UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner,
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner.
`____________________
`
`Case No. IPR2014-00543
`Case No. IPR2014-00544
`___________________
`
`PATENT OWNER’S DEMONSTRATIVES FOR ORAL HEARING
`
`PATENT OWNER EXHIBIT 2010
`
`1
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner,
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner.
`____________________
`
`Case No. IPR2014-00543
`Case No. IPR2014-00544
`___________________
`
`PATENT OWNER’S DEMONSTRATIVES FOR ORAL HEARING
`
`PATENT OWNER EXHIBIT 2010
`
`1
`
`
`
`IPR2014-00544 Instituted Grounds
`U.S. 7,840,486 (“the ‘486 Patent”)
`
`1. Anticipation of claims 1‐15 and
`22‐30 by Cohen; and
`1.
`2. Obviousness of claims 16‐21
`over Cohen and Musmanno.
`
`2
`
`
`
`IPR2014-00543 Instituted Grounds
`U.S. 8,036,988 (“the ‘988 Patent”)
`
`1. Anticipation of claims 1‐10, 15‐
`25, 27‐33, and 35‐38 and 22‐30
`by Cohen; and
`1.
`2. Obviousness of claims 11‐14, 26,
`and 34 over Cohen and
`Musmanno.
`
`3
`
`
`
`The ‘486 & ‘988 Patent, Fig. 1 depicts method of
`performing secured credit card purchases.
`
`Ex. 1002, IPR2014‐00544, the ‘486 Patent, Fig. 1.
`Ex. 1002, IPR2014‐00543, the ‘988 Patent, Fig. 1.
`
`4
`
`
`
`The ‘486 & ‘988 Patent describes generating a
`transaction code for either credit card or debit card
`accounts.
`
`Once the customer has identified the
`product or services which he/she wishes
`to purchase, the customer contact and
`supplies a custodial authorizing entity
`1.
`with the requisite information concerning
`both the identification of a specific credit
`card or debit card account and a
`requested payment category.
`
`P.O. Response, IPR2014‐00543, at p. 5; Ex. 1001, 3:12‐17.
`P.O. Response , IPR2014‐00544, at p. 6, Ex. 1001, 3:17‐22.
`
`5
`
`
`
`The ‘486 & ‘988 Patent describes limiting purchases to a
`single merchant that is identified when the limit is made.
`
`In particular embodiments, the payment
`category includes a limit that restricts
`purchases to a single merchant that is not
`1.
`identified before the limit to the single
`merchant is made.
`
`“The payment category may also include
`a multi‐transaction authorization wherein
`more than one purchase may be made
`from one or a plurality of different
`merchants, each of which may or may not
`be identified by the customer….”
`
`IPR2014‐00544, Ex. 1001, 8:12‐16
`
`P.O. Response, IPR2014‐00544, at p. 3; Ex. 1001, 8:12‐16.
`P.O. Response , IPR2014‐00543, at p. 4; Ex. 1001, 8:18‐23.
`
`6
`
`
`
`The ‘486 Patent “single merchant” claim limitation.
`
`All of the independent claims 1, 24, 25
`and 29 include the limitation “said single
`merchant limitation being included in
`1.
`said payment category prior to any
`particular merchant being identified as
`said single merchant.”
`
`P.O. Response, IPR2014‐00544, at p. 18.
`
`7
`
`
`
`The ‘486 Patent, Claim 1 is representative of the “single
`merchant” claim limitation.
`
`c) defining a payment category including
`at least limiting purchases to a single
`merchant for at least one transaction,
`said single merchant limitation being
`1.
`included in said payment category prior to
`any particular merchant being identified
`as said single merchant.
`
`IPR2014‐00544, the ‘486 patent, 8:61‐64.
`
`8
`
`
`
`The ‘988 Patent, Claim 21 includes a similar “single
`merchant” claim limitation.
`
`b) receiving a request from said account
`holder for a transaction code to make a
`purchase within a payment category that
`at least limits transactions to a single
`1.
`merchant, said single merchant limitation
`being included in said payment category
`prior to any particular merchant being
`identified as said single merchant.
`
`IPR2014‐00543, the ‘988 patent, 11:10‐16.
