Stored Value Solutions, Inc. v. Card Activation Technologies, Inc. (796 F. Supp. 2d 520, 2011)

United States District Court for the District of Delaware 2011-07-01

Citations

Full opinion text

MEMORANDUM OPINION

JORDAN, Circuit Judge.

I. Introduction

Plaintiff Stored Value Solutions, Inc., doing business now as, Ceridian Stored Value Solutions, Inc. (“SVS”) seeks a declaratory judgment of invalidity of U.S. Patent No. 6,032,859 (the “'859 patent”), owned by Defendant Card Activation Technologies, Inc. (“CAT”). (Docket Index [“D.I.”] 1.) Before me now are SVS’s Motion for Summary Judgment of Invalidity Due to Anticipation and Obviousness (D.I. 102), SVS’s Motion for Partial Summary Judgment of Invalidity of Claims 20, 22-31, and 33-38 Due to Lack of Written Description (D.I. 167), CAT’s Motion for Summary Judgment of Validity (D.I. 109), and CAT’s Motion to Exclude the Expert Testimony of Lori Breitzke (D.I. 107). Relevant to the disposition of those motions is the construction of the term “purchase transaction” as used in the '859 patent. (See D.I. 134.) For the reasons that follow, including my decision on the construction of that term, I will deny both of CAT’s motions, grant SVS’s motion on Invalidity Due to Anticipation and Obviousness in part, and grant SVS’s Motion for Partial Summary Judgment of Invalidity of Claims 20, 22-31, and 33-38 Due to Lack of Written Description.

II. Background

A. Procedural Background

SVS filed a complaint seeking a declaratory judgment of invalidity of the '859 patent under 35 U.S.C. §§ 102 and 103 on July 8, 2009. (D.I. 1.) CAT filed its answer on August 13, 2009. (D.I. 9.) A report and recommendation on claim construction of nine disputed terms in the '859 patent was issued on April 28, 2010, (D.I. 61) and adopted on June 3, 2010, (D.I. 64) over CAT’s objections (D.I. 62). On December 17, 2010, the parties filed their cross motions for summary judgment on validity of the '859 patent, and CAT filed its motion to exclude the testimony of SVS’s expert, Ms. Breitzke. (D.I. 102, 107, 109.) At my request (D.I. 134, 138), the parties have briefed the Court on the meaning of “purchase transaction” as used in the '859 patent (D.I. 135, 136, 137, 139, 140, 141) and whether the '859 patent’s written description is adequate under 35 U.S.C. § 112, ¶ 1 (D.I. 143, 144, 145, 146, 148,149, 168, 171, 172). Oral argument on those issues was held on March 25, 2011. (D.I. 159.) On April 1, 2011, SVS filed an amended complaint, with leave of Court, alleging that, in addition to being invalid under 35 U.S.C. §§ 102 and 103, the '859 patent was also invalid for failing to meet the written description requirement of 35 U.S.C. § 112, ¶1. (D.I. 152). Additional expert discovery and briefing was completed on the adequacy of the written description of the '859 patent (D.I. 154, 155, 156, 157, 160, 161). The parties are scheduled to try this case before a jury beginning on July 25, 2011.

B. The '859 Patent

The '859 patent discloses a method for processing electronic transactions which involve an ATM card, prepaid debit card, or phone card. Entitled “Method for Processing Debit Purchase Transactions Using a Counter-Top Terminal System,” the '859 patent issued March 7, 2000, on an application filed September 15, 1997, and claimed priority to two provisional applications, Nos. 60/025,281 and 60/033,153, that were filed September 18, 1996 and December 13, 1996, respectively. As originally issued, the '859 patent contained thirty-eight claims, four of which were independent (claims 1, 10, 20, and 29). Pursuant to an ex parte reexamination of the patent, CAT canceled dependent claims 21 and 32 and added language from those claims to the independent claims on which they rely, claims 20 and 29, respectively. Ex Parte Reexamination Certificate No. U.S. 6,032,-859 Cl, October 5, 2010, Reexamination Request No. 90/009,459, April 30, 2009.

III. Applicable Law and Standard of Review

A. Claim Construction

“[A] district court may engage in claim construction during various phases of litigation, not just in a Markman order,” especially as “its understanding of the technology evolves.” Conoco, Inc. v. Energy & Envtl., L.C., 460 F.3d 1349, 1359 (Fed.Cir.2006) (internal quotations omitted) (addressing a District Court’s sua sponte construction of a term). Claim construction is a matter of law. Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1454-56 (Fed.Cir.1998) (en banc). “[T]he words of a claim ‘are generally given their ordinary and customary meaning.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)). That ordinary meaning “is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention,” after a reading of the entire patent. Id. at 1313.

To determine ordinary meaning, the court should review the same resources as would the person of ordinary skill in the art. Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed.Cir.1998). Those include “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.Cir.2004).

Of those resources, the patent specification is “the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582). Moreover, while “the claims themselves provide substantial guidance as to the meaning of particular claim terms,” “the context in which a term is used in [a] claim” and the “[ojther claims of the patent in question” are useful for understanding the ordinary meaning of a term “[bjecause claim terms are normally used consistently throughout the patent.” Id. at 1314.

The patent specification does not stand alone, however. A court “should also consider the patent’s prosecution history.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). “Like the specification, the prosecution history provides evidence of how the [Patent and Trademark Office] and the inventor understood the patent.” Phillips, 415 F.3d at 1317 (citing Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed.Cir.1992)). A court may also rely on extrinsic evidence, which is “all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980. In particular, “dictionaries, and especially technical dictionaries, ... have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology.” Phillips, 415 F.3d at 1318 (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed.Cir.2002)).

