Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 34
`
` Entered: February 16, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MASTERCARD INTERNATIONAL INC.,
`Petitioner,
`
`v.
`
`JOHN D’AGOSTINO,
`Patent Owner.
`____________
`
`Case IPR2014-00543 (Patent 8,036,988 C1)
`Case IPR2014-00544 (Patent 7,840,486 C1)
`____________
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, AND
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`ORDER
`Authorization to File Additional Briefing
`37 C.F.R. § 42.5
`
`

`

`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 C1)
`
`
`The Board held a conference call with Petitioner and Patent Owner on
`February 15, 2017. Petitioner and Patent Owner jointly request that (1) IPR2014-
`00543 and IPR2014-00544 are consolidated, as was handled by the United States
`Court of Appeals for the Federal Circuit, and (2) authorization to submit additional
`briefing, from both Petitioner and Patent Owner, in light of the decision by the
`United States Court of Appeals for the Federal Circuit in John D’Agostino v.
`MasterCard International Incorporated, 844 F.3d 945 (Fed. Cir. 2016). Petitioner
`and Patent Owner specifically request additional briefing to explain how, if at all,
`the decision impacts the application of the prior art on the “single merchant”
`limitation and the “one or more merchants” limitation. Petitioner and Patent Owner
`request fifteen pages of additional briefing. Petitioner and Patent Owner suggest
`that briefing can be submitted in a staggered format or submitted simultaneously.
`Petitioner and Patent Owner jointly submit that the additional briefing will not
`include any new evidence and Patent Owner requests that the briefing provide
`citations to already submitted papers to ensure no new evidence or arguments are
`submitted.
`We grant both Petitioner’s and Patent Owner’s requests. IPR2014-00543 and
`IPR2014-00544 will be consolidated on remand. Petitioner and Patent Owner are
`reminded, however, to submit the consolidated filings to both IPR2014-00543 and
`IPR2014-00544 on the Patent Trial and Appeal Board electronic system. Petitioner
`is authorized to submit additional briefing, not to exceed fifteen pages, which will
`include citations to the previously existing record where the argument or evidence
`was originally introduced, due by Monday, March 13, 2017. Patent Owner is
`authorized to submit a response to Petitioner’s briefing, not to exceed fifteen pages,
`which will include citations to the previously existing record where the argument or
`evidence was originally introduced, due by Monday, March 27, 2017. Petitioner is
`
`
`
`2
`
`

`

`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 C1)
`
`further authorized to submit a reply to Patent Owner’s response, not to exceed five
`pages, which will include citations to the previously existing record where the
`argument or evidence was originally introduced, due on Monday, April 10, 2017.
`All briefing submitted by Petitioner and Patent Owner shall not include any new
`evidence and is limited to addressing the effect of the Federal Circuit’s decision on
`our Final Written Decision.
`
`
`Order
`
`It is
`ORDERED that Petitioner’s and Patent Owner’s joint request to consolidate
`IPR2014-00543 and IPR2014-00544 is granted;
`FURTHER ORDERED that Petitioner’s and Patent Owner’s joint request to
`submit additional briefing is granted;
`FURTHER ORDERED that Petitioner is authorized to file additional
`briefing, where Petitioner’s briefing shall not exceed fifteen pages, shall not include
`any new evidence and is limited to addressing the effect of the Federal Circuit’s
`decision on our Final Written Decision, and is due no later than March 13, 2017;
`FURTHER ORDERED that Patent Owner is authorized to file a response to
`Petitioner’s additional briefing, where Patent Owner’s reply shall not exceed fifteen
`pages, shall not include any new evidence and is limited to addressing the effect of
`the Federal Circuit’s decision on our Final Written Decision and responding to
`Petitioner’s arguments, and is due no later than March 27, 2017; and
`FURTHER ORDERED that Petitioner is authorized to file a reply to Patent
`Owner’s response, where Petitioner’s reply shall not exceed five pages, shall not
`include any new evidence and is limited to responding to Patent Owner’s additional
`briefing, and is due no later than April 10, 2017.
`
`
`
`3
`
`

`

`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 C1)
`
`PETITIONER:
`
`Robert Scheinfeld
`robert.scheinfeld@bakerbotts.com
`
`Eliot Williams
`eliot.williams@bakerbotts.com
`
`PATENT OWNER:
`
`Stephen Lewellyn
`s.lewellyn@maxeyiplaw.com
`
`Brittany Maxey
`b.maxey@maxeyiplaw.com
`
`
`
`
`4
`
`