Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 35
`Entered: May 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`WALGREEN CO., AHOLD U.S.A., INC., DELHAIZE AMERICA, LLC,
`and PUBLIX SUPER MARKETS, INC.,
`Petitioner,
`v.
`ADVANCED MARKETING SYSTEMS, LLC,
`Patent Owner.
`____________
`Case CBM2016-00013
`Patent 8,538,805 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, TREVOR M. JEFFERSON, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
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`Patent 8,538,805 B2
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`Walgreen Co., Ahold USA, Inc., Delhaize America, LLC, and Publix
`Super Markets, Inc. (collectively “Petitioner”) filed a Petition (Paper 2,
`“Pet.”) pursuant to 35 U.S.C. §§ 321–329 seeking to institute a covered
`business method patent review of claim 1 of U.S. Patent 8,538,805 B2
`(Ex. 1001,“the ’805 patent”). Advanced Marketing Systems, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 5 (“Prelim. Resp.”).
`
`We granted Petitioner’s request (Paper 6; “Institution Decision”) and
`instituted a covered business method patent review of the challenged claim
`on the following two grounds:
`1. lack of written description under 35 U.S.C. 112, ¶ 1; and
`2. anticipation by Nichtberger1 under 35 U.S.C. § 102.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 22 (“PO Resp.”). Petitioner filed a Reply. Paper 31
`(“Pet. Reply”). Neither party requested an oral hearing, and none was held.
`The Board has jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner shown, by a
`preponderance of the evidence, that claim 1 of the ’805 patent is not
`patentable.
`
`
`1 U.S. Patent 4,882,675 (Ex. 1007).
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`I. BACKGROUND
`A. The ʼ805 patent (Ex. 1001)
`The ʼ805 patent is titled “Promotion on Processor and Management
`System.” The Abstract describes the subject matter as follows:
`A data processing system employs a unique coded promotional
`vehicle to attract customers into retail establishments for the
`purchase of discounted goods. The promotional vehicle includes
`coupon styled graphics integrated with a code to allow data
`tracking by the store pursuant to purchases by that customer. The
`promotional vehicle is easier and less costly to distribute
`compared to the prior art, avoids cutting of coupons, and post
`purchase redemptions. The system further allows more targeted
`discounting at a lower cost, and substantially reducing fraud by
`eliminating post purchase coupon processing and redemption.
`Additionally, the system provides for selective deactivation of
`the code for each discount used by redemption of the vehicle
`without deactivating the code for the discounts not used so that
`the code may remain selectively active for future use.
`Ex. 1001, Abstract.
`
`The invention of the ’805 patent employs a specifically constructed
`multi-discount incentive production vehicle (MDV) distributed to select
`customers. Id. at col. 5, ll. 51–54. The MDV includes a specific multi-
`function code embedded in or associated with the vehicle, to identify the
`customer and permit tracking of the promotion through redemption. Id. at
`col. 5, ll. 54–58. This subject matter of the ʼ805 patent is illustrated by
`Figure 1 of the patent, which follows:
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`Figure 1 is described in the ’805 patent as a block diagram of the
`
`invention. Ex. 1001, col. 5, ll. 15–16. As described further in the patent, in
`Figure 1, customer 30 receives an MDV via one of two paths: mail
`distribution 10 or newspaper/magazine 20. Id. at col. 6, ll. 17–21. Next,
`customer 30 visits retail store 40 with the MDV. Id. at col. 6, ll. 34–35.
`After shopping concludes, during the checkout process 50, the MDV is
`scanned and processed with that transaction. Id. at col 6, ll. 35–37. The
`MDV is checked for authenticity, and items purchased that are subject to a
`discount are tracked, with the total amount charged to that customer adjusted
`accordingly. Id. at col. 6, ll. 37–40.
