Paper No. 47
`Entered: November 27, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`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 No. 8,396,808 B2
`____________
`
`
`
`Before TONI R. SCHEINER, MICHAEL W. KIM, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`Square, Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting
`
`institution of a covered business method patent review of claims 1–11, 13–
`
`17, and 19–22 of U.S. Patent No. 8,396,808 B2 (“the ’808 patent”). Think
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`
`
`

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`CBM2014-00159
`Patent 8,396,808 B2
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`Computer Corporation (“Patent Owner”) filed a Preliminary Response
`
`(Paper 7, “Prelim. Resp.”). On December 29, 2014, we instituted a covered
`
`business method patent review of claims 1–8, 10, 11, 13–17, and 20–22 on
`
`certain grounds of unpatentability alleged in the Petition. Paper 9 (“Dec.”).
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(Paper 21, “PO Resp.”) and Petitioner filed a Reply (Paper 30, “Reply”).
`
`Patent Owner also filed a Motion to Amend (Paper 20, “PO Motion”), to
`
`which Petitioner filed an Opposition (Paper 29, “Pet. Opp.”), and Patent
`
`Owner filed a Reply (Paper 32, “PO Reply”). Petitioner further filed a
`
`Motion to Exclude (Paper 37, “Mot. Exc.”), to which Patent Owner filed an
`
`Opposition (Paper 40, “PO Opp.”), and Petitioner filed a Reply (Paper 43,
`
`“Pet. Reply”). An oral hearing was held on September 10, 2015. Paper 46
`
`(“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
`
`Written Decision, issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R.
`
`§ 42.73, we determine that Petitioner has shown by a preponderance of the
`
`evidence that all claims for which trial was instituted, claims 1–7, 9–11, 13–
`
`17, and 20–22, are unpatentable. Furthermore, Patent Owner’s Motion to
`
`Amend is denied. Additionally, Petitioner’s Motion to Exclude is denied.
`
`II. DISCUSSION
`
`A.
`
`The ’808 Patent
`
`The ’808 patent is directed to an electronic payment system in which a
`
`participant may act as either purchaser or merchant depending on whether
`
`the participant’s account is assigned either the purchaser or merchant role.
`
`Ex. 1001, 3:17–20.
`
`2
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`

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`CBM2014-00159
`Patent 8,396,808 B2
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`
`Claim 1 is illustrative of the challenged subject matter and is
`
`reproduced below.
`
`1. A method for transferring an electronic payment
`between a purchaser and a merchant comprising:
`assigning a role of a merchant account to a first account
`and a role of a purchaser account to a second account within a
`payment system wherein the first account and the second
`account are adapted to selectively function as either a merchant
`account or a purchaser account during any particular
`transaction;
`adding an item offered for sale by the merchant from a
`product catalog stored in the payment system to a purchase list;
`obtaining a user ID token of the purchaser from a
`merchant terminal, the merchant terminal being at a merchant
`location and the merchant location being different from the
`payment system;
`information
`confirmation
`identity
`communicating
`associated with the user ID token to the merchant terminal; and
`transferring funds for a purchase price total from the
`purchaser account to the merchant account.
`
`
`B.
`
`Instituted Grounds of Unpatentability
`
`The Board instituted trial for claims 1–11, 13–17, and 19–22 on the
`
`following grounds of unpatentability, all of which are on the basis of
`
`obviousness under 35 U.S.C. § 103(a):
`
`References
`
`Bemmel1 and Dalzell2
`
`Claim(s)
`Challenged
`1–3, 5–7, 17, and
`20–22
`
`
`1 U.S. Pat. App. Pub. No. 2008/0046366 A1, pub. Feb. 21, 2008 (Ex. 1005).
`2 U.S. Pat. App. Pub. No. 2003/0204447 A1, pub. Oct. 30, 2003 (Ex. 1006).
`
`
`3
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`

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`CBM2014-00159
`Patent 8,396,808 B2
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`
`References
`
`Claim(s)
`Challenged
`4
`
`Bemmel, Dalzell, and
`Carlson3
`Bemmel, Dalzell, and Tripp4 9, 10, and 13–15
`
`Bemmel, Dalzell, and
`Elston5
`Bemmel, Dalzell, and
`Deschryver6
`
`11
`
`16
`
`Petitioner also relies upon Declarations of Norman M. Sadeh-
`
`Koniecpol, Ph.D. in support of its challenges. Exs. 1002, 1021.