However, during claim construction, “[t]he sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law.” Id. at 1324. For example, extrinsic evidence is “less significant than the intrinsic record in determining the ‘legally operative meaning of disputed claim language.’ ” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed.Cir.2004) (quoting Vanderlande Indus. Nederland BV v. Int’l Trade Comm’n, 366 F.3d 1311, 1318 (Fed.Cir.2004)), and extrinsic evidence “is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.” Phillips, 415 F.3d at 1318-19. Thus, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.Cir.1998). For that reason, a construction should not exclude an inventor’s product or a preferred embodiment. See Osram GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1358 (Fed.Cir.2007) (noting that claim construction conclusion can be reinforced by the fact that alternate constructions would exclude the “products that [a] patent[ ] w[as] designed to cover”); Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1550 (Fed.Cir.1996) (“[A] claim interpretation that would exclude the inventor’s device'is rarely the correct interpretation.”).

B. Summary Judgment

Pursuant to Federal Rule of Civil Procedure 56(a), a “court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). Both the movant and non-movant must support their factual positions either by “citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials” or by “showing that the materials cited [by another party] do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact.” Fed.R.Civ.P. 56(c)(1). In determining whether the asserted evidence shows that there is a genuine dispute of material fact, a court must review the evidence and draw all justifiable inferences in favor of the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 261, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1337 (Fed.Cir.2003). However, a court should not make credibility determinations or weigh the evidence presented by the parties. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105(2000). Furthermore, when determining whether summary judgment is appropriate, a court “must view the evidence presented through the prism of the substantive evidentiary burden,” Anderson, 477 U.S. at 254, 106 S.Ct. 2505; see also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238 (Fed.Cir.2003).

To defeat a motion for summary judgment after a moving party has carried its burden under Rule 56(c), the non-moving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (internal citation omitted;; see also Podobnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir.2005) (explaining that a party opposing summary judgment “must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue”) (internal quotation marks omitted)). Rather, the non-moving party “must set forth specific facts showing that there is a genuine issue for trial.” Matsushita, 475 U.S. at 586-87, 106 S.Ct. 1348 (citing former Fed.R.Civ.P. 56(e), amended Dec. 1, 2010); see Advisory Committee’s Notes to 2010 Amendments to Fed. R.Civ.P. 56 (explaining that “[t]he standard for granting summary judgment remains unchanged” after the Amendments to Rule 56 effective December 1, 2010). “Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no genuine issue for trial.” Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (internal citation omitted).

C. Invalidity

A patent is presumed valid. 35 U.S.C. § 282. The burden of establishing invalidity rests on the party asserting such invalidity and can be met only by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, — U.S. -, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011) (“We consider whether § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.”).

1. Written Description

The written description requirement of 35 U.S.C. § 112, ¶ 1 provides that:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Whether a patent meets the written description requirement of 35 U.S.C. § 112, ¶ 1 is a question of fact which must be answered by clear and convincing evidence if a patent is to be invalidated. Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1347 (Fed.Cir.2011) (precedential); Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1354-55 (Fed.Cir.2010) (en banc). That question is amenable to determination at the summary judgment stage and may be based “solely on the face of the patent specification.” Centocor, 636 F.3d at 1347; Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927 (Fed.Cir.2004); PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1247-48 (Fed.Cir.2002) (reversing the district court’s denial of JMOL because no reasonable juror could have concluded that the asserted claim was supported by adequate written description); TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1119 (Fed.Cir.2001) (affirming grant of summary judgment of invalidity under 35 U.S.C. § 112, ¶ 1 because “[n]o reasonable juror could find that [the patentee’s] original disclosure was sufficiently detailed to enable one of skill in the art to recognize that [the patentee] invented what is claimed”).

Section 112, ¶ 1 “contains a written description requirement separate from enablement.” Ariad, 598 F.3d at 1351. “[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Id. (internal quotation marks omitted). “[T]he test for sufficiency is whether the disclosure ... reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id.; see also Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed.Cir.2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.Cir.1991)) (“[T]he applicant must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,’ and demonstrate that by disclosure in the specification of the patent.”). Such “possession as shown in the disclosure” requires “an objective inquiry into the four corners of the specification,” Ariad, 598 F.3d at 1351, which must “describ[e] the invention, with all its claimed limitations,” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.Cir.1997) (emphasis removed). Examples or an actual reduction to practice are not necessary under the written description requirement; “a -constructive reduction to practice that in a definite way identifies the claimed invention can satisfy the written description requirement.” Ariad, 598 F.3d at 1352 (citing Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366-67 (Fed.Cir.2006)). Ultimately, “the specification must describe an invention understandable to [a person of ordinary skill in the art] and show that the inventor actually invented the invention claimed.” Id. at 1351. “A ‘mere wish or plan’ for obtaining the claimed invention is not adequate written description.” Centocor, 636 F.3d at 1348 (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed.Cir.1997)). However, even though the “description requirement does not demand ... that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citing Lockwood, 107 F.3d at 1571-72). Therefore, “the analysis compares the claims with the invention disclosed in the specification, and if the claimed invention does not appear in the specification ... the claim ... fails regardless of whether one of skill in the art could make or use the claimed invention.” Id. at 1348.

2. Anticipation

Pursuant to 35 U.S.C. §§ 102, a claimed invention is “anticipated,” and is therefore not novel if it “was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant” or “was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. §§ 102(a)-(b). Anticipation is a question of fact but can be amenable to summary judgment. See Upsher-Smith Labs., Inc. v. Pamlab, LLC, 412 F.3d 1319, 1322 (Fed.Cir.2005) (affirming grant of summary judgment in part on anticipation). “A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention,” and “a prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed.Cir.2003) (internal citation omitted), However, a prior art reference does not anticipate through mere disclosure of each and every limitation of a claim; it must also disclose the limitations as arranged in the claim and enable the claimed invention which it is asserted to anticipate. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1345 (Fed.Cir.2008) (internal citations omitted); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.Cir.2008) (“[Ujnless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.”).