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`In one example described in the specification, the customer retains the
`
`MDV and uses it to assist in his or her next shopping trip to the super
`market. Ex. 1001, col. 10, ll. 7–8. At check-out, the super market employs
`scanning equipment to read both the MDV and the products selected by the
`customer for purchase. Id. at col. 10, ll. 13–15. The scanning equipment is
`connected to a computer that compares the purchases with a file storing
`information regarding the products promoted with the MDV. Id. at col. 10,
`ll. 15–18. This comparison is facilitated by the unique identifier provided on
`the MDV, which associates the promotion to the stored file. Id. at col. 10,
`ll. 18–20.
`
`As promoted items listed on the MDV are scanned during checkout,
`the system flags these items as purchased and applies the discount to the
`price provided to the customer. Id. at col. 10, ll. 20–23. The computer may
`thereafter deactivate the promotion for that product to insure that the MDV
`is not used again to duplicate the discount for the purchased items. Id. at
`col. 10, ll. 23–26. The MDV, however, remains active, to the extent certain
`promoted items were not purchased by the customer during this or previous
`shopping visits and the time period set for the promotion has not expired.
`Id. at col. 10, ll. 26–29. This allows the customer to return to the store with
`the MDV and to take advantage of the remaining promotions on the MDV
`that have not been used. Id. at col. 10, ll. 29–32.
`
`B. Illustrative Claim
`Claim 1, the only claim challenged, is reproduced here:
`1. A data processing system for tracking and processing a
`plurality of in-store discounts to potential purchasers of plural
`products during the checkout process, wherein said discounts are
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`each associated with a specific one of said plural products, said
`system comprising:
`a discount vehicle, characterized by two or more of said
`discounts, including descriptive material to provide information
`at least identifying the products and their associated discounts;
`a customer account associated with a customer
`identification code, the customer account comprising two or
`more of said discounts of the discount vehicle selected by a
`customer to be associated with the customer account, the
`customer account being associated with a select code that permits
`tracking of said customer account during checkout, said select
`code uniquely identifying all the discounts for all of the plural
`products associated with the customer account;
`wherein the customer identification code is inputted by the
`customer to access the customer account;
`a checkout processing terminal including computer based
`tracking of individual purchasers’ purchased products and the
`prices thereof, wherein said processing terminal includes a
`device for receiving the select code during checkout; and
`a data processor attached to said checkout terminal for
`receiving information regarding transactions associated with
`checkout, selected products and the discounts associated with the
`select code forming a part of the transactions, and processing said
`discounts in accord with said select code;
`wherein said data processor selectively deactivates the
`select code for only particular discounts, of the plurality of
`discounts, associated with the purchased products by redemption
`of the select code associated with the customer account such that
`the select code remains active for future use with yet unused ones
`of the plurality of discounts associated with said plural products,
`said data processor being further connected to memory for
`storing data associated with said transaction.
`C. Related Proceedings
`
`Patent Owner states that it has asserted the ʼ805 patent in Advanced
`
`Mktg. Sys., LLC v. Walgreen Co., No. 6:15-cv-00137 (E.D. Tex. Feb. 20,
`
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`2015); Advanced Mktg. Sys., LLC v. Ahold USA, Inc., No. 1:15-cv-1686
`(M.D. Pa. Feb. 19, 2015); Advanced Mktg. Sys., LLC v. Delhaize America,
`Inc., No. 1:15-cv-00635 (M.D. N.C. Feb. 23, 2015); and Advanced Mktg.
`Sys., LLC v. Publix Super Markets, Inc., No. 3:15-cv- 00247 (M.D. Fla. Mar.
`3, 2015). Paper 3, 1. In addition, Patent Owner identifies a number of
`litigations and petitions for covered business method reviews involving
`related patents. Id. at 2.
`D. Real Party-in-Interest
`The Petition identifies Walgreen Co.; Ahold U.S.A., Inc.; Publix
`Super Markets, Inc.; Delhaize America, LLC; and Quotient Technology Inc.
`(formerly Coupons.com Inc.) as the real parties-in-interest. Pet. 1. Patent
`Owner does not challenge this assertion.
