IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner
`
`––––––––––
`
`Case IPR2014-00544
`(Patent 7,840,486)
`
`Title: System and Method for Performing Secure Credit Card Transactions
`
`
`
`
`
`––––––––––
`
`PETITIONER MASTERCARD’S FILING OF
`DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D’AGOSTINO
`Patent Owner
`
`––––––––––
`
`Case IPR2014-00544
`(Patent 7,840,486)
`
`Title: System and Method for Performing Secure Credit Card Transactions
`
`
`
`
`
`––––––––––
`
`PETITIONER MASTERCARD’S FILING OF
`DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`
`
`Petitioner’s MasterCard’s Filing of Demonstrative Exhibits
`
`Petitioner MasterCard respectfully submits its demonstrative exhibits
`
`pursuant to 37 C.F.R. § 42.70(b) and the Court’s Trial Hearing Order dated April
`
`10, 2015.
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`BAKER BOTTS LLP
`/Robert C. Scheinfeld/
`Robert C. Scheinfeld
`Reg. No. 31,300
`30 Rockefeller Plaza, 44th Floor
`New York, New York 10112-4498
`Phone: (212) 408-2512
`Facsimile: (212) 408-2501
`robert.scheinfeld@bakerbotts.com
`
`ATTORNEYS FOR PETITIONER
`MASTERCARD INTERNATIONAL
`INCORPORATED
`
`May 8, 2015
`
`
`
`Eliot D. Williams
`Reg. No. 50,822
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7511
`Facsimile: (650) 739-7611
`eliot.williams@bakerbotts.com
`
`
`
`
`1
`
`
`
`IPR2014‐00543
`IPR2014‐00544
`
`MasterCard International Incorporated
`v.
`John D'Agostino
`
`U.S. Pat. 8,036,988
`U.S. Pat. 7,840,486
`
`Petitioner's Demonstratives
`
`Oral Argument
`May 12, 2015
`
`
`
`Table of Contents
`The Patents‐in‐Suit and Procedural History
`I.
`II. PTAB Decision
`III. PO’s “Expert Testimony” Should Be Given No
`Weight
`IV. Claim Construction and the claim terms at issue
`V. The Cohen Reference
`VI. All independent claims anticipated by Cohen
`VII. All dependent claims anticipated by Cohen, or
`obvious over Cohen and Musmanno
`
`2
`
`
`
`I.A. U.S. Pat. No. 8,036,988
`
`Title: System and method for
`performing secure credit card
`purchases
`
`Issuance: Oct. 22, 2011
`
`Priority Date: Jan. 15, 1999
`
`3
`
`
`
`I.B. U.S. Pat. No. 7,840,486
`
`Title: System and method for
`performing secure credit card
`purchases
`
`Issuance: Nov. 23, 2010
`
`Priority Date: Jan. 15, 1999
`
`4
`
`
`
`I.C. U.S. Pat. No. 8,036,988
`
`Prosecution History:
`
`In the Notice of Allowance for the ‘988 patent, the Examiner
`identified the uniquely patentable feature of:
`
`“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 limitation being included in said
`payment category prior to any particular merchant being
`identified as one of said one or more merchants”
`
`See IPR2014‐00543 Ex. 1002, p.52
`5
`
`
`
`I.D. U.S. Pat. No. 7,840,486
`
`Prosecution History:
`
`In the Notice of Allowance for the ‘486 patent, the Examiner
`identified the uniquely patentable feature of:
`
`“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”
`
`See IPR2014‐00544 Ex. 1002, p.51
`6
`
`
`
`I.E. Exemplary Claim 1 of the ’988 Patent
`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 at least one payment 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 as one of said one or
`more merchants;
`d) designating said payment category;
`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.
`
`7
`
`
`
`I.F. Exemplary Claim 1 of the ’486 Patent
`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 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.
