`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`D’AGOSTINO, JOHN
`Patent Owner
`
`________________
`
`
`Case IPR2014-00544
`Patent 7,840,486
`
`________________
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
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` 
`
`

`

`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
`
`Introduction ................................................................................................................ 1
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .............................................................................................. iv
`
`LIST OF EXHIBITS .......................................................................................................... vi
`
`1.
`
`2. Overview of the ‘486 Patent ....................................................................................... 3
`
`3. Claim Construction ..................................................................................................... 4
`
`4.
`
`The Petition Fails to Establish Unpatentability of the ‘486 Patent ............................ 6
`
`A. Flitcroft does not have a prior art date as of the filing dates of the
`provisional applications to which it claims priority. ............................................ 6
`
`
`(1) Flitcroft’s disclosure of limiting to a specific merchant as determined
`by a first use is not supported by any of the Flitcroft provisional
`applications. ................................................................................................. 8
`
`
`
`
`
`(2) The Flitcroft provisional applications do not support Flitcroft’s
`independent claims 1, 3, 5, 7, and 19. ....................................................... 11
`
`
`(3) MasterCard and its expert Grimes fail to demonstrate that Flitcroft is
`available as prior art under 102(e) against the ‘486 patent. ...................... 15
`
`
`B. MasterCard is not entitled to the relief sought on the basis of Cohen. ............... 17
`
`
` (1) Cohen does not disclose a material limitation of each independent
`claim of the ‘486. ....................................................................................... 18
`
`
`
`
`
`
`
`(a) The petition impermissibly combines separate, distinct
`embodiments of Cohen in an attempt to satisfy all of the
`independent claims. ............................................................................. 18
`
`(b) Cohen does not disclose limiting transactions to a single
`merchant before identifying any particular merchant as the single
`merchant. ............................................................................................. 20
`
`(c) Cohen does not disclose designating/selecting a payment
`category that places limitations on a transaction code before the
`transaction code is generated for use to make purchases. ................... 23
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`
` (2) The petition does not identify the differences between the prior art
`and the claims or articulate a rationale for why a person of ordinary
`skill in the art would have modified the prior art to meet the claims. ....... 26
`
`
` (3) The terminal disclaimer filed during examination of the ‘988 patent
`was not an admission that the ‘486 patent claims are patentably
`indistinct from the claims of the ‘988 patent. ........................................... 30
`
`
`
`5. Conclusion ................................................................................................................ 31
`
`
`
`
`
`
`
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`iii
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`In re Translogic Technology, Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). ......................................................................... 4
`
`
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) ............................................................................ passim
`
`
`Ex parte Park et al.,
`
`2013 WL 5467089 at *3 (BPAI Sep. 23, 2013). ........................................................... 8
`
`Ex parte Hallowell et al.,
`
`2012 WL 3720902 (BPAI Aug. 26, 2012). ................................................................... 8
`
`Ex parte Bernoth,
`
` 2012 WL 3720797 (BPAI Aug. 27, 2012). .................................................................. 8
`
`Quad Environmental Technologies Corp. v. Union Sanitary Dist.,
`
`946 F.2d 870 (Fed. Cir. 1991) ..................................................................................... 31
`
`Net Moneyln, Inc. v. Verisgin, Inc.,
`
`545 F.3d 1359, 1369 (Fed. Cir. 2008). ........................................................................ 19
`
`Ex parte Cucerzan,
` No. 2010-002640 (BPAI 2011). ........................................................................... passim
`
`Graham v. John Deere Co.,
`
`383 U.S. 1 (1966) .............................................................................................. 27
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................... 27, 29
`
`
`K/S Himpp v. Hear-Wear Tech., LLC,
`751 F.3d 1362, 1366 (Fed. Cir. 2014). .................................................................. 30
`
`
`
`Statutes
`
