UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`D’AGOSTINO, JOHN
`Patent Owner
`
`________________
`
`
`
`Case CBM2013-00057
`Patent 8,036,988
`
`________________
`
`Before PATRICK E. BAKER, Trial Paralegal
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`

`
`Case CBM2013-00057
`Patent 8,036,988
`
`INTRODUCTION ........................................................................................... 1
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................. iv
`
`LIST OF EXHIBITS ............................................................................................... vi
`
`I.
`
`II. BACKGROUND ............................................................................................. 2
`
`A. Overview of the ‘988 Patent ...................................................................... 2
`
`B. Status of Pending District Court Action ..................................................... 4
`
`III. STATEMENT OF REQUESTED RELIEF ..................................................... 5
`
`IV. STATEMENT OF REASONS WHY THE COVERED
`BUSINESS METHOD REVIEW SHOULD BE DENIED ............................. 5
`
`A. MasterCard’s proposed claim constructions ............................................. 5
`
`B. The effective filing date of the ‘988 patent ............................................... 8
`
`C. Flitcroft is not available as prior art against the ‘988 patent .................... 8
`
`
`1. Flitcroft’s priorty claim ....................................................................... 9
`
`2. Flitcroft’s prosecution history ............................................................. 9
`
`3. The Flitcroft’s provisional applications do not provide
`written description support for the claimed invention ...................... 11
`
`
`D. Even if Flitcroft was entitled priority to the Flitcroft provisional
`applications, Flitcroft does not antedate at least one material
`limitation of all the independent claims of the ‘988 patent .................... 16
`
`E. The Ex Parte Reexamination of the ‘988 patent ..................................... 18
`
`
`1. Status of the reexamination of the ‘988 patent .................................. 18
`
`2. Reexamination of claim 21 of the ‘988 patent should not
`have been ordered ............................................................................. 18
`
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`Patent 8,036,988
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`3. The more likely than not burden for granting a covered business
`method review is greater than the substantial new question of
`patentability standard for granting an ex parte reexamination ........ 24
`
`F. Cohen does not disclose a material limitation of all the
`independent claims of ‘988 patent .......................................................... 25
`
`
`
`1. Cohen does not disclose a material limitation of independent
`claims 1, 17, 19, and 22 ..................................................................... 25
`
`2. Cohen does not disclose a material limitation of independent
`Claim 21 ............................................................................................ 28
`
`G. All of the ‘988 patent claims are definite under 35 U.S.C. § 112 ........... 29
`
`
`1. The term “one or more merchants” is definite and supported
`by the specification of the ‘988 patent ............................................... 31
`
`2. The term “a number of transactions” is definite and supported
`by the specification of the ‘988 patent ............................................... 32
`
`V. CONCLUSION .............................................................................................. 34
`
`
`
`iii
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`Case CBM2013-00057
`Patent 8,036,988
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Avery Dennison Corp. v. Whitlam Label Co., Inc.,
`2003 U.S. Dist. LEXIS 27836 (N.D. Ohio, Sept. 24, 2003) ............................. 33
`
`
`Bradford Co. v. Afco Mfg., et al.,
`2006 U.S. Dist. LEXIS 88547 (S.D. Ohio, Dec. 5, 2006) ................................ 33
`
`
`Datamize, LLC v. Plumtree Software, Inc.,
`417 F.3d 1342 (Fed. Cir. 2005) .................................................................. 29, 30
`
`
`Exxon Research & Eng’g Co. v. United States,
`265 F.3d 1371 (Fed. Cir. 2001) ........................................................................ 29
`
`
`In re Giacomini,
`
`612 F.3d 1380 (Fed. Cir. 2010) .......................................................................... 8
`
`Lawler Manufacturing Co., Inc. v. Bradley Corp., et al.,
`
`2000 U.S. Dist. LEXIS 4027 (N.D. Ill. March 29, 1996) ................................. 33
`
`Oakley, Inc. v. Sunglass Hut Int'l,