`
`8
`
`
`
`II.A. Institution Decision for the ‘988 Patent
`
`1. Petitioner challenged the validity of all claims of the '988
`patent
`2. The Board found all claims of the '988 Patent likely to be
`invalid
`a) Claims 1‐10, 15‐25, 27‐33, 35‐38 (anticipated by Cohen)
`b) Claims 11‐16, 26, and 34 (obvious over Cohen and
`Musmanno)
`
`See IPR2014‐00543 Institution Decision, p.10‐19
`9
`
`
`
`II.B. Institution Decision for the ‘486 Patent
`
`1. Petitioner challenged the validity of all claims of the '486
`patent
`2. The Board found all claims of the '486 Patent likely to be
`invalid
`a) Claims 1‐15 and 22‐30 (anticipated by Cohen)
`b) Claims 16‐21 (obvious over Cohen and Musmanno)
`
`See IPR2014‐00544 Institution Decision, p.8‐17
`10
`
`
`
`II.C. PTAB’s Claim Constructions
`1. generating [a/said] transaction code – Board construed as
`“creating [or producing] a code [that is] usable as a
`substitute for a credit card number in a purchase
`transaction, the [transaction code is] pre‐coded to be
`indicative of a specific credit card account”
`2. defining at least one payment category – Board construed
`as “specifying the type of limitation (or limitations) that are
`available to be applied to a transaction code in order to limit
`its use”
`3. particular merchant – Board construed as “the merchant to
`whom the customer discloses the transaction code” or “the
`merchant with whom the customer is transacting”
`
`See IPR2014‐00543 Institution Decision, p.7‐8, 9.
`11
`
`
`
`II.C. PTAB’s Claim Constructions (not disputed)
`4. one or more merchants – Board construed as “one
`merchant up to a plurality of merchants, where the number
`of merchants is a finite number”
`5. a number of transactions – Board construed as “one or
`more transactions, where the number of transactions is
`limited to a finite number”
`
`See IPR2014‐00543 Institution Decision, p.8.
`12
`
`
`
`II.C. PTAB’s Claim Constructions
`6. 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 – Board
`construed as “any group, category, or type of merchant is
`included in the payment category prior to the customer
`selecting a particular merchant for a transaction.”
`a) wherein "'one or more merchants' allows for one or multiple
`merchants as any group, category, or type of merchant"
`"where 'particular merchant' is a subset of the 'one or more
`merchants limitation'"
`
`b)
`
`See IPR2014‐00543 Institution Decision, p.9‐10
`13
`
`
`
`7.
`
`II.C. PTAB’s Claim Constructions
`single merchant limitation being included in said payment
`category prior to any particular merchant being identified
`as a single merchant – Board construed as “any group,
`category, or type of merchant is included in the payment
`category prior to the customer selecting a particular
`merchant for a transaction”
`a) wherein "'single merchant' allows for only one merchant" (IPR2014‐
`00543 Institution Decision p. 10, but not the IPR2014‐00544 Institution Decision)
`"where 'particular merchant' is a subset of the … 'single merchant
`limitation'"
`
`b)
`
`See IPR2014‐00543 Institution Decision, p.9‐10
`14
`
`
`
`1.
`
`II.D. PTAB’s Institution Decision
`'988 Patent, Claim 1 (c): 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 limitation being included in
`said payment category prior to any particular merchant being identified
`as one of said one or more merchants
`a)
`"Cohen discloses that '[t]he card can also be customized for
`particular uses or groups of uses' and further discloses that the card
`can be valid for a particular type of charge, such as computer
`hardware or software stores, or a particular store or a particular
`chain of stores. Pet. 17 (citing Ex. 1004, 7:66–67, 8:25–46)."
`"Cohen discloses that the card can be valid for only a particular
`chain of restaurants or a type of store, such as a clothing store. Id."
`
`b)
`
`See IPR2014‐00543 Institution Decision, p.11‐12 (emphasis added)
`15
`
`
`
`2.
`
`II.D. PTAB’s Institution Decision
`'486 Patent, Claim 1 (c): 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
`a)
`"Cohen discloses that “[t]he card can also be customized for
`particular uses or groups of uses” and further discloses that the card
`can be valid for a particular type of charge, such as computer
`hardware or software stores, or a particular store or a particular
`chain of stores. Id. at 19 (citing Ex. 1004, 2:35–43, 7:66–67, 8:25–46,
`12:3–4)."
`"Cohen discloses that the card can be valid for only a particular chain
`of restaurants or a type of store, such as a clothing store. Id."
`
`b)
`
`See IPR2014‐00544 Institution Decision, p.10 (emphasis added)
`16
`
`
`
`3.
`
`II.D. PTAB’s Institution Decision
`'988 Patent: "Patent Owner argues that the Petition impermissibly
`combines separate, distinct embodiments of Cohen to satisfy
`independent claim 21."