`35 U.S.C. § 102 .......................................................................................................... passim
`
`35 U.S.C. § 103 .......................................................................................................... passim
`
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
`
`35 U.S.C. § 314 ............................................................................................................. 1, 6
`
`35 U.S.C. § 316(e) .............................................................................................................. 7
`
`Rules
`
`37 C.F.R. § 42.100(b) .......................................................................................................... 4
`
`37 C.F.R. § 42.108(c) ......................................................................................................... 6
`
`37 C.F.R. § 42.104(b)(4) .................................................................................. 18, 27
`
`Other Authorities
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). ............................................................ 4, 6
`
`
`MPEP § 2131 ........................................................................................................... 19
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
`
`LIST OF EXHIBITS RELIED ON FOR
`THIS PRELIMINARY RESPONSE
`
`Exhibit 2001 – File History for U.S. Patent No. 6,636,833 (Flitcroft)
`
`
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
`
`1. Introduction
`
`
`
`Patent Owner, D’Agostino, respectfully requests that the Board deny the
`
`petition for inter partes review of claims 1-30 of U.S. Patent No. 7,840,486 (“the
`
`‘486 patent”) because Petitioner, MasterCard International Incorporated, has failed
`
`to show that it has a reasonable likelihood of prevailing with respect to any of the
`
`challenged claims.1
`
`
`
`MasterCard has proposed six grounds challenging the ‘486 patent based on
`
`anticipation and obviousness. Grounds 3, 4, and 6 challenge all of the claims under
`
`35 U.S.C. §§ 102(e) and 103(a) using Flitcroft2 as the primary reference. And
`
`grounds 1, 2, and 5 challenge all of the claims under §§ 102(e) and 103(a) using
`
`Cohen3 as the primary reference.
`
`
`
`Proposed grounds 3, 4, and 6 of the petition must be denied for at least this
`
`reason:
`
`• Flitcroft is not available as prior art against the ‘486 patent because
`
`none of the provisional applications support Flitcroft – without this
`
`support Flitcroft’s prior art date is after the effective filing date of the
`
`‘486 patent.
`
`                                                            
`1 35 U.S.C. § 314.
`
` Ex. 1005, U.S. Patent No. 6,636,833.
`
` Ex. 1004, U.S. Patent No. 6,422,462. 
`
`  1
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` 
`
` 2
`
` 3
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`
`
`
`Proposed grounds 1, 2, and 5 of the petition should be denied, beyond their
`
`redundancy of grounds 3, 4, and 6, for at least these reasons:
`
`• MasterCard impermissibly combines the disclosures of separate, distinct
`
`embodiments of Cohen to demonstrate that Cohen allegedly anticipates
`
`all of the independent claims.
`
`• Cohen does not disclose limiting a transaction code for use with a single
`
`merchant before identifying any particular merchant as the single
`
`merchant, which is a requirement of all the independent claims of the
`
`‘486 patent.
`
`• Cohen does not disclose defining limits on a transaction code before the
`
`transaction code is produced for use by a customer, which is a
`
`requirement of all the independent claims of the ‘486 patent.
`
`• The petition inadequately states a claim for relief on all obviousness
`
`grounds, because it presents an incomplete and conclusory analysis that
`
`fails to identify the differences between the prior art and the claims, and
`
`fails to articulate a rationale for why a person of ordinary skill in the art
`
`would have modified the prior art to meet the claims.
`
`
`
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`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`
`2. Overview of the ‘486 Patent
`
`
`
`The ‘486 patent is directed toward a method of performing secure credit
`
`card purchases.4 The method provides a customer with a custom-use transaction
`
`code that is used in substitution for the customer’s credit card number to make a
`
`purchase.5 A customer, desiring a transaction code to make a secure credit card
`
`purchase, contacts a custodial authorizing entity for authorization as an account
`
`user.6 After the customer is verified as an authorized account user, details of the
`
`anticipated transaction are established to determine a payment category and then
`
`the transaction code is issued to the customer.7 Once issued, the customer can use
`
`the transaction code to consummate a transaction within the defined parameters of
`
`the payment category.8
`
`
`
`The payment category can include limiting the transaction code to one or a
`
`plurality of merchants.9 And the one or plurality of merchants may not be
`
`identified before the transaction code is generated.10
`
`                                                            
`4 Ex. 1001, the ‘486 patent, Abstract.
