Paper 22
`Entered: August 31, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`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 B2
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`MasterCard International Incorporated (“Petitioner”) filed a Petition
`requesting an inter partes review of claims 1–30 of U.S.
`Patent No. 7,840,486 B2 (Ex. 1001; “the ’486 patent”). Paper 1 (“Pet.”).
`John D’Agostino (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted inter partes
`review of the ʼ486 patent, on September 4, 2014, as to claims 1–15 and 22–
`30 under 35 U.S.C. § 102(e) as anticipated by Cohen,1 and as to claims 16–
`21 under 35 U.S.C. § 103(a) as obvious over Cohen and Musmanno.2
`Paper 7 (“Dec.”).
`Patent Owner filed a Response (Paper 11, “PO Resp.”), and Petitioner
`filed a Reply (Paper 12, “Pet. Reply”). Petitioner filed a Motion to Exclude
`evidence (Paper 14, “Mot.”), Patent Owner filed an Opposition to
`Petitioner’s Motion to Exclude evidence (Paper 17, “Opp. to Mot.”), and
`Petitioner filed a Reply in support of its Motion to Exclude (Paper 18,
`“Reply to Opp. to Mot.”). Oral hearing was held on May 12, 2015, and the
`hearing transcript has been entered in the record. Paper 21 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we are persuaded that Petitioner has shown
`by a preponderance of the evidence that claims 1–30 of the ʼ486 patent are
`unpatentable. Petitioner’s Motion to Exclude is denied.
`
`
`1 U.S. Patent No. 6,422,462 B1 (Ex. 1004, “Cohen”).
`2 U.S. Patent No. 5,826,243 (Ex. 1006, “Musmanno”).
`
` 2
`
`
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`
`B. Related Proceedings
`Petitioner identifies the following related district court proceeding
`involving the ’486 patent and in which Petitioner is a party: D’Agostino v.
`MasterCard, Inc., No. 1:13–cv–00738 (D. Del. filed Apr. 26, 2013).
`Pet. 58.
`In related proceeding IPR2014-00543, Petitioner seeks review of U.S.
`Patent No. 8,036,988 C1 (“the ’988 patent”), which claims priority to the
`’486 patent. Id. Petitioner also identifies the ’988 patent as the subject of Ex
`Parte Reexamination proceeding No. 90/012,517. Id. at 6–13.
`Petitioner previously sought a covered business method patent review
`of the ’486 patent in proceeding CBM2013–00058, but we had denied
`institution of review. Id. at 13–14; Mastercard Int’l Inc. v. D’Agostino, Case
`CBM2013-00058 (PTAB Mar. 7, 2014) (Paper 10). Specifically, we denied
`institution of review because Petitioner had not demonstrated that Cohen or
`Flitcroft qualifies as prior art under Section 18(a)(1)(C) of the AIA,3 because
`
`3 Under section 18(a)(1)(C) of AIA, a petitioner in a transitional proceeding
`who challenges the validity of one or more claims in a covered business
`methods patent on grounds of of unpatentability under §§ 102 and 103 may
`only support such grounds on the following basis:
`(i) prior art that is described by section 102(a) of such
`title (as in effect on the day before such effective date); or
`(ii) prior art that—
`(I) discloses the invention more than 1 year before
`the date of the application for patent in the United States;
`and
`
`(II) would be described by section 102(a) of such
`title (as in effect on the day before the effective date set
`forth in section 3(n)(1)) if the disclosure has been made
`by another before the invention thereof by the applicant
`for patent.
`
` 3
`
`
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`neither Cohen nor Flitcroft was published prior to the effective filing date of
`the ’486 patent. Mastercard Int’l Inc. v. D’Agostino, Case CBM2013-
`00058, slip op. at 8–9 (PTAB Mar. 7, 2014).
`C. The ʼ486 Patent
`The ’486 patent discloses a method and system of performing secure
`credit card purchases. Ex. 1001, Abstract. The method and system increase
`overall security by minimizing access to credit card numbers, without having
`to deviate substantially from existing credit card transaction practices. Id. at
`1:13–23.
`
`
`AIA Section 18(a)(1)(C). This section does not apply to an inter partes
`review. 35 U.S.C. § 311(b) allows for a challenge in an inter partes review
`to be raised “on the basis of prior art consisting of patents or printed
`publications.” Accordingly, Cohen and Flitcroft qualify as prior art in an
`inter partes review.
