Trials@uspto.gov Paper No. 38
`Tel: 571-272-7822
`Entered: July 28, 2017
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`
`
`
`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 B2)
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5
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`

`

`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`MasterCard International Inc.(“Petitioner”) filed Petitions requesting
`inter partes review of claims 1–38 of U.S. Patent No. 8,036,988 C11 (543
`Ex. 1001;2 “the ’988 patent”) and claims 1‒30 of U.S. Patent No. 7,840,486
`B2 (544 Ex. 1001; “the ’486 patent”). 543 Paper 1 (“543 Pet.”); 544 Paper 1
`(“544 Pet.”). John D’Agostino (“Patent Owner”) filed Preliminary
`Responses. 543 Paper 7 (“543 Prelim. Resp.”); 544 Paper 6 (“544 Prelim.
`Resp.”). Pursuant to 35 U.S.C. § 314, we instituted inter partes review of
`the ʼ988 patent, on September 4, 2014, as to claims 1–10, 15–25, 27–33, and
`35–38 of the ’988 patent and as to claims 1‒15 and 22‒30 of the ’486 patent
`under 35 U.S.C. § 102(e) as anticipated by Cohen,3 and as to claims 11–14,
`26, and 34 of the ’988 patent and as to claims 16‒21 of the ’486 patent under
`35 U.S.C. § 103(a) as obvious over Cohen and Musmanno.4 543 Paper 8
`(“543 Inst. Dec.”); 544 Paper 7 (“544 Inst. Dec.”).
`Patent Owner filed a Response (543 Paper 16, “543 PO Resp.”; 544
`Paper 11, “544 PO Resp.”), and Petitioner filed a Reply (543 Paper 17, “543
`Pet. Reply”; 544 Paper 12, “544 Pet. Reply”) in each proceeding. Petitioner
`filed a Motion to Exclude evidence (543 Paper 20, “543 Mot.”; 544 Paper
`
`1 A Reexamination Certificate was issued on October 15, 2014.
`2 Papers and Exhibits that are preceded by “543” are from IPR2014-00543,
`and papers and exhibits that are preceded by “544” are from IPR2014-
`00544. IPR2014-00543 and IPR2014-00544 include papers and exhibits
`that are substantially similar; therefore, unless otherwise indicated, citations
`to papers and exhibits are made to IPR2014-00543.
`3 U.S. Patent No. 6,422,462 B1 (543 Ex. 1004, “Cohen”).
`4 U.S. Patent No. 5,826,243 (543 Ex. 1006, “Musmanno”).
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`14, “544 Mot.”), Patent Owner filed an Opposition to Petitioner’s Motion to
`Exclude evidence (543 Paper 23, “543 Opp. to Mot.”; 544 Paper 17, “544
`Opp. to Mot.”), and Petitioner filed a Reply in support of its Motion to
`Exclude (543 Paper 24, “543 Reply to Opp. to Mot.”; 544 Paper 18, “544
`Reply to Opp. to Mot.”) in each proceeding. Oral hearing was held on May
`12, 2015, and the hearing transcript has been entered in the record. 543
`Paper 27 (“Tr.”).
`We issued Final Written Decisions in IPR2014-00543 and IPR2014-
`00544 pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, and we
`determined that Petitioner had demonstrated by a preponderance of the
`evidence that claims 1‒38 of the ’988 patent were unpatentable and claims
`1‒30 of the ’486 patent were unpatentable. 543 Paper 28 (“543 Final
`Dec.”); 544 Paper 22 (“544 Final Dec.”). We also denied Petitioner’s
`Motion to Exclude. Id. Patent Owner requested a rehearing (543 Paper 29;
`544 Paper 23), and we denied Patent Owner’s request. 543 Paper 30; 544
`Paper 24.
`Patent Owner filed a Notice of Appeal (see 543 Paper 31; 544
`Paper 25) and the United States Court of Appeals for the Federal Circuit
`issued a consolidated decision for both proceedings in D’Agostino v.
`Mastercard Int’l Inc., 844 F.3d 945 (Fed. Cir. 2016), vacating our
`determination of unpatentability for claims 1‒38 of the ’988 patent and 1‒30
`of the ’486 patent, and remanding for further proceedings consistent with the
`Federal Circuit’s decision. D’Agostino, 844 F.3d at 951; see Paper 32.
