Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: March 4, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PAY-PLUS SOLUTIONS, INC.,
`Petitioner,
`
`Vv.
`
`STONEEAGLE SERVICES, INC.,
`Patent Owner.
`
`Case IPR2014-01414
`Patent RE43,904 E
`
`Before MEREDITH C. PETRAVICK, JAMESP. CALVE,and
`JAMESB. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of /Jnter Partes Review
`37 C.F.R. § 42.108
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: March 4, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PAY-PLUS SOLUTIONS, INC.,
`Petitioner,
`
`Vv.
`
`STONEEAGLE SERVICES, INC.,
`Patent Owner.
`
`Case IPR2014-01414
`Patent RE43,904 E
`
`Before MEREDITH C. PETRAVICK, JAMESP. CALVE,and
`JAMESB. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of /Jnter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`I.
`
`© INTRODUCTION
`
`A. Background
`Pay-Plus Solutions, Inc. (“Petitioner”) filed a Corrected Petition
`(Paper 4; “Corr. Pet.”) to institute an inter partes review of claims 1—26 of
`
`Patent No. US RE43,904 E (Ex. 1002; “the ’904 patent”) pursuant to 35
`
`U.S.C. §§ 311-319. Corr. Pet. 2-3. StoneEagle Services, Inc. (“Patent
`
`Owner”) filed a Preliminary Response (Paper8; “Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 3 14,' which provides that an inter partes
`review may notbeinstituted “unless .. . there is a reasonable likelihood that
`the petitioner would prevail with respectto at least 1 of the claims
`
`challenged in the petition.” 35 U.S.C. § 314(a).
`Petitionerrelies upon the following references, document, and
`declaration in support of its grounds for challenging the identified claims of
`
`the °904 patent:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1010
`
`Patent Application Publication No. US 2007/0005403 A1 to
`Kennedy et al., filed on June 30, 2006 (“Kennedy’’)
`Patent No. US 5,991,750 to Watson,filed on October 24,
`1006
`1997, issued on November23, 1999 (“Watson’’)
`
`
`
`
`LeRoy. H. Graw,Purchasing Credit Cards Introduction,
`1007
`
`
`www. ipscmi.org/tipsandsolutions/purchasingcredit.php
`(retrieved from August 19, 2006 archive at
`https://web.archive.org/web/200608 191204 18/www.ipscmi.
`org/
`tipsandsolutions/purchasingcredit.php) (“vPayment
`Interview”
`Viewpointe and Payformance Collaborate To Provide Image
`
`' See Section 6(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
`No. 112-29, 116 Stat. 284, 300 (2011).
`
`2
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds (Corr. Pet. 2-3, 13-59):
`
`Statement Products,
`http://www.pay formance.com/contactus/press/ViewpointePa
`yformancelS.pdf (dated September 30, 2002; retrieved from
`March 22, 2006 archive at
`https://web.archive.org/web/20060322 17541 0/http://www.p
`ayformance.com/contactus/press/ViewpointePayformancelS
`
`ge Statement Products”
`one of ordinary skill in the
`
`Challenged Claims
`
`35 U.S.C. § 103(a)|Kennedy, Watson, vPayment|1-5, 7, 8, 10-13, 15-18,
`Interview, and Image
`20-23, 25, and 26
`Statement Products
`
`35 U.S.C. § 103(a)|Kennedy, Watson, vPayment|6, 9, 14, 19, and 24
`Interview, Image Statement
`Products, and knowledge of
`
`Forthe reasons set forth below, we determinethat, on this record,
`Petitioner fails to demonstrate a reasonable likelihood ofprevailing in
`
`showing the unpatentability of any of the challenged claims. Accordingly,
`
`we denyinstitution of inter partes reviewas to claims 1—26 ofthe *904
`patent.
`|
`B. Related Proceedings
`
`Theparties indicate that the ’904 patentis the subject of StoneEagle
`
`Services, Inc. v. Pay-Plus Solutions, Inc., et. al., Civil Action No. 8:13-cv-
`
`2240-T-33MAP (M.D. Fla.), and StoneEagle Services, Inc. v. David Gillman
`
`et al., Civil Case No. 3:14-cv-03120-M (N.D. Tex.). Corr. Pet. 1; see Paper
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`6, 2.
