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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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`________________
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`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
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`v.
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`D’AGOSTINO, JOHN
`Patent Owner
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`________________
`
`
`Case IPR2014-00544
`Patent 7,840,486
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`________________
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`
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`PATENT OWNER’S RESPONSE UNDER 37 C.F.R. § 42.120
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`Case IPR2014-00544
`Patent 7,840,486
`Patent Owner’s Response
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ........................................................................... v
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`LIST OF EXHIBITS ...................................................................................... vi
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`1.
`
`
`Introduction .............................................................................................. 1
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`A. Anticipation by Cohen of claims 1-15 and 22-30 ............................... 1
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`B. Obviousness over Cohen and Musmanno of claims
`16-21 ................................................................................................... 2
`
`
`2. Overview of the ‘486 Patent .................................................................... 2
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`3. Claim Construction .................................................................................. 4
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`A. “generating a transaction code” .......................................................... 4
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`B. “defining at least one payment category” ........................................... 9
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`C. “particular merchant” ........................................................................ 11
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`D. “said single merchant limitation” ..................................................... 14
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`E. “said single merchant limitation being included in said
`payment category prior to any particular merchant
`being identified as said single merchant” ......................................... 17
`
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`4. All of the ‘486 Patent Claims Remain Patentable .................................17
`
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`A. Claims 1-15 and 22-30 of the ‘486 patent are not
`anticipated by Cohen (Ground 1). .................................................... 17
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`(1) Cohen does not disclose limiting purchases to a
`single merchant before identifying any particular
`merchant as the single merchant ................................................ 18
`
`
`
`(a) Cohen’s merchant type limit does not satisfy
`the claim limitation “prior to any particular
`merchant being identified” .................................................. 21
`
`
`(b) Cohen’s type of stores and type of charges
`limits do not create a limit to a single merchant ................. 22
`
`
`(c) Cohen’s certain store limit cannot be made
`before identifying a specific merchant as the
`certain store ......................................................................... 23
`
`
`(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 ..................................................................... 24
`
`
`(e) Cohen’s particular chain of stores limit cannot
`be made before identifying a particular
`merchant ............................................................................... 25
`
`
`(f) The ex parte reexamination of the ‘988 patent
`confirmed that Cohen does not disclose
`limiting purchases to a single merchant before
`any particular merchant is identified as the
`single merchant. ................................................................... 27
`
`
`(2) Cohen does not disclose designating/selecting a
`payment category that places limits on a transaction
`code before the transaction is generated .................................... 28
`
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`B. Claims 16-21 of the ‘486 patent are not obvious over
`Cohen and Musmanno (Ground 2) ................................................... 33
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`iii
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`C. The terminal disclaimer filed during examination of the
`‘988 patent was not an admission that the ‘486 patent
`claims are patentability indistinct from the claims of
`the ‘988 patent ................................................................................... 33
`
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`5. Conclusion .............................................................................................. 34
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`iv
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`TABLE OF AUTHORITIES
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`Cases
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`In re Translogic Technology, Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ................................................................. 4
`
`
`Net Moneyln, Inc. v. Verisgin, Inc.,
`545 F.3d 1359, 1369 (Fed. Cir. 2008). ................................................... 18
`
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................... 13
`
`
`Superguide Corp. v DirecTV Enterprises, Inc.,
`358 F.3d 870 (Fed. Cir. 2004) ................................................................... 6
`
`
`Verdegaal Bros. v. Union Oil Co. of California.,
` 814 F.2d 628 (Fed. Cir. 1987) ................................................................. 17
`
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`Wall Sys., Inc. v. Rockwood Retaining Walls, Inc.,
` 340 F.3d 1298 (Fed. Cir. 2003) ................................................................. 8
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`Quad Environmental Tech. Corp. v. Union Sanitary Dist.,
` 946 F.2d 870 (Fed. Cir. 1991) ................................................................. 34
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`Statutes/Rules
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`35 U.S.C. § 316(e) ........................................................................................... 1
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`37 C.F.R. § 42.100(b) ...................................................................................... 4
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`Other Authorities
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`Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) .............................................. 4
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`MPEP § 2112(IV) .......................................................................................... 18
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`v
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`PATENT OWNER’S LIST OF EXHIBITS
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`Exhibit 2001: File History for U.S. Patent No. 6,636,833 (Flitcroft)
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`Exhibit 2002: CRU Statement (Reexamination No. 90/012,517)
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`Exhibit 2003: Appeal Brief (Reexamination No. 90/012,517)
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`Exhibit 2004: U.S. Patent No. 5,621,201
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`Exhibit 2005: Excerpts from Oxford Dictionary, Eighth Edition
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`Exhibit 2006: Excerpts from Random House Webster’s College
`Dictionary
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`Exhibit 2007: Declaration of Edward L. Gussin
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`vi
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`1. Introduction
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`This inter partes review of U.S. Patent Number 7,840,486 (“the ‘486
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`
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`patent”) was instituted on two grounds that challenge the validity of claims 1-
`
`30 of the ‘486 patent.1 Specifically, the Board granted inter partes review
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`with respect to the following grounds:
`
`Basis Reference(s)
`§102 Cohen
`§103 Cohen and Musmanno
`
`Claims
`1-15 and 22-30
`16-21
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`Petitioner has not met its burden of proof that the challenged claims are
`
`
`
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`unpatentable by a preponderance of the evidence2 for at least the following
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`reasons:
`
`A. Anticipation by Cohen of claims 1-15 and 22-30.
