IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner
`
`––––––––––
`
`Patent No. 7,840,486
`Application No. 11/252,009
`Filed: October 17, 2005
`Issued: November 23, 2010
`Title: System and Method for Performing Secure Credit Card Transactions
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`––––––––––
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,840,486
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`TABLE OF CONTENTS
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`LIST OF EXHIBITS……………………………………………………………....iii
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`I. 
`
`II. 
`
`III. 
`
`INTRODUCTION ........................................................................................ 1 
`
`OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................ 2 
`
`BACKGROUND INFORMATION FOR THE ‘486 PATENT .................. 3 
`
`A.  Overview of the ‘486 Patent ........................................................................ 3
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`B. 
`
`C. 
`
`D. 
`
`The ‘486 Patent Prosecution History ........................................................... 4
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`The ‘988 Patent Ex Parte Reexamination File History ............................... 6
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` D’Agostino’s Response to the Ex Parte Reexam Office Action ................ 8
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`E. 
`
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`IV. 
`
`Petition for Covered Business Method Patent Review .............................. 13
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`CLAIM CONSTRUCTION ....................................................................... 14 
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`V. 
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`THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ............................... 16 
`
`GROUND 1.  Claims 1-15 and 22-30 are Anticipated Under 35 U.S.C. § 102
`by Cohen ........................................................................................ 17
`
`GROUND 2.  Claims 16-21 are Obvious Under 35 U.S.C. § 103 by Cohen in
`View of Musmanno ........................................................................ 31
`
`GROUND 3.  Claims 1-15 and 22-30 are Anticipated Under 35 U.S.C. § 102
`by Flitcroft ...................................................................................... 36
`
`GROUND 4.  Claims 16-21 are Obvious Under 35 U.S.C. § 103 by Flitcroft in
`View of Musmanno ........................................................................ 52
`
`GROUND 5.  Claims 1-15 and 22-30 are Unpatentable under 35 USC § 103 as
`Obvious over Cohen in view of a Person of Ordinary Skill in the
`Art ................................................................................................... 57
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`GROUND 6.  Claims 1-15 and 22-30 are Unpatentable under 35 USC § 103 as
`Obvious over Flitcroft in view of a Person of Ordinary Skill in the
`Art ................................................................................................... 57
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`MANDATORY NOTICES ........................................................................ 57 
`
`
`VI. 
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`VII. 
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`CERTIFICATION OF GROUNDS FOR STANDING ............................. 59 
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`VIII.  CONCLUSION .......................................................................................... 59 
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`- iii -
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`LIST OF EXHIBITS
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`Exhibit 1001 – U.S. Patent No. 7,840,486
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`Exhibit 1002 – File History for U.S. Patent No. 7,840,486
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`Exhibit 1003 – File History for U.S. Reexamination No. 90/012,517
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`Exhibit 1004 – U.S. Patent No. 6,422,462 (“Cohen”)
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`Exhibit 1005 – U.S. Patent No. 6,636,833 (“Flitcroft”)
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`Exhibit 1006 – U.S. Patent No. 5,826,243 (“Musmanno”)
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`Exhibit 1007 – Complaint in D’Agostino v. MasterCard, Inc. et al. (13-cv-0738)
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`Exhibit 1008 – Declaration of Jack D. Grimes, Ph.D.
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`Exhibit 1009 – Excerpts from Random House Webster’s Unabridged Dictionary,
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`Second Edition
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`Exhibit 1010 – U.S. Patent No. 6,064,987 (“Walker”)
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`Exhibit 1011 – U.S. Patent No. 5,283,829 (“Anderson”)
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`Exhibit 1012 – ISO 8583 Financial Transaction Card Originated Messages –
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`Interchange Message Specifications (1992) (“ISO 8583”)
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`Exhibit 1013 – File History for U.S. Patent No. 8,036,988
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`Exhibit 1014 – Patent Trial and Appeal Board’s (“PTAB”) 3/7/14 CBM Decision
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`for U.S. Patent No. 8,036,988
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`Exhibit 1015 – Patent Trial and Appeal Board’s (“PTAB”) 3/7/14 CBM Decision
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`for U.S. Patent No. 7,840,486
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`Exhibit 1016 – Patent Owner’s 12/24/13 Preliminary Response to Petitioner’s
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`Request for CBM Patent Review of the ‘486 Patent
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`Exhibit 1017 – U.S. Provisional App. No. 60/079,884 (“’884 Provisional)
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`Exhibit 1018 – U.S. Provisional App. No. 60/099,614 (“’614 Provisional)
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`Exhibit 1019 – U.S. Provisional App. No. 60/098,175 (“’175 Provisional)
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`Exhibit 1020 – U.S. Provisional App. No. 60/092,500 (“’500 Provisional)
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`

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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`MasterCard International Incorporated (“Petitioner”) in accordance with 35
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`U.S.C. § 311 and 37 C.F.R. § 42.100, respectfully requests inter partes review of
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`claims 1-30 (all claims) of U.S. Pat. No. 7,840,486 (“the ‘486 Patent”), issued to
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`John D’Agostino (“D’Agostino”), attached hereto as Exhibit 1001. For the reasons
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`set forth herein, Petitioner respectfully requests review of, and judgment against,
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`claims 1-30 as unpatentable under §§ 102 and/or 103.
