MasterCard International Incorporatedv.John D'Agostino

Patent Trial and Appeal Board

Aug 31, 2015

11252009 (P.T.A.B. Aug. 31, 2015)

Trials@uspto.gov Paper 22
Tel: 571-272-7822 Entered: August 31, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MASTERCARD INTERNATIONAL INCORPORATED,
Petitioner,

v.

JOHN D’AGOSTINO,
Patent Owner.

Case IPR2014-00544
Patent 7,840,486 B2

Before SALLY C. MEDLEY, KARL D. EASTHOM, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a); 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
MasterCard International Incorporated (“Petitioner”) filed a Petition
requesting an inter partes review of claims 1–30 of U.S.
Patent No. 7,840,486 B2 (Ex. 1001; “the ’486 patent”). Paper 1 (“Pet.”).
John D’Agostino (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted inter partes
review of the ʼ486 patent, on September 4, 2014, as to claims 1–15 and 22–
30 under 35 U.S.C. § 102(e) as anticipated by Cohen,1 and as to claims 16–
21 under 35 U.S.C. § 103(a) as obvious over Cohen and Musmanno.2
Paper 7 (“Dec.”).
Patent Owner filed a Response (Paper 11, “PO Resp.”), and Petitioner
filed a Reply (Paper 12, “Pet. Reply”). Petitioner filed a Motion to Exclude
evidence (Paper 14, “Mot.”), Patent Owner filed an Opposition to
Petitioner’s Motion to Exclude evidence (Paper 17, “Opp. to Mot.”), and
Petitioner filed a Reply in support of its Motion to Exclude (Paper 18,
“Reply to Opp. to Mot.”). Oral hearing was held on May 12, 2015, and the
hearing transcript has been entered in the record. Paper 21 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we are persuaded that Petitioner has shown
by a preponderance of the evidence that claims 1–30 of the ʼ486 patent are
unpatentable. Petitioner’s Motion to Exclude is denied.

1 U.S. Patent No. 6,422,462 B1 (Ex. 1004, “Cohen”).
2 U.S. Patent No. 5,826,243 (Ex. 1006, “Musmanno”).
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B. Related Proceedings
Petitioner identifies the following related district court proceeding
involving the ’486 patent and in which Petitioner is a party: D’Agostino v.
MasterCard, Inc., No. 1:13–cv–00738 (D. Del. filed Apr. 26, 2013).
Pet. 58.
In related proceeding IPR2014-00543, Petitioner seeks review of U.S.
Patent No. 8,036,988 C1 (“the ’988 patent”), which claims priority to the
’486 patent. Id. Petitioner also identifies the ’988 patent as the subject of Ex
Parte Reexamination proceeding No. 90/012,517. Id. at 6–13.
Petitioner previously sought a covered business method patent review
of the ’486 patent in proceeding CBM2013–00058, but we had denied
institution of review. Id. at 13–14; Mastercard Int’l Inc. v. D’Agostino, Case
CBM2013-00058 (PTAB Mar. 7, 2014) (Paper 10). Specifically, we denied
institution of review because Petitioner had not demonstrated that Cohen or
Flitcroft qualifies as prior art under Section 18(a)(1)(C) of the AIA,3 because

3 Under section 18(a)(1)(C) of AIA, a petitioner in a transitional proceeding
who challenges the validity of one or more claims in a covered business
methods patent on grounds of of unpatentability under §§ 102 and 103 may
only support such grounds on the following basis:
(i) prior art that is described by section 102(a) of such
title (as in effect on the day before such effective date); or
(ii) prior art that—
(I) discloses the invention more than 1 year before
the date of the application for patent in the United States;
and
(II) would be described by section 102(a) of such
title (as in effect on the day before the effective date set
forth in section 3(n)(1)) if the disclosure has been made
by another before the invention thereof by the applicant
for patent.
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neither Cohen nor Flitcroft was published prior to the effective filing date of
the ’486 patent. Mastercard Int’l Inc. v. D’Agostino, Case CBM2013-
00058, slip op. at 8–9 (PTAB Mar. 7, 2014).
C. The ʼ486 Patent
The ’486 patent discloses a method and system of performing secure
credit card purchases. Ex. 1001, Abstract. The method and system increase
overall security by minimizing access to credit card numbers, without having
to deviate substantially from existing credit card transaction practices. Id. at
1:13–23.

