Paper 12
`Date: June 4, 2014
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`J. CARL COOPER,
`Patent Owner.
`____________
`
`Case IPR2014-00157
`Patent 7,828,207
`____________
`
`
`Before JAMESON LEE, GEORGE R. HOSKINS, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`Order
`Conduct of Proceedings
`37 C.F.R. § 42.5
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`Page 1 of 10
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`UNITED SERVICES AUTOMOBILE ASSOCIATION
`Exhibit 1009
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`

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`IPR2014-00157
`Patent 7,828,207
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`
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`Introduction
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`
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`On June 3, 2014, an initial conference call was held. The participants of the
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`call were respective counsel for the parties and Judges Lee, Hoskins, and Kalan.
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`Counsel for Petitioner arranged for the services of a court reporter to transcribe the
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`call. Counsel for Patent Owner had objected to the use of a court reporter but
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`withdrew the objection after a brief non-transcribed discussion with the panel.
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`Petitioner should provide a copy of the transcript to Patent Owner as soon as a
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`copy is provided to Petitioner’s counsel.
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`Discussion
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`Only Petitioner filed a list of proposed motions prior to the initial conference
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`call. In its motions list, Petitioner stated that it “reserves the right to seek
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`authorization from the Board, if required, should the need later arise for filing a
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`motion.” (Paper 11) The panel explained to the parties that such language is not
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`helpful and should be avoided. Whatever right a party possesses under the law
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`need not be reserved. Whatever right a party does not possess cannot be created by
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`“reservation.” Inclusion of such “reservation” language causes unnecessary
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`concern for the other party as well as requires effort on all readers to decipher
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`whether anything meaningful has been said. Petitioner agreed to refrain from
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`making such “reservations” in the future in this proceeding.
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`The only item contained in Petitioner’s proposed motions list is a motion to
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`change the date of oral hearing from December 17, 2014, on the basis that the date
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`presents a conflict for the lead attorney for Petitioner. We asked counsel for the
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`parties to present three alternative dates for selection by the Board based on the
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`availability of the judges on the panel and also on the availability of hearing rooms.
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`Counsel for the parties presented these alternative dates: December 10, 2014,
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`2
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`Page 2 of 10
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`

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`IPR2014-00157
`Patent 7,828,207
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`January 12, 2015, and January 14, 2015. None of the proposed alternative dates,
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`however, is available, based on the schedule of the Board’s hearing rooms.
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`The oral hearing will be rescheduled to January 9, 2015. Neither party
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`expressed an issue with respect to Due Dates 1-6 in the Scheduling Order dated
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`May 15, 2014 (Paper 9).
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`Patent Owner’s counsel sought authorization to file a motion for the Board
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`to require mandatory initial disclosures in this proceeding. Mandatory initial
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`disclosures are mandatory in nature and thus require no motion. We asked counsel
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`for Petitioner to initiate a call with counsel for Patent Owner, following the
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`conference call with the Board, to discuss what disclosures counsel for Patent
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`Owner believes should be forthcoming as a part of mandatory initial disclosures.
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`Counsel for Petitioner agreed to make that effort.
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`We raised for discussion the matter of potential expiration of the involved
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`patent during this trial. It was indicated to the parties that it appears Patent
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`7,828,207 will expire in November 2014, prior to the date of any final written
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`decision in this proceeding. We asked the parties to indicate to the Board, in a
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`filing within ten days of the date of this Order, what they jointly regard as the date
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`of expiration of Patent 7,828,207.
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`The claims of an unexpired patent are given their broadest reasonable
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`interpretation in an inter partes review. 37 C.F.R. § 42.100(b). We instituted this
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`trial applying the broadest reasonable interpretation for claim construction. If
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`Patent 7,828,207 expires prior to our rendering of a final written decision,
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`however, the broadest reasonable interpretation should not apply for purposes of
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`the final written decision. In that circumstance, the Board’s review of the claims is
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`similar to that of a district court’s review. In re Rambus, Inc., 694 F.3d 42, 46
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`(Fed. Cir. 2012). Specifically, claim terms are given their ordinary and customary
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`3
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`Page 3 of 10
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`

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`IPR2014-00157
`Patent 7,828,207
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`meanings, as would be understood by a person of ordinary skill in the art, at the
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`
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`time of the invention, having taken into consideration the language of the claims,
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`the specification, and the prosecution history of record. Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`To ensure that the parties will not be caught by surprise late in this trial, and
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`to provide an opportunity for briefing by the parties within the Patent Owner
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`Response and the Petitioner’s Reply, we asked the parties to indicate whether they
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`agree with our view that if Patent 7,828,207 expires prior to rendering of the final
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`written decision, the rule of broadest reasonable interpretation does not apply.
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`Instead, the manner of claim construction would be the same as that applied by the
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`district courts, albeit there still would be no presumption of validity in this
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`proceeding and Petitioner’s burden of proof is still by a preponderance of the
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`evidence. Also, we will not be applying a rule of construction with an aim to
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`preserve the validity of claims.
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`We indicated to the parties that upon initial review, it appears to us that
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`whether or not the rule of broadest reasonable interpretation is applied, the
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`construction of each claim term as expressed in the decision instituting trial is the
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`same, although we have not yet made an official determination in that regard.
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`Counsel for the parties were informed that after receiving the parties’ indication of
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`their positions, we will issue an updated claim construction which indicates the
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`construction that is not according to the broadest reasonable interpretation rule.
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`Finally, counsel for Patent Owner requested authorization to file an
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`opposition to Petitioner’s Request for Rehearing (Paper 10) of our Decision
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`(Paper 8) instituting inter partes review. We denied that request and explained that
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`if we need input from the Patent Owner we will notify the parties. We further
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`indicated that an order granting Petitioner’s Request for Rehearing will not be
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`4
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`Page 4 of 10
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`