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`I.
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`INTRODUCTION
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`The ‘486 Patent attempts to claim the use of a transaction code – in lieu of a
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`credit card number – for making secure transactions that are limited to a single
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`merchant. This was a practice that was common in the credit card industry before
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`the priority date of the ‘486 Patent. During prosecution, the ‘486 Patent issued
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`only after the Applicant attempted to distinguish the claims over the prior art on
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`the basis of the following limitation:
`
`defining a payment category including at least limiting purchases to a
`single merchant for at least one transaction, said single merchant
`limitation being included in said payment category prior to any
`particular merchant being identified as said single merchant
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`However, this limitation does not in fact distinguish the claims of the ‘486
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`patent from the prior art. The prior art already disclosed the use of credit card
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`transaction codes that were limited to a single transaction, which inherently limits
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`the card to use at a single merchant – because once the card is first used at any
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`merchant, it cannot be used again. Therefore, the Applicant had claimed in the
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`‘486 Patent nothing more than a feature that was inherently disclosed in the prior
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`art. Accordingly, and as explained in detail below, the prior art invalidates the
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`‘486 Patent.
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`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to § 42.108, Petitioner asserts that every one of the challenged
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`claims 1-30 of the ‘486 Patent is unpatentable as invalid under §§ 102, and/or 103.
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`The accompanying Exhibit List lists all prior art references relied upon for the
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`asserted grounds of invalidity under §§ 102 and/or 103. Petitioner specifically
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`requests cancellation of the challenged claims on the following statutory grounds:
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` GROUND 1. Claims 1-15 and 22-30 are Unpatentable under 35 USC § 102 as
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`Anticipated by Cohen
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` GROUND 2. Claims 16-21 are Unpatentable under 35 USC § 103 as Obvious
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`over Cohen in view of Musmanno
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` GROUND 3. Claims 1-15 and 22-30 are Unpatentable under 35 USC § 102 as
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`Anticipated by Flitcroft
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` GROUND 4. Claims 16-21 are Unpatentable under 35 USC § 103 as Obvious
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`over Flitcroft in view of Musmanno
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` GROUND 5. To the extent the Board finds that Cohen does not anticipate
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`claims 1-15 and 22-30, these claims would be obvious over
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`Cohen alone, or together with the common sense and knowledge
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`of a person of ordinary skill in the art
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` GROUND 6. To the extent the Board finds that Flitcroft does not anticipate
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`claims 1-15 and 22-30, these claims would be obvious over
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`Flitcroft alone, or together with the common sense and
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`knowledge of a person of ordinary skill in the art
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`Section V below lists each ground upon which there is a reasonable
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`likelihood that the challenged claims are unpatentable as anticipated under §§ 102
`
`and/or 103, and presents a detailed explanation therefor. 35 U.S.C. § 314(a).
`
`Grounds 3, 4, and 6 are being presented (in addition to Grounds 1, 2 and 5) in the
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`event the Board does not accept Petitioner’s construction of “generating [a/said]
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`transaction code” and adopts a broader, albeit in Petitioner’s view a faulty,
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`alternative construction, both discussed below.
