Paper 28
`Entered: August 31, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MASTERCARD INTERNATIONAL INCORPORATED,
`Petitioner,
`
`v.
`
`JOHN D’AGOSTINO,
`Patent Owner.
`
`
`
`Case IPR2014-00543
`Patent 8,036,988 C1
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
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`IPR2014-00543
`Patent No. 8,036,988 C1
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`I.
`
`INTRODUCTION
`
`A. Background
`MasterCard International Incorporated (“Petitioner”) filed a Petition
`requesting an inter partes review of claims 1–38 of U.S.
`Patent No. 8,036,988 C11 (Ex. 1001; “the ’988 patent”). Paper 1 (“Pet.”).
`John D’Agostino (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“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 under 35 U.S.C. § 102(e) as anticipated by Cohen,2 and as
`to claims 11–14, 26, and 34 under 35 U.S.C. § 103(a) as obvious over Cohen
`and Musmanno.3 Paper 8 (“Dec.”).
`Patent Owner filed a Response (Paper 16, “PO Resp.”), and Petitioner
`filed a Reply (Paper 17, “Pet. Reply”). Petitioner filed a Motion to Exclude
`evidence (Paper 20, “Mot.”), Patent Owner filed an Opposition to
`Petitioner’s Motion to Exclude evidence (Paper 23, “Opp. to Mot.”), and
`Petitioner filed a Reply in support of its Motion to Exclude (Paper 24,
`“Reply to Opp. to Mot.”). Oral hearing was held on May 12, 2015, and the
`hearing transcript has been entered in the record. Paper 27 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c). 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 are persuaded that Petitioner has shown
`
`
`1 A Reexamination Certificate was issued on October 15, 2014.
`2 U.S. Patent No. 6,422,462 B1 (Ex. 1004, “Cohen”).
`3 U.S. Patent No. 5,826,243 (Ex. 1006, “Musmanno”).
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`IPR2014-00543
`Patent No. 8,036,988 C1
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`by a preponderance of the evidence that claims 1–38 of the ʼ988 patent are
`unpatentable. Petitioner’s Motion to Exclude is denied.
`B. Related Proceedings
`Petitioner identifies the following related district court proceeding
`involving the ’988 patent and in which Petitioner is a party: D’Agostino v.
`MasterCard, Inc., No. 1:13–cv–00738 (D. Del. filed Apr. 26, 2013).
`Pet. 59.
`Petitioner also identifies the ’988 patent as the subject of Ex Parte
`Reexamination proceeding No. 90/012,517. Id. at 1, 59.
`In related proceeding IPR2014-00544, Petitioner seeks review of U.S.
`Patent No. 7,840,486 B2, to which the ’988 patent claims priority. Id. at 59.
`Petitioner previously sought a covered business method patent review of the
`’988 patent in proceeding CBM2013-00057, but we denied institution of
`review. Id. at 11–13; Mastercard Int’l Inc. v. D’Agostino, Case CBM2013-
`00057 (PTAB Mar. 7, 2014)(Paper 9). Specifically, we denied institution of
`review because Petitioner had not demonstrated that Cohen or Flitcroft
`qualifies as prior art under Section 18(a)(1)(C) of the AIA,4 because neither
`
`4 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
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`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).
`C. The ʼ988 Patent
`The ’988 patent discloses a method and system of performing secure
`credit card purchases. 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.
`
`
`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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`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.
`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
`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.
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`D. Illustrative Claims
`Petitioner challenges claims 1–38 of the ’988 patent. Pet. 13–59.
`Claims 1 and 21 are illustrative of the claims at issue and are reproduced
`below:
`
`A method of performing secure credit card
`1.
`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
`within said designated payment category and to authorize
`payment required to complete the purchase.
`Ex. 1001, 8:58–9:19.
`21. A method for implementing a system for
`performing secure credit card purchases, the method
`comprising:
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`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.
`E. Claim Construction
`The Board interprets 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 In re Cuozzo Speed Techs.,
`LLC, No. 2014-1301, 2015 WL 4097949 at *7–*8 (Fed. Cir. July 8, 2015)
`(“Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation.”). Under the broadest reasonable interpretation standard,
`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
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`disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`1. “generating a transaction code”
`Independent claims 1, 17, 19, 21, and 22 recite “generating a
`transaction code.” Petitioner, in its Petition, proposes this limitation means
`“creating a code usable as a substitute for a credit card number in a purchase
`transaction, the number pre-coded to be indicative of a specific credit card
`account.” Pet. 13 (citation omitted). In our Decision to Institute, we
`construed “generating a transaction code,” under the broadest reasonable
`interpretation, to mean “creating or producing a code that is usable as a
`substitute for a credit card number in a purchase transaction, the transaction
`code is pre-coded to be indicative of a specific credit card account.” Dec. 6–
`7.