`
`C.
`
`Standing
`
`We determined, in the Decision on Institution, that the ’808 patent is a
`
`covered business method patent, as defined in § 18(a)(1)(E) of the America
`
`Invents Act and 37 C.F.R. § 42.301, because at least one claim of the
`
`’808 patent is directed to a covered business method. Dec. 5–9. Patent
`
`Owner does not dispute our previous analysis in its Patent Owner Response.
`
`Thus, after considering the record again, we reaffirm our determination in
`
`the Decision on Institution and conclude that the ’808 patent is eligible for a
`
`covered business method patent review.
`
`D. Claim Construction
`
`In a covered business method patent review, claim terms in an
`
`unexpired patent are interpreted according to their broadest reasonable
`
`
`3 U.S. Pat. App. Pub. No. 2007/0185785 A1, pub. Aug. 9, 2007 (Ex. 1008).
`4 U.S. Pat. App. Pub. No. 2006/0143087 A1, pub. June 29, 2006 (Ex. 1009).
`5 U.S. Pat. App. Pub. No. 2002/0143655 A1, pub. Oct. 3, 2002 (Ex. 1013).
`6 PCT Pub. No. WO 2007/008686 A2, pub. Jan. 18, 2007 (Ex. 1010).
`
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`Patent 8,396,808 B2
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`construction in light of the Specification of the patent in which they appear.
`
`37 C.F.R. § 42.300(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d
`
`1268, 1278–80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest
`
`reasonable interpretation standard in enacting the AIA,” and “the standard
`
`was properly adopted by PTO regulation.”); accord Versata Dev. Grp., Inc.
`
`v. SAP Am., Inc., 793 F.3d 1306, 1328 (Fed. Cir. 2015) (“though the rules
`
`governing IPR matters at issue in Cuozzo will not necessarily govern all
`
`PGR/CBM matters, we see no basis for distinguishing between the two
`
`proceedings for purposes of the PTAB’s use of BRI in claim construction
`
`here”). Under the broadest reasonable construction standard, claim terms
`
`are given their ordinary and customary meaning, as would be understood by
`
`one of ordinary skill in the art in the context of the entire disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definition for a claim term must be set forth in the specification with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular
`
`embodiment appearing in the written description into the claim if the claim
`
`language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181,
`
`1184 (Fed. Cir. 1993). We construe the terms below in accordance with
`
`these principles.
`
`1. Whether a Proper Construction of “Purchase List,”
`“Product Catalog,” or “Transaction Record” Requires “Line
`Item Data”
`
`Petitioner proposes constructions for several claim terms, including
`
`“transaction record.” Pet. 12–18. Patent Owner asserts that Petitioner’s
`
`constructions of “purchase list,” “product catalog,” and “transaction record,”
`
`or their application to the prior art, are unreasonably broad for omitting the
`
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`material limitation of “line item data.” PO Resp. 4–9, 13 (citing Exs. 1001,
`
`2005, 2021, 2022, 2023).7 After considering both Petitioner and Patent
`
`Owner’s positions, as well as all supporting evidence, we are unpersuaded
`
`that a proper construction of “purchase list,” “product catalog,” or
`
`“transaction record” requires “line item data.”
`
`Patent Owner asserts the following:
`
`But a POSITA certainly would have understood that a
`purchase
`list, product catalog, and
`transaction
`record
`necessarily would include line item data because the term “line
`item data” had been in use in the field for years, if not decades.
`
`PO Resp. 6. Patent Owner then goes on to cite several Exhibits showing that
`
`the term “line item data” was known for years prior to July 2009.
`
`PO Resp. 6–7 (citing Exs. 2021, 2022, 2023, QuickBooks, Duncan). Patent
`
`Owner’s assertions are misplaced. We are persuaded, and thus find, that the
`
`term “line item data” was known prior to July 2009. We are unclear,
`
`however, as to the connection between this finding and Patent Owner’s
`
`position that the claim terms “purchase list,” “product catalog,” and
`
`“transaction record” require “line item data.” To use an analogy, Patent
`
`Owner is asserting that a claim term “fruit” requires “apples” because
`
`“apples” were known. Certainly no one would dispute that “apples” are
`
`known, and that “apples” are a “fruit.” The fact that apples are known,
`
`
`7 Patent Owner also cites to excerpts from the following two books:
`QuickBooks 2006: The Official Guide for Premier Edition Users, published
`by McGraw-Hill/Osborne, ISBN 978-0-07226-274-2 (“QuickBooks”); The
`Career Programmer: Guerilla Tactics for an Imperfect World by
`Christopher Duncan, ISBN 978-1-59059-624-1 (“Duncan”). These books,
`however, do not appear to have been submitted as exhibits in this
`proceeding. Accordingly, we have not considered them.
