Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 30
`Entered: November 10, 2015
`
`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.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 30
`Entered: November 10, 2015
`
`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.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00543
`Patent No. 8,036,988 C1
`
`
`I.
`INTRODUCTION
`John DʼAgostino (“Patent Owner”) filed a Request for Rehearing (Paper 29;
`“Req. Reh’g”) of our Final Decision (Paper 28, “Final Decision”), dated August
`31, 2015, which held unpatentable claims 1–38 of Patent No. 8,036,988 C11
`(Ex. 1001; “the ’988 patent”). Generally, Patent Owner contends the Board
`misapprehended or overlooked the proper interpretation for the claim term “as said
`single merchant,” as recited by claims 21 and 23–30, and, under Patent Owner’s
`interpretation, the prior art fails to disclose this limitation. Req. Reh’g 2–6.
`Accordingly, Patent Owner requests a rehearing for only claims 21 and 23–30. Id.
`at 1. For the reasons stated below, Patent Owner’s request for rehearing is denied.
`
`II.
`STANDARD OF REVIEW
` “The burden of showing a decision should be modified lies with the party
`challenging the decision. The request must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`§ 42.71(d).
`
`III. DISCUSSION
`In its Final Decision, the Board determined, under the broadest reasonable
`interpretation, the limitation “said single merchant limitation being included in said
`payment category prior to any particular merchant being identified as said single
`merchant” means “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.” Final Decision 13. The Board also determined that
`
`
`1 A Reexamination Certificate was issued on October 15, 2014.
`
` 2
`
`
`
`
`
`
`
`IPR2014-00543
`Patent No. 8,036,988 C1
`
`the “single merchant” includes the “particular merchant” without identifying the
`“particular merchant.” Id. at 11–12.
`Patent Owner contends that the Board misapprehended or overlooked the
`proper interpretation for the claim limitation “as said single merchant,” which
`immediately follows the claim language “prior to any particular merchant being
`identified,” and the Board dropped this limitation from the claims. Req. Reh’g 2–
`6. Patent Owner specifically argues that the Board improperly removed “as said
`single merchant” from the claim limitation because the claim requires that the
`“particular merchant” is the “single merchant.” Id. at 3–5. Patent Owner contends
`that the Board’s construction is erroneous because the Board did not account for
`the requirement that the “particular merchant” is the “single merchant.” Id. Patent
`Owner concludes that the erroneous claim construction “inevitably lead to the
`Board’s incorrect finding that Cohen’s chain of stores limit satisfies the claim
`limitation.” Id. at 5.
`We are not persuaded by Patent Owner’s argument. The Board could not
`have misapprehended or overlooked Patent Owner’s argument because Patent
`Owner is raising this argument for the first time on rehearing. Patent Owner cites
`pages 18–22 and 31–32 of the Patent Owner’s Response to support their argument
`that this issue was raised during the proceeding. Id. at 2. However, we are unable
`to find this argument in the Patent Owner’s Response. Patent Owner had argued
`the broadest reasonable construction of “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” and “said single merchant
`limitation being included in said payment category prior to any particular merchant
`being identified as said single merchant.” PO Resp. 18-22. However, Patent
`Owner’s argument is directed towards the entire limitation and is not narrowly
`
` 3
`
`
`
`
`
`
`
`IPR2014-00543
`Patent No. 8,036,988 C1
`
`tailored to “as said single merchant,” and the proper interpretation of “as said
`single merchant.” Patent Owner further argued the broadest reasonable
`construction of “said single merchant limitation,” which is not the same as “as said
`single merchant.” Id. at 18–22. Patent Owner additionally argued that Cohen’s
`chain of stores limit does not meet the claim limitation, as construed by Patent
`Owner. Id. at 31–32. However, the argument that the Board dropped “as said
`single merchant” from the claim limitation, and the Board’s construction results in
`the single store of the chain of stores as both the “single merchant” and as the
`“particular merchant” was not raised until this rehearing request. Accordingly, we
`are not persuaded that we misapprehended or overlooked Patent Owner’s argument
`because it was not raised.
`Furthermore, the Board expressly construed 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”
`and the “single merchant” includes the “particular merchant” without identifying
`the “particular merchant.” Final Decision 11–13. The Board determined that
`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. Id. at 12. The Board further
`determined that Cohen’s disclosure limiting credit card purchases to a specific
`chain of stores, such as a specific chain of restaurants, meets this limitation. Id. at
`18–19. Based on our claim construction, the chain of stores (the “single
`merchant”) does not identify the single store (the “particular merchant”), but the
`
` 4
`
`
`
`
`
`
`
`IPR2014-00543
`Patent No. 8,036,988 C1
`
`single store (the “particular merchant”) is still a subset of the chain of stores (the
`“single merchant”).
`Patent Owner explains that the Board’s error can be illustrated most easily
`by example, where Target is the “single merchant” and Location A is the
`“particular merchant.” Req. Reh’g 4–5. Patent Owner argues that in this
`example, it can be seen that the Board’s construction is erroneous because Target
`and Location A cannot work without dropping “as said single merchant” from the
`claim limitation. Id. However, Patent Owner’s analysis stops here.2 Patent Owner
`does not provide any argument or rationale to illustrate why Target cannot be the
`“single merchant” and Location A cannot be the “particular merchant,” thereby
`Target is included in the payment category prior to any particular Target, such as
`Location A, is identified as the specific Target.
`Accordingly, we are not persuaded that the Board misapprehended or
`overlooked the entire claim limitation “said single merchant limitation being
`included in said payment category prior to any particular merchant being identified
`as said single merchant.”
`
`
`IV. ORDER
`
`Accordingly, it is hereby
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`2 We note that although Patent Owner finds the Board’s construction erroneous and
`provides an example to illustrate its argument, Patent Owner does not provide a
`construction of this limitation, and is unable to offer the Board an example to
`illustrate its construction.
`
` 5
`
`
`
`
`
`
`
`IPR2014-00543
`Patent No. 8,036,988 C1
`
`For PETITIONER:
`
`Robert Scheinfeld
`robert.scheinfeld@bakerbotts.com
`
`Eliot Williams
`eliot.williams@bakerbotts.com
`
`
`
`For PATENT OWNER:
`
`Stephen Lewellyn
`s.lewellyn@maxeyiplaw.com
`
`Brittany Maxey
`b.maxey@maxeyiplaw.com
`
` 6
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