Paper 36
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: April 23, 2015
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`SEAN I. McGHIE and BRIAN K. BUCHHEIT,
`Patent Owner.
`____________
`
`Case IPR2015-00122
`Patent 8,523,063 B1
`____________
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. INTRODUCTION
`
`Petitioner, Askeladden LLC, filed a Petition requesting an inter partes
`
`review of claims 1–20 of U.S. Patent No. 8,523,063 B1 (Ex. 1501, “the ’063
`
`patent”). Paper 1 (“Pet.”). Patent Owner, Sean I. McGhie and Brian K.
`
`Buchheit, filed a Preliminary Response. Paper 15 (“Prelim. Resp.”). We
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: April 23, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`SEAN I. McGHIE and BRIAN K. BUCHHEIT,
`Patent Owner.
`____________
`
`Case IPR2015-00122
`Patent 8,523,063 B1
`____________
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. INTRODUCTION
`
`Petitioner, Askeladden LLC, filed a Petition requesting an inter partes
`
`review of claims 1–20 of U.S. Patent No. 8,523,063 B1 (Ex. 1501, “the ’063
`
`patent”). Paper 1 (“Pet.”). Patent Owner, Sean I. McGhie and Brian K.
`
`Buchheit, filed a Preliminary Response. Paper 15 (“Prelim. Resp.”). We
`
`
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`IPR2015-00122
`Patent 8,523,063 B1
`
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`have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes
`
`
`
`review may not be instituted “unless . . . 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.”
`
`
`
`For the reasons that follow, we institute an inter partes review of
`
`claims 1–20 of the ’063 patent.
`
`A. Related Proceeding
`
`IPR2015-00123 involves the same patent and same parties.
`
`B. The ’063 Patent
`
`The ’063 patent relates to the automatic conversion of non-negotiable
`
`credits to funds. Ex. 1501, 1:29–31. In particular, an entity and a commerce
`
`partner agree to permit transfers or conversions of non-negotiable credits to
`
`entity independent funds in accordance with a fixed credits-to-funds ratio.
`
`Id. at Abstract. The conversion allows the user to make a purchase from the
`
`commerce partner who accepts as payment the converted loyalty points. Id.
`
`at Fig. 1.
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`C. Illustrative Claim
`
`Claims 1, 8, and 13 are independent claims. Claims 2–7 directly
`
`depend from claim 1; claims 9–12 directly depend from independent claim
`
`8; and claims 14–20 directly depend from claim 13. Claim 1 is reproduced
`
`below.
`
`1. A method comprising:
`an entity agreeing to permit transfers or conversions of
`non-negotiable credits to entity independent funds in
`accordance with a fixed credits-to-funds ratio, wherein the
`entity agrees to compensate a commerce partner by paying an
`
`2
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`IPR2015-00122
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`amount in cash or credit for each non-negotiable credit
`redeemed by the commerce partner, wherein the non-negotiable
`credits are loyalty points of a loyalty program of the entity,
`wherein the entity independent funds are loyalty points of a
`different loyalty program of the commerce partner, wherein the
`entity independent funds are redeemable under terms-of-use of
`the different loyalty program of the commerce partner goods or
`for consumer partner services, wherein terms-of-use of the
`different loyalty program does not permit commerce partner
`goods or commerce partner services to be exchanged for the
`non-negotiable credits in absence of the non-negotiable credits
`being transferred or converted into the entity independent funds
`of the different loyalty program;
`a computer for the loyalty program of the entity
`establishing an account for non-negotiable credits of a loyalty
`program member;
`the computer detecting a set of two or more interactions
`earning additional non-negotiable credits for the royalty
`program member in accordance with terms-of-use of the loyalty
`program, wherein the computer adds the additional non-
`negotiable credits to the account; and
`responsive to an indication of a conversion operation
`occurrence, the computer subtracting a quantity of the non-
`negotiable credits from the account, said subtracted quantity of
`non-negotiable credits comprising at least a quantity of non-
`negotiable credits that were converted or transferred to a new
`quantity of entity independent funds using the fixed credits-to-
`funds ratio.
