UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________
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`MASTERCARD INTERNATIONAL INCORPORATED
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`Petitioner
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`v.
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`JOHN D’AGOSTINO
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`Patent Owner
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`___________
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`Case IPR2014-00543
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`Patent 8,036,988
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`___________
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`PATENT OWNER’S REQUEST FOR REHEARING
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`UNDER 37 C.F.R. § 42.71(d)
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`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________
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`MASTERCARD INTERNATIONAL INCORPORATED
`
`Petitioner
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`v.
`
`JOHN D’AGOSTINO
`
`Patent Owner
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`___________
`
`Case IPR2014-00543
`
`Patent 8,036,988
`
`___________
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`
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`PATENT OWNER’S REQUEST FOR REHEARING
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`UNDER 37 C.F.R. § 42.71(d)
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`In accordance with 37 C.F.R. § 42.71(d), Patent Owner submits the
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`Preliminary Statement
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`following Request for Rehearing of the Final Written Decision dated August 31,
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`2015 that finds claims 1-38 of U.S. Patent No. 8,036,988 (“the ‘988 patent”)
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`unpatentable over the asserted prior art.
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`
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`Patent Owner respectfully requests a rehearing on the Board’s Final Written
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`Decision because (1) the Board misapprehended or overlooked the claim limitation
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`“as said single merchant,” which when considered, the claim limitation changes the
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`Board’s claim construction and (2) under the correct claim construction, the claim
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`limitation is missing from the asserted prior art. For these reasons, the Patent
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`Owner requests the Board to issue a new Final Written Decision that finds claims
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`21 and 23-30 of the ‘988 patent are patentable over the asserted prior art.
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`Applicable Law
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`A final decision is reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
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`An abuse of discretion occurs when a “decision was based on an erroneous
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`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
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`judgment.” Illumina, Inc. v. Trustees of Columbia Univ., IPR2012-00007,
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`Decision, Request for Rehearing, Paper 54 at 2 (May 10, 2013).
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`The Board interprets claims of an unexpired patent according to their
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`broadest reasonable interpretation in light of the specification of the patent in
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`1
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`which they appear. 37 C.F.R. § 42.100(b). Claim terms are given their ordinary and
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`customary meaning as would be understood by one of ordinary skill in the art in
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`the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007). “All words in a claim must be considered in judging the
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`patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385
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`(CCPA 1970).
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`Argument
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`
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`In its Final Written Decision, the Board “[construed] the relationship
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`between the recited ‘particular merchant’ and the ‘single merchant’ such that the
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`‘single merchant’ includes the particular merchant as a member of the single
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`merchant chain, without identifying the particular merchant.” Paper 28 at 19. In
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`reaching this conclusion, the Board misapprehended or overlooked the claim
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`limitation “as said single merchant,” which immediately follows the claim
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`language “prior to any particular merchant being identified.”
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`The Patent Owner argued that claims 21 and 23-30 of the ‘988 patent
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`include the claim limitation “said single merchant limitation being included in said
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`payment category prior to any particular merchant being identified as said single
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`merchant.” See Ex. 1001, 11:14-16; PO Resp. at 18-20 (emphasis added). The
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`Patent Owner further argued that dropping “as said single merchant” from the
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`claim limitation is improper. PO Resp. at 18-22, 31-32; Tr. 26:23-27:11. The
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`2
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`Patent Owner further argued that under the proper claim construction, a limit to a
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`chain of stores does not satisfy the claim limitation. PO Resp. at 31-32.
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`Specifically, a limit to a chain of stores as the single merchant cannot satisfy the
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`claim limitation, because creating such a limit requires identification of the chain
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`store before the limit can be created and the purchases restricted to the identified
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`chain store, whereas the claim limitation requires that the single merchant is not
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`identified before the limit to the single merchant is created. Id.
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`
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`The Board rejected the Patent Owner’s argument and found “a single
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`merchant can be the chain of stores, whereas the particular merchant is a single
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`store of that chain of stores.” Paper 28 at 19 (internal quotations removed). The
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`Board further concluded “the ‘single merchant’ could be Target or McDonald’s
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`chain of stores, where a ‘particular merchant’ could be a specific Target or
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`McDonald’s store, e.g., at a particular location or online.” Paper 28 at 18. This
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`finding is an erroneous conclusion of law and a clearly erroneous finding of fact.
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`
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`First, the Board has misconstrued the claim limitation by improperly
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`stripping “as said single merchant” from the claim limitation. This is apparent
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`because in construing the claim limitation the Board did not account for the
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`requirement that the “particular merchant” is the “single merchant,” as required by
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`the claim. The claim explicitly recites “said single merchant limitation being
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`3
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`included in said payment category prior to any particular merchant being
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`identified as said single merchant.”
