IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner
`
`––––––––––
`
`Patent No. 8,036,988
`Application No. 12/902,399
`Filed: October 23, 2010
`Issued: October 11, 2011
`Title: System and Method for Performing Secure Credit Card Transactions
`
`––––––––––
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,036,988
`
`
`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
`
`TABLE OF CONTENTS
`
`LIST OF EXHIBITS……………………………………………………………....iii
`
`I. 
`
`II. 
`
`III. 
`
`INTRODUCTION ........................................................................................ 1 
`
`OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................ 2 
`
`BACKGROUND INFORMATION FOR THE ‘988 PATENT .................. 4 
`
`A.  Overview of the ‘988 Patent ........................................................................ 4
`
`B. 
`
`C. 
`
`D. 
`
`The ‘988 Patent Prosecution History ........................................................... 4
`
`The ‘988 Patent Ex Parte Reexamination File History ............................... 5
`
`Patent Owner’s Response to the Ex Parte Reexam Office Action .............. 7
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`
`
`
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`
`
`
`E. 
`
`
`IV. 
`
`Petition for Covered Business Method Patent Review .............................. 11
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`CLAIM CONSTRUCTION ....................................................................... 13 
`
`V. 
`
`THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ............................... 15 
`
`GROUND 1.  Claims 1-10, 15-25, 27-33, & 35-38 are Anticipated Under 35
`U.S.C. § 102 by Cohen ........................................................................ 15
`
`
`GROUND 2.  Claims 11-14, 26 & 34 are Obvious Under 35 U.S.C. § 103 by
`Cohen in View of Musmanno ............................................................. 32
`
`
`GROUND 3.  Claims 1-10, 15-25, 27-33, & 35-38 are Anticipated Under 35
`U.S.C. § 102 by Flitcroft ..................................................................... 36
`
`
`GROUND 4.  Claims 11-14, 26 & 34 are Obvious Under 35 U.S.C. § 103 by
`Flitcroft in View of Musmanno ........................................................... 55
`
`
`GROUND 5.  Claims 1-10, 15-25, 27-33, & 35-38 are Unpatentable under 35
`USC § 103 as Obvious over Cohen in view of a Person of Ordinary
`Skill in the Art ..................................................................................... 57
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`- ii -
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`GROUND 6.  Claims 1-10, 15-25, 27-33, & 35-38 are Unpatentable under 35
`USC § 103 as Obvious over Flitcroft in view of a Person of Ordinary
`Skill in the Art ..................................................................................... 58
`
`MANDATORY NOTICES ........................................................................ 59 
`
`
`VI. 
`
`VII. 
`
`CERTIFICATION OF GROUNDS FOR STANDING ............................. 59 
`
`VIII.  CONCLUSION .......................................................................................... 60 
`
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`- iii -
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`LIST OF EXHIBITS
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`Exhibit 1001 – U.S. Patent No. 8,036,988
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`Exhibit 1002 – File History for U.S. Patent No. 8,036,988
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`Exhibit 1003 – File History for U.S. Reexamination No. 90/012,517
`
`Exhibit 1004 – U.S. Patent No. 6,422,462 (“Cohen”)
`
`Exhibit 1005 – U.S. Patent No. 6,636,833 (“Flitcroft”)
`
`Exhibit 1006 – U.S. Patent No. 5,826,243 (“Musmanno”)
`
`Exhibit 1007 – Complaint in D’Agostino v. MasterCard, Inc. et al. (13-cv-0738)
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`Exhibit 1008 – Declaration of Jack D. Grimes, Ph.D.
