Trials@uspto.gov
`571-272-7822
`
`Paper 11
`oO
`Entered: February 18, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DAVID W. GILLMAN, TALON TRANSACTION
`TECHNOLOGIES,INC., and NEXPAY, INC
`
`Petitioner
`
`V.
`
`STONEEAGLE SERVICES,INC.
`
`Patent Owner
`
`Case CBM2013-00047
`Patent RE43,904
`
`Before KEVIN F. TURNER, JUSTIN T. ARBES,and
`MIRIAM L. QUINN,Administrative Patent Judges.
`.
`
`TURNER,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`12
`
`
`571-272-7822
`
`Paper 11
`oO
`Entered: February 18, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DAVID W. GILLMAN, TALON TRANSACTION
`TECHNOLOGIES,INC., and NEXPAY, INC
`
`Petitioner
`
`V.
`
`STONEEAGLE SERVICES,INC.
`
`Patent Owner
`
`Case CBM2013-00047
`Patent RE43,904
`
`Before KEVIN F. TURNER, JUSTIN T. ARBES,and
`MIRIAM L. QUINN,Administrative Patent Judges.
`.
`
`TURNER,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`12
`
`
`
`Case CBM 2013-00047
`Patent RE43,904
`
`I. BACKGROUND
`
`Petitioners David W. Gillman, Talon Transaction TechnologiesInc.,
`and Nexpay,Inc. (“Petitioner”) filed a Petition (Paper 1; “Pet.”) to institute a
`
`covered business method patent review of claims 1-7, 9, 10, 12, 17, and 22
`
`of U.S. Patent No. RE43,904 (the “904 Patent’’) pursuant to 35 U.S.C.
`
`§§ 321-329. Patent Owner StoneEagle Services, Inc. (“Patent Owner’’) filed
`a preliminary response (Paper 10; “Prelim. Resp.”).' We have jurisdiction
`
`under35 U.S.C. § 324.
`The standardforinstituting a covered business methodpatent review
`
`|
`
`is set forth in 35 U.S.C. § 324(a):
`
`THRESHOLD —The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`morelikely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`Petitioner challenges claims 1-7, 9, 10, 12, 17, and 22 as unpatentable
`under 35 U.S.C. §§ 102 and 103. For the reasonsthat follow, the Petition is
`
`denied.
`
`.
`
`A. The’904 Patent (Ex. 1001)
`
`The ’904 Patent, titled “Medical Benefits Payment System,” issued on
`
`January 1, 2013, andis a reissue of U.S. Patent No. 7,792,686 (“the °686
`
`Patent’’), issued September 7, 2010. The latter patent, in turn, was based on
`
`' Patent Owneris reminded thatall papersfiled in this proceeding must
`comply with the Board’s rules regarding font size. See 37 C.F.R.
`§ 42.6(a)(2)(ii).
`
`
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`Case CBM 2013-00047
`Patent RE43,904
`
`U.S. Patent Application No. 11/566,930, filed December 5, 2006. The
`
`reissued ’904 Patent issued with claims 1-26, claims 1, 2, 6, 7, 12, 17, and
`
`22 being independent.
`The ’904 Patentrelates to facilitating payments for medical benefits,
`and to streamlining payment of health care providers by administrators and
`
`insurance carriers that handle claims adjudication and paymentto these
`
`providers. Ex. 1001 at 1:18-22. An embodimentofthe invention includes
`the step of electronically transmitting a stored-value card account payment
`
`of an authorized benefit amount concurrently with an explanation of
`
`benefits. Jd. at 1:48-57. Stored-value card accounts also include finance
`
`cards, debit cards, andelectronic funds transfer (EFT) cards. Id.
`Figure 2, reproduced below, showsa flowchart depicting the method
`
`of deploying the paid benefits system: Fig. 2
`
`
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`Case CBM 2013-00047
`Patent RE43,904
`
`The ’904 Patent discloses:
`
`In FIG. 2, claim 80 is received. Claim 80 is then evaluated to
`determine whether it is payable under the terms of an applicable
`policy.
