UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`D’AGOSTINO, JOHN
`Patent Owner
`
`________________
`
`
`
`Case IPR2014-00543
`Patent 8,036,988
`
`________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`  
`
`
`
`

`
`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................. iv
`
`LIST OF EXHIBITS ............................................................................................... vi
`
`1.
`
`Introduction ...................................................................................................... 1
`
`2. Overview of the ‘988 Patent ............................................................................. 3
`
`3. Claim Construction........................................................................................... 4
`
`4. The Petition Fails to Establish Unpatentability of the ‘988 Patent .................. 7
`
`
`A. Flitcroft does not have a prior art date as of the filing dates of the
`provisional applications to which it claims priority. .................................. 8
`
`
`
`
`
`
`
`(1) Flitcroft’s disclosure of limiting to a specific merchant as
`determined by a first use is not supported by any of the Flitcroft
`provisional applications. ..................................................................... 10
`
`(2) The Flitcroft provisional applications do not support Flitcroft’s
`independent claims 1, 3, 5, 7, and 19. ................................................. 13
`
`(3) MasterCard and its expert Grimes fail to demonstrate that Flitcroft
`is available as prior art under 102(e) against the ‘988 patent. ............ 17
`
`B. MasterCard is not entitled to the relief sought on the basis of Cohen. .... 19
`
`
` (1) Cohen does not disclose a material limitation of each
`independent claim of the ‘988 patent. .............................................. 19
`
`
`
`
`
`(a) The petition impermissibly combines separate, distinct
`embodiments of Cohen in an attempt to satisfy all of the
`independent claim 21. ................................................................. 19
`
`(b) Cohen does not disclose limiting transactions to a single
`merchant before identifying any particular merchant as the
`single merchant. .......................................................................... 22
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`Patent 8,036,988
`Patent Owner’s Preliminary Response
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`(c) Cohen does not disclose designating/selecting a payment
`category that places limitations on a transaction code before
`the transaction code is generated for use to make purchases. .... 23
`
`(d) Cohen does not disclose limiting use to one or more
`merchants before any particular merchant is identified as the
`one or more merchant. ................................................................ 26
`
`
` (2) The petition does not identify the differences between the prior
`art and the claims or articulate a rationale for why a person of
`ordinary skill in the art would have modified the prior art to
`meet the claims. ................................................................................ 28
`
`
`
`
`
`
`5. Conclusion ..................................................................................................... 32
`
`
`
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`In re Translogic Technology, Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ......................................................................... 4
`
`
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010). ............................................................... passim
`
`
`Ex parte Park et al.,
`2013 WL 5467089 at *3 (BPAI Sep. 23, 2013). .................................................. 10
`
`
`Ex parte Hallowell et al.,
`2012 WL 3720902 (BPAI Aug. 26, 2012). ......................................................... 10
`
`
`Ex parte Bernoth,
`2012 WL 3720797 (BPAI Aug. 27, 2012). ......................................................... 10
`
`
`Net Moneyln, Inc. v. Verisgin, Inc.,
`545 F.3d 1359, 1369 (Fed. Cir. 2008). ................................................................ 20
`
`
`Ex parte Cucerzan,
`No. 2010-002640 (BPAI 2011). ................................................................... passim
`
`
`KSR Int’l Co. v. Teleflex Inc.,
` 550 U.S. 398 (2007). ................................................................................. passim
`
`
`Graham v. John Deere Co.,
`
` 383 U.S. 1 (1966). ............................................................................................ 29
`
`K/S Himpp v. Hear-Wear Tech.,
`LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014). ......................................................... 32
`
`
`Statutes
`
`35 U.S.C. § 314 .................................................................................................... 1, 8
`
`35 U.S.C. § 102(e) ........................................................................................... passim
`
`35 U.S.C. § 103(a) ........................................................................................... passim