`
`In addition, the ’904 patent previously was the subjectof petition for
`
`covered business method (CBM) patent review, for which institution was
`denied. See David W. Gillman v. StoneEagle Services, Inc., Case |
`CBM2013-00047, slip op. at 13-22 (PTABFeb.18, 2014) (Paper 11) (Ex.
`1004).
`
`C. The ’904 Patent
`
`The ’904 patentrelates to “[a] methodoffacilitating payment of
`health care benefits [on] behalf of a payer comprisingthe step of
`
`electronically transmitting a stored-value card account paymentof the
`
`authorized benefit amount concurrently with an explanation ofbenefits.”
`
`Ex. 1002, Abstract. The 904 patent purports to solve problems of cost and
`delay associated with “Payers”(e.g., third party administrators (TPAs),
`insurance companies) having to print checks and explanation ofbenefit
`
`(EOB)formsto be mailed to health care providers.
`
`/d. at col. 1, Il. 26-44.
`
`The claimed systems and methodsstreamline the process of submitting
`
`payments from an insurance company(or anotherthird party payer) to.
`
`healthcare providers.
`For health.care claims “adjudicated” to be payable,” the ’904 patent
`discloses loading a stored-value card account with funds or money equalto
`
`the amountof the payable benefit, merging a payment explanation of
`
`benefits (“EOB”) with the stored-value card account information to generate
`
`an imagefile, and then electronically transmitting the imagefile to a
`
`provider.
`
`/d. at col. 3, ll. 36-46. The ’904 patentstates that, “[for the
`
`* The preambles of each of independent claims1, 2, 6, 7, 12, 17, and 22
`describe systems and methods “for payment of adjudicated health care
`benefits” (emphasis added).
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`purposesofthis patent specification, stored-value cards and stored-value
`card accounts shall also include financial instruments knownascredit cards,
`debit cards and EFTcards.” /d. at col. 1, ll. 54-57.
`
`The systems and methodsof the ’904 patent make a benefits payment
`to a health care provider by sendingto the health care provider an imagefile
`
`that includes at least a stored-value card account number, payment amount,
`
`card verification code, and an expiration date and EOBinformation.
`
`/d. at
`
`claims 1, 2, 6, 7, 12, 17, and 22 (each ofthe challenged independentclaims),
`
`see id. at col. 3, ll. 58-61. The ’904 patent further discloses an embodiment
`
`in which the “stored-value card accountis chargeable only on a medical
`services terminal andit cannot be charged over the amountloadedontoit.”
`Id. at col. 3, I. 56~58; see id. at Fig. 4 (reproduced below). The health care
`
`providerenters the stored-value card account numberinto a point of
`sale/services (“POS”) terminal, e.g., a medical services terminal, to receive
`the adjudicated payment via knownfinancial networks. See id. at Claims1,
`5, 6, 11, 16, 21, and 26. Thus, the healthcare provider immediately can
`
`reconcile its financial records because the EOB contemporaneously provided
`
`with the paymentinstrument facilitates associating that paymentinstrument
`
`with the corresponding renderedservices.
`
`Anotherfeature of the recited inventionis that the file transmitted to
`
`the health care provider may include a computer-generated image of a
`physical card displaying the information necessary to process the payment
`using the stored-value card account. Annotated Figure 4 is reproduced
`
`below:
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`Fig. 4
`
`EN tangate
`‘Ma weetst
`
`UALLak te Seas ie,
`
`ee te
`i
`MRE
`
`ate
`FATTIRG ittbaa€ OEE
`telet teath£ Hs Beh pesent
`TRL
`Caleta MUIT
`ER2 Sb FAG ENE Cetead
`
`A sample imagefile containing the EOB and a computer-generated image of
`
`-a stored-value card is provided in annotated Figure 4. The highlight text
`
`states that “[t]his is a one-time use stored value card.
`
`It cannot be
`
`overcharged and will not allow additional charges. All transactions will be
`
`tracked and audited.” Ex. 1002, Fig. 4.
