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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`
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`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
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`v.
`
`D’AGOSTINO, JOHN
`Patent Owner
`
`________________
`
`
`
`Case IPR2014-00543
`Patent 8,036,988
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`________________
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`
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`PATENT OWNER’S RESPONSE UNDER 37 C.F.R. § 42.120
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`
`
`
`
`
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`D’AGOSTINO, JOHN
`Patent Owner
`
`________________
`
`
`
`Case IPR2014-00543
`Patent 8,036,988
`
`________________
`
`
`
`PATENT OWNER’S RESPONSE UNDER 37 C.F.R. § 42.120
`
`
`
`
`
`
`
`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Response
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`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ........................................................................... v
`
`LIST OF EXHIBITS ...................................................................................... vi
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`1.
`
`
`Introduction .............................................................................................. 1
`
`A. Anticipation by Cohen of claims 21 and 23-30 .................................. 1
`
`B. Anticipation by Cohen of claims 1-10, 15-20, 22,
`and 31-38 ............................................................................................ 2
`
`
`C. Anticipation by Cohen of claims 1-10, 15-25, 27-
`33, and 35-38 ...................................................................................... 2
`
`
`D. Obviousness over Cohen and Musmanno of claims
`11-14, 26, and 34 ................................................................................ 2
`
`
`2. Overview of the ‘988 Patent .................................................................... 3
`
`3. Claim Construction .................................................................................. 4
`
`
`A. “generating a transaction code” .......................................................... 5
`
`B. “defining at least one payment category” ........................................... 9
`
`C. “particular merchant” ........................................................................ 12
`
`D. “one or more merchants” .................................................................. 14
`
`E. “said one or more merchants limitation” .......................................... 15
`
`F. “said one or more merchants limitation being included
`in said payment category prior to any particular
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`merchant being identified as one of said one or more
`merchants” ........................................................................................ 18
`
`
`G. “said single merchant limitation” ..................................................... 18
`
`H. “said single merchant limitation being included in said
`payment category prior to any particular merchant
`being identified as said single merchant” ......................................... 22
`
`
`4. All of the ‘988 Patent Claims Remain Patentable .................................23
`
`
`A. Claims 1-10, 15-25, 27-33, and 35-38 of the ‘988
`patent are not anticipated by Cohen (Ground 1). .............................. 23
`
`
`
`(1) Claims 21 and 23-30 are not anticipated by Cohen. .................. 24
`
`
`(a) Cohen’s merchant type limit does not satisfy
`the claim limitation “prior to any particular
`merchant being identified” .................................................. 26
`
`
`(b) Cohen’s type of stores and type of charges
`limits do not create a limit to a single
`merchant. .............................................................................. 28
`
`
`(c) Cohen’s certain store limit cannot be made
`before identifying a specific merchant as the
`certain store ......................................................................... 29
`
`
`(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 ..................................................................... 30
`
`
`(e) Cohen’s particular chain of stores limit cannot
`be made before identifying a particular
`merchant ............................................................................... 31
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`(f) The ex parte reexamination of the ‘988 patent
`confirmed claims 21 and 23-30 as patentable
`over Cohen ........................................................................... 33
`
`
`(2) Claims 1-10, 15-20, 22, and 31-38 are not
`anticipated by Cohen .................................................................. 34
`
`
`
`(a) Cohen’s merchant type does not satisfy the
`claim limitation “prior to any particular
`merchant being identified” .................................................. 35
`
`