`
` Id. at 6:28-30.
`
` Id. at 7:30-43.
`
` Id. at 7:43-46.
`
` Id. at 7:46-55.
`
` Id. at 8:18-20.
`
`  3
`
` 
`
` 5
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` 6
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` 7
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` 8
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` 9
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`3. Claim Construction
`
`
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable construction in light of the specification of
`
`the patent in which they appear.11 And claim terms are given their ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the art in
`
`the context of the entire disclosure.12 For the purpose of this review, D’Agostino
`
`proposes the following claim constructions:
`
`• “generating [a/said] transaction code”
`
`The ‘486 patent explains that the transaction code is used in substitution for
`
`
`
`
`a credit card number for performing secure credit card purchases.13 The
`
`transaction code is indicative of a customer account and a payment category.14 The
`
`transaction code is generated after identifying a customer account and designating
`
`or selecting a payment category.15 Then the transaction code is communicated to
`
`                                                                                                                                                                                 
`10 Id. at 8:20-23.
`
`11 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766
`(Aug. 14, 2012).
`
`12 In re Translogic Technology, Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). 
`
`13 Ex. 1001, Abstract.
`
`14 Id. at 3:40-55; 6:24-38; Figure 1.
`
`15 Id.
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`the customer for use.16 Thus, for review purposes, “generating [a/said] transaction
`
`code” means “producing a code that is usable in substitution for a credit card
`
`number in a purchase transaction, the code being indicative of a customer account
`
`and a payment category.”
`
`•
`
` “said single merchant limitation being included in said payment category
`prior to any particular merchant being identified as said single
`merchant”
`
`The ‘486 patent explains a payment category may include limiting
`
`
`
`purchases to one or a plurality of different merchants that are unidentified when
`
`the transaction code is generated.17 Thus for review purposes, “said single
`
`merchant limitation being included in said payment category prior to any
`
`particular merchant being identified as said single merchant” means “including a
`
`limit in a payment category that limits transactions to a single merchant before any
`
`particular merchant is identified as said single merchant.”
`
`
`
`Concerning Petitioner’s remaining proposed constructions, for the purpose
`
`of this preliminary response, Patent Owner does not submit claim constructions
`
`because the petition for inter partes review must be denied even under Petitioner’s
`
`own constructions. However, nothing in this preliminary response should be
`
`interpreted as an agreement with the constructions proposed by Petitioner. Patent
`
`                                                            
`16 Id.
` 
`17 Ex. 1001, 8:18-24; Figure 1.
` 
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`Owner reserves the opportunity to submit accurate claim constructions in the event
`
`that inter partes review of the ‘486 patent is instituted.
`
`
`4. The Petition Fails to Establish Unpatentability of the ‘486 Patent
`
`The Board may only grant a petition for inter partes review where “the
`
`
`
`
`information presented in the petition…shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims challenged
`
`in the petition.”18 MasterCard bears the burden of showing that this statutory
`
`threshold has been met, as explained by the Office Patent Trial Practice Guide:
`
`“The Board… may institute a trial where the petitioner establishes that the
`
`standards for instituting the requested trial are met….”19 If inter partes review is
`
`granted, MasterCard also bears the burden of proving unpatentability of the ‘486
`
`patent by a preponderance of the evidence.20
`
`
`
`
`A. Flitcroft does not have a prior art date as of the filing dates of the
`provisional applications to which it claims priority.
`
`Flitcroft claims benefit to U.S. Provisional Application No. 60/099,614,
`
`
`
`filed September 9, 1998, Ex. 1017; U.S. Provisional Application No. 60/098,175,
`
`                                                            
`18 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c).
`
`19 See Office Patent Trial Practice Guide, 77 Fed. Reg. 48.756 (Aug. 14, 2012).
