95002373 (P.T.A.B. Dec. 30, 2015)

Ex Parte 8073744 et al

Patent Trial and Appeal BoardDec 30, 2015

95002373 (P.T.A.B. Dec. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,373 09/14/2012 8073744 3566.025USX 9957 43536 7590 12/31/2015 MUSKIN & FARMER LLC 100 West Main Street SUITE 205 Lansdale, PA 19446 EXAMINER CARLSON, JEFFREY D ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/31/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ KABBAGE, INC., Patent Owner, v. EBAY INC.,1 Requester. ____________ Appeal 2015-006302 Reexamination Control 95/002,373 Patent 8,073,744 B1 Technology Center 3900 ____________ Before STEPHEN C. SIU, JEREMY J. CURCURI, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge DECISION ON APPEAL 1 eBay, Inc. remains the requester and is referred to herein as such. Pursuant to a transfer of eBay’s payment business, including PayPal, Inc. to PayPal Holdings, Inc. on July 17, 2015, PayPal is said also to be a Real Party in Interest along with eBay. Kabbage, Inc. (“Owner”) appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s rejection of claims 1, 2, 4, 7, 8, 11, 12, 14, 17, and 18.2 PO App. Br. 5–21. We have jurisdiction under 35 U.S.C. §§ 134 and 315. An oral hearing was conducted on November 3, 2015. A transcript has been made part of the record. PRELIMINARY MATTERS Owner has petitioned the Office to issue an Order to Show Cause regarding PayPal’s status as a non-party appellant. Petition Under 37 C.F.R. §§ 1.182, 1.183 for Relief Not Otherwise Provided for Under the Rules, filed October 28, 2015. Owner also has moved for sanctions against eBay and/or PayPal. Motion for Sanctions Against eBay, Inc. and/or PayPal, Inc. Under 37 C.F.R. § 11.18(c), filed November 2, 2015. Those matters are not before us and will be decided by others in due course. How those matters are ultimately decided is not material to our decision here. STATEMENT OF THE CASE This proceeding arose from a September 14, 2012 request by eBay, Inc. (“Requester”) for an inter partes reexamination of claims of U.S. Patent 8,073,744 B1, titled “Method to Provide Liquid Funds in the Online Auction and Marketplace” and issued to Robert J. Frohwein and Kathryn T. Petralla on December 6, 2011 (“the ’744 patent”). Claim 1 reads as follows: 1. A method of providing funds to a seller who lists an item for sale on an ecommerce website, the e-commerce web 2 Patent Owner Appeal Brief, Inter Partes Reexamination, dated March 21, 2014 (“PO App. Br.”). Appeal 2015-006302 Reexamination Control 95/002,373 Patent 8,073,744 B1 3 site being hosted by a web server, the e-commerce web site configured to allow sellers to list goods for sale and to allow buyers to bid on or purchase the goods for sale, the method comprising: visiting, by the seller using a computer connected to a computer communications network, the e-commerce web site; requesting, by the seller using the computer, cash from a third party via a server, the server configured to be in communication with a database that stores credit profiles of parties comprising respective credit information, wherein the server is configured to retrieve a credit profile associated with the seller from the database and make a determination, based on at least both the credit profile and on characteristics of the seller’s sales history on the e-commerce web site, whether to approve the requesting; receiving, by the seller using the computer, in response to the requesting, approval from the server; receiving, by the seller using the computer, a cash amount via a financial processing application, the cash amount associated with the approval; and using, by the seller, the cash amount to improve the seller’s cash flow or other purpose. Patent Owner appeals the Examiner’s rejection of claims 1, 2, 4, 7, 8, 11, 12, 14, 17, and 18 as anticipated by May (US Pub. No. 2006/0116957 Al; published June 1, 2006). Whether May anticipates claims 1, 2, 4, 7, 8, 11, 12, 14, 17, and 18 is the only issue before us. PRINCIPLES OF LAW In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a Appeal 2015-006302 Reexamination Control 95/002,373 Patent 8,073,744 B1 4 claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted). ANALYSIS Claims 1 and 11 are the only independent claims; all other claims subject to reexamination depend from either claim 1 or claim 11. Claims 1 and 11 both recite a seller’s request for cash from a third party via a server. In response to Owner’s argument that May does not “disclose or suggest” requesting, by the seller using the computer, cash from a third party via a server (Patent Owner Response to Non-Final Office Action, filed April 10, 2013, 16–18), the Examiner states the following: Although it does not appear that May et al teaches a seller is extended a line of credit, the buyer in May et al can achieve payments to the seller from different payment instruments/instructions [sic] including from a third party credit card or from a third party loan [May et al at 5:19-25, 7:14-18]. Further, sellers in May can initiate/request such (third party) payments by invoicing the buyer [May et al at 10:33-46]. The seller in May also can define/limit the types of payment instruments that will be available to buyers [May et al 3:45-51] and therefore limit the buyer to third party fund sources. RAN 13. Owner essentially repeats the argument on appeal. PO App. Br. 7–9; see also Patent Owner’s Rebuttal Brief, filed November 6, 2014, 5–8. We are persuaded of error in the Examiner’s decision to reject claims 1 and 11 as anticipated by May. Appeal 2015-006302 Reexamination Control 95/002,373 Patent 8,073,744 B1 5 May’s disclosure of a seller invoicing a buyer, wherein the invoice limits the buyer’s payment options to third party funds (see May 3:45–51, 5:19–25, 7:14–18, 10:33–46) does not anticipate the claimed seller requesting cash from a third party via a server as recited in claims 1 and 11. In accordance with May’s teaching, the request is made to the buyer, not a third party. Whether the limitation would have been obvious in view of May and the knowledge of an ordinarily skilled artisan at the time of Owner’s invention is not before us. Accordingly, we cannot sustain the Examiner’s decision to reject claims 1 and 11 as anticipated by May. We also cannot sustain the Examiner’s decision to reject claims 2, 4, 7, 8, 12, 14, 17, and 18, which depend therefrom. Because our finding of error in the Examiner’s decision with respect to this issue is dispositive, we need not reach a decision with respect to other issues raised by either party. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) DECISION We reverse the Examiner’s rejection of claims 1, 2, 4, 7, 8, 11, 12, 14, 17, and 18 as anticipated by May. REVERSED Appeal 2015-006302 Reexamination Control 95/002,373 Patent 8,073,744 B1 6 PATENT OWNER: MUSKIN & FARMER LLC 100 WEST MAIN STREET SUITE 205 LANSDALE, PA 19446 THIRD PARTY REQUESTER: DENTONS US LLP 233 SOUTH WACKER DRIVE WILLIS TOWER-SUITE 7800 CHICAGO, IL 60606