MasterCard International Incorporatedv.John D'Agostino

Patent Trial and Appeal Board

Nov 10, 2015

12902399 (P.T.A.B. Nov. 10, 2015)

Trials@uspto.gov Paper 30
Tel: 571-272-7822 Entered: November 10, 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 IPR2014-00543
Patent 8,036,988 C1

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

DESHPANDE, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71

IPR2014-00543
Patent No. 8,036,988 C1

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I. INTRODUCTION
John DʼAgostino (“Patent Owner”) filed a Request for Rehearing (Paper 29;
“Req. Reh’g”) of our Final Decision (Paper 28, “Final Decision”), dated August
31, 2015, which held unpatentable claims 1–38 of Patent No. 8,036,988 C11
(Ex. 1001; “the ’988 patent”). Generally, Patent Owner contends the Board
misapprehended or overlooked the proper interpretation for the claim term “as said
single merchant,” as recited by claims 21 and 23–30, and, under Patent Owner’s
interpretation, the prior art fails to disclose this limitation. Req. Reh’g 2–6.
Accordingly, Patent Owner requests a rehearing for only claims 21 and 23–30. Id.
at 1. For the reasons stated below, Patent Owner’s request for rehearing is denied.
II. STANDARD OF REVIEW
“The burden of showing a decision should be modified lies with the party
challenging the decision. The request must specifically identify all matters the
party believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
§ 42.71(d).
III. DISCUSSION
In its Final Decision, the Board determined, under the broadest reasonable
interpretation, the limitation “said single merchant limitation being included in said
payment category prior to any particular merchant being identified as said single
merchant” means “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.” Final Decision 13. The Board also determined that

1 A Reexamination Certificate was issued on October 15, 2014.
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the “single merchant” includes the “particular merchant” without identifying the
“particular merchant.” Id. at 11–12.
Patent Owner contends that the Board misapprehended or overlooked the
proper interpretation for the claim limitation “as said single merchant,” which
immediately follows the claim language “prior to any particular merchant being
identified,” and the Board dropped this limitation from the claims. Req. Reh’g 2–
6. Patent Owner specifically argues that the Board improperly removed “as said
single merchant” from the claim limitation because the claim requires that the
“particular merchant” is the “single merchant.” Id. at 3–5. Patent Owner contends
that the Board’s construction is erroneous because the Board did not account for
the requirement that the “particular merchant” is the “single merchant.” Id. Patent
Owner concludes that the erroneous claim construction “inevitably lead to the
Board’s incorrect finding that Cohen’s chain of stores limit satisfies the claim
limitation.” Id. at 5.
We are not persuaded by Patent Owner’s argument. The Board could not
have misapprehended or overlooked Patent Owner’s argument because Patent
Owner is raising this argument for the first time on rehearing. Patent Owner cites
pages 18–22 and 31–32 of the Patent Owner’s Response to support their argument
that this issue was raised during the proceeding. Id. at 2. However, we are unable
to find this argument in the Patent Owner’s Response. Patent Owner had argued
the broadest reasonable construction of “said one or more merchants limitation
being included in said payment category prior to any particular merchant being
identified as one of said one or more merchants” and “said single merchant
limitation being included in said payment category prior to any particular merchant
being identified as said single merchant.” PO Resp. 18-22. However, Patent
Owner’s argument is directed towards the entire limitation and is not narrowly
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tailored to “as said single merchant,” and the proper interpretation of “as said
single merchant.” Patent Owner further argued the broadest reasonable
construction of “said single merchant limitation,” which is not the same as “as said
single merchant.” Id. at 18–22. Patent Owner additionally argued that Cohen’s
chain of stores limit does not meet the claim limitation, as construed by Patent
Owner. Id. at 31–32. However, the argument that the Board dropped “as said
single merchant” from the claim limitation, and the Board’s construction results in
the single store of the chain of stores as both the “single merchant” and as the
“particular merchant” was not raised until this rehearing request. Accordingly, we
are not persuaded that we misapprehended or overlooked Patent Owner’s argument
because it was not raised.
Furthermore, the Board expressly construed 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”
and the “single merchant” includes the “particular merchant” without identifying
the “particular merchant.” Final Decision 11–13. The Board determined that
absent such a relationship between the recited “single merchant” and “particular
merchant,” the claim language would be indefinite as ambiguously limiting
transactions to an unidentified, particular merchant. Id. at 12. The Board further
determined that Cohen’s disclosure limiting credit card purchases to a specific
chain of stores, such as a specific chain of restaurants, meets this limitation. Id. at
18–19. Based on our claim construction, the chain of stores (the “single
merchant”) does not identify the single store (the “particular merchant”), but the
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single store (the “particular merchant”) is still a subset of the chain of stores (the
“single merchant”).
Patent Owner explains that the Board’s error can be illustrated most easily
by example, where Target is the “single merchant” and Location A is the
“particular merchant.” Req. Reh’g 4–5. Patent Owner argues that in this
example, it can be seen that the Board’s construction is erroneous because Target
and Location A cannot work without dropping “as said single merchant” from the
claim limitation. Id. However, Patent Owner’s analysis stops here.2 Patent Owner
does not provide any argument or rationale to illustrate why Target cannot be the
“single merchant” and Location A cannot be the “particular merchant,” thereby
Target is included in the payment category prior to any particular Target, such as
Location A, is identified as the specific Target.
Accordingly, we are not persuaded that the Board misapprehended or
overlooked the entire claim limitation “said single merchant limitation being
included in said payment category prior to any particular merchant being identified
as said single merchant.”

IV. ORDER
Accordingly, it is hereby
ORDERED that Patent Owner’s Request for Rehearing is denied.

2 We note that although Patent Owner finds the Board’s construction erroneous and
provides an example to illustrate its argument, Patent Owner does not provide a
construction of this limitation, and is unable to offer the Board an example to
illustrate its construction.
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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