`
`20 35 U.S.C. § 316(e).
` 
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`filed August 26, 1998, Ex. 1018; and U.S. Provisional Patent Application No.
`
`60/092,500, filed July 13, 1998, Ex. 1019 (collectively “the Flitcroft provisional
`
`applications”).
`
`
`
`MasterCard contends that Flitcroft is prior art against the ‘486 patent under
`
`35 U.S.C. §102(e) as of the filing dates of the Flitcroft provisional patent
`
`applications. Citing In re Giacomini,21 MasterCard maintains that Flitcroft is prior
`
`art as of its effective filing date because purportedly the subject matter relied upon
`
`in Flitcroft is carried forward from the Flitcroft provisional applications and the
`
`carried-forward subject matter supports the invention claimed by the ‘486 patent.22
`
`
`
`In Giacomini, the Court concluded that “an applicant is not entitled to a
`
`patent if another’s patent discloses the same invention, which was carried forward
`
`from an earlier U.S. provisional application….”23 But the Court explained the
`
`filing date of the provisional application can only be used if the provisional
`
`application supports the invention claimed by the patent being relied on: “An
`
`important limitation is that the provisional application must provide written
`
`description support for the claimed invention.” 24 The Board of Patent Appeals and
`
`                                                            
`21 In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).
`
`22 Pet. at 37, fn. 5.
`
`23 In re Giacomini at 1383.
`
`24 Id.
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
`
`Interferences (BPAI), following Giacomini, held that the provisional application
`
`must support the patent being relied on to have an effective prior art date as of the
`
`provisional filing date:
`
`The U.S. Patent and Trademark Office may rely on the effective
`filing date of a patent (or published application) claiming benefit of a
`provisional application filing date, unless an applicant demonstrates
`that the provisional fails to support the patent (published application)
`in accordance with 35 U.S.C. § 112, first paragraph.25
`
`
`
`
`
`Because D’Agostino demonstrates below that the Flitcroft provisional
`
`applications do not support Flitcroft, the Board must deny inter partes review as to
`
`grounds 3, 4, and 6 of MasterCard’s petition.
`
`
`(1) Flitcroft’s disclosure of limiting to a specific merchant as determined by a
`first use is not supported by any of the Flitcroft provisional applications.
`
`All of the independent claims of the ‘486 patent include the limitation “said
`
`
`
`
`single merchant limitation being included in said payment category prior to any
`
`particular merchant being identified as said single merchant.”
`
`
`
`MasterCard relies on Flitcroft’s disclosure of a “limited-use credit card
`
`[that] is valid for transactions with a specific merchant as determined by a first
`
`use” to satisfy the ‘486 patent claim limitation “said single merchant limitation
`                                                            
`25 Ex parte Park et al., 2013 WL 5467089 at *3 (BPAI Sep. 23, 2013); Ex parte
`Hallowell et al., 2012 WL 3720902 (BPAI Aug. 26, 2012); Ex parte Bernoth, 2012 WL
`3720797 (BPAI Aug. 27, 2012).
` 
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
`
`being included in said payment category prior to any particular merchant being
`
`identified as said single merchant.”26
`
`
`
`Particularly, MasterCard cites Flitcroft at col. 16, lines 57-59 and then
`
`again at col. 28, lines 23-25 for the disclosure of a “limited-use credit card [that] is
`
`valid for transactions with a specific merchant as determined by a first use.”27 But
`
`after a thorough review of the Flitcroft provisional applications, this disclosure is
`
`simply nowhere to be found. The only support for this claim limitation is found
`
`exclusively in Flitcroft: “When the limited-use number is limited to a specific
`
`merchant, the merchant can be prearranged by the user or can be determined by
`
`first use.”28
`
`
`
`MasterCard relies on Grimes to purportedly show that the “limited-use
`
`credit card [that] is valid for transactions with a specific merchant as determined
`
`by a first use” is somehow supported by the single-transaction credit card that is
`
`disclosed by the ‘614 provisional.29 Yet this argument fails to account for the
`
`multiple transaction purpose behind Flitcroft’s credit card being limited to a
`
`specific merchant as determined by first use, e.g., to make multiple transactions
`
`                                                            
`26 Pet. at 38, 46, 48-49, 51.