`
`Exhibit 1009 – Excerpts from Random House Webster’s Unabridged Dictionary,
`
`Second Edition
`
`Exhibit 1010 – U.S. Patent No. 6,064,987 (“Walker”)
`
`Exhibit 1011 – U.S. Patent No. 5,283,829 (“Anderson”)
`
`Exhibit 1012 – ISO 8583 Financial Transaction Card Originated Messages –
`
`Interchange Message Specifications (1992) (“ISO 8583”)
`
`Exhibit 1013 – File History for U.S. Patent No. 7,840,486
`
`Exhibit 1014 – Patent Trial and Appeal Board’s (“PTAB”) 3/7/14 CBM Decision
`
`for U.S. Patent No. 8,036,988
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`Exhibit 1015 – Patent Owner’s 12/24/13 Preliminary Response to Petitioner’s
`
`Request for CBM Patent Review of the ‘988 Patent
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`Exhibit 1016 – U.S. Provisional App. No. 60/079,884 (“’884 Provisional)
`
`Exhibit 1017 – U.S. Provisional App. No. 60/099,614 (“’614 Provisional)
`
`Exhibit 1018 – U.S. Provisional App. No. 60/098,175 (“’175 Provisional)
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`Exhibit 1019 – U.S. Provisional App. No. 60/092,500 (“’500 Provisional)
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`- v -
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`MasterCard International Incorporated (“Petitioner”) in accordance with 35
`
`U.S.C. § 311 and 37 C.F.R. § 42.100, respectfully requests inter partes review of
`
`claims 1-38 (all claims) of U.S. Pat. No. 8,036,988 (“the ‘988 Patent”), issued to
`
`John D’Agostino (“D’Agostino”), attached hereto as Exhibit 1001. An Ex Parte
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`Reexamination of the ‘988 Patent was filed on September 12, 2012, and is
`
`currently pending under Control No. 90/012,517. For the reasons set forth herein,
`
`Petitioner respectfully requests review of, and judgment against, claims 1-38 as
`
`unpatentable under §§ 102 and/or 103.
`
`I.
`
`INTRODUCTION
`
`The ‘988 Patent attempts to claim the use of a transaction code – in lieu of a
`
`credit card number – for making secure transactions that are limited to a specific
`
`merchant or group of merchants. This was a practice that was common in the
`
`credit card industry before the priority date of the ‘988 Patent. During prosecution,
`
`the ‘988 Patent issued only after the Applicant attempted to distinguish the claims
`
`over the prior art on the basis of the following limitation:
`
`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
`
`However, this limitation does not in fact distinguish the claims of the ‘988
`
`patent from the prior art. The prior art already disclosed the use of credit card
`
`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`transactions that were limited to a particular type of merchant (such as clothing
`
`stores). As the Director of the Central Reexamination Unit stated in a decision
`
`granting the Petition for Ex Parte Reexamination of the ‘988 Patent: “the payment
`
`category [in the prior art] would limit the number of merchants – to, for example,
`
`only clothing stores. At the same time, limiting to ‘clothing stores’ does not
`
`identify any one particular merchant.” See Exh. 1003, ‘988 Patent Reexamination
`
`History, 6/7/13 CRU Decision at 5. In other words, the Applicant had claimed
`
`nothing more than a feature that was inherently disclosed in the prior art.
`
`Accordingly, at least for the same reasons adopted by the Director of the
`
`Central Reexamination Unit and explained in detail below, the prior art invalidates
`
`the ‘988 Patent.
`
`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to § 42.108, Petitioner asserts that every one of the challenged
`
`claims 1-38 of the ‘988 Patent is unpatentable as invalid under §§ 102, and/or 103.
`
`The accompanying Exhibit List lists all prior art references relied upon for the
`
`asserted grounds of invalidity under §§ 102 and/or 103. Petitioner specifically
`
`requests cancellation of the challenged claims on the following statutory grounds:
`
` GROUND 1. Claims 1-10, 15-25, 27-33, & 35-38 are Unpatentable under 35
`
`USC § 102 as Anticipated by Cohen
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` GROUND 2. Claims 11-14, 26, & 34 are Unpatentable under 35 USC § 103 as
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`Obvious over Cohen in view of Musmanno
`
` GROUND 3. Claims 1-10, 15-25, 27-33, & 35-38 are Unpatentable under 35
`
`USC § 102 as Anticipated by Flitcroft
`
` GROUND 4. Claims 11-14, 26, & 34 are Unpatentable under 35 USC § 103 as
`
`Obvious over Flitcroft in view of Musmanno
`
` GROUND 5. To the extent the Board finds that Cohen does not anticipate
`
`claims 1-10, 15-25, 27-33, & 35-38, these claims would be
`
`obvious over Cohen alone, or together with the common sense
`
`and knowledge of a person of ordinary skill in the art
`
` GROUND 6. To the extent the Board finds that Flitcroft does not anticipate
`
`claims 1-10, 15-25, 27-33, & 35-38, these claims would be
`
`obvious over Flitcroft alone, or together with the common sense
`
`and knowledge of a person of ordinary skill in the art
`
`Section V below lists each ground upon which there is a reasonable
`
`likelihood that the challenged claims are unpatentable as anticipated under §§ 102
`
`and/or 103, and presents a detailed explanation therefor. 35 U.S.C. § 314(a).