`Further, annotated Figure 2, reproduced below,illustrates a method of
`deploying the medical benefits payment system:
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`Fig. 2
`
`LT
`
`’
`
`oy
`
`wie
`EU
`"
`ape
`
`
` s
`|
`eo
`famemenieenedia
`
`O-~,
`1
`teeity Cote Saunier
`
`i. $i
`
`quand;
`
`}P
`
`O FOB at Payis:
`iDescennetmn
`
`With respect to the annotated flow chart of Figure 2, the ’904 patent
`
`discloses the following:
`
`claim 80 is received. Claim 80 is then evaluated to determine
`whetherit is payable under the terms of an applicable policy. If
`claim 80 is not even partially payable, then non-payment EOB
`90 is generated and transmitted to health care provider 30
`without payment. However,
`if claim 80 is at
`least partially
`payable,
`then stored-value card account 100 is loaded with
`funds equal to the amountof the payable benefit. Payment EOB
`110 is merged with stored-value card account 100 to generate
`image file 120. Image file 120 includes payment EOB 110 and
`a computer-generated facsimile of a physical stored-value card
`complete with the card number, expiration date and security
`verification code.
`Image file 120 is transmitted to health care
`provider 30 by a suitable transmission medium including, but
`not limited to, fax, SMTP, SMS, MMS, HTTP, HTTPS, and
`FTP.
`
`Ex. 1002, col. 3,ll. 32-46 (emphasis added).
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`D.Illustrative Claims
`
`Petitioner challenges claims 1-26 of the 904 patent. Corr. Pet. 2-3.
`
`Claims 1, 2, 6, 7, 12, 17, and 22 are independent. Each of claims 3-5
`
`depend directly from independentclaim 2; each of claims 8-11 depend
`directly from claim 7; each of claims 13-16 dependsdirectly from claim 12;
`each of claims 18-21 dependsdirectly from claim 17; and each of claims
`
`23-26 dependsdirectly from claim 22. Claim |
`
`isillustrative andis
`
`reproduced below:
`
`1. A method offacilitating payment of adjudicated health care
`benefits to a health care provider on behalf of a payer
`comprisingthe steps of:
`
`loading a unique, single-use, stored-value card account with an
`amount equal to a single, authorized benefit payment, the card
`account only chargeable through a medical services terminal,
`
`generating an explanation of benefits associated with the
`payment;
`
`creating a computer-generated imagefile containing the
`stored-value card account number, the amount, a card
`verification value code, an expiration date, and the explanation
`of benefits;
`
`transmitting the imagefile by fax to the health care provider;
`and
`
`reconciling the charged card accountto confirm that the health
`care provider has received payment.
`
`Ex. 1002, col. 4, ll. 11-27 (emphasis added). Disputed limitations are
`
`emphasized.
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`E. Claim Construction
`
`Consistent with the statute and the legislative history of the Leahy-
`Smith America Invents Act,’ we interpret claims of an unexpired patent
`using the broadest reasonable construction in light of the specification of the
`patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`(Aug. 14, 2012); 37 C.F.R. § 42.100(b). There is a presumption that claim
`
`termsare given their ordinary and customary meaning, as would be
`understood by one ofordinary skill in the art in thecontext of the
`specification. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). An applicant may rebut that presumption by providing a
`
`definition of the term in the specification with reasonableclarity,
`
`deliberateness, and precision.
`
`/n re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`In the absence of such a definition, limitations are not to be read
`
`from the specification into the claims. Jn re Van Geuns, 988 F.2d 1181,
`1184 (Fed. Cir. 1993).
`At least one of the parties proposes a specific construction for each of
`the following terms. Corr. Pet. 6-13; Prelim. Resp. 6-12.
`1.
`“medical services terminal” (Claims 1, 5, 6, 11, 16, 21, and 26)
`The panel that denied institution in the previous CBM (“the CBM
`
`panel’’) construed this term. Ex. 1004, 11-12. The parties agree that the
`
`term “medical services terminal” should be construed here, as it was
`
`construed by the CBM panel, to mean “a machine for charging medical
`
`services.” Corr. Pet. 8; Prelim. Resp. 6-7. We are persuadedthat, for
`
`purposesofthis decision, the CBM panel’s construction ‘is the broadest
`reasonable construction consistent with the ordinary and customary meaning
`
`> Pub. L. No. 112-29 (2011).
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`of the term and with the Specification of the ’904 patent(see, e.g., Ex. 1002,
`
`col. 2, Il. 25-27).