`
`
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
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`35 U.S.C. § 316(e) .................................................................................................... 8
`
`Rules
`
`37 C.F.R. § 42.100(b) ................................................................................................. 4
`
`37 C.F.R. § 42.108(c) ................................................................................................. 8
`
`37 C.F.R. § 42.104(b)(4) ................................................................................. 19, 29
`
`Other Authorities
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) ........................................... passim
`
`
`MPEP § 2131 ........................................................................................................... 10
`
`
`
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
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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 (Flitcroft)
`
`
`
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
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`1. Introduction
`
`
`
`Patent Owner, D’Agostino, respectfully requests that the Board deny the
`
`petition for inter partes review of claims 1-38 of U.S. Patent No. 8,036,988 (“the
`
`‘988 patent”) because Petitioner, MasterCard International Incorporated, has failed
`
`to show that it has a reasonable likelihood of prevailing with respect to any of the
`
`challenged claims.1
`
`
`
`MasterCard has proposed six grounds challenging the’988 patent based on
`
`anticipation and obviousness. Grounds 3, 4, and 6 challenge all of the claims under
`
`35 U.S.C. §§ 102(e) and 103(a) using Flitcroft2 as the primary reference. And
`
`grounds 1, 2, and 5 challenge all of the claims under §§ 102(e) and 103(a) using
`
`Cohen3 as the primary reference.
`
`
`
`Proposed grounds 3, 4, and 6 of the petition should be denied for at least this
`
`reason:
`
`
`
`• Flitcroft is not available as prior art against the ‘988 patent because none of
`
`its provisional applications support Flitcroft – without this support,
`
`Flitcroft’s prior art date is after the effective filing date of the ‘988 patent.
`
`
`
`
`
`                                                            
`1 35 U.S.C. § 314.
`
` Ex. 1005, U.S. Patent No. 6,636,833.
`
` Ex. 1004, U.S. Patent No. 6,422,462.
`
`1
` 
`
` 2
`
` 3
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`Patent 8,036,988
`Patent Owner’s Preliminary Response
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`
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`Proposed grounds 1, 2, and 5 of the petition, beyond their redundancy of
`
`grounds 3, 4, and 6, should be denied for at least these reasons:
`
`• MasterCard impermissibly combines the disclosures of separate, distinct
`
`embodiments of Cohen to anticipate independent claim 21 of the ‘988 patent.
`
`• Cohen does not disclose limiting a custom use credit card for use with a
`
`single merchant before identifying any particular merchant as the single
`
`merchant – a requirement of independent claim 21 of the ‘988 patent.
`
`• Cohen does not disclose defining limits on a custom use credit card before
`
`generating the credit card number for use – a requirement of each
`
`independent claim of the ‘988 patent.
`
`• Cohen’s type of charge limitation does not teach limiting to one or more
`
`merchants before any particular merchant is identified as the one or more
`
`merchants.
`
`• The petition inadequately states a claim for relief on all obviousness grounds,
`
`because it presents an incomplete and conclusory analysis that fails to
`
`identify the differences between the prior art and the claims, and fails to
`
`articulate a rationale for why a person of ordinary skill in the art would have
`
`modified the prior art to meet the claims.
`
`
`
`
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
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`2. Overview of the ‘988 Patent
`
`The ‘988 patent is directed toward a method of performing secure credit card
`
`  
`
`purchases.4 The method provides a customer with a custom-use transaction code
`
`that is used in substitution for the customer’s credit card number to make a
`
`purchase.5 A customer, desiring a transaction code to make a secure credit card
`
`purchase, contacts a custodial authorizing entity for authorization as an account
`
`user.6 After the customer is verified as an authorized account user, details of the
`
`anticipated transaction are established to determine a payment category and then the
`
`transaction code is issued to the customer.7 Once issued, the customer can use the
`
`transaction code to consummate a transaction within the defined parameters of the
`
`payment category.8
`
`
`
`The payment category can include limiting the transaction code to one or a
`
`plurality of merchants.9 And the one or plurality of merchants may not be identified
`
`before the transaction code is generated.10
`
`                                                            
`4 Ex. 1001, Abstract.