`
`Patent Owner argues that “generating a 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.” PO Resp. 4–5 (emphasis added). Patent Owner
`specifically argues that our construction of “generating a transaction code” is
`overly narrow by requiring that the transaction code is pre-coded to be
`indicative of only a “credit card account,” and should be broadly construed
`to include both a credit card account or debit card account. Id. at 5–9.
`Patent Owner additionally argues that the ʼ988 patent claims specifically
`require that the generated transaction code indicates or reflects the payment
`category. Id. at 8. Petitioner responds that such a broadening of this
`limitation is unnecessary because the claims limit the scope of this limitation
`to “credit card” purchases. Pet. Reply 2. Petitioner also responds that claim
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`differentiation, specifically claim 5, precludes “generating a transaction
`code” from indicating or reflecting a “payment category.” Id.
`We agree with Petitioner in part and Patent Owner in part. Claim 21
`recites “generating a transaction code . . . said transaction code associated
`with said account and reflecting at least the limits of said payment category.”
`Accordingly, the ʼ988 patent claims require that the “transaction code” is
`both associated with the account and reflects the limits of the payment
`category.
`Claim 21 additionally recites “[a] method for . . . performing secure
`credit card purchases” and “identifying an account that is used to make
`credit card purchases.” Accordingly, the ʼ988 patent claims limit the scope
`of the “account” to “credit card purchases.” Based on the foregoing
`discussion, under the broadest reasonable interpretation and based on the
`ʼ988 patent claim limitations, we construe “generating a transaction code” to
`mean “creating or producing a code that is usable as a substitute for a credit
`card number in a purchase transaction, the transaction code is pre-coded to
`be indicative of a specific credit card account and reflecting the limits of the
`payment category.”
`2. “defining at least one payment category”
`Independent claim 1 recites “defining at least one payment category.”
`Claim 1 further recites the payment category includes “limiting a number of
`transactions to one or more merchants” and “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 claims 17, 19, 21, and 22 recite similar limitations. Based on
`the context of the ʼ988 patent specification, and under the broadest
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`reasonable interpretation, we construed this limitation to mean “specifying
`the type of limitation (or limitations) that are available to be applied to a
`transaction code in order to limit its use.” Dec. 7–8.
`Patent Owner argues that this construction is not the broadest
`reasonable interpretation, and should be construed to mean “specifying the
`limit (or limits) of a payment category that are applied to a transaction code
`in order to limit its use.” PO Resp. 9–10. Patent Owner specifically argues
`that the “defining” is to “mark the limits of the payment category.” Id.
`Petitioner argues that Patent Owner’s construction fails to give meaning to
`the term “payment category” and, therefore, Patent Owner’s construction is
`not the broadest reasonable interpretation. Pet. Reply 2–3.
`We agree with Petitioner. Patent Owner’s proposed construction does
`not provide any meaning to the term “payment category.” As we had
`determined in our Decision to Institute, the ʼ988 patent does not provide a
`definition for the term “payment category.” Dec. 7–8. Rather, the ’988
`patent describes a variety of possibilities, for example: 1) “[e]ach of the
`payment categories are reflective of a different type of payment desired or
`required to consummate the intended purchase”; 2) payment categories “may
`include a single transaction involving a specific dollar amount for a purchase
`within a specific time period”; or, 3) “a single transaction may be involved .
`. . [with] a maximum limit or a dollar amount.” Ex. 1001, 3:53–64.
`Accordingly, we construe “defining a payment category” to mean
`“specifying the type of limitation (or limitations) that are available to be
`applied to a transaction code in order to limit its use.” See Dec. 7–8;
`Pet. 13–14.