`
`Grounds 3, 4, and 6 are being presented (in addition to Grounds 1, 2, and 5) in the
`
`event the Board does not accept Petitioner’s construction of “generating [a/said]
`
`transaction code” and adopts a broader, albeit in Petitioner’s view a faulty,
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`alternative construction, both discussed below.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`III. BACKGROUND INFORMATION FOR THE ‘988 PATENT
`A. Overview of the ‘988 Patent
`
`The ‘988 Patent is directed to a secure method for performing credit card
`
`purchases, wherein a customer submits a transaction code, rather than an entire
`
`credit card number to a merchant when making a purchase. Generally, the
`
`customer contacts an authorizing entity, such as a credit card company or issuing
`
`bank, and requests a transaction code. Seemingly, the transaction code can be
`
`limited to purchases within a payment category, such as within a specific period of
`
`time, within a maximum dollar limit, with a specific number of merchants, or with
`
`a specific merchant. The customer can then use the transaction code to make a
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`purchase at a merchant or online.
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`B.
`
`The ‘988 Patent Prosecution History
`
`The claims of the ‘988 Patent issued after only one non-final rejection
`
`during prosecution. The Examiner rejected the claims in the non-final office action
`
`under § 103(a) as unpatentable over U.S. Patent No. 6,000,832 (“Franklin”) in
`
`view of U.S. Patent Publication No. 2001/0011249 (“Yanagihara”). See Exh.
`
`1002, ‘988 Patent File History, 1/14/11 Office Action, at 4.
`
`In response to the non-final office action, the Applicant argued that
`
`independent claim 1 was directed to a method of performing a secure credit card
`
`purchase and includes the step of “defining at least one payment category to
`
`include at least limiting a number of transactions to one or more merchants, said
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`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.”
`
`See Exh. 1002, ‘988 Patent File History, 3/21/11 Response to Office Action, at 13
`
`(emphasis in original). More specifically, the Applicant argued that the claimed
`
`method “does not identify a merchant prior to the generation of the transaction
`
`code.” Id (emphasis added). The Applicant provided similar arguments for the
`
`other pending independent claims. Id, at 14-15.
`
`The Examiner allowed the pending claims noting that he found the
`
`Applicant’s arguments persuasive. More specifically, the Examiner stated in the
`
`reasons for allowance the “uniquely patentable feature” of:
`
`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
`
`See Exh. 1002, ‘988 Patent File History, 4/29/11 Notice of Allowance. The
`
`application subsequently issued as the ‘988 Patent.
`
`C.
`
`The ‘988 Patent Ex Parte Reexamination File History
`
`On September 12, 2012, the Petitioner filed a Request for Ex Parte
`
`Reexamination of the ‘988 Patent, and after an initial decision denying the request,
`
`on January 7, 2013, the Petitioner filed a Petition for Review under 37 C.F.R. §
`
`1.181. On June 7, 2013, the Director of the Central Reexamination Unit granted
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`the Petition for Review and granted the Request for Ex Parte Reexamination for all
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`claims of the ‘988 Patent. In the decision granting the petition, the Director stated:
`
`“in Cohen one can limit the transaction only to a particular type of merchant, such
`
`as computer stores” and further noted that the “card can be limited to use at certain
`
`types of stores, such as clothing stores.” See Exh. 1003, ‘988 Patent Reexam
`
`History, 6/7/13 CRU Decision, at 5. “At the same time, limiting to ‘clothing
`
`stores’ does not identify any one particular merchant.” Id. The director concluded
`
`that “[a]ccordingly, it would appear that Cohen does include ‘defining a 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’ as claimed.” Id. Furthermore, the director noted that “[t]his is
`
`the material which was deemed missing during the original prosecution.” Id, at 5.