`(b) Cohen’s type of stores and type of charges
`limits does not satisfy the claim limitation “one
`or more merchants” ............................................................. 36
`
`
`(c) Cohen’s certain store limit cannot be made
`before identifying a specific merchant as the
`certain store ......................................................................... 37
`
`
`(d) Cohen’s particular chain of stores limit cannot
`be made before identifying a particular
`merchant ............................................................................... 38
`
`
`(e) Cohen’s group of stores limit cannot be made
`before identifying specific stores as members of
`the group of stores ............................................................... 38
`
`
`(3) Claims 1-10, 15-25, 27-33, and 35-38 are not
`anticipated ................................................................................... 39
`
`
`B. Claims 11-14, 26, and 34 of the ‘988 patent are not
`obvious over Cohen and Musmanno (Ground 2) ............................. 45
`
`
`5. Conclusion .............................................................................................. 46
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`TABLE OF AUTHORITIES
`
`
`Cases
`
`In re Translogic Technology, Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ................................................................. 4
`
`
`Net Moneyln, Inc. v. Verisgin, Inc.,
`545 F.3d 1359, 1369 (Fed. Cir. 2008). ................................................... 23
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................... 14
`
`
`Superguide Corp. v DirecTV Enterprises, Inc.,
`358 F.3d 870 (Fed. Cir. 2004) ................................................................... 7
`
`
`Verdegaal Bros. v. Union Oil Co. of California.,
` 814 F.2d 628 (Fed. Cir. 1987) ................................................................. 23
`
`
`Wall Sys., Inc. v. Rockwood Retaining Walls, Inc.,
` 340 F.3d 1298 (Fed. Cir. 2003) ................................................................. 9
`
`
`Statutes/Rules
`
`35 U.S.C. § 316(e) ........................................................................................... 1
`
`37 C.F.R. § 42.100(b) ...................................................................................... 4
`
`Other Authorities
`
`Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) .............................................. 4
`
`MPEP § 2112(IV) .......................................................................................... 23
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`PATENT OWNER’S LIST OF EXHIBITS
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`
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`Exhibit 2001: File History for U.S. Patent No. 6,636,833 (Flitcroft)
`
`Exhibit 2002: Defendants Answer in D’Agostino v. MasterCard, Inc.
`
`Exhibit 2003: Appeal Brief in U.S. Reexamination No. 90/012,517
`
`Exhibit 2004: U.S. Patent No. 5,621,201
`
`Exhibit 2005: Excerpts from Oxford Dictionary, Eighth Edition
`
`Exhibit 2006: Excerpts from Random House Webster’s College
`Dictionary
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`Exhibit 2007: Declaration of Edward L. Gussin
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`1. Introduction
`
`This inter partes review of U.S. Patent Number 8,036,988 (“the ‘988
`
`
`
`patent”) was instituted on two grounds that challenge the validity of claims
`
`1-38 of the ‘988 patent.1 Specifically, the Board granted inter partes review
`
`with respect to the following grounds:
`
`Basis Reference(s)
`§102 Cohen
`§103 Cohen and Musmanno
`
`Claims
`1-10, 15-25, 27-33, and 35-38
`11-14, 26, and 34
`
`Petitioner has not met its burden of proof that the challenged claims
`
`
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`are unpatentable by a preponderance of the evidence2 for at least the
`
`following reasons:
`
`A. Anticipation by Cohen of claims 21 and 23-30.
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`Patent Owner submits that Cohen does not disclose
`
`
`
`defining/selecting a payment category that includes limiting transactions to
`
`a single merchant before any particular merchant is identified as the single
`
`1 The Board denied all grounds based on Flitcroft (U.S. Pat. No.
`
`6,636,833), finding that the grounds based on Flitcroft were redundant to
`
`the grounds based on Cohen. Decision at 19-20.
`
`2 35 U.S.C. § 316(e).
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`1
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`merchant. See Section 4(A)(1), infra. Thus, Cohen cannot anticipate
`
`challenged claims 21 and 23-30.
`
`B. Anticipation by Cohen of claims 1-10, 15-20, 22, and 31-38.
`
`Patent Owner submits that Cohen does not disclose
`
`
`
`defining/selecting a payment category that includes limiting transactions to
`
`one or more merchants before any particular merchant is identified as one
`
`of the one or more merchants. See Section 4(A)(2), infra. Thus, Cohen
`
`cannot anticipate challenged claims 1-10, 15-20, 22 and 31-38.