`
` Id. at 6:28-30.
`
` Id. at 7:30-43.
`
` Id. at 7:43-46.
`
` Id. at 7:46-55.
`
` Id. at 8:18-20.
`
`3
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`
` 5
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` 6
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` 7
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` 8
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
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`3. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`
`
`according to their broadest reasonable construction in light of the specification of
`
`the patent in which they appear.11 And claim terms are given their ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure.12 For the purpose of this review, D’Agostino
`
`proposes the following claim constructions:
`
`• “generating [a/said] transaction code”
`
`The ‘988 patent explains that the transaction code is used in substitution for a
`
`
`
`credit card number for performing secure credit card purchases.13 The transaction
`
`code is indicative of a customer account and a payment category.14 The transaction
`
`code is generated after identifying a customer account and designating or selecting a
`
`payment category.15 Then the transaction code is communicated to the customer for
`
`                                                                                                                                                                                    
`10 Id. at 8:20-23.
` 
`11 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`(Aug. 14, 2012).
`
`12 In re Translogic Technology, Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). 
`
`13 Ex. 1001, Abstract. 
` 
`14 Id. at 3:40-55; 6:24-38; Figure 1.
`
`15 Id.
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`use. 16 Thus, for review purposes, “generating [a/said] transaction code” means
`
`“producing a code that is usable in substitution for a credit card number in a
`
`purchase transaction, the code being indicative of a customer account and a
`
`payment category.”
`
`• “said one or more merchant limitation being included in said payment
`category prior to any particular merchant being identified as one of said
`one or more merchants”
`
`The ‘988 patent explains a payment category may include limiting purchases
`
`
`
`to one or a plurality of different merchants that are unidentified when the
`
`transaction code is generated.17 Thus, for review purposes, “said one or more
`
`merchant limitation being included in said payment category prior to any particular
`
`merchant being identified as one of said one or more merchants” means “including
`
`a limit in a payment category that limits transactions to one or more merchants
`
`before any particular merchant is identified as the one or more merchants.”
`
`• “said single merchant limitation being included in said payment category
`prior to any particular merchant being identified as said single merchant”
`
`The ‘988 patent explains a payment category may include limiting purchases
`
`
`
`to one or a plurality of different merchants that are unidentified when the
`
`transaction code is generated.18 Thus for review purposes, “said single merchant
`
`                                                            
`16 Id.
` 
`17 Id. at 8:18-24; Figure 1.
` 
`18 Id. at 8:18-24; Figure 1.
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`limitation being included in said payment category prior to any particular merchant
`
`being identified as said single merchant” means “including a limit in a payment
`
`category that limits transactions to a single merchant before any particular merchant
`
`is identified as said single merchant.”
`
`• “a number of transactions”
`
`For review purposes, D’Agostino accepts the Board’s construction given in
`
`
`
`its decision denying MasterCard’s earlier petition for covered business method
`
`review of the ‘988 patent. MasterCard also accepts this construction.19
`
`The Board construed this term to mean “one or more transactions, where the
`
`number of transactions is limited to a finite number.”20
`
`• “one or more merchants”
`
`For review purposes, D’Agostino accepts the Board’s construction also given
`
`
`
`in its earlier decision denying covered business method review of the ‘988 patent.
`
`MasterCard also accepts this construction.21 The Board construed this term to mean
`
`“one merchant up to a plurality of merchants, where the number of merchants is a
`
`finite number.”22 The Board explained that other claimed steps “imply a reasonable,
`
`                                                                                                                                                                                    
`
`19 Pet. at 14.
`
`20 Ex. 1014, PTAB’s 3/7/2014 CBM Decision for the ‘988 patent at 8.
`
`21 Pet. at 14.
