First Data Corporationv.Coqui Technologies, LLC

Patent Trial and Appeal Board

Feb 9, 2016

10528528 (P.T.A.B. Feb. 9, 2016)

Trials@uspto.gov Paper 6
571-272-7822 Date: February 9, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FIRST DATA CORPORATION,
Petitioner,

v.

COQUI TECHNOLOGIES, LLC,
Patent Owner.
–

Case IPR2015-01667
Patent 7,580,864 B2

Before GRACE KARAFFA OBERMANN, BRYAN F. MOORE, and
JENNIFER S. BISK, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, First Data Corporation, filed a Petition to institute an inter
partes review of claims 1–5 of U.S. Patent No. 7,580,864 B2 (Ex. 1001, “the
’864 patent”). Paper 2 (“Pet.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the
Petition, we determine that Petitioner has not established a reasonable
likelihood of prevailing in showing the unpatentability of the challenged
claims. Accordingly, we decline to institute inter partes review.
A. Related Matters
Petitioner reports that a case in the Eastern District of Texas may
affect or be affected by a decision in this proceeding.1 Coqui Techs., LLC v.
Kohl’s Corp., Case No. 2:15-cv-93 (E.D. Tex.). Pet. 1. Petitioner has filed a
second inter partes review petition challenging claims 6–27 of the ’864
patent—IPR2015-01668. Pet. 1.
B. The Asserted Grounds
Petitioner challenges claims 1–5 as obvious over Stoutenburg2 and
Karas.3

1 Patent Owner, however, states that “no judicial matters would affect or be
affected by a decision in this proceeding.” Paper 5.
2 U.S. Patent No. 7,086,584 B2, issued Aug. 25, 1999 (Ex. 1002). Petitioner
asserts that Stoutenburg incorporates by reference U.S. Patent Application
No. 2002/0104878, published Aug. 8, 2002 (Ex. 1003) (“Seifert”) and,
therefore, treats Seifert as part of Stoutenburg for purposes of its analysis.
Pet. 2–3, n.1.
3 U.S. Provisional Application 60/256,127, filed Dec. 15, 2000 (Ex. 1004).
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C. The ’864 Patent
The ’864 patent describes a system and method for circulating
electronic gift certificates. Ex. 1001, Title. Specifically, the ’864 patent
describes a method for “quickly and accurately” purchasing, gifting, and
using an electronic gift certificate—“a multimedia message including
barcode data”—through a communication terminal over a wired or wireless
network. Id. at Abstract, 1:7–16, 2:31–46, 11:5–6. For use of the electronic
gift certificate, the barcode data can be displayed on a communications
terminal. Id. at 7:33–35.
Figure 1 of the ’864 patent is reproduced below.

