`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`D’AGOSTINO, JOHN
`Patent Owner
`
`________________
`
`
`Case CBM2013-00058
`Patent 7,840,486
`
`________________
`
`Before PATRICK E. BAKER, Trial Paralegal
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`MasterCard, Exh. 1016, p. 1
`
`
`
`Case CBM2013-00058
`Patent 7,840,486
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ......................................................................... iv
`
`LIST OF EXHIBITS ....................................................................................... v
`
`I.
`
`II. BACKGROUND ..................................................................................... 2
`
`
`INTRODUCTION ................................................................................... 1
`
`A. Overview of the ‘486 Patent ............................................................. 2
`
`B. Status of Pending District Court Action ............................................ 3
`
`III. STATEMENT OF RELIEF REQUESTED ............................................ 4
`
`IV. STATEMENT OF REASONS WHY THE COVERED
`BUSINESS METHOD REVIEW SHOULD BE DENIED .................... 4
`
`A. MasterCard’s proposed claim constructions .................................... 4
`
`B. The effective filing date of the ‘486 patent ...................................... 4
`
`C. Flitcroft is not available as prior art against the ‘486 patent ............ 5
`
`
`1. Flitcroft’s priorty claim ............................................................... 5
`
`2. Flitcroft’s prosecution history ..................................................... 6
`
`3. The Flitcroft’s provisional applications do not provide
`written description support for the claimed invention ........................ 8
`
`D. Even if Flitcroft was entitled priority to the Flitcroft provisional
`applications, Flitcroft does not antedate at least one material
`limitation of all the independent claims of the ‘486 patent ............ 13
`
`E. The terminal disclaimer filed during examination of the
`‘988 patent was not an admission that the ‘486 patent claims
`are patentably indistinct from the claims of the ‘988 patent .......... 14
`
`ii
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`MasterCard, Exh. 1016, p. 2
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`Case CBM2013-00058
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`F. The Ex Parte Reexamination of the ‘988 patent ............................. 14
`
`G. Cohen does not disclose a material limitation of all the
`independent claims of ‘486 Patent.................................................. 23
`
`1. Independent claim 1 .................................................................. 23
`
`2. Independent claim 24 ................................................................ 24
`
`3. Independent claim 25 ................................................................ 26
`
`4. Independent claim 29 ................................................................ 27
`
`V. CONCLUSION ..................................................................................... 29
`
`
`
`
`
`
`
`
`iii
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`
`MasterCard, Exh. 1016, p. 3
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`
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`Case CBM2013-00058
`Patent 7,840,486
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`TABLE OF AUTHORITIES
`
`
`Cases
`
`In re Giacomini,
`
`612 F.3d 1380 (Fed. Cir. 2010) .......................................................................... 5
`
`Quad Environmental Technologies Corp. v. Union Sanitary Dist.,
`
`946 F.2d 870 (Fed. Cir. 1991) .......................................................................... 14
`
`Statutes
`
`35 U.S.C. § 102 ............................................................................................... passim
`
`35 U.S.C. § 103 ........................................................................................................ 1
`
`35 U.S.C. § 119(e) .................................................................................................... 5
`
`35 U.S.C. § 120 ........................................................................................................ 1
`
`35 U.S.C. § 324(a) .................................................................................................... 1
`
`Other Authorities
`
`Message from Chief Judge James Donald Smith,
` USPTO Discusses Key Aspects of New Administrative Patent Trials,
`
`http://www.uspto.gov/aia_implementation/smith-blog-extravaganza.jsp
`
`(last visited Dec. 18, 2013) ............................................................................... 16
`
`
`
`iv
`
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`MasterCard, Exh. 1016, p. 4
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`
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`Case CBM2013-00058
`Patent 7,840,486
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`LIST OF EXHIBITS RELIED ON FOR
`THIS PRELIMINARY RESPONSE
`
`Exhibit 2001 – File History for U.S. Patent No. 6,636,833
`
`Exhibit 2002 – U.S. Provisional Application No. 60/092,500
`
`Exhibit 2003 – U.S. Provisional Application No. 60/098,175
`
`Exhibit 2004 – U.S. Provisional Application No. 60/099,614
`
`Exhibit 2005 – Nov. 11, 2013 Patent Owner’s Response in Reexamination
` No. 90/012,517
`
`Exhibit 2006 – U.S. Patent No. 8,036,988
`
`v
`
`
`MasterCard, Exh. 1016, p. 5
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`
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`Case CBM2013-00058
`Patent 7,840,486
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`I.