`Subsquent to the Federal Circuit’s decision, we authorized briefing
`from Petitioner (Paper 35, “Pet. Remand Br.”), a Response from Patent
`Owner (Paper 36, “PO Remand Resp.”), and a Reply from Petitioner (Paper
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`37, “Pet. Remand Reply”). We authorized Petitioner and Patent Owner to
`file the same briefing in IPR2014-00544 in order to proceed to a
`consolidated Final Decision on Remand for both IPR2014-00543 and
`IPR2014-00544. See Paper 34.
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1‒38 of the ʼ988 patent and
`claims 1‒30 of the ’486 patent are unpatentable.
`B. Related Proceedings
`Petitioner identifies the following related district court proceeding
`involving the ’988 patent and the ’486 patent, and in which Petitioner is a
`party: D’Agostino v. MasterCard, Inc., No. 1:13–cv–00738 (D. Del. filed
`Apr. 26, 2013). 543 Pet. 59; 544 Pet. 58.
`Petitioner also identifies that the ’988 patent was the subject of Ex
`Parte Reexamination proceeding No. 90/012,517. 543 Pet. 1, 59.
`Petitioner previously sought a covered business method patent review
`of the ’988 patent in proceeding CBM2013-00057 and of the ’486 patent in
`proceeding CBM2013-00058, but we denied institution of review. 543 Pet.
`11–13; 544 Pet. 13‒14; Mastercard Int’l Inc. v. D’Agostino, Case
`CBM2013-00057 (PTAB Mar. 7, 2014) (Paper 9); Mastercard Int’l Inc. v.
`D’Agostino, Case CBM2013-00058 (PTAB Mar. 7, 2014) (Paper 10).
`Specifically, we denied institution of review because Petitioner had not
`demonstrated that its asserted prior art references, Cohen and Flitcroft,
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`qualified as prior art under Section 18(a)(1)(C) of the AIA,5 because neither
`Cohen nor Flitcroft was published prior to the effective filing date of the
`’988 patent. Mastercard Int’l Inc. v. D’Agostino, Case CBM2013–00057,
`slip op. at 13–14 (PTAB Mar. 7, 2014); Mastercard Int’l Inc. v. D’Agostino,
`Case CBM2013–00058, slip op. at 8‒9 (PTAB Mar. 7, 2014).
`C. The ʼ988 Patent and the ’486 Patent
`The ’988 patent is a continuation of ’486 patent, and, therefore, the
`’988 patent specification is the same as the ’486 patent specification.
`
`
`5 Under section 18(a)(1)(C) of AIA, a petitioner in a transitional proceeding
`who challenges the validity of one or more claims in a covered business
`methods patent on grounds of of unpatentability under §§ 102 and 103 may
`only support such grounds on the following basis:
`(i) prior art that is described by section 102(a) of such
`title (as in effect on the day before such effective date); or
`(ii) prior art that—
`(I) discloses the invention more than 1 year before
`the date of the application for patent in the United States;
`and
`
`(II) would be described by section 102(a) of such
`title (as in effect on the day before the effective date set
`forth in section 3(n)(1)) if the disclosure has been made
`by another before the invention thereof by the applicant
`for patent.
`
`AIA Section 18(a)(1)(C). This section does not apply to an inter partes
`review. 35 U.S.C. § 311(b) allows for a challenge in an inter partes review
`to be raised “on the basis of prior art consisting of patents or printed
`publications.” Accordingly, Cohen and Flitcroft qualify as prior art in an
`inter partes review.
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`Accordingly, the description of the ’486 patent is the same as the description
`of the ’988 patent.
`The ’988 patent discloses a method and system of performing secure
`credit card purchases. 543 Ex. 1001, Abstract. The method and system
`increase overall security by minimizing access to credit card numbers,
`without having to deviate substantially from existing credit card transaction
`practices. Id. at 1:19–29.
`Figure 3 of the ’988 patent is reproduced below:
`
`
`Figure 3, depicted above, schematically represents a secure credit card
`transaction system, where the customer-to-merchant contact is by phone or
`in person. As shown above in Figure 3, customer 54 receives promotional
`information from merchant 56, either by telephone 60 or in person 62. 543
`Ex. 1001, 7:30–35. Customer 54 then contacts custodial authorizing entity
`64, by either telephone 66’ or computer 45’, for authorization. Id. at 7:35–
`43. After confirming authorization, authorizing entity 64 establishes details
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`of the anticipated transaction to determine a payment category, and then
`issues a transaction code to the customer. Id. at 7:43–46. The customer can
`utilize the transaction code to consummate a transaction within the defined
`parameters of the payment category, and the merchant can obtain
`verification and subsequent payment utilizing the transaction code only. Id.