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`
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`Patent Owner submits that Cohen does not disclose defining/selecting a
`
`payment category that includes limiting transactions to a single merchant
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`before any particular merchant is identified as the single merchant, as
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`1 The Board denied all grounds based on Flitcroft (U.S. Pat. No. 6,636,833),
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`finding that the grounds based on Flitcroft were redundant to the grounds
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`based on Cohen. Decision at 17.
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`2 35 U.S.C. § 316(e).
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`1
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`required by each claim. See Section 4(A)(1), infra. Thus, Cohen cannot
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`anticipate challenged claims 1-15 and 22-30.
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`
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`Patent Owner also submits that Cohen does not disclose
`
`defining/selecting a payment category that places limitations on a transaction
`
`code, and then generating the transaction code after the defining/selecting a
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`payment category, as required by each claim. See Section 4(A)(2), infra.
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`Thus, Cohen cannot anticipate challenged claims 1-15 and 22-30.
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` B. Obviousness over Cohen and Musmanno of claims 16-21.
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`
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`Patent Owner submits that the combination of Cohen and Musmanno
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`fails to remedy the deficiencies of Cohen. See Section 4(B), infra. Thus, the
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`combination cannot render the challenged claims 16-21 unpatentable.
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`2. Overview of the ‘486 Patent
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`The ‘486 patent is directed to a method and system of performing
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`
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`secure credit card purchases. Ex. 1001, the ‘486 patent, Abstract. The method
`
`provides a customer with a custom-use transaction code that is used in
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`substitution for the customer’s credit card number or debit card number to
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`make credit card purchases. Id. at 3:30-35; 6:28-33.
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`2
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`A customer contacts a custodial authorizing entity for authorization as
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`an account user to receive a transaction code to make credit card purchases.
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`Id. at 7:30-43. After the customer is verified as an authorized account user,
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`details of the anticipated transaction are established to determine a payment
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`category that includes limitations that restrict the transaction code’s use. Id. at
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`7:38-41. Once details of the payment category are established, the transaction
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`code is generated and given to customer. Id. The transaction code is pre-coded
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`to be indicative of a customer’s credit card or debit card account and is used
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`to make credit card purchases. Id. at 3:12-17, 3:30-43. The transaction code is
`
`also pre-coded to be indicative of the payment category. Id. In particular
`
`embodiments, the payment category includes a limit that restricts purchases to
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`a single merchant that is not identified before the limit to the single merchant
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`is made. Id. at 8:12-16, 8:24-28. Finally, once the transaction code is
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`generated, the customer can use the transaction code to consummate a
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`transaction within the defined parameters of the payment category. Id. at
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`7:41-50.
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`3
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`3. Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are
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`
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`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764-66 (Aug. 14, 2012).
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`Claim terms are given their ordinary and customary meaning as would be
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`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).
`
`A. “generating a transaction code”
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`
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`All of the challenged claims of the ‘486 patent recite “generating a
`
`transaction code.” In its decision to institute the present review, the Board
`
`construed “generating a transaction code” to mean “creating or producing a
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`code that is usable as a substitute for a credit card number in a purchase
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`transaction, the transaction code is pre-coded to be indicative of a specific
`
`credit card account.” Decision at 6. This construction, however, is not the
`
`broadest reasonable construction because it unduly limits the transaction code
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`to only credit card accounts, and it incorrectly excludes the transaction code
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`being indicative of a payment category, and should be revised.