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`III. BACKGROUND INFORMATION FOR THE ‘486 PATENT
`A. Overview of the ‘486 Patent
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`The ‘486 Patent is directed to a secure method for performing credit card
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`purchases, wherein a customer submits a transaction code, rather than an entire
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`credit card number to a merchant when making a purchase. Generally, the
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`customer contacts an authorizing entity, such as a credit card company or issuing
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`bank, and requests a transaction code. The transaction code can be limited to
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`purchases within a payment category, such as limiting the code to be used with a
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`single merchant and other limitations, such as restricting the use to a particular
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`period of time. The customer can then use the transaction code to make a purchase
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`at a merchant or online.
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`B.
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`The ‘486 Patent Prosecution History
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`On October 17, 2005, the Applicant filed U.S. Patent Application No.
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`11/252,009 which ultimately issued as the ‘486 Patent. The claims of the ‘486
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`Patent issued after only two rejections citing the same prior art references during
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`prosecution. The Examiner rejected the claims in a non-final office action under §
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`103(a) as unpatentable over U.S. Patent No. 6,000,832 (“Franklin”) in view of U.S.
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`Patent Publication No. 2001/0011249 (“Yanagihara”) in further view of U.S.
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`Patent No. 5,500,513 (“Langhans”). See Exh. 1002, ‘486 Patent File History,
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`6/10/09 Office Action at 7.
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`In response to the non-final office action, the Applicant argued that
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`independent claim 1 “recites, inter alia, defining a payment category including at
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`least limiting purchases to a single merchant for at least one transaction, said single
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`merchant limitation being included in said payment category prior to any particular
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`merchant being identified as said single merchant.” See Exh. 1002, ‘486 Patent
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`File History, 12/10/09 Response to Office Action at 23 (emphasis in original). The
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`Applicant argued that the cited prior art “fails to teach or suggest the claimed
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`feature of the single merchant limitation being included in said payment category
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`prior to any particular merchant being identified as said single merchant.” Id. at 25
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`(emphasis added). The Applicant provided similar arguments for the other
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`pending independent claims. Id. at 25-28.
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`The Examiner subsequently rejected the claims in a final office action again
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`under § 103(a) as unpatentable over Franklin in view of Yanagihara in further view
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`of Langhans. See Exh. 1002, ‘486 Patent File History, 3/29/10 Final Office Action
`
`at 5.
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`In response to the final office action, the Applicant again argued that the
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`cited prior art did not teach “a single merchant limitation being included in a
`
`payment category prior to any particular merchant being identified as said single
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`merchant.” See Exh. 1002, ‘486 Patent File History, 7/26/10 Response to Final
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`Office Action at 19 (emphasis in original). The Applicant provided similar
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`arguments for the other pending independent claims. Id. at 21-22.
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`After an examiner interview, the Examiner allowed the pending claims
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`noting that he found the Applicant’s arguments persuasive. More specifically, the
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`Examiner stated in the reasons for allowance the “uniquely patentable feature” of:
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`defining a payment category including at least limiting purchases to a
`single merchant for at least one transaction, said single merchant
`limitation being included in said payment category prior to any
`particular merchant being identified as said single merchant
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`See Exh. 1002, ‘486 Patent File History, 9/1/10 Notice of Allowance at 11. The
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`application subsequently issued as the ‘486 Patent on November 23, 2010.
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`
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`Prior to issuance, the Applicant filed a continuation application, U.S. Patent
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`Application No. 12/902,399, which ultimately issued as U.S. Pat. No. 8,036,988
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`(“the ‘988 Patent”). During prosecution of the ‘988 Patent, the same Examiner
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`rejected the pending claims of the ‘988 Patent in view of the ‘486 Patent,
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`concluding that the claims of the ‘988 Patent were not patentably distinct from
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`those of the ‘486 Patent. See Exh. 1013, ‘988 Patent File History, 1/14/11 Office
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`Action at 2-3. The Applicant did not contest that ground for rejection. Instead, to
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`overcome that rejection, the Applicant disclaimed the ability to enforce the ‘988
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`Patent beyond the term of the ’486 Patent – conceding that the claims of the ‘486
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`Patent and those of the ‘988 Patent are not patentably distinct from each other. See
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`Exh. 1013, ‘988 Patent File History, 3/21/11 Terminal Disclaimer.
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`C.