AIA Section 18(a)(1)(C). This section does not apply to an inter partes
review. 35 U.S.C. § 311(b) allows for a challenge in an inter partes review
to be raised “on the basis of prior art consisting of patents or printed
publications.” Accordingly, Cohen and Flitcroft qualify as prior art in an
inter partes review.

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Figure 3 of the ’486 patent follows:

Figure 3, depicted above, schematically represents a secure credit card
transaction system, where the customer-to-merchant contact is by phone or
in person. As shown above in Figure 3, customer 54 receives promotional
information from merchant 56, either by telephone 60 or in person 62.
Ex. 1001, 7:25–30. Customer 54 then contacts custodial authorizing entity
64, by either telephone 66’ or computer 45’, for authorization. Id. at 7:30–
38. After confirming authorization, authorizing entity 64 establishes details
of the anticipated transaction to determine a payment category, and then
issues a transaction code to the customer. Id. at 7:38–41. The customer can
utilize the transaction code to consummate a transaction within the defined
parameters of the payment category, and the merchant can obtain
verification and subsequent payment utilizing the transaction code only. Id.
at 7:41–50.
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D. Illustrative Claim
Petitioner challenges claims 1–30 of the ’486 patent. Pet. 17–58.
Claim 1 is illustrative of the claims at issue and is reproduced below:
1. A method of performing secure credit card
purchases, said method comprising:
a) contacting a custodial authorizing entity having
custodial responsibility of account parameters of a customer’s
account that is used to make credit card purchases;
b) supplying said custodial authorizing entity with at
least account identification data of said customer’s account;
c) defining a payment category including at least limiting
purchases to a single merchant for at least one transaction, said
single merchant limitation being included in said payment
category prior to any particular merchant being identified as
said single merchant;
d) designating said payment category thereby designating
at least that transaction code generated in accordance with said
payment category can be used by only one merchant;
e) generating a transaction code by a processing
computer of said custodial authorizing entity, said transaction
code reflecting at least the limits of said designated payment
category to make a purchase within said designated payment
category;
f) communicating said transaction code to a merchant to
consummate a purchase with defined purchase parameters;
g) verifying that said defined purchase parameters are
within said designated payment category; and
h) providing authorization for said purchase so as to
confirm at least that said defined purchase parameters are
within said designated payment category and to authorize
payment required to complete the purchase.