`
`316 F.3d 1331, 1340–41 (Fed.Cir.2003) .......................................................... 30
`
`Performance Aftermarket Parts Group Inc., et al. v. TI Group Auto. Sys., Inc.,
`2006 U.S. Dist. LEXIS 92686 (S.D. Tex., Dec. 22, 2006) ............................... 33
`
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1314 (Fed.Cir.2005) (en banc) ................................................ 30
`
`Statutes
`
`35 U.S.C. § 102 ............................................................................................... passim
`
`35 U.S.C. § 103 ........................................................................................................ 1
`
`35 U.S.C. § 119(e) .................................................................................................... 8
`
`35 U.S.C. § 120 ........................................................................................................ 1
`
`35 U.S.C. § 324(a) .................................................................................................... 1
`
`iv
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`Case CBM2013-00057
`Patent 8,036,988
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`35 U.S.C. § 325(d).................................................................................................. 26
`
`Rules
`
`Transitional Program for Covered Business Method Patents,
`
`77 Fed. Reg. 48,739 (Aug. 14, 2012) (codified 37 C.F.R. pt. 42) ...................... 7
`
`Other Authorities
`
`Message from Chief Judge James Donald Smith,
` USPTO Discusses Key Aspects of New Administrative Patent Trials,
`
`http://www.uspto.gov/aia_implementation/smith-blog-extravaganza.jsp
`
`(last visited Dec. 18, 2013) ............................................................................... 24
`
`v
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`
`
`LIST OF EXHIBITS RELIED ON FOR
`THIS PRELIMINARY RESPONSE
`
`Exhibit 2001 – File History for U.S. Patent No. 6,636,833
`
`Exhibit 2002 – U.S. Provisional Application No. 60/092,500
`
`Exhibit 2003 – U.S. Provisional Application No. 60/098,175
`
`Exhibit 2004 – U.S. Provisional Application No. 60/099,614
`
`Exhibit 2005 – Nov. 11, 2013 Patent Owner’s Response in Reexamination
` No. 90/012,517
`
`vi
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`Case CBM2013-00057
`Patent 8,036,988
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`I.
`
`INTRODUCTION
`
`
`
`MasterCard’s petition for covered business method review of U.S. Patent No.
`
`8,036,988 (“the ‘988 patent”) should be denied because MasterCard has not met its
`
`threshold burden that it is more likely than not that at least one of the challenged
`
`claims is unpatentable. 1
`
`
`
`As part of its burden, MasterCard must demonstrate that the asserted references
`
`antedate the earliest effective filing date of each material limitation of the challenged
`
`claims.2 MasterCard challenges all of the independent claims as being anticipated by
`
`U.S. Patent No. 6,636,833 (“Flitcroft”). But Flitcroft is not available as prior art
`
`against the ‘988 patent because its priority claim is defective.
`
`
`
`Similarly, as part of its burden, MasterCard must demonstrate that each material
`
`limitation of all challenged independent claims is found in the asserted references.
`
`MasterCard challenges all of the independent claims as being anticipated by U.S.
`
`Patent No. 6,422,462 (“Cohen”). But Cohen does not disclose at least one material
`
`limitation found in all of the challenged independent claims.
`
`
`1 35 U.S.C. § 324(a) (“The Director may not authorize a post-grant review to be
`
`instituted unless the Director determines that the information presented in the petition
`
`filed under section 321, if such information is not rebutted, would demonstrate that it
`
`is more likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable”).
`
`2 35 U.S.C §§ 102, 103, 120.
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`1
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`
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`Thus, MasterCard has not demonstrated that it is more likely than not that at
`
`least one claim of the ‘988 patent is unpatentable and its Petition should be denied.
`
`
`II. BACKGROUND
`
`A. Overview of the ‘988 Patent.
`
`The ‘988 patent is owned by John D’Agostino, a private individual and the only
`
`
`
`
`
`inventor of the invention protected by the ‘988 patent. The ‘988 patent is directed
`
`toward an invention for solving security problems associated with making credit card
`
`purchases. The invention provides a customer with a custom-use transaction code to
`
`make credit card purchases that fall within certain limitation(s) of a payment category.