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`To further explain the reasoning for why Cohen discloses this element, the
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`Director noted that:
`
`Cohen does not necessarily limit transactions to any specific merchant
`or particular store – if Cohen provides a limit of ‘clothing stores’ then
`there is necessarily a limit on number of stores, as not all stores are
`clothing stores. At the same time there is no limit or specific
`identification of any specific store. Cohen therefore limits a number of
`transactions to one or more merchants, those of a specific industry,
`while not identifying [any] particular merchant. Limiting by industry
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`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`does not necessarily identify a particular merchant ...
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`Id. at 6. In other words, the Director found that Cohen inherently discloses the
`
`exact limitation that the Applicant relied on to distinguish the claims from the prior
`
`art. In the Office Action subsequently issued in the Ex Parte Reexamination, the
`
`Examiner agreed with the Director, rejecting all the claims of the ‘988 Patent. See
`
`Exh. 1003, ‘988 Patent Reexam History, 9/11/13 Office Action, 4-5, 13-14, 18-19.
`
`D.
`
`Patent Owner’s Response to the Ex Parte Reexam Office Action
`
`On November 11, 2013, D’Agostino filed a Response to the Office Action.
`
`See Exh. 1003, ‘988 Patent Reexam History, 11/11/13 Office Action Response
`
`(“Reexam Response”). First, Patent Owner mischaracterizes Cohen as disclosing
`
`merely a “type of charge” limitation (e.g., limiting card purchases to particular
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`products), and then argues that this is not a “merchant” or “number of merchants”
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`limitation. Id. at 21-23. Patent Owner further argues that limiting a transaction to
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`a particular industry of merchants is not a limitation to “one or more merchants.”
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`Id. at 25-27. In particular, Patent Owner asserts that Cohen “restricts purchases to
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`preapproved products” and permits purchases “without any limit on the number of
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`merchants [at which] the products or services may be purchased.” Id.
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`Patent Owner’s arguments, however, ignore the Director’s correct finding
`
`that Cohen discloses a merchant type restriction that limits the transaction code to
`
`“computer stores” and “clothing stores” (for example) – and not simply to
`
`particular preapproved products. See Exh. 1003, ‘988 Patent Reexam History,
`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`6/7/13 CRU Decision, at 5; Cohen at 8:25-35; 8:43-46. Consequently, by limiting
`
`a card’s use to a category (e.g., a subset) of stores, Cohen thus also limits the
`
`number of merchants at which the transaction code could be used, because there
`
`are only a finite number of merchants in each category (i.e., contrary to Patent
`
`Owner’s suggestion, there are not an infinite number of “computer stores” in the
`
`world that could accept the card disclosed in Cohen). See id.; see also Exh. 1008,
`
`Grimes Dec. at ¶ 38.
`
`Moreover, Patent Owner’s claim construction analysis is flawed. Patent
`
`Owner argues that “one or more merchants” means “a certain quantity of
`
`merchants that is finite in number” (emphasis added), and that under this meaning
`
`“an entire industry (e.g., a merchant type) would be excluded.” Reexam Response
`
`at 27. Seemingly, Patent Owner in this regard argues that its claims require that
`
`the authorizing entity determines whether the purchase exceeds an “authorized
`
`number of merchants.” Id. There is, however, no support for this argument in the
`
`patent, which nowhere speaks to limiting the payment category to a certain number
`
`of merchants and assessing whether a particular purchase exceeds that authorized
`
`number of merchants (e.g., that a particular transaction at issue is taking place at an
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`11th merchant when transactions are limited to only 10 merchants).
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`Petitioner nonetheless submits that, even under Patent Owner’s construction,
`
`limiting transactions to a merchant type (as in Cohen) would be anticipatory
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`because the number of authorized merchants in Cohen (such as “computer stores”)
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`is a certain quantity. Cohen at 8:25-35; 8:43-46. Regardless, the PTAB itself
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`concluded that “one or more merchants” need not be “a certain quantity,” but
`
`instead means “one merchant up to a plurality of merchants, where the number of
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`merchants is a finite number.” See Exh. 1014, PTAB’s 3/7/14 CBM Decision for
`
`the ‘988 Patent at 9. Thus, under the PTAB’s construction, this limitation would
`
`be anticipated by Cohen’s disclosure limiting transactions to a merchant type (such
`
`as computer stores), which is inherently a limitation to one or more (up to a finite
`
`number) of merchants. See Exh. 1008, Grimes Dec. at ¶ 38.