Ex. 1001, 8:52–9:14.
E. Claim Construction
The Board interprets claims of an unexpired patent using the broadest
reasonable interpretation in light of the specification of the patent in which
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they appear. See 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs.,
LLC, No. 2014-1301, 2015 WL 4097949 at *7–*8 (Fed. Cir. July 8, 2015)
(“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by
PTO regulation.”). Under the broadest reasonable interpretation standard,
claim terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
1. “generating a transaction code”
Independent claims 1, 24, 25, and 29 recite “generating a transaction
code.” Petitioner, in its Petition, proposes this limitation means “creating a
code usable as a substitute for a credit card number in a purchase
transaction, the number pre–coded to be indicative of a specific credit card
account.” Pet. 15 (citation omitted). In our Decision to Institute, we
construed “generating a transaction code,” under the broadest reasonable
construction, to mean “creating or producing a code that is usable as a
substitute for a credit card number in a purchase transaction, the transaction
code is pre-coded to be indicative of a specific credit card account.” Dec. 6–
7.
Patent Owner argues that “generating a transaction code” means
“producing a code that is usable in substitution for a credit card number in a
purchase transaction, the code being indicative of a customer account and a
payment category.” PO Resp. 4–5 (emphasis added). Patent Owner
specifically argues that our construction of “generating a transaction code” is
overly narrow by requiring that the transaction code is pre-coded to be
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indicative of only a “credit card account,” and should be broadly construed
to include both a credit card account or debit card account. Id. at 5–8.
Patent Owner additionally argues that the ʼ486 patent claims specifically
require that the generated transaction code indicates or reflects the payment
category. Id. at 6–7. Petitioner responds that such a broadening of this
limitation is unnecessary because the claims limit the scope of this limitation
to “credit card” purchases. Pet. Reply 2. Petitioner also responds that claim
differentiation, specifically claim 8, precludes “generating a transaction
code” from indicating or reflecting a “payment category.” Id.
We agree with Petitioner. Claim 1 recites “generating a transaction
code . . . said transaction code reflecting at least the limits of said designated
payment category to make a purchase within said designated payment
category.” In contrast to the ʼ988 patent under review in IPR2014-00543,
the claims do not require the “transaction code [to be] associated with said
account.” Accordingly, the ʼ486 patent claims and specification do not
require that the “transaction code” is associated with the account and we
decline to import such a limitation in to its meaning.
Claim 1 additionally recites “[a] method of . . . performing secure
credit card purchases” and “a customer’s account that is used to make credit
card purchases.” Accordingly, the ʼ486 patent claims limit the scope of the
“account” to “credit card purchases.” Based on the foregoing discussion,
under the broadest reasonable interpretation and based on the ʼ486 patent
claim limitations, we construe “generating a transaction code to mean
“creating or producing a code that is usable as a substitute for a credit card
number in a purchase transaction, the transaction code is reflecting the limits
of the payment category.”
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2. “defining at least one payment category”
Independent claim 1 recites “defining a payment category.” Claim 1
further recites the payment category includes “limiting purchases to a single
merchant” and “said single merchant limitation being included in said
payment category prior to any particular merchant being identified as said
single merchant.” Independent claims 24, 25, and 29 recite similar
limitations. Based on the context of the ʼ486 patent specification, and under
the broadest reasonable interpretation, we construed this limitation to mean
“specifying the type of limitation (or limitations) that are available to be
applied to a transaction code in order to limit its use.” Dec. 7–8.
Patent Owner argues that this construction is not the broadest
reasonable interpretation, and should be construed to mean “specifying the
limit (or limits) of a payment category that are applied to a transaction code
in order to limit its use.” PO Resp. 9–10. Patent Owner specifically argues
that the “defining” is to “mark the limits of the payment category.” Id.
Petitioner argues that Patent Owner’s construction fails to give meaning to
the term “payment category” and, therefore, Patent Owner’s construction is
not the broadest reasonable interpretation. Pet. Reply 2–3.
We agree with Petitioner. Patent Owner’s proposed construction does
not provide any meaning to the term “payment category.” As we had
determined in our Decision to Institute, the ʼ486 patent does not provide a
definition for the term “payment category.” Dec. 6–7. Rather, the ’486
patent describes a variety of possibilities, for example: 1) “[e]ach of the
payment categories are reflective of a different type of payment desired or
required to consummate the intended purchase”; 2) payment categories “may
include a single transaction involving a specific dollar amount for a purchase
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within a specific time period”; or, 3) “a single transaction may be involved .
. . [with] a maximum limit or a dollar amount.” Ex. 1001, 3:48–59.
Accordingly, we construe “defining a payment category” to mean
“specifying the type of limitation (or limitations) that are available to be
applied to a transaction code in order to limit its use.” See Dec. 6–7; Pet. 15.
3. “particular merchant” and “said single merchant limitation being
included in said payment category prior to any particular merchant
being identified as said single merchant”
We previously construed the term “particular merchant” to mean “the
merchant with whom the customer is transacting.” Dec. 8. We also
construed “[said] single merchant limitation being included in said payment
category prior to any particular merchant being identified as [said] single
merchant” to mean “any group, category, or type of merchant is included in
the payment category prior to the customer selecting a particular merchant
for a transaction.” Id. at 7–8. Patent Owner argues this is not the broadest
reasonable interpretation of “particular merchant” and submits that
“particular merchant” should be construed to mean “a specific merchant
with whom a customer can engage in a purchase transaction.” PO Resp. 11–
13. Patent Owner does not provide any further explanation for their
proposed construction. Petitioner argues that Patent Owner’s construction is
incorrect because Patent Owner argued “the exact opposite to obtain
allowance during the ex parte prosecution of the parent ʼ486 patent.” Pet.
Reply 3 (citing Ex. 1013, 187).
We decline to adopt Patent Owner’s construction of “particular
merchant.” We are not persuaded that adding the term “specific” to our
construction alters the meaning of our construction of “particular merchant.”
Independent claim 1 recites “said single merchant limitation being included
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in said payment category prior to any particular merchant being identified as
said single merchant.” Patent Owner fails to provide us with a meaningful
explanation as to how transactions are limited to a single merchant, without
identifying any particular merchant.4 Accordingly, we determine that the
“single merchant” includes the “particular merchant” without identifying the
particular merchant. Absent such a relationship, the claim language would
be indefinite as ambiguously limiting transactions to an unidentified
particular merchant. Accordingly, we maintain our construction of
“particular merchant” to mean “the merchant with whom the customer is
transacting.”
Patent Owner further argues that the plain and ordinary meaning of
“merchant” is “someone who buys and sells goods.” PO Resp. 15 (citing
Ex. 2007 ¶ 17; Ex. 2005, 3). We agree with Patent Owner. We note that
this broad definition for “merchant” is not limited by any business
association or corporate relationship.
Patent Owner further argues that “‘said single merchant limitation’
simply refers to and is synonymous with the recited phrase ‘limiting