`
`INTRODUCTION
`
`
`
`MasterCard’s petition for covered business method review of U.S. Patent No.
`
`7,840,486 (“the ‘486 patent”) must be denied because MasterCard has not met its
`
`threshold burden that it is more likely than not that at least one of the challenged
`
`claims is unpatentable. 1
`
`
`
`As part of its burden, MasterCard must demonstrate that the asserted references
`
`antedate the earliest effective filing date of each material limitation of the challenged
`
`claims.2 Here, MasterCard challenges all of the independent claims as being
`
`anticipated by U.S. Patent No. 6,636,833 (“Flitcroft”). But Flitcroft is not available as
`
`prior art against the ‘486 patent because its priority claim is defective and was filed
`
`after the ‘486 patent.
`
`
`
`Similarly, MasterCard must demonstrate that each material limitation of all the
`
`challenged independent claims is found in the asserted references. MasterCard
`
`challenges all of the independent claims as being anticipated by U.S. Patent No.
`
`6,422,462 (“Cohen”). But Cohen does not disclose at least one material limitation
`
`found in all of the challenged independent claims.
`
`
`1 35 U.S.C. § 324(a) (“The Director may not authorize a post-grant review to be
`
`instituted unless the Director determines that the information presented in the petition
`
`filed under section 321, if such information is not rebutted, would demonstrate that it
`
`is more likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable”).
`
`2 35 U.S.C §§ 102, 103, 120.
`
`
`
` 1
`
`
`MasterCard, Exh. 1016, p. 6
`
`
`
`
`
`Thus, MasterCard has not demonstrated that it is more likely than not that at
`
`least one claim of the ‘486 patent is unpatentable and its Petition should be denied.
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`Case CBM2013-00058
`Patent 7,840,486
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`
`II. BACKGROUND
`
`
`
`
`
`A. Overview of the ‘486 Patent.
`
`The ‘486 patent is owned by John D’Agostino, a private individual and the only
`
`inventor of the invention protected by the ‘486 patent. The ‘486 patent is directed
`
`toward an invention for solving security problems associated with making credit card
`
`purchases. The invention provides a customer with a custom-use transaction code to
`
`make credit card purchases that fall within certain limitation(s) of a payment category.
`
`The payment category includes limiting parameters that limit use of the transaction
`
`code. For example, the transaction code can be limited for use at single merchant or
`
`can be limited by other factors, such as limiting the number of times the transaction
`
`code can be used or by limiting a purchase amount. The claims of the ‘486 patent are
`
`directed to a method of performing secure credit card purchases. Independent claim 1
`
`is representative and is set forth in full below:
`
`1. A method of performing secure credit card 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 a payment category including at least limiting
`
`purchases to a single merchant for at least one transaction, said single
`
`
`
` 2
`
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`MasterCard, Exh. 1016, p. 7
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`Case CBM2013-00058
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`merchant limitation being included in said payment category prior to
`
`any particular merchant being identified as said single merchant;
`
`
`
`d) designating said payment category thereby designating at least
`
`that a transaction code generated in accordance with said payment
`
`category can be used by only one merchant;
`
`
`
`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 with 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.
`
`
`
`B. Status of Pending District Court Action.
`
`On April 26, 2013, D’Agostino filed an action against MasterCard in the United
`
`
`
`
`
`
`
`States District Court for the District of Delaware, 1:2013-cv-00738. D’Agostino
`
`sought to protect his intellectual property rights against MasterCard. On October 8,
`
`2013 the action was stayed pending resolution of MasterCard’s petition for covered
`
`business method review.
`
`
`
`
`
`
`
`
` 3
`
`
`MasterCard, Exh. 1016, p. 8
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`III. STATEMENT OF RELIEF REQUESTED
`
`
`
`In opposing MasterCard’s request for covered business method review,
`
`D’Agostino requests the following relief:
`
`1. A finding that Flitcroft is not available as prior art against the ‘486 patent;
`
`2. A finding that MasterCard’s petition fails to demonstrate that it is more
`
`likely than not that any claim of the ‘486 patent is unpatentable; and
`
`3. Complete denial of MasterCard’s petition.