`
`
`II. ANALYSIS
`
`A. Standing
`Petitioner stated that it has been sued for infringement of the
`
`ʼ805 patent and is not estopped from challenging the patent claims. Pet. 14.
`Patent Owner does not contest this. We determined, therefore, that
`Petitioner has standing to seek review of the ʼ805 patent under Section 18 of
`the AIA. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”) § 18(a)(1)(A); see 37 C.F.R. § 42.302. Institution
`Decision 7.
`B. Financial Product or Service
`
`
`A covered business method patent is “a patent that claims a method or
`corresponding apparatus for performing data processing or other operations
`used in the practice, administration, or management of a financial product or
`
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`service.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). Petitioner contends
`that the requirement is met because the challenged patent claim recites a data
`processing system for tracking and processing in store discounts to potential
`purchasers of products. Pet. 4. Petitioner also relies on the recitations in the
`claim of a “discount vehicle” and a “customer account.” Id. at 4–5.
`
` In our Institution Decision (at pp. 7–8), we concluded that the
`“financial product or service” requirement is met. Patent Owner’s Response
`does not challenge this determination. Accordingly, we do not address this
`issue further but rely instead on our previous findings and analysis.
`
`C. Technological Invention Exclusion
`
`The AIA excludes from covered business method patent review
`patents for a “technological invention.” AIA § 18(d)(1). In our Institution
`Decision (at pp. 8–9) we were persuaded that the exclusion for
`“technological inventions” does not apply here. We agreed with Petitioner
`that the focus of the ʼ805 patent specification is the MDV, not the data
`processing system components in claim 1. Pet. 11–12. The specification
`itself suggests that the system components are “conventional” and
`“existing.” Id. at 12–13. We concluded, therefore, that ʼ805 patent is a
`covered business method patent eligible for review. Institution Decision 9.
`Patent Owner’s Response does not challenge this determination.
`Accordingly, we do not address this issue further but rely instead on our
`previous findings and analysis.
`
`D. Claim Construction
`In a covered business method patent review, claim terms in an
`unexpired patent are construed according to their broadest reasonable
`interpretation in light of the specification of the patent in which they appear.
`
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`37 C.F.R. § 42.300(b); Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012). Under that 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). Only terms
`which are in controversy need to be construed, and then only to the extent
`necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`For purposes of this Decision, we determine that the following are the
`only terms requiring our consideration.
`1. “discount vehicle”
`Petitioner contends that this term should be construed as “a paper-
`based article including representations of product discounts printed thereon.”
`Pet. 20. Petitioner relies mainly on the specification, particularly
`Figures 3A–3B, and the descriptions thereof of the MDV as a paper-based
`article. Id. at 21–24. Petitioner asserts, “[n]owhere does the specification
`describe the MDV in any other form.” Id. at 22. In our Institution Decision
`(at pp. 10–11), we stated “we are not prepared to construe ‘discount vehicle’
`as a paper-based article.”
`Patent Owner does not agree with Petitioner’s construction, but for the
`purposes of this proceeding states that “this point is moot.” PO Resp. 16.
`Taking into account our analysis of Nichtberger, infra, we agree and
`therefore do not further construe this term.
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`2. “select code”
`This term appears once in the ʼ805 patent specification:
`A sample processing sequence is provided in FIG. 2. Beginning
`with Start Block 100, logic continues to block 110, wherein the
`MDV is printed with a select code. In accordance with the above
`process, the same code is placed on plural vehicles for a single
`promotion, and no customer identification is provided within the
`code.
`Ex. 1001, col. 6, ll. 66–col. 7, l. 4 (emphasis added). Based on this
`description in the specification, we construed this term to mean a code that is
`placed on a discount vehicle for a single promotion identifying the
`discounts. Institution Decision 11. Patent Owner does not appear to dispute
`this construction, stating: “[f]or the purpose of this proceeding, Patent
`[O]wner agrees that the term ‘select code’ is selectively deactivated for only
`particular discounts.” PO Resp. 16. We therefore see no reason to change
`our construction from the Institution Decision.