4 In addition to a number of other arguments, Patent Owner made this same
argument before the Examiner during the Reexamination of the ʼ988 patent:
Further, the examiner’s argument fails because the examiner
incorrectly construes “a particular merchant” to apparently
mean a merchant that is defined by its location, which is an
improper construction. In light of the ’988 patent specification,
the correct meaning of a particular merchant is simply an
identifiable merchant that a customer can use the transaction
code with to make purchases.
Reexamination Proceeding No. 90/012,517, App. Br. 18. This argument is
not a clear disavowal as it obfuscates any clear meaning of “particular
merchant” for the reasons noted.
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purchases to a single merchant’” and is not limited to “groups, categories, or
types of merchants.” Id. We agree with Patent Owner. Independent claim 1
recites “defining a payment category including at least limiting purchases to
a single merchant for at least one transaction, said single merchant limitation
being included in said payment category.” (Emphasis added). Patent Owner
explained that the “single merchant limitation” limits the number of
merchants to a single merchant. PO Resp. 14; Tr. 32:1–5; Ex. 2007 ¶ 15.
Accordingly, we construe the limitation “said single merchant limitation
being included in said payment category prior to any particular merchant
being identified as said single merchant” to mean “the merchant transactions
are limited to a single merchant and are included in the payment category
prior to the customer selecting a particular merchant for a transaction.”
II. ANALYSIS5
A. Anticipation of Claims 1–15 and 22–30 by Cohen
1. Overview
Petitioner contends that claims 1–15 and 22–30 of the ʼ486 patent are
unpatentable under 35 U.S.C. § 102(e) as anticipated by Cohen. Pet. 17–31.
Petitioner provides citations for where each claim limitation is described by

