U.S. Bancorpv.Solutran, Inc.

Patent Trial and Appeal Board

Nov 6, 2015

11699776 (P.T.A.B. Nov. 6, 2015)

Trials@uspto.gov Paper 45
571-272-7822 Entered: November 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

U.S. BANCORP,
Petitioner,

v.

SOLUTRAN, INC.,
Patent Owner.
____________

Case CBM2014-00076
Patent 8,311,945 B2
____________

Before MICHAEL W. KIM, BEVERLY M. BUNTING, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(d)
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I. INTRODUCTION
On August 5, 2015, we entered a Final Written Decision in which we
concluded that Petitioner had not demonstrated, by a preponderance of the
evidence, that claims 1–6 of U.S. Patent No. 7,404,660 are unpatentable
under §103(a). Paper 42 (“Dec.”). U.S. Bancorp (“Petitioner”) filed a
request for rehearing of that decision. (Paper 43, “Req. Reh’g.”).
For the reasons that follow, Petitioner’s request for rehearing is
denied.

II. THE REQUEST FOR REHEARING
In pertinent part, 37 C.F.R. § 42.71(d) states:
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.
Thus, a request for rehearing is not an opportunity merely to disagree with
the Board’s assessment of the arguments or weighing of the evidence, or to
present new arguments or evidence. Petitioner seeks reconsideration based
on the following contentions:
(1) that Figure 2 of the ’945 patent does not disclose capturing
MICR information and check amount at the point-of-sale; and
(2) that it would not be obvious to a person of ordinary skill in
the art to credit a merchant account before receiving/scanning
checks.
Req. Reh’g. 1. We have reviewed Petitioner’s request for rehearing and
carefully considered all the arguments presented. We are not persuaded that
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the Board misapprehended or overlooked arguments or evidence with
respect to the contentions asserted by Petitioner.