`a)
`"We are not persuaded by this argument."
`b)
`"Cohen discloses a single‐use credit card and Cohen further discloses
`that the credit card can be customized with other limits, including
`limiting use to a certain store or single merchant. Pet. 27 (citing Ex.
`1004, 8:42–46). The Petition relies on Cohen’s disclosure of a
`'certain store' to describe a 'single merchant.' See id."
`Patent Owner fails to specify "impermissible reliance on the
`combination" of elements.
`Same finding for the '486 Patent.
`
`d)
`
`c)
`
`See IPR2014‐00543 Institution Decision, p.12‐13 (emphasis added);
`See IPR2014‐00544 Institution Decision, p.11 (for corresponding finding for the '486 Patent)
`17
`
`
`
`4.
`
`II.D. PTAB’s Institution Decision
`'988 Patent: "Patent Owner argues that Cohen fails to disclose limiting
`transactions to a single merchant" as recited in claim 21, and that
`"Cohen’s single‐use credit card cannot be used for transactions with a
`single merchant because it is deactivated after its first use, and,
`therefore, is not being used for a plurality of transactions." But:
`a)
`"Cohen discloses that the card can be valid for purchase on a
`particular day or for up to a designated purchase limit. Ex. 1004,
`8:42–46. Although Cohen discloses a single‐use credit card, Cohen
`further discloses a card that can be used at a certain store for a set
`amount or for a set time period. Accordingly, we are not persuaded
`by Patent Owner’s argument."
`Same finding for the '486 Patent.
`
`b)
`
`See IPR2014‐00543 Institution Decision, p.13‐14 (emphasis added);
`See IPR2014‐00544 Institution Decision, p. 12 (for corresponding finding for '486 Patent)
`18
`
`
`
`5.
`
`II.D. PTAB’s Institution Decision
`'988 Patent: "Patent Owner argues that Cohen fails to disclose
`'designating/selecting a payment category that places limitations on a
`transaction code before the transaction code is generated,' as recited in
`claims 1 and 17 and [similarly] 19, 21, and 22. Patent Owner specifically
`argues that Cohen describes customizing the use of a card after the
`number is generated." But:
`a)
`"Cohen discloses that “a user dials into her credit card company
`before making a transaction, and . . . is provided with a disposable or
`customized number.” Ex. 1004, 3:42–49. Cohen further discloses that
`“a user can indicate in advance of purchase, on the telephone call
`with the credit card company, what the single use or the customized
`credit card number is to be used for.” Id. at 3:50–53."
`Same finding for the '486 Patent.
`
`b)
`
`See IPR2014‐00543 Institution Decision, p.14 (emphasis added);
`See IPR2014‐00544 Institution Decision, p. 12‐13 (for corresponding finding for '486 Patent)
`19
`
`
`
`6.
`
`II.D. PTAB’s Institution Decision
`'988 Patent: "Patent Owner further argues [that] 'limiting use to a
`particular chain certainly requires identification of a particular chain
`before the limit can be made.' " But:
`a)
`"Cohen discloses the card can be customized for use in a particular
`store or in a chain of stores, such as a particular restaurant or a
`particular chain of restaurants. Pet. at 17 (citing Ex. 1004, 7:66–67,
`8:25–46); Prelim. Resp. 27–28. Although customizing the card such
`that it is used at a type of store or a chain of stores requires
`identification of the type or chain of stores, it does not require
`identification of the particular store. Rather, it designates one or
`more merchants for which the card can be used, and the user
`subsequently identifies a particular merchant."
`
`See IPR2014‐00543 Institution Decision, p.15 (emphasis added)
`20
`
`
`
`III. Patent Owner's Expert Testimony
`Should be Given No Weight
`
`2.
`
`A. The Law:
`1. Under Rule 702, an expert needs to be qualified by "knowledge, skill,
`experience, training, or education…in the pertinent art." See
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361‐62
`(Fed. Cir. 2008);
`The Sundance court found that the testimony of the proffered expert
`(a patent attorney/mechanical engineer with technical experience
`not in the admitted field of the invention) was inadmissible:
`(a) Proffered expert was not qualified in the pertinent art because his technical
`expertise was not sufficiently related to the specific mechanical field of the
`claimed invention, i.e., “the field of tarps or covers;" Id.