5 Petitioner states that in the ʼ486 patent prosecution history, Patent Owner
“disclaimed the ability to enforce the ʼ988 patent beyond the term of the
ʼ486 Patent – conceding that the claims of the ʼ486 patent and those of the
‘988 patent are not patentably distinct from each other” because Patent
Owner filed a Terminal Disclaimer. Pet. 6; see Ex. 1013, 130–133. Patent
Owner argues that the filing of a terminal disclaimer serves the statutory
function of removing a double patenting rejection and is not an acquiescence
as to the merits of a double patenting rejection. PO Resp. 33–34 (citing
Quad Envtl. Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 874 (Fed.
Cir. 1991)). We, however, do not reach this argument because it is not
material to the challenges asserted against the claims in the ʼ486 patent.
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Cohen. Id. We have reviewed the Petition and supporting evidence and find
that Petitioner has shown that Cohen anticipates the challenged claims. See
id.
2. Cohen (Ex. 1004)
Cohen describes a system of disposable credit card numbers, where
the credit card numbers are generated for a one-time, single transaction
basis, after which they are disposed of, or thrown away. Ex. 1004, 2:35–37.
In general, a user dials into her credit card company and provides the
ordinary credit card number and verification data, and may further indicate
the transaction for which the customized credit card number will be used.
Id. at 3:41–53. The user then is provided with a disposable or customized
credit card number for a single or limited range use. Id.
For example, an employee’s credit card may be authorized to
purchase a computer system, thereby transforming the credit card to a
customized credit card that is valid for only that particular type of purchase.
Id. at 8:24–35. The card also can be customized for use in a particular store
or a particular chain of stores. Id.
3. Analysis
Petitioner contends that claims 1–15 and 22–30 of the ʼ486 patent are
unpatentable under 35 U.S.C. § 102(e) as anticipated by Cohen. Pet. 17–31.
Patent Owner argues that Cohen fails to disclose “said single merchant
limitation being included in said payment category prior to any particular
merchant being identified as said single merchant,” as recited by claim 1.
PO Resp. 18–26. Patent Owner specifically argues that (a) Cohen’s
merchant type limit fails to disclose “prior to any particular merchant being
identified,” (b) Cohen’s type of store limit and type of charges fail to
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disclose a “single merchant limitation,” (c) Cohen’s certain store limit
cannot be made before identifying a specific merchant as the certain store,
(d) Cohen’s group of stores limit is not a limit to a single merchant and
cannot be made before identifying specific stores as members of the group
of stores, and (e) Cohen’s particular chain of stores limit cannot be made
before identifying a particular merchant.6 Id. Patent Owner further argues
that Cohen fails to disclose “designating/selecting a payment category that
places limitations on a transaction code before the transaction code is
generated.” Id. at 28–32. In other words, Patent Owner argues that Cohen
fails to disclose (a) the single merchant limitation, (b) said single merchant

