American Express Companyv.Signature Systems LLC

Patent Trial and Appeal Board

Dec 28, 2015

13553437 (P.T.A.B. Dec. 28, 2015)

Trials@uspto.gov Paper No. 17
571.272.7822 Filed: December 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMERICAN EXPRESS COMPANY AND AMERICAN EXPRESS
TRAVEL RELATED SERVICES COMPANY, INC.,
PETITIONER,

v.

SIGNATURE SYSTEMS, LLC,
PATENT OWNER.
_____________________

Case CBM2015-00153
Patent 8,423,402

Before MICHAEL P. TIERNEY, JAMES A. TARTAL, and PATRICK M.
BOUCHER, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208

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I. INTRODUCTION
American Express Company and American Express Travel Related
Services Company, Inc. (“American Express” or “Petitioner”) filed a
Petition (“Pet.”) on June 12, 2015, to institute a covered business method
patent review of claims 1–16 of U.S. Patent No. 8,423,402 (Ex. 1001, “the
’402 patent”). Paper 1. Signature Systems, LLC. (“Patent Owner”) filed a
Preliminary Response (“Prelim. Resp.”) to the Petition on September 30,
2015. Paper 14. We have jurisdiction under 35 U.S.C. § 324. See § 18(a)
of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284,
329 (2011) (“AIA”).
The standard for instituting a covered business method patent
review is set forth in 35 U.S.C. § 324(a), which provides as follows:

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
more likely than not that at least 1 of the claims challenged in
the petition is unpatentable.

Upon consideration of the information presented, we have decided not
to institute a covered business method patent review.

A. Related Proceedings
Petitioner indicates that the ’402 patent is asserted in a litigation titled
Signature Systems, LLC., v. American Express Company and American
Express Travel Related Services Company, Inc., Case No. 1:15-cv-20063-
RNS, filed January 9, 2015. Pet. 4-5. Additionally, the ’402 patent was the
subject of request for supplemental examination 96/000,096, and a
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subsequent ex parte reexamination. Prelim. Resp. 2. A Reexamination
Certificate issued on November 24, 2015, canceling claims 3, 4, 7, 8, 11, 12,
15 and 16 and amending all of the independent claims, claims 1, 5, 9 and 13.
Ex. 3001.
1

B. The ’402 Patent (Ex. 1001)
The ’402 patent states that its invention allows a user to purchase
goods or services using awards points accumulated and held by a variety of
award programs. Ex. 1001, 3:64–66. Specifically, the ’402 patent is
directed to a computer-implemented system and method for operating a
rewards points program where a user earns rewards from various
independent entities, each of which tracks the user’s earned rewards. Id. at
Abstract. The system and method accumulates all the user’s earned rewards
and allows them to be converted into a corresponding amount of reward
points of a second type at a predetermined reward server conversion rate. Id.
at 14:5–9. The user can redeem some or all the second type of reward points
to purchase a service or an item. Id. at Abstract.
The ’402 patent describes the rewards computers as any type of
accessible server capable of holding data about a user along with a
corresponding earned value. Id. at 5:44–47. Preferably, the rewards
computers are accessible by a user through the Internet using a user
computer with the user freely navigating to sites by means well known in the
art. Id. at 5:61–63, 6:5–24.

1 Exhibit 3001 is a copy of the ’402 Patent Ex Parte Reexamination
Certificate, which has been entered into the electronic record.
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C. Illustrative Claims
As issued, the ’402 patent contained sixteen claims, each of which is
challenged by Petitioner. During reexamination, all four independent claims
were amended. Reexamination certificate claim 1 is illustrative and
reproduced below:
2