`
`Ex. 1501, 16:5–39.
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`
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`3
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`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 1–20 are unpatentable based on the
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`following grounds:
`
`References
`
`MacLean1 and Sakakibara2
`MacLean, Sakakibara, and Postrel3
`
`
`Basis
`
`Challenged Claims
`
`§ 103(a)
`
`§ 103(a)
`
`8–20
`
`1–7 and 13–20
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`
`Speed Techs., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir. 2015) (“Congress
`
`implicitly adopted the broadest reasonable interpretation standard in
`
`enacting the AIA,” and “the standard was properly adopted by PTO
`
`regulation.”). Under the broadest reasonable construction 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 U.S. Patent Application Publication 2002/0143614 A1, published Oct. 3,
`2002 (Ex. 1504) (“MacLean”).
`2 U.S. Patent No. 6,721,743, issued Apr. 13, 2004 (Ex. 1505)
`(“Sakakibara”).
`3 U.S. Patent Application Publication 2005/0021399 A1, published Jan. 27,
`2005 (Ex. 1503) (“Postrel”).
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`Petitioner proposes constructions for the following claim terms:
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`
`
`“entity,” “non-negotiable credits,” and “entity independent funds,” which are
`
`recited at least in independent claims 1, 8, and 13. Pet. 6–9. At this
`
`juncture, Patent Owner does not challenge Petitioner’s proposed claim
`
`constructions. Prelim. Resp. 1.
`
`We have reviewed Petitioner’s proposed constructions and determine
`
`that they are consistent with the broadest reasonable construction. For
`
`purposes of this Decision, we adopt the following claim constructions:
`
`Claim Term
`
`Construction
`
`
`
`entity
`
`non-negotiable credits
`
`entity independent funds
`
`
`
`an organization that has a rewards
`program for a consumer
`credits which are accepted only by
`the granting entity of the credits
`funds acceptable as payment by at
`least one entity different from the
`original granting entity of the non-
`negotiable credits
`
`Patent Owner argues that “commerce partner” recited in independent
`
`claims 1, 8, and 13 means “an entity that is an independent entity from
`
`another entity, and associated with that other [entity] in some commercial
`
`activity.” Prelim. Resp. 2. In addition, Patent Owner argues that
`
`“commerce partner” requires a direct link between the claimed entity and the
`
`commerce partner insofar as the claims are concerned. Id. at 24–25 (arguing
`
`that the claims preclude an intermediary between different loyalty
`
`programs). There is nothing in the term “commerce partner” that requires a
`
`direct link between the claimed entity and commerce partner. Moreover, the
`
`Specification of the ’063 patent does not define the term or explain that the
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`entity and the commerce partner must be associated with each other in some
`
`
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`commercial activity. For purposes of this decision we construe “commerce
`
`partner” to mean an individual or group involved in commercial activity.
`
`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`In that regard, an obviousness analysis “need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, for
`
`a court can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
`
`Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
`
`established when the prior art itself would appear to have suggested the
`
`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
`
`531 F.2d 1048, 1051 (CCPA 1976).
`
`The level of ordinary skill in the art is reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
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`579 F.2d 86, 91 (CCPA 1978).
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`C. Obviousness of Claims over MacLean and Sakakibara
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`
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`Petitioner contends that claims 8–12 are unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over MacLean and Sakakibara. Pet. 15–30. To support
`
`its contentions, Petitioner provides detailed explanations as to how the
`
`combination of prior art meets each claim limitation. Id. Petitioner also
`
`relies upon a Declaration of Matthew Calman (Ex. 1502) for support.
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`Patent Owner counters that the combination of MacLean and
`
`Sakakibara does not render the challenged claims obvious, as the prior art
`
`does not describe certain claim limitations and Petitioner fails to provide
`
`sufficient rationale to combine the prior art. Prelim. Resp. 8–45. We begin
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`our discussion with a brief summary of MacLean and Sakakibara, and then
`
`address the arguments presented by Patent Owner.