III. DISCUSSION
A. That the Board Misapprehended or Overlooked Figure 2
With regard to its first contention, Petitioner argues that we
misapprehended or overlooked the disclosure in Figure 2 of the ’945 patent
regarding “data captured at the merchant’s point-of-sale terminal.” Req.
Reh’g. 1–10. Specifically, Petitioner argues “[i]n finding that Figure 2 does
not disclose data (MICR/amount) collection at the point-of-sale, the Board
overlooks or misapprehends the context in which Figure 2 must be read by a
person of ordinary skill in the art, the teaching of the ‘945 patent, and the
expert testimony.” Id. at 5. Petitioner contends that we erroneously relied
on the “brief and incomplete” written description discussing Figure 2 and on
the conclusory testimony of Patent Owner’s declarant, Mr. Saffici, that “all
elements of Box 3 must occur in the merchant’s back office.” Id.
Petitioner’s contentions challenging our reliance on the written
description of Figure 2 do not persuade us that we misapprehended or
overlooked the context in which Figure 2 is presented in the ’945 patent.
Because Petitioner disputed the patentability of the ’945 patent based on
Figure 2, Petitioner bore the burden of establishing by a preponderance of
the evidence that Figure 2 describes the relied-upon claim elements,
regardless of the breadth or completeness of the written description
surrounding Figure 2. As noted in our Final Written Decision, the following
passage from the ’945 patent describes Figure 2:
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FIG. 2 shows a prior art system for converting a check in the
merchant’s back office. With this system, the merchant scans
their checks in batches in a back office, instead of at the
purchase terminal.
Dec. 19 (citing Ex. 1002, 5:1–4). Albeit short, this passage clearly
conveys that with respect to the disclosure in Figure 2, the merchant
scans the checks in the back office and not at the purchase terminal.
Petitioner’s further contention that we misapprehended the testimony
of Patent Owner’s expert witness, Mr. Saffici, “by giving it too much
weight” (Reg. Reh’g. 7) likewise does not persuade us that we
misapprehended or overlooked the context of Figure 2 of the ’945 patent.
According to Petitioner, there is no evidence in the record to support Mr.
Saffici’s opinion that “Figure 2 shows that all check data must be collected
in a merchant’s back office.” Id. at 8. Petitioner repeats its argument that
“the written description does not exclude the possibility of reading the
MICR information and keying in the check amount at the point-of-sale,
while scanning the check to obtain an image in the back office at a later
time.” Id.
As our Final Decision makes clear, we did not rely solely on any
single piece of evidence with respect to the disclosure of Figure 2. Dec. 22.
Indeed, we considered Petitioner’s arguments concerning the possibility of
using an MICR reader at the point of sale to obtain the MICR information
(Id. at 22), but were “not persuaded by Petitioner that the ‘back office
conversion’ referred to in Figure 2 discloses ‘data capture at the merchant’s
point of sale terminal,’ as recited in step a).” Id. at 23. In other words,
Petitioner’s arguments regarding the teaching of Figure 2 were unpersuasive
because they attempt to infer something beyond the unequivocal description
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of Figure 2 as a system for converting a check in the merchant’s back office.
We determined that this attempt was unsuccessful. Moreover, other than
attorney argument, Petitioner did not proffer evidence to refute the testimony
of Mr. Saffici regarding his interpretation of the written description of
Figure 2. Req. Reh’g. 8 (citing Ex. 2009 ¶ 46).
Thus, our consideration of the arguments and evidence presented by
each party “concerning the scope and content of Figure 2” included
Petitioner’s arguments and evidence directed to the separate acquisition of
MICR data and check image data. Dec. 21–22. As such, we did not
misapprehend or overlook Petitioner’s arguments and evidence; instead, we
considered the arguments and evidence presented by each party as a whole
in determining whether Petitioner had met its burden of persuasion, and
determined that Petitioner had not met that burden. Mere disagreement with
our conclusion is not a proper basis for rehearing.
B. The Board Misapprehended or Overlooked that it Would Be
Obvious in View of Figure 2 and Randle to Credit a
Merchant Account Before Receiving and Scanning a
Physical Check
As to its second contention, Petitioner argues that it never
mischaracterized Figure 2, and that we misapprehended the following
argument of Petitioner:
that because, as Figure 2 shows, an image is not required to be
sent to the TPPP to process an ACH transaction, it is within the
disclosure of Figure 2 that check data (MICR and amount)
could be collected at the point-of-sale using existing MICR
reader technology and transmitted to the TPPP, and at a later
point the checks could be imaged in the merchant’s back office
or elsewhere.
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Req. Reh’g. 11. For the reasons discussed above, we disagree with
Petitioner’s assessment of Figure 2.
Next, Petitioner argues that we misapprehended or overlooked
arguments or evidence of record in concluding:
that the reason for combining Figure 2 and Randle proffered by
Petitioner is not supported adequately by a rational[]
underpinning sufficient to outweigh Patent Owner’s
explanations, because the main rational underpinning is based
on Petitioner’s mischaracterization of Figure 2.
Id. at 12 (citing Dec. 27). Specifically, Petitioner contends that we “did not
clearly explain what particular ‘mischaracterization’ of Figure 2 Petitioner
provided that resulted in the Board finding no support for crediting before
receiving/scanning.” Id. Petitioner is directed to our detailed discussion in
the Final Written Decision concerning its argument that “Figure 2 of the
’945 patent ‘makes clear that providing an image with the file is ‘optional,’
and interprets the ‘optional’ language to mean that the data file being sent to
the TPPP ‘does not have to contain an image’” (Dec. 16–17 (citing Pet. 50)
19–20); Patent Owner’s counter arguments (Id. at 17–19); as well as our
analysis (Id. at 20–27). From our review of Figure 2, as well as our
consideration of both Petitioner’s and Patent Owner’s arguments and
supporting evidence, we were not persuaded by Petitioner’s position. Thus,
Petitioner fails to demonstrate that we misapprehended Figure 2 or
overlooked any arguments related to Figure 2. Id. at 13.
Along this vein, we also are not persuaded by Petitioner’s further
contention that “[b]ecause the Board misapprehended Figure 2 and the
parties’ arguments related to Figure 2, the Board failed to appreciate that
crediting a merchant account before receiving/scanning the check is no more
than an obvious reversal of steps that lead to expected and predictable
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results.” Req. Reh’g. 15. For the reasons discussed supra, we are not
persuaded by Petitioner that we misapprehended Figure 2. Likewise,
Petitioner’s contention that “[c]laim 1 is obvious because it merely reverses
the order in which certain steps were performed in the prior art” is
unpersuasive because it is unsupported attorney argument. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (unsupported attorney
argument in a brief cannot take the place of evidence). Based on the
evidence of record, we determined that Petitioner did not establish by a
preponderance of evidence that it would have been obvious to change the
order of steps from the prior art methods of Figure 2 and Randle.
Thus, we did not misapprehend or overlook Petitioner’s arguments
and evidence; instead, Petitioner’s arguments and evidence were considered
and rejected on the merits. As noted above, mere disagreement with our
conclusion is not a proper basis for rehearing.

IV. CONCLUSION
We have reviewed and considered the arguments in Petitioner’s
request for rehearing and conclude that Petitioner has not carried its burden
of demonstrating that the Board misapprehended or overlooked any matters
in rendering the Final Decision. 37 C.F.R. § 42.71(d). The request for
rehearing is denied.

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PETITIONER:

Michelle Dawson
Devan V. Padmanabhan
Paul J. Robbennolt
Winthrop & Weinstine, P.A.
225 South 6th Street, Suite 3500
Minneapolis, MN 55442
patent@winthrop.com
mdawson@winthrop.com
dpadmanabhan@winthrop.com
probbennolt@winthrop.com

PATENT OWNER:

Robert J. Gilbertson
Greene Espel, PLLP
222 South Ninth Street, Suite 2200,
Minneapolis, MN 55402
Gilbertson@GreenEspel.com
BGilbertson@greeneespel.com

Daniel A. Tysver
Beck and Tysver, P.L.L.C.
2900 Thomas Ave. South, #100
Minneapolis, MN 55416
dtysver@bitlaw.com