S. Obviousness

A claimed invention is unpatentable if the differences between it and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the pertinent art. 35 U.S.C. § 103(a) (2006); Gra ham v. John Deere Co. of Kansas City, 383 U.S. 1, 13-14, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358 (Fed.Cir.2011). Whether the claimed subject matter would have been obvious at the time of invention to one of ordinary skill in the pertinent art is a question of law based on several underlying facts: (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (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 failure of others, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007); Graham, 383 U.S. at 17-18, 86 S.Ct. 684. When “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors,” summary judgment on the issue of obviousness is appropriate. KSR, 550 U.S. at 427, 127 S.Ct. 1727.

That question of obviousness also is not subject to any “rigid rule” that requires an express “discussion of obvious techniques or combinations” in the prior art. KSR, 550 U.S. at 419, 127 S.Ct. 1727. Rather, other factors, such as “market demand,” “any need or problem known in the field of endeavor at the time of invention and addressed by the patent,” “the inferences and creative steps that a person of ordinary skill in the art would employ,” and “common sense” may evidence obvious “design trends ... that would occur in the ordinary course without real innovation.” Id. at 418-20, 127 S.Ct. 1727. Moreover, “neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” Id. at 419, 127 S.Ct. 1727. Simply put, “a patent’s subject matter can be proved obvious by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” Id. at 420, 127 S.Ct. 1727.

Before the Supreme Court’s decision in KSR, [the Federal Circuit] required that a patent challenger show that a person of ordinary skill in the art would have had motivation to combine the prior art references and would have had a reasonable expectation of success in doing so.... KSR, however, instructs courts to take a more “expansive and flexible approach” in determining whether a patented invention was obvious at the time it was made. In particular, the Court emphasized the role of “common sense”: “[r]igid preventative rules that deny factfinders recourse to common sense ... are neither necessary under our case law nor consistent with it.”

Wyers v. Master Lock Co., 616 F.3d 1231, 1240 (Fed.Cir.2010).

However, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418, 127 S.Ct. 1727. “When determining whether a patent claiming a combination of known elements would have been obvious, we ‘must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.’ ” TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1341 (Fed.Cir.2010) (quoting KSR, 550 U.S. at 417, 127 S.Ct. 1727). “Answering this question usually entails considering the ‘interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.’ ” Id. at 1841 (quoting KSR, 550 U.S. at 418, 127 S.Ct. 1727). That factual inquiry, and “the legal determination of obviousness[,] may include recourse to logic, judgment, and common sense” and be “appropriate for resolution on summary judgment or JMOL.” Wyers v. Master Lock Co., 616 F.3d 1231, 1239-40 (Fed.Cir.2010); Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed.Cir., 2009) (“We therefore hold that ... an analysis of obviousness ... may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed.Cir.2009) (reversing district court and granting summary judgment of obviousness).

IV. Discussion

Before moving to the merits of the motions before me, I first address the construction of “purchase transaction” in the '859 patent.

A. “Purchase Transaction”

CAT proposes that “purchase transaction” be construed as “the acquisition of goods or services by the payment of money or its equivalent; to buy.” (D.I. 135 at 2.) SVS proposes that “purchase transaction” be construed as a “transaction that debits, credits, or activates a debit-styled card.” (D.I. 136 at 10.) For the following reasons, I shall construe the term as “a transaction with the intended effect of decreasing the purchasing value of, increasing the purchasing value of, or activating a debit styled card.”

I begin with the patent specification. Phillips, 415 F.3d at 1315. A “method for processing debit purchase transactions” is the method claimed by each and every claim of the '859 patent. The independent claims, which are 1, 10, 20, and 29, all directly recite “[a] method for processing debit purchase transactions.” ('859 patent at 7:46, 8:52, 9:56, 10:63.) Every dependent claim recites such a method through direct reference, (8:5; 8:9; 8:13; 8:27; 8:38; 8:41; 8:48; 9:8; 9:11; 9:15; 9:19; 9:23; 9:36; 9:45; 9:48; 9:53; 10:22; 10:25; 10:39; 10:50; 10:53; 10:58; 10:60; 11:21; 11:24; 11:36; 12:1; 12:16: 12:25: 12:28; 12:34), or indirect reference, (8:46). Therefore, the definition of “purchase transaction,” indeed “debit purchase transaction,” must be broad enough to encompass the specific method recited in each and every claim. See 37 C.F.R. § 1, 75 (“Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim.”); General Protecht Grp., Inc. v. Int’l Trade Comm’n, 619 F.3d 1303, 1307 n. 2 (Fed.Cir.2010) (noting that claims that depend from another have “the same limitation[s]”).

CAT asserts that such “purchase transactions” are only those in which goods or services are acquired through the payment of money. (D.I. 135 at 2.) CAT is correct in asserting that those types of transactions are covered by the claims. Indeed, it is abundantly clear from the specification that the claims, and the term “purchase transaction,” must be read broadly enough to encompass such transactions. The written description provides numerous examples of preferred methods in which goods are purchased and a debit card value is “debited” or “deduct[ed].” (3:26-43; 5:17-18; 6:43^4; 7:22-28.)

However, “purchase transaction” cannot be construed so narrowly as to refer only to the purchase of goods and services and the associated decrease in the value of a debit card. The claims themselves never speak of “deducting” or “decreasing” the value of a debit styled card. Rather, the plain language of the claims indicates that a “purchase transaction” occurs when the value of a debit card is modified, including when it is increased. Independent claims 1 and 20 recite that the purpose of the counter-top terminal is for “modifying purchasing value of a card.” (7:52-53; 9:62-63.) Claims 11 and 30 are drawn to debit purchase transactions which “eompris[e] the step of modifying a purchasing value of the card.” (9:8; 11:21 (emphasis added).) And claims 5, 16, 24, and 35 are drawn to debit purchase transactions which include the step of “increasing the value of the debit card by [a] credit amount.” (8:36; 9:43; 10:48; 12:23 (emphasis added).) Therefore, the definition of “purchase transaction” must include transactions in which the purchasing value of a debit card is modified, including through an increase.