`
`22 Ex. 1014, PTAB’s 3/7/2014 CBM Decision for the ‘988 patent at 8.
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`finite number of merchants to authorize payment and perform a purchase. It is
`
`unreasonable to understand this limitation to mean an infinite number of merchants
`
`can be included in said payment category.”23
`
`
`
`Concerning MasterCard’s remaining proposed constructions, for the purpose
`
`of this preliminary response, D’Agostino does not submit claim constructions
`
`because MasterCard’s petition for inter partes 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 inter partes review of the ‘988 patent is instituted.
`
`4. The Petition Fails to Establish Unpatentability of the ‘988 Patent
`
`The Board may only grant a petition for inter partes review where “the
`
`
`
`information presented in the petition…shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims challenged
`
`in the petition.”24 MasterCard bears the burden of showing that this statutory
`
`threshold has been met, as explained by the Office Patent Trial Practice Guide:
`
`“The Board… may institute a trial where the petitioner establishes that the standards
`
`                                                            
`
`23 Id.
`
`24 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c).
`
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`for instituting the requested trial are met….”25 If inter partes review is granted,
`
`MasterCard also bears the burden of proving unpatentability of the ‘988 patent by a
`
`preponderance of the evidence.26
`
`A. Flitcroft does not have a prior art date as of the filing dates of the
`provisional applications to which it claims priority.
`
`
`
`Flitcroft claims benefit to U.S. Provisional Application No. 60/099,614, filed
`
`September 9, 1998, Ex. 1017; U.S. Provisional Application No. 60/098,175, filed
`
`August 26, 1998, Ex. 1018; and U.S. Provisional Patent Application No.
`
`60/092,500, filed July 13, 1998, Ex. 1019 (collectively “the Flitcroft provisional
`
`applications”).
`
`
`
`MasterCard contends that Flitcroft is prior art against the ‘988 patent under
`
`35 U.S.C. §102(e) as of the filing dates of the Flitcroft provisional patent
`
`applications.27 Citing In re Giacomini,28 MasterCard maintains that Flitcroft is prior
`
`art as of its effective filing date because purportedly the subject matter relied upon
`
`in Flitcroft is carried forward from the Flitcroft provisional applications and the
`
`carried-forward subject matter supports the invention claimed by the ‘988 patent.29
`
`                                                            
`25 See Office Patent Trial Practice Guide, 77 Fed. Reg. 48.756 (Aug. 14, 2012).
`
`26 35 U.S.C. § 316(e).
` 
`27 Pet. at 37, fn. 5.
`
`28 In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).
`
`29 Pet. at 37, fn. 5.
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
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`
`
`In Giacomini, the Court concluded that “an applicant is not entitled to a
`
`patent if another’s patent discloses the same invention, which was carried forward
`
`from an earlier U.S. provisional application….”30 But the Court explained the filing
`
`date of the provisional application can only be used if the provisional application
`
`supports the invention claimed by the patent being relied on: “An important
`
`limitation is that the provisional application must provide written description
`
`support for the claimed invention.” 31 The Board of Patent Appeals and
`
`Interferences (BPAI), following Giacomini, has held that the provisional application
`
`must support the patent being relied on to have effective prior art date as of the
`
`provisional filing date:
`
`The U.S. Patent and Trademark Office may rely on the effective filing
`date of a patent (or published application) claiming benefit of a
`provisional application filing date, unless an applicant demonstrates
`that the provisional fails to support the patent (published application)
`in accordance with 35 U.S.C. § 112, first paragraph.32
`
`
`
`
`
`                                                                                                                                                                                    
`
`30 In re Giacomini at 1383.
`
`31 Id.
`
`32 Ex parte Park et al., 2013 WL 5467089 at *3 (BPAI Sep. 23, 2013); Ex parte Hallowell
`et al., 2012 WL 3720902 (BPAI Aug. 26, 2012); Ex parte Bernoth, 2012 WL 3720797
`(BPAI Aug. 27, 2012).