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`Next, Patent Owner hypothetically argues that it is not possible to create a
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`merchant limitation (as in Cohen) before any particular merchant is identified
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`because otherwise purchases could never be authorized. See Reexam Response at
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`24-25. According to Patent Owner, it “simply is not possible to create a merchant
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`type limitation before identification of a specific merchant of that merchant type.”
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`Id. at 25. But this is unsupported by the record, and ignores historical fact,
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`including a two-step process that generally takes place over time, namely the
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`creation of merchant type categories followed by the inclusion, and identification,
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`of newly and subsequently established merchants as particular merchant types. See
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`Exh. 1008, Grimes Dec. at ¶ 17; see also Exh. 1012, ISO 8583 at 64-65, 127-128.
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`Significantly, Patent Owner’s entire argument seems premised on its
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`unsupported belief that “a credit card company ... assigns an MCC to a merchant
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`when that merchant first starts accepting credit cards as payment.” Reexam
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`Response at 24. Patent Owner, however, fails to cite anything in Cohen that
`
`references MCCs or requires that the “particular merchant... be identified [in
`
`advance] as a merchant of a merchant type.” Id. at 24.
`
`Moreover, Patent Owner’s argument, which suggests that mere identification
`
`of a merchant as an MCC merchant type meets its claims’ requirement that a
`
`“particular merchant be[] identified,” is based on a distorted reading of the claims,
`
`one that ignores claim language, the specification, and the file history. See, e.g.,
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`Exh. 1001, ‘988 Patent, claim 1(c) (limiting the payment category to a number of
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`transactions); see also Exh. 1013, ‘486 Patent File History, 7/26/10 Office Action,
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`at pp.18-19 (distinguishing the use of merchant type category codes and approved
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`vendor lists having pre-identified merchants). Indeed, the claim requires, as
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`Petitioner submits, that the “particular merchant” be identified for the particular
`
`transaction or purchase in the payment category – not simply that a merchant be
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`identified by anybody, for any purpose, or that a merchant simply be assigned an
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`MCC. See id.; see also Exh. 1008, Grimes Dec. at ¶ 26.
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`Accordingly, the key point is that the claims require, and Cohen discloses,
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`limiting transactions or purchases to certain subgroups, to “only [] a certain store,
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`or group of stores or types of stores (e.g., clothing stores),” without identifying any
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`particular merchant for the particular transactions or purchases in the payment
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`category. Cohen simply does not address MCCs or vendor lists and, as the
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`Director correctly recognized, Cohen discloses the creation of a merchant
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`limitation before any particular merchant is identified as one of the one or more
`
`merchants. See Exh. 1003, ‘988 Patent Reexam History, 6/7/13 CRU Decision, at
`
`5.
`
`Patent Owner also argued that Cohen does not disclose the “single merchant
`
`limitation” prior to any merchant being identified, see Reexam Response at 28-31,
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`but this is based on the overturned Order Denying Reexamination and ignores
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`numerous disclosures of Cohen that include single transaction limitations without
`
`requiring identification of a merchant in advance. See e.g., Cohen 8:25-46, 12:3-4,
`
`2:35-43 (the “credit card numbers are generated for a one time, single transaction
`
`basis”).1 Petitioner explains in detail in Section V below how each of these
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`elements are disclosed by Cohen.
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`E.
`
`Petition for Covered Business Method Patent Review
`
`On September 17, 2013, the Petitioner filed a Request for Covered Business
`
`
`1 Patent Owner also argued that Cohen “requires” identification of a particular
`
`store “in advanced [sic] at the time of customization.” See Reexam Response at
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`30. This simply is not the case as evidenced by Cohen’s use of the word “can”
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`instead of “must”. See Cohen 3:49-53, 7:66-8:2.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`Method (“CBM”) Patent Review of the ‘988 Patent, and on December 24, 2013,
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`Patent Owner filed a Preliminary Response. See Exhibit 1015 – Patent Owner’s
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`12/24/13 Preliminary Response (“CBM Response”). In the CBM Response, Patent
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`Owner presented the same arguments in the Reexam Response (addressed above),
`
`but also argued that the single use card disclosed in Cohen does not meet the
`
`limitations of claim 21, which Patent Owner claims is directed to a payment
`
`category that limits multiple transactions to a single merchant. Id. at 29. However,
`
`as the Petitioner demonstrates in the claim charts in Section V below, Cohen does
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`disclose this limitation. See also Cohen 2:35-43; 8:25-46; 12:3-4.