`
`2. “stored-value card” or “stored-value account card” (Claims 1, 2,
`6, 7, 12, 17, and 22)
`The CBM panelconstrued this term in connection with the previous
`
`CBM patent review proceeding. Ex. 1004, 12. The parties agree thatthis
`term should be construed here, as it was construed by the CBM panel, such
`that “stored value card” means“credit card, debit card, or EFT card” and the
`term “stored-value card account” means“credit card account, debit card
`
`account, or EFT card account.” Corr, Pet. 8; Prelim. Resp. 7. We are
`
`persuadedthat, for purposes of this decision, the CBM panel’s construction
`
`is the broadest reasonable construction consistent with the Specification of
`
`the 904 patent.
`
`/d. at 12 (citing Ex. 1002, col. 1, Il. 54-57).
`
`;
`“imagefile” (Claim 1, 2, and 6)
`3.
`The CBMpanelconstruedthis term in connection with the previous
`CBMpatent review proceeding. Ex. 1004, 12. The parties agree that this
`term should be construed here, as it was construed by the CBM panel, such
`that “imagefile” means “an electronic file that contains an image.” Corr.
`Pet. 8; Prelim. Resp. 7. We are persuadedthat, for purposesof this decision,
`
`the CBM panel’s construction is the broadest reasonable construction
`
`consistent with the Specification of the °904 patent.
`
`/d. at 12 (citing Ex.
`
`1003, col. 3, 1. 50—col. 5, 1. 10).
`4. “single-use” (Claims 1, 2, 6, 7, 12, 17, and 22).
`Although the CBM panel construedthis term in the decision denying
`institution, only Patent Owner proposes that we adopt the CBM panel’s
`construction. Corr. Pet. 8-9; Prelim. Resp. 7. The CBM panel construed the
`term “single-use” to mean “associated with a single type of card to be used
`
`10
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`with a single type of services terminal and noothertype of payment
`terminal.” Ex, 1004, 13; see Prelim. Resp. 7. Petitioner contendsthat the
`
`ordinary and customary meaning of the term “single-use” means “used only
`once, not that something can be used for only one purpose.” Corr. Pet. 9.
`
`Petitioner further contends that construction which limits the terms meaning
`
`temporally, rather that functionally, is consistent with the Specification of
`the ‘904 patent, which states that a “unique card number[is] generated and
`assigned to a single payment.” Id (quoting Ex. 1002,col. 2, II. 20-21).
`Thus, Petitioner asserts that a single-use stored-value card or card account
`
`“is one that can be used to make a single payment, i.e., may be used only
`
`once.” Id. (emphases added). Despite the CBM panel’s construction, we are
`
`persuadedthat, for purposesof this decision, the broadest reasonable
`
`construction ofthe term “single-use,” consistent with the Specification of the
`904 patent, is “associated with a single type of card to be used with a single
`type of services terminaland noother type of paymentterminalfor a single
`payment.” See Ex. 1002, col. 2, Il. 20-21; Fig. 4.
`
`5. “merging” or “merge” (Claims 2, 12, 17, and 22)
`Patent Ownercontendsthat the term “merging”or “merge” means
`
`“combining together.” Prelim. Resp. 8-9. Petitioner does not propose a
`
`construction for this term. A relevant definition of the term “merge”is “[t]o
`
`combine twoor moreitems, such aslists, in an ordered way and without
`
`changing the basic structure ofeither.” MICROSOFT COMPUTER DICTIONARY
`335 os" ed. 2002) (emphasis added; Ex. 3001). This definition is consistent
`with the Specification (e.g., the depiction in Fig. 4) of the ’904 patent, and
`
`we are persuadedthat, for purposes of this decision, a construction
`
`incorporating this definition is the broadest reasonable construction
`
`1]
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`consistent with the Specification of the ’904 patent. E.g., Ex. 1002, Fig. 4
`
`(merging EOB andstored value card).
`6.
`‘loading... withfunds, " “loading... withan amount,” .
`“prefunded with an amount,” “funding... with an amount,” and
`“fund... with an amount” (Claims 1, 2, 6, 7, 12, 17, and 22)
`Petitioner contendsthat, because stored value cards or accounts may
`include credit cards, these terms should encompass associating either credit
`
`or money with card or account. Corr. Pet. 11; see Ex. 1002, col. 1, Il. 54-57.
