Square, Inc.v.J. Carl Cooper

Patent Trial and Appeal Board

May 14, 2015

12273485 (P.T.A.B. May. 14, 2015)

Trials@uspto.gov Paper 36
Tel: 571-272-7822 Entered: May 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SQUARE, INC.,
Petitioner
v.
J. CARL COOPER,
Patent Owner
____________

Case IPR2014-00157
Patent 7,828,207 B2
____________

Before JAMESON LEE, GEORGE R. HOSKINS, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

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

IPR2014-00157
Patent 7,828,207 B2

2

I. INTRODUCTION
A. Background
Square, Inc. (“Petitioner”) filed a Petition to institute an inter partes
review of claims 1 and 8–14 of U.S. Patent No. 7,828,207 B2 (Ex. 1001,
“the ’207 patent”). Paper 1 (“Pet.”). J. Carl Cooper (“Patent Owner”) filed
a Preliminary Response. Paper 7 (“Prelim. Resp.”). We instituted trial on
Petitioner’s asserted ground that 1 and 8–14 were anticipated by Pitroda.
1

Paper 8 (“Dec.”).
During trial, Patent Owner filed a Patent Owner Response (Paper 18,
“PO Resp.”), which was accompanied by a Declaration from J. Carl Cooper
(Ex. 2004). Petitioner filed a Reply to the Patent Owner Response.
Paper 20 (“Pet. Reply”). A consolidated oral hearing for IPR2014-00156
and IPR2014-00157, each involving the same Petitioner and Patent Owner,
was held on January 9, 2015. A transcript of the consolidated hearing has
been entered into the record. Paper 35 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
We determine that Petitioner has shown by a preponderance of the evidence
that claims 1 and 8–14 of the ’207 patent are unpatentable. Patent Owner’s
Motion to Exclude (Paper 22) is dismissed-in-part and denied-in-part.
B. Related Proceedings
Petitioner represents that the ’207 patent is the subject of pending
lawsuits (1) in the Northern District of Illinois (filed by eCharge Licensing
LLC against Petitioner, No. 1:13-cv-06445), Ex. 1003; and (2) in the District

1
U.S. Patent No. 5,590,038, issued Dec. 31, 1996 (Ex. 1004).
IPR2014-00157
Patent 7,828,207 B2

3

of Massachusetts (filed by SCVNGR, Inc. against eCharge Licensing LLC,
No. 1:13-cv-12418). Pet. 6.
C. The ’207 Patent
The ’207 patent “relates to the use of devices having information or
patterns carried in or on some storage media, examples of which include
photographic patterns, keys or the magnetic strip on credit cards.” Ex. 1001,
1:18–21. Figure 2 of the ’207 patent is reproduced below.

Figure 2 is a diagram of the preferred embodiment of the ’207 patent’s
invention, dubbed a multi-card by the inventor, having plastic substrate 3, on
which programmable magnetic strip 4, LCD display 5, solar cell power
source 6, infrared emitter 7, infrared sensor 8, and key pad 9 are mounted
suitably. Id. at 2:54–60.
IPR2014-00157
Patent 7,828,207 B2

4

Figure 3 of the ’207 patent is reproduced below:

Figure 3 is a drawing explaining the operation of the preferred embodiment.
Id. at 2:32–33. Figure 3 “includes a console comprised of programming
circuitry 16 and card reader 17.” Id. at 5:48–49. According to the
Specification: “Control circuit [11] operates interactively with the
input/output interface 14, examples including those associated with 7 and 8
of FIG. 2, to communicate with the console.” Id. at 5:35–38.
D. Illustrative Claim
Of the challenged claims, claims 1, 8, 13, and 14 are independent.
Dependent claims 9–12 depend, directly or indirectly, from claim 8.
Claim 1 of the ’207 patent is reproduced below:
1. A universal credit card apparatus for providing and
receiving account data including account information from a
host system comprising:
a carrier having a planar surface said carrier supporting
the components of the apparatus;
at least one memory device, chosen from the group
consisting of volatile memory and nonvolatile memory, affixed
IPR2014-00157
Patent 7,828,207 B2

