Paper 53
`
`
`
`
`
`
`Trials@uspto.gov
` Entered: April 6, 2016
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`
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`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`SEAN I. MCGHIE and BRIAN K. BUCHHEIT,
`Patent Owner.
`____________
`
`Case IPR2015-00133
`Patent 8,297,502 B1
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1–30 of U.S. Patent
`No. 8,297,502 B1 are unpatentable.
`
`
`
`
`
`
`
`
`Trials@uspto.gov
` Entered: April 6, 2016
`
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`SEAN I. MCGHIE and BRIAN K. BUCHHEIT,
`Patent Owner.
`____________
`
`Case IPR2015-00133
`Patent 8,297,502 B1
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`INTRODUCTION
`I.
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1–30 of U.S. Patent
`No. 8,297,502 B1 are unpatentable.
`
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`A. Procedural History
`Petitioner, Askeladden LLC,1 filed a Petition requesting an inter
`partes review of claims 1–30 of U.S. Patent No. 8,297,502 B1 (Ex. 1501,
`“the ’502 patent”). Paper 1 (“Pet.”). Patent Owner, Sean I. McGhie and
`Brian K. Buchheit,2 filed a Preliminary Response. Paper 10 (“Prelim.
`Resp.”). Upon consideration of the Petition and Preliminary Response, on
`April 23, 2015, we instituted an inter partes review of claims 1–30 of the
`’502 patent pursuant to 35 U.S.C. § 314. Paper 32 (“Dec.”).
`In the Scheduling Order, which sets times for taking action in this
`proceeding, we notified the parties that “any arguments for patentability not
`raised in the [Patent Owner] response will be deemed waived.”3 Patent
`
`1 The Real Parties-in-Interest includes The Clearing House Payments
`Company. See Paper 34.
`2 Patent Owner is represented by inventor Brian Buchheit, who is an attorney
`and registered to practice before the Office. At times during the proceeding,
`Mr. Buchheit indicated that he was representing “Patent Owner”
`(Mr. Buchheit and Mr. McGhie), while at other times Mr. Buchheit indicated
`that he was not representing Mr. McGhie, but rather acting pro se. Papers 4,
`35, 47; Ex. 2058. Over the course of the proceeding, we have provided
`instructions to Patent Owner on filing papers, authorized Patent Owner leave
`to refile papers and file papers beyond due dates, and expunged other Patent
`Owner papers that were not authorized, not in compliance with Board rules,
`and/or contained arguments beyond what was authorized. See, e.g., Papers
`8, 9, 35 (and Exhibit 3001), 36, and 47.
`3 See Paper 33, 3; see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012) (a patent owner’s “response should identify
`all the involved claims that are believed to be patentable and state the basis
`for that belief”).
`
`2
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`Owner, however, did not file a Patent Owner Response within the time
`period set forth in the Scheduling Order. To ensure clarity in our record, we
`required Patent Owner to file a paper, indicating whether it had abandoned
`the contest.4 Paper 48. Patent Owner indicated that it had not abandoned
`the contest. Paper 50. Patent Owner did not seek authorization to belatedly
`file a Patent Owner Response, nor indicate that it wished to file such a
`Response. We have before us, therefore, the Petition with no Patent Owner
`Response. Nonetheless, Petitioner bears the burden to show, by a
`preponderance of the evidence, that the challenged claims are unpatentable.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–30 of the ’502 patent are
`unpatentable.
`
`B. Related Matter
`
`The ’502 patent also is involved in IPR2015-00137. A final written
`decision in IPR2015-00137 is entered concurrently with this decision.
`
`
`4 An abandonment of the contest is construed as a request for adverse
`judgment. 37 C.F.R. § 42.73(b)(4). A request for adverse judgment, on
`behalf of a Patent Owner, would result in the cancellation of the involved
`claims of a challenged patent, e.g., without consideration of the Petition, etc.
`On the other hand, when a Patent Owner does not abandon the contest, but
`chooses not to file a Patent Owner Response, the Board generally will render
`a final written decision, e.g., based on consideration of the Petition, etc.