` 
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
`
`
`
`Because D’Agostino demonstrates below that the Flitcroft provisional
`
`applications do not support Flitcroft, the Board must deny inter partes review as to
`
`grounds 3, 4, and 6 of MasterCard’s petition.
`
`(1) Flitcroft’s disclosure of limiting to a specific merchant as determined by a
`first use is not supported by any of the Flitcroft provisional applications.
`
`Independent claims 1, 17, 19, and 22 of the ‘988 patent each include the
`
`
`
`limitation “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.” Independent claim 21of the ‘988 patent includes the limitation “said
`
`single merchant limitation being included in said payment category prior to any
`
`particular merchant being identified as said single merchant.”
`
`
`
`MasterCard relies on Flitcroft’s disclosure of a “limited-use credit card [that]
`
`is valid for transactions with a specific merchant as determined by a first use” to
`
`satisfy these claim limitations recited by the ‘988 patent.33
`
`
`
`Particularly, MasterCard cites Flitcroft at col. 16, lines 57-59 and then again
`
`at col. 28, lines 23-25 for the disclosure of a “limited-use credit card [that] is valid
`
`for transactions with a specific merchant as determined by a first use.”34 But after a
`
`thorough review of the Flitcroft provisional applications, this disclosure is simply
`
`                                                            
`33 Pet. at 38, 44, 47, and 50 (Petition does not rely on this disclosure for independent claim
`22).
` 
`34 Pet. at 38-39, 46, 48-49, 51.
`
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`nowhere to be found. The only support for this claim limitation is found exclusively
`
`in Flitcroft: “When the limited-use number is limited to a specific merchant, the
`
`merchant can be prearranged by the user or can be determined by first use.”35
`
`
`
`MasterCard relies on Grimes to purportedly show that the “limited-use credit
`
`card [that] is valid for transactions with a specific merchant as determined by a first
`
`use” is somehow supported by the single-transaction credit card that is disclosed by
`
`the ‘614 provisional.36 Yet this argument fails to account for the multiple
`
`transaction purpose behind Flitcroft’s credit card being limited to a specific
`
`merchant as determined by first use, e.g., to make multiple transactions with that
`
`merchant. Obviously a single-transaction credit card cannot be used multiple times.
`
`
`
`Moreover, Flitcroft argued, during prosecution, that a single-transaction card
`
`does not teach a credit card limited to purchases with a specific merchant as
`
`determined by a first use:
`
`Additionally, the Franklin et al. proxy number is for a single
`transaction. Hence it would make no sense that the transaction be
`linked to a specific merchant “by a first use” insofar as there would
`not be a second use of the information to be used. 37
`
`  
`
`                                                           
`35 Ex. 2001 at 30, Flitcroft File History, Specification at p. 28, ll. 21-22.
`
`36 Pet. at 37, fn. 5; See Ex. 1008 at 71-72, Grimes Dec. at 70-71.
`
`37 Ex. 2001 at 303, Flitcroft File History, 05/07/2002 Amendment at 8-9 (emphasis
`original).
`
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`
`
`Significantly Flitcroft’s independent claims 9 and 20 were allowed because
`
`they include “wherein use of the limited-use credit card number is valid for
`
`transactions with a specific merchant as determined by first use.” 38 Consequently,
`
`contrary to MasterCard’s assertion, a single-transaction credit card does not support
`
`a “limited-use credit card [that] is valid for transactions with a specific merchant as
`
`determined by a first use.”
`
`
`
`Grounds 3, 4, and 6 of MasterCard’s petition expressly rely upon Flitcroft for
`
`the disclosure of a “limited-use credit card is valid for transactions with a specific
`
`merchant as determined by a first use.” But this disclosure is plainly not supported
`
`by any of the Flitcroft provisional applications. MasterCard’s failure in this regard
`
`is dispositive, because without this support Flitcroft does not antedate a material
`
`limitation of each independent claim of the ‘988 patent. As such, the Board must
`
`deny inter partes review as to grounds 3, 4, and 6 advanced in MasterCard’s
`
`petition.39
`
`
`(2) The Flitcroft provisional applications do not support Flitcroft’s independent
`claims 1, 3, 5, 7, and 19.