5

to said carrier, for storing account data including account
information for at least one account;
an emitter device, affixed to said carrier, programmed
with account identifier information for wirelessly transmitting
account identifying information to said host system; wherein
the emitter device is configured to identify a user selected
account to the host system;
a receiver device, affixed to said carrier, for receiving
account data including account information from said host
system;
a display device, affixed to said carrier, for selectively
displaying account information;
a control circuit, affixed to said carrier, coupled to said
memory, to said display device and to said receiver device and
which is operable to store account data including account
information received by said receiver device from the host
system into said memory and to cause said account information
stored in said memory to appear on said display device;
a power source, affixed to said carrier, and coupled to at
least one of said memory, said receiver device, said display
device and said control circuit.

Ex. 1001, 9:54–10:16.

II. ANALYSIS
For the challenged claims, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e). We begin with a claim
construction analysis, and then follow with specific analysis of the prior art.
A. Claim Construction
The parties agree that the ’207 patent expired on November 4, 2014,
subsequent to the institution of trial in this proceeding. See Paper 15, 1. We
construe expired patent claims according to the standard applied by the
district courts. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
IPR2014-00157
Patent 7,828,207 B2

6

Specifically, we apply the principles set forth in Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005). “In determining the meaning of the
disputed claim limitation, we look principally to the intrinsic evidence of
record, examining the claim language itself, the written description, and the
prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17). Only those terms which are in controversy need to be
construed, and only to the extent necessary to resolve the controversy. Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
In the Decision to Institute, we interpreted the term “emitter” as a
device that transmits a signal conveying information to another device, and
that is recognizable to one of ordinary skill in the art as an emitter. Dec. 9.
We confirmed that applying the Phillips standard did not change this
construction, in our Order dated June 23, 2014. Paper 17, 2–3.
Patent Owner provides additional discussion about the term “emitter”
in its Response, namely, arguing that the claim term “emitter” necessarily
connotes a wireless transmission. PO Resp. 4–6. Patent Owner argues that
the term “for wirelessly transmitting” appears within the overall emitter
claim limitation for independent claims 1 and 14, and thus these claims are
limited to wireless transmissions. Id. Patent Owner also argues that the
Board should find independent claims 8 and 13, which recite Markush
groups that limit the emitter to “the group consisting of infrared LEDs, coils,
antenna and transducers,” to be limited to wireless transmissions as well. Id.
at 5.
Petitioner argues that the Board should maintain its claim construction
of the term “emitter” Patent Owner’s arguments notwithstanding. First,
IPR2014-00157
Patent 7,828,207 B2

7

Petitioner argues that the Specification describes an emitter as being broad
enough to encompass wired communication means. Pet. Reply 3 (citing
Ex. 1001, 5:10–12 (“Emitter 7 may be the preferred infrared LED, antenna,
coil, transducer, or any other device capable of conveying information or
patterns from the invention or outside devices”)). Second, Petitioner argues
that Patent Owner’s arguments that an emitter is limited to wireless
transmission would render the claim term “wirelessly” superfluous. Pet.
Reply 4. Finally, Petitioner argues that during Mr. Cooper’s deposition, in
response to the question of whether, in general, “transmission of
information, does that include wired and wireless communication?”,
Mr. Cooper responded “Yeah, information can be transmitted by wires or
wirelessly.” Id. (citing Ex. 1011, 212:16–22).
Given the broad language of the Specification with respect to emitters,
and the narrowing, qualifying language of the independent claims with
respect to the particular emitter intended by each respective claim, we are
unpersuaded that we should implement Patent Owner’s proposed
construction of the term “emitter.” We see no reason based on the complete
record now before us to alter the construction from the Decision to Institute.
We maintain that construction for this Final Written Decision.
In our Decision to Institute, we construed “universal credit card” or
“universal credit card apparatus” to mean “a card that allows access to more
than one credit card account.” Dec. 7. Patent Owner asks that we “vacate
[our] construction of ‘credit card apparatus’ to prevent its misuse in future
proceedings.” PO Resp. 18. Patent Owner represents that the parties are in
substantial agreement about the scope of the term. Id.
To read the claims onto prior art, we need to determine for ourselves
IPR2014-00157
Patent 7,828,207 B2