`
`9
`
`
`
`Construction of “said single merchant limitation being
`included in said payment category prior to any particular
`merchant being identified as said single merchant .”
`
`Means: “including the limit in the
`payment category that limits transactions
`to a single merchant before any specific
`1.
`merchant is identified as the single
`merchant.
`
`P.O. Response, IPR2014‐00544, at p. 17; Ex. 2007, ¶ 20.
`P.O. Response, IPR2014‐00543, at p. 22; Ex. 2007, ¶ 27.
`
`10
`
`
`
`The ‘486 Patent prosecution history.
`
`P.O. Response, IPR2014‐00544, at p. 16; Ex. 1002, p. 141.
`P.O. Response, IPR2014‐00543, at p. 22; Ex. 2007, p. 141.
`
`11
`
`
`
`Plain and ordinary meaning of “single” is “only one”
`
`P.O. Response, IPR2014‐00544, at p. 15; Ex. 2006, p. 6.
`P.O. Response, IPR2014‐00543 , at p. 20; Ex. 2006, p. 6.
`
`Plain and ordinary meaning of “merchant” is “someone
`who buys and sells goods”
`
`P.O. Response, IPR2014‐00544, at p. 15; Ex. 2006, p. 4.
`P.O. Response, IPR2014‐00543, at p. 20; Ex. 2006, p. 4.
`
`12
`
`
`
`Cohen’s “certain store” limit does not anticipate
`
`Cohen’s certain store limit cannot be
`created before identifying the certain
`store, because the nature of the limit
`1.
`itself requires identifying a specific store
`as the certain store so that the credit card
`company can create the limit and restrict
`purchases to only that identified store.
`
`P.O. Response, IPR2014‐00544, at p. 23; Ex. 2007, ¶ 38.
`P.O. Response, IPR2014‐00543, at p. 29; Ex. 2007, ¶ 45.
`
`13
`
`
`
`Cohen’s “group of stores” limit does not anticipate
`
`Limiting use of a credit card to groups of
`stores does not create a limit to only one
`1.
`merchant. The phrase “group of store”
`itself means more than one store.
`
`Further, creating a group of stores
`requires identifying specific stores that
`1.
`consist of and form the group.
`
`In order to limit a credit card’s use to a
`group of stores, that group must already
`1.
`exist otherwise it could not be identified
`to make the limit.
`
`P.O. Response, IPR2014‐00544, at p. 24; Ex. 2007, ¶ ¶ 32,33.
`P.O. Response, IPR2014‐00543, at p. 30; Ex. 2007, ¶ ¶ 39,40.
`
`14
`
`
`
`Cohen’s “chain of stores” limit does not anticipate
`
`Cohen’s particular chain of stores limit, by
`nature of the limitation itself, requires
`identify a specific chain of stores so that
`1.
`the credit card company can create the
`limit and restrict purchases to only that
`identified chain.
`
`Alternatively, if the limit could be made
`before identifying a particular merchant,
`such a limitation certainly would not be a
`1.
`limit to a single merchant because it
`would include all of the chain store
`locations.
`
`P.O. Response, IPR2014‐00544, at pp. 24, 25; Ex. 2007, ¶ ¶ 35,36.
`P.O. Response, IPR2014‐00543, at pp. 31, 32; Ex. 2007, ¶ ¶ 41,42.
`
`15
`
`
`
`Cohen’s “type of store” & “type of charge” limits do not
`anticipate
`
`Limiting a credit card’s use to a type of
`store or to a type of charge plainly does
`1.
`not create a limit to a single merchant.
`
`P.O. Response, IPR2014‐00544, at pp. 22,23; Ex. 2007, ¶ ¶ 31, 39, 40.
`P.O. Response, IPR2014‐00543, at pp. 28,29; Ex. 2007, ¶ ¶ 38, 46, 47.
`
`16
`
`
`
`CRU agrees and confirmed Cohen doesn’t anticipate
`
`P.O. Response, IPR2014‐00544, at p. 27; Ex. 2002, p. 6.
`P.O. Response, IPR2014‐00543, at p. 33; Ex. 1021, p. 6.
`
`17
`
`
`
`The ‘486 Patent claims require designating/selecting a
`payment category before generating the transaction code
`
`Each independent claim requires the
`designating or selecting step to be
`1.
`performed before the generating step.