`3
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`C. The ’502 Patent
`The ’502 patent relates generally to consumer reward or loyalty
`programs. Ex. 1501, 1:17–2:11. According to the ’502 patent, entities
`(e.g., airlines or credit card companies) often reward consumers, for utilizing
`their services, with non-negotiable credits, such as frequent flier miles,
`consumer loyalty points, and entertainment credits. Id. at 1:20–22, 7:16–17.
`The ’502 patent discloses a graphical user interface for customers to convert
`non-negotiable credits into entity independent funds that can be used as
`payment for goods or services provided by a commerce partner. Id. at
`Abstract, 2:32–65.
`
`D. Illustrative Claim
`Claims 1, 9, 17, and 25 are independent. Claims 2–8 depend from
`claim 1; claims 10–16 depend from claim 9; claims 18–24 depend from
`claim 17; and claims 26–30 depend from claim 25.
`Claim 1, reproduced below, is illustrative of the challenged claims.
`1. A method comprising:
`a computer presenting a graphical user interface (GUI) on
`a display, said graphical user interface showing a quantity of
`non-negotiable credits earned through previous interactions with
`an entity, the graphical user interface comprising a conversion
`option to convert at least a subset of the shown non-negotiable
`credits into entity independent funds in accordance with a
`conversion ratio, wherein the entity independent funds are
`accepted by a commerce partner as at least partial payment for
`goods or services provided by the commerce partner, wherein the
`commerce partner is not said entity, wherein in absence of
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`converting the non-negotiable credits into entity independent
`funds the commerce partner does not accept the non-negotiable
`credits as payment for goods or services provided by the
`commerce partner;
`the computer receiving a selection of the conversion
`option; and
`responsive to the received selection being processed, the
`computer presenting within the graphical user interface a
`quantity of available entity independent funds for use as payment
`for the goods or services provided by the commerce partner, said
`quantity of available entity independent funds resulting from
`converting the subset of non-negotiable credits into the quantity
`of available entity independent funds in accordance with the
`conversion ratio.
`Ex. 1501, 6:22–48.
`
`
`
`E. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`Postrel
` US 2005/0021399 A1 Jan. 27, 2005
`MacLean
` US 2002/0143614 A1 Oct. 3, 2002
`Sakakibara US 6,721,743 B1
`Apr. 13, 2004
`
`(Ex. 1503)
`(Ex. 1504)
`(Ex. 1505)
`
`F. Instituted Grounds of Unpatentability
`We instituted this trial based on the following grounds:
`
`Challenged Claims
`
`Basis
`
`References
`
`1–3, 7–11, 15, and 16
`
`§ 103(a) MacLean and Sakakibara
`
`4–6, 12–14, and 17–30
`
`§ 103(a) MacLean, Sakakibara, and Postrel
`
`5
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`II. ANALYSIS
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`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable interpretation 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).
`Petitioner proposes constructions for the following claim terms:
`“entity,” “non-negotiable credits,” and “entity independent funds,” which are
`recited at least in independent claims 1, 9, 17, and 25. Pet. 6–8. In our
`Decision to Institute, we adopted Petitioner’s proposed constructions
`because we determined that those constructions are consistent with the
`broadest reasonable construction. Dec. 5. We also construed “commerce
`partner” to mean an individual or group involved in commercial activity.
`Id. at 5–6. Neither party has indicated that our constructions are improper
`and we do not perceive any reason or evidence that now compels any
`deviation from our initial constructions.
`Accordingly, the following claim constructions apply to this Decision:
`
`Claim Term
`
`Construction
`
`entity
`
`an organization that has a rewards program for a
`consumer
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`Claim Term
`Construction
`non-negotiable credits credits which are accepted only by the granting
`entity of the credits
`funds acceptable as payment by at least one entity
`different from the original granting entity of the
`non-negotiable credits
`an individual or group involved in commercial
`activity
`
`entity independent
`funds
`
`commerce partner
`
`
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418. A prima
`facie case of obviousness is established when the prior art itself would
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`appear to have suggested the claimed subject matter to a person of ordinary
`skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`
`C. Obviousness Over MacLean and Sakakibara
`Petitioner asserts that claims 1–3, 7–11, 15, and 16 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over the combination of MacLean and
`Sakakibara. Pet. 15–30. To support its contentions, Petitioner provides
`claim charts and detailed explanations as to how the combination of prior art
`meets each claim limitation. Id. Petitioner also relies on a Declaration of
`Mr. Matthew Calman. Ex. 1502.