`
`
`IV. STATEMENT OF REASONS WHY THE COVERED BUSINESS
`METHOD REVIEW SHOULD BE DENIED
`
`
`
`
`
`A. MasterCard’s proposed claim constructions.
`
`For the purpose of the Patent Owner’s Preliminary Response, D’Agostino does
`
`not dispute MasterCard’s proposed claim construction because MasterCard’s petition
`
`for covered business method review must be denied even under MasterCard’s own
`
`constructions. However, nothing in this preliminary response should be interpreted as
`
`an agreement with the constructions proposed by MasterCard. D’Agostino reserves the
`
`opportunity to submit accurate claim constructions in the event that a covered business
`
`method review of the ‘486 patent is granted.
`
`
`
`
`
`
`B. Effective Filing Date of the ‘486 Patent.
`
`The ‘486 patent matured from Application No. 11/252,009, filed October 17,
`
`2005, which is a family member of and has priority to Application No. 09/231,745,
`
`filed January 15, 1999. All of the claims of the ‘486 patent are supported by the
`
`
`
` 4
`
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`MasterCard, Exh. 1016, p. 9
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`January 15, 1999 filing. Thus, the effective filing date of the ‘486 patent is January 15,
`
`1999.3 MasterCard does not challenge the January 15, 1999 effective filing date of the
`
`‘486 patent.
`
`
`
`
`
`
`
`C. Flitcroft is not available as prior art against the ‘486 Patent.
`
`For the purpose of establishing an effective prior art date, it is long settled that
`
`“[a]n application that a patent was ‘granted on’ is the first U.S. application to disclose
`
`the invention claimed in the patent.”4 A non-provisional application claiming benefit
`
`of an early filed provisional application may be available as prior art under 35 U.S.C. §
`
`102(e) as of the filing date of the provisional application only if “the provisional
`
`application provide[s] written description support for the claimed invention.”5
`
`
`
`Flitcroft is not available as prior art under 35 U.S.C. § 102(e) against the ‘486
`
`patent because the provisional applications from which Flitcroft claims priority do not
`
`provide written description support for Flitcroft’s claimed invention.
`
`1. Flitcroft’s priority claim.
`
`
`
`Flitcroft matured from Application No. 09/235,836 (the Flitcroft non-
`
`provisional application), filed January 22, 1999. The ‘836 Application claims benefit
`
`to U.S. Provisional Application Nos. 60/099,614, filed September 9, 1998; 60/098,175,
`
`
`3 35 U.S.C. § 119(e).
`
`4 In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (quoting In re Klesper, 55
`
`CCPA 1264, 397 F.2d 882, 855-86 (1968)).
`
`5 Id.
`
`
`
` 5
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`MasterCard, Exh. 1016, p. 10
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`filed August 26, 1998; and 60/092,500, filed July 13, 1998 (collectively “the Flitcroft
`
`provisional applications”). MasterCard asserts that Flitcroft is supported by and has
`
`priority to the Flitcroft provisional applications. 6
`
`
`2. Flitcroft’s prosecution history.
`
`Following a series of office actions, the Examiner rejected all of the pending
`
`
`
`Flitcroft claims in a non-final office action. Particularly, the Examiner rejected claims
`
`36-39, 43, and 43 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No.
`
`5,883,810 (“Franklin et al.”) in view of U.S. Patent No. 5,893,907 (“Ukuda”). 7
`
`
`
`In response to this rejection, Flitcroft argued that Franklin et al. does not teach
`
`“a limited use credit card number which is usable for multiple transactions with a
`
`specific merchant as determined by first use,” as recited by claim 36.8 Flitcroft also
`
`argued that Ukuda did not recite additional limitations recited by claim 36 and that
`
`Ukuda cannot be combined with Franklin et al.9
`
`
`
`Additionally, in the same non-final office action, the Examiner rejected claims
`
`28-35 under 35 U.S.C. § 103(a) as being unpatentable over Franklin et al. in view of
`
`
`6 Pet. at 46.
`
`7 Exh. 2001, Flitcroft File History, 11/7/2001 Office Action at 2.
