EBAY INC.v.Moneycat Ltd.

Patent Trial and Appeal Board

May 1, 2015

12539141 (P.T.A.B. May. 1, 2015)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: May 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
EBAY INC.,
Petitioner,
v.
MONEYCAT LTD.,
Patent Owner.
_______________

Case CBM2015-00008
Patent 8,195,578 B2
_______________

Before WILLIAM V. SAINDON, BRYAN F. MOORE, and ROBERT J.
WEINSCHENK, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

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

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I. INTRODUCTION
On October 8, 2014, eBay Inc. (“Petitioner”) filed a Petition (Paper 1)
requesting review of claims 4 and 12 of U.S. Patent No. 8,195,578 B2
(Ex. 1001, “the ’578 patent”) under the transitional program for covered
business method patents. MoneyCat Ltd. (“Patent Owner”) filed a
Preliminary Response (Paper 7, “Prelim. Resp.”). We have jurisdiction
under AIA
1
§ 18(a) and 37 C.F.R. § 42.300 (2013).
A. Related Matter: Case CBM2014-00093 (“the 093 proceeding”)
Petitioner filed an earlier Petition that sought a covered business
method patent review of claims 1–23 of the ’578 patent. eBay Inc. v.
MoneyCat Ltd., Case CBM2014-00093 (“CBM2014-00093”), Paper 4
2

(PTAB August 14, 2013) (“the 093 Petition” or “093 Pet.”). We granted
review of claims 1–3, 5–11, and 13–23, and denied review of claims 4 and
12. CBM2014-00093, Paper 14 (“093 Dec. on Inst.”). Petitioner filed an
unsuccessful Request for Rehearing, seeking reconsideration of our decision
denying review of claims 4 and 12. CBM2014-00093, Paper 16 (Request
for Rehearing).
Petitioner then filed the instant Petition, challenging the patentability
of each claim that was denied review in the 093 proceeding. Pet. 1.

1
See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”).
2
Replacement Petition.
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A. The ’578 Patent
1. Specification of the ’578 Patent
The ’578 patent discloses a method and system for electronic currency
transactions. See Ex. 1001,
3
Abstract. Figures 6 and 7 are shown below:

Figure 6 schematically illustrates a sum of electronic money, and Figure 7
schematically represents an electronic currency transaction. See id. at
12:60–64. Referring to Figure 6, each data packet P1, P2, . . . Pi
corresponds to an amount of electronic money. See id. at 14:33–39. Each
packet Pi contains (from right to left in Figure 6) a unique identifier UINi,
which identifies packet Pi among all such data packets issued by a Currency
Issuing Authority (“CIA”); the monetary value associated with packet Pi;
and authentication data ADi to confirm packet Pi was generated by the CIA.
See id. at 13:17–22, 14:49–54.

3
Exhibit 1001 contains the ’578 patent and one ex parte reexam certificate
concerning the ’578 patent. All citations to Exhibit 1001 in this decision
refer to the ’578 patent unless otherwise specified.
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Turning to Figure 7, user 1 interacts with provider 2 via the Internet
(broken arrows) to effect a payment of electronic currency to provider 2.
See id. at 15:60–16:1. User 1 has data packets Pi stored in an active data
packet area of a data storage area accessible by a CIA server (“CIAS”). See
id. at 14:62–15:30. When user 1 and provider 2 decide upon a transaction,
user 1 instructs the CIAS to effect payment to provider 2 of the required sum
on behalf of user 1. See id. at 15:62–16:1. In response, the CIAS accesses
the active data packet area of user 1 to copy to a local memory of the CIA
one or more data packets Pi corresponding to the indicated sum, and delete
or deactivate the packets Pi from the active data packet area. See id. at
16:10–16. The CIAS verifies the authentication data ADi of the packets Pi,
and checks the identifiers UINi of the packets Pi against a database of
previous transactions, to verify the packets Pi have not been used previously
to effect payment. See id. at 16:24–28. If the CIAS verification is
successful, the CIAS invalidates the packets Pi provided by user 1, and
issues a new set of packets Pi for the same value to provider 2. See id. at
16:28–37.
2. Admitted Prior Art NetCash System
In a section entitled “Background of the Invention,” the ’578 patent
discusses several systems for carrying out electronic payment transactions
that were known prior to the filing of the ’578 patent. See Ex. 1001, 1:22–
27, 1:55–56. One such prior art system is “NetCash.” Id. at 2:47. Petitioner
relies on the NetCash admitted prior art as a basis for asserting two grounds
for unpatentability. See, e.g., Pet. 24–49. In our discussions below, we will
refer to the disclosure of admitted prior art at 2:47–3:39 and Fig. 2 of the
’578 patent as “the APA NetCash System.”
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B. Illustrative Claim
Claims 1 and 4 of the ’578 patent are illustrative of the challenged
claims:
1. A method for effecting currency transactions between a
first user and a second user over a network wherein said
currency is money-representing data packets, the method
comprising the following steps:
A) a Currency Issuing Authority trusted server (CIAS)
receives payment instructions from said first user to transfer
a first monetary sum to said second user, wherein the CIAS
is programmed to receive payment instructions from said
first user only over a network connection between said first
user and a Currency Issuing Authority (CIA);
B) the CIAS accesses one or more money-representing
data packets in a first active data packets area located in a
first data storage area associated with said first user, each of
said money-representing data packets comprising
information on its value, wherein each of said money-
representing data packets and said information on its value
are both created by said CIA;
C) the CIAS manipulates the money-representing data
packets located in said first active data packets area to
withdraw a second monetary sum therefrom and (i) deletes
one or more money-representing data packets in the first
active data packets area that equals the second monetary
sum or (ii) marks one or more money-representing data
packets in the first active data packets area that equals the
second monetary sum as spent; and
D) the CIAS creates one or more new money-
representing data packets corresponding to a third monetary
sum.
4. A method according to claim 1, wherein the new money-
representing data packets are used to calculate the balance in a
second data storage area associated with the second user.