The written description of the '859 patent further reinforces that point. A preferred embodiment of a claimed method is described as “a debit card having a certain value” being “increased, in value ... once the balance is depleted or is insufficient for the purchase.” (5:14, 5:28-30 (emphasis added).) The written description also provides an example of a method where “value is to be added” to a debit styled card (7:13) before (7:12-20) a “purchase is to be made” with the card (7:19-20), as described by the steps labeled 401, 404, 406, 408, and 410 in Figure 6 (7:11-17), in a complete transaction separate from the “purchase” of any goods. Thus, the claims and written description clearly indicate that a “purchase transaction” encompasses a transaction in which the purchasing value of a debit-styled card is increased, a transaction which can occur completely separate from the purchase of any goods.

In addition, the written description also includes other “purchase transaction” methods which do not concern the purchase of goods, decreasing the purchasing value of a debit styled card, or even increasing the purchasing value of a debit styled card. It describes preferred embodiments of the claimed methods for “making an account active” (4:16) for “Phone Debit cards” (3:56) and for the “purchase and activation of cellular styled phones” (4:48-49) and “cellular activation” (4:59-60), as illustrated by Figure 4 (4:59), These examples, which appear to be drawn as preferred embodiments for claims 4, 15, 23, and/or 34, indicate that activating a debit purchase transaction is necessarily part of what the patent specification refers to as a “purchase transaction” too.

Therefore, “[bjecause claim terms are normally used consistently throughout the patent,” Phillips, 415 F.3d at 1314, and the patent specification is “the single best guide to the meaning of a disputed term,” Phillips, 415 F.3d at 1315, the term “purchase transaction” should be construed broadly enough to encompass methods for processing transactions “with the intended effect of decreasing the purchasing value of, increasing the purchasing value of, or activating a debit styled card.”

I recognize that such a construction would, as CAT points out, expand the ordinary meaning of “purchase,” which is “to buy.” (D.I. 135 at 2.) I am also aware of the various parts of the '859 patent’s written description which address the purchase of goods and services. I am, however, very reluctant to construe “purchase transaction” in a manner that would eliminate preferred embodiments for claims 4, 5, 15, 16, 23, 24, 34, and 35. See Osram, 505 F.3d at 1358. Therefore, regardless of the ordinary meaning of “purchase transaction,” it is clear that the term must include transactions for decreasing as well as increasing the purchasing value of a debit styled card, and transactions for activating a debit styled card.

The extrinsic record evidence further supports such a construction. Namely, CAT’s own expert, Dr. Grimes, whom CAT has put forth as one of ordinary skill in the art, described claim 5 as covering the return of a good to a store in a transaction which occurs separately from a purchase and one which “increases the value in [an] account by whatever the cost of the [good] was.” (D.I. 137, Ex. E, Grimes Dep. at 107:2-3.) CAT counters that Dr. Grimes stated that a return transaction is covered under claim 5 because the return transaction “must occur in conjunction with a purchase transaction as set forth in Claim 1.” (D.I. 137, Ex. E, Grimes Dep. at 107 11-12.) So, according to CAT, a return transaction is covered by claim 5 only after a “purchase transaction” occurs under claim 1, i.e., “the dependent claim step of a credit transaction (increasing the value of the card by return of product, void of purchase, or otherwise adding value to the card) is optional, which is consistent with the use and purpose of a dependent claim,” (D.I. 139 at 4.)

That argument assumes that claim 5 has a requirement that the method in claim 1 be performed first. However, claim 5 describes an entirely new method that, while dependent on claim 1, stands on its own. See Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1384 (Fed.Cir.2001) (acknowledging that dependent claims stand on their own); Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve Inc., 796 F.2d 443, 446 (Fed.Cir.1986) (“each claim shall be presumed valid independently of the validity of other claims”). Moreover, claim 5 states that the transaction data transmitting step of claim 1 is replaced, indicating that only a single transaction is ever processed. (8:27-28.) Thus, it appears, without any meaningful qualification, that Dr. Grimes believes a return transaction during which the account associated with a debit card is increased in value is a method covered by claim 5. SVS’s expert, Ms. Breitzke, agrees. “One of ordinary skill in the art would recognize the ‘debit purchase transaction’ disclosed in the '859 patent as including multiple types of transactions, including return transactions.” (D.I. 104, Ex. B, Breitzke Rebuttal Report at 6.) Therefore, since claim 5 covers a method for processing debit purchase transactions, such transactions must include those in which the account associated with a debit card is to be increased in value, such as a return transaction.

Despite the intrinsic and extrinsic evidence, CAT argues that the principle of claim differentiation weighs heavily against a construction of the term “purchase transaction” that includes transactions for increasing the purchasing value of a debit styled card or for activating the card. CAT asserts that such a construction would make claims 4 and 5 superfluous because claim 1 would already include those transactions. That argument misses the mark. First, claim 1 is written as an open-ended method claim. (7:47 (“method comprising the steps of:”)-) Claims 4 and 5 specify certain limitations in a new method. Construing “purchase transaction” to include increasing the purchasing value of a debit card or activating a debit card would not make claims 4 and 5 superfluous, but would prevent them from being read narrowly on only transactions in which goods are purchased, which the written description indicates should not be the case. (7:11-20) (describing a transaction in which “value is to be added” to a debit styled card (7:13) before, (7:12-20) a “purchase is to be made” with the card (7:19-20), as described by the steps labeled 401, 404, 406, 408, and 410 in Figure 6 (7:11-17), in a complete transaction separate from the purchase of any goods (emphasis added).)