`
`MacLean describes a system and method for managing and
`
`exchanging reward or loyalty points (credits) from one Loyalty Program
`
`(LP) to another. Ex. 1504 ¶ 40, Abstract. Figure 1 of MacLean is
`
`reproduced below and shows a functional diagram of a points exchange
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`system.
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`
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`Figure 1 of MacLean shows a functional diagram of a points exchange
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`
`
`system.
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`Point management system 100 facilitates interaction between
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`
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`customer 110, transaction center 120, and issuers 130a-c. Id. ¶ 40. Points
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`managed by system 100 may take the form of a variety of Loyalty Program
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`(LP) points such as those issued by airlines, hotels, financial entities, e.g.,
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`credit cards, and networks, e.g., portal web sites in the Internet. Id. Each
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`kind of point is issued and redeemed by a different LP and may have a
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`different value or liability to its LP. Point management system 100 permits
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`a customer to exchange points from one LP to another. Id. ¶ 41. As
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`examples, a customer may exchange points issued by American Airlines for
`
`those issued by American Express Card, or a customer may transfer points
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`issued by any number of LPs to a single LP, so that the customer may
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`redeem its collected points for the rewards offered by the single LP. Id.
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`
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`MacLean describes the transfer or conversion of points using an
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`exchange rate. Id. ¶¶ 21, 27. In particular, and with reference to Figures
`
`5A, 5B, and 6D, a customer may select a depositing LP (step 510) and click
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`on “calculate advanced xchange” button 634, which results in the calculation
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`of the exchange rates for the points transaction (step 511). Id. ¶ 52.
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`
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`Sakakibara describes a point managing system that provides a web-
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`based user interface, allowing a customer to convert the loyalty points of a
`
`first business entity into those of a second business entity in accordance with
`
`an exchange rate. Ex. 1505, 1:57–2:5, 7:7–10, Fig. 9. For independent
`
`claim 8, Petitioner relies on Sakakibara for its description with respect to
`
`“non-negotiable credits” and that such credits are converted into entity
`
`independent funds as claimed. See, e.g., Pet. 21, 24, 25, and 28. In
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`particular, Petitioner relies on Sakakibara’s description of a “method of
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`exchanging points between different business entities . . . wherein the first
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`points are only directly redeemable by the first business entity, and wherein
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`the second points are only directly redeemable by the second business
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`entity.” Ex. 1505, 12:64–13:30. Petitioner also relies on Sakakibara with
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`respect to dependent claims 10 and 11 and the limitations of those claims
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`that the conversion operation is performed by a computer for the different
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`loyalty program of the commerce partner (claim 10) and by a computer for
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`the loyalty program of the entity (claim 11). Pet. 18–20.
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`
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`With respect to claim 8, Patent Owner argues that MacLean does not
`
`teach a “commerce partner” or that “the commerce partner receives
`
`compensation from an entity . . . said compensation is in an amount in cash
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`or credit for each non-negotiable credit redeemed by the commerce partner.”
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`Prelim. Resp. 24–25, 39–42. Underlying Patent Owner’s arguments is that
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`claim 8 requires a direct link between the commerce partner and the entity.
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`Id. Claim 8 does not require a direct link, or preclude an intermediary such
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`as the MacLean transaction center to coordinate between the claimed entity
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`and commerce partner. Petitioner has accounted for the commerce partner
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`limitation in the Petition, directing attention to Figure 1 of MacLean and any
`
`of the points issuers 130a-c. See, e.g., Pet. 20. As pointed out by Petitioner,
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`the points issuers agree to permit transfers or conversions by their
`
`participation in the points exchange system of MacLean. Id. Moreover,
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`Petitioner has accounted for the limitation that the commerce partner
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`receives compensation from an entity. Specifically, Petitioner directs
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`attention to paragraphs 64–67 and Figures 9–12 of MacLean (Pet. 22–23),
`
`and explains that the withdrawing issuer (entity) pays transaction center 120
`
`an associated cash value of each point withdrawn, which then pays the
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`depositing issuer (commerce partner) an associated cash value per point
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`deposit.