Figure 1 shows a preferred embodiment of the ’864 patent’s electronic
gift circulation system. Id. at 3:48–50. Electronic gift certificate service
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system 200 includes system management server 210, gift certificate service
server 220, gift certificate database 230, and contents database 235. Id. at
4:23–26. A chain store and a computer both access system 200 through
wired network 270. Id. at 4:26–32. A communication terminal accesses
system 200 through wireless network 280. Id. Server 220 authenticates and
manages requests for electronic gift certificates from the communication
terminal or the chain store. Id. at 4:47–50. Database 230 stores information
related to gifting and using the electronic gift certificates, including “a
gifting history and a usage history as well as a history of gift certificates
bought by the client.” Id. at 4:66–5:9.
D. The Challenged Claims
Petitioner challenges claims 1–5. Pet. 1. Claim 1 is independent and
is reproduced below:
1. A gift certificate service system for managing
sales, gifting, and usage of electronic gift certificates according
to a request by a user’s communication terminal through a
wired network, wireless network, or both, comprising:
a gift certificate service server for managing purchase,
gifting, and usage operations on the electronic gift certificates
from the communication terminal;
a gift certificate database, accessed by the gift certificate
service server, for storing electronic gift certificate information
prior to transferring the gift certificate to a transferee, and
processing a reply to an inquiry of electronic gift certificate
usage from the gift certificate service server; and
a network server accessed by the gift certificate service
server and accessed by the user’s communication terminal
through the wired network, wireless network, or both, for
performing a client interface function with the purchase, gifting,
and usage of the electronic gift certificates, and transmitting the
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user’s gift certificate purchase particulars and gift certificate
information for usage of the corresponding gift certificate to the
communication terminal,
wherein the electronic gift certificate is a multimedia
message including barcode data, wherein the network server is
responsive to use of the electronic gift certificate occasioned by
displaying the barcode data on the communication terminal, and
wherein the electronic gift certificate information stored by the
gift certificate database includes at least one of a gifting history
of the gift certificates or a usage history of the gift certificates.
Ex. 1001, 10:50–11:25.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms are given their broadest
reasonable interpretation in light of the specification in which they appear
and the understanding of others skilled in the relevant art. See 37 C.F.R.
§ 42.100(b). Applying that standard, we interpret the claim terms of the
’864 patent according to their ordinary and customary meaning in the
context of the patent’s written description. See In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner proposes explicit constructions for two terms recited by
independent claim 1—“gift certificate” (Pet. 6–7) and “multimedia message
including barcode data” (id. at 7–8). For purposes of this decision, however,
we need not address explicitly the construction of these terms.
Petitioner also proposes constructions for all of the limitations of
dependent claims 2, 3, and 4 that are written in means-plus-function
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format—17 limitations total.4 Pet. 8–17. Petitioner asserts that all 17
limitations are means-plus-function limitations under 35 U.S.C. § 112, ¶ 65
and identifies specific portions of the ’864 patent specification that allegedly
describe structure corresponding to the claimed function for each limitation.
Id.
We agree with Petitioner that the 17 limitations identified by
Petitioner as being written in means-plus-function format are governed by
35 U.S.C. § 112, ¶ 6, because they all use the phrase “means for” modified
by functional language without being modified by any structure to perform
the claimed function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1347–48 (Fed. Cir. 2015). The scope of these limitations is, thus, defined by
the structure disclosed in the specification plus any equivalents of that
structure. Aristocrat Techs. v. Int’l Game Tech., 521 F.3d 1328, 1331 (Fed.
Cir. 2008). “The specification must contain sufficient descriptive text by
which a person of skill in the field of the invention would ‘know and
understand what structure corresponds to the means limitation.’” Typhoon
Touch Techs., Inc. v. Dell, INc., 659 F.3d 1376, 1383–84 (Fed. Cir. 2011)
(quoting Finisar Corp. v. DirecTV Grp., 523 F.3d 1323, 1340 (Fed. Cir.
2008)). Except for a narrow exception concerning functions that are