`3. “selectively deactivates the select code”
`This term appears in the following phrase from claim 1: “selectively
`deactivates the select code for only particular discounts.” Petitioner
`contends that this should be construed as requiring “ensuring that the select
`code cannot be used to obtain a product discount that was already obtained.”
`Pet. 27. Petitioner relies for support on the context of the claim language
`and the prosecution history. Id.
`Patent Owner states its agreement with Petitioner on the definition of
`the phrase “said select code can be selectively deactivated for only particular
`discounts.” PO Resp. 16. Patent Owner contends that the term “selective
`deactivation” means “the deactivation of a select code for at least one
`discount of a discount vehicle.” Id. at 18. Patent Owner further contends
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`that the term “during the checkout process,” appearing in the preamble of
`claim 1, limits “the structure and intended purpose of use of the discount
`vehicle to, in particular, when it may be selectively deactivated.” Id. at 13.
`
`Petitioner responds that the preamble term “during the checkout
`process” is used to state an intended use, not a limitation. Pet. Reply 2.
`Petitioner points out also that neither the prosecution history of the
`’805 patent nor the patent specification supports Patent Owner’s argument.
`Id. at 3–5.
`Petitioner’s argument that we should apply the general rule that a
`preamble which merely recites an intended purpose for an apparatus does
`not limit the apparatus is persuasive. Pet. Reply 2. We note that the
`preamble of claim 1 recites a “data processing system for tracking and
`processing a plurality of in-store discounts to potential purchasers of plural
`products during the checkout process.” Ex. 1001. By its plain terms, the
`phrase “during the checkout process” modifies “for tracking and
`processing,” which in turn modifies the “data processing system.” Thus, we
`find that the term beginning with “for” and ending with “process” states an
`intended use and is not necessary to give life, meaning, and vitality to the
`claim. .
`In support of its argument based on the preamble, Patent Owner cites
`three portions of the specification as describing “what occurs during
`checkout.” PO Resp. 13–14. These portions fail to demonstrate that
`deactivation must occur “during the checkout process.” See Pet Reply 4–5.
`
`The first and third cited portions describe the checkout process as
`using a Point-Of-Sale (“POS”) processor that may include a barcode reader,
`and as involving “data processing performed locally within the retail outlet
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`and/or remotely via network connections.” PO Resp. 14 (citing Ex. 1001,
`col. 4, ll. 43–47; col. 5, ll. 1–9.) The second cited portion explains that the
`discount vehicle may include “coded data located in separate locations
`[other than a “single code”] for reading during the check-out process.”
` Id. (citing Ex. 1001, col. 4, ll. 56–58). We are not persuaded that these cited
`portions of the specification support Patent Owner’s argument. None
`demonstrates that “during the checkout process” as recited in the preamble is
`intended to limit the deactivation of the select code. All three excerpts focus
`on reading the code, not deactivation. Accordingly, based on our review of
`the record before us, and for the foregoing reasons, we determine that the
`term “during the checkout process” recited in the preamble does not limit
`claim 1 in the way asserted by Patent Owner.
`
`Similar to its argument based on the preamble of claim 1, Patent
`Owner asserts that “during checkout” as recited in the body of the claim
`limits the time at which the select code must be selectively deactivated. PO
`Resp. 14. For the following reasons, we disagree.
`Patent Owner’s argument is not supported by the language of the
`claim. As noted, just as the preamble does not limit claim 1 as asserted by
`Patent Owner, neither does the body of the claim. The term “during
`checkout” appears twice in the body of claim 1. The first refers to “tracking
`of [a] customer account.” The second refers to “tracking” and a device for
`“receiving the select code” during checkout. Neither instance refers to
`selective deactivation. See Pet. Reply 5–6. Thus, even if we were to accept
`Patent Owner’s argument that “during checkout” is limiting, the limitation
`would relate to when the claimed data processing system tracks and
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`processes discounts, and not to when the “select code” is “selectively
`deactivated” for particular discounts. Id. at 6.