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`3. “particular merchant,” “said single merchant limitation being
`included in said payment category prior to any particular merchant
`being identified as said single merchant,” and “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”
`We previously construed the term “particular merchant” to mean “the
`merchant with whom the customer is transacting.” Dec. 9. We also
`construed “[said] single merchant limitation being included in said payment
`category prior to any particular merchant being identified as [said] single
`merchant” to mean “any group, category, or type of merchant is included in
`the payment category prior to the customer selecting a particular merchant
`for a transaction.” Id. at 8–10. Patent Owner argues this is not the broadest
`reasonable interpretation of “particular merchant” and submits that
`“particular merchant” should be construed to mean “a specific merchant
`with whom a customer can engage in a purchase transaction.” PO Resp. 12–
`14. Patent Owner does not provide any further explanation for their
`proposed construction. Petitioner argues that Patent Owner’s construction is
`incorrect because Patent Owner argued “the exact opposite to obtain
`allowance during the ex parte prosecution of the parent ʼ486 patent.” Pet.
`Reply 3 (citing Ex. 1013, 187).
`We decline to adopt Patent Owner’s construction of “particular
`merchant.” We are not persuaded that adding the term “specific” to our
`construction alters the meaning of our construction of “particular merchant.”
`Independent claim 21 recites “said single merchant limitation being included
`in said payment category prior to any particular merchant being identified as
`said single merchant.” Patent Owner fails to provide us with a meaningful
`explanation as to how transactions are limited to a single merchant, without
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`identifying any particular merchant. Accordingly, we determine that the
`“single merchant” includes the “particular merchant” without identifying the
`particular merchant. Absent such a relationship between the recited “single
`merchant” and “particular merchant,” the claim language would be
`indefinite as ambiguously limiting transactions to an unidentified, particular
`merchant.5 Accordingly, we maintain our preliminary construction of
`“particular merchant” to mean “the merchant with whom the customer is
`transacting.”
`Patent Owner further argues that the plain and ordinary meaning of
`“merchant” is “someone who buys and sells goods.” PO Resp. 19–22 (citing
`Ex. 2007 ¶¶ 19, 24; Ex. 2005, 3). We agree with Patent Owner. We note
`that this broad definition for the term “merchant” is not limited by any
`business association or corporate relationship such that specific stores within
`a chain of stores are not individually merchants.
`Patent Owner further argues that “‘said single merchant limitation’
`simply refers to and is synonymous with the recited phrase ‘limits
`
`5 In addition to a number of other arguments, Patent Owner made this same
`argument before the Examiner during the Reexamination of the ʼ988 patent:
`Further, the examiner’s argument fails because the examiner
`incorrectly construes “a particular merchant” to apparently
`mean a merchant that is defined by its location, which is an
`improper construction. In light of the ’988 patent specification,
`the correct meaning of a particular merchant is simply an
`identifiable merchant that a customer can use the transaction
`code with to make purchases.
`Reexamination Proceeding No. 90/012,517, App. Br. 18. This argument is
`not a clear disavowal as it obfuscates any clear meaning of “particular
`merchant” for the reasons noted.
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`transactions to a single merchant’” and is not limited to “groups, cateogories,
`or types of merchants.” Id. We agree with Patent Owner. Independent
`claim 21 recites “receiving a request . . . 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.”
`(Emphasis added). Patent Owner explains that the “single merchant
`limitation” limits the number of merchants to a single merchant.
`PO Resp. 19–20; Tr. 32:1–5; Ex. 2007 ¶ 22. Accordingly, we construe the
`limitation “said single merchant limitation being included in said payment
`category prior to any particular merchant being identified as said single
`merchant” to mean “the merchant transactions are limited to a single
`merchant and are included in the payment category prior to the customer
`selecting a particular merchant for a transaction.” Independent claims 1, 17,
`19, and 22 recite “one or more merchants” instead of a “single merchant,”
`but otherwise recite similar limitations. Patent Owner acknowledges that the
`recited “one or more merchants” limitation encompasses the recited “single
`merchant” limitation. Tr. 56:6–12.
`4. “one or more merchants” and “a number of transactions”
`Independent claim 1 recites “one or more merchants” and “a number
`of transactions.” Independent claims 17, 19, 21, and 22 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
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`these constructions, and we maintain these constructions for this case.
`Pet. 14; PO Resp. 14–15.