`
`The payment category includes limiting parameters that limit use of the transaction
`
`code. For example, the transaction code can be limited for use at single merchant or
`
`one or more merchants or can be limited by other factors, such as limiting the number
`
`of times the transaction code can be used or by limiting a purchase amount. The claims
`
`of the ‘988 patent are directed to a method of performing secure credit card purchases.
`
`Independent claims 1 and 21 are representative and are set forth in full below:
`
`1. A method of performing secure credit card purchases, said method
`
`comprising:
`
`
`
`a) contacting a custodial authorizing entity having custodial
`
`responsibility of account parameters of a customer's account that is used
`
`to make credit card purchases;
`
`
`
`b) supplying said custodial authorizing entity with at least
`
`account identification data of said customer's account;
`
`
`
`c) defining at least one payment category to include at least
`
`limiting a number of transactions to one or more merchants, said one or
`
`2
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`more merchants limitation being included in said payment category
`
`prior to any particular merchant being identified as one of said one or
`
`more merchants;
`
`
`
`
`
`d) designating said payment category;
`
`e) generating a transaction code by a processing computer of said
`
`custodial authorizing entity, said transaction code reflecting at least the
`
`limits of said designated payment category to make a purchase within
`
`said designated payment category;
`
`
`
`f) communicating said transaction code to a merchant to
`
`consummate a purchase with defined purchase parameters;g) verifying
`
`that said defined purchase parameters are within said designated
`
`payment category; and
`
`
`
`h) providing authorization for said purchase so as to confirm at
`
`least that said defined purchase parameters are within said designated
`
`payment category and to authorize payment required to complete the
`
`purchase.
`
`
`
`21. A method for implementing a system for performing secure credit
`
`card purchases, the method comprising:
`
`
`
`a) receiving account information from an account holder
`
`identifying an account that is used to make credit card purchases;
`
`
`
`b) receiving a request from said account holder for a transaction
`
`code to make a purchase within a payment category that at least limits
`
`transactions to a single merchant, said single merchant limitation being
`
`included in said payment category prior to any particular merchant
`
`being identified as said single merchant;
`
`
`
`c) generating a transaction code utilizing a processing computer
`
`of a custodial authorizing entity, said transaction code associated with
`
`said account and reflecting at least the limits of said payment category,
`
`to make a purchase within said payment category;
`
`
`
`
`
`d) communicating said transaction code to said account holder;
`
`e) receiving a request to authorize payment for a purchase using
`
`said transaction code;
`
`
`
`f) authorizing payment for said purchase if said purchase is
`
`within said payment category.
`
`3
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`
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`Independent claims 1 and 21 are similar except independent claim 1 recites:
`
`“defining at least one payment category to include at least limiting a number of
`
`transactions to one or more merchants, said one or more merchants limitation being
`
`included in said payment category prior to any particular merchant being identified as
`
`one of said one or more merchants.”
`
`
`
`Whereas, independent claim 21 recites a narrower single merchant limitation:
`
`“receiving a request from said account holder for a transaction code to make a
`
`purchase within a payment category that at least limits transactions to a single
`
`merchant, said single merchant limitation being included in said payment category
`
`prior to any particular merchant being identified as said single merchant.”
`
`
`B. Status of Pending District Court Action.
`
`On April 26, 2013, D’Agostino filed an action against MasterCard in the United
`
`
`
`
`
`
`States District Court for the District of Delaware, 1:2013-cv-00738. D’Agostino
`
`sought to protect his intellectual property rights against MasterCard. On October 8,
`
`2013 the action was stayed pending resolution of MasterCard’s petition for covered
`
`business method review.
`
`
`
`
`
`4
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`III. STATEMENT OF RELIEF REQUESTED
`
`In opposing MasterCard’s request for covered business method review,
`
`
`
`D’Agostino requests the following relief:
`
`1. A finding that Flitcroft is not available as prior art against the ‘988 patent;
`
`2. A finding that MasterCard’s petition fails to demonstrate that it is more
`
`likely than not that any claim of the ‘988 patent is unpatentable;
`
`3. A finding that the ‘988 patent claims are definite; and
`
`4. Complete denial of MasterCard’s petition.
`
`
`IV. STATEMENT OF REASONS WHY THE COVERED BUSINESS
`METHOD REVIEW SHOULD BE DENIED
`
`
`
`
`
`A. MasterCard’s proposed claim constructions.