`
` 4
`
`
`
`
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`
`Figure 3 of the ’486 patent follows:
`
`
`Figure 3, depicted above, schematically represents a secure credit card
`transaction system, where the customer-to-merchant contact is by phone or
`in person. As shown above in Figure 3, customer 54 receives promotional
`information from merchant 56, either by telephone 60 or in person 62.
`Ex. 1001, 7:25–30. Customer 54 then contacts custodial authorizing entity
`64, by either telephone 66’ or computer 45’, for authorization. Id. at 7:30–
`38. After confirming authorization, authorizing entity 64 establishes details
`of the anticipated transaction to determine a payment category, and then
`issues a transaction code to the customer. Id. at 7:38–41. The customer can
`utilize the transaction code to consummate a transaction within the defined
`parameters of the payment category, and the merchant can obtain
`verification and subsequent payment utilizing the transaction code only. Id.
`at 7:41–50.
`
` 5
`
`
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`
`D. Illustrative Claim
`Petitioner challenges claims 1–30 of the ’486 patent. Pet. 17–58.
`Claim 1 is illustrative of the claims at issue and is reproduced below:
`1.
`A method of performing secure credit card
`purchases, said method comprising:
`a) contacting a custodial authorizing entity having
`custodial responsibility of account parameters of a customer’s
`account that is used to make credit card purchases;
`b) supplying said custodial authorizing entity with at
`least account identification data of said customer’s account;
`c) defining a payment category including at least limiting
`purchases to a single merchant for at least one transaction, said
`single 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 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.
`Ex. 1001, 8:52–9:14.
`E. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`
`
`
` 6
`
`
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`they appear. See 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs.,
`LLC, No. 2014-1301, 2015 WL 4097949 at *7–*8 (Fed. Cir. July 8, 2015)
`(“Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation.”). Under the broadest reasonable interpretation standard,
`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. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`1. “generating a transaction code”
`Independent claims 1, 24, 25, and 29 recite “generating a transaction
`code.” Petitioner, in its Petition, proposes this limitation means “creating a
`code usable as a substitute for a credit card number in a purchase
`transaction, the number pre–coded to be indicative of a specific credit card
`account.” Pet. 15 (citation omitted). In our Decision to Institute, we
`construed “generating a transaction code,” under the broadest reasonable
`construction, to mean “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.” Dec. 6–
`7.
`
`Patent Owner argues that “generating a 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.” PO Resp. 4–5 (emphasis added). Patent Owner
`specifically argues that our construction of “generating a transaction code” is
`overly narrow by requiring that the transaction code is pre-coded to be
`
` 7
`
`
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`indicative of only a “credit card account,” and should be broadly construed
`to include both a credit card account or debit card account. Id. at 5–8.
`Patent Owner additionally argues that the ʼ486 patent claims specifically
`require that the generated transaction code indicates or reflects the payment
`category. Id. at 6–7. Petitioner responds that such a broadening of this
`limitation is unnecessary because the claims limit the scope of this limitation
`to “credit card” purchases. Pet. Reply 2. Petitioner also responds that claim
`differentiation, specifically claim 8, precludes “generating a transaction
`code” from indicating or reflecting a “payment category.” Id.
`We agree with Petitioner. Claim 1 recites “generating a transaction
`code . . . said transaction code reflecting at least the limits of said designated
`payment category to make a purchase within said designated payment
`category.” In contrast to the ʼ988 patent under review in IPR2014-00543,
`the claims do not require the “transaction code [to be] associated with said
`account.” Accordingly, the ʼ486 patent claims and specification do not
`require that the “transaction code” is associated with the account and we
`decline to import such a limitation in to its meaning.
`Claim 1 additionally recites “[a] method of . . . performing secure
`credit card purchases” and “a customer’s account that is used to make credit
`card purchases.” Accordingly, the ʼ486 patent claims limit the scope of the
`“account” to “credit card purchases.” Based on the foregoing discussion,
`under the broadest reasonable interpretation and based on the ʼ486 patent
`claim limitations, we construe “generating a transaction code to mean
`“creating or producing a code that is usable as a substitute for a credit card
`number in a purchase transaction, the transaction code is reflecting the limits
`of the payment category.”