`
`II. ANALYSIS
`A. Anticipation of Claims 1–10, 15-25, 27–33, and 35–38 by Cohen
`1. Overview
`Petitioner contends that claims 1–10, 15–25, 27–33, and 35–38 of the
`ʼ988 patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by
`Cohen. Pet. 15–32. Petitioner provides citations for where each claim
`limitation is described by Cohen. Id. We have reviewed the Petition and
`supporting evidence and find that Petitioner has shown that Cohen
`anticipates the challenged claims. See id.
`2. Cohen (Ex. 1004)
`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. 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.
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`3. Analysis
`Petitioner contends that claims 1–10, 15–25, 27–33, and 35–38 of the
`ʼ988 patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by
`Cohen. Pet. 15–32. Patent Owner argues that Cohen fails to disclose “said
`single merchant limitation being included in said payment category prior to
`any particular merchant being identified as said single merchant” and
`“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,” as recited by claim 21. PO Resp. 24–32.
`Patent Owner specifically argues that (a) Cohen’s merchant type limit fails
`to disclose “prior to any particular merchant being identified,” (b) Cohen’s
`type of store limit and type of charges fail to disclose a “single merchant
`limitation,” (c) Cohen’s certain store limit cannot be made before identifying
`a specific merchant as the certain store, (d) Cohen’s group of stores limit is
`not a limit to a single merchant and cannot be made before identifying
`specific stores as members of the group of stores, and (e) Cohen’s particular
`chain of stores limit cannot be made before identifying a particular
`merchant.6 Id. Patent Owner further argues that Cohen fails to disclose
`
`
`6 Patent Owner further argues that the Ex Parte Reexamination of the ʼ988
`patent confirmed claims 21 and 23–30 because Cohen fails to disclose
`“single merchant limitation being included in said payment category prior to
`any particular merchant being identified as said single merchant.” PO
`Resp. 33; see Ex. 1021, 4. However, unless Patent Owner made arguments
`creating a clear disavowal of claim scope that demonstrate how Cohen fails
`to meet a disputed limitation, we are not bound, under statute or otherwise,
`by such arguments. Given that this proceeding and the Reexamination
`proceeding were concurrent, Patent Owner failed in its duty to clarify its
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`“designating/selecting a payment category that places limitations on a
`transaction code before the transaction code is generated.” Id. at 39–45. In
`other words, Patent Owner argues that Cohen fails to disclose (a) the single
`merchant limitation, (b) said single merchant limitation is included prior to
`any particular merchant being identified as the single merchant, and (c)
`designating/selecting a payment category that places limitations on a
`transaction code before the transaction code is generated.
`Although we discuss these arguments with respect to claims 21 and
`23–30, Patent Owner presents similar arguments for claims 1–10, 15–20, 22,
`and 31–38. See id. at 34–45. Because claims 1–10, 15–20, 22, and 31–38
`recite “one or more merchants,” which encompasses claim 21’s recitation of
`“single merchant,” we specifically address claim 21. Patent Owner
`acknowledges that the recited “one or more merchants” limitation
`encompasses the recited “single merchant” limitation, and, therefore, if
`Cohen meets the “single merchant” limitations of claims 21 and 23–30,
`
`
`claim meaning during the Reexamination proceeding. See supra, note 5.
`We instituted review of the claims prior to the issuance of the
`Reexamination Certificate. Patent Owner also had an opportunity to amend
`claims in each proceeding. Moreover, this case involves a different
`evidentiary record that has been supplemented by arguments and evidence
`by Petitioner that was not before the Examiner in the Reexamination
`proceeding. These supplemental arguments and evidence include those
`impacting the claim construction and application of a “single merchant” to
`passages in Cohen not discussed in the Reexamination proceeding. See
`Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (The
`“court . . . observes that the PTO is under no obligation to accept a claim
`construction proffered as a prosecution history disclaimer, which generally
`only binds the patent owner.”).
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`Cohen must necessarily meet the limitations of claims 1–10, 15–20, 22, and
`31–38. See Tr. 56:6–12.