6 Patent Owner further argues that the Ex Parte Reexamination of the ʼ988
patent confirmed claims 21 and 23–30 because Cohen fails to disclose
“single merchant limitation being included in said payment category prior to
any particular merchant being identified as said single merchant.” PO Resp.
32; see Ex. 2002, 4. However, unless Patent Owner made arguments
creating a clear disavowal of claim scope that demonstrates how Cohen fails
to meet a disputed limitation, we are not bound, under statute or otherwise,
by such arguments. Given that this proceeding and the Reexamination
proceeding were concurrent, Patent Owner failed in its duty to clarify its
claim meaning during the Reexamination proceeding. See supra, note 4.
We instituted review of the claims prior to the issuance of the
Reexamination Certificate. Patent Owner also had an opportunity to amend
claims in each proceeding. Moreover, this case involves a different
evidentiary record that has been supplemented by arguments and evidence
by Petitioner that was not before the Examiner in the Reexamination
proceeding. These supplemental arguments and evidence include those
impacting the claim construction and application of a “single merchant” to
passages in Cohen not discussed in the Reexamination proceeding. See
Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (The
“court . . . observes that the PTO is under no obligation to accept a claim
construction proffered as a prosecution history disclaimer, which generally
only binds the patent owner.”).
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limitation is included prior to any particular merchant being identified as the
single merchant, and (c) designating/selecting a payment category that
places limitations on a transaction code before the transaction code is
generated.
a. Single Merchant Limitation
Patent Owner argues that Cohen’s disclosure of limiting a credit
card’s use to a type of store, a type of charge, or to a group of stores does not
meet the “single merchant” limitation. PO Resp. 21–25. Patent Owner
specifically argues that Cohen “cannot meet the disputed claim limitation,
because the claim limitation requires a payment category that limits
transactions to only a [sic] one merchant.” Id. at 23 (citing Ex. 2007 ¶¶ 39,
40). Patent Owner also argues that Cohen’s disclosure of a group of stores
does not meet this limitation because the “phrase ‘group of stores’ itself
means more than one store.’” Id. at 24–25. Patent Owner further argues that
Cohen’s particular chain of stores disclosure fails to meet the “single
merchant” limitation. Id. at 25–26. We disagree with Patent Owner. As
discussed above, we construe the “single merchant” limitation as limiting
purchase to a single merchant. See supra Section I.E.3. We further agree
with Patent Owner’s broad construction of “merchant” to mean “someone
who buys and sells goods.” Supra Section I.E.3. Accordingly, under the
broadest reasonable construction, the “single merchant” limitation includes
limiting transactions to any chain of stores or group of stores that is
identified as a single merchant.
Petitioner contends that Cohen discloses a card that can be customized
such that it can be valid only for purchases in a particular store or a
particular chain of stores, such as a particular restaurant or a particular chain
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of restaurants. Pet. Reply 6 (citing Ex. 1004, 8:25–39); Pet. 27–28 (citing
Ex. 1004, 8:25–39); Ex. 1004, 8:25–39. As discussed above, the “particular
merchant” is “the merchant with whom the customer is transacting,” and the
“single merchant” includes the “particular merchant” in a broad manner
without identifying the particular merchant. See supra Section I.E.3. The
relationship between a chain of stores and a particular store satisfies the
relationship between the “single merchant” and the “particular merchant.”
For example, the “single merchant” could be Target or McDonald’s chain of
stores, where a “particular merchant” could be a specific Target or
McDonald’s store, e.g., at a particular location or online. See PO Resp. 25–
26; Tr. 33:19–37:2. Patent Owner argues that in such a scenario Target or
McDonald’s is both the “single merchant” and the “particular merchant” (Tr.
33:1–37:5), however, Patent Owner has not directed us to evidence or
provided a rationale to rebut our construction that the chain of stores is the
“single merchant limitation” and the specific store in the chain of restaurants
is the “particular merchant.” Accordingly, we find that Cohen discloses the
recited “single merchant” limitation.
b. Single merchant limitation being included in said payment
category prior to any particular merchant being identified
as said single merchant
Patent Owner argues that Cohen’s particular chain of stores requires
identifying a specific chain of stores prior to limiting to that particular store
or particular chain of stores, and, therefore, does not meet the disputed claim
limitation. PO Resp. 25–26. Patent Owner specifically argues that “[i]t is
known that a chain of stores consists of series of stores selling the same
goods and that are owned by one ownership,” and, as such, the particular
merchant necessarily must have been identified when the single merchant
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was identified––contrary to the claim limitation. See id. at 25 (citing
Ex. 2007 ¶¶ 34–35).
We disagree with Patent Owner. As discussed above, we construe the
relationship between the recited “particular merchant” and “single
merchant” such that the “single merchant” includes the particular merchant
as a member of the single merchant chain, without identifying the particular