`(b) "Admitting testimony from a person [] with no skill in the pertinent art, serves
`only to cause mischief and confuse the factfinder." Id.
`
`See IPR2014‐00543 MasterCard's Reply for Motion to Exclude, p.2;
`See IPR2014‐00544 MasterCard's Reply for Motion to Exclude, p.2.
`21
`
`
`
`III. Patent Owner's Expert Testimony
`Should be Given No Weight
`
`3. In SEB, the Federal Circuit reiterated the importance of tying the expert's
`experience to the pertinent field:
`(a) admitted the testimony of the expert because he explained that the
`claimed invention “involves the selection of particular polymer material that have
`certain characteristics" and that "most of the areas he has worked in have used
`polymers in one form or another.” SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d
`1360, 1373 (Fed. Cir. 2010)(internal quotations omitted);
`(b) expert's testimony tied to claim construction ("importance of selecting a
`material…resistant to the hot pan" tied to claimed "reference to thermal bridges"), id.;
`and
`
`(c) expert's testimony "established an adequate relationship between his
`experience and the claimed invention." Id.
`
`See IPR2014‐00543 MasterCard's Reply for Motion to Exclude, p.2‐3;
`See IPR2014‐00544 MasterCard's Reply for Motion to Exclude, p.2‐3.
`22
`
`
`
`III. Patent Owner's Expert Testimony
`Should be Given No Weight
`
`B.
`
`Here, Patent Owner's expert, Mr. Gussin, only has general experience in the field
`of “computer hardware and software technology”;
`Patent Owner admits that the ‘988 Patent is in the field of “secure credit card
`purchases” and does not dispute that Mr. Gussin has no expertise in secure
`credit card purchases;
`D. Mr. Gussin has failed to establish a relationship between his experience and the
`claimed invention (or any claim term or construction, such as transaction codes,
`payment categories, or even merchant exchange or interaction);
`E. Mr. Gussin is not qualified as an expert "by knowledge, skill, experience, training,
`or education… in the pertinent art." See, e.g., Sundance;
`As a result, Patent Owner's expert testimony should be given no weight.
`
`C.
`
`F.
`
`See IPR2014‐00543 MasterCard's Reply for Motion to Exclude, p.2‐4;
`See IPR2014‐00544 MasterCard's Reply for Motion to Exclude, p.2‐4.
`23
`
`
`
`1.
`2.
`3.
`4.
`
`5.
`
`IV.A. Claim Constructions – Terms at Issue
`"generating [a/said] transaction code"
`"defining at least one payment category"
`"particular merchant"
`"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"
`"single merchant limitation being included in said payment
`category prior to any particular merchant being identified as
`a single merchant"
`
`24
`
`
`
`IV.B. Claim Constructions
`1. generating [a/said] transaction code – Board construed as
`“creating [or producing] a code [that is] usable as a
`substitute for a credit card number in a purchase
`transaction, the [transaction code is] pre‐coded to be
`indicative of a specific credit card account”
`a) Patent Owner argues that this term requires the “transaction code”
`be “indicative” of not just “a specific credit card account” but also “a
`payment category”
`•
`Patent Owner argues that the Board's construction excludes a preferred
`embodiment; the Board's construction, however, actually includes the
`embodiment where the transaction code is indicative of a payment
`category – the embodiment is not excluded.
`b) The Board correctly determined that this may be a preferred
`embodiment but it is not a requirement of the claims. IPR2014‐00543
`Institution Decision at 7.
`
`25
`
`
`
`IV.B. Claim Constructions
`1. generating [a/said] transaction code
`c)
`Claim differentiation disfavors adopting Patent Owner’s construction
`• Dependent claim 5 in the '988 Patent reads "the method of claim 1
`further comprising generating a transaction code which reflects at least
`one of a plurality of said payment categories";
`Claim 5 would be superfluous if Patent Owner’s construction were
`adopted.
`d) Patent Owner’s argument that the term should also be broadened to
`cover either a “credit card account or a debit card account” is
`meritless.
`
`•
`
`See IPR2014‐00543 MasterCard's Reply, p.2; IPR2014‐00544 MasterCard's Reply, p.2.