4 Petitioner addresses several, very similar limitations together, and therefore
groups the 17 means-plus-function limitations into 12 distinct sections. Pet.
8–17.
5 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶¶ 1, 2, and 6 as
35 U.S.C. §§ 112(a), (b), and (f). Because the ’864 patent has a filing date
before September 16, 2012 (effective date), we will refer to the pre-AIA
version of 35 U.S.C. § 112.
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“coextensive” with a microprocessor itself, such as “processing” data,
“receiving” data, and “storing” data, a computer-implemented means-plus-
function element is indefinite, under § 112, ¶ 2, unless the specification
discloses the specific algorithm used by the computer to perform the recited
function. EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d
616, 621 (quoting In re Katz Interactive Call Processing Patent Litigation,
639 F.3d 1303, 1316 (Fed. Cir. 2011)).
We are not persuaded that Petitioner has shown that the ’864
specification describes an algorithm adequate to provide structure to the
corresponding function for all the means-plus-function limitations of claims
2, 3, and 4. For example, claim 2 recites the limitation “means for checking
a settlement state of the electronic gift certificate bought by the user.” We
agree with Petitioner that the claimed function of this limitation is “checking
a settlement state of the electronic gift certificate bought by the user” (“the
checking function”). Pet. 8–9. We do not, however, agree that Petitioner
has pointed to adequate corresponding structure in the ’864 specification to
support this function. Specifically, Petitioner points to server 220 and
settlement manager 221, 223 as shown in Figure 1, and steps S70 and S80 of
Figure 2, as providing the required structure. Id. at 9. Nothing in the figures
themselves, however, clarifies anything other than that servers to accomplish
the checking function exist in the system and steps are taken to achieve the
checking function during the process shown in Figure 2. Ex. 1001, Fig. 1,
Fig. 2 (S70 labeled “Internal settlement exists?,” S80 labeled “Process
internal settlement”). Neither figure includes “description of the means or
steps taken to accomplish the end result.” Function Media, L.L.C. v.
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Google, Inc., 708 F.3d 1310, 1317 (Fed. Cir. 2013). Petitioner also points to
language in the ’864 patent as providing structure for the checking function.
Id. at 9 (citing Ex. 1001, 4:33–37, 4:51–57, 6:13–18). These portions of the
’864 specification, like the figures, explain that servers exist in the system
(Ex. 1001, 4:33–37) and the servers perform settlement processes, but they
contain no explanation of how the servers specifically perform the checking
function. For example, the specification states only that the settlement
manager 221 “performs internal settlement processes” (id. at 4:51–57) and
external settlement processes are processed “through the VAN 260 or the
KFTC 290” (id. at 6:13–18). At most, therefore, Petitioner points to
language disclosing “an ‘abstraction that describes the function’ to be
performed.” See Function Media, 708 F.3d 1310, 1318 (quoting Blackboard
Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383 (Fed. Cir. 2009)).
Claims 3 and 4 each have at least one limitation with similar
problems. For example, claim 3 recites “means for updating the users [sic]
gift certificate information, storing the updated information in the gift
certificate database together with the transferee’s gift certificate
information,” and claim 4 recites “means for allowing processing of the
settlement on the price information when the settlement is possible based on
the usage of the gift certificate.” We agree with Petitioner’s recitation of the
functions recited by these limitations. Pet. 14, 16. For reasons similar to
those discussed with respect to claim 2 and the checking function, however,
we do not agree that Petitioner has pointed to adequate corresponding
structure in the ’864 specification to support these functions (Pet. 14 (citing
Ex. 1001, Fig. 1 (230), 4:66–5:9); Pet. 16 (citing Ex. 1001, Fig. 1 (220, 221,
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223), Fig. 4 (S280), 4:33–37, 4:51–57, 7:20–26)).
B. Claims 2–4
Claims 2–4 are written using several means-plus-function limitations.
As indicated in the claim construction section above, we are not persuaded
that Petitioner has pointed out adequate structure corresponding to at least
one of these limitations in each of claims 2, 3, and 4. Because of this
deficiency, Petitioner has not properly provided sufficient information for a
determination of the scope of these claims and, we cannot conduct the
necessary factual inquiry for determining obviousness. See In re Aoyama,
656 F.3d 1293, 1298 (Fed. Cir. 2011) (quoting Enzo Biochem, Inc. v.
Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)) (“[A] claim cannot be
both indefinite and anticipated.”); In re Steele, 305 F.2d 859, 862–63 (CCPA
1962) (reversing the Board’s decision of obviousness because it relied on
“what at best are speculative assumptions as to the meaning of the claims”).
We are unable to conclude, therefore, that there is a reasonable likelihood
that Petitioner would prevail in its challenge of claims 2–4.
C. Claims 1 and 5
Petitioner asserts that claims 1 and 5 would have been obvious over
Stoutenburg and Karas. Pet. 22–51.
Stoutenburg describes methods for configuring point-of-sale (“POS”)
systems. Ex. 1002, Abstract. Certain embodiments of the POS device are
capable of issuing “stored value cards” that “can be gift certificates, phone
cards, debit cards, and the like.” Id. at 13:48–51. The stored value card may
include “an identification number, in human readable form, on a magnetic-
stripe, in a bar code, or the like.” Id. at 22:17–23. Stoutenburg describes the
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use of a database that contains information about the stored value cards,
including whether the cards are physical or virtual, card balances, minimums
and maximums, and merchant information. Id. at 20:62–67. A processing
system works in cooperation with this database to permit “information to be
updated,” which may be received “from a variety of sources,” including
“through the Internet . . . by any type of computer,” “to permit cards to be
issued, to permit transactions to occur, and the like.” Id. at 20:67–21:8.
Stoutenburg also describes “transferring value via value transfer
system 600.” Id. at 30:1–6.
Karas is a provisional patent application describing enclosing
“branded electronic gift certificates” within electronic greeting cards.
Ex. 1004, 5.
For claims 1 and 5, Petitioner primarily relies on Stoutenburg for the
allegations of unpatentability. Pet. 22–38, 50–51. Disclosures in Karas
appear to be offered as an alternative to the corresponding disclosure of
Stoutenburg for certain limitations. Id. at 26–28, 50–51. Petitioner,
however, never describes how Stoutenburg differs from the claimed subject
matter such that a particular teaching of Karas would be relied upon to
overcome that deficiency. Id. For example, when discussing the preamble
of claim 1, Petitioner first spends four pages describing Stoutenburg’s
system and then adds that “Karas also teaches gifting certificates through use
of a ‘gift certificate service server,’” followed by a few sentences discussing
Karas. Pet. 22–26. Petitioner neglects to explain how it is proposing that a
person of ordinary skill would have combined the two different systems. Id.
Petitioner’s analysis of the limitations of claims 1 and 5 does not
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clarify the situation. For each limitation of claim 1, Petitioner relies mainly
on Stoutenburg. Id. at 28–38. The only citation to Karas is in reference to
the first limitation—“a gift certificate service server for managing purchase
gifting, and usage operations on the electronic gift certificates from the
communication terminal.” Id. at 28–29. In the midst of explaining how
Stoutenburg discloses each part of this limitation (id. at 28–29), Petitioner,
without further comment, states that “[s]imilarly, Karas discloses a ‘payment
enabler’ to manage the gifting of electronic gift certificates” (id. at 28).6 For
claim 5, the only citation to Karas is that “Karas similarly discloses a
database record ‘for storing information pertinent to . . . person-to-person
payment methods.” Pet. 50. Petitioner, however, neglects to explain the
relevance of these parallel teachings. We are left to wonder which portion
of Karas Petitioner is relying on, and what portion of Stoutenburg that
teaching is meant to supplement. Dr. Tygar’s testimony, which repeats the
arguments in the brief, sheds no further light on the issue. Ex. 1006 ¶¶ 105–
160, 197–202.
Petitioner subsequently states that a person of ordinary skill would
have been motivated to combine “the teachings of Stoutenburg with those of
Karas” to “learn additional methods that might be used to transfer/gift stored
value, particularly with branded electronic gift certificates.” Id. at 26–27.
Because it is unclear, however, which “additional methods” of Karas