`If claim 80 is not even partially payable, then non-
`payment EOB [explanation of benefits] 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
`amount of the payable benefit. Payment EOB 110 is merged
`with stored-value card account 100 to generate imagefile 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 limitedto,
`fax, SMTP, SMS, MMS, HTTP, HTTPS,and FTP.
`
`Id. at 3:32-46.
`
`- B. Related Matters
`
`The ’904 Patent previously wasasserted in the following proceedings:
`
`StoneEagle Services, Inc. v. Pay-Plus Solutions, Inc., Civil Case No.
`
`8:2013cv02240 (M.D.Florida); StoneEagle Services, Inc. v. Valentine, Civil
`
`Case No. 3:12-CV-01687-P (N.D. Texas); and Valentine v. Allen, Civil Case
`
`No. 4:13-CV-00104-RAS(E.D. Texas). Paper 9 at 2. The ’904 Patent
`
`currently is being asserted in StoneEagle Services, Inc. v. David Gillman,
`Civil Case No. 3:11-CV-02408-P (N.D. Texas). Paper 9 at 2.
`
`C. Exemplary Claim
`
`Claim 1 of the ’904 Patent is exemplary of the claimsat issue:
`
`
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`Case CBM 2013-00047
`Patent RE43,904
`
`1. A methodoffacilitating payment of adjudicated health care
`benefits to a health care provider on behalf of a payer
`comprising the steps of:
`
`loading a unique, single-use, stored-value card account
`with an amountequal 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 image file 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.
`
`D. Asserted References
`
`In its Petition, Petitioner asserts the following references:
`
`Ex. 1012
`December 31,1996
`US 5,590,196
`Moreau
`Ex. 1014
`October 14,1997
`US 5,677,955
`Doggett
`
`
`Bednar November 3, 1998~~Ex. 1023US 5,832,460
`Spurgeon
`US 5,890,129
`March 30,1999
`Ex. 1020
`DiRienzo
`US 6,003,007
`December 14,1999
`Ex. 1019
`Ganesan
`EP 1 049 056 A2
`November 2, 2000
`Ex. 1013
`Kessler
`US 2001/0034618 Al
`October 25,2001
`Ex. 1011
`Smith
`US 2002/0194027 Al
`December 19,2002
`Ex. 1024
`Baaren
`US 2004/0249745 Al
`December 9, 2004
`Ex. 1009
`Hogan ~
`US 2005/0033604 Al
`February 10,2005
`Ex. 1006
`Allen
`US 2005/0209964 Al
`September 22,2005
`Ex. 1021
`Rosenberger US 2005/0261944 Al November 24,2005
`Ex. 1025
`Kossol
`US 2006/0010016Al
`January 12,2006
`Ex. 1022
`
`Bush May 18,2006_Ex. 1008US 2006/0106650 Al _~
`
`
`
`
`
`
`Case CBM 2013-00047
`Patent RE43,904
`
`Kennedy
`Fredman
`Guest
`Spear
`
`US 2007/0005402 Al
`US 7,380,707
`US 2009/0222353 Al
`US 7,752,134
`
`January 2,2007
`June 3,2008
`September 3, 2009
`~
`July 6,2010
`
`Ex. 1015
`Ex. 1018
`Ex. 1010
`Ex. 1017
`
`““Visa Commercial Solutions: Merchant Category Codes for IRS Form
`1099-MISC Reporting,” Visa U.S.A.Inc., 2004 (Ex. 1016, “MCC”).