`26
`
`
`
`IV.B. Claim Constructions
`2. defining at least one payment category – Board construed
`as “specifying the type of limitation (or limitations) that are
`available to be applied to a transaction code in order to limit
`its use”
`a) Patent Owner argues that this means "specifying the actual limit (or
`limits) of a payment category that are applied to a transaction code
`in order to limit its use." IPR2014‐00543 Patent Owner's Response, p.
`11‐12.
`b) Patent Owner’s construction of “specifying the limit of a payment
`category” fails to meet the broadest reasonable interpretation
`standard.
`c) Nothing in the claim/specification requires the inclusion of a limit to
`the payment category – e.g., the actual value of the maximum
`purchase amount (e.g., $100.00).
`
`See IPR2014‐00543 MasterCard's Reply, p.3; IPR2014‐00544 MasterCard's Reply, p.3.
`27
`
`
`
`IV.B. Claim Constructions
`2. defining at least one payment category
`d) Claim differentiation disfavors adopting Patent Owner’s construction
`• Dependent claim 38 in the '988 Patent reads "The method of claim 22
`wherein the step of 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 one or more merchants further comprises
`receiving a request from said account holder for a transaction code to
`make a purchase within a predetermined payment category that is further
`limited in accordance with transaction details provided by said account
`holder.
`• Claim 38 would be meaningless if Patent Owner’s construction were
`adopted for the "payment category" in claim 1 – the payment category
`does not need to include limits (those limits can be applied later).
`
`See IPR2014‐00543 MasterCard's Reply, p.3.
`28
`
`
`
`IV.B. Claim Constructions
`3. particular merchant – Board construed as “the merchant to
`whom the customer discloses the transaction code” or “the
`merchant with whom the customer is transacting”
`a) Patent Owner argues the “particular merchant” is merely one with
`whom a customer is able to engage in “a” purchase transaction (i.e.,
`could be any merchant) – not necessarily "the" merchant with whom
`the customer is transacting.
`In the context of the claim, the "particular merchant" must mean
`"the" merchant with whom the customer is transacting – not just
`any merchant with whom the customer could transact.
`
`b)
`
`Note: Patent Owner makes this argument purportedly to distinguish over Cohen, which it argues
`must use MCC codes that identify merchants at the same time or before (but not after) defining
`at least one payment category. IPR2014‐00543 Patent Owner's Response, p.12‐14.
`
`See IPR2014‐00543 MasterCard's Reply, p.3‐4; IPR2014‐00544 MasterCard's Reply, p.3‐4.
`29
`
`
`
`IV.B. Claim Constructions
`3. particular merchant
`d) During prosecution of the parent '486 patent, Patent Owner
`distinguished the prior art for failing to tie the transaction to the
`code, contending that the prior art is “not directed towards
`generating a temporary account number on a transactional basis.”
`See IPR2014‐00543 Ex. 1013 p. 187.
`e) Now Patent Owner is arguing the exact opposite, that the particular
`merchant does not need to be tied to the transaction – so that the
`claimed invention is "not directed towards generating a temporary
`account number on a transactional basis." IPR2014‐00543 Patent
`Owner's Response, p.12‐14.
`
`See IPR2014‐00543 MasterCard's Reply, p.3‐4; IPR2014‐00544 MasterCard's Reply, p.3‐4.
`30
`
`
`
`IV.B. Claim Constructions
`4. 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 – Board
`construed as “any group, category, or type of merchant is
`included in the payment category prior to the customer
`selecting a particular merchant for a transaction.”
`a)
`The Board correctly construed this term under the broadest
`reasonable interpretation. IPR2014‐00543 Institution Decision at 9.
`b) The Board qualified that the “one or more merchants” allows for one
`or multiple merchants as any group, category, or type of merchant.
`IPR2014‐00543 Institution Decision at 9‐10.
`
`See IPR2014‐00543 MasterCard's Reply, p.5.
`31
`
`
`
`5.
`
`IV.B. Claim Constructions
`single merchant limitation being included in said payment
`category prior to any particular merchant being identified
`as a single merchant – Board construed as “any group,
`category, or type of merchant is included in the payment
`category prior to the customer selecting a particular
`merchant for a transaction”
`a)
`The Board qualified this by saying that the “single merchant” allows
`for only one merchant. IPR2014‐00543 Institution Decision at 9‐10.
`
`32
`
`
`
`5.