`
`Therefore, Petitioner argues rather than “funds” or an “amount”of a
`
`payment should be construed to mean “an amountof value.” /d. at 12.
`
`Patent Ownerdoesnot believe that an express construction ofthis
`“term is necessary and notes that the CBM panelfound that no such
`construction was necessary. Prelim. Resp. 10-11; see Ex. 1004, 10-11. If,
`however, we deem construction necessary, Patent Owner proposes we
`construe “funds” to mean “funds for payment” and “amount” to mean
`
`‘amount of money.” Prelim. Resp. 11.
`
`Initially, we note that Petitioner proposes introducing a new term,
`“amountof value”in order to construe these terms. Petitioner does not
`
`indicate where this new term appearsin the Specification of the ’904 patent.
`
`Corr. Pet. 11-13. Consequently, we decline to introduce and then construe a
`
`new term in order to construe the existing terms. Further, Patent Owner’s
`
`construction appears to be consistent with the Specification. See Ex. 1002,
`
`col. 2, ll. 3-4 (“A stored-value card represents money on deposit withissuer,
`
`andis similar to a debit card.”; emphasis added); Fig. 3 (“Funds Loaded
`
`onto Credit Card”; emphasis added). A relevant definition of “money”is
`
`“any circulating medium of exchange,including coins, paper money, and
`
`demanddeposits” and of “funds”is “a supply of money or monetary
`
`12
`
`
`
`IPR2014-01414
`Patent RE43,904 E
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`resources, as for some purpose.” RANDOM HOUSE WEBSTER’S COLLEGE
`
`DICTIONARY 530 and 854 (2d. Random Houseed. 1999) (Ex. 3002). Based
`
`on this record, Patent Owner’s proposed construction appears more
`
`consistent with both the ordinary and customary meaning ofthese terms and
`the Specification of the °904 patent. Therefore, we are persuaded that, for .
`purposesof this decision, Patent Owner’s construction of “funds” to mean
`
`“funds for payment” and of “amount” to mean “amount of money”represent
`the broadest reasonable constructions ofthese terms.
`7
`For purposesof this decision and onthis record, no other claim terms
`require express construction."
`
`Il.
`
`ANALYSIS
`
`A, Overview
`
`Petitioner argues that claims 1-26 of the ’904 patent are rendered
`
`obvious by the combinations of references described above. See supra Sec.
`
`I.A. 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 obviousat the time
`
`the invention was madeto 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 obviousnessis 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
`
`* In particular, for purposesofthis decision, we do not construe expressly
`the term “imageof a physical card,” recited in claims 6, 9, 14, 19, and 24
`(Prelim. Resp. 10), or “intercepting,”recited in claims 2-5 (Corr. Pet. 10—
`11).
`
`13
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`prior art; (3) the level of skill in the art;* and (4) objective evidence of
`nonobviousness,i.e., secondary considerations.° Graham v. John Deere Co.,
`383 U.S. 1, 17-18 (1966). On this record and forthe reasonsset forth
`below, we are persuadedthat Petitioner fails to demonstrate a reasonable
`
`likelihood of prevailing in the challenges to claims 1—26 ofthe °904 patent.
`
`B. Asserted Grounds
`
`1. Obviousness of Claims 1-5, 7, 8, 10-13, 15-18, 20-23, 25, and
`26 over Kennedy, Watson, vPayment Interview, and Image Statement
`Products
`a.
`
`Kennedy
`
`Kennedy teaches entering information into a POSterminal, using the
`
`entered information to generate an electronic claim, and submitting the claim
`
`to a third party payer, with EOB data generated and returnedin real-time
`
`fashion by the insurer for display at the POS terminal. Ex. 1005 { 31; see
`
`Ex. 1001 9] 50-54. A third party payer processes the claim information by
`querying a database to determine (1) whetherthe patient is covered/eligible,
`(2) the features of the patient's coverage, such as co-pays and deductibles,
`
`and (3) the permitted charge for the treatment rendered by the provider
`
`/d. 954. Kennedy further teaches that the EOB data sent to
`underthe claim.
`the provider maybein electronic remittance advice (“ERA”) format.’ Id. 4
`
`> Petitioner proposesa definition for a person ofordinary skill in the art.