merchant. See supra Section I.E.3. In other words, for example, a “single
merchant” can be the chain of stores, whereas the “particular merchant” is a
single store of that chain of stores. Supra Section I.E.3; see supra Section
II.A.3.a. Patent Owner agrees that a chain of stores may have single
ownership. See Tr. 36:21–37:2. Given such single ownership, Patent Owner
has not set forth persuasive evidence or rationale to demonstrate that it
precludes our construction of a “single merchant” as the chain of stores and
a “particular merchant” as a specific store in that chain of stores. See supra
Section I.E.3; Section II.A.3.a. As discussed above, our claim construction
of a “single merchant” as the chain of stores and a “particular merchant” as a
specific store in that chain of stores constitutes the broadest reasonable
construction of the term. See id. Accordingly, we agree with Petitioner that
Cohen’s disclosure of a credit card that is valid only for purchases in a
specific chain of stores, such as a specific chain of restaurants, meets this
disputed limitation. Pet. Reply 6 (citing Ex. 1004, 8:25–39); Pet. 19.
c. Designating/selecting a payment category that places
limitations on a transaction code before the transaction
code is generated
Patent Owner argues that independent claims 1, 24, 25, and 29 require
that the step of “generating the transaction code” is performed after
identifying an account and designating or selecting a payment category. PO
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Resp. 28–29. Patent Owner argues that although Cohen discloses
customizing a credit card, Cohen fails to disclose “defining/selecting
customized use of the credit card number before the credit number is
generated.” Id. at 29–32.
Although the claims require designating/selecting a payment category
before the generation of the transaction code, we disagree with Patent Owner
that Cohen fails to disclose this limitation. Cohen discloses that “a user dials
into her credit card company before making a transaction, and . . . is
provided with a disposable or customized number.” Ex. 1004, 3:42–49.
Cohen also discloses that “a user can indicate in advance of purchase, on the
telephone call with the credit card company, what the single use or the
customized credit card number is to be used for.” Id. at 3:50–53. Although
Patent Owner argues that Cohen does not explicitly disclose the step of
designating or selecting a payment category precedes the generation of a
transaction code, we find, based on the record before us, that a person with
ordinary skill in the art would have understood from this disclosure that a
user dials in to her credit card company and performs both the task of
requesting a disposable or customized number and indicates what the
customized credit card number is to be used for. Pet. Reply 12–13;
Tr. 57:11–21; see Ex. 1004, 3:42–53. We find that a reading of Cohen that
precludes a user from performing both steps in a single call is unreasonable.
Id.
Additionally, Cohen discloses that customized cards “can either be
preset for certain uses, or the cards can be ready and waiting in the user’s
office or home for setting to the desired use when the user is ready.” Pet.
Reply 13 (emphasis omitted)(citing Ex. 1004, 3:63–67). With this
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disclosure, Cohen is setting forth that the customized use for a card can be
preset, or set subsequent to the issuance of the card. Id. We find that a
person with ordinary skill in the art would have understood that Cohen
presents two options, where the preset option limits the customized card
prior to the generation of the transaction code. Id.
Even further, Cohen discloses that “relevant information (such as the
expiration date etc.) can either be printed on the card or verbally transmitted
to the user. Likewise, the limited use nature of the card (either in a general
sense or the specific limitations), the disposability of the card, the range of
dates or validity of the card, etc. may either be printed on the card or
transmitted to the user, whether verbally or in writing.” Ex. 1004, 3:19–25.
Again, we find that a person with ordinary skill in the art would have
understood that the designation of the limited use card and the subsequent
printing of the limits on the card suggests that the designation of the limits is
done prior to the step of generating the transaction code and printing of all of
the information on the customized card. Tr. 17:17–22, 51:4–52:19; see
Ex. 1004, 3:19–25.
4. Conclusion
We have reviewed the Petition and supporting evidence and find that
Petitioner has shown that Cohen anticipates all of the limitations of the
challenged claims. See Pet. 17–31.
B. Obviousness of Claims 16–21 over Cohen and Musmanno
Petitioner contends that claims 16–21 would have been obvious over
the combination of Cohen and Musmanno. Id. at 31–36. Petitioner provides
a detailed explanation, including citations to Cohen and Musmanno, as to
how the combination of Cohen and Musmanno discloses each limitation of
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claims 16–21. Id. Petitioner further provides an articulated reasoning with a
rational underpinning to support its conclusion of obviousness. Id. For
example, Petitioner contends that Cohen discloses claim 1, as discussed
above, and further discloses that Cohen’s transaction code can be used
repeatedly for a range of dates or a series of dates, as recited by claim 16.
Id. at 33 (citing Ex. 1004, 7:44–62). Petitioner further argues that
Musmanno discloses that a predetermined amount from a master account is
transferred to at least two subaccounts at a fixed time interval. Id. (citing