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`IPR2014-00157
`Patent 7,828,207
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`issued without Patent Owner having an opportunity to respond to the Petitioner’s
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`Request for Rehearing.
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`Order
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`It is
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`ORDERED that Due Date 7, the date of oral hearing, is changed to
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`January 9, 2015; and
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`FURTHER ORDERED that within ten days of the date of this Order, the
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`parties shall file a joint paper indicating: (1) the date of expiration of Patent
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`7,828,207; and (2) whether they agree that the rule of broadest reasonable
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`interpretation does not apply at the time of final written decision of this proceeding
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`if Patent 7,828,207 expires before that time; and
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`FURTHER ORDERED that Patent Owner is not authorized to file an
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`opposition to Petitioner’s Request for Rehearing.
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`5
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`Page 5 of 10
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`

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`IPR2014-00157
`Patent 7,828,207
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`For PETITIONER:
`
`
`
`
`
`Erika Arner
`Aaron Capron
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`aaron.capron@finnegan.com
`
`
`For PATENT OWNER:
`
`Robert P. Greenspoon
`Joseph C. Drish
`FLACHSBART & GREENSPOON, LLC
`rpg@fg-law.com
`jcd@fg-law.com
`
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`6
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`Page 6 of 10
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`

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`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
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`Paper 17
`Entered: June 23, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SQUARE, INC.
`Petitioner
`
`v.
`
`J. CARL COOPER
`Patent Owner
`_______________
`
`Case IPR2014-00157
`Patent 7,828,207
`_______________
`
`
`
`Before JAMESON LEE, GEORGE R. HOSKINS, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
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`
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`Page 7 of 10
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`

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`Case IPR2014-00157
`Patent 7,828,207
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`On June 4, 2014, we required the parties to file a joint paper
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`indicating: (1) the date of expiration of U.S. Patent No. 7,828,207 (“the ’207
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`patent”), and (2) whether they agree that the rule of broadest reasonable
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`interpretation does not apply at the time of final written decision of this
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`proceeding if the ’207 patent expires before that time. See Order – Initial
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`Conference Call (Paper 12), 5. In response, the parties filed a Joint
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`Stipulation Regarding Conduct of Proceedings (Paper 15) on June 13, 2014.
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`The Stipulation indicates the ’207 patent will expire on November 4, 2014,
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`and “the parties stipulate that the rule of broadest reasonable interpretation
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`will not apply as the ’207 will have expired at the time of the final written
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`decision.” Paper 15, 1 (emphasis added).
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`As the oral hearing in the present matter is scheduled for January 9,
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`2015, our final written decision in this proceeding will in all likelihood issue
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`after the ’207 patent expires on November 4, 2014. The Board’s review of
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`the claims of an expired patent is similar to that of a district court’s review.
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`In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Therefore, the
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`principles set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303,
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`1312, 1327 (Fed. Cir. 2005) (words of a claim “are generally given their
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`ordinary and customary meaning” as understood by a person of ordinary
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`skill in the art in question at the time of the invention) should be applied
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`because the expired claims are not subject to amendment.1
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`1 However, as we have previously indicated, there would be no presumption
`of validity, Petitioner’s burden of proof is by a preponderance of the
`evidence, and we will not apply a rule of construction with an aim to
`preserve the validity of claims. Paper 12, 4.
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`2
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`Page 8 of 10
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`Case IPR2014-00157
`Patent 7,828,207
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`We have reviewed the claim construction positions taken in the
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`Petition and the Preliminary Response, and our analysis in the Decision to
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`Institute Inter Partes Review. Paper 8, 6-9. We have determined, on the
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`record presently before us, that application of the Phillips standard does not
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`change our construction of (1) “universal credit card/universal credit card
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`apparatus”; (2) “transducer”; (3) “host system”; and (4) “emitter” as set forth
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`in the Decision to Institute Review.
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`The parties may address the claim construction issues in view of the
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`foregoing in the Patent Owner’s Response and the Petitioner’s Reply.
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`3
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`Page 9 of 10
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`

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`Case IPR2014-00157
`Patent 7,828,207
`
`
`
`
`FOR PETITIONER:
`
`Erika Arner
`Aaron Capron
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`aaron.capron@finnegan.com
`
`FOR PATENT OWNER:
`
`Robert P. Greenspoon
`Joseph C. Drish
`FLACHSBART & GREENSPOON, LLC
`rpg@fg-law.com
`jcd@fg-law.com
`
`4
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`Page 10 of 10