`
`C. Anticipation by Cohen of claims 1-10, 15-25, 27-33, and 35-38.
`
`Patent Owner submits that Cohen does not disclose
`
`
`
`defining/selecting a payment category that places limitations on a
`
`transaction code, and then generating the transaction code after the
`
`defining/selecting. See Section 4(A)(3), infra. Thus, Cohen cannot
`
`anticipate challenged claims 1-10, 15-25, 27-33, and 35-38.
`
` D. Obviousness over Cohen and Musmanno of claims 11-14, 26,
`and 34.
`
`
`
`Patent Owner submits that the combination of Cohen and Musmanno
`
`fails to remedy the deficiencies of Cohen. See Section 4(B), infra. Thus, the
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`combination cannot render the challenged claims 11-14, 26, and 34
`
`unpatentable.
`
`2. Overview of the ‘988 Patent
`
`The ‘988 patent is directed to a method and system of performing
`
`
`
`secure credit card purchases. Ex. 1001, Abstract. The method provides a
`
`customer with a custom-use transaction code that is used in substitution for
`
`the customer’s credit card number or debit card number to make credit card
`
`purchases. Id. at 3:35-40; 6:28-30.
`
`
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`A customer contacts a custodial authorizing entity for authorization
`
`as an account user to receive a transaction code to make credit card
`
`purchases. Id. at 7:30-43. After the customer is verified as an authorized
`
`account user, details of the anticipated transaction are established to
`
`determine a payment category that includes limitations that restrict the
`
`transaction code’s use. Id. at 7:43-46. Once details of the payment category
`
`are established, the transaction code is generated and given to the customer.
`
`Id. The transaction code is pre-coded to be indicative of a customer’s credit
`
`card or debit card account and is used to make credit card purchases. Id. at
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`3:16-22, 3:35-48. The transaction code is also pre-coded to be indicative of
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`the payment category. Id. In particular embodiments, the payment category
`
`includes a limit that restricts purchases to a single merchant that is not
`
`identified before the limit to the single merchant made. Id. at 8:18-23, 8:33-
`
`34. In other embodiments, the payment category includes a limit that
`
`restricts purchases to one or more merchants before any particular
`
`merchant is identified as one of the one or more merchants. Id.at 18-23.
`
`Finally, once the transaction code is generated, the customer can use the
`
`transaction code to consummate a transaction within the defined
`
`parameters of the payment category. Id. at 7:46-55.
`
`3. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`
`
`interpreted according to their broadest reasonable construction in light of
`
`the specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764-66 (Aug.
`
`14, 2012). Claim terms are given their ordinary and customary meaning as
`
`would be understood by one of ordinary skill in the art in the context of the
`
`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007).
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`A.
`
`“generating a transaction code”
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`
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`All of the challenged claims of the ‘988 patent recite “generating a
`
`transaction code.” In its decision to institute the present review, the Board
`
`construed “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.” Decision at 7. This construction, however, is not the
`
`broadest reasonable construction because it unduly limits the transaction
`
`code to only credit card accounts, and it incorrectly excludes the
`
`transaction code being indicative of a payment category, and should be
`
`revised.
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`
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`Patent Owner submits that the broadest reasonable construction is
`
`“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 customer account and a payment category, where the
`
`customer account is either a credit card account or a debit card account.”
`
`Ex. 2007, Gussin Dec., ¶7.
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`The specification supports the conclusion that persons of ordinary
`
`skill in the art would understand that the transaction code is pre-coded to be
`
`indicative of a customer account that is either a credit card account or a
`
`debit card account. Ex. 2007, at ¶ 8. The ‘988 patent specification, at
`
`several points, discloses the transaction code being used as a substitute
`
`number for either a credit card account or a debit card account to make
`
`credit card purchases:
`
`• Once the customer has identified the product or services which
`he/she wishes to purchase, the customer contacts and supplies a
`custodial authorizing entity with the requisite information
`concerning both the identification of a specific credit card or
`debit card account and a requested payment category. Ex.