Ex. 1006, 5:53–59). Petitioner also argues that applying the repeating
transaction steps of Musmanno to the transaction code generation steps of
Cohen would not change the respective functions of each step and such a
combination would have yielded the predictable result of the ability to use
Cohen’s transaction code for repeating transactions for a fixed amount at
fixed intervals. Id. at 32–33 (citing Ex. 1008 ¶ 64).
Patent Owner argues that claims 16–21 depend from independent
claim 1, and, therefore, the combination of Cohen and Musmanno fails to
disclose dependent claims 16–21 for the same reasons discussed above with
regard to claim 1. PO Resp. 33. We are not persuaded by Patent Owner’s
arguments in support of claim 1 for the reasons discussed above, and,
therefore, are not persuaded that claims 16–21 would not have been obvious
for the same reasons. See supra Section II.A.3.
We have reviewed the Petition and supporting evidence and find that
Petitioner has shown that the combination of Cohen and Musmanno meets
all of the limitations of claims 16–21. See Pet. 31–36. We further agree
with the rationale for this combination of references articulated by
Petitioner. See id. (citing Ex. 1008 ¶ 64).
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C. Petitioner’s Motion to Exclude
Petitioner moves to exclude the declaration of Mr. Edward L. Gussin,
under Federal Rules of Evidence 702, as not qualified as an expert on the
subject matter of the ʼ486 patent. Mot. 1. Petitioner argues that both Mr.
Gussin and Petitioner’s declarant, Dr. Jack D. Grimes, agree that a person
with ordinary skill in the art has (1) a bachelor of science degree in electrical
engineering or computer science, or the equivalent, and (2) at least three
years of experience in “payment card payment technologies, including
experience in existing, accepted remote payment card transaction practices”
at the time of the invention. Id. at 3 (emphasis omitted) (citing Ex. 1008
¶ 18; Ex. 2007 ¶¶ 22–23). Petitioner argues that “to be qualified as an
expert, one must at least be a person of ordinary skill” and there is no
evidence that Mr. Gussin has the qualifications he agrees are required for a
person with ordinary skill in the art. Id. at 1 (citing Sundance, Inc. v.
Demonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008)).
Specifically, Petitioner argues that Mr. Gussin does not have at least three
years of experience in the payment industry, card payment technologies, or
with remote payment card transaction practices. Id. at 4; Reply to Opp. to
Mot. 2–4.
Patent Owner argues that Mr. Gussin has (1) a master of science
degree in electrical engineering, (2) thirty-nine years of electrical
engineering experience developing hardware and software systems related to
the present invention, and (3) served as an expert on claim construction
issues and is listed as an inventor on software patents. Opp. to Mot. 2–5.
Patent Owner asserts that this experience provides Mr. Gussin with the
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necessary skill and knowledge relevant to the technology of the ʼ486 patent.
Id. at 3–4.
We are not persuaded that we should exclude Mr. Gussin’s testimony.
Mr. Gussin’s extensive experience and education certainly qualify him to
provide expert testimony in general hardware and software technologies.
See Ex. 2007, Appendix A. To the extent Mr. Gussin is more familiar with
general hardware and software technologies and less familiar with “payment
card payment technologies,” we weigh Mr. Gussin’s testimony accordingly.
See Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the
Board has discretion to give more weight to one item of evidence over
another “unless no reasonable trier of fact could have done so”); In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board
is entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”). Accordingly, Petitioner’s argument goes more to the weight
we should accord Mr. Gussin’s testimony, rather than its admissibility, and it
is within our discretion to assign the appropriate weight to Mr. Gussin’s
testimony.
Petitioner further moves to exclude Mr. Gussin’s declaration because
it relies on claim constructions inconsistent with our Decision to Institute.
Mot. 5–6; Reply to Opp. to Mot. 4–5. Patent Owner responds that
“[n]othing requires Mr. Gussin’s testimony to be consistent with or
constrained by the Board’s preliminary claim constructions.” Opp. to Mot.
6. We agree with Patent Owner. Our preliminary Decision is not a final
determination. See Dec. 18. Accordingly, Patent Owner is permitted to
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provide evidence towards claim construction, regardless of our initial
determinations.
For the reasons discussed above, we are not persuaded to exclude Mr.
Gussin’s testimony. Petitioner’s Motion to Exclude is denied.
III. CONCLUSION
We are persuaded that Petitioner has demonstrated by a
preponderance of the evidence that claims 1–30 of the ʼ486 patent are
unpatentable.
IV. ORDER
Accordingly, it is hereby:
ORDERED that, based on the grounds under review, claims 1–30 of
U.S. Patent No. 7,840,486 have been shown by a preponderance of the
evidence to be unpatentable; and
FURTHER ORDERED that this is a Final Written Decision of the
Board under 35 U.S.C. § 318(a), and parties to the proceeding seeking
judicial review of this decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

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For PETITIONER:
Robert Scheinfeld
robert.scheinfeld@bakerbotts.com

Eliot Williams
eliot.williams@bakerbotts.com

For PATENT OWNER:

Stephen Lewellyn
s.lewellyn@maxeyiplaw.com

Brittany Maxey
b.maxey@maxeyiplaw.com