Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 52
`Entered: February 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`THINK COMPUTER CORPORATION,
`Patent Owner.
`_______________
`
`Case CBM2014-00159
`Patent 8,396,808 B2
`_______________
`
`
`
`Before TONI R. SCHEINER, MICHAEL W. KIM, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. §§ 42.5, 42.71(d)
`
`On December 28, 2015, Patent Owner filed a Request for Rehearing
`Pursuant to 37 C.F.R. § 42.71 (Paper 51; “Req.”) concerning a Final Written
`Decision mailed November 27, 2015 (Paper 47; Dec.).
`A request for rehearing can only point out that which the Board
`misapprehended or overlooked, and will be reviewed for abuse of discretion.
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`

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`CBM2014-00159
`Patent 8,396,808 B2
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`37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of
`persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and where each matter was previously addressed in a motion,
`an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012).
`1.
`“wherein the first account and the second account are
`adapted to selectively function as either a merchant or a
`purchaser account during any particular transaction”
`Fundamentally, most of Patent Owner’s assertions, on this issue but
`also others, are misplaced, because while Patent Owner liberally uses the
`phrase “misapprehend or overlook,” Patent Owner actually uses the phrase
`predominantly as a substitute for “disagree.” In doing so, Patent Owner
`misunderstands the purpose of requests for rehearing, and the importance of
`“specifically identify[ing] all matters the party believes the Board
`misapprehended or overlooked, and where each matter was previously
`addressed in a motion, an opposition, or a reply.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. at 48,768 (emphasis added). This guidance is
`particularly important for a request for rehearing of a Final Written
`Decision, as the trial portion of the proceeding is now closed, and neither
`party is allowed to enter new arguments, citations, or evidence.
`In the vast majority of its assertions, Patent Owner fails to identify
`where the arguments, citations, or evidence were previously addressed in a
`substantive paper. A request for rehearing must necessarily be limited to
`such arguments already made, and citations and evidence already presented,
`because to do otherwise would be fundamentally unfair to the opposing
`party, in this case, the Petitioner. Specifically, due process and fairness
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`Patent 8,396,808 B2
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`dictates that for every assertion made by one party, the opposing party must
`have the opportunity to rebut that assertion. That is why these trial
`proceedings provide very specific times and papers for which each party is
`allowed to make and rebut substantive assertions. Allowing one party to
`make assertions outside of those confines upsets that balance. To be sure,
`the Board is fallible, and so requests for rehearing are provided to ensure
`that every argument, citation, or evidence presented was properly considered
`in rendering a decision. Nevertheless, it is to balance this desire for
`completeness with the aforementioned notions of due process and fairness
`that, in requests for rehearing, the moving party is scrupulously limited to
`identifying assertions already made, and citations, or evidence previously
`presented in conjunction with a substantive paper where the opposing party
`had the opportunity to respond, especially here where the trial portion of the
`proceeding has concluded. When we apply this framework to most of Patent
`Owner’s assertions, we see that Patent Owner has failed to meet both the
`letter and spirit of the aforementioned rules governing requests for rehearing.
`For example, independent claim 1 recites “wherein the first account
`and the second account are adapted to selectively function as either a
`merchant or a purchaser account during any particular transaction,” which
`all parties and the Board refer to as “bidirectional accounts.” Dec. 11‒12.
`Independent claims 20, 21, and 22 each recite a similar claim limitation.
`Patent Owner asserts that the Board misapprehended or overlooked the
`prosecution history of U.S. Patent No. 8,396,808 B2 (“the ’808 Patent”) in
`construing “bidirectional accounts.” Req. 4‒5. In making that assertion,
`however, Patent Owner does not identify, and we are unable to discern
`independently, any previous motion, opposition, or reply in which Patent
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`Owner argued that the prosecution history specifically informs the
`construction of that term, thus failing to meet the aforementioned portion of
`the Office Trial Practice Guide. Applying the above-referenced due process
`framework, consideration of this assertion would not be proper. Because
`this assertion was not set forth in a previous motion, opposition, or reply,
`Petitioner did not have the chance to rebut this assertion, especially here,
`where the trial portion of the proceeding has concluded. Accordingly, if we
`were to now make a construction in favor of Patent Owner based on
`assertions concerning which Petitioner did not have a chance to respond,
`such a determination would be fundamentally unfair to Petitioner, and thus
`cannot be allowed.