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`The ‘988 Patent Ex Parte Reexamination File History
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`On September 12, 2012, the Petitioner filed a Request for Ex Parte
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`Reexamination of the related ‘988 Patent, and after an initial decision denying the
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`request, on January 7, 2013, the Petitioner filed a Petition for Review under 37
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`C.F.R. § 1.181. On June 7, 2013, the Director of the Central Reexamination Unit
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`granted the Petition for Review and granted the Request for Ex Parte
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`Reexamination for all claims of the ‘988 Patent. In the decision granting the
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`petition, the Director stated: “in Cohen one can limit the transaction only to a
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`particular type of merchant, such as computer stores” and further noted that the
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`“card can be limited to use at certain types of stores, such as clothing stores.” See
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`Exh. 1003, ‘988 Patent Reexam History, 6/7/13 CRU Decision, at 5. “At the same
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`time, limiting to ‘clothing stores’ does not identify any one particular merchant.”
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`Id.
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`The director concluded that “[a]ccordingly, it would appear that Cohen does
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`include ‘defining a payment category to include at least limiting a number of
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`transactions to one or more merchants, said one or more merchants limitation being
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`included in said payment category prior to any particular merchant being identified
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`as one of said one or more merchants’ as claimed.” Id. This element is almost
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`exactly the same as the “uniquely patentable feature” of the ‘486 Patent as
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`identified by the Examiner during prosecution of the ‘486 Patent. The principal
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`difference is that the ‘486 Patent claims a payment category that is limited to “a
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`single merchant”, whereas the limitation addressed in the ‘988 Patent is a payment
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`category that is limited to “one or more merchants.”
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`To further explain the reasoning for why Cohen discloses this element, the
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`Director noted that:
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`Cohen does not necessarily limit transactions to any specific merchant
`or particular store – if Cohen provides a limit of ‘clothing stores’ then
`there is necessarily a limit on number of stores, as not all stores are
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`clothing stores. At the same time there is no limit or specific
`identification of any specific store. Cohen therefore limits a number of
`transactions to one or more merchants, those of a specific industry,
`while not identifying [any] particular merchant. Limiting by industry
`does not necessarily identify a particular merchant ...
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`Id. at 6. As the Director reasoned in his decision, a particular type of store could
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`include one or more merchants, but it undoubtedly could also be “a single
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`merchant.” Id. at 7 (granting reexamination for all claims of the ‘988 patent,
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`including claim 21 which claims a payment category that is limited to “a single
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`merchant”).1 Therefore, the Director found that Cohen inherently discloses the
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`exact limitation that the Applicant relied on to distinguish the claims of the ‘486
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`Patent from the prior art.
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`In the Office Action subsequently issued in the Ex Parte Reexamination, the
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`Examiner agreed with the Director, rejecting all the claims of the ‘988 Patent. See
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`Exh. 1003, ‘988 Patent Reexam History, 9/11/13 Office Action, 4-5, 13-14, 18-19.
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`D.
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` D’Agostino’s Response to the Ex Parte Reexam Office Action
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`On November 11, 2013, D’Agostino filed a Response to the Office Action.
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`See Exh. 1003, ‘988 Patent Reexam History, 11/11/13 Office Action Response
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`1 This conclusion is consistent with the Applicant’s own admission that the claims
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`of the ‘486 Patent and the ‘988 Patent are not patentably distinct from each other.
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`See Exh. 1013, ‘988 Patent File History, 3/21/11 Terminal Disclaimer.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`(“Reexam Response”). First, Patent Owner mischaracterizes Cohen as disclosing
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`merely a “type of charge” limitation (e.g., limiting card purchases to particular
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`products), and then argues that this is not a “merchant” or “number of merchants”
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`limitation. Id. at 21-23. Patent Owner further argues that limiting a transaction to
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`a particular industry of merchants is not a limitation to “one or more merchants.”
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`Id. at 25-27. In particular, Patent Owner asserts that Cohen “restricts purchases to
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`preapproved products” and permits purchases “without any limit on the number of
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`merchants [at which] the products or services may be purchased.” Id.
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`Patent Owner’s arguments, however, ignore the Director’s correct finding
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`that Cohen discloses a merchant type restriction that limits the transaction code to
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`“computer stores” and “clothing stores” (for example) – and not simply to
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`particular preapproved products. See Exh. 1003, ‘988 Patent Reexam History,
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`6/7/13 CRU Decision, at 5; Cohen at 8:25-35; 8:43-46. Consequently, by limiting
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`a card’s use to a category (e.g., a subset) of stores, Cohen thus also limits the
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`number of merchants at which the transaction code could be used, because there
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`are only a finite number of merchants in each category (i.e., contrary to Patent
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`Owner’s suggestion, there are not an infinite number of “computer stores” in the
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`world that could accept the card disclosed in Cohen). See id.; see also Exh. 1008,
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`Grimes Dec. at ¶ 38.