`
`8 Exh. 2001, Flitcroft File History, 8/28/2002 Response to Office Action at 9 (this
`
`limitation is recited by independent claims 9 and 20 of Flitcroft).
`
`9 Id. at 9-10 (emphasis added).
`
`
`
` 6
`
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`MasterCard, Exh. 1016, p. 11
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`Ukuda, and further in view of U.S. Patent No. 6,188,761 (“Dickerman et al.) and U.S.
`
`Patent No. 5,500,513 (“Langhans et al.”).10
`
`
`
`In response to this rejection, Flitcroft argued that Franklin et al. does not teach a
`
`“limited-use credit card number is valid for a predetermined number of payments or
`
`transactions with a single merchant,” as recited by claim 28.11 Flitcroft also argued
`
`that Ukuda, Dickerman et al. and Langhans et al. did not recite additional limitations
`
`recited by claim 28 and that Ukuda, Dickerman et al., and Langhans et al. cannot be
`
`combined with Franklin et al.12
`
`
`
`
`
`In reply, the Examiner issued a Notice of Allowability and stated in the reasons
`
`for allowance:
`
`… the claims are limited are limited as including a conditions database
`
`and processor…where the condition entails the limited use credit card
`
`number is used to implement an installment plan for a transaction where
`
`the credit card number is only valid…to a single merchant as described in
`
`the specification on page 28, lines 15-19 as indicated by the applicant in
`
`the response filed 12/9/99…13
`
`
`
`
`10 Exh. 2001, Flitcroft File History, 11/7/2001 Office Action at 6.
`
`11 Exh. 2001, Flitcroft File History, 8/2/2002 Response to Office Action at 16
`
`(emphasis added) (this limitation is recited by independent claims 1, 3, 5, 7, and 19 of
`
`Flitcroft).
`
`12 Id. at 16-18.
`
`13 Exh. 2001, Flitcroft File History, 11/8/2002 Notice of Allowability at 2.
`
`
`
` 7
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`MasterCard, Exh. 1016, p. 12
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`In the same Notice of Allowability, the Examiner also stated in the reasons for
`
`allowance:
`
`The prior art also does not teach the credit card system
`
`comprising…wherein the use of the limited-use credit card number is
`
`valid for transactions with a specific merchant as determined by first
`
`use… The limited-use credit card number is only valid for multiple
`
`transactions with a single merchant determined by first use of the card.14
`
`
`
`
`
`In response to the Examiner’s reasons for allowance, Flitcroft disputed other
`
`reasons for allowance that were stated by the Examiner, but did not dispute the reasons
`
`for allowance being a credit card limited to a “single merchant” or the credit card
`
`limited to “a single merchant determined by first use of the card.”15
`
`
`3. The Flitcroft’s provisional applications do not provide written description
`support for the claimed invention.
`
`
`Flitcroft was issued with seven independent claims, namely independent claims
`
`
`
`1, 3, 5, 7, 9, 19, and 20. Independent claims 1, 3, 5, 7, and 19 each recite “wherein the
`
`limited use credit card number is valid for a number of payments for a transaction with
`
`a single merchant.” The remaining independent claims 9 and 20 each recite “wherein
`
`use of the limited credit card is valid for transactions with a specified merchant as
`
`
`14 Id. at 3 (emphasis added).
`
`15 Exh. 2001, Flitcroft File History, 4/18/2003 Comments on Examiners Statement for
`
`Reasons for Allowance.
`
`
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` 8
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`MasterCard, Exh. 1016, p. 13
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`determined by first use.” Accordingly, all of Flitcroft’s independent claims recite the
`
`limitations that provided the basis for allowance of Flitcroft.
`
`
`
`However, the Flitcroft provisional applications do not provide written
`
`description support for the “single merchant” limitation of independent claims 1, 3, 5,
`
`7, and 19. And, further, the Flitcroft provisional applications do not provided written
`
`description support for the “specified merchant as determined by first use” of
`
`independent claims 9 and 20.
`
`
`
`Particularly, U.S. Provisional Application No. 60/092,500 (“the ‘500
`
`application”) does not disclose a credit card that limits transactions to either a “single
`
`merchant” or to a “specified merchant as determined by first use.” Rather, the ‘500
`
`application is directed at a system for providing single use credit cards. For example,
`
`the closest disclosure found in the ‘500 application is a credit card system for issuing
`
`single use credit cards:16
`
`
`
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`16 Exh. 2002, U.S. 60/092,500, Specification at 12:1-5.
