Trials@uspto.gov Paper No. 59
`571-272-7822
`
`
`
`
` Filed: March 17, 2016
`
`
`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 IPR2015-00123
`Patent 8,523,063 B1
`____________
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`I. INTRODUCTION
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`
`shown by a preponderance of the evidence that claims 1–20 of U.S. Patent
`
`No. 8,523,063 B1 are unpatentable.
`
`
`
`
`571-272-7822
`
`
`
`
` Filed: March 17, 2016
`
`
`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 IPR2015-00123
`Patent 8,523,063 B1
`____________
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`I. INTRODUCTION
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`
`shown by a preponderance of the evidence that claims 1–20 of U.S. Patent
`
`No. 8,523,063 B1 are unpatentable.
`
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`
`A. Procedural History
`
`
`
`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. 1001, “the ’063
`
`patent”). Paper 1 (“Pet.”). Patent Owner, Sean I. McGhie and Brian K.
`
`Buchheit,1 filed a Preliminary Response. Paper 15 (“Prelim. Resp.”). Upon
`
`consideration of the Petition and Preliminary Response, on April 23, 2015,
`
`we instituted an inter partes review of claims 1–20 pursuant to 35 U.S.C.
`
`§ 314. Paper 36 (“Dec.”).
`
`In the Scheduling Order, which sets times for taking action in this
`
`proceeding, we notified the parties that “any arguments for patentability not
`
`raised in the [Patent Owner] response will be deemed waived.”2 Patent
`
`Owner, however, did not file a Patent Owner Response. To ensure clarity in
`
`our record, we required Patent Owner to file a paper, indicating whether it
`
`
`1 Patent Owner is represented by inventor Brian Buchheit, who is an attorney
`and registered to practice before the Office. At times during the proceeding,
`Mr. Buchheit indicated that he was representing “Patent Owner” (Mr.
`Buchheit and Mr. McGhie), while at other times Mr. Buchheit indicated that
`he was not representing Mr. McGhie, but rather acting pro se. Papers 4, 39,
`53; Ex. 2055. Over the course of the proceeding, we have provided
`instructions to Patent Owner on filing papers, authorized Patent Owner leave
`to refile papers and file papers beyond due dates, and expunged other Patent
`Owner papers that were not authorized, not in compliance with Board rules,
`and/or contained arguments beyond what was authorized. See, e.g., Papers
`8, 9, 11, 14, 39 (and Exhibit 3001), 40, and 56.
`
`2 See Paper 37, 3; see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012) (a patent owner’s “response should identify
`all the involved claims that are believed to be patentable and state the basis
`for that belief”).
`
`2
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`had abandoned the contest.3 Paper 54. Patent Owner indicated that it had
`
`
`
`not abandoned the contest. Paper 56. Patent Owner, however, did not seek
`
`authorization to belatedly file a Patent Owner Response, nor indicate that it
`
`wished to file such a document. We have before us, therefore, the Petition
`
`with no Patent Owner Response. Nonetheless, Petitioner bears the burden to
`
`show, by a preponderance of the evidence, that the challenged claims are
`
`unpatentable.
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1–20 of the ’063 patent are
`
`unpatentable.
`
`B. The ’063 Patent
`
`The ’063 patent relates to the automatic conversion of non-negotiable
`
`credits to funds. Ex. 1001, 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.
`
`
`3 An abandonment of the contest is construed as a request for adverse
`judgment. 37 C.F.R. § 42.73(b)(4). A request for adverse judgment, on
`behalf of a Patent Owner, would result in the cancellation of the involved
`claims of a challenged patent, e.g., without consideration of the Petition, etc.
`On the other hand, when a Patent Owner does not abandon the contest, but
`chooses not to file a Patent Owner Response, the Board generally will render
`a final written decision, e.g., based on consideration of the Petition, etc. See
`37 C.F.R. § 42.71(a).
`
`
`3
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`
`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-fund ratio, wherein the entity
`agrees to compensate a commerce partner by paying an 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 for consumer 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 loyalty
`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
`
`4
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`
`quantity of entity independent funds using the fixed credits-to-
`funds ratio.