`Corr. Pet. 13 (citing Ex. 1001 4 10). Patent Owner does not challenge
`Petitioner’s proposed definition and does not proposean alternative. Prelim.
`Resp. 8. For purposesof this decision, we adopt Petitioner’s definition.
`° Patent Owner doesnot contend that secondary considerations are present,
`which would render the challenged claims patentable over the applied
`references.
`7 Blectronic Remittance Advice (ERA)provides instructions by which
`
`14
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`57. The EOBstatementdisplayed at a POS terminal includes the patient’s
`
`credit card information, debit card information, or other payment
`information andthat the patient may authorize that the amount owedby the
`patient may be paid using the included information. Jd. § 62; Fig. 7.
`|
`Subsequently, paymentof the non-patient (e.g., insurance company
`payment) portion of the bill may be completed by an electronic, automatic
`
`clearing house (ACH)transaction.
`
`Id. 4 64.
`
`Annotated Figure 7 of Kennedy is reproduced below:
`
`iL PAVEMT FOURIER, Bten att
`
`
` dE
`
`FIG. 7
`
`The annotated figure shows the EOB information andthepatient’s credit
`card and other payment information combined on a single EOB statement.
`
`See id. J] 61-70.
`
`
`
`electronic payments maybe processed. See Ex. 1005 57, Fig. 6.
`
`15
`
`
`
`"1PR2014-01414
`Patent RE43,904 E
`
`b.
`
`Watson
`
`Watson teaches payment accountsusing pre-authorized payment
`_ parameters associated with the payment accounts and the application of
`paymentaccountsto the insurance industry, such that an account manager
`mayplay the role of a claims adjuster disclosing an account numberto a
`merchant for paymentof services rendered for an insurance claim. Ex.
`
`1006, col. 9, Il. 27-31. Watson further teaches permitting an account
`
`managerto define a specific transaction identifier, such as an insurance
`claim number,that is authorized to be paid from an account.
`/d. at col. 4,Il.
`
`19-24.
`
`In addition, Watson teaches that payment from such accounts may
`
`be performed by presenting a transaction card or other credit card-like
`
`credentials and that authorization may be routed through credit card
`companies(e.g., Visa®, American Express®, and MasterCard®).
`/d. at col. 9,
`Il. 14-16; col. 2, Il. 24-29; Fig. 2. Finally, Watson teaches that the
`
`transaction identifier (e.g., insurance claim number) is included with general
`
`billing information to permit reconciliation.
`
`/d. at col. 4, Il. 18-34.
`
`C.
`
`vPayment Interview
`
`vPaymentInterview teaches the vPaymentservice which “runs on the
`
`MasterCardrailroad track” and allows authorizationof specific payment
`
`amounts. Ex. 1007, 2. vPaymentInterview further teaches providing a
`
`website that permits users to configure payments including caps on
`
`transaction amounts and provides card numbers andrelated card
`
`information—expiration date and credit card verification code—that users
`
`then mayprovide to merchantsor service providers to effect payment.
`/d. at
`3. vPaymentInterview also teaches faxing the card number and other card
`informationto merchants or service providers.
`/d.
`In addition, vPayment
`
`16
`
`
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`IPR2014-01414
`Patent RE43,904 E
`
`Interview teaches aspects of vPaymentthatassist with reconciliation such as
`
`the card transaction record including exact payment numbersor account
`
`codes. Id.
`
`d.
`Image Statement Products
`Image Statement Products is a joint press release regarding a
`collaborative effort between Viewpointe Archive Services, LLC, and
`Payformance Corporation to generate statements with check images inserted
`therein for Viewpointe’s financial institution customers. Ex. 1010, 1-2.
`
`Image Statement Products teaches deploying Payformance’s Data
`Transformation Engineto receive statement data from the financial
`
`institutions, to retrieve check imagesfrom Viewpointe’s archive, and to
`“insert the check images electronically into individual statements.” /d. at 2.
`Image Statement Products further teaches either (a) transmitting the
`combined statements to the financial institution customeror (b) storing and
`rendering the statements on behalfof the financial institution.
`/d.
`é.
`Reasons for Combining These References
`
`Petitioner arguesthat “the only difference between Kennedy and the
`
`claimed method [of claim 1] is the form of payment (ACH versus the
`
`claimed stored-value card) andthe type offile containing the payment
`
`information and EOB (EOB/ERA data file versus an imagefile).” Corr. Pet.