`Upon review of Petitioner’s contentions and supporting evidence, we
`are persuaded by Petitioner’s showing, and adopt it as our own, that the
`combination of MacLean and Sakakibara teaches or suggests all of the
`limitations of claims 1–3, 7–11, 15, and 16, and renders the claimed subject
`matter as a whole obvious. Pet. 15–30. In our discussion below, we first
`provide a brief summary of MacLean and Sakakibara, and then we analyze
`certain limitations in detail as examples.
`
`MacLean
`
`MacLean describes a system and method for managing and
`exchanging reward or loyalty points. Ex. 1504 ¶¶ 1, 4. The Background
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`Section of MacLean discusses a number of existing web services for
`converting the points from a single loyalty program for negotiable credits.
`Ex. 1504 ¶¶ 2–12. MacLean also discloses a number of specific
`embodiments to provide additional improvements to those services by
`allowing users to accumulate or convert the points from various loyalty
`programs into those of a single program. Id. ¶ 41.
`Figure 1 of MacLean is reproduced below.
`
`
`As shown in Figure 1 of MacLean, point management system 100
`facilitates interactions between customer 110, transaction center 120, and
`issuers 130a–c. Id. ¶ 40. The system provides a graphical user interface,
`enabling a customer to exchange reward points from one loyalty program to
`those of another loyalty program in accordance with an exchange rate. Id.
`¶¶ 27, 41. Alternatively, the customer may exchange points issued by
`various loyalty programs into those of a single program, and redeem the
`post-converted points for the goods or services offered by that single
`program. Id.
`
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`Sakakibara
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`Sakakibara describes a point managing system that provides a
`web-based user interface, allowing a customer to convert the loyalty points
`of a first business entity into those of a second business entity in accordance
`with an exchange rate. Ex. 1505, 1:57–2:5, 7:7–10, Fig. 9. Sakakibara
`discloses that, prior to conversion, the first entity’s loyalty points are
`redeemable only at the first entity, and the second entity does not accept the
`points issued from the first entity, as payment for the second entity’s goods
`or services. Id. at 12:64–13:30. In short, the first entity’s loyalty points,
`prior to conversion, are non-negotiable.
`
`Graphical user interface for converting non-negotiable credits
`Each of independent claims 1 and 9 requires a graphical user interface
`for converting non-negotiable credits into entity independent funds; and the
`claims require that, in absence of conversion, “the commerce partner does
`not accept the non-negotiable credits as payment for goods or services
`provided by the commerce partner.” Ex. 1501, 6:35–37, 7:38–41. In
`addition, claims 7 and 15 require the entity independent funds to be
`negotiable funds, and claims 8 and 16 require the entity independent funds to
`be loyalty points of the commerce partner. Id. at 7:18–22, 8:14–18.
`Upon review of the prior art and evidence in this record, we agree
`with Petitioner’s findings, and adopt them as our own, that the combination
`of MacLean and Sakakibara discloses the aforementioned limitations.