`
`P.O. Response, IPR2014‐00544, at p. 29; Ex. 2007, ¶ 42.
`P.O. Response, IPR2014‐00543, at p. 41, Ex. 2007, ¶ 54.
`
`18
`
`
`
`The ‘486 Patent claims require designating/selecting a
`payment category before generating the transaction code
`
`Each independent claim requires the
`designating or selecting step to be
`1.
`performed before the generating step.
`
`Ex. 2007, ¶ 42
`
`P.O. Response, IPR2014‐00544, at p. 29; Ex. 2007, ¶ 42.
`P.O. Response, IPR2014‐00543, at p. 41, Ex. 2007, ¶ 54.
`
`19
`
`
`
`The ‘486 Patent Claim 1 is representative
`
`c) defining a payment category including
`at least limiting purchases to a single
`merchant…
`
`d) designating said payment category…
`1.
`e) generating a transaction code…said
`transaction code reflecting at least the
`limits of said designated payment
`category…
`
`IPR2014‐00544, Ex. 1001, 8:59‐9:5.
`
`20
`
`
`
`The ‘988 Patent claims also require designating/selecting a
`payment category before generating the transaction code
`and claim 1 is representative
`
`c) defining a payment category to include
`at least limiting a number of
`transactions…
`
`d) designating said payment category
`1.
`e) generating a transaction code…said
`transaction code reflecting at least the
`limits of said designated payment
`category…
`
`IPR2014‐00543, Ex. 1001, 8:57‐9:4.
`
`21
`
`
`
`CRU agrees and confirmed Cohen doesn’t anticipate
`
`IPR2014‐00543, Ex. 1001, 8:57‐9:4.
`
`P.O. Response, IPR2014‐00544, at p. 32; Ex. 2002, p. 5.
`P.O. Response, IPR2014‐00543, at p. 44; Ex. 1021, p. 5.
`
`22
`
`
`
`CRU agrees and confirmed Cohen doesn’t anticipate
`
`P.O. Response, IPR2014‐00544, at p. 32; Ex. 2002, p. 6.
`P.O. Response, IPR2014‐00543, at p. 44; Ex. 1021, p. 6.
`
`23
`
`
`
`The ‘988 Patent claims 1, 17, 19, and 22 require “said one or
`more merchants limitation being included in said payment
`category prior to any particular merchant being identified as
`one of said one or more merchants.”
`
`b) Defining at least one payment category
`to include at least limiting a number of
`transactions to one or more merchants,
`said one or more merchants being
`1.
`included in said payment category prior
`to any particular merchant being
`identified as one of said one or more
`merchants.
`
`IPR2014‐00543, Ex. 1001, 8:65‐9:4.
`
`24
`
`
`
`Cohen’s “certain store” limit does not anticipate
`
`Similarly, as discussed above with respect
`to claim 21, Cohen’s certain store
`(particular store) limit does not satisfy the
`disputed claim limitation because
`creating a limit to a certain store
`(particular store) cannot be done before a
`particular merchant is identified.
`1.
`Whereas, the disputed claim limitation
`requires a payment category that limits
`transactions to one or more merchants
`before any particular merchant is
`identified as one of the one or more
`merchants
`
`IPR2014‐00543, P.O. Response, pp. 37‐36; Ex. 2007, ¶ 53.
`
`25
`
`
`
`Cohen’s “group of stores” limit does not anticipate
`
`Similarly, as discussed above with respect
`to claim 21, Cohen’s group of store limit
`does not satisfy the disputed claim
`limitation because creating a limit to a
`group of stores cannot be done before
`any particular merchant is identified as
`one of the stores that form the group of
`1.
`stores. Whereas, the disputed claim
`limitation requires a payment category
`that limits transactions to one or more
`merchants before any particular
`merchant is identified as one of the one
`or more merchants
`
`IPR2014‐00543, P.O. Response, pp. 38‐39; Ex. 2007, ¶ 53.
`
`26
`
`
`
`Cohen’s “chain of stores” limit does not anticipate
`
`Similarly, as discussed above with respect
`to claim 21, Cohen’s group of store limit
`does not satisfy the disputed claim
`limitation because creating a limit to a
`particular chain of stores cannot be
`1.