`
`For the purpose of the Patent Owner’s Preliminary Response, D’Agostino
`
`disputes MasterCard’s proposed claim construction of “[limiting/limits]…to one or
`
`more merchants” as being overly broad. The correct meaning is [limiting/limits] to a
`
`certain quantity of merchants that is finite in number. This meaning is consistent with
`
`the specification which explains:
`
`The payment category may also include a multi-transaction authorization
`
`wherein more than one purchase may be made from one or a plurality of
`
`different merchants, each of which may or may not be identified by the
`
`customer and pre-coded in association with the transaction code…and/or
`
`5
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`can designate that only one merchant, whether designated or not, can use
`
`the transaction code.3
`
`
`The statement that a purchase may be made from “one or a plurality of different
`
`
`
`merchants” immediately followed by “each of which may or may not be identified”
`
`supports that “one or more merchants” is properly construed to mean “a certain
`
`quantity of merchants” that is “finite in number.” This finding is further supported by
`
`the fact the specification does not suggest that “one or more merchants” could be
`
`construed to mean an entire industry of merchants (e.g., a type of merchant or all
`
`conceivable merchants that fall within a type of charge limitation).
`
`
`
`MasterCard relies on Grimes to support its claim construction.4 In his
`
`declaration, Grimes states: “…my best understanding of the meaning of the term is
`
`‘limiting…to a number of merchants, from one merchant up to any plurality of
`
`merchant.”5 Initially, the proposed construction proffered by Grimes is based on his
`
`understanding, rather than the understanding of a person of ordinary skill in the art.
`
`Additionally, Grimes’ proposed construction is conclusionary at best because it merely
`
`cites to the ‘988 specification without providing any reasoning that supports the
`
`
`3 Exh. 1001, the ‘988 patent at 8:17-34 (emphasis added).
`
`4 Pet. at 13.
`
`5 Exh. 1008, Grimes Dec. at ¶ 24.
`
`6
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`construction. And because of this, the Board should give no weight to Grimes’
`
`construction.6
`
`
`
`Rather, if a covered business method review is granted on the ‘988 patent, the
`
`Board should adopt D’Agostino’s proposed construction that one or more merchants
`
`means a certain quantity of merchants that is finite in number, which is consistent with
`
`the specification of the ‘988 patent.
`
`
`
`Concerning MasterCard’s remaining proposed constructions, for the purpose of
`
`the Patent Owner’s Preliminary Response, D’Agostino does not dispute these proposed
`
`claim constructions because MasterCard’s petition for covered business method review
`
`must be denied even under MasterCard’s own constructions. However, nothing in this
`
`preliminary response should be interpreted as an agreement with the constructions
`
`proposed by MasterCard. D’Agostino reserves the opportunity to submit accurate
`
`claim constructions in the event that a covered business method review of the ‘486
`
`
`
`patent is granted.
`
`
`
`
`
`
`
`
`6 See Transitional Program for Covered Business Method Patents, Fed. Reg. 48,739
`
`(Aug. 14, 2012) (codified at 37 C.F.R. pt. 42) (“Opinions expressed without
`
`disclosing the underlying facts or data may be given little to no weight, Rohm & Haas
`
`Co v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal
`
`Rules of Evidence or Federal Circuit jurisprudences requires the fact finder to credit
`
`unsupported assertions of an expert witness)”).
`
`7
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`B. Effective Filing Date of the ‘988 Patent.
`
`The ‘988 patent matured from Application No. 12/902,399, filed October 12,
`
`
`
`
`
`2010, which is a family member of and has priority to Application No. 09/231,745,
`
`filed January 15, 1999. All of the claims of the ‘988 patent are supported by the
`
`January 15, 1999 filing.7 Thus, the effective filing date of the ‘988 patent is January
`
`15, 1999. MasterCard does not challenge the January 15, 1999 effective filing date of
`
`the ‘988 patent.
`
`
`C. Flitcroft is not available as prior art against the ‘988 Patent.