`
`
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` 9
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`MasterCard, Exh. 1016, p. 14
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`Similarly, U.S. Provisional Application No. 60/098,175 (“the ‘175
`
`application”) does not disclose a credit card that limits transactions to either a “single
`
`merchant” or to a “specified merchant as determined by first use.” Rather, the ‘175
`
`application is directed at a system for providing single use cards that can be limited for
`
`use by a category of merchant. For example, the closest disclosure found in the ‘175
`
`application relates only to a category of merchant limitation:17
`
`
`
`
`
`Moreover, U.S. Provisional Application No. 60/099,614 (“the ‘614
`
`application”) does not disclose a credit card that limits transactions to either a “single
`
`merchant” or to a “specified merchant as determined by first use.” Rather, the ‘614
`
`application is directed at a system of providing limited use credit cards that can be
`
`limited for use by a merchant type or by a category of merchant. For example, the
`
`closest disclosure found in the ‘614 application relates only to a merchant type
`
`limitation:18
`
`
`17 Exh. 2003, U.S. 60/098,175, Specification at 27:7-10.
`
`18 Exh. 2004, U.S. 60/099,614, Specification at 36:27-28.
`
`
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` 10
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`MasterCard, Exh. 1016, p. 15
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`And, as an additional example, the closest disclosure found in the ‘614
`
`application relates only to a category of merchant:19
`
`
`
`Indeed, the Flitcroft provisional applications do not disclose a credit card that
`
`limits transactions to either a “single merchant” or to a “specified merchant as
`
`determined by first use.” Rather, the written description support for these claim
`
`limitations was first included January 22, 1999 and is only found in the specification
`
`of the Flitcroft non-provisional application:20
`
`
`19 Id. at 34:11-13.
`
`20 Exh. 2001, Flitcroft File History, Specification at 28:15-20 (the same written
`
`description support indicated by the Examiner in the stated reasons for allowance).
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`
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` 11
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`MasterCard, Exh. 1016, p. 16
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`Thus, written description support for the claim limitations “wherein the limited
`
`use credit card number is valid for a number of payments for a transaction with a
`
`single merchant” and “wherein use of the limited credit card is valid for transactions
`
`with a specified merchant as determined by first use” is new matter in the Flitcroft
`
`application relative to the Flitcroft provisional applications.
`
`
`
`Accordingly, because the Flitcroft provisional applications do not provide
`
`written description support for the invention claimed by Flitcroft, Flitcroft is not
`
`entitled to the filing dates of the Flitcroft provisional applications for the purpose of
`
`establishing an effective prior art date. Therefore, January 22, 1999 is the only
`
`effective prior art date of Flitcroft, which is after the ‘486 patent’s effective filing date
`
`of January 15, 1999. So, contrary to MasterCard’s assertion, Flitcroft is not available
`
`as prior art under 35 U.S.C. 102(e) against the ‘486 patent and cannot be used as basis
`
`to grant a covered business method review of the ‘486 patent.
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`
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` 12
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`MasterCard, Exh. 1016, p. 17
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`D. Even if Flitcroft was entitled priority to the Flitcroft provisional
`applications, Flitcroft does not antedate at least one material limitation
`of all the independent claims of the ‘486 patent.
`
`
`
`
`MasterCard asserts Flitcroft against independent claims 1, 24, 25, and 29 of the
`
`‘486 Patent. Each of these independent claims recite “said single merchant limitation
`
`being included in said payment category prior to any particular merchant being
`
`identified as said single merchant.”
`
`
`
`MasterCard alleges that this limitation is met by Flitcroft (the Flitcroft
`
`disclosure):21
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`
`
`
`
`But, as demonstrated above, the Flitcroft provisional applications do not
`
`provide written description support for the Flitfctroft disclosure. Rather, the Flitcroft
`
`disclosure was first added in the Flitcroft non-provisional application. Thus the earliest
`
`possible effective prior art date of the Flitcroft disclosure is January 22, 1999, which is
`
`after the ‘486 patent’s effective filing date of January 15, 1999. Accordingly, Flitcroft
`
`
`21 Pet. at 47.