`
`“AP vPayment XML Supplier Training,” GE Corporate Payment
`Services, containing a date of January 26, 2005 (Ex. 1007, “AP vPayment”).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1-7, 9, 10, 12, 17, and
`
`22 of the 904 Patent based on the following asserted grounds of
`
`unpatentabllity:
`
`|
`
`Kennedy and AP vPayment_|§ 103|1, 2,5, 6, 7, 12, 17, and 22
`
`Hogan and AP vPayment
`
`1-7, 9, 10, 12, 17, and 22
`
`1, 2, 6, 7, 12, 17, and 22
`
`Bush, Baaren, MCC,Spear,
`‘Guest, and (Fredman or
`DiRienzo or Spurgeon) and
`(Kessler or Moreau) and
`(Allen or Kossol or Bednar)
`and (Ganesan or Doggett)
`and (Smith or Rosenberg
`
`Il. ANALYSIS
`
`A. (1) Financial Product or Service
`
`A “covered business method patent”is a patent that “claims a method
`
`or corresponding apparatus for performing data processing or other
`
`6
`
`
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`Case CBM 2013-00047
`Patent RE43,904
`
`a
`
`operationsused in the practice, administration, or management.of a financial
`
`productor service, except that the term doesnotinclude patents for
`
`technological inventions.” Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284 (2011) (SAIA”) § 18(d)(1); see 37 C-F.R. § 42.301 (a).
`For purposes of determining whethera patentis eligible for a covered
`
`business method patent review, the focus is on the claims. See Transitional
`
`Program for Covered Business Method Patents—Definitions of Covered
`Business Method Patent and Technological Invention, 77 Fed. Reg. 48,734,
`48,736 (Aug. 14, 2012) (Final Rule)(““CBM Rules”). A patent need have
`
`only one claim directed to a covered business methodto beeligible for
`
`review. Id.
`
`In promulgating rules for covered business methodpatent reviews, the
`
`Office considered the legislative intent and history behind the AJA’s
`
`definition of “covered business method patent.” Jd. at 48735-36. The
`“legislative history explains that the definition ofcovered business method
`patent was drafted to encompasspatents ‘claiming activities that are
`
`financial in nature, incidental to a financial activity or complementary to a
`financial activity.’”” Jd. (citing 157 Cong. Rec. $5432 (daily ed. Sept. 8,
`
`2011) (statement of Sen. Schumer)). The legislative history indicates that
`
`“financial product or service” should be interpreted broadly.Jd.
`
`Claim 1 is addressedto “[a] methodoffacilitating payment of
`adjudicated health care benefits to a health care provider,” and “loading a
`unique, single-use, stored-value card account with an amount equal to a
`
`single, authorized benefit payment.” In other words, the method involves _
`the data processing of a single use paymentcard in the administration of a
`
`
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`Case CBM 2013-00047
`Patent RE43,904
`
`medical insurancebenefit. Therefore, the ’904 Patent claims “a method or
`
`corresponding apparatus for performing data processing or other operations
`
`used in the practice, administration, or managementofa financial product or
`
`service.” See AIA § 18(d)(1); 37 C.F.R. § 42.301(a).
`Additionally, claim 1 is directed to subject matter that is financial by
`nature. Adjudicating an insurance claim and processing payment for that
`
`claim are inherently financial activities.
`
`Claim 1 meets the “financial product or service” component of
`
`Section 18(d)(1) of the AIA.
`
`A.(2) Technological Invention
`
`The definition of “covered business method patent” in Section
`
`18(d)(1) of the AIA does not include patents for “technological inventions.”
`To determine whethera patentis for a technological invention, we consider
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious overthe prior art; and solves a technical
`
`problem using a technical solution.” 37 C.F.R. § 42.301(b). The following
`
`claim drafting techniques, for example, typically do not render a patent a
`“technological invention”:
`|
`
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory,
`computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM orpointofsale device.
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`
`
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`Case CBM 2013-00047
`Patent RE43,904
`
`(c) Combining priorart structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64 (Aug.
`
`14, 2012).
`
`Weare persuaded that claim 1 as a whole doesnotrecite a
`
`technological feature that is novel and unobviousoverthe prior art. In
`~ particular, claim 1 only recites the presence of well-known physical
`
`technologies in support of the claimed method. “Medicalservice
`terminals” were well-known data-entry-computer systems used in a medical
`office at the time of invention. See Ex. 1001 at 2:24-27. “Computer
`
`|
`
`generated imagefiles” also were knowninthe art at the time of invention,
`
`as was the mediausedforfacilitating the transmission of such files between
`electronic systems. See id. at 2:44-49.