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`Patent Owner submits that the broadest reasonable construction of
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`“generating a transaction code” is “creating or producing a code that is usable
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`as a substitute for a credit card number in a purchase transaction, the
`
`transaction code is pre-coded to be indicative of a customer account and a
`
`payment category, where the customer account is either a credit card account
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`or a debit card account.” Ex. 2007, Gussin Dec., ¶7.
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`
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`The specification supports the conclusion that persons of ordinary skill
`
`in the art would understand that the transaction code is pre-coded to be
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`indicative of a customer account that is either a credit card account or a debit
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`card account. Ex. 2007, at ¶ 8. The ‘486 patent specification, at several points,
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`discloses the transaction code being used as a substitute number for either a
`
`credit card account or a debit card account to make credit card purchases:
`
`• Once the customer has identified the product or services which
`he/she wishes to purchase, the customer contacts and supplies a
`custodial authorizing entity with the requisite information
`concerning both the identification of a specific credit card or
`debit card account and a requested payment category. Ex. 1001,
`3:12-17 (emphasis added);
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`• As part of the security system for accomplishing a commercial
`transaction utilizing credit card or debit card payment, the
`custodial authorizing entity includes sufficient facilities,
`preferably including a processing computer or like applicable
`hardware for the generation of an exclusive transaction code. Ex.
`1001, 3:30-35 (emphasis added);
`
`• The transaction code is to be used in substitution for the credit
`card number and when utilized as authorized, will issue the
`merchant a credit approval, and will accomplish payment for the
`goods or services desired in the normal fashion normally
`associated with a credit or debit card transaction… Ex. 1001,
`3:35-43 (emphasis added).
`
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`
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`The Board’s construction relies on a single statement in the ‘486 patent
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`specification to limit the transaction code to being indicative of a credit card
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`account. Decision at 6 (citing Ex. 1001, 6:28-29). But, importantly, nothing in
`
`the claims expressly limit the recited “transaction code” to only credit card
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`accounts to make credit card purchases. Thus, the current construction
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`improperly limits the scope of the claims by importing credit card accounts
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`into the claim. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870,
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`875 (Fed. Cir. 2004) (“Though understanding the claim language may be
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`aided by explanations contained in the written description, it is important to
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`not import into a claim limitations that are not part of the claim”).
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`
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`Further, the ‘486 patent specification supports the conclusion that
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`persons of ordinary skill in the art would understand that the “transaction
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`code” in the ‘486 patent is indicative of a payment category. Ex. 2007, at ¶ 9.
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`Particularly, the ‘486 patent specification explicitly describes that “a feature
`
`of the transaction code is its ability to indicate any one of … predetermined
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`payment categories….” Ex. 1001, 3:43-45. The ‘486 patent also discloses
`
`“the transaction code is pre-coded to be indicative of … a designated payment
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`category.” Ex. 1001, 6:28-32.
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`
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`And, importantly, the claims of the ‘486 patent expressly require that
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`the transaction code to be indicative of the payment category. Independent
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`claim 1 includes “said transaction code reflecting at least the limits of said
`
`designated payment category to make a purchase within said designated
`
`payment category.” Similarly, independent claims 24, 25, and 29 include
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`“said transaction code associated with…the limits of said selected payment
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`category…” Thus, the claims expressly include the transaction code being
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`indicative of a payment category. Ex. 2007, at ¶ 9.
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`7
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`The Board’s construction relies on its interpretation of a single
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`statement in the ‘486 patent specification to read out the limitation that the
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`transaction code is indicative of the payment category, as being only
`
`preferable. Decision at 6 (citing Ex. 1001, 6:28-29). Patent Owner does not
`
`agree that it is preferable for the transaction code to be indicative of a
`
`payment category, but, rather, that the transaction code must be indicative of a
`
`payment category. However, for argument sake, even if it was preferable for
`
`the transaction code to be indicative of a payment category, a claim
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`construction that excludes this embodiment would still be incorrect. Wall Sys.,
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`Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003)
`
`(“A claim construction that excludes a preferred embodiment … is rarely, if
`
`ever correct and would require highly persuasive evidentiary support”).
`
`
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`Thus, for these foregoing reasons, the broadest reasonable construction
`
`of “generating a transaction code” is “creating or producing a code that is
`
`usable as a substitute for a credit card number in a purchase transaction, the
`
`transaction code is pre-coded to be indicative of a customer account and a
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`payment category, where the customer account is either a credit card account
`
`or a debit card account.” Ex. 2007, at ¶ 7, 9.