`Patent Owner does identify “Paper 7 at 8, 17” (Req. 2), and may be
`asserting that this identification alone forms a proper basis in a previous
`motion, opposition, or reply for the aforementioned assertion. This assertion
`is problematic for several reasons. As an initial matter, Paper 7 is Patent
`Owner’s Preliminary Response, to which Petitioner was not afforded a
`chance to reply. A preliminary response is normally only a substantive
`paper in that it is used to assist the Board in deciding whether or not to
`institute a trial. Once the Decision on Institution (Paper 9) was made,
`however, any substantive assertions Patent Owner wished the Petitioner to
`consider should have been made in the proper papers following institution
`and before the Final Written Decision to which Petitioner would have had a
`chance to reply, in this case, the Patent Owner Response (Paper 21) (to
`which Petitioner filed a Reply (Paper 30)) or Patent Owner’s Motion to
`Amend (Paper 20) (to which Petitioner filed an Opposition (Paper 29)). To
`hold otherwise would be procedurally unfair to Petitioner, who had
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`expected, and should only have expected, to respond to substantive
`assertions set forth in those papers, and not in the preliminary response. See
`Scheduling Order (Paper 10) at 4 (“The patent owner is cautioned that any
`arguments for patentability not raised in the response will be deemed
`waived.”). To that end, Patent Owner has not identified, and we are unable
`to discern independently, where Patent Owner previously made the
`aforementioned assertions concerning “bidirectional accounts” and the
`prosecution history in either the Patent Owner Response or the Patent
`Owner’s Motion to Amend.
`Setting aside the fact that Patent Owner relies upon its Preliminary
`Response, even when we consider the cited portions of the Preliminary
`Response, we are still unable to identify anything that could be considered a
`previous basis for assertions concerning “bidirectional accounts” and the
`prosecution history. Indeed, the entirety of Patent Owner’s analysis in the
`cited portions of the Preliminary Response that could even remotely be
`interpreted as relating to a proper claim construction of “bidirectional
`accounts” is as follows:
`The ’808 Patent also solves the technical problem of the
`lack of role flexibility in traditional payment systems, which for
`decades has complicated data retrieval tasks for countless
`businesses by forcing them to maintain multiple accounts
`and/or identities for transaction counterparts due to legacy
`technical design flaws. The ’808 Patent solves the problem by
`flexibly assigning roles linked to a centralized legal entity
`database to create bi-directional account functionality, as
`opposed to using fixed roles with no bi-directionality and with
`no uniform entity identifiers, as in the prior art.
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`Prelim. Resp. 8.1 We are unclear as to how any of this analysis provides a
`proper basis for Patent Owner’s aforementioned assertions concerning
`“bidirectional accounts” and the prosecution history.
`Perhaps Patent Owner is asserting that the issue generally is
`“bidirectional accounts,” and since “bidirectional accounts” generally was
`mentioned at the above-identified pages of the Preliminary Response, any
`specific arguments, citations, and evidence made under the general rubric of
`“bidirectional accounts” is proper at any time, because Petitioner should
`have been on notice that “bidirectional accounts” was a contested issue to
`which they should have set forth a rebuttal. We disagree. By that logic,
`Patent Owner would have to be asserting that Petitioner, based on the
`aforementioned vague reference to “bidirectional accounts” in the
`Preliminary Response, should have anticipated that Patent Owner would
`eventually make specific references to the portions of the prosecution history
`set forth in the Request for Rehearing, and thus should have preemptively
`addressed the assertions concerning “bidirectional accounts” and the
`prosecution history, even before they were made. While we are cognizant
`that each party should be allowed some leeway in expanding on and
`clarifying specific arguments, citations, and evidence made in previous
`papers, we are unpersuaded, here, that the specific references to the portions
`of the prosecution history set forth in the Request for Rehearing is merely a
`
`1 Patent Owner also cites page 17 of the Preliminary Response, however, we
`have reviewed all of pages 17 to 19 of the Preliminary Response, and are
`unable to identify any portion that could be considered relevant to the above
`assertion. Specifically, the only assertion made by Patent Owner is that
`Dalzell and Bemmel were similar to references already considered by the
`Examiner, and does not address assertions concerning “bidirectional
`accounts” and the prosecution history.
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`reasonable expansion or clarification of the vague reference to “bidirectional
`accounts” set forth in the Preliminary Response. Thus, we are unpersuaded
`that we misapprehended or overlooked the above-cited portions of the
`prosecution history in construing “bidirectional accounts.”
`In a similar manner, Patent Owner asserts further that the Board
`misapprehended or overlooked certain portions of the Specification and
`claims of the ’808 Patent in construing “bidirectional accounts.” Req. 2‒7.
`Our analysis here is the same as that set forth above with respect to
`“bidirectional accounts” and the prosecution history, and need not be
`repeated.