`
`20. Petitioner argues that Kennedy teaches
`a system for healthcare claims adjudication and payment for
`healthcare services including the generation of an electronic
`claim, processing of the claim byathird party payer, generation
`of an EOB/ERA data file in an industry standard format known
`as ANSI 835, transmission of the EOB/ERA data file to the
`healthcare provider,
`and expediting payment
`from health
`insurance companies through ACH transactions.
`
`17
`
`
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`IPR2014-01414
`Patent RE43,904 E
`
`Id.
`
`In Kennedy’s system, an EOB/ERA datafile is transmitted electronically
`
`to the POS terminal where it may be viewed by the patient.
`
`/d. (citing Ex.
`
`1005 4] 57, 62; Fig) 7).
`Petitioner argues that both Watson and vPaymentInterview teach
`
`In particular, Petitioner notes
`/d. at 20.
`details of GE’s vPaymentservice.
`that “(t]he vPaymentservice ‘assigns end users a unique credit card number
`for a specific purchase.’” /d. (quoting Ex. 1007, 3). Petitioner cites the
`
`references filed as Exhibits 1008 and 1009, which provide additional
`description of the vPayment system, but does notincludeeither referencein
`. the combination of referencesassertedin its challenge to the claims of the
`
`°904 patent.
`
`/d. at 20n.10. vPaymentInterview teaches that the vPayment
`
`service “assigns end users a unique credit card numberfor a specific
`
`purchase.” /d. (quoting Ex. 1007, 3). Watson further describes the
`
`vPaymentservice and teaches that ““vPayment account is pre-authorized for
`
`a single authorized paymentofa specific amount.” /d. (citing Ex. 1006, col.
`
`1, ll. 45-60). Thus, Petitioner argues that “[i]n other words, an amount of
`
`credit equal to the amountof the specific paymentis assigned or allocated
`
`to, or associated with, the underlying account” and that, by using standard
`industrial codes (SIC), the use of the credit card number may be limited to
`POSterminals associated with a particular business.
`/d. (emphasis added;
`
`citing Ex. 1006, col. 1, Il. 48-56).
`
`Although Kennedy describes a system that enables a patientto
`
`arrange for paymentofhis or her portion of an amount duefor health care
`provider services from a POSterminalin the provider’s office (see Ex. 1005
`
`{| 54-55), Petitioner arguesthat it would have been obviousto one of
`
`18
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`ordinary skill in the art to “incorporate” the vPayment methodtaught by
`Watson and vPaymentInterview into Kennedy to effect paymentfrom the
`insurance companyto the health care provider (Corr. Pet. 21 (citing Ex.
`
`1001 {| 65-68, 74-80)). Petitioner argues that “[i]t would have been a
`
`trivial matter to combinethe electronic EOB/ERA datafile with basic data
`
`such as the vPaymentcredit card account numberandits associated card
`
`verification value code and expiration date (described at [Ex. 1007, 3]).”
`
`Corr. Pet. 21-22 (emphasis added; citing Ex. 1001 § 74).
`
`Finally, Petitioner argues that Image Statement Products teachesthat
`
`an image of a paymentinstrument, i.e., a check, may be inserted into a
`
`statement of charges, such as the EOB statement taught by Kennedy.
`
`Id. at
`
`23 (citing Ex. 1001 §§ 74-76; Ex. 1007, 3; Ex. 1010, 2; but see Ex. 1001
`
`122 (“While modifying the 835 format to include information for other
`paymenttypes would havebeentechnically trivial, practically it may have
`been difficult because the 835 formatis a national standard, requiring
`
`committee approval for changes.”). Thus, Petitioner argues that the
`
`combined teachings of Kennedy, Watson, vPaymentInterview, and Image
`
`Statement Products disclose each and every element, as recited in claim 1.
`
`Corr. Pet. 19.