`
`
`
`Ex. 1001, 16:5–39.
`
`D. Grounds of Unpatentability
`
`We instituted an inter partes review on the grounds that claims 1–5,
`
`8–10, and 12 are unpatentable under 35 U.S.C. § 103(a) based on Postrel4
`
`and Sakakibara5 and claims 6, 7, 11, and 13–20 are unpatentable under
`
`35 U.S.C. § 103(a) based on Postrel, Sakakibara, and MacLean.6 Dec. 18.
`
`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, 793 F.3d 1268, 1279 (Fed. Cir. 2015) (“Congress
`
`implicitly approved the broadest reasonable interpretation standard in
`
`enacting the AIA,” and “the standard was properly adopted by PTO
`
`regulation.”), cert. granted sub nom., Cuozzo Speed Techs. LLC v. Lee, 136
`
`S. Ct. 890 (mem.) (2016). 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
`
`
`4 U.S. Patent Application Publication 2005/0021399 A1, published Jan. 27,
`2005 (Ex. 1503) (“Postrel”).
`5 U.S. Patent No. 6,721,743 B1, issued Apr. 13, 2004 (Ex. 1505)
`(“Sakakibara”).
`6 U.S. Patent Application Publication 2002/0143614 A1, published Oct. 3,
`2002 (Ex. 1504) (“MacLean”).
`
`5
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`
`
`Cir. 2007).
`
`Petitioner proposes constructions for the following claim terms:
`
`“entity,” “non-negotiable credits,” and “entity independent funds,” which are
`
`recited at least in independent claims 1, 8, and 13. Pet. 6–9. In our Decision
`
`to Institute, we determined that Petitioner’s proposed constructions are
`
`consistent with the broadest reasonable construction, and adopted them.
`
`Dec. 5–6. Neither party has indicated that our constructions are improper
`
`and we do not perceive any reason or evidence that now compels any
`
`deviation from our initial constructions. Accordingly, the following claim
`
`constructions apply to this Decision:
`
`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
`
`
`
`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
`
`6
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`(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, 579
`
`F.2d 86, 91 (CCPA 1978).
`
`C. Obviousness of Claims over Postrel and Sakakibara
`
`Petitioner contends that claims 1–5, 8–10, and 12 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Postrel and Sakakibara. Pet. 15–
`
`40. 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 the Declaration of Matthew Calman (Ex. 1002) to
`
`support its position.
`
`Postrel describes a system in which a user may redeem reward or
`
`loyalty points earned with a merchant, or may redeem the points with
`
`7
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`another merchant through an exchange network. Ex. 1003, Abstract. The
`
`
`
`user additionally may aggregate reward points with those of other merchants
`
`into a central exchange account and then redeem the points for goods or
`
`services from any approved merchant on the network. Id. ¶¶ 10, 45–50. As
`
`an example, Postrel describes loyalty programs that issue or award loyalty or
`
`reward points such as Smith Pizzeria, Blockbuster, and GAP. Id. ¶ 30. A
`
`customer may redeem, for example, Smith Pizzeria reward points by
`
`“indicat[ing] this to the merchant at the point of sale (which may be over a
`
`web site or physically at the restaurant).” Id. ¶ 41. A customer may also
`
`exchange individual merchant loyalty points, for example, Smith Pizzeria
`
`reward points and Blockbuster points, into exchange points (e.g., VISA
`
`points), to use aggregated exchange points “for the purpose of purchasing an
`
`item that he may otherwise be unable to obtain with the points aggregation.”
`
`Id. ¶¶ 30, 46.
`
`Sakakibara describes a point managing system that provides a
`
`web-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. 1005, 1:57–2:5, 7:7–10, Fig. 9. Sakakibara
`
`discloses that, prior to conversion, the first entity’s loyalty points only are
`
`redeemable at the first entity and the second entity does not accept the points
`
`issued from the first entity, as payment for the second entity’s goods or
`
`services. Id. at 12:64–13:30. In short, the first entity’s loyalty points, prior
`
`to conversion, are non-negotiable.