`at 7:46–55.
`D. Illustrative Claims
`Petitioner challenges claims 1–38 of the ’988 patent and claims 1‒30
`of the ’486 patent. 543 Pet. 13–59; 544 Pet. 17‒58. Claims 1 and 21 of the
`’988 patent are illustrative of the claims at issue and are reproduced 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 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 within 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
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`within said designated payment category and to authorize
`payment required to complete the purchase.
`543 Ex. 1001, 8:58–9:19.
`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.
`Id. at 11:5–27.
`
`II. ANALYSIS
`
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard as the claim construction standard to be
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`applied in an inter partes review proceeding). Under the broadest
`reasonable interpretation standard, claim terms are generally 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. In re Translogic Tech.
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.” See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`As discussed above, we authorized additional briefing from Petitioner
`and Patent Owner subsequent to the Federal Circuit’s decision. Petitioner
`and Patent Owner only present arguments that require us to construe the
`single-merchant limitation, the “one or more merchants” limitation, and the
`limitation of “receiving a request . . . to make a purchase . . . that at least
`limits transactions.” See Pet. Remand Br.; PO Remand Resp.; Pet. Remand
`Reply.
`We construed the limitations of “generating a transaction code,”
`“defining at least one payment category,” and “one or more merchants” and
`“a number of transactions” in our Final Decisions. 543 Final Dec. 8‒10, 13;
`544 Final Dec. 7‒10. We see no reason to alter our construction of these
`limitations in this Decision on remand based on Petitioner and Patent
`Owner’s arugments (see Pet. Remand Br.; PO Remand Resp.; Pet. Remand
`Reply), and, therefore, incorporate our construction of these limitations from
`our Final Decisions. 543 Final Dec. 8‒10, 13; 544 Final Dec. 7‒10.
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`1. “said single merchant limitation being included in said payment
`category prior to any particular merchant being identified as said
`single merchant”
`Independent claim 21 of the ’988 patent recites “said single merchant
`limitation being included in said payment category prior to any particular
`merchant being identified as said single merchant” (“the single-merchant
`limitation”). Independent claims 1, 24, 25, and 29 of the ’486 patent also
`recite the single merchant limitation.
`The Federal Circuit determined that the single-merchant limitation
`requires that “when the transaction code is requested, the request limits the
`number of authorized merchants to one but does not then identify the
`merchant, such identification occuring only later.” D’Agostino, 844 F.3d at
`950. The Federal Circuit further determined that the single-merchant
`limitation “clearly requires a separation in time between the communication
`of one piece of information and the communication of another,” where the
`single merchant is not identified at the time of requesting a transaction code
`but “[o]nly later is the ‘particular merchant’ identified, and the ‘particular
`merchant’ is identified ‘as said single merchant.’” Id. at 948‒949.
`Petitioner and Patent Owner agree that the single-merchant limitation
`requires that “when the transaction code is requested, the request limits the
`number of authorized merchants to one but does not then identify the
`merchant, such identification occuring only later.” Pet. Remand Br. 1‒2; PO
`Remand Resp. 4. Accordingly, we apply the Federal Circuit’s construction
`of the single-merchant limitation to require that “when the transaction code
`is requested, the request limits the number of authorized merchants to one
`but does not then identify the merchant, such identification occuring only
`later.”
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`2. “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 claims 1, 17, 19, and 22 of the ’988 patent recite “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” (“the one or more merchants limitation”). The Federal Circuit
`noted that the one or more merchants limitation “might call for a different
`analysis from that which governs the single-merchant limitation.”
`D’Agostino, 844 F.3d at 951.
`Petitioner and Patent Owner agree that the one or more merchants
`limitation encompasses the single merchant limitation. Tr. 56:6‒12;
`Pet. Remand Br. 11‒12; Pet. Remand Reply 4‒5. Patent Owner argues that
`the construction of the one or more merchants limitation must be modified to
`be consistent with the Federal Circuit’s construction of the single merchant.
`PO Remand Resp. 11‒12. Patent Owner, accordingly, argues that the one or
`more merchants limitation should be construed to mean “when the
`transaction code is requested, the request[] limits the number of authorized
`merchants to one or more merchants but does not then identify any of the
`one or more merchants, such identification occuring only later.” Id.
`Petitioner disagrees. Pet. Remand Reply 4‒5.
`We agree with Patent Owner that when the transaction code is
`requested, the request does not identify any of the one or more merchants.