8

what claim terms mean. The Board construes claims and does not simply
take any construction agreed to by the parties, which may be incorrect.
Accordingly, “universal credit card” or “universal credit card apparatus” is
construed to mean “a card that allows access to more than one credit card
account.”
In the Decision to Institute, we also construed the term “transducer” to
mean “a device recognizable to one of ordinary skill in the art as a
‘transducer’ and capable of converting energy from one form to another”
and the term “host system” to mean “a system that receives account data
from, and provides account data to, a universal credit card apparatus.” Dec.
7–9. Neither party now proposes a different construction of these terms.
Based on the complete record now before us, we see no reason to alter our
earlier constructions, and maintain the constructions for this Final Written
Decision.
B. Anticipation by Pitroda
We have reviewed the Petition, the Patent Owner Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in those
papers. The parties focus their arguments on several terms present in certain
claims of the ’207 patent, namely, (1) in claims 1, 8, 13, and 14, the terms
(a) “emitter” and (b) “control circuit;” (2) in claim 9, the terms “operator
interface” and “account location;” and (3) in claim 10, the term “account
identifier.” We address these arguments in turn.
With respect to the independent claims, Pitroda teaches a universal
electronic transaction card (“UET card” or “UETC”). Ex. 1004, Abst.
Figure 3 of Pitroda is reproduced below:
IPR2014-00157
Patent 7,828,207 B2

9

Figure 3 shows a block diagram of one embodiment of the UET card.
Id. at 8:28–29. The UET card has “a micro controller with associated
RAM/ROM and Input/Output port management 33,” as well as non-volatile
RAM 34. Id. at 11:20–21. The UET card further includes LCD and touch
screen display 30, wherein the touch screen portion of display 30 is large
enough to enable a user to operate touch controls. Id. at 11:14–19.
1. Claims 1, 8, 13, and 14
a. Emitter
Claims 1 and 14 require an emitter device “for wirelessly transmitting
account identifying information to said host system.” Claims 8 and 13
require an emitter device “chosen from the group consisting of infrared
LEDs, coils, antenna and transducers,” for transmitting account identifying
information to said host system. Petitioner contends that Pitroda teaches
each element of independent claims 1, 8, 13, and 14. Pet 12–21.
IPR2014-00157
Patent 7,828,207 B2

10

Specifically, Petitioner argues that Pitroda discloses an emitter, namely, pin
contacts 13 or 38, or infrared (IR) or radio frequency (RF) option 39.
Pet. 16–17; Ex. 1004, Fig. 3, element 38 (pins contact), element 39 (IR or
RF option).
Patent Owner argues that the “emitter” limitation in the independent
claims is not met by Pitroda. PO Resp. 4–10. Patent Owner notes that the
term “for wirelessly transmitting” (relating to the emitter) appears explicitly
in independent claims 1 and 14, and urges the Board to find that independent
claims 8 and 13 likewise are limited to wireless transmissions. Id. at 4–5.
Patent Owner relies on the Examiner’s Statement of Reasons for Allowance,
which stated that the prior art fails to teach or suggest an emitter device for
transmitting account information wirelessly, to support Patent Owner’s
assertion that all of the claims are limited to wireless transmissions. Id.
at 5–6 (quoting Ex. 1009, 115).
Having argued that the emitter is limited to wireless transmissions,
Patent Owner further argues that because Pitroda does not disclose what
structure the IR/RF communication would use or what information it
communicates, Pitroda does not disclose explicitly wireless transmission to
or from the UET of account data or account identifying information. Id.
at 7–10. In sum, Patent Owner argues that “pin contacts 13 or 38 cannot
qualify [as the emitter] because they are not wireless. And, the IR/RF option
cannot qualify because Pitroda does not specify what data might travel that
way.” Id. at 10–11 n.3.
Patent Owner also states that “Patentee includes its reasons and
analysis in its Response in the two co-pending matters (IPR2014-00156 and
IPR2014-00158), incorporating by reference those arguments here.” Id. at 6.
IPR2014-00157
Patent 7,828,207 B2

