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Filed on behalf of Intellectual Ventures II LLC
`By: Herbert D. Hart III
`David Z. Petty
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312 775-8000
`Fax: 312 775-8100
`E-mail: hhart@mcandrews-ip.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`BANK OF AMERICA, N.A., PNC FINANCIAL SERVICES, INC.,
`and PNC BANK, N.A.
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`_________
`
`
`
`Case CBM2014-00031
`Patent No. 6,182,894
`
`
`
`PATENT OWNER’S MOTION TO AMEND THE PATENT
`PURSUANT TO 37 C.F.R. § 42.221
`
`

`
`CBM2014-00031
`Patent Owner’s Motion To Amend The Patent
`U.S. Patent No. 6,182,894
`
`
`
`Trial was instituted with respect to claims 10-18 of U.S. Patent No.
`
`6,182,894 (the “894 patent).
`
`
`
`Pursuant to 37 C.F.R. § 42.221, Patent Owner moves to amend the 894
`
`patent by cancelling claims 10-18. Patent Owner has met its obligation to confer
`
`with the Board in accordance with 37 C.F.R. § 42.221(a), and the Board has
`
`authorized the filing of the present motion. See Paper No. 17 at 2.
`
`Pursuant to 37 C.F.R. § 42.221(b), Patent Owner provides the following
`
`claim listing showing the changes made to the claims pursuant to this Motion to
`
`Amend.
`
`I.
`
`CLAIM LISTING
`
`1.
`
`(Original) A system for authorizing commercial
`
`transactions
`
`comprising:
`
`a transaction card having an n character account code and an n character
`
`identification code, wherein said identification code is not an expiration date and
`
`wherein said account code and said identification code have a predetermined
`
`logical relationship;
`
`an input device for receiving said account code and said identification code;
`
`and,
`
`1
`
`

`
`CBM2014-00031
`Patent Owner’s Motion To Amend The Patent
`U.S. Patent No. 6,182,894
`
`
`an authorization computer in communication with said input device, said
`
`authorization computer configured to confirm said predetermined relationship
`
`between said account code and said identification code.
`
`2.
`
`(Original) The system of claim 1, wherein said transaction card is at
`
`least one of a credit card, debit card, bank card, charge card and smart card.
`
`3.
`
`(Original) The system of claim 1, wherein said identification code is
`
`unembossed.
`
`4.
`
`(Original) The system of claim 1, wherein said account code and
`
`said identification code are on the same side of said transaction card.
`
`5.
`
`(Original) The system of claim 1, wherein said input device is at
`
`least one of a keypad, POS terminal, ATM terminal, computer and telephone.
`
`6.
`
`(Original) The system of claim 1, wherein said identification code is
`
`at least one of a three-digit number, four-digit number and five-digit number.
`
`7.
`
`(Original) The system of claim 1, wherein said account code and
`
`said identification code are on the same side of said transaction card and said
`
`identification code is an unembossed four-digit number located above said account
`
`code.
`
`2
`
`

`
`CBM2014-00031
`Patent Owner’s Motion To Amend The Patent
`U.S. Patent No. 6,182,894
`
`
`8.
`
`(Original) The system of claim 1, wherein said authorization
`
`computer is configured to transform said identification code to a second
`
`identification code.
`
`9.
`
`(Original) The system of claim 1, wherein said authorization
`
`computer communicates with an account database and said authorization computer
`
`is configured to confirm said predetermined relationship between said account
`
`code and said identification code by interrogation of said account database.
`
`10-18.
`
`(Canceled)
`
`II.
`
`SUPPORT FOR AMENDMENTS
`
`By this amendment, claims 10-18 have been canceled. Because claim
`
`language has not been amended and substitute claims have not been proposed,
`
`Patent Owner submits that a showing of support is unnecessary for the present
`
`Motion to Amend.
`
`III. SCOPE OF AMENDMENTS
`
`Patent Owner submits that the scope of the above amendments is appropriate
`
`for a Covered Business Method Patent (“CBM”) Review. Specifically, the
`
`amendments respond to a ground of unpatentability by canceling claims and
`
`rendering the grounds of unpatentability for the canceled claims moot. In addition,
`
`3
`
`

`
`CBM2014-00031
`Patent Owner’s Motion To Amend The Patent
`U.S. Patent No. 6,182,894
`
`the amendments do not seek to enlarge the scope of the claims or introduce new
`
`subject matter.
`
`IV. CONCLUSION
`
`Patent Owner respectfully submits that the above amendments are
`
`appropriate for entry and requests that the Board grant this Motion to Amend the
`
`894 patent. Moreover, as a CBM patent review was instituted only with respect to
`
`claims 10-18 of the 894 patent, cancellation of those claims will effectively end the
`
`CBM review of the 894 patent.
`
`
`
`
`
`Respectfully submitted,
`
`/Herbert D. Hart III/
`Herbert D. Hart III
`Registration No. 30,063
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Office: (312) 775-8000
`Fax: (312) 775-8100
`Email: hhart@mcandrews-ip.com
`
`
`Lead Counsel for Patent Owner
`
`
`
`4
`
`Dated: July 7, 2014
`
`
`
`
`
`

`
`CBM2014-00031
`Patent Owner’s Motion To Amend The Patent
`U.S. Patent No. 6,182,894
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copies of the foregoing PATENT
`
`OWNER’S MOTION TO AMEND THE PATENT PURSUANT TO 37 C.F.R.
`
`§ 42.221 were served on July 7, 2014, by electronic mail on:
`
`Donald R. Steinberg
`don.steinberg@wilmerhale.com
`Monica Grewal
`Monica.grewal@wilmerhale.com
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`
`/Herbert D Hart III/
`Herbert D. Hart III
`
`
`
`5
`
`
`
`Date: July 7, 2014

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