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`The Board’s error is most easily shown by inserting Target as the single
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`merchant limit and Location A (a subset store of the single merchant Target chain
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`store) as the particular merchant limit within the claim itself: said Target (single
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`merchant) being included in said payment category prior to Location A (any
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`particular merchant) being identified as said Target (single merchant).
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`Accordingly, as seen here, when the entire claim limitation is considered, including
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`“as said single merchant,” it becomes clear that the Board’s claim construction is
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`erroneous.1
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`
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`The Board’s claim construction is incorrect because the Board’s construction
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`results in Location A being both the particular merchant as a subset of the single
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`merchant and also the single merchant itself. This contradicts the Board because
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`the Board is separately relying upon the chain of stores to meet the single merchant
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`1 This same demonstration applies whether the chain of stores is identified as
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`Target, McDonalds, or any other chain of stores as the single merchant. In any
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`instance, when the entire claim is considered, the subset store that is relied upon by
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`the Board as the particular merchant limit becomes both the particular merchant
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`and the single merchant, which contradicts the Board’s reliance upon the chain of
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`stores to meet the single merchant limit without identifying a particular merchant.
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`4
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`limit and then a subset store of the chain of stores to meet the particular merchant
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`limit. But, this contradiction does not exist when “as said single merchant” is not
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`included in the claim – further illustrating that the Board did not consider “as said
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`single merchant” in its analysis. Consequently, the Board’s claim construction that
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`improperly strips “as said single merchant” from the claim limitation is an
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`erroneous conclusion of law that calls for correction. In re Wilson, 424 F.2d at
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`1382.
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`Finally, the Board’s improper claim construction inevitably lead to the
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`Board’s incorrect finding that Cohen’s chain of stores limit satisfies the claim
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`limitation. More specifically, it is apparent that the Board acknowledges that
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`creating a limit to a chain of stores requires identifying the chain of stores as the
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`single merchant. Paper 28 at 17-19. But the claim requires that no particular
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`merchant is identified as the single merchant before the limit to the single merchant
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`is created. PO Response at 31-32. And, as further discussed above, under the
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`proper claim construction, including the language “as said single merchant” the
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`Board cannot meet the claim limitation by relying upon a subset store of the chain
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`of stores to teach the particular merchant and the chain of stores to teach the single
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`merchant, because this creates a conflict between the recited particular merchant
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`and the recited single merchant.
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`5
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`Conclusion
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`The Board should issue a new Final Written Decision because the Board’s
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`current decision is based on a clear error in the Board’s claim construction and
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`application of the asserted prior art under the incorrect claim construction.
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`Specifically, the Board abused its discretion and created a reversible error by
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`failing to consider the entire claim limitation, including “as said single merchant.”
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`Not considering “as said single merchant” as part of the claim, led the Board to an
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`incorrect claim construction and an incorrect finding that a limit to a chain of
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`stores meets the claim limitation. For these reasons, Patent Owner respectfully
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`requests the Board to issue a new Final Written Decision finding claims 21 and 23-
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`30 of the ‘988 patent are patentable over the asserted references.
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`Since the remarks above are considered sufficient to reverse the Board’s
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`Final Written Decision, silence to other assertions in the Final Written Decision is
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`not a concession that such assertions are accurate or such requirements have been
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`met. The Patent Owner reserves the right to appeal the issues presented in this
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`request and any other issues presented in the Final Written Decision.
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`6
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`Respectfully submitted,
`By: /s/ Stephen Lewellyn
`Stephen J. Lewellyn (Reg. No. 51,942)
`Brittany J. Maxey (Reg. No. 57,621)
`Maxey Law Offices, PLLC
`100 Second Avenue South
`Suite 401 North Tower
`St. Petersburg, Florida 33701
`Telephone: 727-230-4949
`Facsimile: 727-230-4827
`s.lewellyn@maxeyiplaw.com
`b.maxey@maxeyiplaw.com
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`Agent and Attorney for Patent Owner
`John D’Agostino
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`Dated: September 29, 2015
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`7
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 29th day of September, a copy of this PATENT
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`OWNER’S REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(d) has
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`been served in its entirety by Email, on the following counsel of record for
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`Petitioner:
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`Robert Scheinfeld, Lead Counsel
`Baker Botts LLP
`30 Rockefeller Plaza, 44th Floor
`New York, New York 10112-4498
`Service Email: robert.scheinfeld@bakerbotts.com
`
`Eliot William, Back-up Counsel
`Baker Botts LLP
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`Service Email: eliot.williams@bakerbotts.com
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`
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`Dated: September 29, 2015
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`Respectfully submitted,
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`/s/Stephen Lewellyn
`Stephen J. Lewellyn
`Reg. No. 51,942
`Agent for Patent Owner
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