MoneyGram further argues that the district court incorrectly concluded that the Orlandi Valuta system did not 
WESTERN UNION v. MONEYGRAM 14

use a code even though there was ample evidence that 

such a code existed in that system by the name “clave,” 

and users could use the clave to obtain information about 

their money transfers. Regardless whether Orlandi 

Valuta taught that limitation, MoneyGram argues, adding a numerical code to a system that processes financial 

transactions would have simply been common sense to a 

person of skill in the art. As for the ’747 patent, which 

primarily added the use of internet-based communications to the ’203 patent, MoneyGram argues that such an 

improvement would have been obvious under this court’s 

precedent. On secondary considerations relied upon by 

the district court, MoneyGram contends that they have no 

relation to the claimed invention. Thus, MoneyGram 

contends that it established, by clear and convincing 

evidence at trial, that the asserted claims were obvious. 

It further notes that in response to its case on obviousness, Western Union did not even offer a rebuttal before 

the jury. Therefore, MoneyGram argues, there is no 

evidence on the record to support the jury’s underlying 

fact findings or its ultimate conclusion of nonobviousness. 

Western Union argues in response that the Orlandi 

Valuta system may share some similarities with the 

patented invention, but it does not teach the core concepts 

claimed by its patents. Western Union argues that the 

Orlandi Valuta system lacks at least three critical elements: (1) the “code” that is established for use by the 

sender during the send transaction; (2) an ETFD; and (3) 

the use of the Internet. Regarding the code, Western 

Union argues, the jury heard testimony that the clave in 

the Orlandi Valuta system was not given to the customer 

until after the transaction had been completed, and that 

was sufficient evidence for the jury to find that limitation 

missing from the prior art. Likewise, it argues, the ETFD 

claimed is one used for completing the money transfer 
15 WESTERN UNION v. MONEYGRAM

transaction, and no evidence presented at trial established that the fax machine in the Orlandi Valuta system 

could provide similar transaction fulfillment functionality. 

According to Western Union, the keypads known in the 

prior art were not the same as an ETFD, and MoneyGram 

presented no evidence that such a keypad could be used to 

retrieve transaction details from a database, as claimed in 

the patents. Western Union further argues that to the 

extent these elements were well-known in the prior art, 

the jury’s verdict of nonobviousness is easily supported by 

the lack of evidence of any motivation for one skilled in 

the art to have combined these elements with the Orlandi 

Valuta system. It contends, for example, that its own 

witness testified that extensive coding work was required 

to incorporate an ETFD into the commercial embodiment 

of the asserted patents. Lastly, Western Union argues, 

evidence of secondary considerations, such as the commercial success of its Yellow Phone system, cannot be 

ignored in evaluating the jury’s finding of nonobviousness. 

We agree with MoneyGram that in light of the Orlandi Valuta system, Western Union’s asserted claims 

would have been obvious as a matter of law. Obviousness 

is a question of law based on underlying findings of fact. 

In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). We 

review the jury’s determination of underlying fact for 

substantial evidence, but we review the ultimate conclusion of obviousness de novo. Boston Sci. Scimed, lnc. v. 

Cordis Corp., 554 F.3d 982, 990 (Fed. Cir. 2009); Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1324 (Fed. 

Cir. 2008). The underlying factual inquiries include (1) 

the scope and content of the prior art; (2) the differences 

between the prior art and the claims at issue; (3) the level 

of ordinary skill in the art; and (4) any relevant secondary 

considerations, such as commercial success, long felt but 

unsolved needs, and the failure of others. Graham v. 
WESTERN UNION v. MONEYGRAM 16

John Deere Co., 383 U.S. 1, 17-18 (1966). Here the level 

of skill of one of ordinary skill in the art and the scope of 

the claims of the patents in suit are not at issue. The 

parties’ disputes revolve around whether the prior art 

taught three specific elements of the claimed inventions, 

whether there was a motivation to combine these elements with the prior art system, and whether secondary 

considerations support a finding of nonobviousness. We 

address each in turn. 

A. Combining an ETFD and the Use of the Internet 

with the Orlandi Valuta System 

Western Union argues that the claimed ETFD is more 

than a simple keypad and includes functionality that 

cannot be achieved by simply exchanging the fax machine 

in the Orlandi Valuta system for a keypad. It argues that 

a keypad cannot communicate with a database to retrieve 

the transaction details. It also argues that there is no 

evidence in the record that a keypad equivalent to the 

ETFD was “well-known” in the prior art. Moreover, it 

argues, the combination would not have been obvious to a 

person of ordinary skill in the art. 