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`Moreover, Patent Owner’s claim construction analysis is flawed. Patent
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`Owner argues that “one or more merchants” means “a certain quantity of
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`merchants that is finite in number” (emphasis added), and that under this meaning
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`“an entire industry (e.g., a merchant type) would be excluded.” Reexam Response
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`at 27. Seemingly, Patent Owner in this regard argues that its claims require that
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`the authorizing entity determines whether the purchase exceeds an “authorized
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`number of merchants.” Id. There is, however, no support for this argument in the
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`patent, which nowhere speaks to limiting the payment category to a certain number
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`of merchants and assessing whether a particular purchase exceeds that authorized
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`number of merchants (e.g., that a particular transaction at issue is taking place at an
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`11th merchant when transactions are limited to only 10 merchants).
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`Petitioner nonetheless submits that, even under Patent Owner’s construction,
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`limiting transactions to a merchant type (as in Cohen) would be anticipatory
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`because the number of authorized merchants in Cohen (such as “computer stores”)
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`is a certain quantity. Cohen at 8:25-35; 8:43-46. Regardless, the PTAB itself
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`concluded that “one or more merchants” need not be “a certain quantity,” but
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`instead means “one merchant up to a plurality of merchants, where the number of
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`merchants is a finite number.” See Exh. 1014, PTAB’s 3/7/14 CBM Decision for
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`the ‘988 Patent at 9. Thus, under the PTAB’s construction, this limitation would
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`be anticipated by Cohen’s disclosure limiting transactions to a merchant type (such
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`as computer stores), which is inherently a limitation to one or more (up to a finite
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`number) of merchants. See Exh. 1008, Grimes Dec. at ¶ 38.
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`Next, Patent Owner hypothetically argues that it is not possible to create a
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`merchant limitation (as in Cohen) before any particular merchant is identified
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`because otherwise purchases could never be authorized. See Reexam Response at
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`24-25. According to Patent Owner, it “simply is not possible to create a merchant
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`type limitation before identification of a specific merchant of that merchant type.”
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`Id. at 25. But this is unsupported by the record, and ignores historical fact,
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`including a two-step process that generally takes place over time, namely the
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`creation of merchant type categories followed by the inclusion, and identification,
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`of newly and subsequently established merchants as particular merchant types. See
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`Exh. 1008, Grimes Dec. at ¶ 17; see also Exh. 1012, ISO 8583 at 64-65, 127-128.
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`Significantly, Patent Owner’s entire argument seems premised on its
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`unsupported belief that “a credit card company ... assigns an MCC to a merchant
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`when that merchant first starts accepting credit cards as payment.” Reexam
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`Response at 24. Patent Owner, however, fails to cite anything in Cohen that
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`references MCCs or requires that the “particular merchant... be identified [in
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`advance] as a merchant of a merchant type.” Id. at 24.
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`Moreover, Patent Owner’s argument, which suggests that mere identification
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`of a merchant as an MCC merchant type meets its claims’ requirement that a
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`“particular merchant be[] identified,” is based on a distorted reading of the claims,
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`one that ignores claim language, the specification, and the file history. See, e.g.,
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`Exh. 1001, ‘988 Patent, claim 1(c) (limiting the payment category to a number of
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`transactions); see also Exh. 1013, ‘486 Patent File History, 7/26/10 Office Action,
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`at pp.18-19 (distinguishing the use of merchant type category codes and approved
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`vendor lists having pre-identified merchants). Indeed, the claim requires, as
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`Petitioner submits, that the “particular merchant” be identified for the particular
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`transaction or purchase in the payment category – not simply that a merchant be
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`identified by anybody, for any purpose, or that a merchant simply be assigned an
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`MCC. See id.; see also Exh. 1008, Grimes Dec. at ¶ 26.