Second, the principle of claim differentiation stands for the proposition that “different words or phrases used in separate claims are presumed to indicate that the claims have a different meaning and scope.” Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed.Cir.1999). Here, we are reading the same term, “purchase transaction” as applying in the same manner to two claims. If we were to read the term as CAT suggests, we would narrow the scope of the term to a point where preferred embodiments disclosed in the written description would no longer be covered by any claim. Claim differentiation does not support CAT’s argument.

Therefore, the intrinsic and extrinsic evidence counsel in favor of construing the term “purchase transaction” as “a transaction with the intended effect of decreasing the purchasing value of, increasing the purchasing value of, or activating a debit styled card.” Although somewhat different than the ordinary meaning of “purchase,” that construction is the most reasonable one that would preserve the scope of the claims in the '859 patent and ensure that each preferred embodiment described in the patent is covered by a claim of the patent.

B. CAT’s Motion to Exclude the Testimony of SVS’s Expert

I consider next CAT’s motion to exclude the testimony of SVS’s expert Lori Breitzke, whom SVS seeks to have opine on the validity of the '859 patent. For the following reasons, I will deny CAT’s motion and allow Ms. Breitzke’s testimony.

The standard for admitting expert testimony is set forth in Rule 702:

If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.

Fed. R. Evid. 702.

Before admitting such testimony, federal judges must exercise a gatekeeping role, ensuring that any testimony heard by a jury satisfies the requirements of Rule 702. Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 592-93, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). The Third Circuit has explained that Rule 702 has three requirements; (1) the expert must be qualified, (2) the methodology must be reliable, (3) and the proposed testimony must fit the facts of the case. United States v. Schiff, 602 F.3d 152, 172-73 (3d Cir.2010). I address each of-those requirements below.

1. Qualification

Since 1987, Ms. Breitzke has worked in the field of payment systems and point-of-sale devices. (D.I. 104, Ex. A., Breitzke Report at 1.) During that time, she has helped design hardware and software products for processing point-of-sale transactions. (Id.) Presently, she is Chairperson for the Electronic Transactions Association Education Committee, which represents companies in the electronic transaction processing industry, and she is the owner of E & S Consulting, LLC, which provides consulting services for companies in the industry. (Id. at 1-2.) Based on that work history, Ms. Breitzke is qualified “by knowledge, skill, experience, training, or education,” Fed. R.Evid. 702, to opine on the '859 patent and the prior art and to help the jury make the necessary comparisons between the two.

CAT does not challenge Ms. Breitzke’s qualification as an expert with respect to the electronic transaction industry or point-of-sale devices but, nonetheless, argues that Ms. Breitzke is unqualified because she lacks knowledge of basic patent principles and of the legal requirements for anticipation, obviousness, and written description. Ms. Breitzke is not being offered as an expert on patents, however. She is offered as an expert on point-of-sale transactions and devices. Her role is not to educate the jury on the requirements of patent law, but to help the jury understand the point-of-sale technology, to understand how a person of skill in the art would view the specification, and to make a factual comparison between the claimed invention and the prior art. I will then instruct the jury on applying the law to the facts as the jury finds them. While it is necessary that Ms. Breitzke’s testimony be sufficiently tethered to the law so as to be relevant and reliable which will be addressed below-her lack of expertise in patent law does not affect her qualification as an expert on the electronic transaction industry or on point-of-sale technology. Consequently, I find Ms. Breitzke sufficiently qualified to render the she has tendered.

2. Reliability

In her reports, Ms. Breitzke sets forth the methodology she intends to use in demonstrating that the '859 patent is anticipated, obvious, or lacks a written description of the invention. With respect to anticipation, she notes that “a claim is invalid when a single prior art reference ... existed prior to the claim’s priority date and teaches every element of the claim;” she sets forth an accurate description of the various forms prior art can take; and she explains that her opinion will demonstrate “how every element of the '859 patent was known and described in a particular prior art reference.” (D.I. 104, Ex. A., Breitzke Report at 25.) Her report then employs the methodology as described, identifying each element of every patent claim, comparing those elements to various prior art references, and explaining how, in her opinion, each claimed element is present in a particular prior art reference. (D.I. 104, Ex. A., Breitzke Report at 10, 35-57.) That approach is consistent with the Federal Circuit’s instruction that “a claim is anticipated if each and every limitation is found either expressly or inherently in a single prior art reference,” Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed.Cir.1998), and hers is, therefore, a reliable method for assisting the jury to decide the question of anticipation.

With respect to obviousness, Ms. Breitzke’s report notes that “a patent cannot be obtained if the differences between the subject matter to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time of the invention to a person having ordinary skill in the art;” she correctly recognizes that “the combined teachings of more than one prior art reference can be used to demonstrate that all of the elements of a claim were known;” and she explains that her opinion will show “how the combined teachings of two particular prior art references disclose each claim element of the '859 patent ... [and] why one of ordinary skill in the art would combine the teachings of the particular references.” (D.I. 104, Ex. A., Breitzke Report at 25-26.) This approach reflects the statutory description of obviousness and is consistent with Federal Circuit precedent. See 35 U.S.C. § 103; Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1325-27 (Fed.Cir.2008). It is, therefore, a reliable method for establishing obviousness.