`
` 8
`
`
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`
`2. “defining at least one payment category”
`Independent claim 1 recites “defining a payment category.” Claim 1
`further recites the payment category includes “limiting purchases to a single
`merchant” and “said single merchant limitation being included in said
`payment category prior to any particular merchant being identified as said
`single merchant.” Independent claims 24, 25, and 29 recite similar
`limitations. Based on the context of the ʼ486 patent specification, and under
`the broadest reasonable interpretation, we construed this limitation to mean
`“specifying the type of limitation (or limitations) that are available to be
`applied to a transaction code in order to limit its use.” Dec. 7–8.
`Patent Owner argues that this construction is not the broadest
`reasonable interpretation, and should be construed to mean “specifying the
`limit (or limits) of a payment category that are applied to a transaction code
`in order to limit its use.” PO Resp. 9–10. Patent Owner specifically argues
`that the “defining” is to “mark the limits of the payment category.” Id.
`Petitioner argues that Patent Owner’s construction fails to give meaning to
`the term “payment category” and, therefore, Patent Owner’s construction is
`not the broadest reasonable interpretation. Pet. Reply 2–3.
`We agree with Petitioner. Patent Owner’s proposed construction does
`not provide any meaning to the term “payment category.” As we had
`determined in our Decision to Institute, the ʼ486 patent does not provide a
`definition for the term “payment category.” Dec. 6–7. Rather, the ’486
`patent describes a variety of possibilities, for example: 1) “[e]ach of the
`payment categories are reflective of a different type of payment desired or
`required to consummate the intended purchase”; 2) payment categories “may
`include a single transaction involving a specific dollar amount for a purchase
`
` 9
`
`
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`within a specific time period”; or, 3) “a single transaction may be involved .
`. . [with] a maximum limit or a dollar amount.” Ex. 1001, 3:48–59.
`Accordingly, we construe “defining a payment category” to mean
`“specifying the type of limitation (or limitations) that are available to be
`applied to a transaction code in order to limit its use.” See Dec. 6–7; Pet. 15.
`3. “particular merchant” and “said single merchant limitation being
`included in said payment category prior to any particular merchant
`being identified as said single merchant”
`We previously construed the term “particular merchant” to mean “the
`merchant with whom the customer is transacting.” Dec. 8. We also
`construed “[said] single merchant limitation being included in said payment
`category prior to any particular merchant being identified as [said] single
`merchant” to mean “any group, category, or type of merchant is included in
`the payment category prior to the customer selecting a particular merchant
`for a transaction.” Id. at 7–8. Patent Owner argues this is not the broadest
`reasonable interpretation of “particular merchant” and submits that
`“particular merchant” should be construed to mean “a specific merchant
`with whom a customer can engage in a purchase transaction.” PO Resp. 11–
`13. Patent Owner does not provide any further explanation for their
`proposed construction. Petitioner argues that Patent Owner’s construction is
`incorrect because Patent Owner argued “the exact opposite to obtain
`allowance during the ex parte prosecution of the parent ʼ486 patent.” Pet.
`Reply 3 (citing Ex. 1013, 187).
`We decline to adopt Patent Owner’s construction of “particular
`merchant.” We are not persuaded that adding the term “specific” to our
`construction alters the meaning of our construction of “particular merchant.”
`Independent claim 1 recites “said single merchant limitation being included
`
`10
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`in said payment category prior to any particular merchant being identified as
`said single merchant.” Patent Owner fails to provide us with a meaningful
`explanation as to how transactions are limited to a single merchant, without
`identifying any particular merchant.4 Accordingly, we determine that the
`“single merchant” includes the “particular merchant” without identifying the
`particular merchant. Absent such a relationship, the claim language would
`be indefinite as ambiguously limiting transactions to an unidentified
`particular merchant. Accordingly, we maintain our construction of
`“particular merchant” to mean “the merchant with whom the customer is
`transacting.”
`Patent Owner further argues that the plain and ordinary meaning of
`“merchant” is “someone who buys and sells goods.” PO Resp. 15 (citing
`Ex. 2007 ¶ 17; Ex. 2005, 3). We agree with Patent Owner. We note that
`this broad definition for “merchant” is not limited by any business
`association or corporate relationship.