We find each of these arguments unpersuasive. The 

patent specification itself describes the addition of “an 

electronic transaction fulfillment device, such as an 

electronic terminal having a keypad,” ’203 patent col.4 

ll.8-10, and states that one embodiment is an FDX-400, 

available from Western Union, id. col.4 ll.21-23. It explains that FDX-400 comprises a numeric keypad, one or 

more function keys, and a display device. Id. col.4 ll.23-

25. MoneyGram presented that evidence at trial. It 

presented evidence to show that the Orlandi Valuta 

system used an FDX-400 device, although at the CSR 

location, not at the retail location. It also presented 

testimony that various electronic keypad devices, such as 
17 WESTERN UNION v. MONEYGRAM

those used for credit card transaction processing, already 

existed at retail locations. We conclude that no reasonable jury should have found that MoneyGram failed to 

present sufficient evidence to demonstrate that electronic 

transaction devices, at least as sophisticated as the FDX400, were commonplace in the art at the time of the 

invention. 

We next address the question whether there was motivation to combine the prior art ETFD with the Orlandi 

Valuta system. An obviousness determination is not the 

result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of 

those skilled in the art demonstrates why some combinations would have been obvious where others would not. 

See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) 

(“The combination of familiar elements according to 

known methods is likely to be obvious when it does no 

more than yield predictable results.”). Based on the 

Supreme Court’s reasoning in KSR, we have subsequently 

held that applying computer and internet technology to 

replace older electronics has been commonplace in recent 

years. See Muniauction Inc., 532 F.3d at 1327; Leapfrog 

Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 

(Fed. Cir. 2007). In Leapfrog, we held that 

“[a]ccommodating a prior art mechanical device that 

accomplishes [the goal of teaching a child to read phonetically] to modern electronics would have been reasonably 

obvious to one of ordinary skill in designing children’s 

learning devices.” 485 F.3d at 1161. Our conclusion of 

obviousness was based in part on the reasoning that 

“[a]pplying modern electronics to older mechanical devices 

has been commonplace in recent years.” Id. Similarly, in 

Muniauction, we concluded that conducting previously 

known methods of bidding through an Internet web 

browser was obvious because it amounted to no more than 
WESTERN UNION v. MONEYGRAM 18

applying the use of the Internet to existing electronic 

processes at a time when doing so was commonplace. 532 

F.3d at 1327. We rejected the patentee’s arguments that 

even where it was routinely done, such incorporation 

would have been beyond the ability of a person of ordinary 

skill in the art. Id. 

Here too, we find the use of an electronic transaction 

device where the prior art employed a fax machine to be 

an unpatentable improvement at a time when such a 

transition was commonplace in the art. See In re Mettke, 

570 F.3d 1356, 1360–61 (Fed. Cir. 2009) (finding it obvious to add Internet access to a prior art kiosk that included a fax-machine). We fail to see how it would have 

been difficult for a person of ordinary skill in the art to 

integrate an electronic transaction device that was available from Western Union itself into a well-known money 

transfer system that was also owned by Western Union at 

the time of the invention. Specific limitations that Western Union points to, such as using the ETFD to retrieve 

information from a database, are simply routine modifications that are a part of adapting a new technology to an 

existing system. Here, a person of ordinary skill in the 

art replacing a fax machine with an ETFD that could 

access a database would necessarily have known how to 

retrieve transaction details from the database. 

Western Union further argues that it spent significant resources in developing its commercial embodiment 

of the patented invention and that the integration of the 

ETFD into a formless system was not a simple one that a 

skilled person could accomplish without any experimentation. Although we have held that a finding of obviousness 

may not be proper where the prior art merely provided a 

promising field for experimentation, In re Kubin, 561 F.3d 

at 1359-60, the testimony that Western Union relies upon 

here relates only to the effort that its engineers invested 
19 WESTERN UNION v. MONEYGRAM

in software implementation of its commercial system, not 

toward any inventive aspect claimed in the patents. 

Thus, we conclude that the combination of the ETFD with 

the Orlandi Valuta system would have been obvious to a 

person of ordinary skill in the art at the time of the invention. 

For the same reasons, we are not persuaded by Western Union’s arguments that the improvements recited in 

claim 20 of the ’747 patent render the subject matter of 

the claim nonobvious. The claim primarily adds the use 

of internet-based communications, specifically the TCP/IP 

protocol to the invention patented in the ’203 patent. We 

conclude that it would have been obvious for a person of 

ordinary skill in the art to use internet-based protocols in 

networking the systems used in the ’203 patent. See

Papyrus Tech. Corp. v. N.Y. Stock Exch., LLC, 653 F. 

Supp. 2d 402, 432 (S.D.N.Y. 2009) (finding that adding “a 

connectionless protocol (TCP/IP) that has been used in 

electronic communications, such as the Internet, since the 

1980s” to other obvious elements of claim “adds nothing 

new to the field of endeavor”), affirmed, Case No. 2010-

1166, 2010 WL 3934367 (Fed. Cir. Oct. 7, 2010). 