`Such a modification of the “one or more merchants” is consistent with the
`modification to the “single-merchant” discussed above. Accordingly, we
`construe the one or more merchants limitation to require that “when the
`transaction code is requested, the request limits the number of authorized
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`merchants to one or more merchants but does not then identify the one or
`more authorized merchants, such identification occuring only later.”
`3. “receiving a request . . . to make a purchase . . . that at least limits
`transactions”
`Independent claim 1 of the ’988 patent recites “at least limiting a
`number of transactions to one or more merchants.” Independent claims 21
`and 22 of the ’988 patent similarly recites “at least limits transactions.”
`Independent claim 17 of the ’988 patent and independent claim 25 of the
`’486 patent recite “limits a nature[] of a series of subsequent purchases.”
`Independent claim 19 of the ’988 patent and independent claim 29 of the
`’486 patent recite “limits a nature of a subsequent purchase.” Independent
`claim 24 of the ’486 recites “limit a nature of a subsequent purchases.”
`Independent claim 1 of the ’486 patent recites “limiting purchases.”
`Neither Petitioner nor Patent Owner present any arguments drawing a
`distinction between the scope of the independent claims with respect to “a
`number of transactions.”6, 7 Rather, both Petitioner and Patent Owner only
`
`
`6 Petitioner argues that the surrounding text for independent claims 1, 24, 25,
`and 29 of the ’486 patent “is not restricted to multiple transactions.” Pet.
`Remand Br. 9‒10, n.2. To the extent Petitioner argues that the scope of
`independent claims 1, 24, 25, and 29 is distinguished from independent
`claim 21 of the ’988 patent, such an argument is untimely as being presented
`for the first time in the briefing on remand from the Federal Circuit.
`7 Although Patent Owner asserts that claim 21 of the ’988 patent is
`representative of the challenged claims, Patent Owner argues for the first
`time that independent claims 1, 24, 25, and 29 of the ’486 patent recite
`“making more than one purchase/transaction.” PO Remand Resp. 6‒7.
`Patent Owner argues that this argument originally was raised in the Patent
`Owner Response. 543 PO Resp. 24‒25; 544 PO Resp. 19‒20. We,
`however, are unable to discern anywhere in the cited areas that this argument
`originally was raised. Accordingly, we determine that Patent Owner
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`present arguments directed to independent claim 21 of the ’988 patent,
`which recites “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.” Pet. Remand Br. 7‒10; PO Remand
`Resp. 6‒8; Pet. Remand Reply 1‒4; see generally Pet.; see generally PO
`Resp.
`Petitioner argues that the Federal Circuit held that the single-merchant
`limitation only requires that the “request limits the number of authorized
`merchants to one but does not then identify the merchant, such identification
`occuring later.” Pet. Remand Br. 8 (citing D’Agostino, 844 F.3d at 948,
`950). That is, Petitioner argues that the Federal Circuit did not hold that the
`single-merchant limitation requires “a transaction code that could be used
`for multiple transactions; a single transaction would suffice.” Id. at 8‒9
`(citing D’Agostino, 844 F.3d at 950). Petitioner further argues that the plain
`language of independent claim 21 of the ’988 patent recites that the account
`holder requests “a transaction code to make a purchase,” and, therefore, the
`broadest reasonable interpretation encompasses a single transaction with a
`single merchant. Id. at 9‒10; Pet. Remand Reply 2‒3; 543 Pet. 27‒28.
`Patent Owner argues that independent claim 21 of the ’988 patent
`recites receiving a request to make a purchase that “at least limits
`transactions” to a single merchant, and, thus, the plain language of
`independent claim 21 recites “[t]ransactions being plural, not singular.” PO
`Remand Resp. 6; 543 Prelim. Resp. 22‒23 (emphasis in original).
`
`improperly raises this argument for the first time. In any event, Cohen
`discloses “making more than one purchase/transaction,” as discussed below
`in Section II.B.2.c.
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`Accordingly, Patent Owner argues that the plain language of independent
`claim 21 of the ’988 patent requires multiple transactions.8
`We agree with Petitioner. Claim 21 of the ’988 patent recites “a
`transaction code to make a purchase,” which plainly means a single
`purchase. Although independent claim 21 of the ’988 patent further recites
`that the request to make a purchase that “at least limits transactions” to a
`single merchant, we find that the limitation “at least limits transactions” only
`requires a single transaction in order to complete the recited “to make a
`purchase.” This plain and ordinary meaning of the claim limitation is further
`consistent with the ’988 patent specification, which discloses that “[t]he
`payment categories, may be collectively defined as a variety of different
`types of transactions. Such transactions may include a single transaction
`for a specific amount of the purchase to be consummated.” Ex. 1001, 7:61‒
`64 (emphasis added). This disclosure of the ’988 patent specification
`reconciles the recited claim limitations of “a purchase” and “transactions”
`such that a “single transaction” is included within the meaning of the recited
`“transactions.”