1. A computer-implemented method for earning, exchanging
and redeeming reward points comprising the steps of:
a user [executing a plurality of first purchase transactions
using a credit card linked to a credit card reward program of a
first reward issuing entity, each of the first purchase
transactions] earning a first set of reward points of a first type
from a [the] first reward issuing entity as result of a first
transaction executed between the user and the first reward
issuing entity;
a reward server computer [,] associated with the first
reward issuing entity and comprising a plurality of reward
accounts, each of said reward accounts associated with a
different user,] storing [each of] the first set [sets] of reward
points of the first type in a [one of the plurality of]
reward account [accounts] on the reward server computer
[associated with the user] ;
a reward exchange computer storing in a reward
exchange account a second set of reward points of a second
type earned by the user as a result of a second transaction
executed between the user and a second reward issuing entity
which is different from the first reward issuing entity;
the reward server computer providing a web page to a
[selected one of a plurality of] user computer [computers, the
selected user computer associated with the user,] the web page
comprising a control for initiating communication over a
computer network between the reward server computer and the
reward exchange computer;

2
Matter enclosed in heavy brackets [ ] appeared in the patent, but has been
deleted and is no longer a part of the patent; matter printed in italics
indicates additions made to the patent.
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the reward server computer receiving from the user
operating the user computer a selection of the control from the
web page and, in response, initiating communication over the
computer network with the reward exchange computer to
exchange a quantity of reward points of the first type,
designated by the user operating the user computer, from the
reward account on the reward server computer into reward
points of the second type for adding to the reward exchange
account on the reward exchange computer by:
decreasing the quantity of reward points of the first type
designated by the user from the reward account on the reward
server computer,
causing the reward exchange computer to
convert the quantity of reward points of the first type
decreased from the reward account on the reward server
computer into a corresponding amount of reward points of the
second type at a predetermined reward server conversion rate,
add the corresponding amount of reward points of the
second type to the reward exchange account, and
combine the corresponding amount of reward points of
the second type added to the reward exchange account with the
second set of reward points of the second type previously stored
in the reward exchange account, and
conveying consideration to the reward exchange
computer, the consideration having a value equivalent to the
quantity of reward points of the first type decreased from the
reward account on the reward server computer;
the user requesting the reward exchange computer to
redeem at least some of the combined reward points of the
second type from the reward exchange account for an item
selected by the user; and
the reward exchange computer redeeming the requested
combined reward points of the second type from the reward
exchange account by decreasing the reward exchange account
by the combined reward points of the second type requested to
be redeemed by the user for the item selected by the user.

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D. The Asserted Grounds
Petitioner challenges the claims based upon § 101 as well as § 103.
For § 103, Petitioner relies upon the following prior art:
“American Express Creates Membership Reward
SSM
: Loyalty Program
Combining Travel, Retail and Food,” Newslink, October 18, 1995
(“Newslink”) (Ex. 1004)

U.S. Patent 5,774,870 June 30, 1998 Storey (Ex. 1005, “Storey”)

Admitted Prior Art—Background Section and Figure 1 of the ’402 Patent
(Ex. 1001, “APA”)

Petitioner contends that the challenged claims are unpatentable under
35 U.S.C. § 101 and § 103 based on the following specific grounds (Pet. 27):
Basis Reference(s) Claims challenged
§ 101 1–16
§ 103 Newslink in view of Storey and APA 1–16

