Paper 36
`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 IPR2015-00123
`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. 1001, “the ’063
`
`patent”). Paper 1 (“Petition” or “Pet.”). Patent Owner, Sean I. McGhie and
`
`Brian K. Buchheit, filed a Preliminary Response. Paper 15 (“Prelim.
`
`
`
`
`
`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 IPR2015-00123
`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. 1001, “the ’063
`
`patent”). Paper 1 (“Petition” or “Pet.”). Patent Owner, Sean I. McGhie and
`
`Brian K. Buchheit, filed a Preliminary Response. Paper 15 (“Prelim.
`
`
`
`
`
`
`IPR2015-00123
`Patent 8,523,063 B1
`
`
`Resp.”). We 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
`
`IPR2015-00122 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. 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.
`
`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
`
`2
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`
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`IPR2015-00123
`Patent 8,523,063 B1
`
`
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`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. 1001, 16:5–39.
`
`
`
`
`
`
`
`
`
`
`
`3
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`IPR2015-00123
`Patent 8,523,063 B1
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`D. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts that claims 1–20 are unpatentable based on the
`
`following grounds:
`
`References
`
`Basis
`
`Challenged Claims
`
`Postrel1 and Sakakibara2
`
`§ 103(a)
`
`1–5, 8–10, and 12
`
`Postrel, Sakakibara, and MacLean3
`
`§ 103(a)
`
`6, 7, 11, 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, 1281–1282 (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 2005/0021399 A1, published Jan. 27,
`2005 (Ex. 1003) (“Postrel”).
`2 U.S. Patent No. 6,721,743 B1, issued Apr. 13, 2004 (Ex. 1005)
`(“Sakakibara”).
`3 U.S. Patent Application Publication 2002/0143614 A1, published Oct. 3,
`2002 (Ex. 1004) (“MacLean”).
`
`4
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`IPR2015-00123
`Patent 8,523,063 B1
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`Petitioner proposes constructions for the following claim terms:
`
`
`
`independent claims “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 construction for “entity” and “entity independent
`
`funds,” but proposes a slight modification to “non-negotiable credits.”
`
`Prelim. Resp. 16–17. Specifically, Patent Owner proposes that “non-
`
`negotiable credits” means credits which only are accepted per terms of the
`
`loyalty program of the entity. Id. Patent Owner has not directed attention to
`
`where in the Specification of the ’063 patent Patent Owner specifically
`
`defined the term the way Patent Owner proposes. Nor has Patent Owner
`
`directed attention to a description in the ’063 patent Specification which
`
`supports the proposed construction. On the other hand, Petitioner directs us
`
`to description in the ’063 patent Specification which supports its proposed
`
`construction for the term “non-negotiable credits.”
`
`We have reviewed Petitioner’s proposed constructions and Patent
`
`Owner’s modification to the construction of “non-negotiable credits” and
`
`determine Petitioner’s constructions are consistent with the broadest
`
`reasonable construction. For purposes of this Decision, we adopt the
`
`following claim constructions:
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
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`IPR2015-00123
`Patent 8,523,063 B1
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`
`
`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 “loyalty program of an entity” means a
`
`program backed by the entity and that “loyalty program of a commerce
`
`partner” means a program backed by the commerce partner. Prelim. Resp.
`
`13. Patent Owner further elaborates by explaining a “loyalty program of an
`
`entity” and a “loyalty program of a commerce partner” means the entity and
`
`the commerce partner are the issuer of points as opposed to a distributor of
`
`points. Id. at 14–16. We have considered the numerous claim terms to
`
`which we are directed that allegedly are consistent with Patent Owner’s
`
`proposed construction (id. at 15), but do not find them to support the
`
`proposed construction. Moreover, Patent Owner has not directed attention
`
`to a description in the ’063 patent Specification outside of the claims which
`
`supports the proposed construction. We have considered those portions of
`
`extrinsic evidence to which Patent Owner directs attention, e.g., Exhibits
`
`2036 and 2037, but do not find them particularly relevant to the meaning of
`
`the claim terms before us. Id. Accordingly, we do not adopt Patent Owner’s
`
`proposed constructions. For purposes of this decision, we need not construe
`
`any further limitations of the claims.
`
`6
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`B. Principles of Law
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`
`
`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, 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–
`
`7
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`Patent 8,523,063 B1
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`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 a Declaration of Matthew Calman (Ex. 1002) for
`
`support.
`
`Patent Owner counters that the combination of Postrel 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. 18–56. We begin our
`
`discussion with a brief summary of Postrel and Sakakibara, and then address
`
`the arguments presented by Patent Owner.
`
`Postrel describes a system in which a user may redeem reward or
`
`loyalty points earned with a merchant, or may redeem the points with
`
`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.”
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`Id. ¶¶ 30, 46.
`
`8
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`IPR2015-00123
`Patent 8,523,063 B1
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`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.