`1001, 3:17-22 (emphasis added);
`
`• As part of the security system for accomplishing a commercial
`transaction utilizing credit card or debit card payment, the
`custodial authorizing entity includes sufficient facilities,
`preferably including a processing computer or like applicable
`hardware for the generation of an exclusive transaction code.
`Ex. 1001, 3:35-40 (emphasis added);
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`• The transaction code is to be used in substitution for the credit
`card number and when utilized as authorized, will issue the
`merchant a credit approval, and will accomplish payment for
`the goods or services desired in the normal fashion normally
`associated with a credit or debit card transaction… Ex. 1001,
`3:40-45 (emphasis added).
`
`The Board’s construction relies on a single statement in the ‘988
`
`
`
`patent specification to limit the transaction code to being indicative of a
`
`credit card account. Decision at 7 (citing Ex. 1001, 6:32-37). But,
`
`importantly, nothing in the claims expressly limit the recited “transaction
`
`code” to only credit card accounts to make credit card purchases. Thus, the
`
`current construction improperly limits the scope of the claims by importing
`
`credit card accounts into the claim. Superguide Corp. v. DirecTV
`
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
`
`understanding the claim language may be aided by explanations contained
`
`in the written description, it is important to not import into a claim
`
`limitations that are not part of the claim”).
`
`
`
`Further, the ‘988 patent specification supports the conclusion that
`
`persons of ordinary skill in the art would understand that the “transaction
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`code” in the ‘988 patent is indicative of a payment category. Ex. 2007, at
`
`¶ 9. Particularly, the ‘988 patent specification explicitly describes that “a
`
`feature of the transaction code is its ability to indicate any one of …
`
`predetermined payment categories.” Ex. 1001, 3:48-50. The ‘988 patent
`
`also discloses “the transaction code is pre-coded to be indicative of … a
`
`designated payment category.” Ex. 1001, 6:33-37.
`
`
`
`And, importantly, the claims of the ‘988 patent expressly require that
`
`the transaction code to be indicative of the payment category. Independent
`
`claims 1, 21, and 22 include “said transaction code reflecting at least the
`
`limits of said designated payment category to make a purchase within said
`
`designated payment category.” And, similarly, independent claims 17 and
`
`19 include “said transaction code associated with…the limits of said
`
`selected payment category…” Thus, the claims expressly include the
`
`transaction code being indicative of a payment category. Ex. 2007, at ¶ 9.
`
`
`
`The Board’s construction relies on its interpretation of a single
`
`statement in the ‘988 patent specification to read out the limitation that the
`
`transaction code is indicative of the payment category, as being only
`
`preferable. Decision at 7 (citing Ex. 1001, 6:29-30). Patent Owner does not
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`agree that it is preferable for the transaction code to be indicative of a
`
`payment category, but, rather, that the transaction code must be indicative
`
`of a payment category. However, for argument sake, even if it was
`
`preferable for the transaction code to be indicative of a payment category, a
`
`claim construction that excludes this embodiment would still be incorrect.
`
`Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308
`
`(Fed. Cir. 2003) (“A claim construction that excludes a preferred
`
`embodiment … is rarely, if ever correct and would require highly
`
`persuasive evidentiary support”).
`
`
`
`Thus, for these foregoing reasons, the broadest reasonable
`
`construction of “generating a transaction code” is “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 customer
`
`account and a payment category, where the customer account is either a
`
`credit card account or a debit card account.” Ex. 2007, at ¶ 7, 9.
`
`B. “defining at least one payment category”
`
`
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`The Board has preliminarily construed “defining at least one
`
`payment category” to mean “specifying the type of limitation (or
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`limitations) that are available to be applied to a transaction code in order to
`
`limit it use.” Decision at 8. This construction, however, is not the broadest
`
`reasonable construction because it is inconsistent with the specification and
`
`claims of the ‘988 patent, and should be revised.