`Accordingly, we construe the 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” of independent
`
`
`8 Petitioner argues that “Patent Owner waived this argument on remand
`because it failed to raise it with the Federal Circuit on appeal.” Pet. Remand
`Br. 9. We, however, agree with Patent Owner that because the “single-use
`card” was not relied on in determining that the challenged claims were
`unpatentable in our Final Decision, this argument was not applicable on
`appeal, and, therefore is not waived. See PO Remand Resp. 7.
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`claim 21 of the ’988 patent to encompass a single transaction with a single
`merchant.
`4. “one or more merchants” and “a number of transactions”
`Independent claim 1 of the ’988 patent recites “one or more
`merchants” and “a number of transactions.” Independent claims 17, 19, 21,
`and 22 of the ’988 patent and independent claim 1, recite similar limitations.
`In CBM2013-00057, we previously construed these limitations of the ’988
`patent to mean “one or more transactions, where the number of transactions
`is limited to a finite number” and “one merchant up to a plurality of
`merchants, where the number of merchants is a finite number,” respectively.
`Mastercard Int’l Inc. v. D’Agostino, Case CBM2013-00057, slip op. at 8–9
`(PTAB March 7, 2014). Petitioner and Patent Owner accept these
`constructions, and we maintain these constructions for this case. Pet. 14; PO
`Resp. 14–15.
`Anticipation of Claims 1–10, 15-25, 27–33, and 35–38 by Cohen
`B.
`Petitioner contends that claims 1–10, 15–25, 27–33, and 35–38 of the
`ʼ988 patent and claims 1–15 and 22–30 of the ʼ486 patent are unpatentable
`under 35 U.S.C. § 102(e) as anticipated by Cohen. 543 Pet. 15–32; 544
`Pet. 17‒31. Petitioner provides citations for where each claim limitation is
`described by Cohen. 543 Pet. 15–32; 544 Pet. 17‒31. We have reviewed
`Petitioner’s and Patent Owner’s arguments, and their supporting evidence,
`and find that Petitioner has shown by a preponderance of the evidence that
`Cohen anticipates the 1–10, 15–25, 27–33, and 35–38 of the ʼ988 patent and
`claims 1–15 and 22–30 of the ʼ486 patent. 543 Pet. 15–32; 544 Pet. 17‒31.
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`IPR2014-00543 (Patent 8,036,988 C1)
`IPR2014-00544 (Patent 7,840,486 B2)
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`Cohen (543 Ex. 1004)
`1.
`Cohen describes a system of disposable credit card numbers, where
`the credit card numbers are generated for a one-time, single transaction
`basis, after which they are disposed of, or thrown away. 543 Ex. 1004,
`2:35–37. In general, a user dials into her credit card company and provides
`the ordinary credit card number and verification data, and may further
`indicate the transaction for which the customized credit card number will be
`used. Id. at 3:41–53. The user then is provided with a disposable or
`customized credit card number for a single or limited range use. Id.
`For example, an employee’s credit card may be authorized to
`purchase a computer system, thereby transforming the credit card to a
`customized credit card that is valid for only that particular type of purchase.
`Id. at 8:24–35. The card also can be customized for use in a particular store
`or a particular chain of stores. Id.
`Analysis
`2.
`Petitioner contends that claims 1–10, 15–25, 27–33, and 35–38 of the
`ʼ988 patent and claims 1–15 and 22–30 of the ʼ486 patent are unpatentable
`under 35 U.S.C. § 102(e) as anticipated by Cohen. 543 Pet. 15–32; 544
`Pet. 17‒31. We had determined in our Final Written Decisions that
`Petitioner demonstrated by a preponderance of the evidence that Cohen
`anticipates claims 1–10, 15–25, 27–33, and 35–38 of the ʼ988 patent and
`claims 1–15 and 22–30 of the ʼ486 patent. 543 Final Dec. 25; 544 Final
`Dec. 23; see 543 Inst. Dec. 10‒15; see 544 Inst. Dec. 9‒13.