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`In a similar vein, Patent Owner argues that there is no fixed credits-to-
`
`funds ratio that is agreed upon by the commerce partner. Prelim. Resp. 40–
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`41. Claim 8 requires a commerce partner to agree to permit transfers or
`
`conversions of quantities of non-negotiable credits to entity independent
`
`funds in accordance with a fixed credits-to-funds ratio. Ex. 1501, 17:5–8.
`
`Again, Patent Owner’s arguments are premised on the notion that the claims
`
`require a direct link between the commerce partner and entity. As
`
`explained, claim 8 does not require a direct link. In any event, Petitioner
`
`accounts for this claim limitation and directs attention to paragraph 23 of
`
`MacLean, for example, which describes “a system and method . . .
`
`permitting the customer to set a first number of first points to be exchanged
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`and permitting the first and second point issuers to set [i.e., agree to] the
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`point withdrawal and deposit rates of their first and second points
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`respectively.” Pet. 20–21. Patent Owner has not explained sufficiently why,
`
`for example, such description fails to meet the disputed limitation.
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`We also have considered Patent Owner’s arguments regarding the
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`“wherein the terms[-]of[-]use of the different loyalty program permit
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`transfers or conversions of non-negotiable credits to entity independent
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`funds” clause of claim 8. Prelim. Resp. 42–43. Specifically, Patent Owner
`
`argues that the terms-of-use cited in the Petition to MacLean is between the
`
`transaction center and user; not between a loyalty program and a user. Id.
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`Petitioner cites, however, to the Declaration of Mr. Calman who explains
`
`that, at the time of the invention, a person of ordinary skill in the art would
`
`have understood that MacLean’s point exchange system demonstrates that
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`terms-of-use of the commerce partner’s different loyalty program permit
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`transfers or conversions as claimed. Ex. 1502 ¶ 110. Patent Owner argues
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`that that testimony logically is flawed and not supported by evidence, but
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`does not explain cogently why that is so. Id. At this juncture, we are
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`persuaded that Petitioner has accounted sufficiently for the limitation.
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`Claim 8 recites “the computer redeeming at least a portion of the new
`
`quantity of entity independent funds in exchange for user selected ones of
`
`the commerce partner goods or user selected ones of the commerce partner
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`services.” With respect to this limitation, Patent Owner argues that there is
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`no e-commerce server taught by MacLean. Prelim. Resp. 43–44. Patent
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`Owner’s argument is misplaced as claim 8 does not recite an e-commerce
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`server. In addition, Patent Owner argues that the Petition’s citations to the
`
`background section of MacLean along with citations from the MacLean
`
`invention (Pet. 27) to meet the disputed limitation is problematic, as the
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`differences between the two are not reconciled and adverse to one another.
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`Id. We have reviewed the Petition and the citations to the different portions
`
`of MacLean. Nothing seems unusual in that regard. Moreover, Patent
`
`Owner does not explain why the differences between the background section
`
`and the invention described in MacLean are adverse to each other.
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`A reference does not teach away if it merely expresses a general
`
`preference for an alternative invention but does not “criticize, discredit, or
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`otherwise discourage” investigation into the invention claimed. In re
`
`Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Background Section of
`
`MacLean discusses a number of existing web services for converting points
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`from a single loyalty program for negotiable credits. Ex. 1504 ¶¶ 2–12.
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`MacLean’s disclosed invention provides additional improvements to those
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`services by allowing users to accumulate or convert the points from various
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`loyalty programs into those of a single program. Id. ¶ 41. Therefore, we do
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`not discern that the Background Section of MacLean criticizes, discredits or
`
`otherwise discourages investigation into MacLean’s disclosed invention.