`
`IV.B. Claim Constructions
`single merchant limitation being included in said payment
`category prior to any particular merchant being identified
`as a single merchant
`b) Understanding the Board's reasoning that “single merchant” allows
`for "only one merchant" then:
`
`single merchant limitation being included in said payment category
`prior to any particular merchant being identified as a single merchant
`must mean “only one merchant is included in the payment category
`prior to the customer selecting a particular merchant for a
`transaction”
`
`See IPR2014‐00543 MasterCard's Reply, p.5; IPR2014‐00544 MasterCard's Reply, p.4‐5.
`33
`
`
`
`V. U.S. Pat. No. 6,422,462 (Cohen)
`
`Issuance: Jul. 23, 2002
`
`Priority Date: Mar. 30, 1998
`
`Board found:
`– '988 Patent: Claims 1‐10, 15‐25,
`27‐33, 35‐38 (anticipated by
`Cohen)
`– '486 Patent: Claims 1‐15 and 22‐30
`(anticipated by Cohen)
`
`34
`
`
`
`V. U.S. Pat. No. 6,422,462 (Cohen)
`Patent Owner argues Cohen fails to disclose the following
`limitations:
`A.
`"one or more merchant" limitation
`B.
`"single merchant" limitation
`C.
`“a payment category that at least limits transactions to
`one or more merchants"
`D. “a payment category that at least limits transactions to a
`single merchant”
`"prior to any particular merchant being identified"
`E.
`F. designating a payment category (e.g., claim 1, clause c)
`before generating the transaction code (e.g., clause d).
`
`See IPR2014‐00543 Patent Owner Response, p.23‐45; IPR2014‐00544 Patent Owner Response, p.17‐33.
`
`35
`
`
`
`2.
`
`VI.A. Cohen Discloses "One or More Merchant"
`"One or more merchant" limitation:
`1.
`"A customized credit card could be issued to the user which is only
`valid for use for that particular type of charge (computer hardware
`and software stores)." Cohen at 8:26‐28.
`"The card could even [be] customized for use in a particular store
`itself or a particular chain of stores (such as a particular restaurant,
`or a particular chain of restaurants)." Cohen at 8:32‐35 (emphasis
`added).
`"The card could be valid only for purchase on that particular day, to a
`certain designated purchase limit, and even, if desired only in a
`certain store, or group of stores or types of stores (e.g. clothing
`stores), or types of purchases or items." Cohen at 8:43‐47 (emphasis
`added).
`
`3.
`
`See IPR2014‐00543 MasterCard's Petition, p.17.
`36
`
`
`
`VI.B. Cohen Discloses "Single Merchant"
`"Single merchant" limitation:
`"The card could even [be] customized for use in a particular store
`1.
`itself … Any of the features in the present application can also be
`combined — thus, the employee could be given a card for use in any
`computer store which is good for a total purchase of up to, for
`example, $2000 in value." Cohen at 8:32‐39 (emphasis added).
`"The card could be valid only for purchase on that particular day, to a
`certain designated purchase limit, and even, if desired only in a
`certain store, ..." Cohen at 8:43‐47 (emphasis added).
`"These credit cards or credit card numbers are generated for a one
`time, single transaction basis, after which they are disposed of, or
`thrown away. The numbers can be used by a user…to effect a single
`transaction. After a one time use of the credit card number, the
`number is deactivated by the issuing credit card company such that it
`is no longer available for use." Cohen at 2:35‐43 (emphasis added).
`
`2.
`
`3.
`
`See IPR2014‐00543 MasterCard's Petition, p.27‐28; IPR2014‐00544 MasterCard's Petition, p.19.
`37
`
`
`
`VI.C. Cohen Discloses “A Payment Category That at
`Least Limits Transactions to One or More Merchants”
`1.
`Patent Owner argues that Cohen’s merchant limitation cannot satisfy the
`claim term “a payment category that at least limits transactions to one
`or more merchants” because a merchant limitation “does not create a
`limit to a reasonable, finite number of merchants.”
`a) Applicable to '988 Patent, claims 1‐10, 15‐20, 22, 31‐38
`2. Using the clothing store example, Patent Owner argues that a limitation
`to clothing stores is “not a numerical limit that is finite "
`a) Patent Owner's argument implies that there is an infinite number of
`clothing stores in the world
`b) Patent Owner’s only evidence that there are an infinite number of
`clothing stores is the testimony of Mr. Gussin, who is not a person
`skilled in the art, and whose conclusory “opinion” is entitled to no or
`little weight
`
`See IPR2014‐00543 MasterCard's Reply, p.9‐10.