B. Use of a Code 

Western Union argues, and the district court found, 

that the fact that the Orlandi Valuta system did not 

provide a code to the customer meant that that system did 

not disclose the use of a code for that specific functionality 

to a person of ordinary skill in the art. MoneyGram 

responds that the Orlandi Valuta system did in fact use a 

clave to identify transactions. Moreover, it contends, the 

basic idea of identifying transactions by codes is wellknown to anyone who has ever purchased or reserved an 

item and received a confirmation number from a representative. 
WESTERN UNION v. MONEYGRAM 20

We agree with MoneyGram that the Orlandi Valuta 

system taught the use of a code that corresponds to a 

transaction in the system. At trial, MoneyGram established that the code printed on the invoice given to the 

Orlandi Valuta customer could be used to track the transaction. In light of this evidence, we conclude that it would 

have been common sense for a person of ordinary skill in 

the art to use a code generated at the staging phase and 

provided to the customer to be used at the retail location 

to look up transaction information in the manner claimed 

by the asserted patents. See Perfect Web Techs., Inc. v. 

InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2010) (In 

KSR, “the Supreme Court instructed that factfinders may 

use common sense in addition to record evidence.”). In 

Perfect Web, the patented technology involved a method of 

managing bulk e-mail that required repeating a series of 

steps until the desired quantity of e-mail had been sent. 

In affirming the district court’s holding of obviousness, we 

reasoned that where there was a failure to reach the 

targeted number, common sense dictated that one should 

try again. Id. at 1330. 

It is undisputed here that when a CSR entered a 

transaction into the Orlandi Valuta system, it generated a 

corresponding code and that that code was also printed on 

the invoice that the customer received at the retail location. Because, in that system, the transaction details 

were faxed to the retail location, the customer’s name was 

used to validate and complete the transaction. Where the 

fax machine is replaced with an electronic transaction 

device that is capable of retrieving information from the 

host computer, it would be common sense for a person of 

skill to use the transaction code throughout the life of the 

transaction, including “use by the recipient during the 

send transaction.” See KSR, 550 U.S. at 421 (“A person of 

ordinary skill is also a person of ordinary creativity.”). 
21 WESTERN UNION v. MONEYGRAM

Consequently, other code-related limitations in the asserted claims, such as entering the code into the ETFD 

and validation of the code by the host computer, would 

have also been a matter of common sense to a person of 

ordinary skill in the art. 

Western Union argues that MoneyGram did not separately prove that additional limitations of each of the 

asserted dependent claims were present in the prior art 

rendering each of those claim obvious as well. Western 

Union argues, for example, that dependent claim 12 of the 

’203 patent adds the limitation that an employee of the 

money transfer business provides the transaction identifying code to the customer. Western Union, however, 

does not explain why such an insignificant detail would 

not have been obvious to a person of skill in the art. We 

similarly decide that each of the other asserted claims of 

the ’203 and ’309 patents adds only trivial improvements 

that would have been a matter of common sense to one of 

ordinary skill in the art, and that no reasonable jury could 

find any of those claims to have been nonobvious. We 

therefore conclude, after considering all the evidence 

presented at trial in the light most favorable to Western 

Union, that each of the disputed elements of the asserted 

claims was present in the prior art, that the claimed 

combination represents no more than “the predictable use 

of prior art elements according to their established functions,” KSR, 550 U.S. at 417, and as such, the claims 

would have been obvious as a matter of law. 

C. Secondary Considerations 

MoneyGram argues that the district court’s analysis 

of secondary considerations suffered from a fundamental 

flaw in that it failed to identify the nexus between the 

claimed inventions and the secondary considerations 

identified by Western Union. In relying on commercial 
WESTERN UNION v. MONEYGRAM 22

success, MoneyGram points out, the district court failed to 

explain how the fact that Western Union had been transferring billions of dollars was in any way related to the 

patented invention. It contends that the district court 

failed to consider Western Union’s brand name recognition and marketing, or even the size of Western Union’s 

business prior to adopting the patented system, when it 

used systems such as Orlandi Valuta. It further argues 

that in relying on the amounts that the parties had spent 

on developing formless systems, the district court failed to 

analyze whether those investments directly related to 

conceiving the claimed inventions, such as an ETFD. 

According to MoneyGram, absent those improper assumptions, there is no legally relevant evidence of secondary 

considerations to support the nonobviousness of the 

inventions of the asserted claims. 