`
`As further evidence that Flitcroft is not supported by its provisional
`
`
`
`applications, Flitcroft’s independent claims 1, 3, 5, 7, and 19 were allowed based on
`
`                                                            
`38 Ex. 2001 at 353, Flitcroft File History, 11/1//2002 Notice of Allowability at 3.
`
`39 See Practice Guide, 77 Fed. Reg. 48,756, 48, 764 (Aug. 14, 2012).
`
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`a claim limitation that, like the claim limitation a “limited-use credit card [that] is
`
`valid for transactions with a specific merchant as determined by a first use,” is not
`
`supported by the Flitcroft provisional applications.
`
`
`
`Independent claims 1, 3, 5, 7, and 19 of Flitcroft were allowed because they
`
`each include the claim limitation “wherein said limited-use credit card number is
`
`valid for a [predetermined number/number] of payments for a transaction with a
`
`single merchant.” During prosecution, Flitcroft added claims 28 and 29 to recite this
`
`claim limitation and argued that this limitation distinguished the cited references.”40
`
`Following, the examiner finally rejected all of the pending claims, except claims 28
`
`and 29, and indicated that claims 28 and 29 would be allowed if rewritten in
`
`independent form.41 In reply, Flitcroft canceled the rejected claims and amended
`
`claims 28 and 29 to be in independent form.42
`
`
`
`After several more office actions and responses, the examiner rejected claims
`
`28-35 under U.S.C. § 103(a) as being unpatentable over Franklin et al. in view of
`
`Ukuda, 43 and in further view of U.S. Patent No. 6,188,761 (“Dickerman et al.) and
`
`                                                            
`40 Ex. 2001 at 145, Flitcroft File History, 12/09/1999 Amendment at 4.
` 
`41 Ex. 2001 at 187-189, Flitcroft File History, 03/01/00 Final Office Action at 4.
`
`42 Ex. 2001 at 204-206, Flitcroft File History, 07/11/00 Response at 1-3.
` 
`43 U.S. Patent Number 5,893,907 (patent number was not recited by the examiner in the
`rejection).
`
`
`13
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`

`
`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
`
`U.S. Patent No. 5,500,513 (“Langhans et al.).44 In reply, Flitcroft argued that
`
`independent claim 28 was patentable because it included the limitation “limited-use
`
`credit card number is valid for a predetermined number of payments or
`
`transaction[sic] with a single merchant.”45
`
`
`
` Afterward, the examiner allowed the pending claims, and stated in the
`
`reasons for allowance:
`
`… the claims are limited as included 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 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…46
`
`In response, Flitcroft only disputed that the claims are not limited to an
`
`
`
`installment plan.47 Flitcroft later issued with independent claims 1, 3, 5, 7, and 19
`
`including the limitation the “limited-use credit card number is valid for a
`
`                                                            
`44 Ex. 2001 at 290-292, Flitcroft File History, 11/07/01 Non-Final Office Action at 6-8.
` 
`45 Ex. 2001 at 334, Flitcroft File History, 8/28/2002 Response to Office Action at 16.
`
`46 Ex. 2001 at 352, Flitcroft File History, 11/8/2002 Notice of Allowability at 2.
`
`47 Id. at 365-67, Flitcroft File History, 4/18/2003 Comments on Examiners Statement for
`Reasons for Allowance.