`
`Petitioner relies on Postrel to meet all of the independent claim 1 and
`
`independent claim 8 limitations with the exception of “non-negotiable
`
`credits.” Pet. 20–27, 30–38. We agree with Petitioner’s showing, and adopt
`
`8
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`
`it as our own, that Postrel discloses all of the claim 1 and claim 8 limitations,
`
`with the exception of the “non-negotiable credits.” For example, each of
`
`claim 1 and independent claim 8, recite “wherein the non-negotiable credits
`
`are loyalty points of a loyalty program of the entity” and “wherein the entity
`
`independent funds are loyalty points of a different loyalty program of the
`
`commerce partner.” Claim 1, further recites a computer for the loyalty
`
`program of the entity. In the Petition, Petitioner directs attention to
`
`paragraph 30 of Postrel and explains that the description therein of the
`
`Pizzeria “Smith Pizza Points” meets the limitation of credits being points of
`
`a loyalty program of the Pizzeria (an entity). Pet. 21–25, 32. Petitioner
`
`further accounts for the entity independent funds (loyalty points) of a
`
`different loyalty program of the commerce partner (e.g., VISA merchant).
`
`Id. at 22–23, 32–33; see, e.g., Ex. 1002 ¶¶ 60, 61, 105, 106. Moreover,
`
`Petitioner directs attention to Postrel’s description of an acquiring bank
`
`(central server or computer) acting on behalf of the loyalty program of the
`
`entity (e.g., the Pizzeria) that establishes an account for non-negotiable
`
`credits of a user. Pet. 24. We agree with Petitioner that Postrel describes an
`
`entity loyalty program, a commerce partner loyalty program, and the
`
`computer for the loyalty program of the entity as recited in claims 1 and 8.
`
`Petitioner also relies on Postrel for its description with respect to
`
`funds that are “redeemable under terms-of-use” as recited in claims 1 and 8.
`
`See, e.g., Pet. 23, 35. For example, Petitioner relies on at least the
`
`description found at paragraph 32 of Postrel that “Fig. 12 illustrates a simple
`
`database format wherein each merchant and user under that merchant has a
`
`record which indicates how many points are in the account, as well as other
`
`optional information (such as par value of points, restrictions on use, etc.).”
`
`9
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`(Emphasis added). We agree with Petitioner that Postrel describes the
`
`
`
`“redeemable under terms-of-use” limitation of claims 1 and 8.
`
`Claims 1 and 8 each recite non-negotiable credits. Postrel recognizes
`
`that, absent an exchange system, redeeming loyalty points is restricted to
`
`goods or services of the entity that issued the points. Ex. 1003 ¶¶ 5, 41.
`
`Moreover, we agree with Petitioner that it was well known in the art that
`
`loyalty points, prior to conversion, are non-negotiable credits, as explicitly
`
`described by Sakakibara (Ex. 1005, 12:64–13:30). Pet. 17. This is
`
`consistent with the description in the ’063 patent regarding the state of the
`
`art at the time of the invention, which indicates that “[e]ntities often reward
`
`consumers for utilizing their services with . . . non-negotiable credits.” Ex.
`
`1001, 1:32–35 (emphases added). Therefore, we are satisfied that one of
`
`ordinary skill in the art would have recognized that, in light of Sakakibara,
`
`Postrel’s loyalty points, prior to conversion, are non-negotiable credits.
`
`For claims 2–5, each of which depend directly from claim 1, and
`
`claims 9, 10, and 12, each of which depend directly from claim 8, Petitioner
`
`relies on Postrel, along with the supporting testimony of Mr. Calman (Ex.
`
`1002) to meet the additional limitations of those claims. Pet. 27–30, 38–40.
`
`We agree with Petitioner’s showing, and adopt it as our own, that Postrel in
`
`combination with Sakakibara discloses the additional limitations of claims
`
`2–5, 9, 10, and 12.