`
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`Patent 8,396,808 B2
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`however, does not prevent other fruits, such as oranges or pears, from also
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`meeting the claim term “fruit.” Similarly, while we agree that the claim
`
`terms “purchase list,” “product catalog,” and “transaction record”
`
`encompass “line item data,” we are unpersuaded that information other than
`
`“line item data” cannot also meet “purchase list,” “product catalog,” and
`
`“transaction record.”
`
`Patent Owner asserts further that its position is supported by the
`
`Specification, which discloses that “purchase list,” “product catalog,” and
`
`“transaction record” include “line item data.” PO Resp. 7–9 (citing
`
`Exs. 1001, 2005). We are persuaded, and thus find, that the Specification,
`
`discloses that “purchase list,” “product catalog,” and “transaction record”
`
`may include “line item data.” We are unpersuaded, however, that a proper
`
`construction of “purchase list,” “product catalog,” and “transaction record”
`
`requires “line item data.” Part of our analysis is similar to that set forth
`
`above with respect to the Exhibits, and thus, need not be repeated here.
`
`Among other reasons informing our analysis, the Specification does not set
`
`forth any explicit definitions for “purchase list,” “product catalog,” or
`
`“transaction record” that require “line item data,” for example, in a glossary
`
`or in any other manner that could be considered reasonably clear, deliberate,
`
`and precise. See In re Paulsen, 30 F.3d at 1480. At best, the Specification
`
`discloses that, in certain embodiments, “purchase list,” “product catalog,”
`
`and “transaction record” may include “line item data,” but the Specification
`
`does not indicate that those embodiments are limiting. See In re Van Geuns,
`
`988 F.2d at 1184.
`
`Patent Owner further asserts that the term “line item data” may itself
`
`include certain additional information, citing the prosecution history of the
`
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`Patent 8,396,808 B2
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`’808 patent. PO Resp. 9 (citing Ex. 2005). Patent Owner’s assertion is not
`
`persuasive, as we have determined that the proper constructions of the claim
`
`terms “purchase list,” “product catalog,” and “transaction record” do not
`
`require “line item data.
`
`2.
`
`“Line Item Data” and “Line Item Transaction Data”
`
`In its Patent Owner Response and Motion to Amend, Patent Owner
`
`sets forth several constructions for “line item data” and “line item
`
`transaction data.” PO Resp. 9; Motion 10.8 As an initial matter, we are
`
`unclear as to the exact delineation between the two terms, as the two terms
`
`are often used interchangeably by Patent Owner. See, e.g., PO Resp. 9 (“the
`
`limitation ‘line item data’ or ‘line item transaction data’ ‘necessarily forms
`
`part of elements recited in the claims’”); Ex. 1001, 8:6–13 (“[A]s one of the
`
`main benefits of having merchant product catalogs integrated into the
`
`payment system, line item transaction data can be communicated. The line
`
`item data is additionally stored as part of the transaction record of the
`
`accounts . . . .” (emphasis added)). The two terms are different, however, in
`
`that one recites “transaction” while one does not. As every word in a claim
`
`limitation is usually presumed to have meaning, we construe “line item
`
`transaction data” as a “line item data” related to a transaction, although as a
`
`practical matter, we see little substantive difference between the two terms.
`
`Nevertheless, with that clarification of “line item transaction data,” we need
`
`only focus our analysis on “line item data.”
`
`
`8 Although none of the claims currently recites or requires “line item data”
`or “line item transaction data,” we determine that a formal construction of
`those terms at this juncture would best assist us in properly evaluating both
`the instituted grounds of unpatentability and the Motion to Amend.