Finally, with respect to written description, Ms. Breitzke’s report outlines her understanding that “the specification must contain a written description of the invention”; that a proper analysis “compares the claims with the invention disclosed in the specification ... from the view of a person of ordinary skill in the art”; and that while “the specification need not describe the claimed invention verbatim” it must do more than “make it obvious to a person of ordinary skill in the art.” (D.I. 169, Ex. A., Breitzke Report (April 2011) at 6.) Then, Ms. Breitzke identifies each limitation in the relevant steps of the claims, compares those limitations to the invention disclosed in the written description, and explains why, in her opinion, a person of ordinary skill in the art would or would not find in the written description the limitation as asserted in the claims. That approach reflects the Federal Circuit’s instruction that the specification must “describ[e] the invention, with all its claimed limitations,” Lockwood, 107 F.3d at 1572, and that “the analysis compares the claims with the invention disclosed in the specification, and if the claimed invention does not appear in the specification ... the claim ... fails regardless of whether one of skill in the art could make or use the claimed invention.” Ariad, 598 F.3d at 1348. It is, therefore, a reliable method for analyzing the written description.

3. Fit

An expert’s opinion has the necessary “fit” for a case when it is “sufficiently tied to the facts of the case that it will aid the jury in resolving a factual dispute.” Schiff, 602 F.3d at 173 (quoting United States v. Downing, 753 F.2d 1224, 1242 (3d Cir.1985)). Each part of Ms. Breitzke’s opinion is dedicated either to describing the patent and the prior art or to comparing the patented claims to the prior art and to the invention disclosed in the specification. That is sufficiently tied to the facts to aid in resolving whether the '859 patent is anticipated or rendered obvious by the prior art discussed in Ms. Breitzke’s report and whether there is a written description of the claimed invention.

Because Ms. Breitzke is a qualified expert, her methodology is reliable, and her opinion fits the facts of this case, CAT’S motion to exclude her testimony is denied.

C. Written Description

A bit of additional background information is necessary to put the following discussion in context. Pursuant to an ex parte reexamination, dependent claims 21 and 32 of the '859 patent were canceled and the steps in those claims requiring entering of a clerk authorization code and a customer authorization code were incorporated as additional steps in the respective independent claims on which they rely, namely claims 20 and 29. Ex Parte Reexamination Certificate No. U.S. 6,032,-859 C1, October 5, 2010, Reexamination Request No. 90/009,459, April 30, 2009. Thus, after the reexam, independent claims 20 and 29 require three separate and distinct authorization codes to be entered: (1) a customer authorization code must be entered ('859 Reexam Cert. 2:1-2, 2:31-32); (2) a clerk authorization code must be entered by a clerk ('859 Reexam Cert. 2:3-4, 2:33-34; D.I. 61 at 20-21); and (3) a general authorization code must be entered through a keypad ('859 patent at 10:3-5, 11:11-13). Claims 20 and 29 also require the step of “entering confirmation of the sales transaction data by a customer.” ('859 patent at 9:66-67, 11:6— 7). The written description in the '859 patent, however, does not disclose any one method that includes all three of the code entering steps or any one method that includes all three of the code entering steps and the sales transaction data confirmation step. Therefore, I will grant SVS’s Motion for Partial Summary Judgment of Invalidity of Claims 20, 22-31, and 33-38 Due to Lack of Written Description (D.1.167).

1. CAT’s Objections

Despite the amendment of claims 20 and 29 during reexamination, CAT objects to this Court raising sua sponte the potential invalidity of claims 20 and 29 of the '859 patent for failing to meet the written description requirement of 35 U.S.C. § 112, ¶ 1. It argues that SVS has waived that issue under Federal Rule of Civil Procedure 8(c) by failing to plead it in SVS’s original complaint. CAT further asserts that it was improper for me to grant leave to SVS to amend its complaint to include the allegation that claims 20 and 29 of the '859 patent are invalid under § 112, ¶ 1. (D.I. 144, 148.) Since all of this additional labor has been a result of CAT’s decision to amend its claims during reexamination, it takes some chutzpah to mount those objections, but I will address them.

a. Under Rule 56(f), It Was Proper to Invite a Summary Judgment Motion on the Written Description Issue and to Rule on that Motion

Contrary to CAT’s objection, it was proper under Federal Rule of Civil Procedure 56(f) to raise the written description issue sua sponte. The newly amended Rule 56(f) provides that “[ajfter giving notice and a reasonable time to respond, the court may.... grant [a] motion [for summary judgment] on grounds not raised by a party; or ... consider summary judgment on its own after identifying for the parties material facts that may not be genuinely in dispute.” Fed. R. CiV. P. 56(f). The Committee’s Notes explain the scope, content, and purpose of that amendment to the Rules in more detail:

Subdivision (f) brings into Rule 56 text a number of related procedures that have grown up in practice. After giving notice and a reasonable time to respond the court may grant summary judgment ... on legal or factual grounds not raised by the parties; or consider summary judgment on its own. In many cases it may prove useful first to invite a motion ....

Fed. R. Civ. P. 56(f) Advisory Committee’s Notes (2010) (emphasis added). The written description issue was a legal ground not raised by either party, and I invited a summary judgment motion on it. By the plain language of Rule 56, it was well within the power and discretion provided by Rule 56 to raise the written description issue sua sponte. Fed.R.Civ.P. 56(f).