`
`Patent Owner argues that independent claims 1 and 8, and dependent
`
`claims 5 and 12, which depend from claims 1 and 8 respectively, require that
`
`there be a conversion or transfer of loyalty points across loyalty point
`
`boundaries; that the claims require multiple loyalty programs; and that
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`Postrel’s teachings are directed to one loyalty program having multiple
`
`accounts, merchants, and consumers. Prelim. Resp. 31, 35–39, 41–50. The
`
`claims do not recite “conversion or transfer of loyalty points across loyalty
`
`point boundaries,” and, therefore, Patent Owner’s arguments in that regard
`
`are not persuasive.
`
`Moreover, the claims do not require that each of the entity and
`
`commerce partner maintain or conduct its own “loyalty program” on
`
`separate servers as Patent Owner seems to suggest. See, e.g., id. at 32
`
`(arguing that Postrel does not meet the claimed limitations because it
`
`describes a “networked loyalty program system” that uses a single central
`
`server for managing points of different merchants, as opposed to a server
`
`associated with each merchant for managing the merchant’s own loyalty
`
`program reward points.).
`
`9
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`IPR2015-00123
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`Rather, each of claim 1 and independent claim 8, for example, 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.” While claim 1, for
`
`example, recites a computer for the loyalty program of the entity, that does
`
`not mean that the computer only is associated with the entity or is part of the
`
`entity’s infrastructure. 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 non-negotiable credits
`
`being points of a loyalty program of the Pizzeria (an entity). Pet. 21–22, 32.
`
`Petitioner further accounts for the entity independent funds (loyalty points)
`
`of a different loyalty program of the commerce partner (e.g., VISA
`
`merchant). Pet. 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. Id. at 24. Thus, we are persuaded Petitioner has accounted
`
`for the entity loyalty program, the commerce partner loyalty program, and
`
`the computer for the loyalty program of the entity.
`
`Patent Owner argues that Postrel describes negotiable points as
`
`opposed to the claimed non-negotiable credits. Prelim. Resp. 39–41, 46–49.
`
`Patent Owner conflates loyalty points before conversion (non-negotiable)
`
`with those after conversion (negotiable). Notably, Patent Owner’s argument
`
`that Postrel’s points are negotiable is predicated improperly on Postrel’s
`
`discussions regarding post-converted points, and how the exchange system
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`10
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`IPR2015-00123
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`can be configured to allow users to convert their points. Id. (citing Ex. 1003
`
`
`
`¶¶ 36 and 63).
`
`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. We agree with Petitioner that it was well known in the art
`
`that loyalty points, prior to conversion, are non-negotiable credits, as
`
`described by Sakakibara (Ex. 1005, 12:64–13:30). 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 at this stage of the proceeding
`
`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.
`
`Claim 3 depends from claim 1 and requires that the computer for the
`
`loyalty program of the entity performs the conversion operation. Patent
`
`Owner argues that Petitioner’s reliance on merchants with accounts is
`
`misplaced because merchant accounts lack an infrastructure that would
`
`include a computer for performing conversion operations. Prelim. Resp. 43.
`
`This argument is similar to ones made with respect to claims 1, 5, 8, and 12
`
`already discussed. Claim 3, like those claims, does not require the entity to
`
`have its own hardware infrastructure or dedicated computer. For example,
`
`Petitioner accounts for the limitation and explains that Postrel describes a
`
`computer, in the form of an acquiring bank administering the exchange
`
`account and acting “on behalf of” (i.e., for) the merchant (entity) and its
`
`loyalty program. Pet. 18, 28. That the “computer for the loyalty program of
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`11
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`the entity” physically resides with the acquiring bank is of no moment,
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`
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`because claim 3 does not preclude the computer from being shared, for
`
`example, between the entity and the acquiring bank. We have considered
`
`the Petition, along with supporting evidence to which we are directed, and at
`
`this juncture, determine that the combination of Postrel and Sakakibara
`
`render obvious claim 3.
`
`Patent Owner argues that the Petition fails to provide a proper reason
`
`to combine Postrel and Sakakibara for claims 1–5, 8–10, and 12. Id. at 18–
`
`20. We have considered all of Patent Owner’s arguments in that regard, but
`
`determine that such arguments are not persuasive. Patent Owner’s
`
`arguments are based on a narrow view of Postrel and Sakakibara, which do
`
`not take into account the level of skill in the 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 Postrel and Sakakibara with respect to
`
`claims 1–5, 8–10, and 12.
`
`For all of the foregoing reasons, and having considered the Petition
`
`and all of the arguments presented in the Preliminary Response, we
`
`determine that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing on its assertions that claims 1–5, 8–10, and 12 are unpatentable
`
`over the combination of Postrel and Sakakibara.
`
`D. Obviousness of Claims over MacLean, Sakakibara and Postrel
`
`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
`
`12
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`claim 13 that are not in independent claims 1 and 8. Id. at 43–44.
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`
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`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 support.
`
`Patent Owner counters that the combination of references does not
`
`render claims 6, 7, 11, and 13–20 obvious, as the prior art does not describe
`
`certain claim limitations and Petitioner fails to provide sufficient rationale to
`
`combine the prior art similar to the arguments made in connection with
`
`claims 1–5, 8–10, and 12. Prelim. Resp. 20–29. We begin our discussion
`
`with a brief summary of MacLean, including how MacLean is relied on by
`
`Petitioner for certain claim terms, and then address arguments presented by
`
`Patent Owner that differ from the arguments already addressed.