11

It is improper to incorporate by reference arguments from one document into
another document. 37 C.F.R. § 42.6(a)(3). We decline to consider
information incorporated by reference from IPR2014-00156 and IPR2014-
00158.
With respect to Pitroda’s disclosure of an emitter, Petitioner argues
that Pitroda’s IR/RF option embodiment satisfies the claimed emitter
limitations. Pet. Reply 6–7. To support this contention, Petitioner relies on
its expert’s testimony that Pitroda’s IR/RF option can be used to transmit
account data to the communication interface unit (“CIU”). Id. at 7 (citing
Ex. 1008 §§ VII.A.1, VII.A.2, VII.A.7, VII.A.8).
We are persuaded that the IR/RF option of Pitroda is an emitter.
Patent Owner acknowledges that Pitroda discloses that its UET card
transmits information. PO Resp. 9. Pitroda’s IR/RF option is provided as an
alternative means of communication of the information required to be
communicated by the UET card to the CIU. See Ex. 1004, 9:55–59 (the CIU
“interfaces with the UET card either through physical metallic contact––
preferred for the touch memory devices––or infra red or radio frequency
[IR/RF] based wireless transmit and receive units”); 9:59–63 (“The CIU
includes means for receiving data from the UET card, such as metal contacts
to connect to the metal contacts 13 of the UET card, or infrared or radio
frequency [IR/RF] based wireless systems, depending on the system used by
the UET card.”) The use of the IR/RF option as an emitter is disclosed
explicitly in Pitroda, and not merely a possibility or probability.
b. Control Circuit
Claims 1, 8, 13, and 14 all require a “control circuit” affixed to or
carried by the carrier, coupled to said memory, to said display device, and to
IPR2014-00157
Patent 7,828,207 B2

12

said receiver device, and “operable to store account data including account
information received by said receiver device from the host system into said
memory and to cause said account information stored in said memory to
appear on said display device.” Petitioner argues that the claimed control
circuit reads on Pitroda’s microcontroller on the UET card, as shown in
Figure 3, which microcontroller is coupled to said memory (RAM, ROM, or
non-volatile RAM 34), said display (LCD display portion of LCD + touch
screen display 30), and said receiver (IR or RF option 39, or pin contacts 13
or 38). Pet. 19–20; Ex. 1004, Fig. 3.
Patent Owner argues, with respect to the independent claims, that “the
control circuit inside the card apparatus must act to do whatever storing
from the host system is to be done.” PO Resp. 11 (emphasis in original).
According to Patent Owner, Petitioner’s arguments “overlook that [in
Pitroda] the connection to ‘non-volatile RAM 34’ bypasses this ‘micro
controller.’” Id. at 12. In support, Patent Owner points to a portion of
Pitroda that describes the UET card’s “non-volatile RAM 34 and or touch
memories with direct contact to connect to the CIU.” Id. (citing Ex. 1004,
11:20–25). Thus, Patent Owner argues, “[in Pitroda] it is something outside
the UET card (the CIU) that controls storage of account information.” Id.
(emphasis in original). Patent Owner posits that there is no disclosure in
Pitroda that suggests that the “UET micro controller does any memory
storage, much less the particular storage of account information required by
the claims.” Id. at 13.
At oral hearing, Patent Owner emphasized its position that, in Pitroda,
“the CIU is the star of the show.” Tr. 33:12. Patent Owner pointed out that
Pitroda’s Figure 7, which represents the software inside the CIU, includes
IPR2014-00157
Patent 7,828,207 B2