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`
`
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` 13
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`MasterCard, Exh. 1016, p. 18
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`does not antedate at least one material limitation of the ‘486 patent and cannot be used
`
`to grant a covered business method review.
`
`
`
`
`
`
`
`E. The terminal disclaimer filed during examination of the ‘988 patent
`was not an admission that the ‘486 patent claims are patentably
`indistinct from the claims of the ‘988 patent.
`
`MasterCard argues that the terminal disclaimer filed during prosecution of
`
`related U.S. Patent No. 8,036,988 (the ‘988 patent), to overcome a non-statutory
`
`double patenting rejection in view of the ‘486 patent, was an admission that the claims
`
`of the ‘486 patent are not patentability distinct from the claims of the ‘988 Patent.22
`
`
`
`This argument lacks merit as it ignores over two decades of directly
`
`contradictory case law:23
`
`…the filing of a terminal disclaimer simply serves the statutory function
`
`of removing the rejection of double patenting, and raises neither the
`
`presumption nor the estoppel on the merits of the rejection. It is improper
`
`to convert this simple expedient of ‘obviation’ into an admission or
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`acquiescence or estoppel on the merits of the rejection.
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`
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`F. The Ex Parte Reexamination of the ‘988 patent.
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`Although MasterCard never quite says so directly, MasterCard seems to argue
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`that because reexamination the ‘988 Patent was granted, the Board should grant a
`
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`22 Pet. at 9-10.
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`23 Quad Environmental Technologies Corp. v. Union Sanitary Dist., 946 F.2d 870, 874
`
`(Fed. Cir. 1991).
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`
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` 14
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`MasterCard, Exh. 1016, p. 19
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`
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`Case CBM2013-00058
`Patent 7,840,486
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`covered business method review of the ‘486 Patent.24 MasterCard painstakingly
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`attempts to interweave and connect the pending reexamination of the ‘988 patent to the
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`validity of the ‘486 patent claims.
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`
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`MasterCard’s argument rests on two wobbly legs. First, MasterCard argues,
`
`without support, that the filing of the terminal disclaimer during the prosecution of the
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`‘988 patent was an admission that the claims of the ‘988 patent are patentably
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`indistinct from the claims of ‘486 patent. Second, MasterCard asserts that the CRU
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`Director found that Cohen inherently discloses the ‘486 patent claims when he ordered
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`the reexamination of the ‘988 patent.
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`
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`Initially, as discussed above, filing a terminal disclaimer to overcome a non-
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`statutory double patenting rejection is simply not an admission or concession to the
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`merits of the rejection.
`
`
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`
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`Second, contrary to MasterCard’s assertion, the CRU Director did not find that
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`Cohen inherently discloses the claims of the ‘486 patent. Rather, MasterCard is
`
`attempting to unjustly capitalize on an error made in granting reexamination of claim
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`21 of the ‘988 patent, which D’Agostino is currently opposing and to which the Office
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`has yet to respond.25
`
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`24 Pet. at 10-12.
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`25 See Exh. 2005, 11/11/2013 Patent Owner Response.
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`
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` 15
`
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`MasterCard, Exh. 1016, p. 20
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`
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`Case CBM2013-00058
`Patent 7,840,486
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`
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`Further, the more likely than not burden for granting a covered business method
`
`review requires meeting a much higher standard than the burden imposed by the
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`substantial new question of patentability for granting an ex parte reexamination.26
`
`
`
`In the instance that consideration is given to the reexamination of the ‘988
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`patent, D’Agostino submits the following discussion to correct several of
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`MasterCard’s self-serving mischaracterizations of the reexamination history of the
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`‘988 patent.
`
`
`
`On September 12, 2012 a request for reexamination was filed on the ‘988
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`patent. This request challenged all of the ‘988 patent claims, including all of the
`
`independent claims as being anticipated by Cohen.27 On September 12, 2012 the
`
`request was denied on all grounds by a panel of experienced reexamination patent
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`examiners.28 In denying the request, the panel mainly focused on the following
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`limitation recited by claim 1:
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`c) defining at least one payment category to include at least limiting a
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`number of transactions to one or more merchants, said one or more
`
`merchants limitation being included in said payment category prior to
`
`
`26 Message from Chief Judge James Donald Smith, USPTO Discusses Key Aspects of
`
`New Administrative Patent Trials, http://www.uspto.gov/aia_implementation/smith-
`
`blog-extravaganza.jsp (last visited Dec. 18, 2013).