6 In the claim chart for claim 1, another limitation—“a gift certificate
database . . .”—contains citations to several pages of Karas without any
explanation. Pet. 37–38. The section of the Petition discussing this
limitation, however, does not mention Karas. Id. at 29–30.
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Petitioner is relying on to supplement the teachings of Stoutenburg and how
such teachings would have been used by a skilled artisan, this statement, by
itself, does not provide an adequate rationale for combining the cited
teachings. It certainly does not provide a sufficiently “articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
In support of its assertion that a person of ordinary skill would have
combined the two references, Petitioner points to language in Stoutenburg
stating that “it should be recognized that the preceding stored value card
examples are merely illustrative and that a number of modifications to the
examples are possible. For example, such stored value card processes can
be used in conjunction with a value transfer system, where the value transfer
system effectuates payment for a purchased stored value card.” Pet. 27
(quoting Ex. 1002, 28:6–12). Petitioner does not explain why this language
would inspire a person of ordinary skill to look to Karas or which portions of
Karas, specifically, that person would be interested in. Instead, the quoted
language follows a detailed description of an embodiment using a “phone
card system” and introduces a paragraph describing various alternative
systems, such as including multiple function central controls. Ex. 1001,
27:56–28:25. This language, therefore, does not, by itself, make plain why a
person of ordinary skill would look to Karas to learn “additional methods
that might be used to transfer/gift stored value.” In sum, Petitioner does not
explain how or why a person of ordinary skill would have combined the
teachings of Stoutenburg and Karas. See KSR, 550 U.S. at 418 (“Often, it
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will be necessary for a court to . . . determine whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue.”). We are, therefore, not persuaded that Petitioner has
demonstrated a reasonable likelihood that it would prevail on the ground that
claims 1 and 5 are unpatentable over Stoutenburg and Karas.
III. CONCLUSION
For the foregoing reasons, based on the information presented in the
Petition, we are not persuaded that there is a reasonable likelihood that
Petitioner would prevail in showing unpatentability of claims 1–5 of the
’864 patent. We, therefore, decline to institute inter partes review as to any
of the challenged claims. 37 C.F.R. § 42.108.
IV. ORDER
It is ordered that the Petition is denied as to all challenged claims, and
no trial is instituted.

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Petitioner:

Monica Grewal
monica.grewal@wilmerhale.com

Donald Steinberg
donald.steinberg@wilmerhale.com

Patent Owner:

Eugenio Torres
patent@ferraiuoli.com