`
`We also determine that Petitioner has identified sufficient reasoning
`
`for the proposed combination of Postrel and Sakakibara with respect to
`
`claims 1–5, 8–10, and 12. Pet. 15–19; Ex. 1502 ¶¶ 52–54, 99. For example,
`
`Petitioner argues that because both Postrel and Sakakibara relate to
`
`conversion of loyalty program points, one of ordinary skill in the art would
`
`10
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`have recognized that Sakakibara’s teachings are applicable towards the
`
`
`
`system of Postrel. Pet. 17. We agree with, and adopt as our own,
`
`Petitioner’s rationale. “[I]f a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using the technique is obvious
`
`unless its actual application is beyond his or her skill.” KSR, 550 U.S. at
`
`417.
`
`In summary, we have reviewed the Petition and the supporting
`
`evidence, and adopt as our own Petitioner’s findings, as well as its rationale
`
`for combining MacLean and Sakakibara, and conclude that Petitioner has
`
`shown by a preponderance of the evidence that claims 1–5, 8–10, and 12 are
`
`unpatentable over the combination of Postrel and Sakakibara.
`
`D. Obviousness of Claims over Postrel, Sakakibara, and MacLean
`
`Petitioner contends that claims 6, 7, 11, and 13–20 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Postrel, Sakakibara, and MacLean.
`
`Pet. 40–59. Independent claim 13 is similar to independent claims 1 and 8.
`
`Petitioner accounts for the differences and limitations found in independent
`
`claim 13 that are not in independent claims 1 and 8. Id. at 43–44.
`
`Moreover, to support its contention that claims 6, 7, 11, and 13–20 would
`
`have been obvious over Postrel, Sakakibara, and MacLean, Petitioner
`
`provides detailed explanations as to how the combination of prior art meets
`
`each claim limitation. Id. at 40–59. Petitioner also relies on the Declaration
`
`of Matthew Calman (Ex. 1002) for to support its position.
`
`MacLean describes a system and method for managing and
`
`exchanging reward or loyalty points (credits) from one Loyalty Program
`
`(LP) to another. Ex. 1004 ¶ 40, Abstract. Figure 1 of MacLean is
`
`11
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`reproduced below and shows a functional diagram of a points exchange
`
`
`
`system.
`
`
`
`
`
`Figure 1 of MacLean shows a functional diagram of a points exchange
`
`
`
`system.
`
`Point management system 100 facilitates interaction between
`
`customer 110, transaction center 120, and issuers 130a-c. Id. ¶ 40. Points
`
`managed by system 100 may take the form of a variety of Loyalty Program
`
`(LP) points such as those issued by airlines, hotels, financial entities, e.g.,
`
`credit cards, and networks, e.g., portal web sites in the Internet. Id. Each
`
`kind of point is issued and redeemed by a different LP and may have a
`
`different value or liability to its LP. Point management system 100 permits
`
`a customer to exchange points from one LP to another. Id. ¶ 41. As
`
`examples, a customer may exchange points issued by American Airlines for
`
`those issued by American Express Card, or a customer may transfer points
`
`issued by any number of LPs to a single LP, so that the customer may
`
`redeem its collected points for the rewards offered by the single LP. Id.
`
`
`
`MacLean describes the transfer or conversion of points using an
`
`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
`
`12
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`
`on “calculate advanced xchange” button 634, which results in the calculation
`
`of the exchange rates for the points transaction (step 511). Id. ¶ 52.
`
`For independent claim 13, Petitioner relies on MacLean for its
`
`description of entity independent funds, in the form of points, having been
`
`earned through activities related to a different loyalty program (that of a
`
`commerce partner). See, e.g., Pet. 43–44, 50. In particular, Petitioner relies
`
`on the description found at paragraph 57 of MacLean that “points are added
`
`to the customer’s account typically when the customer purchases some
`
`goods or services.” Id. at 50, Ex. 1004 ¶ 57. We agree that MacLean meets
`
`the claim 13 entity independent funds limitation.
`
`Petitioner also relies on MacLean with respect to dependent claims 6,
`
`7, and 20 which recite a single human-to-machine interaction session, by
`
`directing attention to MacLean’s description of the various functions of
`
`those claims occurring in a web session. Pet. 41–42, 44–46, 58–59.