13

“card information read” and “card information write.” PO Resp. 13;
Tr. 35:9–25. Thus, Patent Owner concluded that “there is utterly no
question that the CIU plays the role of reading from memory and writing to
memory.” Tr. 35:25–36:2. Patent Owner also stated that “the parties agree
that the only part of Pitroda that could possibly store the account information
that we’re all talking about is the NVM, the non-volatile memory [RAM 34
on the UET card].” Id. at 34:9–12.
Petitioner argues that Patent Owner overlooks “relevant teachings of
Pitroda regarding the ‘control circuit’ of claims 1, 8, 13, and 14.” Pet.
Reply 8. Petitioner cites a portion of Pitroda stating that “with respect to
credit card transactions, the UET card of [Pitroda’s] invention may be used
to store in memory each credit card or bank transaction for which it is used”
and concluded: “So that’s the control circuit storing the transaction
information in memory.” Tr. 19:10–14 (quoting Ex. 1004, 7:33–35).
Petitioner relies on the testimony of its expert that the memory management
and database management functions performed by the microcontroller of the
UET card “manage the stored information, including credit card information
and transaction information for each card.” Pet. Reply 8–9 (citing Ex. 2003,
145:4–152:7; Ex. 1004, 11:40–12:6). As summarized by Petitioner,
“[c]onsidering that a microprocessor is a means for processing data, the
microprocessor executes the instructions associated with processing and
storing the incoming account data.” Id. (citing Ex. 1004, 18:18–20).
According to Petitioner’s expert, Pitroda’s account information can be
stored in transaction memory area 410 of the UET card, either in non-
volatile RAM 34 or in “volatile” RAM 33. Tr. 72:22–73:17; Ex. 2003,
147:23–148:8. Thus, Patent Owner’s assertion that there is agreement
IPR2014-00157
Patent 7,828,207 B2

14

between the parties that account information only can be stored in non-
volatile RAM 34 is unsupported by the record.
Petitioner also relied on its expert’s testimony to support the argument
that the UET card, not the CIU, stores the information coming into the card.
Tr. 73:18–74:8. Petitioner’s expert pointed to Pitroda’s disclosure of the
UET card software, including its operating system, memory management,
database management, and other utilities, and concluded that when Pitroda
talks about performing database management and memory management, “I
respectfully conclude that the UET card is performing those functions.”
Ex. 2003, 148:9–149:7; Ex. 1004, 12:7–12. More specifically, Petitioner
argued that the microcontroller of the UET card runs the software. Pet.
Reply 9 (citing Ex. 1004, 18:18–20); Tr. 74:22–25. Petitioner’s expert,
when asked for a disclosure of the microcontroller of Pitroda performing the
memory storage for account information, cited to sections of Pitroda
including column 12, starting at line 7, discussing the UET card software,
column 2, lines 50 through 61, and column 3, lines 4 through 22. Ex. 2003,
148:9–149:7, 150:16–151:16.
Patent Owner’s argument that only Pitroda’s CIU directly contacts,
reads from, and writes to the UET card’s non-volatile RAM 34 disregards
the disclosure of Pitroda as a whole. In the embodiment of Pitroda shown in
Pitroda’s Figure 3, the microcontroller 33 is located centrally, connected by
a line to non-volatile RAM 34 and by a different line to elements 35–39,
including pin contacts 38 and IR/RF option 39. Patent Owner was unable to
explain the line connecting microcontroller 33 with non-volatile RAM 34 in
Figure 3, other than to surmise that “it can only be a representation of co-
occupying the same physical housing space.” Tr. 36:15–17. Given the
IPR2014-00157
Patent 7,828,207 B2