`Nor is Patent Owner’s argument supported by the specification. As
`Patent Owner acknowledges, the specification describes selective
`deactivation as follows:
`As promoted items listed on the MDV are scanned during
`checkout, the system flags these items as purchased and applies
`a discount to the price provided to the customer. The computer
`may thereafter deactivate the promotion for that product to insure
`that the MDV is not used again to duplicate the discount for the
`purchased item. The MDV, however, remains active to the extent
`promoted items were not purchased by the customer during this
`or previous shopping visits, and the time period set for the
`promotion has not expired (typically 45 to 90 days).
`PO Resp. 16 (quoting Ex. 1001, col. 10, ll. 20–29) (emphasis added). This
`portion of the specification describes two events occurring “[a]s promoted
`items listed on the MDV are scanned during checkout,” namely, flagging
`items as purchased and applying a discount to the price. This passage also
`indicates that the data processing system with which the discount vehicle is
`used (i.e., the computer) “may thereafter deactivate” discounts. Thus, the
`specification makes it clear that selective deactivation need not occur during
`checkout, as argued by Patent Owner, but may occur “thereafter.”
`Patent Owner states that its construction differs from Petitioner’s
`construction in that Patent Owner would include certain other language,
`which it contends is “provided in the specification.” PO Resp. 17. Included
`are the following: (emphasis added, citations omitted):
`1) Selective deactivation takes place after a promoted
`item is scanned as the plain language of the patent provides.
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`2) Applying a discount is not selective deactivation since
`the deactivation takes place after the discount is applied.
`3) The purpose of selective deactivation is to insure that
`the MDC is not used again to duplicate redeemed discount.
`4) Redemption is not the same as expiration of the
`particular discount since one must redeem the discount for the
`particular discount to be selectively deactivated.
`We do not agree that either the specification or language of the claims
`supports this interpretation. Patent Owner’s supporting citations are to
`opinion testimony of its expert, Dr. Kursh, not the patent specification.
`Furthermore, as Petitioner points out, the listed restrictions do not require
`selective activation to take place after check out ends, only after an item is
`scanned or a discount applied. See Pet. Reply 8.
`We have considered Dr. Kursh’s testimony on this issue and do not
`find it convincing. For example, he relies on the portion of the ’805 patent
`specification quoted above that indicates that deactivation may occur after
`checkout. Ex. 2015 ¶ 44. Dr. Kursh admits that “[t]he usage of the word
`‘may’ can also allow selective deactivation after checkout.” Id. at 45. We
`do not find convincing his further explanation that this passage, which states
`that deactivation “may” occur after checkout, really means that deactivation
`occurs during checkout. Id. Nor do we find his other specification
`references convincing, including his references to Figure 1 and “immediate
`assessments’ of flagged information. None describes restricting deactivation
`of the select code to after checkout.
`For the foregoing reasons, we agree with Petitioner that claim 1 does
`not require deactivation of the select code “during the checkout process” or
`“during checkout.”
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`E. Lack of Written Description Under 35 U.S.C. § 112, ¶ 1
`
`
`A patent claim must be supported by written description in the
`specification, as required in 35 U.S.C. § 112, ¶ 1, to be patentable. For the
`specification to provide sufficient written description support for a claimed
`invention, the “description must clearly allow persons of ordinary skill in the
`art to recognize that [the inventor] invented what is claimed.” In re Gosteli,
`872 F.2d 1008, 1012 (Fed. Cir. 1989).
`
`Claim 1 of the ʼ805 patent refers to a “customer account.”
`Specifically, the claim states:
`a customer account associated with a customer identification
`code, the customer account comprising two or more of said
`discounts of the discount vehicle selected by a customer to be
`associated with the customer account, the customer account
`being associated with a select code that permits tracking of said
`customer account during checkout, said select code uniquely
`identifying all the discounts for all of the plural products
`associated with the customer account.