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`Accordingly, the key point is that the claims require, and Cohen discloses,
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`limiting transactions or purchases to certain subgroups, to “only [] a certain store,
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`or group of stores or types of stores (e.g., clothing stores),” without identifying any
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`particular merchant for the particular transactions or purchases in the payment
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`category. Cohen simply does not address MCCs or vendor lists and, as the
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`Director correctly recognized, Cohen discloses the creation of a merchant
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`limitation before any particular merchant is identified as one of the one or more
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`merchants. See Exh. 1003, ‘988 Patent Reexam History, 6/7/13 CRU Decision, at
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`5.
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`Patent Owner also argued that Cohen does not disclose the “single merchant
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`limitation” prior to any merchant being identified, see Reexam Response at 28-31,
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`but this is based on the overturned Order Denying Reexamination and ignores
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`numerous disclosures of Cohen that include single transaction limitations without
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`requiring identification of a merchant in advance. See e.g., Cohen 8:25-46, 12:3-4,
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`2:35-43 (the “credit card numbers are generated for a one time, single transaction
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`basis”).2 Petitioner explains in detail in Section V below how each of these
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`elements are disclosed by Cohen.
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`E.
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`Petition for Covered Business Method Patent Review
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`On September 17, 2013, the Petitioner filed a Request for Covered Business
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`Method (“CBM”) Patent Review of the ‘486 Patent, and on December 24, 2013,
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`Patent Owner filed a Preliminary Response. See Exhibit 1016 – Patent Owner’s
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`12/24/13 Preliminary Response (“CBM Response”). In the CBM Response, Patent
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`Owner presented the same arguments in the Reexam Response (addressed above),
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`but also argued that the single use card disclosed in Cohen does not meet the
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`limitations of claims 1, 24, 25, and 29, which Patent Owner claims is directed to a
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`payment category that limits multiple transactions to a single merchant. Id. at 24-
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`28. However, as the Petitioner demonstrates in the claim charts in Section V
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`2 Patent Owner also argued that Cohen “requires” identification of a particular
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`store “in advanced [sic] at the time of customization.” See Reexam Response at
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`30. This simply is not the case as evidenced by Cohen’s use of the word “can”
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`instead of “must”. See Cohen 3:49-53, 7:66-8:2.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`below, Cohen does disclose this limitation. See also Cohen 2:35-43; 8:25-46;
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`12:3-4.
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`Patent Owner also argued that defining a payment category to limit the
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`transaction code to a single merchant is a “positive step” (a vague and ambiguous
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`term), and that a single use card does not include this positive step. Id. at 24-28.
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`However, a single use card inherently discloses this limitation, because a single use
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`card by definition can only be used at a single merchant. Accordingly, a single use
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`card inherently includes the necessary “positive step” that limits the transaction
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`code to a single merchant. See Exh. 1008, Grimes Dec. at ¶ 39.
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`On March 7, 2013, the Patent Trial and Appeal Board (“PTAB”) denied
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`institution of CBM review, noting that the prior art references Cohen and Flitcroft
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`cited in the CBM petition only qualify as §102(e) prior art, and therefore do not
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`qualify as prior art for a CBM review under Section 18(a)(1)(C) of the AIA. See
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`Exh. 1015, PTAB’s 3/7/14 CBM Decision for the ‘486 Patent at 8-9.
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`IV. CLAIM CONSTRUCTION
`Pursuant to § 42.100(b), and solely for purposes of this review, Petitioner
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`construes the claim language such that claim terms are given their broadest
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`reasonable interpretation, in view of the claim language, the specification, and file
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`history, from the perspective of one skilled in the art. See Exh. 1008, Grimes Dec.
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`at ¶ 20. For terms not specifically listed and construed below, and in the absence,
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`to date, of detailed arguments from D’Agostino indicating a need for construction
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`or a disagreement regarding the meaning of the vast majority of terms, Petitioner
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`interprets them for purposes of this review in accordance with their plain and
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`ordinary meaning under the required broadest reasonable interpretation.
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` “generating [a/said] transaction code”: For review purposes, this term
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`means “creating a code usable as a substitute for a credit card number in a purchase
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`transaction, the number pre-coded to be indicative of a specific credit card
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`account.” (Exh. 1001, ‘486 Patent at Abstract; 3:43-48; 6:19-38; 6:63-7:1; see Exh.