15

diagrammatic representation of the embodiment shown in Figure 3, in
conjunction with the passages relied upon by Petitioner in Pitroda’s
specification, information entering the UET card via IR/RF option 39 would
be managed by microcontroller 33 to be stored in non-volatile RAM 34 or
RAM 33. Patent Owner’s argument that Pitroda’s CIU must write directly
to non-volatile RAM 34 is unpersuasive in view of Petitioner’s showing that
the UET card’s microcontroller runs the software to write directly to
transaction memory area 410.
Notwithstanding Patent Owner’s argument and evidence to the
contrary, we are persuaded by Petitioner’s argument and supporting
evidence that Pitroda expressly discloses a control circuit, i.e.
microcontroller 33, that would cause account data including account
information received by the receiver from the host system to be stored in the
memory.
2. Claim 9 – “operator interface” and “account location”
Claim 9 requires an “operator interface device, affixed to said carrier,
connected to said control device, operable by a user to select an account
location in said memory in which account data including account
information received from the host system is to be stored.” Petitioner argues
that Pitroda discloses an operator interface affixed to the carrier and
connected to the control circuit, namely, touch screen portion of LCD +
touch screen display 30. Pet. 20; Ex. 1004, Fig. 3, element 30. Petitioner
argues that the touch screen display allows the user to select an account
location in the memory in which account data including account information
received from the host system is to be stored. Pet. 21; Ex. 1004, Figs. 13,
14.
IPR2014-00157
Patent 7,828,207 B2

16

Patent Owner argues that Pitroda does not disclose user selection of
an account location for storing account information. PO Resp. 14.
Specifically, Patent Owner argues that Petitioner points to a different
functionality within Pitroda, namely, picking an account for display, which
is not the same thing as picking an account for storage. Id.
Referring inter alia to the touch screen display shown in Figures 13
and 14, Petitioner argues that Pitroda “discloses that the UET card includes a
touch screen display that allows a user to select a credit card to make a
transaction, resulting in the receipt of the credit card transaction information
for that selected credit card.” Pet. Reply 10. Specifically, Petitioner argues
that in order to provide the cardholder with the selected card’s information
such as account summary and accounts payable, “the UET card has
associated the credit card transaction information with the selected credit
card.” Id. at 11–12. Petitioner refers to the account-by-account example
given in Pitroda at column 6, lines 16–43 which begins with the user
selecting from a UET card a service institution account, and ends with
“storing the transactional information for the credit transaction in the
universal electronic transaction card with respect to the service institution
account.” Tr. 20:4–24; Ex. 1004, 6:41–43. Petitioner argues that, given the
complete disclosure of Pitroda and the supporting evidence provided by its
expert, “[o]ne of ordinary skill in the art would understand that Pitroda
discloses storing records on an account-by-account basis.” Pet. Reply 12.
Pitroda allows a “user to review . . . a record of transactions with a
service institution [i.e. including a credit card issuing entity].” Ex. 1004,
4:12–15, 3:6–11. Pitroda’s example of user selection of a particular service
institution credit card uses an American Express card as an example. Id. at
IPR2014-00157
Patent 7,828,207 B2

17

16:21–49, Figs. 13, 14. If the user were to choose the American Express
card from the display shown in Figure 13, the display shown in Figure 14
would appear. Id. at 16:21–24. On the Figure 14 display, the user “can have
access to the information related to account summary (AS), account payable
(AP), weekly (W), monthly (M), yearly (Y) details. Id. at 14:2–4. The card
holder can also ask for help (H), security (S), last use (LU) credit limit (CL),
balance (BL), and load PC (LP).” Id. at 14:4–6.
Finally, Pitroda states that “corresponding to each card, a transaction
memory area 410 is provided to store all transaction receipts in electronic
form to eliminate or reduce paper receipts.” Id. at 12:1–4 (emphasis added),
Fig. 4. The existence of a transaction memory area corresponding to each
card supports the position that the user of Pitroda can, by selecting a
particular card such as an American Express card, complete a transaction
using that card. Further, upon completion of the transaction, the account
information would be stored in the transaction memory area corresponding
to the American Express card. The user also could review an account
summary or other details particular to the American Express card via the
Figure 14 display, which would require accessing information that is specific
to the American Express card. We are not persuaded by Patent Owner’s
argument that transaction memory area “corresponding to each card” means
“corresponding to each UET card.” Tr. 60:14–23. The paragraph in which
transaction memory area 410 is described begins: “Corresponding to each
card, a data area 409 is provided for transient information related to the date
of issue, date of expire, credit limit, etc.” and continues: “Also
corresponding to each card, a transaction memory area 410 is
provided . . . .” Ex. 1004, 11:65–67, 12:1–4 (emphases added). The totality
IPR2014-00157
Patent 7,828,207 B2

