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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner
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`––––––––––
`
`
`Case IPR2014-00543 (Patent No. 8,036,988)
`Case IPR2014-00544 (Patent No. 7,840,486)
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`––––––––––
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`PETITIONER MASTERCARD’S
`REPLY BRIEF ON REMAND
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`
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`IPR2014-00543, IPR2014-00544
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`I.
`
`INTRODUCTION
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`Not satisfied with the Federal Circuit’s mandate, including its construction
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`of the “single merchant limitation,” Patent Owner (“PO”) devises two arguments in
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`an attempt to overcome Cohen: that this limitation requires “making more than one
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`transaction/purchase” at a single merchant (PO Brief at 6-7), and that the Board
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`needs to “correct” its construction of the “one or more merchants” limitation (id. at
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`11-15). But given the Federal Circuit’s construction and clear instructions, the
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`PO’s prior concessions, and Cohen’s unambiguous disclosures, neither of PO’s
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`arguments have merit and the Board should reinstate its invalidity decisions.
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`II. ARGUMENT
`A. The Single Merchant Limitation Does Not Require Multiple
`Transactions With a Single Merchant
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`The Federal Circuit’s construction of the single merchant limitation
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`“requires, simply, that, when the transaction code is requested, the request limits
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`the number of authorized merchants to one but does not then identify the merchant,
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`such identification occurring only later.” D’Agostino v. MasterCard Int’l Inc., 844
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`F.3d 945, 950 (Fed. Cir. 2016) (emphasis added). PO, however, now argues that
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`“[e]ach of the Single Merchant Claims include making more than one
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`transaction/purchase,” improperly seeking alteration of the Federal Circuit’s clear
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`construction. PO Brief at 6 (emphasis added).1 PO is wrong to do so—for at least
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`1 Patent Owner raised this argument to the Federal Circuit in its reply brief (PO
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`- 1 -
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`
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`IPR2014-00543, IPR2014-00544
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`four distinct reasons.
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`First, the Federal Circuit already carefully reviewed the same claim language
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`cited by PO in claim 21, step (b) of the ’988 Patent, and did not find that the single
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`merchant limitation requires more than one transaction, see Pet. Brief at 8-9,
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`finding instead that it merely requires limiting the number of merchants to one.
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`D’Agostino, 844 F.3d at 949. Indeed, the Federal Circuit, citing prosecution
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`history, emphasized that the PO sought to distinguish the “single merchant
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`limitation” because the prior art purportedly failed to limit “a transaction
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`[singular] to a single merchant prior to any particular merchant being identified as
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`the single merchant.” D’Agostino, 844 F.3d at 949 (citing ’486 File History,
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`IPR2014-00544 Ex. 1002, at p.248) (emphasis added). Of course, Cohen, it turns
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`out, discloses just that. See Pet. Brief at 3-5.
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`Second, the surrounding “single merchant” claim language itself makes clear
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`that the transaction code could be used for a single transaction/purchase. See Pet.
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`Brief at 9-10. For example, claim 21 of the ’988 Patent recites: the account holder
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`requests “a transaction code to make a purchase” (step b), the transaction code is
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`generated “to make a purchase” (step c), and a request is received “to authorize
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`Brief at 8) but the Court did not adopt Patent Owner’s construction. It is therefore
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`not within the scope of the mandate for the Board to reconsider this issue.
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`- 2 -
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`
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`IPR2014-00543, IPR2014-00544
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`payment for a purchase” (step e).2 Similar limitations also exist for dependent
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`claims 25 to 27 where “a transaction code [is requested] to make a purchase.”
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`Third, the specifications for the ’988 and ’486 Patents explicitly disclose that
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`“transactions” broadly encompasses a single transaction. See ’988 Patent,
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`IPR2014-00543 Ex. 1001, 7:63-65 (“Such transactions [plural] may include a
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`single transaction for a specific amount of a purchase to be consummated.”)
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`(emphasis added); see also ’486 Patent, IPR2014-00544, Ex. 1001, 7:58-59. And,
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`as noted above, the prosecution history also evidences that the single merchant
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`claims encompass a transaction code that limits one transaction to a single
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`merchant. See supra D’Agostino, 844 F.3d at 949 (distinguishing Langhans prior
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`art); see also ’486 File History, IPR2014-00544, Ex. 1002, at p.118 (distinguishing
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`Langhans by noting its failure to teach “a transaction being limited to a single
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`merchant”) (emphasis added). Moreover, there is no support (and PO has cited
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`none) in the patent specifications or prosecution histories that suggests the single
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`merchant limitation should exclude a single transaction.
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`2 The ’486 Patent contains similar limitations. See Pet. Brief at 9, fn. 2. Claim 1
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`recites “for at least one transaction,” and claim 29 recites “a subsequent purchase.”