`
`For the purpose of establishing an effective prior art date, it is long settled that
`
`
`
`
`
`
`“[a]n application that a patent was ‘granted on’ is the first U.S. application to disclose
`
`the invention claimed in the patent.”8 A non-provisional application claiming benefit
`
`of an early filed provisional application may be available as prior art under 35 U.S.C. §
`
`102(e) as of the filing date of the provisional application only if “the provisional
`
`application provide[s] written description support for the claimed invention.”9
`
`
`
`Flitcroft is not available as prior art under 35 U.S.C. § 102(e) against the ‘486
`
`patent because the provisional applications from which Flitcroft claims priority do not
`
`provide written description support for Flitcroft’s claimed invention.
`
`
`7 35 U.S.C. § 119(e).
`
`8 In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (quoting In re Klesper, 55
`
`CCPA 1264, 397 F.2d 882, 855-86 (1968)); 35 U.S.C. § 102(e).
`
`9 Id.
`
`8
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`1. Flitcroft’s priority claim.
`
`
`
`Flitcroft matured from Application No. 09/235,836 (the Flitcroft non-
`
`provisional application), filed January 22, 1999. The ‘836 Application claims benefit
`
`to U.S. Provisional Application Nos. 60/099,614, filed September 9, 1998; 60/098,175,
`
`filed August 26, 1998; and 60/092,500, filed July 13, 1998 (collectively “the Flitcroft
`
`provisional applications”). MasterCard asserts that Flitcroft is supported by and has
`
`priority to the Flitcroft provisional applications. 10
`
`
`2. Flitcroft’s prosecution history.
`
`Following a series of office actions, the Examiner rejected all of the pending
`
`
`
`Flitcroft claims in a non-final office action. Particularly, the Examiner rejected claims
`
`36-39, 43, and 43 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No.
`
`5,883,810 (“Franklin et al.”) in view of U.S. Patent No. 5,893,907 (“Ukuda”). 11
`
`
`
`In response to this rejection, the Flitcroft argued that Franklin et al. does not
`
`teach “a limited use credit card number which is usable for multiple transactions with
`
`a specific merchant as determined by first use,” as recited by claim 36.12 Flitcroft also
`
`
`10 Pet. at 46.
`
`11 Exh. 2001, Flitcroft File History, 3/1/2001 Office Action at 2.
`
`12 Exh. 2001, Flitcroft File History, 8/28/2002 Response to Office Action at 9 (this
`
`limitation is recited by independent claims 9 and 20 of Flitcroft).
`
`9
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`argued that Ukuda did not meet additional limitations recited by claim 36 and that
`
`Ukuda cannot be combined with Franklin et al.13
`
`
`
`Additionally, in the same non-final office action, the Examiner rejected claims
`
`28-35 under 35 U.S.C. § 103(a) as being unpatentable over Franklin et al. in view of
`
`Ukuda, and further in view of U.S. Patent No. 6,188,761 (“Dickerman et al.) and U.S.
`
`Patent No. 5,500,513 (“Langhans et al.”).14
`
`
`
`In response to this rejection, Flitcroft argued that cited references do not teach a
`
`“limited-use credit card number is valid for a predetermined number of payments or
`
`transactions with a single merchant,” as recited by claim 28.15 Flitcroft also argued
`
`that Ukuda, Dickerman et al. and Langhans et al. do not meet additional limitations
`
`recited by claim 28 and that Ukuda, Dickerman et al., and Langhans et al. cannot be
`
`combined with Franklin et al.16
`
`
`
`
`
`In reply, the Examiner issued a Notice of Allowability and stated in the reasons
`
`for allowance:
`
`… the claims are limited are limited as including a conditions database
`
`and processor…where the condition entails the limited use credit card
`
`number is used to implement an installment plan for a transaction where
`
`
`13 Id. at 9-10 (emphasis added).
`
`14 Exh. 2001, Flitcroft File History, 3/1/2000 Office Action at 6.
`
`15 Exh. 2001, Flitcroft File History, 8/2/2002 Response to Office Action at 16
`
`(emphasis added)( this limitation is recited by independent claims 1, 3, 5, 7, and 19 of
`
`Flitcroft).