18

of the language supports a reading that Pitroda has a transaction memory
area 410 corresponding to each of the credit cards 404, bank cards 405, ID
cards 406, and health cards 407 on its UET card. Id. at 11:39–58; Fig. 4.
Although Patent Owner argues that Pitroda does not differentiate its
incoming credit card transactions, such a conclusion is based on a
hypothetical presented to Petitioner’s expert, and presents a strained reading
of Pitroda in view of its complete disclosure. The expert’s testimony cited
by Patent Owner states that Pitroda’s UET card could store sales receipts in
the American Express records within that card, or equivalently in a part of
the UET card’s memory that is “just a stack of sales receipts undifferentiated
by account.” Ex. 2003, 164:14–165:6. The argument is misplaced because
it does not diminish Pitroda’s express disclosure of the use of transaction
memory area 410 in a manner that “corresponds” to each card, as we have
already discussed. In other words, even if information also could be stored
differently, i.e., without differentiation based on accounts, that does not
negate or take away from the actual disclosure of storing information,
separately, for different cards. Patent Owner does not explain why the
existence of possible additional configurations defeats a finding of express
anticipation based on an already disclosed embodiment.
3. Claim 10 – “account identifier”
Claim 10 requires “at least one account identifier associated with and
stored in said memory with reference to each account stored in said memory
for allowing the selection of an account which is to be the subject of the use
by selecting anyone of said account identifiers for the chosen account,”
wherein “the user of the universal credit card can select the account to be
used to receive, store and display account information by specifying the
IPR2014-00157
Patent 7,828,207 B2

19

account identifier of the account.” Petitioner alleges that Pitroda discloses at
least one account identifier associated with and stored in the memory,
namely, the graphical images of Figure 13 tied to different credit card
accounts. Pet. 21–22; Ex. 1004, Fig. 13. Petitioner further argues that the
user can select the account to be used by specifying the account identifier of
the account, namely, the images shown in Figure 13, resulting in displaying
of account information as shown in Figure 14. Pet. 22; Ex. 1004, Figs. 13,
14, 16:21–25.
Patent Owner argues that Pitroda does not disclose referring to an
account identifier through an operator interface to direct receipt and storage
of account information. PO Resp. 15–17. Specifically, Patent Owner argues
that Petitioner points to a different functionality within Pitroda, namely,
picking an account for display and for point of sale purchasing, which is not
the same thing as picking an account identifier for receipt and storage. Id.
at 16.
Petitioner argues that “the portion of the touch screen display area for
selecting each credit card in Figure 13 would constitute the account
identifier.” Pet. Reply 13. This account identifier, according to Petitioner,
would allow an individual credit card to be selected for a transaction,
resulting in the receipt of transaction information that is associated with the
selected credit card. Id.
Pitroda’s display configurations, as depicted in Figures 13 and 14,
function as account identifiers associated with each account. As discussed
above, Pitroda discloses a credit card transaction that begins with the user
selecting from a UET card a service institution account, and ends with
“storing the transactional information for the credit transaction in the
IPR2014-00157
Patent 7,828,207 B2