Because CAT was given ample “notice and opportunity to respond” to the potential invalidity of claims 20 and 29 for failing to meet the written description requirement of § 112, ¶ 1,1 can now properly rule on the invited motion. At my request (D.I. 138), the parties filed opening, answering, and reply briefs addressing whether the '859 patent’s written description is adequate under 35 U.S.C. § 112, ¶ 1 (D.I. 143, 144, 145, 146, 148, 149, 168, 171, 172). Oral argument on that issue was held on March 25, 2011. (D.I. 159.) Additional expert discovery was completed on the issue. (D.I. 154, 155, 156, 157, 160, 161). Another round of briefing was permitted after that discovery in order to allow the parties to address the adequacy of the written description of the '859 patent in briefing that would benefit from that expert discovery. (D.I. 168, 171, 172). Moreover, the timing of the discovery and briefing that followed oral argument matched that which CAT represented to the Court would eliminate any possible prejudice and provide adequate time for it to address the adequacy of the written description for claims 20 and 29 of the '859 patent. (D.I. 159, transcript of March 25, 2011 hearing, 74:14-21 (“THE COURT: But in terms of prejudice ... is there anything else that would have to happen besides that two months to open the record ... MR. PETERSON: Your Honor, not that I can think of as far as-you know, it can be done, your Honor....”).) Thus, given the additional discovery and briefing, CAT has not been prejudiced by my raising the written description issue, ruling on SVS’s invited summary judgment motion is appropriate. See Fed.R.Civ.P. 56(f); see also Ultra-Precision Mfg., Ltd. v. Ford Motor Co., 411 F.3d 1369, 1376-77 (Fed.Cir.2005). (affirming a district court’s allowance of a federal patent law preemption affirmative defense that was invoked for the first time in a defendant’s motions in limine, after the district court had raised the issue sua sponte in denying defendant’s motion for summary judgment and permitted the parties to submit briefing and participate in oral argument on the issue).

b. SVS Has Not Waived the Written Description Issue Under Rule 8(c)

CAT asserts that 35 U.S.C. § 282(3) requires defenses involving the validity or infringement of a patent to be pleaded. CAT points out that the Federal Circuit held in a non-precedential opinion, Bradford Co. v. Jefferson Smurfit Corp., 2001 WL 35738792, *9 (Fed.Cir. Oct. 31 2001), that § 282(3) is the “patent statute’s analogy” to Federal Rule of Civil Procedure 8(c). (D.I. 146 at 3.). Therefore, as CAT sees it, SVS’s failure to raise a 35 U.S.C. § 112, ¶ 1 claim in its original pleadings precludes it from asserting that claim now. See Systems, Inc. v. Bridge Elecs. Co., 335 F.2d 465, 466 (3d Cir.1964) (“An affirmative defense which is neither pleaded as required by Rule 8(c) nor made the subject of an appropriate motion under Rule 12(b) is waived.”).

Assuming that the strictures of Rule 8(c) apply, I conclude that SVS has not waived its written description argument. “Regional circuit law governs the question of waiver of a defense.” Ultra-Precision, 411 F.3d at 1376 (Fed.Cir.2005). “Courts in [the Third] Circuit ... have taken a more forgiving approach to parties who fail to raise affirmative defenses in an answer, as courts have held that the failure to raise an affirmative defense by responsive pleading or appropriate motion does not always result in waiver.” Sultan v. Lincoln Nat’l Corp., 2006 WL 1806463, at *13 (D.N.J. June 30, 2006) (citing Prinz v. Greate Bay Casino Corp., 705 F.2d 692 (3d Cir.1983)).

Under Fed.R.Civ.P. 15(a), a responsive pleading may be amended at any time by leave of court to include an affirmative defense, and leave shall be freely given when justice so requires. Unless the opposing party will be prejudiced, leave to amend should generally be allowed .... It has been held that a defendant does not waive an affirmative defense if [h]e raised the issue at a pragmatically sufficient time, and [the plaintiff] was not prejudiced in its ability to respond.

Charpentier v. Godsil, 937 F.2d 859, 863-64 (3d Cir.1991) (internal quotation marks and citations omitted); see also Chainey v. Street, 523 F.3d 200, 210 n. 5 (3d Cir.2008) (“The purpose of requiring the defendant to plead available affirmative defenses in his answer is'to avoid surprise and undue prejudice by providing the plaintiff with notice and an opportunity to demonstrate why the affirmative defense should not succeed.”); Cetel v. Kirwan Fin. Grp., Inc., 460 F.3d 494, 506 (3d Cir.2006) (stating that “affirmative defenses can be raised by motion, at any time (even after trial), if plaintiffs suffer no prejudice”). To determine if an affirmative defense has been waived:

[T]he District Court must exercise its discretion and determine whether there was a reasonable modicum of diligence in raising the defense. The District Court must also consider whether the plaintiff has been prejudiced by the delay. ... In particular, the Court must inquire whether the defendants violated any scheduling orders in raising the defense for the first time in their summary judgment motions, whether they delayed asserting the defense for tactical purposes or any improper reason, and, most important, whether the delay prejudiced the plaintiff’s case.

Eddy v. Virgin Islands Water and Power Auth., 256 F.3d 204, 210 (3d Cir.2001) (reversing and remanding a District Court’s holding that a defendant had waived the affirmative defense of qualified immunity by raising it for the first time on summary judgment).

Here, SVS did not fail to raise the written description issue to gain a tactical advantage; CAT has not been prejudiced by SVS’s failure to raise the issue in the original complaint; and justice requires that this Court find the claim has not been waived. I, not SVS, raised the written description issue for the first time, and I did so based on CAT’s amendment of the patent. (D.I. 138). SVS could not have predicted for tactical purposes that I would raise the issue. Because of the additional discovery and briefing I ordered, CAT has had a full opportunity to address the written description issue here. Again, it was CAT’s actions during the ex parte reexamination of the '859 patent, which concluded more than a year after the filing of the original complaint, that has created the written description problem now at issue. Thus, it would be unjust to say that SVS has waived its right to assert that claims 20 and 29 of the '859 patent are invalid under § 112, ¶ 1. See, e.g., Ultra-Precision, 411 F.3d at 1376-77; Kleinknecht v. Gettysburg College, 989 F.2d 1360, 1373-74 (3d Cir.1993) (considering immunity defense under Pennsylvania’s Good Samaritan law that defendant raised for the first time in its summary judgment motion); Charpentier, 937 F.2d at 864 (permitting a New Jersey Tort Claims Act-based immunity affirmative defense raised for the first time by a defendant who joined a co-defendant’s trial brief).