`Although identified in a later portion of the Request for Rehearing,
`pages 4 to 5 of Patent Owner’s Reply in Support of Motion to Amend Under
`37 C.F.R. § 42.221 (Paper 32) do set forth something that could plausibly be
`considered a tangential assertion concerning a proper construction of
`“bidirectional accounts,” though the analysis is in the context of why Dalzell
`did not disclose “bidirectional accounts.”2 Even here, however, Patent
`Owner does not identify any of the allegedly misapprehended or overlooked
`portions of the prosecution history, Specification, or claims that are
`purportedly relevant to a claim construction of “bidirectional accounts.”
`Indeed, here, Patent Owner does not even mention the Specification or
`prosecution history at all.
`For the above reasons, we are unpersuaded that the Board
`misapprehended or overlooked the items identified by Patent Owner in
`construing “bidirectional accounts.”
`
`2 We note that even the assertion here was made in a Reply, to which
`Petitioner had a very limited chance to respond. Paper 34, 2‒3.
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`Even if we were to consider some of the identified items, however, we
`are unpersuaded that they would alter our construction. For example, Patent
`Owner asserts that the claim limitation “any particular transaction” requires
`that “bidirectional account” be construed as allowing an account to function
`simultaneously as both a merchant account and a purchaser account under all
`transactions. We disagree, primarily because we are unclear as to what
`Patent Owner means by “under all transactions.” The relevant limitation of
`independent claim 1 reads “wherein the first account and the second account
`are adapted to selectively function as either a merchant or a purchaser
`account during any particular transaction.” We find that “[a]ny particular
`transaction” means any specific transaction, and is not necessarily limited to
`all transactions going forward, and find further that, logically, an account
`need only function in “merchant mode” or “purchaser mode” for that
`particular transaction; otherwise the account would be in the awkward
`position of performing a transaction with itself. Moreover, we are unclear as
`to why the same account cannot function as both, depending on the
`transaction, as an account is merely a repository within which funds are
`held, and whether the account is in “merchant mode” (i.e., the ability to send
`funds from the account) or “purchaser mode” (i.e., the ability to send funds
`to the account) does not alter the fundamental repository nature of the
`account itself.
`A similar analysis of the cited portions of the prosecution history and
`Specification yields similar conclusions. For example, Patent Owner’s
`discussion of the prosecution history on pages 4 and 5 of the Request for
`Rehearing do not amount to Patent Owner providing an explicit definition of
`“selectively function,” “during any particular transition,” or any other claim
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`term as meaning “simultaneously”; nor do Patent Owner’s statements rise to
`the level of a clear and unmistakable disclaimer with respect to the meaning
`of the claim terms.
`2.
`whether Dalzell fails to meet the claims’ requirements
`Based on Patent Owner’s proposed claim construction of
`“bidirectional accounts,” Patent Owner asserts that Dalzell does not disclose
`“bidirectional accounts.” Req. 7‒10. As we are unpersuaded, however, that
`the Board misapprehended or overlooked the items identified by Patent
`Owner in construing “bidirectional accounts,” we are unpersuaded that our
`analysis of Dalzell and “bidirectional accounts” set forth on pages 28 to 29
`of the Final Written Decision should be modified in any way. See Dec. 29
`(“[W]e find that a more logical reading of paragraph 59 of Dalzell is that a
`buyer, from a particular account, can add a seller feature to that particular
`account, without the need to create a whole new account. Such a finding is
`supported by extensive analysis and testimony by Dr. Sadeh-Koniecpol, with
`explicit citations to Dalzell, which we find credible, reasonable, and
`persuasive. Ex. 1002 ¶¶ 147-164 (citing Ex. 1006 ¶¶ 9, 27, 49, 57, 61, 82,
`85, 87, 132, 163, Figs. 1A, 1B).”)
`3.
`“line item data” and “line item transaction data”
`Patent Owner asserts that the Board misconstrues “line item data” and
`“line item transaction data” (hereinafter “line item data”). Req. 10‒15.
`Similar to the assertions set forth above with respect to “bidirectional
`accounts,” we note that many of Patent Owner’s assertions concerning this
`issue are set forth for the first time in the Request for Rehearing, without
`Patent Owner identifying, or the Board being able to ascertain
`independently, where those assertions were first made in a previous motion,
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`opposition, or reply. Accordingly, those assertions have not been considered
`for the same reasons as set forth supra concerning “bidirectional accounts.”
`Instead, we address below only those assertions that have a proper basis in a
`previous motion, opposition, or reply.
`Patent Owner asserts that a proper construction of each of the recited
`claim limitations “purchase list,” product catalog,” and “transaction record”
`requires “line item data” as a necessary limitation to all claims, and that the
`Board misapprehended and overlooked two things in determining otherwise.
`We disagree.