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C. Related Matters
In MoneyCat, Ltd. v. PayPal, Inc., No. 1:13-cv-01358 (D. Del. filed
July 30, 2013), Patent Owner has asserted the ’578 patent against PayPal,
Inc. — a privy of Petitioner. See Pet. 5. In addition to the present Petition
challenging the ’578 patent and CBM2014-00093 discussed above,
Petitioner has sought review of U.S. Patent Nos. 8,051,011 B2 (“the ’011
patent”) (CBM2014-00091) and 7,590,602 B1 (“the ’602 patent”)
(CBM2014-00092). See Pet. 5. The ’578 patent is a continuation of the
’602 patent, and the ’011 patent is a division of the ’602 patent.
D. Prior Art Relied Upon
Bernstein US 5,915,023 June 1999 Ex. 1006
Teramura CA 2,221,399 June 2002 Ex. 1007
Chang US 5,848,400 Dec. 1998 Ex. 1008
APA NetCash System (Ex. 1001, 2:47–3:39, Fig. 2)
E. Alleged Grounds of Unpatentability
Petitioner contends that claims 4 and 12 of the ’578 patent are
unpatentable based on the following grounds:
Basis Reference(s) Claim(s) Challenged
§ 103(a)
Teramura, the APA NetCash
System, and Chang
4 and 12
§ 103(a)
Bernstein, the APA NetCash
System, and Chang
4 and 12

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II. ANALYSIS
As set forth in 35 U.S.C. § 325(d), the Director, and by delegation the
Board,
4
has discretion to deny a petition that raises substantially the same
prior art or arguments previously presented to the Office. That statutory
provision provides as follows:
In determining whether to institute or order a proceeding under this
chapter, chapter 30, or chapter 31, the Director may take into account
whether, and reject the petition or request because, the same or
substantially the same prior art or arguments previously were
presented to the Office.
The instant Petition challenges each claim that was denied review in
the 093 proceeding. Compare 093 Pet. 44, 47–48, 59–60 with Pet. 32–38,
44–49 (both raising obviousness challenges against claims 4 and 12); see
093 Dec. on Inst. 21, 29–30 (denying review of those claims). The instant
Petition relies on four pieces of prior art: three that were raised in the 093
Petition (Teramura, Bernstein, and APA); and one that is new to this
proceeding (Chang). Compare 093 Pet. 21 with Pet. 25. Petitioner,
however, presents no argument or evidence that the newly cited reference
was not known or available to it at the time of filing of the 093 Petition. See
Unilever, Inc. v. Procter & Gamble Co., Case IPR2014-00506, slip. op. at 6
(PTAB July 7, 2014) (in exercising § 325(d) discretion, one factor is
whether newly cited references were known or available to a petitioner at the
time of filing of the earlier petition) (informative). On this record and for
the reasons set forth below, we exercise our discretion and “reject the
petition” because “the same or substantially the same prior art or arguments