`
`Patent Owner does not argue claim 9, which depends from claim 8,
`
`separately, but does make separate arguments with respect to claims 10–12,
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`which directly depend from independent claim 8. We have considered
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`Patent Owner’s arguments with respect to claims 10–12 and the elements of
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`those claims allegedly not accounted for, but determine that such arguments
`
`are not persuasive. Patent Owner does not account properly for the
`
`combination of the asserted prior art. Instead, Patent Owner either discusses
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`prior art that was not applied by the Petitioner (Prelim. Resp. 12 discussing
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`the combination of MacLean and Postrel, where Postrel was not relied upon
`
`in the challenge of claim 12), or attacks the references individually, without
`
`considering the combination of the references (Prelim. Resp. 44–45).
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`Patent Owner argues that the Petition fails to provide a proper
`
`reasoning to combine MacLean and Sakakibara for claims 8–12. Id. at 14–
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`18. We have considered all of Patent Owner’s arguments in that regard, but
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`determine that such arguments are not persuasive. For example, Patent
`
`Owner’s argument that MacLean and Sakakibara cannot be combined
`
`physically or bodily incorporated, one into the other, is misplaced. See, e.g.,
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`Prelim. Resp. 14 (“MacLean . . . require[s] two different LPs to
`
`independently establish a deposit and withdrawal rate . . . Sakakibara is not
`
`intended to function using such a rate—any modification of Sakakibara
`
`requiring this modification is unsupported/unsupportable. No proper
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`motivation to modify the teachings of MacLean using Sakakibara is
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`12
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`provided in the petition.”) and 18 (arguing that because MacLean’s system
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`includes elements that aren’t a part of Sakakibara the two references are not
`
`combinable). The test for obviousness is what the combined teachings of the
`
`references would have suggested to a person of ordinary skill in the art, not
`
`whether one reference may be bodily incorporated into the structure of
`
`another reference. In re Keller, 642 F.2d 413 (CCPA 1981). Patent
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`Owner’s remaining arguments are based on a narrow view of MacLean and
`
`Sakakibara, which do not take into account the level of skill in the art, the
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`expert declaration presented by Petitioner, or the law of obviousness. Based
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`on the record before us, we are persuaded that Petitioner has identified
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`sufficient reasoning for the proposed combination of MacLean and
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`Sakakibara with respect to claims 8–12. Pet. 15–20; Ex. 1502, ¶¶ 98, 99,
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`119–122.
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`For the foregoing reasons, and having considered the Petition and all
`
`of the arguments presented in the Preliminary Response, we determine that
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`Petitioner has demonstrated a reasonable likelihood of prevailing on its
`
`assertions that claims 8–12 are unpatentable over the combination of
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`MacLean and Sakakibara.
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`D. Obviousness of Claims over MacLean, Sakakibara and Postrel
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`Petitioner contends that claims 1–7 and 13–20 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over MacLean, Sakakibara, and Postrel. Pet.
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`30–60. Independent claims 1 and 13 are similar to independent claim 8.
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`Petitioner accounts for the differences and limitations found in independent
`
`claims 1 and 13 that are not in independent claim 8. Id. at 32–35.
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`Moreover, to support its contention that claims 1–7 and 13–20 would have
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`been obvious over MacLean, Sakakibara, and Postrel, Petitioner provides
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`detailed explanations as to how the combination of prior art meets each
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`claim limitation. Id. Petitioner also relies upon a Declaration of Matthew
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`Calman (Ex. 1502) for support.
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`Patent Owner counters that the combination of references does not
`
`render claims 1–7 and 13–20 obvious, as the prior art does not describe
`
`certain claim limitations and Petitioner fails to provide sufficient rationale to
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`combine the prior art similar to the arguments made in connection with
`
`claims 8–12. Prelim. Resp. We begin our discussion with a brief summary
`
`of Postrel, including how Postrel is applied by Petitioner, and then address
`
`arguments presented by Patent Owner that differ from the arguments already
`
`addressed.