`|
`|
`__
`The structures used in the method of claim 1 are thus “known
`_
`technologies, such as computer hardware, communication or computer
`networks, software, memory,[or] computer-readable storage medi[a],” and
`do not define a technological invention within the meaning of 37 C.F.R.
`
`§ 42.301(b).
`
`.
`
`A single claim is sufficient to institute a covered business method
`patent review. In view ofthe foregoing, we conclude that the presence of
`claim 1 meansthat the ?904 Patent is a covered business method patent
`
`under AIA Section 18(d)(1).
`
`'B. Consideration ofAIA § 18(a)(1)(C)
`AIA § 18(a)(1)(C) requires that a challenge to aclaim ina covered
`
`business method patent be supported bypriorart thatis (i) described by pre-
`
`9
`
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`Case CBM 2013-00047
`Patent RE43,904 ~
`
`_ AIA 35 U.S.C. § 102(a),or(ii) (1) that discloses the invention more than one
`year before the date of application for patent in the United States and (ID
`would be described by pre-AIA 35 U.S.C.§ 102(a) if the disclosure had
`
`been madeby another before the invention thereof by the applicant for
`patent.
`|
`.
`Certain referencescited in the Petition are priorart to the challenged
`
`claims of the ?904 Patent only under 35 U.S.C. § 102(e). Under Section
`
`18(a)(1)(C) of the AJA, these references are not available for consideration
`
`in a covered business method patent review proceeding. The application
`that issued as the 686 Patent was filed December 5, 2006. Consequently,
`Kennedy, Fredman, Guest, and Spear, based on their publication or issuance
`dates, may not be the basis for a covered business method patent review
`challenge to the 904 Patent. This removes Petitioner’s last asserted ground,
`based on Kennedy and APvPayment, fromconsideration, as discussed
`
`below.
`
`C. Claim Construction
`During a review before the Board, we construe the claimsin
`accordance with the broadest reasonable interpretation in light of the
`specification. 37 C.F.R. § 42.300(b); 77 Fed. Reg. 48,680 48,697-98 (Aug.
`14, 2012). The claim language should bereadin light of the specification as
`it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
`Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must
`apply the broadest reasonable meaningto the claim language, taking into
`
`account any definitions presented in the specification. /d. (citing Jn re Bass,
`
`10
`
`
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`Case CBM 2013-00047
`Patent RE43,904
`
`314 F.3d 575, 577 (Fed. Cir. 2002)).
`
`Both parties seek specific constructions for certain claim terms. For
`Petitioner, the termsare: “medical services terminal,”“stored value card”or
`
`“stored value card account,” “reconciling,” “intercepting,” and “image file;”
`99 66
`
`Pet. 9-11. For Patent Owner, the termsare: “single-use,”
`
`“single, authorized
`
`. with funds,” “loading . .. with an amount,”
`.
`benefit payment,” “loading .
`“prefunded with an amount,”“funding .
`.
`. with an amount,” and “fund...
`
`with an amount;” Prelim. Resp. 2-3. We need not provide an interpretation
`of each ofthe abovelimitations to decide whetherto institute a covered
`
`business methodpatent review, and werely on the broadest reasonable
`interpretation consistent with the specification of the claim terms not
`
`specifically discussed herein, for purposes ofthis decision.
`
`.
`Medical services terminal (claims 1 and 6)
`Petitioner argues that the proper interpretation of “medical services
`
`terminal”is “a credit or debit card machine for charging medical services,”
`Pet. 9-10, relying on citations to the specification of the °904 Patent. Patent
`
`Ownerdoes not propose an interpretation for the term. We agree with
`
`Petitioner except that we conclude that the term should be construed as “a
`
`machine for charging medical services.” This comports with the language of
`claim 1, whichrecites, in part, that “the card account [is] only chargeable
`through a medical services terminal.” While the section ofthe specification
`
`cited by Petitioner recites that the “terminal may be coupled to a computer-
`implemented communications network as is knownin theart for credit and
`
`11
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`Case CBM 2013-00047
`Patent RE43,904
`
`debit card transactions,” Pet. 10; Ex. 1001 at 2:25-27, we are not persuaded
`that this language limits the claim to a credit or debit card machine.