`Patent Owner further argues that “‘said single merchant limitation’
`simply refers to and is synonymous with the recited phrase ‘limiting
`
`4 In addition to a number of other arguments, Patent Owner made this same
`argument before the Examiner during the Reexamination of the ʼ988 patent:
`Further, the examiner’s argument fails because the examiner
`incorrectly construes “a particular merchant” to apparently
`mean a merchant that is defined by its location, which is an
`improper construction. In light of the ’988 patent specification,
`the correct meaning of a particular merchant is simply an
`identifiable merchant that a customer can use the transaction
`code with to make purchases.
`Reexamination Proceeding No. 90/012,517, App. Br. 18. This argument is
`not a clear disavowal as it obfuscates any clear meaning of “particular
`merchant” for the reasons noted.
`
`
`11
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`purchases to a single merchant’” and is not limited to “groups, categories, or
`types of merchants.” Id. We agree with Patent Owner. Independent claim 1
`recites “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.” (Emphasis added). Patent Owner
`explained that the “single merchant limitation” limits the number of
`merchants to a single merchant. PO Resp. 14; Tr. 32:1–5; Ex. 2007 ¶ 15.
`Accordingly, we construe the limitation “said single merchant limitation
`being included in said payment category prior to any particular merchant
`being identified as said single merchant” to mean “the merchant transactions
`are limited to a single merchant and are included in the payment category
`prior to the customer selecting a particular merchant for a transaction.”
`II. ANALYSIS5
`A. Anticipation of Claims 1–15 and 22–30 by Cohen
`1. Overview
`Petitioner contends that claims 1–15 and 22–30 of the ʼ486 patent are
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Cohen. Pet. 17–31.
`Petitioner provides citations for where each claim limitation is described by
`
`5 Petitioner states that in the ʼ486 patent prosecution history, Patent Owner
`“disclaimed the ability to enforce the ʼ988 patent beyond the term of the
`ʼ486 Patent – conceding that the claims of the ʼ486 patent and those of the
`‘988 patent are not patentably distinct from each other” because Patent
`Owner filed a Terminal Disclaimer. Pet. 6; see Ex. 1013, 130–133. Patent
`Owner argues that the filing of a terminal disclaimer serves the statutory
`function of removing a double patenting rejection and is not an acquiescence
`as to the merits of a double patenting rejection. PO Resp. 33–34 (citing
`Quad Envtl. Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 874 (Fed.
`Cir. 1991)). We, however, do not reach this argument because it is not
`material to the challenges asserted against the claims in the ʼ486 patent.
`
`12
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`Cohen. Id. We have reviewed the Petition and supporting evidence and find
`that Petitioner has shown that Cohen anticipates the challenged claims. See
`id.
`
`2. Cohen (Ex. 1004)
`Cohen describes a system of disposable credit card numbers, where
`the credit card numbers are generated for a one-time, single transaction
`basis, after which they are disposed of, or thrown away. Ex. 1004, 2:35–37.
`In general, a user dials into her credit card company and provides the
`ordinary credit card number and verification data, and may further indicate
`the transaction for which the customized credit card number will be used.
`Id. at 3:41–53. The user then is provided with a disposable or customized
`credit card number for a single or limited range use. Id.
`For example, an employee’s credit card may be authorized to
`purchase a computer system, thereby transforming the credit card to a
`customized credit card that is valid for only that particular type of purchase.
`Id. at 8:24–35. The card also can be customized for use in a particular store
`or a particular chain of stores. Id.
`3. Analysis
`Petitioner contends that claims 1–15 and 22–30 of the ʼ486 patent are
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Cohen. Pet. 17–31.
`Patent Owner argues that Cohen fails to disclose “said single merchant
`limitation being included in said payment category prior to any particular
`merchant being identified as said single merchant,” as recited by claim 1.
`PO Resp. 18–26. Patent Owner specifically argues that (a) Cohen’s
`merchant type limit fails to disclose “prior to any particular merchant being
`identified,” (b) Cohen’s type of store limit and type of charges fail to
`
`13
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`disclose a “single merchant limitation,” (c) Cohen’s certain store limit
`cannot be made before identifying a specific merchant as the certain store,
`(d) Cohen’s group of stores limit is not a limit to a single merchant and
`cannot be made before identifying specific stores as members of the group
`of stores, and (e) Cohen’s particular chain of stores limit cannot be made
`before identifying a particular merchant.6 Id. Patent Owner further argues
`that Cohen fails to disclose “designating/selecting a payment category that
`places limitations on a transaction code before the transaction code is
`generated.” Id. at 28–32. In other words, Patent Owner argues that Cohen
`fails to disclose (a) the single merchant limitation, (b) said single merchant
`
`
`6 Patent Owner further argues that the Ex Parte Reexamination of the ʼ988
`patent confirmed claims 21 and 23–30 because Cohen fails to disclose
`“single merchant limitation being included in said payment category prior to
`any particular merchant being identified as said single merchant.” PO Resp.