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`B. “defining at least one payment category”
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`
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`The Board has preliminarily construed “defining at least one 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 it use.” Decision
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`at 6-7. This construction, however, is not the broadest reasonable construction
`
`because it is inconsistent with the specification and claims of the ‘486 patent,
`
`and should be revised.
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`
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`Patent Owner submits that the broadest reasonable construction of
`
`“defining at least one payment category” is “specifying the limit (or limits) of
`
`a payment category that are applied to a transaction code in order to limit its
`
`use.” Ex. 2007, at ¶ 10.
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`
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`The specification supports the conclusion that persons of ordinary skill
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`in the art would understand that “defining at least one payment category”
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`relevant to the ‘486 patent means to specify or set the limits of a payment
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`category that are applied to the transaction code. This interpretation is
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`consistent with the plain and ordinary meaning of “defining,” and is
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`supported by and consistent with the ‘486 patent specification. Id.
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`The plain and ordinary meaning of the word “defining” relevant to the
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`‘486 patent is to mark the limits of the payment category. Id.; See Ex. 2006, at
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`3. The ‘486 patent is consistent with this meaning of “defining.” For
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`example, the ‘486 patent specification describes “the payment category may
`
`include a single transaction defined by a single purchase having a maximum
`
`limit amount, wherein the specific or precise cost of the purchase has not been
`
`determined for a variety of reasons, and as such, the customer desires to set a
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`maximum amount for which the single transaction may be made.” Ex. 1001,
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`7:60-65 (emphasis added). The ‘486 patent further explains “with such a
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`payment category, the exact amount may not be known in advance, but the
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`customer is assured of not paying over the specifically designated maximum
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`limit.” Ex. 1001, 7:65-8:1 (emphasis added). And that the “customer…can
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`then [use] the transaction code to consummate a transaction within the
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`defined parameters of the payment category.” Ex. 1001, 7:41-44.
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`
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`In other words, a payment category includes a limitation, such as, for
`
`example, a limit on the maximum purchase amount. And defining the
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`payment category, according to this example, is setting or specifying the
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`actual value of the maximum purchase amount (e.g., $100.00). Accordingly,
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`the broadest reasonable interpretation of “defining at least one payment
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`category” is “specifying the actual limit (or limits) of a payment category that
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`are applied to a transaction code in order to limit its use.” Ex. 2007, at ¶ 10.
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`C. “particular merchant”
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`
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`The Board has preliminarily construed “particular merchant” to mean
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`“the merchant with whom the customer is transacting.” Decision at 8. This
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`construction, however, is not the broadest reasonable construction because it
`
`is inconsistent with the specification and claims of the ‘486 patent, and should
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`be revised.
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`
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`Patent Owner submits that the broadest reasonable construction of
`
`“particular merchant” relevant to the ‘486 patent is “a specific merchant with
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`whom a customer can engage in a purchase transaction.” Ex. 2007, at ¶ 11.
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`The word “particular” modifies the noun “merchant,” and the plain and
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`ordinary meaning of the word “particular” relevant to the ‘486 patent is a
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`specific identification so as not to refer to any other merchant. Id., at ¶¶ 11,
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`13; See Ex. 2006, at 5.
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`Petitioner’s expert agrees, stating “[t]he claim limitation ‘particular
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`merchant’ may be construed, consistent with its plain and ordinary meaning,
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`to mean ‘a specific merchant with whom a customer can engage in the
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`purchase transaction.’” Ex. 1008, Grimes Dec. at ¶23; Ex. 2007, at ¶ 12. The
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`only difference between Patent Owner’s construction and Petitioner’s, is that
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`Patent Owner substituted “the purchase transaction” with “a purchase
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`transaction” to be consistent with the claims, which allows for multiple
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`purchases. Ex. 2007, at ¶ 12.
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`
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`The specification supports the conclusion that persons of ordinary skill
`
`in the art would understand that the ‘486 patent specification is consistent
`
`with this plain and ordinary meaning of “particular.” Ex. 2007, at ¶¶ 13, 14.
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`The ‘486 patent describes “…limits solely as to a specific merchant…can be
`
`effectively established for which the transaction code is valid.” Ex. 1001,
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`3:67-4:2. And, “…other payment category transactions may include a specific
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`merchant identification to further restrict use of the transaction code.” Ex.