` 
`27 Id. at 38-39, 46, 48-49, 51.
`
`28 Ex. 2001 at 30, Flitcroft File History, Specification at p. 28, ll. 21-22.
`
`29 Pet. at 37, fn. 5.
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
`
`with that merchant. Obviously a single-transaction credit card cannot be used
`
`multiple times.
`
`
`
`Moreover, Flitcroft argued, during prosecution, that a single-transaction
`
`card does not teach a credit card limited to purchases with a specific merchant as
`
`determined by first use:
`
`Additionally, the Franklin et al. proxy number is for a single
`transaction. Hence it would make no sense that the transaction be
`linked to a specific merchant “by a first use” insofar as there would
`not be a second use of the information to be used. 30
`
`
`
`
`Significantly Flitcroft’s independent claims 9 and 20 were allowed because
`
`they include: “wherein use of the limited-use credit card number is valid for
`
`transactions with a specific merchant as determined by first use.” 31 Consequently,
`
`contrary to MasterCard’s assertion, a single-transaction credit card does not
`
`support a “limited-use credit card [that] is valid for transactions with a specific
`
`merchant as determined by a first use.”
`
`
`
`Grounds 3, 4, and 6 of MasterCard’s petition expressly rely upon Flitcroft
`
`for the disclosure of a “limited-use credit card is valid for transactions with a
`
`specific merchant as determined by a first use.” But this disclosure is plainly not
`
`                                                            
`30 Ex. 2001 at 303, Flitcroft File History, 05/07/2002 Amendment at 8-9 (emphasis
`original).
`
`31 Ex. 2001 at 353, Flitcroft File History, 11/1//2002 Notice of Allowability at 3.
`
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`Case IPR2014-00544
`Patent 7,840,486
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`supported by any of the Flitcroft provisional applications. MasterCard’s failure in
`
`this regard is dispositive, because without this support Flitcroft does not antedate a
`
`material limitation of each independent claim of the ‘486 patent. As such, the
`
`Board must deny inter partes review as to grounds 3, 4, and 6 advanced in
`
`MasterCard’s petition.32
`
`
`(2) The Flitcroft provisional applications do not support Flitcroft’s
`independent claims 1, 3, 5, 7, and 19.
`
`
`
`
`As further evidence that Flitcroft is not supported by its provisional
`
`applications, Flitcroft’s independent claims 1, 3, 5, 7, and 19 were allowed based
`
`on a claim limitation that, like the claim limitation a “limited-use credit card [that]
`
`is valid for transactions with a specific merchant as determined by a first use,” is
`
`not supported by the Flitcroft provisional applications.
`
`
`
`Independent claims 1, 3, 5, 7, and 19 of Flitcroft were allowed because they
`
`each include the claim limitation “wherein said limited-use credit card number is
`
`valid for a [predetermined number/number] of payments for a transaction with a
`
`single merchant.” During prosecution, Flitcroft added claims 28 and 29 to recite
`
`this claim limitation and argued that this limitation distinguished the cited
`
`references.”33 Following, the examiner finally rejected all of the pending claims,
`
`                                                            
`32 See Practice Guide, 77 Fed. Reg. 48,756, 48, 764 (Aug. 14, 2012).
`
`33 Ex. 2001 at 145, Flitcroft File History, 12/09/1999 Amendment at 4.