c. It Was Proper for the Court to Grant Leave to SVS to Amend Its Complaint

Pleadings may be amended at any time before trial with leave of court, which should be provided freely “when justice so requires.” Fed.R.Civ.P. 15(a). Here, as discussed above, justice requires that SVS be permitted to amend, since CAT took actions after the filing of the original complaint that created the grounds for SVS to amend. The amendment to the complaint here, however, also is effectively a change to the scheduling order in this case, which provided that amendments to pleading be completed by December 10, 2009. (D.I. 16 at 3.) Motions to amend which operate to change the scheduling order must comply not only with Rule 15(a) but also with Federal Rule of Civil Procedure 16(b). E. Minerals & Chems. Co. v. Mahan, 225 F.3d 330, 340 n. 18 (3d Cir.2000). Rule 16(b)(4) requires consent of the Court and that good cause exist before amending a scheduling order. Fed. R. Crv. P. 16(b)(4). Whether a party sought amendment of the pleading in a diligent and timely manner is properly considered by the Court when determining if good cause exists. Samick Music Corp. v. Delaware Music Indus., Inc., 1992 WL 39052, at *6-7 (D.Del. Feb. 12, 1992). The decision to permit amendment, however, rests squarely with the discretion of the Court. Mahan, 225 F.3d at 339-40.

In this case, good cause exists. CAT’s amendments to claims 20 and 29 came after the deadline for amending pleadings under the scheduling order had already passed. {See D.I. 16; Ex Parte Reexamination Certificate No. U.S. 6,032,859 Cl, October 5, 2010, Reexamination Request No. 90/009,459, April 30, 2009.) The timing of the amendments made during reexamination and the interest of judicial efficiency weigh in favor of finding good cause to grant SVS leave to amend its pleading to include the averment that claims 20 and 29 of the '859 patent are invalid under 35 U.S.C. § 112, ¶ 1.

2. Written Description Analysis

Independent claims 20 and 29, and the claims that depend from them, fail to meet the written description requirement in 35 U.S.C. § 112, ¶ 1. As noted above, after reexam, independent claims 20 and 29 require three separate and distinct authorization codes to be entered: (1) a customer authorization code must be entered ('859 Reexam Cert. 2:1-2, 2:81-32); (2) a clerk authorization code must be entered by a clerk ('859 Reexam Cert. 2:3-4, 2:33-34; D.I. 61 at 20-21); and (3) a general authorization code must be entered through a keypad ('859 patent at 10:3-5, 11:11-13). Claims 20 and 29 also require the step of “entering confirmation of the sales transaction data by a customer.” ('859 patent at 9:66-67, 11:6-7). However, I cannot discern in the '859 patent any method that includes all three of the code entering steps or any one method that includes all three of the code entering steps and the sales transaction data confirmation step.

The written description of the '859 patent consists almost exclusively of detailed descriptions of five preferred embodiments of the claimed methods which, along with the accompanying figures, provide the sole references outside of the claims to authorization codes. Those preferred embodiments are methods for processing: (1) ATMTDebit purchase transactions; (2) phone card purchase transactions; (3) cellular telephone purchase (i.e., activation) transactions; (4) prepaid debit purchase transactions; and (5) hybrid prepaid debit/phone card purchase transactions. The following is a list of the relevant claimed steps disclosed and not disclosed in the written description for each of those preferred methods. As outlined, each embodiment is missing at least one of the required elements of claims 20 and 29.

a. ATM/Debit Transactions

Relevant steps disclosed:

1. Customer authorization code must be entered: customer enters PIN number. (3:34.)

2. Sales transaction data confirmation by a customer: “customer will have the option to confirm” (3:36)

Relevant steps not disclosed:

1. Clerk authorization code must be entered by a clerk.

2. General authorization code must be entered through a keypad.

b. Phone Card Transactions

Relevant steps disclosed:

1. Customer authorization code must be entered.

a. Once paid, customer or clerk swipes phone card through the reader to read the encoded account number which can be magnetic stripe, bar code, OCR characters, or chip based card memory. (3:67-4:10.) Pursuant to the claim construction opinion adopted by this Court, reading the account number on the card might be read as entering a customer authorization code. (See D.I. 61 at 16-20.)

2. Clerk authorization code must be entered by a clerk: clerk enters and confirms collected amount for payment with “an authorization number.” (4:10-12.)

Relevant steps not disclosed:

1. General authorization code must be entered through a keypad.

2.Customer confirmation of sales amount. In this preferred embodiment, the clerk, not the customer, confirms sales transaction data. (4:11-12.)

c.Cellular Phone Activation Transactions

Relevant steps disclosed:

1.Clerk authorization code must be entered by a clerk: the clerk is prompted to collect amount and confirm that it was collected by entering an authorization code on the remote keypad. (4:66-5:1.)

Relevant steps not disclosed:

1. Customer authorization code must be entered.

2. General authorization code must be entered through a keypad.

3. Sales transaction data confirmation by a customer.

d.Prepaid Debit Transactions

Relevant steps disclosed:

1. None.

Relevant steps not disclosed:

1. Clerk authorization code must be entered by a clerk.

2. Customer authorization code must be entered.

3. General authorization code must be entered through a keypad.

4. Sales transaction data confirmation by a customer.

e.Hybrid Prepaid Debit/Phone Card Transactions

Relevant steps disclosed:

1. Clerk authorization code must be entered by a clerk. A decision is made to add value to card or not (7:12-13):

a. “If no value is to be added to the card and a purchase is to be made 412, the clerk enters the amount of the purchase and activates the system for transmitting.” (7:19-21, emphasis added.) The clerk might “activate the system” with a code.

b. “If value is to be added, an amount is selected 404, payment is made to the clerk wherein the clerk confirms that payment has been made 406.” (7:13-15, emphasis added.) The clerk migh