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`1001, 8:8-11. The ‘486 patent also describes that a plurality of different
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`merchants may or may not be identified by the customer and pre-coded in
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`association with the transaction code. Ex. 1001, 8:13-16.
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`Further, and importantly, none of the independent claims expressly
`
`require that the particular merchant is the merchant with whom the customer
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`is transacting. But dependent claims of the ‘486 patent expressly require the
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`particular merchant to be the merchant with whom the customer is
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`transacting. For example, claim 3 depends from claim 1, and includes the
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`limitation “wherein the step of communicating the transaction code to a
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`merchant … further comprises designation of [that] merchant as said single
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`merchant.” Similar claim differentiation exists between independent claim 25
`
`and dependent claim 28; and independent claim 29 and dependent claim 30.
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`Thus, the independent claims should not be limited by requiring the particular
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`merchant to be the merchant with whom the customer is transacting. Phillips
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`v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir. 2005) (“the presence of a
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`dependent claim that adds a particular limitation gives rise to a presumption
`
`that the limitation in question is not present in the independent claim”).
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`
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`Accordingly, for these reasons, the broadest reasonable construction of
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`“particular merchant” is “a specific merchant with whom a customer can
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`engage in a purchase transaction.” Ex. 2007, at ¶¶ 11-14.
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`D. “said single merchant limitation”
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`
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`The Board has construed “said single merchant limitation” to mean
`
`“any group, category, or type of merchant.” Decision at 7-8. This
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`construction, however, is not the broadest reasonable construction because it
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`is inconsistent with the claims, specification, and file history of the ‘486
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`patent, and should be revised.
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`Patent Owner submits that the phrase “said single merchant limitation”
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`simply refers to and is synonymous with the recited phrase “limiting
`
`purchases to a single merchant.” Ex. 2007, at ¶¶ 15, 16. Independent claim 1
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`recites “defining a payment category including at least limiting purchases to a
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`single merchant.” Claim 1 then recites “said single limitation being included
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`in said payment category prior to any particular merchant being identified as
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`said single merchant.” Independent claims 24, 25, and 29 have similar claim
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`language.
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`
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`When the claim is read as a whole, it becomes apparent that the phrase
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`“said single merchant limitation” references the previously recited phrase
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`“limiting purchase to a single merchant.” Ex. 2007, at ¶ 15. And, that the
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`claim language “being included in said payment category prior to any
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`particular merchant being identified as said single merchant” that follows
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`“said single merchant limitation” further modifies the limitation of “limiting
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`purchases to a single merchant.” Ex. 2007, at ¶ 18.
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`Additionally, construing “said single merchant limitation” to mean
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`“any group, category, or type of merchant” is inconsistent with this claim
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`language and the plain and ordinary meaning of the phrase “single merchant.”
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`Ex. 2007, at ¶¶ 17, 18. In this phrase, the word “single” modifies the noun
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`“merchant.” The plain and ordinary meaning of the word “single” is one only.
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`Id.; See Ex. 2006, at 6. And the plain and ordinary meaning of the word
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`“merchant” is someone who buys and sells goods. Ex. 2007, at ¶ 17; See Ex.
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`2005, at 3.
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`The ‘486 patent specification supports the conclusion that persons of
`
`ordinary skill in the art would understand that the “single merchant” in the
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`‘486 patent is only one merchant that buys and sells goods, and not any one
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`group, category, or type of merchant. Ex. 2007, at ¶ 17. The ‘486 patent
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`specification describes disclosing the custom-use transaction code to a
`
`merchant to make a purchase with that merchant. Ex. 1001, 4:45-51. The ‘486
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`patent specification also describes a payment category that purchases can be
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`made from “one or a plurality of different merchants, each of which may or
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`may not be identified by the customer and pre-coded in association with the
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`transaction code….” Ex. 1001, 8:12-16. Importantly, the ‘486 patent
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`15
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`specification does not disclose groups, categories, or types of merchants as
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`being a limitation included in a payment category to limit the use of the
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`transaction code. Ex. 2007, at ¶ 17.
`
`
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`Additionally, the current construction is inconsistent with the file
`
`history. During examination of the ‘486 patent, the limitation “said single
`
`merchant limitation being included in said payment category prior to any
`
`particular merchant being identified as said single merchant” was correctly
`
`construed to mean including a single merchant in a payment category prior to
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`any particular merchant being identified. Ex. 2007, at ¶ 19; Ex. 1002, File
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`History for U.S. Patent No. 7,840,486, at 51, 140-141. And, this is the same
`
`construction used during the reexamination of related U.S. Patent No.