`Ex. 1001, col. 10, l. 62–col 11, l. 3 (emphasis added). Petitioner contends
`that this element lacks written description support in the specification.
`Pet. 46–48. In particular, Petitioner asserts that in the ʼ805 patent,
`“[b]ecause customers receive the MDV only after discounts have been
`selected and the MDV printed, consumer input is never involved in the
`selection process, and at no time is a customer given the ability to select
`which discounts they desire to be on the MDV.” Id. at 47.
`
`
`
`More specifically, Petitioner asserts that the written description
`requirement is not met because the specification of the ’805 patent does not
`describe “the customer account comprising two or more of said discounts of
`the discount vehicle selected by a customer to be associated with the
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`customer account.” Pet. 46. According to Petitioner, this concept is
`“fundamentally at odds with, the specification of the ’805 patent.” Id. at 46–
`47. Petitioner explains that the MDV described in the ’805 patent is
`distributed to users “through physical means” such by mail or as a
`newspaper or magazine insert. Id. at 47. Thus, according to Petitioner, “it is
`a promotion administrator who prints and delivers the discount vehicle to the
`customer, and it is the promotion administrator that is responsible for the
`selection of the discounts to be delivered to each individual.”
`Id.
`
`
`Patent Owner responds by asserting that the customer’s selection of
`discounts in the claim does not refer to the “initial discount vehicle.” PO
`Resp. 9. Patent Owner further contends that customer selection of discount
`vehicles is “fully described” in the specification. Id. As an example, Patent
`Owner points to the “checklist” shown in Figure 6A (and Figure 6B) of the
`’805 patent. Id. at 9. Further, as evidence that the patent describes
`“customer selection of discounts to be associated with a customer account,”
`Patent Owner points to the storing of data during checkout.
`Id.
`Petitioner responds that there is no disclosure in the patent of how
`
`marking a check box on the MDV in Figures 6A and 6B of the ’805 patent
`would result in the addition of a discount to the consumer’s account.
`Pet. Reply 14. Figure 6B follows:
`
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`Figures 6A and 6B are described as the front and rear views, respectively, of
`a multi-coupon vehicle.
`
`We agree with Petitioner that Figures 6A and 6B do not disclose
`customer selection of discounts associated with a customer account. The
`checklist boxes shown at the bottom of the discount vehicle in Figure 6B are
`nothing more than a manual shopping list. The instructions to the shopper
`state: “For your convenience, mark the items you want and those you’ve
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`purchased in the boxes.” The items referred to are those selected by the
`store, not the shopper.
`
`There is no description in the ’805 patent relating this manual
`checklist to a consumer account identified by Patent Owner. The
`specification indicates that the checkboxes are used merely for the
`consumer’s convenience, “to track the discounts of the MDV which have
`been used and those which remain available.” Id. at col. 9, ll. 33–35. At no
`point does the specification refer to markings on the checkboxes being
`relayed or stored in any data file. Additionally, we find that the specification
`indicates that the products appearing on the MDV for which a discount is
`provided are selected by promotion administrator 80, not the consumer.
`Id. at col. 6, ll. 48–51. We are persuaded, therefore, by Petitioner’s
`argument that this figure and the related description in the specification do
`not provide sufficient written description support for the invention of claim
`1.
`In our Institution Decision (at p. 18), we said we were not persuaded
`
`that Patent Owner had identified a “customer account,” much less
`established customer selection of discounts to be associated with the
`account. We said that Patent Owner’s Preliminary Response indicated that
`the MDV is the customer account, and the customer selection occurs when
`the customer chooses an item subject to a discount. Id. We therefore agreed
`with Petitioner that for claim 1, this description does not satisfy the written
`description requirement of 35 U.S.C § 112, ¶ 1. Id. Among other reasons,
`the claim refers to the customer account as separate from the discount
`vehicle. Moreover, “customer account” and “discount vehicle” are
`differentiated. See discussion of “discount vehicle,” supra. Accordingly,
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`we concluded that more likely than not, Petitioner would prevail on this
`challenge. Id.