`
`Stored-value card / stored-value card account (claims 1, 2, 6, 7, 12,
`17, and 22)
`Petitioner argues that the properinterpretation of a “stored-value
`
`card”is a “credit card, debit card, or EFT card” and a “stored-value card
`
`account”is a “credit card account, debit card account, or EFT card account.”
`
`Pet. 10. Petitioner cites to the specification of the °904 Patent, which
`
`providesthat “[flor the purposes of this patent specification, stored-value
`cards and stored-value card accounts shall also include financial instruments
`known as credit cards, debit cards and EFT cards.” Ex. 1001 at 1:54-57.
`
`Patent Owner does not proposean interpretation for the terms. Weare
`
`persuadedthat Petitioner’s proposed interpretation of “stored-value card”
`
`and “stored-value card account” is consistent with the use of the termsin the.
`
`specification and the claims.
`
`Imagefile (claims 1, 2, and 6)
`
`Petitioner argues that the proper interpretation of “imagefile”is “an
`
`electronic file that contains an image.” Pet. 11.. Patent Owner does not
`
`appearto object to such an interpretation. Prelim. Resp. 2. Applying the
`broadest reasonable interpretation ofthe term, we adoptPetitioner’s
`interpretation of “image file” becauseit is consistent with the use of the
`
`terms in the specification and the claims.
`
`12
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`Single-use (claims 1, 2, 6, 7, 12, 17, and 22)
`
`Patent Ownerarguesthat “single-use” means “associated with a
`
`benefit payment to a health care provider — and not any other type of
`
`payment.” Prelim. Resp. 2. Claim 1, for example, recites “loading a unique,
`
`single-use, stored-value card account with an amountequaltoasingle,
`
`authorized benefit payment, the card account only chargeable through a
`‘medicalservices terminal.” Petitioner does not proposean interpretation for
`
`the term. The 7904 Patent provides that “the stored-value card account
`| payment may only be charged through a medical services terminal.” Ex.
`1001 at 2:23-24 (emphasis added). Claim 1, for example, recites a similar
`limitation. We agreethat “single-use” would have been understood to mean
`
`that an account was associated with a single type of card to be used with a
`single type of services terminal and noother type of paymentterminal, but
`weare not persuaded that “single-use” should be constrained to benefit
`payments or health care providers. The claims provide for the methods
`
`being used for “health care benefits” and “health care providers,” such that
`
`the claim term “single-use” need not be so constrained.
`
`D. Analysis ofAvailable Grounds of Unpatentability
`Anticipation by Hogan
`|
`
`Petitioner asserts that claims 1-7, 9, 10, 12, 17, and 22 are anticipated
`
`by Hogan. Pet. 11. Hogan discloses that System 45 receives a claim from
`healthcare provider 20, and provides claim adjudication with insurance
`company30 in order for the patient to obtain services. Ex. 1006 45. The
`payments of claims between health care providers and health care third party
`
`13
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`Case CBM 2013-00047
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`payers are adjudicated and effected by utilizing credit card administration
`systems. /d.§ 12. System 45 electronically transmits to the healthcare
`
`providera “superbill” that includes an explanation of benefits (EOB) and
`
`verification of the payer data. Id. FJ 82, 88.
`
`Patent Owner argues that Hoganfails to disclose a number of
`
`limitations, namely “loading a unique, single-use, stored-value card account
`
`with an amountequalto a single, authorized benefit payment,” and “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,” of claim 1. Prelim. Resp. 4. Patent Owneralso
`
`providesrecitations in independent claims2, 6, 7, 12, 17, and 22 that contain
`
`similar limitations. Prelim. Resp. 8-10. We are persuaded that Hoganfails
`
`to disclose all of the elements of the challenged claims and, therefore, deny
`Petitioner’s asserted ground of anticipation.