20

universal electronic transaction card with respect to the service institution
account.” Ex. 1004, 6:41–43; Tr. 20:4–24. We are persuaded by
Petitioner’s reasoning that Pitroda discloses the account identifier of
claim 10.
4. Remaining Claim Elements; Dependent Claims 11 and 12
As discussed, we find that Petitioner has established, by a
preponderance of the evidence, that Pitroda anticipates claims 1, 8–10, 13,
and 14 as to the claim elements discussed with particularity above. We have
reviewed the arguments presented in the Petition and the supporting
evidence regarding the anticipation of the remaining elements of claims 1,
8–10, 13, and 14, which were not disputed by Patent Owner in its Response.
Pet. 11–24. Petitioner further contends Pitroda discloses the subject matter
recited in claims 11 and 12, each of which depends indirectly from claim 8.
Id. at 22–24. We also have reviewed the Petition and supporting evidence
presenting arguments that the additional subject matter of claims 11 and 12
is disclosed in Pitroda. Id. Patent Owner, in its Response, relies solely on
its arguments and evidence concerning the disputed terms in claims 1, 8–10,
13, and 14. See generally PO Resp. In the Scheduling Order, we cautioned
Patent Owner that any arguments for patentability not raised in the Response
would be deemed waived. Paper 9, 3. After reviewing the arguments and
evidence presented concerning the remaining claim elements of claims 1, 8–
10, 13, and 14, and dependent claims 11 and 12, we find a preponderance of
the evidence establishes that Pitroda expressly discloses the remaining
elements of 1, 8–10, 13, and 14, and each and every limitation of dependent
claims 11 and 12. We conclude that claims 1 and 8–14 are unpatentable as
anticipated by Pitroda.
IPR2014-00157
Patent 7,828,207 B2

21

C. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude (Paper 22, “Mot. to Excl.”), to
which Petitioner responded (Paper 26, “Resp. to Mot. to Excl.”) and on
which Patent Owner filed a Corrected Reply (Paper 28, “Reply on Mot. to
Excl.”). Patent Owner’s motion seeks to exclude Exhibit 1012 as irrelevant,
Exhibit 1013 as not properly authenticated and as calling for hearsay, and
Exhibit 1014 as not properly authenticated and as calling for hearsay.
2
Mot.
to Excl. 1–3. The moving party has the burden of proof to establish that it is
entitled to the requested relief. 37 C.F.R. § 42.20(c).
We do not rely upon Exhibits 1012 and 1013 in our present
determination. The Motion to Exclude therefore need not be decided as to
these Exhibits.
Petitioner alleges that Exhibit 1014 was not objected to prior to filing
the Motion to Exclude. Resp. to Mot. To Excl. 3–4. Patent Owner must
object timely to the evidence it seeks to exclude. 37 C.F.R. § 42.64(b)(1).
Once an objection is filed, a motion to exclude “must be filed to preserve
any objection.” Id. § 42.64(c). The motion to exclude must identify the
prior objection. Id. There is no record that Patent Owner objected to
Exhibit 1014 prior to filing the Motion to Exclude, as required by
Rule 42.64.
Accordingly, the Motion to Exclude is dismissed as to Exhibits 1012
and 1013 and denied as to Exhibit 1014.

2
The Motion to Exclude also seeks to exclude Ex. 1016 in the IPR2014-
00158 proceeding. As that document is not part of this proceeding,
however, it is unsuitable for consideration here.
IPR2014-00157
Patent 7,828,207 B2

22

III. SUMMARY
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1 and 8–14 of the ’207 patent are unpatentable as anticipated by
Pitroda. This is a Final Written Decision of the Board under 35 U.S.C.
§ 318(a).
IV. ORDER
For the reasons given, it is
ORDERED that Patent Owner’s Motion to Exclude is dismissed as to
Exhibits 1012 and 1013 and denied as to Exhibit 1014;
FURTHER ORDERED that claims 1 and 8–14 of the ’207 patent are
unpatentable; and
FURTHER ORDERED that parties to the proceeding seeking judicial
review of this final written decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

IPR2014-00157
Patent 7,828,207 B2

23

FOR PETITIONER:
Erika Arner
Aaron Capron
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
erika.arner@finnegan.com
aaron.capron@finnegan.com

FOR PATENT OWNER:
Robert P. Greenspoon
Joseph C. Drish
FLACHSBART & GREENSPOON, LLC
rpg@fg-law.com
jcd@fg-law.com