`Pet. 15–22, 24, 30. For instance, Petitioner sufficiently shows that MacLean
`discloses a graphical user interface in the form of web pages, for converting
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`loyalty points of a loyalty program into those issued by a different loyalty
`program in accordance with a conversion rate. Pet. 15, 24, 30 (citing
`Ex. 1504 ¶¶ 1, 17, Figs. 6A–6I; Ex. 1502 ¶¶ 88, 89, 124, 125). As Petitioner
`explains, MacLean discloses entity independent funds in the form of
`post-converted points that may be redeemed for goods or services from a
`commerce partner. Pet. 24 (citing Ex. 1504 ¶¶ 2, 9, 41, 57; Ex. 1502 ¶¶ 85–
`87). Indeed, MacLean discloses that, upon exchanging points issued from
`American Airlines for those of American Express Card, the user may
`redeem the post-converted points from American Express Card. Ex. 1504
`¶ 41. Mr. Calman testifies that the American Express Card points are
`redeemable for purchases, “including a certificate with various merchants,
`products from a catalog, or airline miles.” Ex. 1502 ¶ 87. On this record,
`we credit Mr. Calman’s testimony as it is consistent with MacLean’s
`disclosure. See, e.g., Ex. 1504 ¶¶ 41, 57. As such, we are persuaded that
`Petitioner has shown adequately that MacLean’s post-converted points are
`negotiable funds, as required by the claims at issue.
`Petitioner also points out that Sakakibara discloses the concept that,
`absent conversion, loyalty points are non-negotiable credits. Pet. 17–18
`(citing Ex. 1505, 12:64–13:30). Petitioner articulates that one with ordinary
`skill in the art would have recognized that, in light of Sakakibara,
`MacLean’s loyalty points, prior to conversion, would have been accepted
`only by the merchant that issued those points (i.e., non-negotiable), and
`would not have been accepted by others as payment for their goods or
`services. Id. at 18. As Petitioner explains, it was known in the art that
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`loyalty points, prior to conversion, are non-negotiable credits, as evidenced
`by Sakakibara. Pet. 17–18 (citing Ex. 1505, 12:64–13:30). Petitioner’s
`reasoning is supported by Mr. Calman’s unrebutted testimony. Ex. 1502
`¶¶ 56, 99, 135, 142, 172.
`Based on the evidence before us, we agree with, and adopt as our
`own, Petitioner’s rationale to combine MacLean and Sakakibara. We further
`determine that Petitioner has demonstrated by a preponderance of the
`evidence that the combination would have rendered the aforementioned
`“non-negotiable credits” limitations obvious.
`
`Commerce partner
`Each of claims 1 and 9 recites “wherein the entity independent funds
`are accepted by a commerce partner as at least partial payment for goods or
`services provided by the commerce partner, wherein the commerce partner is
`not said entity.” Ex. 1501, 6:30–33, 7:34–41. We agree with Petitioner’s
`findings, and adopt them as our own, that the combination of MacLean and
`Sakakibara discloses this limitation. Pet. 16–18, 20–21, 26–27. For
`instance, Petitioner points out that MacLean provides several examples of a
`commerce partner. Id. (citing Ex. 1504 ¶¶ 41, 64). Indeed, MacLean’s
`system allows a user to exchange loyalty points issued from one business for
`those of another business (a commerce partner), as both businesses agree to
`participate in the exchange. Ex. 1504 ¶ 41. We note that nothing in the
`claims precludes an intermediary to coordinate between the claimed entity
`and commerce partner. In fact, as discussed above, we construe the claim
`term “commerce partner” to mean an individual or group involved in some
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`commercial activity, and conclude that a direct link between the claimed
`entity and commerce partner is not required.
`Given the evidence before us, we are persuaded that Petitioner has
`demonstrated by a preponderance of the evidence that the combination of
`MacLean and Sakakibara describes a commerce partner as required by
`claims 1 and 9.
`
`Confirmation selector
`The claims at issue require the quantities and confirmation selector to
`be displayed in response to the exchange selection (claims 1–3), or
`“processing the selection to effectuate changes in the [web] pages” (claims 9
`and 11). We are persuaded by Petitioner’s showing, and adopt as our own,
`that the combination of MacLean and Sakakibara discloses these limitations.
`As Petitioner explains, MacLean discloses that, in response to the user’s
`exchange selection, the system processes the selection to effectuate changes
`in the web pages. Pet. 22, 28–29 (citing Ex. 1504 ¶ 52). Notably, MacLean
`describes that, after the user clicks “continue xchange” button 648 (shown in
`Figure 6E), the system displays a series of web pages to process the
`exchange (shown in Figures 6F–6H), including an option to confirm the
`exchange selection (a confirmation selector, as required by claim 3)—
`“submit” button 678 shown in Figure 6H. Ex. 1504 ¶ 52. Once the user
`confirms the selection by clicking on “submit” button 678, the system
`displays a web page that summarizes the point balance. Id.