`
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`Case IPR2014-00544
`Patent 7,840,486
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`except claims 28 and 29, and indicated that claims 28 and 29 would be allowed if
`
`rewritten in independent form.34 In reply, Flitcroft canceled the rejected claims and
`
`amended claims 28 and 29 to be in independent form.35
`
`
`
`After several more office actions and responses, the examiner rejected
`
`claims 28-35 under U.S.C. § 103(a) as being unpatentable over Franklin et al. in
`
`view of Ukuda,36 and in further view of U.S. Patent No. 6,188,761 (“Dickerman et
`
`al.) and U.S. Patent No. 5,500,513 (“Langhans et al.).37 In reply, Flitcroft argued
`
`that independent claim 28 was patentable because it included the limitation
`
`“limited-use credit card number is valid for a predetermined number of payments
`
`or transaction[sic] with a single merchant.”38
`
`
`
` Afterward, the examiner allowed the pending claims, and stated in the
`
`reasons for allowance:
`
`… the claims are limited as included a conditions database
`and processor…where the condition entails the limited use
`credit card number is used to implement an installment plan
`
`                                                                                                                                                                                 
` 
`34 Ex. 2001 at 187-189, Flitcroft File History, 03/01/00 Final Office Action at 4.
`
`35 Ex. 2001 at 204-206, Flitcroft File History, 07/11/00 Response at 1-3.
` 
`36 U.S. Patent Number 5,893,907 (patent number was not recited by the examiner in the
`rejection).
`
`37 Ex. 2001 at 290-292, Flitcroft File History, 11/07/01 Non-Final Office Action at 6-8.
` 
`38 Ex. 2001 at 334, Flitcroft File History, 8/28/2002 Response to Office Action at 16.
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
`
`for a transaction where the credit card number is only
`valid…to a single merchant as described in the specification
`on page 28, lines 15-19 as indicated by the applicant in the
`response filed 12/9/99…39
`
`
`
`
`In response, Flitcroft only disputed that the claims are not limited to an
`
`installment plan.40 Flitcroft later issued with independent claims 1, 3, 5, 7, and 19
`
`including the limitation the “limited-use credit card number is valid for a
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`[predetermined number/number] of payments for a transaction with a single
`
`merchant.”41 
`
`
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`After conducting a thorough review of the Flitcroft provisional
`
`applications, support for this claim limitation was not discovered in any of the
`
`Flitcroft provisional applications. The only support for this claim limitation is
`
`found exclusively in Flitcroft, which was relied on by Flitcroft during prosecution
`
`to support new claims 28 and 29:
`
`Or alternatively, a credit card number can be used, for example, to
`implement an installment plan where the credit card number is, for
`example, only valid for twelve payments for a pre-arranged
`                                                            
`39 Ex. 2001 at 352, Flitcroft File History, 11/8/2002 Notice of Allowability at 2.
`
`40 Id. at 365-67, Flitcroft File History, 4/18/2003 Comments on Examiners Statement for
`Reasons for Allowance.
`
`41 Ex. 1005, U.S. 6,636,833 at col. 28, ll. 19-22, 50-53; at col. 29, ll. 14-16, 42-45; at col.
`19, ll. 61-63; See also Ex. 2001 at 145, Flitcroft File History, 12/09/1999 Amendment at
`4.
`
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`transaction limit for twelve months to a single merchant. This plan
`provides security against fraud because it is locked to a single
`merchant, and it is only good for one year.42
`
`Similar to the “limited-use credit card number [that] is valid for
`
`
`
`
`transactions with a specific merchant as determined by a first use,” one might
`
`argue that the single-transaction card disclosed by the Flitcroft provisional
`
`applications, as noted by Grimes, supports this claim limitation. But this argument
`
`also fails because a single-transaction card does not support a limited-use credit
`
`card number this is valid for a [predetermined number/number] of payments for a
`
`transaction with a single merchant. This limitation requires using the credit card
`
`for multiple payments with a single merchant. Whereas, the single-transaction card
`
`cannot be used to make multiple payments with a single merchant, because the
`
`single-transaction card is deactivated after a first payment.
`
`
`
`Further, Flitcroft’s argument, made during prosecution, that illustrated a
`
`single-transaction card does not teach a limited-use credit card number that is valid
`
`for transactions with a specific merchant as determined by a first use, also applies
`
`to a card that is limited to a [predetermined number/number] of payments with a
`
`single merchant, and is likewise not taught by a single-transaction card. That is, it
`
`wouldn’t make sense to link the card to a merchant for a number of payments
`
`because there would not be a second use of the information to be used.