`First, Patent Owner asserts that the Board’s determination that
`“purchase list” does not require “line item data” is unreasonably broad,
`because the Board overlooked or misapprehended the fact that the
`Specification does not provide a basis for the Board’s unreasonably broad
`construction. We disagree. As set forth on page 7 of the Final Written
`Decision, the Board considered expressly the Specification as a basis for its
`construction. To the extent that Patent Owner disagrees with how the Board
`used the Specification in making the aforementioned construction, the Board
`has considered anew the disclosures in the Specification identified by Patent
`Owner concerning whether “purchase list” requires “line item data,” and are
`again unpersuaded our construction is in error.3
`Second, Patent Owner asserts that the Board’s determination that
`“purchase list” does not require “line item data” is unreasonably broad,
`because the Board overlooked or misapprehended the fact that In re Van
`
`
`3 Indeed, Patent Owner’s “fruit orchard” analogy supports the Board’s
`construction, as a fruit orchard, at times, may not include any fruit, for
`example, and merely consist of soil and trees.
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`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993), can be distinguished from the
`instant proceeding. Specifically, Patent Owner asserts that “there is no
`alternative construction posited as was true in In re Van Geuns, and ‘line
`item data’ is not a familiar natural principle, in the way that a magnetic field
`is.” Req. 11. We disagree. Concerning whether or not there was an
`alternative construction posited in In re Van Geuns, the question in that case
`was whether a claim limitation concerning “substantially uniform magnetic
`field” should be construed as “substantially uniform magnetic field required
`for NMR imaging” (emphasis added). Thus, contrary to Patent Owner’s
`assertions, there were two alternative constructions posited, one broader and
`one narrower, and the broader one was determined to be correct. Such is the
`exact fact scenario here concerning “purchase list” and “line item data.”
`Concerning the fact that “line item data” is not a familiar natural
`principle, we agree with Patent Owner. We are unclear as to how that
`agreement, however, helps Patent Owner’s position, as if “line item data” is
`not as certain as a familiar natural principle, the ambiguity should be
`construed against Patent Owner. Specifically, if there is greater doubt as to
`whether or not “purchase list” requires “line item data” because the meaning
`of “line item data” is uncertain, the broader construction should be used, i.e.,
`that “purchase list” does not require “line item data.”
`Patent Owner appears to assert additionally that the Board
`misapprehended or overlooked the fact that a proper construction,
`presumably of the independent claims, requires that in order for a prior art
`reference to meet the claimed system and method, the prior art must be
`capable of handling all types of “line item data,” including “line item data”
`that includes gigabytes of data. We disagree that this assertion was
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`misapprehended or overlooked, as Patent Owner has not identified where
`these assertions are set forth in any previous motion, opposition, or reply.4
`Patent Owner asserts additionally that the Board has misapprehended
`or overlooked Patent Owner’s characterizations of Exhibit 2042. The Board
`did not misapprehend or overlook Patent Owner’s characterizations of
`Exhibit 2042; the Board disagreed with it. Indeed, page 36 of the Final
`Written Decision block quotes and addresses the exact assertions that Patent
`Owner asserts was misapprehended or overlooked.
`Patent Owner asserts also that the Board has misapprehended or
`overlooked the fact that the items set forth in Figure 4 of Exhibit 2042 are
`not “line item data.” We construed “line item data” as “information from a
`larger group of information, related to individual products involved in a
`purchase or sale, that is capable of categorization.” Dec. 11. We are
`unpersuaded that at least one of the items set forth in Figure 4 of Exhibit
`2042, such as any item listed under Description, Category, Date, Currency,
`and Amount, does not meet the above construction of “line item data.”
`IT IS ORDERED that insofar as we have addressed above the
`assertions set forth in Patent Owner’s Request for Rehearing (Paper 51), the
`Request is granted. In all other respects, the Request is denied.
`
`
`
`
`4 Absent such a narrowing of the independent claims, and it is unclear which
`claim limitation would serve the basis for such a narrowing, Patent Owner’s
`proffered analogy again supports the Board’s construction, as a doorframe
`built for “humans” is met if the prior art discloses a doorframe that can
`accommodate a short child, but not Manute Bol.
`
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`CBM2014-00159
`Patent 8,396,808 B2
`
`For PETITIONER:
`
`Michael T. Rosato
`Robin L. Brewer
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`mrosato@wsgr.com
`rbrewer@wsgr.com
`
`For PATENT OWNER:
`
`Issac Rabicoff
`RABICOFF LAW LLC
`isaac@rabilaw.com
`
`Michael Aschenbrener
`ASCHENBRENER LAW, P.C.
`mja@aschenbrenerlaw.com
`
`
`
`
`
`13