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`Figure 6I of MacLean is reproduced below (with annotation added).
`
`
`As illustrated in Figure 6I, web page 680 indicates that the user’s
`account has been updated (683), and displays: (1) confirmation number 682,
`(2) a quantity of entity independent funds after the exchange 688 (as
`required by claims 1 and 9), and (3) a quantity of non-negotiable credits
`available after the exchange 688 (as required by claims 2 and 11). Id. ¶ 52.
`Having reviewed the evidence before us, we determine that Petitioner
`has shown by a preponderance of the evidence that the combination of
`MacLean and Sakakibara would have rendered the “confirmation selector”
`claim limitations obvious.
`
`Additional claim limitations
`Petitioner relies on MacLean in combination with Sakakibara, along
`with Mr. Calman’s unrebutted testimony, to meet other limitations recited in
`claims 1–3, 7–11, 15, and 16. Pet. 15–30; Ex. 1502. Based on the evidence
`in this record, we agree with Petitioner’s showing, and adopt it as our own,
`that MacLean in combination with Sakakibara discloses the additional
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`limitations of claims 1–3, 7–11, 15, and 16, and renders the claimed subject
`matter as a whole obvious.
`
`Conclusion on obviousness over MacLean and Sakakibara
`For the foregoing reasons, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1–3, 7–11, 15,
`and 16 are unpatentable over the combination of MacLean and Sakakibara.
`
`D. Obviousness Over MacLean, Sakakibara, and Postrel
`Petitioner asserts that claims 4–6, 12–14, and 17–30 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over the combination of MacLean,
`Sakakibara, and Postrel. Pet. 30–58. To support its contentions, Petitioner
`provides claim charts and detailed explanations as to how the combination of
`prior art meets each claim limitation. Id. Petitioner also directs attention to
`a Declaration of Mr. Calman. Ex. 1502.
`Upon consideration of the prior art in this record and Petitioner’s
`supporting evidence, we are persuaded by Petitioner’s showing, and adopt it
`as our own, that the combination of MacLean, Sakakibara, and Postrel
`discloses all of the limitations of claims 4–6, 12–14, and 17–30, and renders
`the claimed subject matter as a whole obvious. Pet. 30–58. In our
`discussion below, we provide a brief summary of Postrel5, and then we
`address certain limitations in detail as examples.
`
`
`5 A brief summary of MacLean and Sakakibara has been provided
`previously in our obviousness analysis based on MacLean and Sakakibara.
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`Postrel
`Postrel discloses a system in which a user may redeem reward or
`loyalty points earned with a merchant, or may redeem the points with
`another merchant through an exchange network. Ex. 1503, Abstract. The
`user additionally may aggregate reward or loyalty points from various
`merchants into a central exchange account, and then redeem the
`post-converted points for goods or services from any approved merchant on
`the network. Id. ¶¶ 10, 45–50. In short, Postrel’s system integrates a user
`interface for exchanging and redeeming loyalty points, with an e-commerce
`interface. Id.
`
`Computer features
`The claims at issue require certain “computer” features—program
`instructions, processors, and storage devices storing program instructions.
`See, e.g., Ex. 1001, 8:19–49. Petitioner accounts for those “computer”
`features by directing attention to the specific portions for MacLean and
`Postrel, as well as the Declaration of Mr. Calman in its analysis. Pet. 31–33,
`42–48, 50, 57. We are persuaded by Petitioner’s findings, and adopt it as
`our own, that the combination of MacLean, Sakakibara, and Postrel
`discloses the “computer” features of claims 17–19, 23–25, 28, and 29. Id.
`For instance, as Petitioner points out, MacLean discloses the storage
`and execution of computer programs. Id. at 32; Ex. 1504 ¶ 52 (noting that
`“program 500 that is stored and executed in the transaction center 120”).