`
`
`
`Patent Owner submits that the broadest reasonable construction of
`
`“defining at least one payment category” is “specifying the limit (or limits)
`
`of a payment category that are applied to a transaction code in order to
`
`limit its use.” Ex. 2007, at ¶ 10.
`
`
`
`The specification supports the conclusion that persons of ordinary
`
`skill in the art would understand that “defining at least one payment
`
`category” relevant to the ‘988 patent means to specify or set the limits of a
`
`payment category that are applied to the transaction code. This
`
`interpretation is consistent with the plain and ordinary meaning of
`
`“defining,” and is supported by and consistent with the ‘988 patent
`
`specification. Id.
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`
`
`The plain and ordinary meaning of the word “defining” relevant to
`
`the ‘988 patent is to mark the limits of the payment category Id.; See Ex.
`
`2006, at 3. The ‘998 patent is consistent with this plain meaning of
`
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`“defining.” For example, the ‘988 patent specification describes “the
`
`payment category may include a single transaction defined by a single
`
`purchase having a maximum limit amount, wherein the specific or precise
`
`cost of the purchase has not been determined for a variety of reasons, and
`
`as such, the customer desires to set a maximum amount for which the single
`
`transaction may be made.” Ex. 1001, 7:65-8:3 (emphasis added). The ‘988
`
`patent further explains “with such a payment category, the exact amount
`
`may not be known in advance, but the customer is assured of not paying
`
`over the specifically designated maximum limit.” Ex. 1001, 8:3-6 (emphasis
`
`added). And that the “customer…can then [use] the transaction code to
`
`consummate a transaction within the defined parameters of the payment
`
`category.” Ex. 1001, 7:46-49.
`
`
`
`In other words, a payment category includes a limitation, such as, for
`
`example, a limit on the maximum purchase amount. And defining the
`
`payment category, in this example, is the act of setting or specifying the
`
`actual value of the maximum purchase amount. Accordingly, the broadest
`
`reasonable interpretation of “defining at least one payment category” is
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`“specifying the actual limit (or limits) of a payment category that are
`
`applied to a transaction code in order to limit its use.” Ex. 2007, at ¶ 10.
`
`C. “particular merchant”
`
`
`
`The Board has preliminarily construed “particular merchant” to
`
`mean “the merchant with whom the customer is transacting.” Decision at 9.
`
`This construction, however, is not the broadest reasonable construction
`
`because it is inconsistent with the specification and claims of the ‘988
`
`patent, and should be revised.
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`
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`Patent Owner submits that the broadest reasonable construction of
`
`“particular merchant” is a specific merchant with whom a customer can
`
`engage in a purchase transaction.” Ex. 2007, at ¶ 11. The word “particular”
`
`modifies the noun “merchant,” and the plain meaning of the word
`
`“particular” relevant to the ‘988 patent is a specific identification so as not
`
`to refer to any other merchant. Id., at ¶¶ 11, 13; See Ex. 2006, at 5.
`
`
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`Petitioner’s expert agrees, stating “[t]he claim limitation ‘particular
`
`merchant’ may be construed, consistent with its plain and ordinary
`
`meaning, to mean ‘a specific merchant with whom a customer can engage
`
`in the purchase transaction.’” Ex. 1008, Grimes Dec. at ¶23; Ex. 2007, at ¶
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`12. The only difference between Patent Owner’s construction and
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`Petitioner’s, is that Patent Owner substituted “the purchase transaction”
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`with “a purchase transaction” to be consistent with the claims, which
`
`allows for multiple transactions. Ex. 2007, at ¶ 12.
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`
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`The specification supports the conclusion that persons of ordinary
`
`skill in the art would understand that the ‘988 patent specification is
`
`consistent with this plain meaning of “particular.” Ex. 2007, at ¶¶ 13, 14.
`
`The ‘988 patent describes “…limits solely as to a specific merchant…can
`
`be effectively established for which the transaction code is valid.” Ex.