`
`8,036,988. Ex. 2002, Notice of Intent to Issue Ex Parte Reexamination Cert.,
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`at 6; Ex. 2007, at ¶ 19.
`
`
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`Thus, for these reasons, under the broadest reasonable construction,
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`“said single merchant limitation” is simply the reference to the recited
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`limitation of “limiting purchases to a single merchant” that immediately
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`precedes the phrase “said single merchant limitation.” Ex. 2007, at ¶¶ 15-19.
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`16
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`E. “said single merchant limitation being included in said payment
`category prior to any particular merchant being identified as said
`single merchant”
`Thus, using the correct broadest reasonable construction of “said single
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`
`
`merchant limitation” and “particular merchant,” as discussed above, the entire
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`limitation “said single merchant limitation being included in said payment
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`category prior to any particular merchant being identified as said single
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`merchant” means “including the limit in the payment category that limits
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`transactions to a single merchant before any specific merchant is identified as
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`the single merchant.” Ex. 2007, at ¶ 20; Ex. 1002, at 51, 140-141; Ex. 2002, at
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`6.
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`4. All of the ‘486 Patent Claims Remain Patentable
`
`A. Claims 1-15 and 22-30 of the ‘486 patent are not anticipated by
`Cohen (Ground 1).
`
`“A claim is anticipated only if each and every element as set forth in
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`
`
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`the claim is found, either expressly or inherently, described in a single prior
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`art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
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`631 (Fed. Cir. 1987). Further, anticipation requires that the reference disclose
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`“not only all of the limitations claimed but also all of the limitations arranged
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`17
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`or combined in the same way as recited in the claim.” Net MoneyIN v.
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`VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
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`
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`“In relying upon the theory of inherency, the examiner must provide a
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`basis in fact and/or technical reasoning to reasonably support the
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`determination that the allegedly inherent characteristic necessarily flows from
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`the teachings of the applied prior art.” MPEP § 2112(IV) (citation omitted).
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`“The fact that a certain result or characteristic may occur or be present in the
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`prior art is not sufficient to establish the inherency of that result or
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`characteristic.” Id. (citation omitted).
`
`
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`Following these principles, Cohen does not anticipate claims 1-15 and
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`22-30 because Cohen does not teach every claim limitation of each
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`independent claim. Ex. 2007, at ¶¶ 26, 39.
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`(1) Cohen does not disclose limiting purchases to a single merchant before
`identifying any particular merchant as the single merchant.
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`
`
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`All of the independent claims 1, 24, 25, and 29 include the limitation
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`“said single merchant limitation being included in said payment category
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`prior to any particular merchant being identified as said single merchant.”
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`18
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`Petitioner relies on Cohen’s disclosure of a single-use credit card
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`number that is deactivated after being used once to inherently teach the claim
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`limitation. Pet. at 19, 25, 28; Ex. 1008, Grimes Dec., at ¶40.
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`
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`Patent Owner, in the Preliminary Response, asserted that Cohen’s
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`disclosure of a single-use credit card does not meet the disputed claim
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`limitation because a single-use credit card cannot be used to make multiple
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`purchases as required by the claims. Prelim. Resp., at 20-22. Petitioner’s
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`expert, Dr. Grimes, agrees that Cohen’s single-use card cannot be used to
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`make multiple purchases, stating:
`
`Each of these single use cards has a unique card number that is
`different from the master credit card account number. That
`way, if the card number and accompanying info is
`subsequently stolen, that card number cannot be used for a
`second purchase. After the card is used, it may be discarded.
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`Ex. 1008, at ¶13. Indeed, Cohen’s single use credit card does not meet the
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`claim limitation, because the claim limitation includes making more than one
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`purchase.
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`
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`In instituting this inter partes review, the Board found that “[a]though
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`Cohen discloses a single-use credit card, Cohen further discloses a credit card
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`19
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`that can be used at certain store for a set amount or for a set time period.”
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`Decision at 12. The Board then instituted this review on the basis of Cohen’s
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`disclosure that a credit card can be limited to a certain store (particular store),
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`groups of stores, or types of stores as allegedly meeting the disputed claim
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`limitation. Id.
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`As discussed above, the claim limitation “said single merchant
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`limitation being included in said payment category prior to any particular
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`merchant being identified as said single merchant” cannot properly be
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`construed to mean “any group, category, or type of merchant is included in
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`the payment category prior to the customer selecting a particular merchant for
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`a tra
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