`Petitioner explains that, notwithstanding that MacLean implicitly discloses
`using storage devices containing computer program instructions to convert
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`the loyalty points and computers having processors, Postrel explicitly
`discloses these features. Pet. 32. Indeed, Postrel describes a system for
`converting loyalty points, using the existing infrastructure of credit card
`networks to implement the conversion. Ex. 1503 ¶¶ 43, 44. Postrel
`discloses that after a user earns loyalty points through interactions with an
`entity, such as purchases at a pizzeria, a central server (or an acquiring bank)
`updates the user’s reward account with corresponding pizza points. Id. ¶ 30.
`Postrel describes the use of a computer product with computer-readable
`storage devices in the form of a “server [with] memory means for storing the
`user account information, user profiles and rules specified by the user,
`system, or merchant.” Id. ¶ 68.
`Petitioner further asserts that both MacLean and Postrel relate to
`loyalty program points, and specifically involve conversion of customer
`loyalty program points via a computer. Pet. 32–33. Petitioner articulates
`that one of ordinary skill in the art would have known that MacLean’s
`program would need to be stored for execution and executed by a processor,
`and Postrel discloses a memory and a processor for that purpose. Id.
`Mr. Calman testifies that one of ordinary skill in the art would have
`recognized that MacLean’s computer programs would have been stored on
`storage devices and executed on computers having one or more processors,
`in light of Postrel. Ex. 1502 ¶¶ 128, 129, 165, 166. We give Mr. Calman’s
`testimony substantial weight in that regard as it is supported by the
`disclosures of MacLean and Postrel, and what the disclosures would have
`
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`conveyed to a person of ordinary skill in the art at the time of the invention.
`See, e.g., Ex. 1503 ¶¶ 30, 43, 44, 68; Ex. 1504 ¶ 52.
`Based on this record, we agree with, and adopt as our own,
`Petitioner’s reasoning to combine the teachings of MacLean, Sakakibara,
`and Postrel. We further determine that Petitioner has demonstrated by a
`preponderance of the evidence that the combination of MacLean,
`Sakakibara, and Postrel would render independent claims 17 and 25, as well
`as dependent claims 18, 19, 23, 24, 28, and 29 obvious.
`
`E-commerce interface
`Each of claims 4, 12, 20, and 26 recites “wherein the graphical user
`interface is an e-commerce interface through which goods or services
`provided by the commerce partner are able to be purchased.” See, e.g.,
`Ex. 1501, 7:3–6. Claims 6, 14, 22, and 27 require the interface to include an
`on-line shopping web site, and claims 5, 13, 21, and 30 require the interface
`to provide payment options, including paying using a credit card or the
`points converted from non-negotiable credits. See, e.g., id. at 7:9–17.
`Upon review of the prior art and evidence in this record, we agree
`with Petitioner’s findings, which are supported by Mr. Calman’s unrebutted
`testimony, and adopt them as our own, that the combination of MacLean,
`Sakakibara, and Postrel discloses the aforementioned limitations. Pet. 33–
`58; Ex. 1502 ¶¶ 71–84, 114–19, 150–57, 182–85, 191–94. For instance,
`Petitioner points out that Postrel discloses an e-commerce interface (a web
`site) that provides on-line shopping capabilities (e.g., in the form of a VISA
`catalog), in which a customer may purchase the commerce partner’s goods
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`or services with different payment options, including paying with a credit
`card or loyalty points. Pet. 33–42, 48–50, 55–58 (citing Ex. 1503 ¶¶ 26, 49,
`50, 71). Notably, both MacLean and Postrel utilize exchange rates for
`converting the loyalty points of an entity into those of a commerce partner.
`Ex. 1503 ¶ 45 (“When the purchaser utilizes the exchange server for
`aggregating his or her loyalty points from various merchants, exchange rates
`may be set . . .”); Ex. 1504 ¶ 52 (“In step 510, the customer selects the
`depositing LP and clicks on ‘calculate advanced exchange’ button 634.