4
37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the
Director.”).
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previously were presented to the Office” in the 093 proceeding. 35 U.S.C. §
325(d).
We are persuaded that arguments raised in the Petition are
“substantially the same” as those “previously [] presented to the Office” in
the 093 proceeding. Id. Petitioner’s treatment of claim 4 is illustrative.
Claim 4 includes all the limitations of claim 1 and, further, requires new
money-representing data packets are used to calculate the balance in a
second data storage area associated with the second user.
In the 093 Petition, Petitioner argued that Bernstein (or Teramura) and
APA discloses each limitation of claim 1 and argued Bernstein (or
Teramura) discloses the “calculating a balance” feature of claim 4. 093 Pet.
56–59. We denied review on the ground that Bernstein did not disclose
“new money-representing data packets are used to calculate the balance in a
second data storage area associated with the second user” at all. 093 Dec. on
Inst.16. We maintain our finding that neither Bernstein or Teramura teaches
or suggests calculating a balance in a second data storage area using new
money representing packets. Additionally, this limitation was not impacted
by any claim construction in the 093 Decision; thus, Petitioner cannot argue
that its failure to show this limitation in the cited art of the 093 Petition was
because of an unanticipated claim construction issue.
In the instant Petition, Petitioner repeats the same arguments as to
claim 1 but, in lieu of Bernstein (or Teramura), relies on a new piece of prior
art (Chang) for a disclosure of the “calculating a balance” limitation of claim
4. Pet. 45–46. In both petitions, Petitioner advances “substantially the
same” argument—namely, that claim 4 would have been obvious over
Bernstein (or Teramura) and APA. 35 U.S.C. § 325(d). The instant Petition
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does add Chang for further support but maintains the same citations to
Bernstein and Teramura as in the 093 Petition. Compare 093 Pet. 44 with
Pet. 34–35 and 093 Pet. 59 with Pet. 45–46.
We find that Chang does not discuss calculating a balance in the
context of “new money representing data packets” as required by claim 4.
Prelim. Resp. 3–4. We agree with Patent Owner that “Chang relates to
processing electronic checks, as indicated by its title: ‘Electronic check
exchange, clearing and settlement system.’” Id. Notably, during prosecution
the term “money representing data packets” was added to distinguish over a
reference that disclosed electronic checks. Prelim. Resp. 4; Ex. 2003 at 4.
Thus, Petitioner relies on Bernstein (or Teramura) and APA, not Chang, to
disclose new money representing data packets and relies on Chang simply
for the concept of calculating a balance. Further, Petitioner’s argument in
the 093 Petition appears to have been that one of ordinary skill would
understand how to calculate a balance using new money representing data
packets, because they did not present any references that showed such a
calculation. Thus, Petitioner is simply now presenting a reference to show
what Petitioner previously implied was within the skill of one of ordinary
skill in the art.
We have considered all of the papers filed in both proceedings.
Specifically, Petitioner argues that the instant Petition “further address[es]
these two dependent claims based upon an additional prior art reference.”
Pet. 1. Patent Owner, on the other hand, contends that Petitioner seeks to
augment challenges that were rejected in the 093 proceeding, “[a]rmed with
the Board’s guidance as to the flaws in the [093 Petition].” Prelim. Resp. 2–
3. On this record, we determine that the instant Petition presents “the same
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or substantially the same prior art or arguments” that were advanced in the
093 Petition. 35 U.S.C. § 325(d).
Petitioner has not presented considerations that tip the balance in
favor of review. Given that we already have considered the same or
substantially the same prior art or arguments in connection with the
challenged claims, we deny the request for an inter partes review under
§ 325(d).
III. ORDER
It is
ORDERED that the Petition is denied as to all challenged claims of
the ’578 patent.
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FOR PETITIONER:
Scott McKeown
Greg Gardella
OBLON, SPIVAK, MAIER, MCCLELLAND, AND NEUSTADT, LLP
CPdocketmckeown@oblon.com
CPdocketgardella@oblon.com

FOR PATENT OWNER:
Kevin D. McCarthy
David L. Principe
ROACH BROWN MCCARTHY & GRUBER, P.C.
kdmccarthy@roachbrown.com
bcreola@roachbrown.com

Howard Wisnia
MINTZ LEVIN
HWisnia@mintz.com