`
`1001, 4:5-7. And, “…other payment category transactions may include a
`
`specific merchant identification to further restrict use of the transaction
`
`code.” Ex. 1001, 8:15-18. The ‘988 patent also describes that a plurality of
`
`different merchants may or may not be identified by the customer and pre-
`
`coded in association with the transaction code. Ex. 1001, 8:19-22.
`
`
`
`Further, and importantly, none of the independent claims expressly
`
`require that the particular merchant is the merchant with whom the
`
`customer is transacting. But, dependent claims of the ‘988 patent expressly
`
`require the particular merchant to be the merchant with whom the customer
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`is transacting. For example, claim 3 depends from claim 1, and includes the
`
`limitation “wherein the step of communicating the transaction code to a
`
`merchant … further comprises designation of [that] merchant as one of said
`
`one or more merchants.” Similar claim differentiation exists between
`
`independent claim 17 and dependent claim 18; independent claim 19 and
`
`dependent claim 20; independent claim 21 and dependent claim 29; and
`
`independent claim 22 and dependent claim 37. Thus, the independent
`
`claims should not be limited by requiring the particular merchant to be the
`
`merchant with whom the customer is transacting. Phillips v. AWH Corp.,
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`415 F.3d 1303, 1314-15 (Fed. Cir. 2005) (“the presence of a dependent
`
`claim that adds a particular limitation gives rise to a presumption that the
`
`limitation in question is not present in the independent claim”).
`
`
`
`Accordingly, for these reasons, the broadest reasonable construction
`
`of “particular merchant” is “a specific merchant with whom a customer can
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`engage in a purchase transaction.” Ex. 2007, at ¶¶ 11-14.
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`D. “one or more merchants”
`
`
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`The Board has preliminarily construed “one or more merchants” to
`
`mean “one merchant up to a plurality of merchants, where the number of
`
`14
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Response
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`merchants is a finite number.” Decision at 8. Both Petitioner and Patent
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`Owner have accepted this construction for this inter partes review of the
`
`‘988 patent. Pet. at 14; Prelim. Resp. 6-7. Accordingly, this is the
`
`construction that should be used in this proceeding.
`
`E. “said one or more merchants limitation”
`
`
`
`The Board has preliminarily construed “said one or more merchants
`
`limitation” to mean “any group, category, or type of merchant.” Decision at
`
`9. This construction, however, is not the broadest reasonable construction
`
`because it is inconsistent with the claims, specification, and file history of
`
`the ‘988 patent, and should be revised.
`
`
`
`Patent Owner submits that the phrase “said one or more merchants
`
`limitation” simply refers to and is synonymous with the recited phrase
`
`“limiting a number of transactions to one or more merchants.” Ex. 2007, at
`
`¶¶ 15-16. Independent claim 1 recites “defining at least one payment
`
`category to include at least limiting a number of transactions to one or
`
`more merchants.” Claim 1 then recites “said one or more merchant
`
`limitation being included in said payment category prior to any particular
`
`15
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Response
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`merchant being identified as one of said one or more merchants.”
`
`Independent claims 17, 19, 21, and 22 have similar claim language.
`
`
`
`When the claim is read as a whole, it becomes apparent that the
`
`phrase “said one or more merchants limitation” references the previously
`
`recited phrase “limiting a number of transactions to one or more
`
`merchants.” Ex. 2007, at ¶ 15, 18. And, that the claim language “being
`
`included in said payment category prior to any particular merchant being
`
`identified as one of said one or more merchants” that follows “said one or
`
`more merchants limitation” further modifies the limitation of “limiting a
`
`number of transactions to one or more merchants.” Ex. 2007, at ¶ 18.
`
`
`
`Additionally, construing “said one or more merchants limitation” to
`
`mean “any group, category, or type of merchant” is inconsistent with this
`
`claim language and the meaning of “one or more merchants.” Ex. 2007, at
`
`¶ 17. The Board has interpreted “one or more merchants” to mean “one
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`merchant up to a plurality of merchants, where the number of merchants is
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`a finite number.” Id.; Decision at 8.