`
`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
`
`reproduced below and shows a functional diagram of a points exchange
`
`system.
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`13
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`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.
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`
`
`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
`
`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 additionally 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.
`
`14
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`IPR2015-00123
`Patent 8,523,063 B1
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`Petitioner also relies on MacLean with respect to dependent claims 6,
`
`
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`7, and 20 which recite a single human-to-machine interaction session, by
`
`directing attention to MacLean’s description of the various functions of
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`those claims occurring in a web session. Pet. 41–42, 44–46, 58–59.
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`Petitioner relies on Postrel and Sakakibara for the remaining limitations
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`found in claims 6, 7, 11, and 13–20, similar to how the references were
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`applied to claims 1–5, 8–10, and 12 discussed above. Pet. 40–59.
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`Claim 13 recites “wherein the commerce partner goods or commerce
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`partner services are not in the restricted list of goods or services.” Petitioner
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`accounts for this limitation by directing attention to the passage in Postrel
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`that describes a user making purchases from a VISA catalog which includes
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`goods that are not in the restricted list of goods or services provided by the
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`entity, e.g., pizza. Id. at 51. We have considered Patent Owner’s arguments
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`regarding these claim 13 limitations (Prelim. Resp. 52–53) and determine
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`that such arguments are based on a narrow view of Postrel, and the
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`combination of Postrel with Sakakibara and MacLean. For example, Patent
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`Owner argues that Postrel only teaches a single loyalty program. We
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`already have addressed why the claims do not distinguish between “a single
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`loyalty program” because the claims do not preclude the sharing of computer
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`infrastructure to manage and administer each merchant’s loyalty program.
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`Based on the record before us, we are persuaded, at this juncture, that
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`Petitioner has identified sufficient reasoning for the proposed combination of
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`Postrel, Sakakibara, and MacLean with respect to claim 13. Pet. 47–55.
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`Patent Owner argues that the Petition fails to provide a proper reason
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`to combine Postrel and MacLean for claims 6, 7, 11, and 13–20. Id. at 20–
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`29. We have considered all of Patent Owner’s arguments in that regard, but
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`15
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`IPR2015-00123
`Patent 8,523,063 B1
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`determine that such arguments are not persuasive. Patent Owner’s
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`arguments are based on a narrow view of Postrel, Sakakibara, and MacLean
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`which do not properly take into account the combination of references in
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`light of the level of skill of a person in this art, the expert declaration
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`presented by Petitioner, or the law of obviousness. Based on the record
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`before us, we are persuaded that Petitioner has identified sufficient reasoning
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`for the proposed combination of Postrel, Sakakibara, and MacLean with
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`respect to claims 6, 7, 11, and 13–20.
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`The remaining arguments that Patent Owner makes with respect to
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`claims 11, 13, 17, and 19 are similar to those presented in connection with
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`claims 1–5, 8–10, and 12. Prelim. Resp. 5–14, 24–36. In our analysis
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`above, we have considered those arguments, and we have concluded that
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`Patent Owner’s arguments are unavailing.
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`Lastly, Patent Owner’s argument (Prelim. Resp. 2, 30–31) that we
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`should give deference to a prior decision, determining not to institute review
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`of U.S. Patent No. 8,511,550 (“the ’550 patent”) in CBM2014-00096, and
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`not institute review of the ’063 patent because of that decision, is not
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`persuasive. The prior decision is not binding on us, and in any event,
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`addresses a different patent, different claims, and a different combination of
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`prior art.
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`For the foregoing reasons, and having considered the Petition and all
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`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
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`assertions that claims 6, 7, 11, and 13–20 are unpatentable over the
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`combination of Postrel, Sakakibara, and MacLean.
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`16
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`III. CONCLUSION
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`For the foregoing reasons, we determine that the information
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`presented establishes a reasonable likelihood that Petitioner would prevail in
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`showing that claims 1–20 of the ’063 patent are unpatentable. At this stage
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`of the proceeding, the Board has not made a final determination with respect
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`to the patentability of the challenged claims.
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`In consideration of the foregoing, it is
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`IV. ORDER
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`ORDERED that an inter partes review is instituted as to claims 1–20
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`of the ’063 patent on the ground that claims 1–5, 8–10, and 12 would have
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`been obvious over Postrel and Sakakibara under 35 U.S.C. § 103(a), and
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`claims 6, 7, 11, and 13–20 would have been obvious over Postrel,
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`Sakakibara and MacLean under 35 U.S.C. § 103(a);
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’063 patent is instituted with trial commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is given of the institution of the trial; and
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`FURTHER ORDERED that the trial is limited to the grounds
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`identified immediately above, and no other ground is authorized.
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`17
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`IPR2015-00123
`Patent 8,523,063 B1
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`PETITIONER:
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`Robert Fischer
`AskeladdenIPR@fchs.com
`
`Frank 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
`
`
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`rvb
`
`18
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`
`
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