`Step 511 calculates the exchange rates for this points transaction and
`displays page 640, a summary of the withdrawal and deposit points, as
`illustrated in Fig. 6E.”). Moreover, both MacLean and Postrel utilize an
`exchange server, enabling users to exchange loyalty points from various
`merchants for those of a single account. Ex. 1503 ¶¶ 45–47, 59; Ex. 1504
`¶¶ 51, 52. As Petitioner explains, MacLean provides greater detail regarding
`a web interface for viewing the loyalty points balance, whereas Postrel
`discloses greater detail concerning an e-commerce interface with on-line
`shopping capabilities and different payment options. Pet. 31, 33–34.
`Mr. Calman testifies that, in light of Postrel, one of ordinary skill in
`the art would have added such an e-commerce interface to MacLean’s
`system to allow users to purchase the goods or services from the commerce
`partner using a credit card or the post-converted points in an online
`transaction, because it would provide users to “more conveniently redeem
`exchanged loyalty points and receive immediate gratification for their newly
`exchanged points.” Ex. 1502 ¶¶ 72–84. Mr. Calman also explains that such
`
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`a system would provide online shopping convenience, as well as the ease
`and flexibility of loyalty point redemption. Id. We credit Mr. Calman’s
`testimony as it is supported by the disclosures of MacLean and Postrel. See,
`e.g., Ex. 1503 ¶ 26, 45–47, 49, 50, 59, 71; Ex. 1504 ¶¶ 45, 51, 52.
`Given the evidence before us, we determine that Petitioner has
`demonstrated sufficiently that, in light of Postrel, one with ordinary skill in
`the art would have added such an e-commerce interface to MacLean’s
`system, allowing users to purchase the goods or services from the commerce
`partner using the post-converted points. See KSR, 550 U.S. at 417 (“If a
`technique has been used to improve one device, and a person of ordinary
`skill in the art would recognize that it would improve similar devices in the
`same way, using the technique is obvious unless its actual application is
`beyond his or her skill.”). In view of the foregoing, we determine that
`Petitioner has shown by a preponderance of the evidence that the
`combination of MacLean, Sakakibara, and Postrel would have rendered the
`“e-commerce interface” limitations obvious.
`
`Additional claim limitations
`Petitioner relies on MacLean in combination with Sakakibara and
`Postrel, along with Mr. Calman’s unrebutted testimony, to meet other
`limitations recited in claims 4–6, 12–14, and 17–30. Pet. 30–58; Ex. 1502.
`Based on the evidence in this record, we agree with Petitioner’s showing,
`and adopt it as our own, that MacLean in combination with Sakakibara and
`Postrel discloses the additional limitations of claims 4–6, 12–14, and 17–30,
`and renders the claimed subject matter as a whole obvious.
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`Conclusion on obviousness over MacLean, Sakakibara, and Postrel
`For the foregoing reasons, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that claims 4–6, 12–14,
`and 17–30 are unpatentable over the combination of MacLean, Sakakibara,
`and Postrel.
`
`III. CONCLUSION
`For the foregoing reasons, we conclude that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1–30 of the
`’502 patent are unpatentable based on the following grounds:
`
`Claims
`
`Basis
`
`References
`
`1–3, 7–11, 15, and 16
`
`§ 103(a) MacLean and Sakakibara
`
`4–6, 12–14, and 17–30 § 103(a) MacLean, Sakakibara, and Postrel
`
`
`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that claims 1–30 of the ’502 patent are held unpatentable;
`
`
`and
`
`FURTHER ORDERED that, because this is a Final Written Decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
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`PETITIONER:
`
`Robert H. Fischer
`AskeladdenIPR@fchs.com
`
`
`Frank A. DeLucia
`AskeladdenIPR@fchs.com
`
`
`Stephen Yam
`AskeladdenIPR@fchs.com
`
`Justin Oliver
`joliver@fchs.com
`
`22
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`PATENT OWNER:
`
`Brian K. Buchheit
`bbuchheit@gmail.com
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