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`Claim 24 (like ’988 Patent, claim 21) recites “limiting purchases to a single
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`merchant.” Claim 25 similarly recites authorizing a single purchase (i.e. “the
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`purchase”) and therefore does not exclude a single purchase.
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`
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`- 3 -
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`
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`IPR2014-00543, IPR2014-00544
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`Fourth, PO’s unsupported argument that “transactions” excludes a single
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`transaction contradicts controlling Federal Circuit law: “the plural can describe a
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`universe ranging from one to some higher number, rather than requiring more than
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`one item.” See Versa Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325, 1330 (Fed. Cir.
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`2004) (holding “the use of ‘channels’ in the plural does not imply that multiple
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`channels are required by the claim”); see also Apple Inc. v. Motorola, Inc., 757
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`F.3d 1286, 1307 (Fed. Cir. 2014) (holding “the plural ‘actions’ may be reasonably
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`read as at least one action”); Dayco Prods. v. Total Containment, Inc., 258 F.3d
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`1317, 1328 (Fed. Cir. 2001) (holding “the use of the term ‘recesses’ can be
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`understood to mean a single recess”); Coal. for Affordable Drugs II LLC v. Cosmo
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`Tech. Ltd., IPR2015-00988, 2015 WL 5897741, at *6 (PTAB Oct. 7, 2015)
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`(construing “substances” and “compounds” to mean “one or more”).
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`B. Patent Owner’s Request for a Corrected Construction Should be
`Denied
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`The Board held (and the PO agreed) that the scope of the “one or more
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`merchants” claims encompasses the scope of the single merchant claims. See ‘988
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`FWD, IPR 2014-00543 Paper 28, at 16-17; Oral Hearing, IPR 2014-00543 Paper
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`27, at 56:6-12. PO’s request to revise the Board’s construction should be rejected
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`at least because, regardless of the construction, the one or more merchants claims
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`are anticipated by Cohen for the same reasons as the single merchant claims. See
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`Pet. Brief at 11-12.
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`
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`- 4 -
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`
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`IPR2014-00543, IPR2014-00544
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`
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`Regardless, the Board previously correctly construed the one or more
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`merchants limitation to mean “any group, category, or type of merchant is included
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`in the payment category prior to the customer selecting a particular merchant for a
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`transaction.” ’988 Institution Decision, IPR2014-00543 Paper 8, at 9 (emphasis
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`added). PO nonetheless contends that the Board’s construction should be revised
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`because it lacks the claimed timing requirement (i.e., “allows for merchant pre-
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`identification.”). PO Brief at 11. But, PO is wrong—the Federal Circuit defined
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`the timing requirement as “withholding the identity of the particular merchant”
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`when the transaction code is requested. D’Agostino, 844 F.3d at 949-50 (emphasis
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`added).3 Thus, the Board’s construction properly requires that the one or more
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`merchants limitation is included prior to selecting a “particular merchant” for a
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`transaction. No correction is warranted or necessary.
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`III. CONCLUSION
`For the foregoing reasons, and the reasons set forth in Petitioner’s Opening
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`Brief on Remand, the claims of the ’988 and ’486 Patent are unpatentable.
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`April 10, 2017
`
`Eliot Williams
`Reg. No. 50,822
`
`
`3 The Board correctly construed “particular merchant” to mean “the merchant with
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`Respectfully submitted,
`/s/ Robert Scheinfeld__________
`Robert Scheinfeld
`Reg. No. 31,300
`ATTORNEYS FOR PETITIONER
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`whom the customer is transacting.” ’988 FWD, IPR2014-00543 Paper 28, at 12.
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`- 5 -
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on the 10th day of April, 2017, a complete and
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`entire copy of Petitioner MasterCard’s Reply Brief On Remand was served via e-
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`mail to counsel of record for Patent Owner below:
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`
`
`
`
`
`
`
`Eliot Williams
`Reg. No. 50,822
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7511
`Facsimile: (650) 739-7611
`eliot.williams@bakerbotts.com
`
`
`
`
`
`
`Stephen J. Lewellyn
`Brittany J. Maxey
`Maxey Law Offices, PLLC
`15500 Roosevelt Blvd.
`Suite 305
`Clearwater, Florida 33760
`s.lewellyn@maxeyiplaw.com
`b.maxey@maxeyiplaw.com
`
`
`
`
`
`Respectfully submitted,
`BAKER BOTTS LLP
`
`/s/ Robert Scheinfeld__________
`Robert Scheinfeld
`Reg. No. 31,300
`30 Rockefeller Plaza, 44th Floor
`New York, New York 10112-4498
`Phone: (212) 408-2512
`Facsimile: (212) 408-2501
`robert.scheinfeld@bakerbotts.com
`
`ATTORNEYS FOR PETITIONER
`MASTERCARD INTERNATIONAL
`INCORPORATED
`
`
`
`
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