II. ANALYSIS
Pursuant to 35 U.S.C. § 324(a), a covered business method patent
review may not be instituted unless the information presented in the petition
shows that it is more likely than not that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition. As we have
recognized in other proceedings, Congress did not mandate that a covered
business method patent review must be instituted under certain conditions.
Rather, by stating that the Director—and by extension, the Board—may not
institute review unless certain conditions are met, Congress made institution
discretionary. See, e.g., Intelligent Bio-Systems, Inc. v. Illumina Cambridge
Ltd., Case IPR2013-00324, slip op. at 4 (PTAB Nov. 21, 2013) (Paper 19).
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The ’402 patent issued on April 16, 2013, with sixteen claims. Ex.
1001. Petitioner filed its Petition on June 12, 2015, challenging all of the
issued claims. Pet. 27.
Prior to the filing of the Petition, Patent Owner filed a Request for
Supplemental Examination of the ’402 patent. Ex. 2001. The Supplemental
Examination Request sought to have the ’402 patent claims re-evaluated
under 35 U.S.C. §101 in view of Alice Corp. v. CLS Bank Int’l, 134 S. Ct.
2347 (2014). Id. at 16. A Supplemental Examination Certificate was issued
on April 30, 2015, and on May 12, 2015, ex parte reexamination was
ordered for the ’402 patent. Exs. 2002, 2003. On May 22, 2015, a non-final
Office action issued, which rejected all claims of the ’402 patent as
unpatentable under 35 U.S.C. § 101. Ex. 2004.
The Examiner and Patent Owner met for an in-person interview on
June 24, 2015, to discuss the issues raised in the non-final Office Action.
Ex. 2006. On June 29, 2015, as “excellent progress was made towards
resolving the issues regarding the eligibility of the claims,” Patent Owner
amended all of the independent claims, claims 1, 5, 9 and 13, and cancelled
dependent claims 3–4, 7–8, 11–12 and 15–16. Ex. 2007, 2–8, 12. For
example, claim 1 was amended to recite several new limitations, including
that a user execute “a plurality of first purchase transactions using a credit
card linked to a credit card reward program of a first reward issuing entity,”
and that a reward server computer provide a web page to a “selected one of a
plurality of” user computers, with “the selected user computer associated
with the user.” Id. at 2.
A Notice of Intent to Issue Supplemental Examination Certificate was
mailed on September 10, 2015. Ex. 2010. The Examiner stated in the
Notice that Patent Owner’s amended claims no longer encompassed ‘“using
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advertising as an exchange or currency.”’ Id. at 3. The Examiner
determined that the amended claims as a whole amounted to significantly
more than the fundamental economic practice of tracking reward points
associated with credit card purchases. Id. A Reexamination Certificate was
then issued on November 24, 2015, with the amended claims.
The Petition was filed June 12, 2015, and does not address the newly
added limitations first presented by Patent Owner in its June 29, 2015,
amendment.
Patent Owner contends that Petitioner would not be prejudiced by the
denial of the Petition. Prelim. Resp. 11. According to Patent Owner,
Petitioner may elect to file a new Petition for Covered Business Method
Patent Review of the ’402 patent should they desire to do so. Id. Patent
Owner states that denying institution would allow Petitioner an opportunity
to review the reexamination file in order to determine whether they wish to
proceed with a new Petition directed to the amended claims. Id.
We are persuaded that the particular facts of this proceeding counsel
against institution. Our decision whether to institute a covered business
method patent review must be based on the claims of the ’402 patent as it
exists today. See 35 U.S.C. § 324(a). Petitioner challenged original claims
1–16, which Patent Owner has either cancelled or amended during ex parte
reexamination. See Ex. 3001. Original claims 1–16, as challenged by
Petitioner, no longer exist, and any decision as to the patentability of original
claims 1–16 we might reach in this proceeding would be moot and purely
advisory. We do not see how the efficient administration of the Office, or
the just, speedy, and inexpensive resolution of every proceeding, would be
secured by instituting a covered business method patent review in this
proceeding. 37 C.F.R. § 42.1(b).
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In denying institution, we do not reach the merits of the
unpatentability arguments in the Petition, and express no opinion on those
arguments at this time. Furthermore, based on the current record, we agree
with Patent Owner that Petitioner is not prejudiced as they may elect to file a
new Petition directed to the amended claims.
3

III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to the originally issued
challenged claims 1–16 of the ’402 patent.

3
Based on the current record, we are aware of no statutory bar or other
impediment to Petitioner filing another petition seeking covered business
method patent review of the ’402 patent.
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PETITIONER:
Saqib J. Siddiqui
ssiddiqui@mayerbrown.com

PATENT OWNER:

Anthony Barkume
anthony@barkume.com