`a. Single Merchant Limitation
`Patent Owner argues that Cohen’s disclosure of limiting a credit
`card’s use to a type of store, a type of charge, or to a group of stores does not
`meet the “single merchant” limitation. PO Resp. 28–31. Patent Owner
`specifically argues that these disclosures by Cohen “cannot meet the
`disputed claim limitation, because the claim limitation requires a payment
`category that limits transactions to a [sic] one merchant.” Id. at 29 (citing
`Ex. 2007 ¶¶ 46, 47). Patent Owner also argues that Cohen’s disclosure of a
`group of stores does not meet this limitation because the “phrase ‘group of
`stores’ itself means more than one merchant.’” Id. at 30. Patent Owner
`further argues that Cohen’s particular chain of stores disclosure fails to meet
`the “single merchant limitation.” Id. at 31–32. We disagree with Patent
`Owner. As discussed above, we construe the “single merchant” limitation as
`limiting transactions to a single merchant. See supra Section I.E.3. We
`further agree with Patent Owner’s broad construction of “merchant” to mean
`“someone who buys and sells goods.” Supra Section I.E.3. Accordingly,
`under the broadest reasonable construction, the “single merchant” limitation
`includes limiting transactions to any chain of stores or group of stores that is
`identified as a single merchant.
`Petitioner contends that Cohen discloses a card that can be customized
`such that it can be valid only for purchases in a particular store or a
`particular chain of stores, such as a particular restaurant or a particular chain
`of restaurants. Pet. Reply 6 (citing Ex. 1004, 8:25–39); Pet. 27 (citing
`Ex. 1004, 8:25–39); Ex. 1004, 8:25–39. As discussed above, the “particular
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`merchant” is “the merchant with whom the customer is transacting,” and the
`“single merchant” includes the “particular merchant” in a broad manner
`without identifying the particular merchant. See supra Section I.E.3. The
`relationship between a chain of stores and a particular store satisfies the
`relationship between the “single merchant” and the “particular merchant.”
`For example, the “single merchant” could be Target or McDonald’s chain of
`stores, where a “particular merchant” could be a specific Target or
`McDonald’s store, e.g., at a particular location or online. See PO Resp. 31–
`32; Tr. 33:19–37:2. Patent Owner argues that in such a scenario Target or
`McDonald’s is both the “single merchant” limitation and the “particular
`merchant” (Tr. 33:1–37:5), however, Patent Owner has not directed us to
`evidence or provided a rationale to rebut our construction that the chain of
`stores is the “single merchant” and the specific store in the chain of
`restaurants is the “particular merchant.” Accordingly, we find that Cohen
`discloses the recited “single merchant” limitation.
`b. Single merchant limitation being included in said payment
`category prior to any particular merchant being identified
`as said single merchant
`Patent Owner argues that Cohen’s particular chain of stores requires
`identifying a specific chain of stores prior to limiting to that particular store
`or particular chain of stores, and, therefore, does not meet the disputed claim
`limitation. PO Resp. 29–32. Patent Owner specifically argues that “[i]t is
`known that a chain of stores consists of series of stores that are owned by
`one ownership and selling the same goods,” and, as such, the particular
`merchant necessarily must have been identified when the single merchant
`was identified––contrary to the claim limitation. See id. at 31 (citing
`Ex. 2007 ¶¶ 41–42).
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`We disagree with Patent Owner. As discussed above, we construed
`the relationship between the recited “particular merchant” and “single
`merchant” such that the “single merchant” includes the particular merchant
`as a member of the single merchant chain, without identifying the particular
`merchant. See supra Section I.E.3. In other words, for example, a “single
`merchant” can be the chain of stores, whereas the “particular merchant” is a
`single store of that chain of stores. Supra Section I.E.3; see supra Section
`II.A.3.a. Patent Owner agrees that a chain of stores may have single
`ownership. See Tr. 36:21–37:2. Given such single ownership, Patent Owner
`has not set forth persuasive evidence or rationale to demonstrate that it
`precludes our construction of a “single merchant” as the chain of stores and
`a “particular merchant” as a specific store in that chain of stores. See supra
`Section I.E.3; Section II.A.3.a. As discussed above, our claim construction
`of a “single merchant” as the chain of stores and a “particular merchant” as a
`specific store in that chain of stores constitutes the broadest reasonable
`construction of the term. See id. Accordingly, we agree with Petitioner that
`Cohen’s disclosure of a credit card that is valid only for purchases in a
`specific chain of stores, such as a specific chain of restaurants, meets this
`disputed limitation. Pet. Reply 6 (citing Ex. 1004, 8:25–39); Pet. 27–28.
`c. Designating/selecting a payment category that places
`limitations on a transaction code before the transaction
`code is generated
`Patent Owner argues that independent claims 1, 17, 19, 21, and 22
`require that the step of “generating the transaction code” is performed after
`identifying an account and designa