Western Union argues that to the extent the district 

court’s finding of nonobviousness was based on secondary 

considerations, it was well-supported in the record. It 

contends that it presented evidence to the jury that the 

Yellow Phone was commercially successful, transferring 

billions of dollars and generating millions of dollars in 

revenue each year. Throughout its arguments on nonobviousness, Western Union places significant emphasis on 

the fact that both parties evaluated the Orlandi Valuta 

system that existed at the time of the invention and 

decided to develop their own new and improved systems. 

We agree with MoneyGram that the district court 

erred in its analysis of secondary considerations of obviousness and in its heavy reliance on them in denying 

MoenyGram’s JMOL of obviousness. We find the evidence of secondary considerations irrelevant in supporting 

the jury verdict of nonobviousness. Our case law clearly 

requires that the patentee must establish a nexus between the evidence of commercial success and the pat-
23 WESTERN UNION v. MONEYGRAM

ented invention. See In re Huang, 100 F.3d 135, 140 (Fed. 

Cir. 1996) (holding that the proponent must offer proof 

“that the sales were a direct result of the unique characteristics of the claimed invention”) (emphasis added); In re 

GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (“For 

objective [evidence of secondary considerations] to be 

accorded substantial weight, its proponent must establish 

a nexus between the evidence and the merits of the 

claimed invention.”) (emphasis added). 

Here, Western Union failed to present any relevant 

evidence proving a nexus between its commercial success 

and its claimed invention. The only evidence that Western Union points us to is testimony from one of its employees explaining how the “Money Transfer by Phone” or 

Yellow Phone system that allowed customers simply to 

pick up the phone and have a Western Union CSR stage a 

transaction for them enabled dramatic growth of Western 

Union’s business. However, Western Union does not 

claim that it invented a formless money transfer system 

or that systems such as Orlandi Valuta are not prior art 

to the claimed invention. It cannot therefore claim any 

commercial success that arose from features of the system 

found in the prior art as a consideration for nonobviousness of its claimed invention. Ormco Corp. v. Align Tech., 

Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (“[I]f the feature 

that creates the commercial success was known in the 

prior art, the success is not pertinent.”). 

Similarly, Western Union failed to establish that investments made by itself and by MoneyGram in developing formless money transfer systems different from 

Orlandi Valuta have any relation to the patentable features of the claimed inventions. Western Union points to 

payments in the amount of $240,000 that MoneyGram 

made to Cambridge Technology Partners (“Cambridge”) 

for consulting services as proof of such investments. 
WESTERN UNION v. MONEYGRAM 24

However, MoneyGram presented evidence at trial that 

MoneyGram’s payments to Cambridge were for consulting 

services targeted toward reinventing the entire MoneyGram system, only part of which was addressing challenges involved in adopting a formless system. Western 

Union failed to rebut that testimony, or offer any other 

evidence that demonstrated that Cambridge’s services 

were dedicated to developing the inventions claimed in 

the patents in suit. Mere attorney argument that both 

parties refused to adopt the Orlandi Valuta system specifically because it was lacking the innovative aspects of 

the claimed inventions is not evidence that can support a 

finding of nonobviousness. See Perfect Web, 587 F.3d at 

1332 (rejecting a nonobviousness position that was 

“merely attorney argument lacking evidentiary support”). 

Thus, we find that the district court’s reliance, in finding 

nonobviousness, on the amount of time and money that 

both parties had spent on developing formless systems 

was misplaced. 

Moreover, weak secondary considerations generally do 

not overcome a strong prima facie case of obviousness. 

See Media Techs. Licensing, LLC v. Upper Deck Co., 596 

F.3d 1334, (Fed. Cir. 2010), cert. denied, 2010 WL 

2897876 (Oct. 04, 2010) (“Even if [the patentee] could 

establish the required nexus, a highly successful product 

alone would not overcome the strong showing of obviousness.”); Leapfrog Enters., 485 F.3d at 1162 (holding that 

the objective considerations of nonobviousness presented, 

including substantial evidence of commercial success, 

praise, and long-felt need, were inadequate to overcome a 

strong showing of primary considerations that rendered 

the claims at issue invalid). Here, where the inventions 

represented no more than “the predictable use of prior art 

elements according to their established functions,” KSR, 

550 U.S. at 417, the secondary considerations advanced 
25 WESTERN UNION v. MONEYGRAM

by Western Union are inadequate to establish nonobviousness as a matter of law. 

Thus, we conclude that the asserted claims of the 

’203, ’747, and ’309 patents would have been obvious as a 

matter of law and therefore reverse the district court’s 

denial of JMOL of nonobviousness. In light of our disposition, we do not reach issues of claim construction and 

infringement. 

CONCLUSION

We have considered Western Union’s remaining arguments and do not find them persuasive. Accordingly, 

the judgment of the district court is 

REVERSED.