`
`
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`Additionally, nothing in the ‘988 patent specification is inconsistent
`
`with the plain and ordinary meaning of “merchant,” which is “someone
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`16
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Response
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`who buys and sells goods.” Ex. 2007, at ¶ 19. Specifically, the ‘988 patent
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`does not describe limiting use of a transaction code by group, type, or
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`category of merchant. Id. But, rather, describes a merchant as someone
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`who a customer can make a purchase from using the transaction code. Ex.
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`1001, 4:8-17, 4:49-54, 6:6-8, 6:44-54, 8:18-24.
`
`
`
`Additionally, the current construction is inconsistent with the file
`
`history. Ex. 2007, at ¶ 20. During reexamination of the ‘988 patent the
`
`limitation “said one more merchants limitation being included in said
`
`payment category prior to any particular merchant being identified as one
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`of said one or more merchants” was construed to mean including one or
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`more merchants in a payment category prior to any particular merchant
`
`being identified. See Ex. 1003, ‘988 Patent Reexamination History at 103.
`
`
`
`Thus, for these reasons, under the broadest reasonable construction,
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`“said one or more merchants limitation” is simply the reference to the
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`limitation of “limiting a number of transactions to one or more merchants”
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`that immediately proceeds the phrase “said one or more merchant
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`limitation.” Ex. 2007, ¶¶ 15-20.
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`17
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`Patent 8,036,988
`Patent Owner’s Response
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`F. “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”
`
`
`Thus, using the broadest reasonable construction of “said one or
`
`
`
`
`more merchants limitation” and “particular merchant,” discussed above, the
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`entire limitation “said one or more merchants limitation being included in
`
`said payment category prior to any particular merchant being identified as
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`one of said one or more merchants” means “including the limit in the
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`payment category that limits transactions to one or more merchants before
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`any particular merchant is identified as one of the one or more merchants.”
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`Ex. 2007, ¶ 21; See also Ex. 1003 at 103.
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`G. “said single merchant limitation”
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`
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`Similar to “said one or more merchants limitation,” the Board has
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`also construed “said single merchant limitation” to mean “any group,
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`category, or type or merchant.” Decision at 9. The Board distinguishes the
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`“said single merchant limitation” from the “said one or more merchants
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`limitation” by stating that “the ‘one or more merchants’ allows for one or
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`multiple merchants as any group, category, or type of merchant, whereas
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`‘single merchant’ allows for only one merchant.” Decision at 9-10.
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`18
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Response
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`Initially, on this record, it is unclear whether the Board’s
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`construction includes “single merchant” to be “one merchant” or to be “any
`
`group, category, or type of merchant.” This is so because the Board’s
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`distinction between “one or more merchant” and “single merchant,” where
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`the Board indicates that a single merchant is only one merchant, seems to
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`be at odds with the Board’s construction that a single merchant is “any
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`group, type, or category of merchant.”
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`
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`Thus, for the purpose of this response, Patent Owner interprets the
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`Board’s construction of “said single merchant limitation” to be “any one
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`group, type, or category of merchant,” and respectfully objects to this
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`construction as being inconsistent with the claims, specification, and file
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`history of the ‘988 patent, and should be revised.
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`
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`Patent Owner submits that the phrase “said single merchant
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`limitation” simply refers to and is synonymous with the recited phrase
`
`“limits transactions to a single merchant.” Ex. 2007, ¶¶ 22, 23. Independent
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`claim 21 recites “receiving a request…to make a purchase within a
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`payment category that at least limits transactions to a single merchant.”
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`Claim 21 then recites “said single merchant limitation being included in
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`19
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`Case IPR2014-00543
`Patent 8,036,988
`Patent Owner’s Response
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`said payment category prior to any particular merchant being identified as
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`said single merchant.”
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`When th
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