`done before a particular merchant is
`identified. Identifying a chain of stores in
`order to create the limit to only that
`chain of stores is an identification of a
`particular merchant.
`
`IPR2014‐00543, P.O. Response, pp. 38; Ex. 2007, ¶ 53.
`
`27
`
`
`
`Mr. Gussin is a Qualified Expert
`
`IPR2014‐00543, P.O. Opposition to Motion to Exclude, p. 3.
`IPR2014‐00544, P.O. Opposition to Motion to Exclude, p. 3.
`
`28
`
`
`
`Mr. Gussin is a Qualified Expert
`
`“Opposing the motion, DeMonte argued that Mr.
`Bill was qualified because he ‘is a patent attorney
`with extensive experience in patent law and
`procedure,’ and that his testimony was admissible
`because courts may allow patent law experts to
`testify on ‘general procedures involved in the
`patent application process.”
`
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
`1361 (Fed. Cir. 2008).
`
`“Sundance argues that “[a]lthough DeMonte refers
`to Mr. Bliss as a technical expert, he has no
`technical experience in the field of truck[s] or tarps
`and practiced as an engineer for but a year and a
`half in unrelated areas.”
`
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
`1361 (Fed. Cir. 2008).
`
`29
`
`
`
`Mr. Gussin is a Qualified Expert
`
`“This case comes nowhere close to the unusual
`situation in Sundance, Inc. v. DeMonte Fabricating
`Ltd., 550 F.3d 1356 (Fed.Cir.2008). In Sundance this
`court held that a district court abused its discretion
`when it admitted the testimony of a patent law
`expert “[d]espite the absence of any suggestion
`of relevant technical expertise.” Id. at 1361–62.
`Here, as explained, Mr. Van Horn had sufficient
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
`relevant technical expertise for the district court to
`1361 (Fed. Cir. 2008).
`allow him to testify. This court detects no abuse of
`discretion.”
`
`SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360,
`1373 (2010).
`
`30
`
`
`
`“generating a transaction code”
`
`The ‘486 & ‘988 Patent specification
`explicitly describes “the transaction code
`1.
`is pre‐coded to be indicative of … a
`designated payment category.”
`
`P.O. Response, IPR2014‐00544, at p. 7.
`P.O. Response, IPR2014‐00543, at p. 8.
`
`Means: “creating or producing a code
`that is usable as a substitute for a credit
`card number in a purchase transaction,
`the transaction code is pre‐coded to be
`indicative of a customer account and a
`payment category, where the customer
`account is either a credit card account
`or a debit card account.”
`
`P.O. Response, IPR2014‐00544, at p. 8.
`P.O. Response, IPR2014‐00543, at p. 9.
`
`31
`
`
`
`“particular merchant”
`
`The word “particular” modifies the noun
`“merchant,” and the plain and ordinary
`1.
`meaning of the word “particular” is a
`specific identification so as not to refer to
`any other merchant.
`
`P.O. Response, IPR2014‐00544, at p. 11.
`P.O. Response, IPR2014‐00543, at p. 12.
`
`Means: “a specific merchant with whom a
`customer can engage in a purchase
`transaction.”
`
`P.O. Response, IPR2014‐00544, at p. 11.
`P.O. Response, IPR2014‐00543, at p. 12.
`
`32
`
`
`
`“defining at least one payment category”
`
`The specification describes “the payment
`category may include a single transaction
`defined by a single purchase having a
`maximum limit amount, wherein the
`specific or precise cost of the purchase
`1.
`has not been determined for a variety of
`reasons, and as such, the customer
`desires to set a maximum amount for
`which the single transaction may be
`made.”
`
`P.O. Response, IPR2014‐00544, at p. 10.
`P.O. Response, IPR2014‐00543, at p. 11.
`
`Means: “to specify or set the limits of a
`payment category that are applied to the
`transaction code.”
`
`P.O. Response, IPR2014‐00544, at p. 9.
`P.O. Response, IPR2014‐00543, at p. 10.
`
`33
`
`
`
`Plain and ordinary meaning of “defining”
`
`P.O. Response, IPR2014‐00544, at p. 9; Ex. 2006, p. 3.
`P.O. Response, IPR2014‐00543, at p. 10; Ex. 2006, p. 3.
`
`34
`
`
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