`
`16 Exh. 2001, Flitcroft File History, 8/2/2002 Response to Office Action at 16-18.
`
`10
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`the credit card number is only valid…to a single merchant as described in
`
`the specification on page 28, lines 15-19 as indicated by the applicant in
`
`the response filed 12/9/99…17
`
`
`In the same Notice of Allowability, the Examiner also stated in the reasons for
`
`
`
`allowance:
`
`The prior art also does not teach the credit card system
`
`comprising…wherein the use of the limited-use credit card number is
`
`valid for transactions with a specific merchant as determined by first
`
`use… The limited-use credit card number is only valid for multiple
`
`transactions with a single merchant determined by first use of the card.18
`
`
`
`
`
`In response to the Examiner’s reasons for allowance, Flitcroft disputed other
`
`reasons for allowance that were stated by the Examiner, but did not dispute the reasons
`
`for allowance being a credit card limited to a “single merchant” or the credit card
`
`limited to “a single merchant determined by first use of the card.”19
`
`
`3. The Flitcroft’s provisional applications do not provide written description
`support for the claimed invention.
`
`
`Flitcroft was issued with seven independent claims, namely independent claims
`
`
`
`1, 3, 5, 7, 9, 19, and 20. Independent claims 1, 3, 5, 7, and 19 each recite “wherein the
`
`
`17 Exh. 2001, Flitcroft File History, 11/8/2002 Notice of Allowability at 2 (emphasis
`
`added).
`
`18 Id. at 3 (emphasis added).
`
`19 See Exh. 2001, Flitcroft File History, 4/18/2003 Comments on Examiners Statement
`
`for Reasons for Allowance.
`
`11
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`limited use credit card number is valid for a number of payments for a transaction with
`
`a single merchant.” The remaining independent claims 9 and 20 each recite “wherein
`
`use of the limited credit card is valid for transactions with a specified merchant as
`
`determined by first use.” Accordingly, all of Flitcroft’s independent claims recite the
`
`limitations that provided the reasons for allowance of Flitcroft.
`
`
`
`However, the Flitcroft provisional applications do not provide written
`
`description support for the “single merchant” limitation of independent claims 1, 3, 5,
`
`7, and 19. And, further, the Flitcroft provisional applications do not provide written
`
`description support for the “specified merchant as determined by first use” of
`
`independent claims 9 and 20.
`
`
`
`Particularly, U.S. Provisional Application No. 60/092,500 (“the ‘500
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`application”) does not disclose a credit card that limits transactions to either a “single
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`merchant” or to a “specified merchant as determined by first use.” Rather, the ‘500
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`application is directed at a system for providing single use credit cards. For example,
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`the closest disclosure found in the ‘500 application is a credit card system for issuing
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`single use credit cards:20
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`20 Exh. 2002, U.S. 60/092,500, Specification at 12:1-5.
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`Similarly, U.S. Provisional Application No. 60/098,175 (“the ‘175
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`application”) does not disclose a credit card that limits transactions to either a “single
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`merchant” or to a “specified merchant as determined by first use.” Rather, the ‘175
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`application is directed at a system for providing single use cards that can be limited for
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`use by a category of merchant. For example, the closest disclosure found in the ‘175
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`application relates only to a category of merchant limitation:21
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`Moreover, U.S. Provisional Application No. 60/099,614 (“the ‘614
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`application”) does not disclose a credit card that limits transactions to either a “single
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`merchant” or to a “specified merchant as determined by first use.” Rather, the ‘614
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`application is directed at a system of providing limited use credit cards that can be
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`21 Exh. 2003, U.S. 60/098,175, Specification at 27:7-10.
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`limited for use by a merchant type or by a category of merchant. For example, the
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`closest disclosure found in the ‘614 application relates only to a merchant type
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`limitation:22
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`And, as an additional example, the closest disclosure found in the ‘614
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`application relates only to a category of merchant:23
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`Indeed, the Flitcroft provisional applications do not disclose a credit card that
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`limits transactions to either a “single merchant” or to a “specified merchant as
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`determined by first use.” Rather, the written description support for these claim
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`22 Exh. 2004, U.S. 60/099,614, Specification at 36:27-28.