`
`27 See Exh. 1003, ‘988 Patent Reexamination History, Request at 24.
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`28 See Exh. 1003, ‘988 Patent Reexamination History, Order Denying Request for Ex
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`Parte Reexamination.
`
`
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` 16
`
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`MasterCard, Exh. 1016, p. 21
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`
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`Case CBM2013-00058
`Patent 7,840,486
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`any particular merchant being identified as one of said one or more
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`merchants. 29
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`
`
`Independent claims 17, 19, and 22 include the “one or more merchants”
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`limitation recited by claim 1. In contrast, independent claim 21 recites a similar but
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`narrower “single merchant” limitation:
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`b) receiving a request from said account holder for a transaction code to
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`make a purchase within a payment category that at least limits transactions
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`to a single merchant, said single merchant limitation being included in said
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`payment category prior to any particular merchant being identified as said
`
`single merchant.30
`
`
`
`The panel concluded that Cohen did not raise a substantial new question of
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`patentability on the “one or more merchants” limitation of claim 1, and also concluded
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`that Cohen did not raise a substantial new question of patentability on the similar but
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`narrower “single merchant” limitation of claim 21:31
`
`
`
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`29 Id. at 4.
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`30 Exh. 2006, U.S. Patent No. 8,036,988 at 11:10-16.
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`31 Id. at 8.
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` 17
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`MasterCard, Exh. 1016, p. 22
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`Case CBM2013-00058
`Patent 7,840,486
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`
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`The panel found that Cohen’s specific merchant limitation could not meet the
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`single merchant limitation being included in the payment category prior to any
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`particular merchant being identified as the single merchant:32
`
`
`
`And the Requester clearly recognized the significant difference between the
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`“one or more merchants” claim language of claim 1 and the “single merchant” claim
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`language of claim 21:33
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`
`
`
`
`
`
`
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`The panel rejected the Requester’s argument that the “one or more merchants”
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`limitation was not a meaningful limitation, but rather an overly broad and
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`32 Exh. 1003, ‘988 Patent Reexamination History, Order Denying Request for Ex Parte
`
`Reexamination at 7.
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`33
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`
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` Exh. 1003, ‘988 Patent Reexamination History, Request at 43.
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` 18
`
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`MasterCard, Exh. 1016, p. 23
`
`
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`unreasonable interpretation – effectively recognizing a meaningful difference between
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`the “one or more merchants” limitation and the “single merchant” limitation:34
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`Case CBM2013-00058
`Patent 7,840,486
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`
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`The CRU Director also rejected the Requester’s argument that the “one or more
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`merchants” limitation is not a meaningful limitation:35
`
`
`
`
`
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`34 Exh. 1003, ‘988 Patent Reexamination History, Order Denying Request for Ex Parte
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`Reexamination at 5.
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`35 Exh. 1003, ‘988 Patent Reexamination History, 6/7/13 CRU Decision at 5.
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`
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` 19
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`MasterCard, Exh. 1016, p. 24
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`Case CBM2013-00058
`Patent 7,840,486
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`
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`The Requester, in its Petition for Review of the denied reexamination request,
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`could have, but did not challenge the denial of the reexamination on claim 21. But,
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`rather, only challenged the denial on the “one more merchants” limitation of claim 1.36
`
`
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`Indeed, the CRU Director considered the Requester’s Petition and granted
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`reexamination of all the claims of the ‘988 finding that Cohen raised a substantial new
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`question of patentability concerning the “one or more merchants” limitation only:
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`According, it would appear that Cohen does include ‘defining a payment
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`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’
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`as claimed.37
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`
`
`Importantly, the reexamination was granted only on the “one or more
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`merchants” limitation, which is recited only by independent claims 1, 17, 19, and 22.
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`The reexamination was not granted on the narrower “single merchant” limitation,
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`which is recited by independent claim 21. Accordingly, reexamination of claim 21 was
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`ordered in error.
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`
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`Then at the direction of the CRU Director, the Examiner issued a non-final
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`office action rejecting all of the independent claims of the ‘988 patent as being
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`anticipated by Cohen
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