`
`8
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`Patent Owner sets forth two separate constructions for “line item
`
`data.” In the Patent Owner Response, Patent Owner asserts that “line item
`
`data” is “itemized data pertaining to products and services that is derived
`
`from the ‘product catalog’ and stored in the ‘purchase list’ and ‘transaction
`
`record.’” PO Resp. 9. For support, Patent Owner cites the same Exhibits set
`
`forth above in our analysis of “purchase list,” “product catalog,” and
`
`“transaction record.” In the Motion to Amend, Patent Owner asserts that
`
`“line item data” is “the information given on each line of an invoice used to
`
`communicate the quantity, description, type, cost, product identifier (e.g.,
`
`stock keeping unit), tax, duty, shipping, or any other fees that arrive at the
`
`total sum for the transaction.” Motion 10 (citing Ex. 2021); see also
`
`PO Reply 4 (“line item transaction data ‘may include quantity, description,
`
`type, cost, product identifier (e.g., stock keeping unit), tax, duty, shipping or
`
`other fees’”). Petitioner asserts that Patent Owner’s proposed constructions
`
`are inconsistent and overly narrow, and asserts that a proper construction of
`
`“line item data” is “one or more attributes used in relation to individual
`
`products involved in a purchase or sale.” Pet. Opp. 4–9 (citing Exs. 1001,
`
`1020, 2005, 2021).
`
`As an initial matter, we note that Patent Owner’s proposed
`
`construction set forth in its Motion to Amend is not a claim construction, but
`
`a list of items that may be included under a proper construction of “line item
`
`data.” As an analogy, we would not say a definition of “fruit” is “apples,
`
`oranges, and pears.” Certainly, all those items are fruit, but a proper
`
`definition of “fruit” would express the boundaries from which one of
`
`ordinary skill could determine that apples, oranges, and pears are indeed
`
`fruit. For example, Random House provides such a definition of “fruit” as
`
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`Patent 8,396,808 B2
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`“any product of plant growth useful to humans or animals.” Dictionary.com
`
`Unabridged, Random House, Inc.,
`
`http://dictionary.reference.com/browse/fruit (accessed: Nov. 24, 2015).
`
`To that end, the Patent Owner Response does set forth what could be
`
`more properly considered a claim construction. PO Resp. 9. And indeed,
`
`when considered in conjunction with Petitioner’s proposed construction, the
`
`two constructions are similar. As noted by both Patent Owner and
`
`Petitioner, the Specification only mentions “line item data,” or similar
`
`wording, as follows:
`
`Additionally, as one of the main benefits of having merchant
`product catalogs integrated into the payment system, line item
`transaction data can be communicated. The line item data is
`additionally stored as part of the transaction record of the
`accounts. This itemized information can be very useful, such as
`in one application where tax forms are automatically completed
`by aggregating each category of line item transaction data as
`appropriate.
`
`Ex. 1001, 8:6–13. From the aforementioned portion of the Specification, we
`
`determine that the key to a proper construction of “line item data” is that it is
`
`information that is itemized and capable of categorization. In other words,
`
`“line item data” is an itemized part of a larger whole, more specifically, but
`
`not limited to, product catalogs, purchase lists, and transactions records, i.e.,
`
`at a most granular level, individual products involved in a purchase or sale,
`
`as advocated by Petitioner. This focus on itemization and categorization of
`
`products is supported by other portions of the Specification cited by the
`
`parties, for example, column 2, lines 15–17, which recites that “[t]he
`
`integration of the payment system and product catalog functions to enable
`
`recording and tracking transactions with itemized detail” (emphases added).
`
`See also Ex. 1001, 5:51–55 (“the method may additionally store purchase
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`list information as a transaction record for the merchant account and/or the
`
`purchaser account, which functions to form an itemized purchase history”
`
`(emphasis added)); 4:4–6 (“[t]he product catalog preferably includes a
`
`listing of product descriptions and prices for each product contained within
`
`the product catalog” (emphases added)); 4:6–13 (“[a]dditional information
`
`may be included for a product such as categories for tax purposes and other
`
`purposes, product-related IDs for each distributor of the product (e.g.,
`
`Stock-Keeping Unit or ‘SKU’), images or media files related to the product,
`
`inventory related information (the number of items on hand, on order, etc. at
`
`each warehouse location), or any other suitable product-related data”
`
`(emphases added)); 4:13–16 (“[t]he product catalog may be a database
`
`accessed by outside applications, but may additionally or alternatively
`
`include a hosted web-based store through which products can be added to a
`
`shopping cart (i.e., a purchase list)” (emphases added)).