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`23 Id. at 34:11-13.
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`limitations was first included on January 22, 1999 and is only found in the
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`specification of the Flitcroft non-provisional application:24
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`Patent 8,036,988
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`Thus, written description support for the claim limitations “wherein the limited
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`use credit card number is valid for a number of payments for a transaction with a
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`single merchant” and “wherein use of the limited credit card is valid for transactions
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`with a specified merchant as determined by first use” is new matter in the Flitcroft
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`application relative to the Flitcroft provisional applications.
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`
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`Accordingly, because the Flitcroft provisional applications do not provide
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`written description support for the invention claimed by Flitcroft, Flitcroft is not
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`entitled to the filing dates of the Flitcroft provisional applications for the purpose of
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`establishing an effective prior art date. Therefore, January 22, 1999 is the only
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`effective prior art date of Flitcroft, which is after the ‘486 patent’s effective filing date
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`24 Exh. 2001, Flitcroft File History, Specification at 28:15-20 (the same written
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`description support indicated by the Examiner in the stated reasons for allowance).
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`of January 15, 1999. So, contrary to MasterCard’s assertion, Flitcroft is not available
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`as prior art under 35 U.S.C. 102(e) against the ‘486 patent and cannot be used as basis
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`to grant a covered business method review of the ‘486 patent.
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`D. Even if Flitcroft was entitled priority to the Flitcroft provisional
`applications, Flitcroft does not antedate at least one material limitation
`of all the independent claims of the ‘988 patent.
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`MasterCard asserts Flitcroft against all of the independent claims 1, 17, 19, 21,
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`and 22 of the ‘988 patent. Flitcroft cannot be used as basis to grant a covered business
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`method review of the ‘988 patent because Flitcroft does not antedate at least one
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`material limitation of all of the independent claims.
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`Independent claim 1 of the ‘988 patent recites “said one or more merchants
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`limitation being included in said payment category prior to any particular merchant
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`being identified as one of said one or more merchants.”25 The same limitation is
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`recited by independent claims 17, 19, and 22.26
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`MasterCard asserts this limitation is met by Flitcroft’s limited-use credit card
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`number being limited to a specific merchant as determined by first use of the credit
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`card.27
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`But, as demonstrated above, the Flitcroft provisional applications do not
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`provide written description support for this disclosure. Rather, the disclosure of
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`25 Exh. 1001, the ‘988 patent at 8:67-9:4 (emphasis added).
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`26 Id. at 10:14-17; 10:45-47; 11:14-17.
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`27 Pet at 46-47.
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`limiting a credit card to a specific merchant as determined by first use was first added
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`to the Flitcroft non-provisional application on January 22, 1999. Thus the earliest
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`possible effective prior art date of this disclosure is January 22, 1999, which is after
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`the ‘988 patent’s effective filing date of January 15, 1999.
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`Independent claim 21 recites “receiving a request from said account holder for a
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`transaction code to make a purchase within a payment category that at least limits
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`transactions to a single merchant, said single merchant limitation being included in
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`said payment category prior to any particular merchant being identified as said single
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`merchant.”28
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`
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`MasterCard asserts that Flitcroft’s limited-use credit card number discloses a
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`limitation to single merchant or limitation to a specific merchant as determined by first
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`use of the credit card number.29
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`
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`But, again, as demonstrated above, the Flitcroft provisional applications do not
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`provide written description support for this disclosure. Rather, the disclosure of
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`limiting a credit card to single merchant or limiting to a specific merchant as
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`determined by first use was first added to the Flitcroft application. Thus the earliest
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`possible effective prior art date of this disclosure is January 22, 1999, which is after
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`the ‘988 patent’s effective filing date of January 15, 1999.
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`28 Exh. 1001, the ‘988 Patent at 11:10-15 (emphasis added).
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`29 Pet at 61-62.
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`E. The Ex Parte Reexamination of the ‘988 patent.
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`1. Status of the reexamination of the ‘988 patent.
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`On November 11, 2013, D’Agostino submitted a Patent Owner’s Response
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`opposing the rejections set forth in the first non-final office action dated September 11,
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`2013.30 As