`32; see Ex. 2002, 4. However, unless Patent Owner made arguments
`creating a clear disavowal of claim scope that demonstrates how Cohen fails
`to meet a disputed limitation, we are not bound, under statute or otherwise,
`by such arguments. Given that this proceeding and the Reexamination
`proceeding were concurrent, Patent Owner failed in its duty to clarify its
`claim meaning during the Reexamination proceeding. See supra, note 4.
`We instituted review of the claims prior to the issuance of the
`Reexamination Certificate. Patent Owner also had an opportunity to amend
`claims in each proceeding. Moreover, this case involves a different
`evidentiary record that has been supplemented by arguments and evidence
`by Petitioner that was not before the Examiner in the Reexamination
`proceeding. These supplemental arguments and evidence include those
`impacting the claim construction and application of a “single merchant” to
`passages in Cohen not discussed in the Reexamination proceeding. See
`Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (The
`“court . . . observes that the PTO is under no obligation to accept a claim
`construction proffered as a prosecution history disclaimer, which generally
`only binds the patent owner.”).
`
`
`14
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`limitation is included prior to any particular merchant being identified as the
`single merchant, and (c) designating/selecting a payment category that
`places limitations on a transaction code before the transaction code is
`generated.
`
`a. Single Merchant Limitation
`Patent Owner argues that Cohen’s disclosure of limiting a credit
`card’s use to a type of store, a type of charge, or to a group of stores does not
`meet the “single merchant” limitation. PO Resp. 21–25. Patent Owner
`specifically argues that Cohen “cannot meet the disputed claim limitation,
`because the claim limitation requires a payment category that limits
`transactions to only a [sic] one merchant.” Id. at 23 (citing Ex. 2007 ¶¶ 39,
`40). Patent Owner also argues that Cohen’s disclosure of a group of stores
`does not meet this limitation because the “phrase ‘group of stores’ itself
`means more than one store.’” Id. at 24–25. Patent Owner further argues that
`Cohen’s particular chain of stores disclosure fails to meet the “single
`merchant” limitation. Id. at 25–26. We disagree with Patent Owner. As
`discussed above, we construe the “single merchant” limitation as limiting
`purchase to a single merchant. See supra Section I.E.3. We further agree
`with Patent Owner’s broad construction of “merchant” to mean “someone
`who buys and sells goods.” Supra Section I.E.3. Accordingly, under the
`broadest reasonable construction, the “single merchant” limitation includes
`limiting transactions to any chain of stores or group of stores that is
`identified as a single merchant.
`Petitioner contends that Cohen discloses a card that can be customized
`such that it can be valid only for purchases in a particular store or a
`particular chain of stores, such as a particular restaurant or a particular chain
`
`15
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`of restaurants. Pet. Reply 6 (citing Ex. 1004, 8:25–39); Pet. 27–28 (citing
`Ex. 1004, 8:25–39); Ex. 1004, 8:25–39. As discussed above, the “particular
`merchant” is “the merchant with whom the customer is transacting,” and the
`“single merchant” includes the “particular merchant” in a broad manner
`without identifying the particular merchant. See supra Section I.E.3. The
`relationship between a chain of stores and a particular store satisfies the
`relationship between the “single merchant” and the “particular merchant.”
`For example, the “single merchant” could be Target or McDonald’s chain of
`stores, where a “particular merchant” could be a specific Target or
`McDonald’s store, e.g., at a particular location or online. See PO Resp. 25–
`26; Tr. 33:19–37:2. Patent Owner argues that in such a scenario Target or
`McDonald’s is both the “single merchant” and the “particular merchant” (Tr.
`33:1–37:5), however, Patent Owner has not directed us to evidence or
`provided a rationale to rebut our construction that the chain of stores is the
`“single merchant limitation” and the specific store in the chain of restaurants
`is the “particular merchant.” Accordingly, we find that Cohen discloses the
`recited “single merchant” limitation.