`
`Patent Owner also argued that defining a payment category to limit the
`
`transaction code to a single merchant is a “positive step” (a vague and ambiguous
`
`term), and that a single use card does not include this positive step. Id. at 29.
`
`However, a single use card inherently discloses this limitation, because a single use
`
`card by definition can only be used at a single merchant. Accordingly, a single use
`
`card inherently includes the necessary “positive step” that limits the transaction
`
`code to a single merchant. See Exh. 1008, Grimes Dec. at ¶ 40.
`
`On March 7, 2013, the Patent Trial and Appeal Board (“PTAB”) denied
`
`institution of CBM review, noting that the prior art references Cohen and Flitcroft
`
`cited in the CBM petition only qualify as §102(e) prior art, and therefore do not
`
`qualify as prior art for a CBM review under Section 18(a)(1)(C) of the AIA. See
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`Exh. 1014, PTAB’s 3/7/14 CBM Decision for the ‘988 Patent at 13-14.
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`IV. CLAIM CONSTRUCTION
`Pursuant to § 42.100(b), and solely for purposes of this review, Petitioner
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`construes the claim language such that claim terms are given their broadest
`
`reasonable interpretation, in view of the claim language, the specification, and file
`
`history, from the perspective of one skilled in the art. See Exh. 1008, Grimes Dec.
`
`at ¶ 20.
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` “generating [a/said] transaction code”: For review purposes, this term
`
`means “creating a code usable as a substitute for a credit card number in a purchase
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`transaction, the number pre-coded to be indicative of a specific credit card
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`account.” (Exh. 1001, ‘988 Patent at Abstract; 3:48-53; 6:24-43; 7:1-6; see Exh.
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`1008, Grimes Dec. at ¶ 21).2
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` “defining at least one payment category”: For review purposes, this
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`term means “specifying the type of limitation (or limitations) that are available to
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`2 In the event the Board does not accept Petitioner’s construction of “generating
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`[a/said] transaction code,” but concludes instead that this term means “creating a
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`code usable as a substitute for a credit card number in a purchase transaction”
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`(without the clause “the number pre-coded to be indicative of a specific credit card
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`account”) (“Alternative Construction”) then Petitioner also presents Grounds 3, 4,
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`and 6 below (in additional to Grounds 1, 2, and 5).
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`be applied to a transaction code in order to limit its use.” (Exh. 1001, ‘988 Patent
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`at 3:5-8; 3:53-4:7; 4:25-29; 7:7-13; 7:61-8:48; see Exh. 1008, Grimes Dec. at ¶ 22).
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` “particular merchant”: For review purposes, this term means “a
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`specific merchant with whom a customer can engage in the purchase transaction.”
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`(Exh. 1001, ‘988 Patent at 4:5-7; 4:13-18; 4:49-54; see Exh. 1008, Grimes Dec. at
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`¶ 23).
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` “verifying that said defined purchase parameters are within said
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`designated payment category”: For review purposes,
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`this
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`term means
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`“ascertaining that any limitation associated with the designated payment category
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`is satisfied.” (Exh. 1001, ‘988 Patent at 4:13-18; 7:13-29; see Exh. 1008, Grimes
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`Dec. at ¶ 24).
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` “one or more merchants” and “a number of transactions”: For review
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`purposes, Petitioner accepts the PTAB’s construction of “one or more merchants”
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`and “a number of transactions.” See Exh. 1014, PTAB’s 3/7/14 CBM Decision for
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`the ‘988 Patent at 8-9. (Grimes Dec. at ¶ 25).
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` “prior to any particular merchant being identified”: For review
`
`purposes, this term means “prior to the identification of a particular merchant for
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`the particular transaction(s) or purchase(s) in said payment category.” (Exh. 1001,
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`‘988 Patent at 6:37-48, Fig. 1; Exh. 1013, ‘486 Patent File History, 7/26/10 Office
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`Action at 18-19; see Exh. 1008, Grimes Dec. at ¶ 26).
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`V. THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
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`Pursuant to §§ 42.22 and 42.104(b), a full statement of the reasons for the
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`relief requested, with a detailed explanation of the evidence is provided below.