`As Patent Owner argues, Prelim. Resp. 5, Hogan doesnot disclose a
`
`single-use, stored-value card account. ThePetition relies upon credit cards
`
`and “standard operating proceduresofretail credit card transactions,”
`
`Pet. 13, but does not cite any express disclosure in Hogan ofa single-use,
`stored-value card account. Although Hogandetails that the client “can also
`use a smart card forretail credit in any store that accepts retail credit cards,”
`to eliminate the client having multiple cards, Ex. 1006 4 55, this is not the
`
`same as loading a unique, single-use, stored-value card account with an
`
`amountequalto a single, authorized benefitpayment. In addition, the
`
`Petition cites to the EOB, which contains the insurance company card
`
`number, approval code, and otherdata, Pet. 13-14; Ex. 1006 { 152, for this
`
`14
`
`
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`Case CBM 2013-00047
`Patent RE43,904
`
`element of claim 1, but we are not persuaded that the EOBitselfis
`
`equivalent to “a single-use, stored-value card account,” or that the disclosure
`ofthe EOBmeansthat Hoganusesasingle-use, stored value card account.
`In addition, as Patent Owner points out, the superbill of Hogan
`provides the information of the charged credit card to which payment was
`
`made. Prelim. Resp. 5-6. We agree with Patent Ownerthat:
`
`[t]he superbill disclosed in Hogan provides a confirmation that
`the payment was made, whereas the computer imagefile of the
`present
`invention includes a unique, single-use, stored-value
`card account, wherein the funds associated with that account
`have not yet been deposited to the healthcare provider, and will
`be deposited only when the healthcare provider charges the
`stored-value card account.
`.
`
`|
`
`Prelim. Resp.6.
`Additionally, Petitioner has not pointed out where in Hogan a “card
`verification value code,” claimed as part of the computer-generated image
`
`file, is disclosed. Indeed, the claim charts in the Petition cite to AP
`
`vPaymentfor this element, Pet. 15-16, for claim 1.
`
`Thus, we are not persuaded that the information presentedin the
`
`Petition alleging that claims 1-7, 9, 10, 12, 17, and 22 are anticipated by
`
`Hogan demonstrates that it is more likely than not that the challenged claims
`
`are unpatentable.
`
`Obviousness over Hogan and AP vPayment
`
`With respectto this alternative ground, Petitioner argues that if
`
`elements of the claims are not found in Hogan, they can be found in AP
`
`vPayment. Pet. 12. Patent Ownerarguesthat Petitioner has failed to show
`
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`Case CBM 2013-00047
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`that AP vPaymentqualifies as a prior art printed publication. Prelim. Resp.
`
`11. We agree with Patent Owner, as discussed below.
`
`To determine whether to deny a ground onthe basis that a referenceis
`not a “printed publication,” we decide each case on the basis of its own
`facts. More specifically, the determination of whether a given reference
`
`qualifies as a prior art “printed publication” involves a case-by-case inquiry
`
`into the facts and circumstances surrounding the reference’s disclosure to
`
`membersof the public. Jn re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
`2004). “A reference is publicly accessible upona satisfactory showing that
`
`such document has been disseminated or otherwise madeavailable to the
`
`extent that persons interested and ordinarily skilled in the subject matter or
`
`art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp.v.
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`ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (internal citation and quotation
`
`,
`.
`marks omitted).
`AP vPayment is a set of slides titled “AP vPayment XML Supplier
`Training,” purportedly created by “GE Corporate PaymentServices.” See
`
`Ex. 1007 at 1. As noted by Patent Owner, Prelim. Resp. 11, the only date
`
`provided on the AP vPayment documentis “Last updated: 12/26/2005,” on
`
`its first page. Such a designation does not suggest publication and/or
`
`presentation on that date. Rather, it suggests that the document was updated
`on that date and says nothing about dissemination ofthe document. The
`only discussion of the status of AP vPaymentin the Petition is that the
`
`reference is “dated January 26, 2005,” Pet. 12, and Petitioner provides no
`
`other evidence or discussion of why AP vPaymentshould be consideredart
`that can be applied in the instant proceeding. Under the circumstances, we
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`Patent RE43,904
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`are not persuadedthat a date, standing alone, with no additional
`
`corroboration, on a set of slides is sufficient to demonstrate that the slides
`
`constitute a “printed publication” under 35 U.S.C. § 102.