`ff Analysis of Combined Teachings ofApplied References
`Initially, we note that Petitioner’s application of the combined
`
`teachings of Kennedy, Watson, vPayment Interview, and Image Statement
`
`Products relies upon Petitioner’s proposed construction of various terms of
`
`the challenged claims. In particular, Petitioner relies on “loading” or
`
`“funding” an amountof value on a credit card. Pet. 21 (“In other words, an
`
`amountof credit equal to the amountof the specific paymentis assigned or
`
`19
`
`
`
`IPR2014-01414
`Patent RE43,904 E
`
`allocated to, or associated with, the underlying account.”). However, we did
`not adopt Petitioner’s proposed construction of the terms “single-use” or
`“loading... with funds,” “loading .. . with an amount,” “prefunded with an
`amount,” “funding .. . with an amount,”and “fund... with an amount.”
`See supra Sec. I].E.4. and II.E.6.
`
`Petitioner shows that the combined teachings of these references may
`
`teach or suggestthat credit card information may be included with an EOB
`in a statement sentto a health care provider (see Corr. Pet. 19-22), but this
`merely describes the transmission of a meansto obtain paymentfrom a third
`party, rather than thereceipt, with the EOB, of paymentin the form of a
`single-use, stored-value card, loaded or funded with moneyor the amountof
`the payment. See Prelim. Resp. 17-23. Thus, as Patent Ownercontends,
`Petitioner’s proposed combination of the teachings of these references
`requires a separate and secondtransaction before the health care provider
`mayreceive payment.
`/d. at 21-23. Therefore, given our claim construction
`of the limitation “single-use, stored-value card account” to mean “a credit
`card account, debit card account, or EFT card account” “associated with a
`single type of card to be used with a single type of services terminal and no
`other type of paymentterminal for a single payment,” we are not persuaded
`on this record that Petitioner has shownthat the proposed combination ofthe
`
`teachings of these references teaches or suggests all of the limitationsofat
`
`least independentclaims 1, 2, 6, 7, 12, 17, and 22.
`
`In addition, with respect to claims 2, 12, 17, and 22, Patent Owner
`
`contends that the combination of references does not teach “merging” an
`
`EOBandthe paymentinstrument. Prelim. Resp. 17-18; Ex. 1005, Fig.7;
`see supra Sec. 1.E.5. Kennedy’s Fig. 7 depicts the combination of an EOB
`
`20
`
`
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`IPR2014-01414
`Patent RE43,904 E
`
`and a patient’s credit card information. See Ex. 1005 {| 60-62. Petitioner
`
`does not rely on Kennedyalone to teach the merging of an EOB with a
`
`stored value card; instead, Petitionerrelies, in part, on Image Statement
`
`Products teaching that an image of a check may be submitted with a
`
`statement of account. See Corr. Pet. 43 (incorporating the evidence provided
`
`at Corr. Pet. 27—29 (claim chart for claim 1(c)) to teach the “merging”step
`
`of claim 2). Nevertheless, as noted above, we are not persuaded that
`
`Petitioner has shownthat the combined teachings of Kennedy, Watson,
`
`vPaymentInterview, and Image Statement Products teach or suggest a
`
`single-use stored-value card or card account, as recited in independent
`
`claims 2, 12, 17, and 22. Therefore, we also are not persuaded that
`
`Petitioner demonstrates that the proposed combination of references teaches
`
`or suggestsall of the limitations of claims 2, 12, 17, and 22. See Prelim.
`
`Resp. 28 (chart of missing elements of challenged claims).
`
`On therecord before us, however, we are persuadedthat Petitioner
`has not shownatleast the “single-use stored-value card”or “single-use
`stored-value card account,”as recited in at least the independent claims of
`the 904 patent, and the “merging” of such a card with an EOB are taught or
`
`_
`
`suggested by these combined references. Therefore, on the record before us,
`
`we persuadedthat Petitioner has failed to demonstrate a reasonable
`likelihood of prevailing in showing claims 1-5, 7, 8, 10-13, 15-18;20-23,
`25, and 26 of the °904 patent are unpatentable over Kennedy, Watson,
`
`vPaymentInterview, and Image Statement Products.
`
`21
`
`
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`IPR2014-01414
`Patent RE43,904 E
`
`2. Obviousness of Claims 6, 9, 14, 19, and 24 under 35 U.S.C.
`§ 103(a) over Kennedy, Watson, vPayment Interview, Image
`Statement Products, and Knowledge
`Petitioner further asserts that claims 6, 9, 14, 19, and 24 are
`unpatentable under 35 U.S.C. § 103(a) over Kennedy, Wats
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