`
`Accordingly, we construe “line item data” as “itemized information
`
`from a larger group of information, related to individual products involved
`
`in a purchase or sale, that is capable of categorization,” where non-limiting
`
`examples of “line item data” may include one or more of “quantity,
`
`description, type, cost, product identifier (e.g., stock keeping unit), tax, duty,
`
`shipping or other fees.”
`
`“Wherein the First Account and the Second Account Are
`3.
`Adapted to Selectively Function as Either a Merchant or a
`Purchaser Account During Any Particular Transaction”
`
`Patent Owner asserts that Dalzell does not disclose or render obvious
`
`“bidirectional accounts.” PO Reply 4–5. There is no term “bidirectional
`
`accounts” set forth in the claims, but both parties use this term in their
`
`arguments. See, e.g., PO Reply 4–5; Pet. 2–3. We presume that the parties
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`are referring to the following limitation of independent claim 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.” Independent claims 20, 21, and 22 each recite a similar claim
`
`limitation. The only mention of “bi-directional” in the Specification is as
`
`follows, and is consistent with the aforementioned presumption: “In other
`
`words, within the scope of all transactions, accounts of the payment system
`
`can function as bi-directional transaction accounts.” Ex. 1001, 3:20–22. For
`
`ease of reference, we will also refer to these claim limitations as
`
`“bidirectional accounts.”
`
`Through its briefing (PO Reply 4–5) and at oral argument, Patent
`
`Owner appears to proffer a construction of bidirectional accounts that
`
`distinguishes bidirectional accounts from the prior art. Unfortunately, we
`
`are unable to discern precisely what that construction is. The closest we are
`
`able to discern as pertaining to a claim construction, from Patent Owner’s
`
`assertions, is that bidirectional accounts cannot have extra steps. To that
`
`end, we are unclear as to the relevance of steps in relation to bidirectional
`
`accounts, as bidirectional accounts would indicate an account having
`
`specific features, not steps. Presumably there are a non-trivial number of
`
`steps necessary in order to achieve a bidirectional account. Insofar as the
`
`claim limitation at issue only recites the end-product of those steps,
`
`however, and not the steps necessary to achieve the end-product, Patent
`
`Owner’s assertions are misplaced. By analogy, if a claim limitation recites
`
`“a half-red and half-blue vehicle,” Patent Owner is asserting that because the
`
`vehicle in the prior art was originally blue, and then portions of it were later
`
`painted red, it cannot correspond properly to the recited “half-red and half-
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`blue vehicle,” because the red portion took extra steps to create. These extra
`
`steps are immaterial, as all that matters is whether the prior art discloses “a
`
`half-red and half-blue vehicle.”
`
`Even if steps were somehow relevant to a claim construction of
`
`bidirectional accounts, however, we are unpersuaded that Patent Owner’s
`
`assertions are correct. A basic canon of patent law is that, absent limiting
`
`language, a claimed step does not preclude additional steps, so long as the
`
`claim language is met. As an illustration, assume we have a claim limitation
`
`of “walk 100 meters west.” Presumably, the fastest way to accomplish that
`
`feat is to walk 100 meters directly in the westerly direction. Assume,
`
`however, that the prior art has an individual that instead walks 25 meters
`
`west, but then decides to go 10 meters north, walks another 50 meters west,
`
`goes 10 meters south, and then another 25 meters west. So, the individual
`
`has still met the limitation “go 100 meters west,” but has taken additional
`
`steps that resulted in the individual walking 20 extra meters. Under Patent
`
`Owner’s rationale, because the individual in the prior art took the additional
`
`steps of walking 10 meters north and 10 meters south, it would not meet the
`
`claim limitation “walk 100 meters west.” Because the claim limitation in
`
`our example does not preclude the extra 20 meters, and bidirectional
`
`accounts similarly does not preclude additional steps to achieve that result,
`
`we are unpersuaded that Patent Owner’s assertion is correct.
`
`Patent Owner may be asserting that in order to meet “bidirectional
`
`accounts,” a particular account must function simultaneously as both a
`
`merchant account and purchaser account. We disagree.