`
`GROUND 1. Claims 1-10, 15-25, 27-33, & 35-38 are Anticipated
`Under 35 U.S.C. § 102 by Cohen
`
`U.S. Patent No. 6,422,462 to Cohen (Exh. 1004, “Cohen”) claims priority to
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`U.S. Provisional Application No. 60/079,8843, which was filed on March 30, 1998.
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`Accordingly, Cohen is prior art to the ‘988 Patent under at least 35 U.S.C. §
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`102(e). Cohen teaches customized, limited use card numbers for use in purchase
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`transactions over a credit card network. Cohen at 2:32-43.
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`Cohen discloses an account holder contacting their credit card company,
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`verifying their identity, and then being provided with a transaction code number to
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`be used for a single or limited range of transactions. Id. at 3:41-48; 13:8-14. The
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`account holder can indicate in advance the limitations applicable to the transaction
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`code number. Id. at 3:49-52. Once the account holder has received the number,
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`
`3The subject matter relied upon in Cohen was carried forward from U.S.
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`Provisional App. No. 60/079,884, which “provide[s] written description support
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`for the claimed invention” of the ‘988 Patent. In re Giacomini, 612 F.3d 1380,
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`1383 (Fed. Cir. 2010); see Exh. 1008, Grimes Dec. at ¶ 73-75; see also Exh. 1014,
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`PTAB’s 3/7/14 CBM Decision for the ‘988 Patent at 13-14.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`they can communicate the number to a merchant like it was a regular credit card
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`number, which the merchant can use to obtain authorization for the purchase
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`transaction with the credit card company. Id. at 5:35-39. The credit card company
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`can authorize the use of the customized number, or deny it if it is used for anything
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`other than the single or customized use indicated by the account holder. Id. at
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`5:44-49.
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`Examples of the customized uses for which a disposable or customized
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`number can be indicated may include a time limit, id. at 6:7, specific merchant or
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`industry, id. at 8:2-14, a specific merchant or merchants, id. at 8:33-34, purchase
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`amount, id. at 8:44, etc. These various customized uses can also be used in
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`combination, such as a customized number to be used on specific dates, for
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`specific amounts, etc. and those limits are recorded by the credit card company and
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`associated with the customized number for verification when payment transactions
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`occurs. Id. at 10:24-35. All limitations of the following claims are disclosed by
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`Cohen.
`
`Cohen
`1. A method of performing secure credit card purchases, said method comprising:
`Cohen discloses “provid[ing] improved credit cards and methods for credit card
`transactions ... provid[ing] methods and apparatus for secure transmission of credit
`card information.” (Cohen at 1:48-62) (emphasis added).
`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;
`Cohen discloses that a user can contact the custodial authorizing entity: “a user
`dials into her credit card company...” (Cohen at 3:42-44).
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`- 16 -
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,036,988
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`b) supplying said custodial authorizing entity with at least account identification
`data of said customer's account;
`Cohen discloses that a user can provide the custodial authorizing entity with her
`account identification data: “a user dials into her credit card company...and after
`providing the ordinary credit card number and verification data...” (Cohen at 3:42-
`45).
`c) defining at least one payment category to include at least limiting a number of
`transactions to one or more merchants,
`Assuming this phrase is not insolubly ambiguous, Cohen specifies various possible
`payment categories: “The card can also be customized for only particular uses or
`groups of uses.” (Cohen at 7:66-67).
`Cohen discloses a payment category that limits a number of transactions to one or
`more merchants: “А customized credit card could be issued to the user which is
`only valid for use for that particular type of charge (computer hardware or software
`stores)…The card could even [be] customized for use in a particular store itself or
`a particular chain of stores (such as a particular restaurant, or a particular chain of
`restaurants).” (Cohen at 8:25-35) (emphasis added). “The card could be valid only
`for purchase…in a certain store, or group of stores or types of stores (e.g. clothing
`stores).” (Cohen at 8:43-46) (emphasis added). See Exh. 1008, Grimes Dec. at ¶
`38.
`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;
`Assuming this phrase is not insolubly ambiguous, Cohen specifies a type of
`limitation where the transaction code is limited to a particular “group” or “type” of
`stores, rather than a particular store, before the code is used to make a