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`1008, Grimes Dec. at ¶ 21).3
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` “defining a payment category”: For review purposes, this term means
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`“specifying the type of limitation (or limitations) that are available to be applied to
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`a transaction code in order to limit its use.” (Exh. 1001, ‘486 Patent at 2:67-3:3;
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`3:48-4:2; 4:20-24; 7:2-8; 7:56-8:43; see Exh. 1008, Grimes Dec. at ¶ 22).
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` “particular merchant”: For review purposes, this term means “a
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`3 In the event the Board does not accept Petitioner’s construction of “generating
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`[a/said] transaction code,” but concludes instead that this term means “creating a
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`code usable as a substitute for a credit card number in a purchase transaction”
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`(without the clause “the number pre-coded to be indicative of a specific credit card
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`account”) (“Alternative Construction”) then Petitioner also presents Grounds 3, 4,
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`and 6 below (in addition to Grounds 1, 2 and 5).
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`specific merchant with whom a customer can engage in the purchase transaction.”
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`(Exh. 1001, ‘486 Patent at 3:67-4:2; 4:8-13; 4:44-49; see Exh. 1008, Grimes Dec.
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`at ¶ 23).
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` “verifying that said defined purchase parameters are within said
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`designated payment category”: For review purposes,
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`this
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`term means
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`“ascertaining that any limitation associated with the designated payment category
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`is satisfied.” (Exh. 1001, ‘486 Patent at 4:8-13; 7:8-24; see Exh. 1008, Grimes Dec.
`
`at ¶ 24).
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` “promotional material”: For review purposes, this term means “any
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`information about the product that facilitates the purchase transaction.” (Exh. 1001,
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`‘486 Patent at 3:7-12; 5:36-48; 7:25-38; see Exh. 1008, Grimes Dec. at ¶ 25).
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` “prior to any particular merchant being identified”: For review
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`purposes, this term means “prior to the identification of a particular merchant for
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`the particular transaction(s) or purchase(s) in said payment category.” (Exh. 1001,
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`‘486 Patent at 6:33-43, Fig. 1; Exh. 1002, ‘486 Patent File History, 7/26/10 Office
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`Action at 18-19; see Exh. 1008, Grimes Dec. at ¶ 26).
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`V. THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
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`Pursuant to §§ 42.22 and 42.104(b), a full statement of the reasons for the
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`relief requested, with a detailed explanation of the evidence is provided below.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`GROUND 1. Claims 1-15 and 22-30 are Anticipated Under 35 U.S.C. §
`102 by Cohen
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`U.S. Patent No. 6,422,462 to Cohen (Exh. 1004, “Cohen”) claims priority to
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`U.S. Provisional Application No. 60/079,8844, which was filed on March 30, 1998.
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`Accordingly, Cohen is prior art to the ‘486 Patent under at least 35 U.S.C. §
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`102(e). Cohen teaches customized, limited use card numbers for use in purchase
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`transactions over a credit card network. Cohen at 2:32-43.
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`Cohen discloses an account holder contacting their credit card company,
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`verifying their identity, and then being provided with a transaction code number to
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`be used for a single or limited range of transactions. Id. at 3:41-48; 13:8-14. The
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`account holder can indicate in advance the limitations applicable to the transaction
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`code number. Id. at 3:49-52. Once the account holder has received the number,
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`they can communicate the number to a merchant like it was a regular credit card
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`number, which the merchant can use to obtain authorization for the purchase
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`transaction with the credit card company. Id. at 5:35-39. The credit card company
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`4The subject matter relied upon in Cohen was carried forward from U.S.
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`Provisional App. No. 60/079,884, which “provide[s] written description support
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`for the claimed invention” of the ‘486 Patent. In re Giacomini, 612 F.3d 1380,
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`1383 (Fed. Cir. 2010); see Exh. 1008, Grimes Dec. at ¶ 68-70; see also Exh. 1015,
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`PTAB’s 3/7/14 CBM Decision for the ‘486 Patent at 8-9.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,840,486
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`can authorize the use of the customized number, or deny it if it is used for anything
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`other than the single or customized use indicated by the account holder. Id. at
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`5:44-49.
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`Examples of the customized uses for which a disposable or customized
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`number can be indicated may include a time limit, id. at 6:7, specific merchant or
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`industry, id. at 8:2-14, a specific merchant or merchants, id. at 8:33-34, purchase
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`amount, id. at 8:44, etc. These various customized uses can also be used in
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`combination, such as a customized number to be used on specifi