`
`Beginning with the claim terms themselves, the word “selectively” is
`
`used. We discern that the ordinary and customary usage of this word
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`denotes expressly that a particular account need not function simultaneously
`
`as both a merchant account and a purchaser account; a user is permitted
`
`expressly to select which account mode is desired at the appropriate point in
`
`time. The following disclosure in the Specification is consistent with this
`
`understanding:
`
`An entity (e.g., a person, business, or other legally recognized
`entity) preferably creates an account within the payment
`system. The accounts of the payment system are preferably
`designed so that an account may selectively function as either a
`merchant or a purchaser during any particular transaction. In
`other words, within the scope of all transactions, accounts of
`the payment system can function as bi-directional transaction
`accounts.
`
`Ex. 1001, 3:15–22. Indeed, here, the Specification discloses expressly that
`
`being able to select which account mode is desired is the same as “bi-
`
`directional transaction accounts.”
`
`More specifically, Patent Owner appears to assert that because the
`
`purchaser mode and the merchant mode of the account in the prior art each
`
`has a different payment type (i.e., payment card for purchaser and
`
`Automated Clearing House (ACH) for a merchant), and neither payment
`
`type can be used in the reverse mode (i.e., payment card for merchant and
`
`ACH for a purchaser), the aforementioned claim limitation is not met.
`
`Patent Owner’s assertions are misplaced, as the claim limitation does not
`
`require that the payment type be the same for both the purchaser mode and
`
`the merchant mode of the account; on this point, the claim only requires that
`
`the account have a purchaser mode and a merchant mode. Thus, the fact that
`
`the purchaser mode of an account may rely on payment cards while the
`
`merchant mode of the account may rely on ACH is immaterial.
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`In conclusion, for the reasons set forth above, we are unpersuaded that
`
`“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,” as recited in independent claim 1, requires any express
`
`construction. The same is true for the corresponding limitations recited in
`
`independent claims 20, 21, and 22. Specifically, we are unpersuaded that
`
`the aforementioned claim limitations should be construed as requiring any of
`
`the above features asserted by Patent Owner, for example, a limit on the
`
`number of steps.
`
`E. Obviousness of Claims 1–3, 5–7, 17, and 20–22 over Bemmel
`and Dalzell
`
`Petitioner asserts that claims 1–3, 5–7, 17, and 20–22 are unpatentable
`
`over a combination of Bemmel and Dalzell. Pet. 18–38 (citing Exs. 1002,
`
`1005, 1006); Reply 4–13 (citing Exs. 1002, 1005, 1006). Patent Owner
`
`disagrees. PO Resp. 10–20 (citing Exs. 1001, 1002, 1005, 1006, 1007,
`
`1011, 1012, 2018, 2021).
`
`1.
`
`Bemmel (Ex. 1005)
`
`Bemmel discloses “a mobile architecture for payment transactions
`
`and, more specifically, a method and system for providing biometric
`
`authentication at a point-of-sale (‘POS’).” Ex. 1005 ¶ 2. Specifically,
`
`Bemmel discloses receiving a mobile phone number from a consumer,
`
`generating an electronic wallet for the consumer containing the mobile
`
`phone number, establishing a voice connection with the consumer’s mobile
`
`device associated with the mobile phone number, capturing a voice sample
`
`from the consumer, and storing the voice sample in association with the
`
`mobile phone number for biometric authentication purposes. Ex. 1005 ¶ 15.
`
`15
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`Patent 8,396,808 B2
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`Once a consumer is enrolled in the mobile payment system, the consumer is
`
`then able to initiate payment transactions utilizing a mobile phone. Ex. 1005
`
`¶ 16. Specifically, Bemmel discloses the following:
`
`Upon receiving the authentication identifier through the
`mobile phone (confirming authentication of the consumer), the
`consumer is able to conduct a transaction at a merchant point-
`of-sale terminal through the teachings disclosed herein. In
`particular, when the consumer interacts with the merchant’s
`point-of-sale terminal, the mobile payment system receives a
`request from the merchant point-of-sale terminal for consumer
`information (e.g., payment information such a credit card, debit
`card or checking account numbers, etc.) with the request
`including
`the authorization
`identifier,
`it matches
`the
`authorization identifier with a stored authorization identifier
`(for example and without limitation, “staged” transaction as
`further detailed herein) in order to obtain a consumer identifier
`associated with the stored authorization identifier, and it
`transmits
`stored consumer
`information
`(e.g., payment
`information such as a credit card, debit card, checking account,
`etc.) associated with the consumer identifier to the merchant
`point-of-sale terminal, which enables the merchant point-of-sale
`to authorize the transaction by communicating with a payment
`processor.