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`Postrel describes a system in which a user may redeem reward points
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`earned with a merchant, or may redeem the points with another merchant
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`through an exchange network. The user additionally may aggregate reward
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`points with those of other merchants into a central exchange account and
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`then redeem the points for goods or services from any approved merchant on
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`the network. Ex. 1503, Abstract. For independent claims 1 and 13,
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`Petitioner relies on Postrel for its description with respect to funds that are
`
`redeemable under terms-of-use. See, e.g., Pet. 41, 43, 52, and 54. In
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`particular, Petitioner relies on the description found at paragraph 32 of
`
`Postrel that “Fig. 12 illustrates a simple database format wherein each
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`merchant and user under that merchant has a record which indicates how
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`many points are in the account, as well as other optional information (such
`
`as par value of points, restrictions on use, etc.).” Id.
`
`14
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`IPR2015-00122
`Patent 8,523,063 B1
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`For independent claim 13, Petitioner additionally relies on Postrel for
`
`
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`its description of a processor. See, e.g., Pet. 48–49. In particular, Petitioner
`
`relies on the description found at paragraph 68 of Postrel of a
`
`processing means . . . adapted to allow the user to request and
`exchange consideration for rewards from reward servers . . . to
`coordinate the exchange of consideration and increase or
`decrease the user exchange accounts stored in memory in
`response to actions performed by the user computer, reward
`server and merchants.
`
`Id., Ex. 1503, ¶ 68.
`
`Petitioner also relies on Postrel with respect to dependent claim 7 and
`
`the limitation of that claim of redeeming of at least a portion of the entity
`
`independent funds. Pet. 36–37 and 47–48. Petitioner relies on MacLean and
`
`Sakakibara for the remaining limitations found in claims 1–7 and 13–20,
`
`similar to how the references were applied to claims 8–12 discussed above.
`
`Id. at 30–60. Lastly, Petitioner relies on Sakakibara for the claim 13
`
`limitation “wherein an agreement exists between the entity and the
`
`commerce partner that permits transfers or conversions of non-negotiable
`
`credits to entity independent funds . . . .” Id. at 55.
`
`Patent Owner makes arguments with respect to claims 1–5 that are
`
`similar to those presented in connection with claims 8–12. Prelim. Resp. 5–
`
`14, 24–36. In our analysis above, we have considered those arguments, and
`
`we have concluded that Patent Owner’s arguments are unavailing.
`
`Claim 6 depends from claim 1 and recites “wherein the computer
`
`performs the establishing, detecting, and subtracting within a single human-
`
`to-machine interaction session.” Claim 7 recites similar limitations. We
`
`have considered Patent Owner’s arguments that, for example, because
`
`15
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`IPR2015-00122
`Patent 8,523,063 B1
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`MacLean teaches that an exchange can take 24–72 hours to complete,
`
`
`
`MacLean does not meet claim 6 or claim 7. Prelim. Resp. 36–39. Those
`
`arguments are unavailing. Patent Owner’s arguments are not commensurate
`
`in scope with what is claimed. The claims do not require that the
`
`establishing, detecting, and subtracting, for example, be performed within a
`
`set period of time. Moreover, we have reviewed the Petition with respect to
`
`claims 6 and 7 and are persuaded by Petitioner’s position. Pet. 35–37, 47–
`
`48. Petitioner explains that, for example, MacLean depicts establishing,
`
`detecting, and subtracting, all occurring within a single web-session. Id.
`
`(citing Ex 1504 ¶¶ 49, 50, 57). We have considered the portions of
`
`MacLean to which we are directed, and at this stage of the proceeding, we
`
`are satisfied that the combination of MacLean, Sakakibara, and Postrel
`
`render obvious the limitations of claims 6 and 7.