`
`Petitioner relies on Postrel and Sakakibara for the remaining limitations
`
`found in claims 6, 7, 11, and 13–20, similar to how the references were
`
`applied to claims 1–5, 8–10, and 12 discussed above. Id. at 40–59. Lastly,
`
`Petitioner relies on Postrel for the claim 13 limitation “wherein the
`
`commerce partners goods or commerce partner servicers are not in the
`
`restricted list of goods or services” that is not in either of independent claims
`
`1 or 8. Id. at 51.
`
`We are persuaded by Petitioner’s showing, and adopt it as our own,
`
`that Postrel, Sakakibara, and MacLean disclose all of the limitations of
`
`claims 6, 7, 11, and 13–20. For example, claim 13 recites “wherein the
`
`commerce partners goods or commerce partner servicers are not in the
`
`restricted list of goods or services.” This identical language is not found in
`
`13
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`either of claim 1 or independent claim 8. We are satisfied that Petitioner
`
`
`
`sufficiently accounts for this limitation by directing attention to the passage
`
`in Postrel that describes a user making purchases from a VISA catalog
`
`which includes goods that are not in the restricted list of goods or services
`
`provided by the entity, e.g., pizza. Id.
`
`We also are satisfied that Petitioner has identified sufficient reasoning
`
`for the proposed combination of Postrel, Sakakibara, and MacLean with
`
`respect to claims 6, 7, 11, and 13–20. See, e.g., Pet. 42–44 (citing various
`
`paragraphs from Ex. 1002). For example, independent claim 13 requires
`
`entity independent funds, in the form of points, having been earned through
`
`activities related to a different loyalty program (that of a commerce partner).
`
`As explained above, Petitioner relies on MacLean for its description found at
`
`paragraph 57 of MacLean that “points are added to the customer’s account
`
`typically when the customer purchases some goods or services.” Id. at 50,
`
`Ex. 1004 ¶ 57. Petitioner argues that combining MacLean with Postrel
`
`allows a user of Postrel’s system to accumulate all of his aggregated or
`
`exchange points into the same account as points earned with the commerce
`
`partner. Pet. 44. Petitioner further contends that because Postrel and
`
`MacLean both involve the processing of loyalty program points, a person of
`
`ordinary skill in the art would have appreciated that the conventional
`
`approaches to earning loyalty points, such as taught by MacLean, are
`
`applicable to the loyalty programs handled by Postrel’s system. Id. (citing
`
`Ex. 1002 ¶¶ 147–149). We agree with, and adopt as our own, this as well as
`
`all of the rationales Petitioner provides for combining Postrel, Sakakibara,
`
`and MacLean.
`
`14
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`
`In summary, we have reviewed the Petition and the supporting
`
`
`
`evidence, and adopt as our own Petitioner’s findings, as well as its rationale
`
`for combining Postrel, Sakakibara, and MacLean, and conclude that
`
`Petitioner has shown by a preponderance of the evidence that claims 6, 7,
`
`11, and 13–20 are unpatentable over the combination of Postrel, Sakakibara,
`
`and MacLean.
`
`III. CONCLUSION
`
`For the foregoing reasons, we conclude that Petitioner has
`
`demonstrated, by a preponderance of the evidence, that claims 1–5, 8–10,
`
`and 12 are unpatentable under 35 U.S.C. § 103(a) as obvious over Postrel
`
`and Sakakibara, and claims 6, 7, 11, and 13–20 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Postrel, Sakakibara, and MacLean.
`
`In consideration of the foregoing, it is
`
`IV. ORDER
`
`ORDERED that claims 1–20 of the ’063 patent are held unpatentable;
`
`and
`
`FURTHER ORDERED that, because this is a Final Written Decision,
`
`parties to the proceeding seeking judicial review of the decision must
`
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`15
`
`
`
`
`
`
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`
`
`PETITIONER:
`
`Robert Fischer
`Frank DeLucia
`Stephen Yam
`Justin Oliver
`AskeladdenIPR@fchs.com
`joliver@fchs.com
`
`
`
`PATENT OWNER:
`
`Brian Buchheit
`bbuchheit@gmail.com
`
`
`Sean McGhie
`Sean.mcghie@me.com
`
`
`
`16
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