`
`Ex. 1005 ¶ 17.
`
`2.
`
`Dalzell (Ex. 1006)
`
`Dalzell “relates to electronic marketplaces through which users buy
`
`and sell items over a computer network.” Ex. 1006 ¶ 2. Specifically,
`
`Dalzell discloses user interfaces and methods through which users may place
`
`items for sale, locate items offered by others, and perform related actions
`
`within an electronic marketplace. Ex. 1006 ¶ 2. Dalzell discloses that the
`
`online marketplace system includes a database of information about products
`
`that may be listed by users within an online marketplace, with this
`
`information typically including product IDs, and descriptions and product
`
`16
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`Patent 8,396,808 B2
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`images provided by manufacturers or distributors of the products. Ex. 1006
`
`¶ 10. Dalzell further discloses the following:
`
`As is conventional, users of the marketplace system can
`register online as marketplace sellers and thereafter create
`marketplace listings. As part of seller registration and/or as
`marketplace listings are created, the system may allow the
`user/seller to specify shipping and other policies to be published
`to buyers, and specify a bank account into which proceeds from
`sales are to be deposited by the system or its operator.
`
`Ex. 1006 ¶ 59.
`
`3.
`
`Analysis
`
`Petitioner asserts that Bemmel discloses most of the limitations of
`
`claims 1–3, 5–7, 17, and 20–22. For the other limitations, Petitioner relies
`
`on Dalzell. Specifically, exemplary independent claim 1 recites “[a] method
`
`for transferring an electronic payment between a purchaser and a merchant.”
`
`Petitioner cites both Bemmel and Dalzell for disclosing these claim
`
`limitations. Pet. 26 (citing Ex. 1005 ¶¶ 16, 17; Ex. 1006 ¶ 2). Independent
`
`claim 1 recites further “assigning a role of a merchant account to a first
`
`account and a role of a purchaser account to a second account within a
`
`payment system wherein the first account and the second account are
`
`adapted to selectively function as either a merchant account or a purchaser
`
`account during any particular transaction.” Petitioner cites Dalzell for
`
`disclosing that marketplace users (i.e., buyers) can become marketplace
`
`sellers, for example, by providing bank account information as to where
`
`sales proceeds should be deposited. Pet. 26–27 (citing Ex. 1006 ¶¶ 27, 61,
`
`87, 132). Independent claim 1 recites additionally “adding an item offered
`
`for sale by the merchant from a product catalog stored in the payment
`
`system to a purchase list.” Petitioner cites Dalzell for disclosing a user
`
`17
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`browsing a product catalog, and then selecting an “add to cart” or “buy from
`
`seller” button for a particular product from the catalog. Pet. 27 (citing
`
`Ex. 1006 ¶¶ 3, 10, 15, 166). Independent claim 1 recites also “obtaining a
`
`user ID token of the purchaser from a merchant terminal, the merchant
`
`terminal being at a merchant location and the merchant location being
`
`different from the payment system.” Petitioner cites Bemmel for disclosing
`
`a consumer providing an authorization identifier to a payment terminal, and
`
`then the payment terminal sending the authorization identifier to a merchant
`
`gateway. Pet. 28 (citing Ex. 1005 ¶¶ 17, 62, 63, 65, Fig. 3; Ex. 1006 ¶ 121).
`
`Independent claim 1 recites further “communicating identity confirmation
`
`information associated with the user ID token to the merchant terminal.”
`
`Petitioner cites Bemmel for disclosing that the mobile payment system
`
`matches the authorization identifier with a stored authorization identifier in
`
`order to obtain a consumer identifier associated with the stored authorization
`
`identifier, and transmits the stored consumer information associated with the
`
`consumer identifier to the merchant point-of-sale terminal, which enables
`
`the merchant point-of-sale to authorize the transaction by communicating
`
`with a payment processor. Pet. 28–29 (citing Ex. 1005 ¶¶ 17, 29, 41, 63, 69,
`
`claim 12). Independent claim 1 recites additionally “transferring funds for a
`
`purchase price total from the purchaser account to the merchant account.”
`
`Petitioner cites each of Bemmel and Dalzell for disclosing these claim
`
`limitations. Pet.