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`Paper No. 33
`Filed September 28, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL
`BOARD
`______________________
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`MASTERCARD INTERNATIONAL INCORPORATED,
`Petitioner,
`v.
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`D’AGOSTINO, JOHN,
`Patent Owner.
`______________________
`
`Case IPR2014-00544
`Patent No. 7,840,486 B2
`______________________
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`PATENT OWNER’S NOTICE OF APPEAL TO THE FEDERAL CIRCUIT
`(35 U.S.C. § 141(c))
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`NOTICE OF APPEAL
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`Patent Owner hereby provides notice of appeal to the United States Court of
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`Appeals for the Federal Circuit under 35 U.S.C. §§ 141 and 142, and 37 C.F.R. §
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`90.2(a) from the Decision on Remand entered July 28, 2017 (Paper No. 32) of the
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`Patent Trial and Appeal Board, and from all orders, decisions, rulings, and opinions
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`underlying the Decision on Remand.
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`Pursuant to 37 C.F.R. § 90.2(a)(3)(ii) the expected issues on appeal will
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`include (as well as any underlying findings, determinations, rulings, decisions,
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`opinions, claim interpretations, or other related issues):
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`1. Whether the Board erred in finding that claims 1-15 and 22-30 are
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`unpatentable under 35 U.S.C. § 102(e) as anticipated by U.S. Patent No. 6,422,462
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`to Cohen (“Cohen”).
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`2. Whether the Board erred in finding that claims 16-21 are unpatentable
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`under 35 U.S.C. § 103(a) as being obvious over the combination of Cohen and U.S.
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`Patent No. 5,826,243 to Musmanno (“Musmanno”).
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`3. Whether the PTAB lacks jurisdiction to enter any final decision other than
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`dismissal of the Petition when the Federal Circuit vacates and remands.
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`4. Whether inter partes review, an adversarial process used by the Patent and
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`Trademark Office (PTO) to analyze the validity of existing patents, violates the
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`Constitution by extinguishing private property rights through a non-Article III forum
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`without a jury.
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`Patent Owner has served this Notice of Appeal on the Office of the General
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`Counsel of the USPTO, and the Petitioner.
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`Patent Owner has electronically filed this notice with the Patent Trial and
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`Appeal Board, pursuant to 37 C.F.R. § 90.2(a)(1), 37 C.F.R. § 42.6(b)(1) and Federal
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`Circuit Rule 15(a)(1).
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`Simultaneously herewith, Patent Owner is providing the Federal Circuit an
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`electronic copy of the present Notice of Appeal (pursuant to 37 C.F.R. § 90.2(a)(2)(i)
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`and Federal Circuit Rule 15(a)(1)) together with a $500 fee (pursuant to 37 C.F.R. §
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`90.2(a)(2)(ii) and Federal Circuit Rule 52(a)(3)).
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`All copies include a copy of the Decision on Remand.
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`Date: September 28, 2017
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`Respectfully submitted,
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`By: /s/ Stephen Lewellyn
`Stephen J. Lewellyn (Reg. No. 51,942)
`Brittany J. Maxey (Reg. No. 57,621)
`Maxey Law Offices, PLLC
`100 Second Avenue South
`Suite 401 North Tower
`St. Petersburg, Florida 33701
`Telephone: 727-230-4949
`Facsimile: 727-230-4827
`s.lewellyn@maxeyiplaw.com
`b.maxey@maxeyiplaw.com
`Attorneys for Patent Owner, John
`D’Agostino
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`CERTIFICATE OF FILING
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`I hereby certify that, in addition to being filed electronically through the
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`Patent Trial and Appeal Board’s End to End (PTAB E2E) system, the original
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`version of the foregoing Patent Owner’s Notice of Appeal to the Federal Circuit
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`(35 U.S.C. § 141(c)) was filed by Express Mail on this 28th day of September 2017,
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`with the Director of the United States Patent and Trademark Office, at the
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`following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`CERTIFICATE OF FILING
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`I hereby certify that a true and correct copy of the foregoing Patent Owner’s
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`Notice of Appeal to the Federal Circuit (35 U.S.C. § 141(c)) was filed with the
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`Clerk’s Office of the United States Court of Appeals for the Federal Circuit through
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`the federal courts’ Case Management and Electronic Case Files (CM/ECF) system
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`on this 28th day of September 2017.
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on this 28th day of September 2017 a true and
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`correct copy of the foregoing Patent Owner’s Notice of Appeal to the Federal
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`Circuit (35 U.S.C. § 141(c)) was served by agreed-upon E-mail on the following
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`counsel of record for the Petitioner:
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`Robert Scheinfeld, Lead Counsel
`Baker Botts LLP
`30 Rockefeller Plaza, 44th Floor
`New York, New York 10112-4498
`Service Email: robert.scheinfeld@bakerbotts.com
`Eliot Williams, Back-up Counsel
`Baker Botts LLP
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`Service Email: eliot.williams@bakerbotts.com
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`/s/Stephen Lewellyn
`Stephen J. Lewellyn
`Reg. No. 51,942
`Attorney for Patent Owner
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`Dated: September 28, 2017
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