`38
`
`
`
`VI.C. Cohen Discloses “A Payment Category That at
`Least Limits Transactions to One or More Merchants”
`3.
`A 2012 government survey reported approximately 1 Million retailers in
`the United States. IPR2014‐00543 Ex.1024, p.7. Even if all those were
`clothing retailers, there would still be a finite number of clothing
`retailers
`a)
`The claims do not require that it be easy to count the number of
`possible stores at which the transaction number could be used, but
`only that there be some finite limit.
`b) There is no question that the number of clothing retailers has a finite
`limit.
`
`See IPR2014‐00543 MasterCard's Reply, p.9‐10.
`39
`
`
`
`VI.D. Cohen Discloses “A Payment Category That at
`Least Limits Transactions to a Single Merchant”
`1. Patent Owner argues that Cohen’s disclosure of single‐use
`cards does “not meet the disputed claim limitation because
`a single‐use card cannot be used to make multiple
`transactions”
`a) Applicable to '988 Patent, claims 21 and 23‐30
`b) Applicable to '486 Patent, claims 1‐15 and 22‐30
`2. However, the claim does not require multiple transactions
`with a single merchant
`a)
`The claim specifies that the "account holder" requests "a transaction
`code to make a purchase…"
`b) Thus, under the broadest reasonable interpretation standard, the
`claim encompasses conducting only one transaction with a single
`merchant.
`See IPR2014‐00543 MasterCard's Reply, p.5‐6; IPR2014‐00544 MasterCard's Reply, p.5‐6.
`40
`
`
`
`VI.D. Cohen Discloses “A Payment Category That at
`Least Limits Transactions to a Single Merchant”
`3. Even if (as Patent Owner contends) the claim requires
`multiple transactions with a single merchant, Cohen
`discloses this feature
`"The card could be valid only for purchases on that particular day, to
`a)
`a certain designated purchase limit, and even, if desired only in a
`certain store, or group of stores or types of stores (e.g. clothing
`stores...)" Cohen at 8:43‐47 (emphasis supplied).
`"[A] card [could be used] in any computer store which is good for a
`total purchase of up to, for example, $2000 in value." Cohen at
`8:37‐39 (emphasis supplied). This embodiment alone discloses the
`use of a payment category comprising an unidentified “computer
`store” or “single merchant” allowing for multiple use or transactions,
`over any time period, up to a certain value.
`
`b)
`
`See IPR2014‐00543 MasterCard's Reply, p.6‐8; IPR2014‐00544 MasterCard's Reply, p.6‐8.
`
`41
`
`
`
`VI.E. Cohen Discloses “prior to any particular merchant
`being identified”
`1. Patent Owner argues that Cohen does not satisfy the claims’
`limits to a "single merchant" or designation of a payment
`category "prior to any particular merchant being identified"
`a) Cohen discloses “single use” cards generated for “a one time” basis,
`limiting use to a single merchant “before the particular merchant is
`identified.” See Cohen at 2:14‐15, 35‐41, 55‐56; IPR2014‐00544
`Grimes Dec., Ex. 1008, ¶ 41.
`b) Cohen discloses limited use credit cards that “could be valid only for
`purchase...only in a certain store, or group of stores or type of stores
`(e.g., clothing stores)...” Cohen at 8:44‐46.
`c) Alternatively, the card could be used “in any computer store.”
`Cohen at 8:37‐39 (emphasis added).
`
`See IPR2014‐00543 MasterCard's Reply, p.8‐9; IPR2014‐00544 MasterCard's Reply, p.8‐9.
`42
`
`
`
`VI.E. Cohen Discloses “prior to any particular merchant
`being identified”
`
`d) These embodiments disclose a payment category limited to a single
`merchant (e.g., a certain store, type of store, clothing store or
`computer store), where the store is not identified until the card is
`later used at the store. Cohen at 2:65‐3:2 (“Although reference is
`occasionally made to either the disposable credit card embodiment
`or the customized credit card embodiment herein, the features
`disclosed in association with one can likewise be applied to the
`other, as well.”); Cohen at 8:35‐36 (“Any of the features in the
`present invention can also be
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