`
`Patent Owner recognizes that the specification does not mention
`“customer account.” PO Resp. 5. Thus, Patent Owner contends that the
`terms “customer profile” or “profile” in the ’805 patent specification and the
`term “customer account” in the claims are synonyms. Id.
`
`We are not persuaded that the “customer profile” described in the
`specification of the ’805 patent is a synonym for a “customer account” in the
`claims. PO Resp. 5. To the contrary, the use of different terms in different
`places in a patent indicates that they are not the same. Chicago Bd. Options
`Exchange, Inc. v. Int’l Securities Exchange, 677 F.3d 1361, 1369 (Fed. Cir.
`2012). Patent Owner does not point us to where in the specification the
`terms are used interchangeably. Cf. Edwards Lifesciences LLC v. Cook,
`Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009)(“In this case, the specification
`consistently uses the words ‘graft’ and ‘intraluminal graft’
`interchangeably.”).
`
`But even if we were to agree that “customer account” and “customer
`profile” were synonyms, Patent Owner does not explain how the
`specification describes associating the discounts “selected by the user” with
`the customer profile, as the claim requires. We agree with Petitioner that the
`description of the collection of redeemed discounts at checkout would not
`meet this requirement. Pet. Reply 14–15. If it did, there would be no need
`for the selective deactivation of codes for unredeemed discounts, as only
`redeemed discounts would be stored in the customer account. Id. at 15.
`
`We are not persuaded, either, by the testimony of Patent Owner’s
`expert, Dr. Kursh, concerning a hypothetical “data base table” that would
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`store data during checkout. Ex. 2015, ¶¶ 98–100. Patent Owner’s reliance
`on this cited testimony as supporting conclusions that might be drawn by an
`ordinarily skilled artisan about the alleged selection by customers of
`discounts or association of selected discounts with the customer account is
`misplaced. Nowhere in this analysis does Dr. Kursh point to where this
`table is described in the ’805 patent specification. Instead, he testifies that
`his testimony relates to hypothetical data fields that “could well appear” in
`the patent. Ex. 2015, 153:4–14. See Pet. Reply 10 n.11.2
`
`We have considered Patent Owner’s other arguments and do not find
`them persuasive. We conclude therefore that Petitioner has demonstrated by
`a preponderance of the evidence that the ’805 patent does not provide a
`written description of the subject matter of claim 1 sufficient to satisfy
`35 U.S.C. § 112, ¶ 1.
`F. Anticipation by Nichtberger (Ex. 1007)
`In support of its anticipation challenge, Petitioner presents an element-
`by-element analysis of claim 1 in relation to Nichtberger, and relies also on
`the declaration testimony of Dr. Michael Lewis. Pet. 55–80; Ex. 1008
`(“Lewis Decl.”). We have reviewed Petitioner’s analysis of Nichtberger in
`relation to claim 1 and Patent Owner’s response. For the reasons set forth
`below, we find that Nichtberger describes each element of claim 1. We
`
`
`2 We found Dr. Kursh’s testimony to be evasive and therefore give it
`minimal weight. For example, he frequently quibbled over the meaning of
`common words such as “performed” (Ex. 1024, 82:1); “pertained” (id. at
`98:22–23); “changing” (id. at 103:7–8); “discuss” (id. at 248:19);
`“expressly” (id. at 267:24–268:1); and “separate” (id. at 277:10–11).
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`therefore determine that Petitioner has demonstrated that Nichtberger
`anticipates claim 1.
`1. Nichtberger Overview
`Nichtberger was issued on November 21, 1989, and, therefore,
`qualifies as prior art to the ʼ805 patent under 35 U.S.C. § 102(b).3
`Nichtberger describes a system in which “[c]ents-off merchandise coupons
`are distributed and redeemed immediately and electronically.” Ex. 1007,
`Abstract. Nichtberger’s system includes a loca