`
`
`14
` 
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`

`
`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
`
`[predetermined number/number] of payments for a transaction with a single
`
`merchant.”48 
`
`
`
`After conducting a thorough review of the Flitcroft provisional applications,
`
`support for this claim limitation was not discovered in any of the Flitcroft
`
`provisional applications. The only support for this claim limitation is found
`
`exclusively in Flitcroft, which was relied on by Flitcroft during prosecution to
`
`support new claims 28 and 29:
`
`Or alternatively, a credit card number can be used, for example, to
`implement an installment plan where the credit card number is, for
`example, only valid for twelve payments for a pre-arranged
`transaction limit for twelve months to a single merchant. This plan
`provides security against fraud because it is locked to a single
`merchant, and it is only good for one year.49
`
`Similar to the “limited-use credit card number [that] is valid for transactions
`
`
`
`
`with a specific merchant as determined by a first use,” one might argue that the
`
`single-transaction card disclosed by the Flitcroft provisional applications, as noted
`
`by Grimes, supports this claim limitation. But this argument also fails because a
`
`single-transaction card does not support a limited-use credit card number this is
`
`valid for a [predetermined number/number] of payments for a transaction with a
`
`                                                            
`48 Ex. 1005, U.S. 6,636,833 at col. 28, ll. 19-22, 50-53; at col. 29, ll. 14-16, 42-45; at col.
`19, ll. 61-63; See also Ex. 2001 at 145, Flitcroft File History, 12/09/1999 Amendment at 4.
` 
`49 Ex. 2001 at 30, Flitcroft File History, Specification at p. 28, ll. 12-19. 
`15
` 
`
`

`
`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
`
`single merchant. This limitation requires using the credit card for multiple payments
`
`with a single merchant. Whereas, the single-transaction card cannot be used to make
`
`multiple payments with a single merchant, because the single-transaction card is
`
`deactivated after a first payment.
`
`
`
`Further, Flitcroft’s argument, made during prosecution, that illustrated a
`
`single-transaction card does not teach a limited-use credit card number that is valid
`
`for transactions with a specific merchant as determined by a first use, also applies to
`
`a card that is limited to a [predetermined number/number] of payments with a single
`
`merchant, and likewise is not taught by a single-transaction card. That is, it
`
`wouldn’t make sense to link the card to a merchant for a number of payments
`
`because there would not be a second use of the information to be used.
`
`
`
`As a result the Flitcroft provisional applications do not support the claim
`
`limitation a “limited-use credit card number [that] is valid for transactions with a
`
`specific merchant as determined by a first use.” Accordingly, it is further
`
`demonstrated that Flitcroft is not supported by its provisional applications in
`
`accordance with 35 U.S.C. § 112, first paragraph. And, as a consequence, Flitcroft
`
`cannot be used as prior art against the ‘988 patent as of the filing dates of the
`
`Flitcroft provisional applications. As such, the Board is given yet another reason
`
`16
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`

`
`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Preliminary Response
`
`why it must deny inter partes review as to grounds 3, 4, and 6 advanced in
`
`MasterCard’s petition.50
`
`(3) MasterCard and its expert Grimes fail to demonstrate that Flitcroft is
`available as prior art under 102(e) against the ‘988 patent.
`
`MasterCard relies on the declaration of its expert, Grimes, who charts the
`
`
`
`claim limitations of the ‘988 patent against the disclosures of the Flitcroft
`
`provisional applications in an attempt to show that Flitcroft has a 102(e) prior art
`
`date as of the filing dates of the provisional applications.51
`
`
`
`But a comparison of the ‘988 patent claims with the Flitcroft provisional
`
`applications is irrelevant to whether Flitcroft is prior art under 102(e) as of the filing
`
`date of the provisional applications. As the Court stated in Giacomini, the Flitcroft
`
`provisional applications must support Flitcroft, not the invention claimed by the
`
`‘988 patent, for Flitcroft to have a prior art date as of the filing date of the
`
`provisional applications.
`
`
`
`MasterCard also cites the Board’s March 7, 2014 decision denying
`
`MasterCard’s earlier petition seeking a covered business method