`As discussed above, the Federal Circuit provided a claim construction
`for the single-merchant limitation, and remanded for further proceedings to
`determine whether Cohen discloses the single-merchant limitation and/or the
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`one or more merchants limitation. D’Agostino, 844 F.3d at 950‒951. The
`Federal Circuit, however, agreed that Cohen discloses “designating/selecting
`a payment category before the generation of the transaction code.” Id. at
`951. The single-merchant limitation and the “designating/selecting a
`payment category” limitation were the only two issues raised and addressed
`by the Federal Circuit. Furthermore, as discussed above, we authorized
`additional briefing from Petitioner and Patent Owner subsequent to the
`Federal Circuit’s decision. Petitioner and Patent Owner only present
`arguments towards the single-merchant limitation and the “one or more
`merchants” limitation, which are included in the “receiving a request . . . to
`make a purchase . . . that at least limits transactions” limitation. See Pet.
`Remand Br.; PO Remand Resp.; Pet. Remand Reply. Petitioner and Patent
`Owner do not present arguments towards any other claim limitations, and,
`therefore, we only alter our Final Decisions with respect to the single-
`merchant limitation and the “one or more merchants” limitation, and
`incorporate our analysis of the remaining limitations herein. 543 Final Dec.
`14, 19‒21; 543 Inst. Dec. 10‒15; 544 Final Dec. 13‒14, 17‒19; Inst. Dec. 8‒
`13.
`
`Petitioner argues that Cohen discloses the single-merchant limitation
`because Cohen discloses a card that limits purchases or transactions to (a) a
`single use, (b) a “type of store” and a “type of charge” (“any computer
`store”), and (c) a “certain store.” Pet. Remand Br. 3‒11; Pet. 15‒17; 543
`Ex. 1008 ¶¶ 38, 44. Petitioner further argues that Cohen discloses (d) the
`one or more merchants limitation because Cohen discloses (i) a “chain of
`stores” and (ii) a “type of stores” and a “group of stores.” Pet. Remand Br.
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`11‒15; Pet. 15‒17; 543 Ex. 1008 ¶¶ 38, 44. Patent Owner disagrees. PO
`Remand Resp. 6‒15; PO Resp. 24‒45.
`a. Single-Merchant Limitation ‒ Single-Use Card
`Petitioner argues that Cohen “discloses a credit card that can be used
`for a single transaction with one merchant.” Pet. Remand Br. 3‒4; 543
`Pet. 27‒28; 544 Pet. 18‒19. Petitioner asserts that Cohen discloses a card
`that is “generated for a one time, single transaction basis.” Pet. Remand Br.
`3‒4 (quoting 543 Ex. 1004, 2:35‒43) (emphasis omitted). Petitioner argues
`that “the single use card by definition limits the number of authorized
`merchants to one, as it can only be used at one merchant to make a single
`transaction.” Id. at 4 (citing 543 Ex. 1008 ¶¶ 40‒41). Petitioner further
`argues “the user does not need to identify the merchant where the card will
`be used ‒ the single use card may be generally used at any merchant,”
`because Cohen discloses that the single use card is used for “general” use.
`Id. (citing 543 Ex. 1004, 5:17‒19; 543 Ex. 1008 ¶ 41). Notwithstanding
`Patent Owner’s arguments, which we address below, we agree with
`Petitioner’s arguments and findings, and adopt them as our own.
`Patent Owner argues that Cohen’s single use card does not disclose
`the single-merchant limitation because the single-merchant limitation
`requires more than one transaction. PO Remand Resp. 6‒7; 543 PO
`Resp. 24‒25; 544 PO Resp. 19‒20. We are not persuaded by this argument.
`As discussed above, we are not persuaded by Patent Owner’s argument that
`the challenged claims require more than one transaction. See supra § II.A.5.
`Accordingly, we agree with Petitioner that Cohen’s single use card is
`restricted to a single merchant, and the single merchant is not identified until
`later. Therefore, we find that Petitioner has demonstrated by a
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`preponderance of the evidence that Cohen’s disclosure of a “single use” card
`anticipates the single-merchant limitation.
`b. Single Merchant Limitation – “Type of Store” and “Type of
`Charge”
`Petitioner argues that Cohen discloses that a customized credit card
`can be generated such that it can be used at “any computer store,” and such a
`card meets the single-merchant limitation. Pet. Remand Br. 5‒7; 543
`Pet. 27‒28; 544 Pet. 18‒19; 543 Pet. Reply 6‒7. Specifically, Petitioner
`argues that Cohen discloses that “an employee could be given authorization
`to purchase a new computer system,” and “a customized credit card could be