`b. Single merchant limitation being included in said payment
`category prior to any particular merchant being identified
`as said single merchant
`Patent Owner argues that Cohen’s particular chain of stores requires
`identifying a specific chain of stores prior to limiting to that particular store
`or particular chain of stores, and, therefore, does not meet the disputed claim
`limitation. PO Resp. 25–26. Patent Owner specifically argues that “[i]t is
`known that a chain of stores consists of series of stores selling the same
`goods and that are owned by one ownership,” and, as such, the particular
`merchant necessarily must have been identified when the single merchant
`
`16
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`was identified––contrary to the claim limitation. See id. at 25 (citing
`Ex. 2007 ¶¶ 34–35).
`We disagree with Patent Owner. As discussed above, we construe the
`relationship between the recited “particular merchant” and “single
`merchant” such that the “single merchant” includes the particular merchant
`as a member of the single merchant chain, without identifying the particular
`merchant. See supra Section I.E.3. In other words, for example, a “single
`merchant” can be the chain of stores, whereas the “particular merchant” is a
`single store of that chain of stores. Supra Section I.E.3; see supra Section
`II.A.3.a. Patent Owner agrees that a chain of stores may have single
`ownership. See Tr. 36:21–37:2. Given such single ownership, Patent Owner
`has not set forth persuasive evidence or rationale to demonstrate that it
`precludes our construction of a “single merchant” as the chain of stores and
`a “particular merchant” as a specific store in that chain of stores. See supra
`Section I.E.3; Section II.A.3.a. As discussed above, our claim construction
`of a “single merchant” as the chain of stores and a “particular merchant” as a
`specific store in that chain of stores constitutes the broadest reasonable
`construction of the term. See id. Accordingly, we agree with Petitioner that
`Cohen’s disclosure of a credit card that is valid only for purchases in a
`specific chain of stores, such as a specific chain of restaurants, meets this
`disputed limitation. Pet. Reply 6 (citing Ex. 1004, 8:25–39); Pet. 19.
`c. Designating/selecting a payment category that places
`limitations on a transaction code before the transaction
`code is generated
`Patent Owner argues that independent claims 1, 24, 25, and 29 require
`that the step of “generating the transaction code” is performed after
`identifying an account and designating or selecting a payment category. PO
`
`17
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`Resp. 28–29. Patent Owner argues that although Cohen discloses
`customizing a credit card, Cohen fails to disclose “defining/selecting
`customized use of the credit card number before the credit number is
`generated.” Id. at 29–32.
`Although the claims require designating/selecting a payment category
`before the generation of the transaction code, we disagree with Patent Owner
`that Cohen fails to disclose this limitation. 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 also 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. Although
`Patent Owner argues that Cohen does not explicitly disclose the step of
`designating or selecting a payment category precedes the generation of a
`transaction code, we find, based on the record before us, that a person with
`ordinary skill in the art would have understood from this disclosure that a
`user dials in to her credit card company and performs both the task of
`requesting a disposable or customized number and indicates what the
`customized credit card number is to be used for. Pet. Reply 12–13;
`Tr. 57:11–21; see Ex. 1004, 3:42–53. We find that a reading of Cohen that
`precludes a user from performing both steps in a single call is unreasonable.
`Id.
`
`Additionally, Cohen discloses that customized cards “can either be
`preset for certain uses, or the cards can be ready and waiting in the user’s
`office or home for setting to the desired use when the user is ready.” Pet.
`Reply 13 (emphasis omitted)(citing Ex. 1004, 3:63–67). With this
`
`18
`
`
`
`

`
`IPR2014-00544
`Patent No. 7,840,486 B2
`
`disclosure, Cohen is setting forth that the customized use for a card can be
`preset, or set subsequent to the issuance of the card. Id. We find that a
`person with ordinary skill in the art would have understood that Cohen
`presents two options, where the preset option limits the customized card
`prior to the generation of the transaction code. Id.
`Even further, Cohen discloses that “relevant information (such as the
`expiration date etc.) can either be printed on the card or verbally transmitted
`to the user. Likewise, the limited use nature of the card (either in a general
`sense or the specific limitations), the disposability of the card, the range of
`dates or validity of the card, etc. may either be printed on the card or
`transmitted to the user, whether verbally or in writing.” Ex. 1004, 3:19–25.
`Again, we find tha