`
`Because Petitioner has not met its burden to demonstrate that AP
`vPayment qualifies as a prior art printed publication, the proposed ground
`based on Hogan and AP vPayment mustbe denied.
`
`Obviousness over Bush, Baaren, MCC, Spear, Guest, and (Fedman or
`DiRienzo or Spurgeon) and (Kessler or Moreau) and (Allen or Kossol or
`Bednar) and (Ganesan or Doggett) and (Smith or Rosenberger)
`
`Petitioner contends that claims 1, 2, 6, 7, 12, 17 and 22 would have
`
`been obvious over combinations of Bush,Baaren, MCC, Spear, Guest, and
`
`(Fredman or DiRienzo or Spurgeon) and (Kessler or Moreau) and (Allen or
`
`Kossol or Bednar) and (Ganesan or Doggett) and (Smith or Rosenberger).
`Pet. 33-56". Of thosecited references, as discussed above, Spear, Guest, and
`_ Fredman cannotbe appliedin unpatentability groundsin the instant
`|
`proceeding. The effect of their unavailability on the instant groundis
`
`- discussed below.
`|
`Bushis directed to a system for adjudicating insurance claims by a
`provider, where the provider receives a determination of a dollar value of the
`
`claim from an adjuster and uses that value to issue an account accessible by
`
`* Although the groundlisted in the Petition provides that Bush may be
`considered “either alone or in combination with otherprior art references
`identified below,” Pet. 33, given that the citations to Bush alone do not teach
`or suggest all of the elements of the claims, as providedin the claim charts,
`wereview this ground of unpatentability as being over Bush and some
`combination of other references.
`
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`Case CBM 2013-00047
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`the policyholder through a card. Ex. 1008, Abstract. The results ofthe
`claim adjudication process typically are communicated to the insured by
`
`meansofa printed explanation of benefits (EOB). /d. at §.4. Bush is
`
`directed to automobile insurance claims, but other insurance scenarios, such
`as for medical treatment, are disclosed as possible applications. Jd. at ¥ 12.
`Petitioner argues that although Bush discloses payments made from an
`
`insurer to a policyholder, it would have been obvious to extend the system to
`
`have payments made from an insurerto a health care provider. Pet. 34. We
`
`agree that the process of making payments by insurers would be analogous
`
`and within the skill of ordinarily skilled artisans.
`Bush also disclosesthat “To|nce a non-zero dollar value for the claim
`‘has been determined, the insurance company will open a card-accessible
`account, such as a debit card accountforthe policyholder,” and“the
`|
`insurance company will fundthe debitaccount with the dollar value of the
`claim.” Ex. 1008 J 15. The insurance company also collects information
`regarding how the debit account was used. /d. at J 16.
`In the alleged ground of unpatentability, Fredmanis asserted in the
`alternative, along with DiRienzo and Spurgeon, such that its unavailability
`
`does notaffect the ground unless DiRienzo or Spurgeon donot teach what
`they have been asserted to teach by Petitioner. See Pet. 35-36. Upon review
`
`of Petitioner’s arguments, we are persuaded that Spurgeon discloses what
`
`has been alleged. /d. at 36. Spurgeon details that its system transmits an
`electronic EOBto the provider, along with an electronic paymentto the
`provider’s financial account. Ex. 1020 at 10:38-44. We are further
`
`persuaded,perthe Petition, Pet. 35, that it would have been obvious to
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`Case CBM 2013-00047
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`modify Bush to have combined the payment and EOB, and send both
`
`together to the payee, per Spurgeon.
`
`Guestis cited in the instant ground to show that it would have been
`
`obvious to modify the system of Bush to create an imageofthe debit/credit
`
`card. Pet. 36-37, 42, 44-46. As discussed above, Guest is unavailable to be
`
`applied against the instant claims. Nevertheless, Petitioner alleges that it
`
`would have been obvious to modify Bushto create an image of the
`
`debit/credit card “for simplicity of use by the recipient,” based on the
`
`recipient’s prior experience using physical debit/credit cards. Pet. 36, 41-42.