`
`Claim 13 recites “wherein an agreement exists between the entity and
`
`the commerce partner that permits transfers or conversions of non-negotiable
`
`credits.” This identical language is not found in either of claim 1 or
`
`independent claim 8. Petitioner recognizes this difference, however, and
`
`relies on Sakakibara for its description of contracts setting exchange rates
`
`between first and second business entities participating in the exchanging of
`
`points. Pet. 55. Claim 13 also recites “wherein the commerce partners
`
`goods or commerce partner services are not in the restricted list of goods or
`
`services.” We are persuaded at this stage of the proceeding that Petitioner
`
`sufficiently accounts for this limitation by directing attention to the passage
`
`in MacLean that explains a customer may exchange points issued by an
`
`airline for those issued by a credit card company program where the credit
`
`card company is not subject to the airlines restricted list of goods, such as an
`
`16
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`IPR2015-00122
`Patent 8,523,063 B1
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`airline ticket. Id. at 54–55. We have considered Patent Owner’s arguments
`
`
`
`regarding these claim 13 limitations and determine that such arguments are
`
`based on a narrow view of MacLean, and the combination of MacLean with
`
`Sakakibara and Postrel. For example, Patent Owner argues that there is no
`
`agreement between an entity and a commerce partner in MacLean. Prelim.
`
`Resp. 46. The argument is misplaced, as Petitioner relies on Sakakibara for
`
`its description of an agreement between two parties. Pet. 55. In addition,
`
`we determine that Patent Owner’s additional arguments with respect to
`
`claim 13 are not persuasive in light of the level of skill of a person in this art,
`
`the expert declaration presented by Petitioner, or the law of obviousness.
`
`Based on the record before us, we are persuaded that Petitioner has
`
`identified sufficient reasoning for the proposed combination of MacLean,
`
`Sakakibara and Postrel with respect to claim 13. Pet. 48–58; Ex. 1502, ¶¶
`
`122–156.
`
`Patent Owner’s remaining arguments with respect to claims 13–20 are
`
`similar to those presented in connection with claims 8–12. Prelim. Resp. 5–
`
`20, 48–52. In our analysis above, we have considered those arguments, and
`
`we have concluded that Patent Owner’s arguments are unavailing.
`
`Lastly, Patent Owner’s argument (Prelim. Resp. 3–5) that we should
`
`give deference to a prior decision, determining not to institute review of U.S.
`
`Patent No. 8,511,550 (“the ’550 patent”) in CBM2014-00096, and not
`
`institute review of the ’063 patent because of that decision, is not persuasive.
`
`The prior decision is not binding on us, and in any event, addresses a
`
`different patent, different claims, and a different combination of prior art.
`
`For the foregoing reasons, and having considered the Petition and all
`
`of the arguments presented in the Preliminary Response, we determine that
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`17
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`IPR2015-00122
`Patent 8,523,063 B1
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`Petitioner has demonstrated a reasonable likelihood of prevailing on its
`
`
`
`assertions that claims 1–7 and 13–20 are unpatentable over the combination
`
`of MacLean, Sakakibara, and Postrel.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented establishes a reasonable likelihood that Petitioner would prevail in
`
`showing that claims 1–20 of the ’063 patent are unpatentable. At this stage
`
`of the proceeding, the Board has not made a final determination with respect
`
`to the patentability of the challenged claims.
`
`In consideration of the foregoing, it is
`
`IV. ORDER
`
`ORDERED that an inter partes review is instituted as to claims 1–20
`
`of the ’063 patent on the ground that claims 8–12 would have been obvious
`
`over MacLean and Sakakibara under 35 U.S.C. § 103(a), and claims 1–7 and
`
`13–20 would have been obvious over MacLean, Sakakibara, and Postrel
`
`under 35 U.S.C. § 103(a);
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’063 patent is instituted with trial commencing on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is given of the institution of the trial; and
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified immediately above, and no other ground is authorized.
`
`18
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`IPR2015-00122
`Patent 8,523,063 B1
`
`PETITIONER:
`
`
`Robert H. Fischer
`AskeladdenIPR@fchs.com
`
`Frank A. DeLucia
`AskeladdenIPR@fchs.com
`
`Stephen Yam
`AskeladdenIPR@fchs.com
`
`Justin Oliver
`joliver@fchs.com
`
`PATENT OWNER:
`
`Brian Buchheit
`bbuchheit@gmail.com
`
`
`Sean McGhie
`Sean.mcghie@me.com
`
`
`
`19
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