`                                                            
`42 Ex. 2001 at 30, Flitcroft File History, Specification at p. 28, ll. 12-19. 
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
`
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`
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`As a result, the Flitcroft provisional applications do not support the claim
`
`limitation a “limited-use credit card number [that] is valid for transactions with a
`
`specific merchant as determined by a first use.” Accordingly, it is further
`
`demonstrated that Flitcroft is not supported by its provisional applications in
`
`accordance with 35 U.S.C. § 112, first paragraph. And, as a consequence, Flitcroft
`
`cannot be used as prior art against the ‘486 patent as of the filing dates of the
`
`Flitcroft provisional applications. As such, the Board is given yet another reason
`
`why it must deny inter partes review as to grounds 3, 4, and 6 advanced in
`
`MasterCard’s petition.43
`
`
`(3) MasterCard and its expert Grimes fail to demonstrate that Flitcroft is
`available as prior art under 102(e) against the ‘486 patent.
`
`
`
`
`MasterCard relies on the declaration of its expert, Grimes, who charts the
`
`claim limitations of the ‘486 patent against the disclosures of the Flitcroft
`
`provisional applications in an attempt to show that Flitcroft has a 102(e) prior art
`
`date as of the filing dates of the provisional applications.44
`
`
`
`But a comparison of the ‘486 patent claims with the Flitcroft provisional
`
`applications is irrelevant to whether Flitcroft is prior art under 102(e) as of the
`
`filing date of the provisional applications. As the Court stated in Giacomini, the
`
`                                                            
`43 See Practice Guide, 77 Fed. Reg. 48,756, 48, 764 (Aug. 14, 2012).
`
`44 Ex. 1008, Grimes Dec. ¶¶ 71-73; pp. 65-99.
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`Flitcroft provisional applications must support Flitcroft, not the invention claimed
`
`by the ‘486 patent, for Flitcroft to have a prior art date as of the filing date of the
`
`provisional applications.45
`
`
`
`MasterCard also cites the Board’s March 7, 2014 decision denying
`
`MasterCard’s earlier petition seeking a covered business method review of the
`
`‘486 patent.46 While the Board denied the CBM petition stating that Flitcroft is
`
`only available as prior art under 102(e), the Board did not find that the Flitcroft
`
`provisional applications support Flitcroft’s claimed invention.47
`
`
`
`The Board concluded, at best, that Flitcroft might be prior art under 102(e)
`
`and that 102(e) prior art is not available for instituting a CBM review. There was
`
`no reason for the Board to determine whether the Flitcroft provisional applications
`
`support Flitcroft, because, even if the Board performed this exercise, the result
`
`would have been the same (e.g., denial of the CBM petition).
`
`
`
`In summary, the Flitcroft provisional applications do not support Flitcroft’s
`
`disclosure of “wherein use of the limited-use credit card number is valid for
`
`transactions with a specific merchant as determined by first use.” MasterCard
`
`relies on this disclosure to teach a claim limitation that is recited by all of the
`
`Independent claims of the ‘486 patent. Additionally, claims 9 and 20 were allowed
`                                                            
`45 In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).
` 
`46 Pet. at 37, fn. 5.
`
`47 Ex. 1015, PTAB’s 3/7/2014 CBM Decision for the ‘486 patent at 8-9. 
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Preliminary Response
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`because they each recite this disclosure. Also the Flitcroft provisional applications
`
`do not support Flitcroft’s disclosure of “a limited-use credit card number this is
`
`valid for a [predetermined number/number] of payments for a transaction with a
`
`single merchant,” which served as the basis for allowance for Flitcroft’s
`
`independent claims 1, 3, 5, 7, and 19. Consequently, Flitcroft is not prior art
`
`against the ‘486 patent, since Flitcroft’s Ja