`
`Claim 1, for example, recites, in part, “creating a computer-generated image
`file containing” specific data. Patent Owner argues, however,that
`“Petitioner ignores that there is a myriad of methodsoftransmitting a
`
`paymentvia fax that do not require” the claimed step. Prelim. Resp. 21. We
`
`agree with Patent Owner.
`Theinterpretation of “imagefile” that we have accepted requires an
`image, and an electronic file with no images would notsatisfy the
`
`interpretation. We are not persuadedthat Petitioner’s proffered rationale,
`i.e., that simplicity of use based on prior experience of using a credit/debit |
`card, Pet. 36, 41-42, would result in modifying Bush to include an “image
`
`file.” Seeking simplicity for a user may notresult in modifying the
`
`technology to include an “imagefile” when, as Patent Ownerpoints out,
`
`there are many other waysto transmit a payment. Prelim. Resp. 21.
`Without more, weare not persuaded that the incorporation ofan imagefile
`to be transmitted would have been obvious in view of Bush. The
`information transmitted, i.e., account number, amount, card verification
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`Case CBM 2013-00047
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`value code, and expiration date, could have been transmitted in the system of
`Bush without any image used. Accordingly, we are not persuadedthat
`Petitioner has demonstrated that it would have been obvious for the system
`in Bush to have created a computer-generated imagefile containing the
`required data.
`|
`Based on the foregoing, Petitioner has not persuaded usthat Petitioner
`
`has demonstrated thatit is more likely than not that claim 1 is unpatentable
`over Bush and the othercited prior art references. Additionally, claims 2
`and 6 include similar recitations, and we also are persuadedthat Petitioner
`has not demonstrated that those claims are unpatentable over Bush and the
`other cited priorart references for the same reasons.
`The remaining independentclaimsasserted to be unpatentable under
`this ground, namely claims 7, 12, 17, and 22, do notrecite “creating a
`
`computer-generated imagefile,” but rather provide the use of “a computer-
`
`generatedfile,” or equivalent, i.e., without the “image” limitation. We
`
`consider the instant ground with respect to those claims below.
`
`Spear is asserted along with Baaren and MCCin the discussion of a
`“medical services terminal”and its use, Pet. 34, with respect to claim 1, and
`cited in related discussionsof other claims in this ground. Putting aside
`Spear, whichis not available as prior art, we must determine if Baaren and
`
`MCCsufficiently teach or suggest the element(s) of the claims for which
`
`they arecited.
`
`Weare persuaded that MCC discloses that Merchant Category Codes
`(MCCs) were generally known, Ex. 1016 at 12-13, and that card processers
`used those codesto define the type of business the entities conduct. Ex.
`
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`Case CBM 2013-00047
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`1009 4 9. Accepting those teachings, we are persuaded, based on the record
`
`presented, that using Bush’s system specifically with a medical services
`
`terminal would have been obviousto persons ofordinary skill in the art.
`
`Pet. 34.
`
`Weare not persuaded, however, by Petitioner’s arguments and the
`evidence cited in the Petition that restricting use ofthe stored-value card
`only to medicalservice terminals is taught or suggested by the references.
`Claims 7, 12, and 17 all recite, in part, “a unique, single-use stored-value
`
`card account,” and claim 22 recites, in part, “a single-use stored-value card
`account.” Based on the claim construction discussed above,“single-use”
`means associated with a single type of services terminal and no other type of
`
`paymentterminal. Weare not persuaded that Petitioner has shownthatthis
`
`limitation is taught or suggested by the references.
`Baarenprovides: “cards maybefiltered by MCCandcardholders may
`be provided details about where they can use their card .
`.
`. [and this]
`tracking allows the system and method to monitorthis activity to help detect
`
`—
`
`misunderstandings on the individual’s part or potential fraud attempts.”
`Ex. 1009§ 141. However,filtering and tracking is not the same as what
`Petitioner has alleged, namely “‘to limit use of the stored-value card account
`
`only to medical services terminals to prevent fraud or other misuse.” Pet.
`
`35. The cited section of Baaren does not disclose that a card should be used
`
`with only a single MCC,but rather describes restricting use to
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