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`Trials@uspto.gov
` Entered: April 6, 2016
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`571-272-7822
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`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 IPR2015-00137
`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. 1001,
`“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, we
`instituted an inter partes review of claims 1–30, pursuant to 35 U.S.C. §
`314. Paper 31 (“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 33.
`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,
`34, 46; Ex. 2059. 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, 34 (and Exhibit 3001), 35, and 46.
`3 See Paper 32, 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”).
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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 47. 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 IPR2015-00133. A final written
`decision in IPR2015-00133 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. See
`37 C.F.R. § 42.71(a).
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`C. The ’502 Patent
`The ’502 patent relates generally to consumer reward or loyalty
`programs. Ex. 1001, 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
`converting the non-negotiable credits into entity independent
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`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. 1001, 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. 1003)
`(Ex. 1004)
`(Ex. 1005)
`
`F. Instituted Grounds of Unpatentability
`We instituted this trial based on the following grounds:
`
`Claims
`1, 4–10, 12–17, and
`20–30
`
`Basis
`
`References
`
`§ 103(a)
`
`Postrel and Sakakibara
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`2, 3, 11, 18, and 19
`
`§ 103(a)
`
`Postrel, Sakakibara, and MacLean
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`II. ANALYSIS
`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. 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
`an organization that has a rewards program for a
`Entity
`consumer
`non-negotiable credits credits which are accepted only by the granting
`entity of the credits
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`Claim Term
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`entity independent
`funds
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`Construction
`funds acceptable as payment by at least one entity
`different from the original granting entity of the
`non-negotiable credits
`
`
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`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
`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).
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`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 of Claims over Postrel and Sakakibara
`Petitioner asserts that claims 1, 4–10, 12–17, and 20–30 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`Postrel and Sakakibara. Pet. 14–49. 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 our attention
`to a Declaration of Mr. Matthew Calman. Ex. 1002.
`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 Postrel and Sakakibara teaches or suggests all of the
`limitations of claims 1, 4–10, 12–17, and 20–30, and renders the claimed
`subject matter as a whole obvious. Pet. 14–49. In our discussion below, we
`provide a brief summary of Postrel and Sakakibara, and then we address
`certain claim limitations in detail as examples.
`
`Postrel
`Postrel discloses a system that has a graphical user interface, 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. 1003, Abstract. The user additionally may aggregate reward or loyalty
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`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.
`
`Sakakibara
`
`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. 1005, 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, 9, 17, and 25 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.” See, e.g., Ex. 1001, 6:35–37, 7:38–41.
`In addition, claims 7, 15, 23, and 28 require that the entity independent funds
`to be negotiable funds, and claims 8, 16, 24, and 29 require that the entity
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`independent funds to be loyalty points of the commerce partner. See, e.g.,
`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 Postrel and Sakakibara discloses the aforementioned “graphical user
`interface” limitations. Pet. 15–49. For instance, Petitioner sufficiently
`shows that Postrel discloses a system having a graphical user interface (a
`web site) for converting loyalty points issued from various merchants into
`loyalty points of a commerce partner in accordance with exchange rates. Id.
`at 15–16 (citing Ex. 1003 ¶¶ 43, 45, 47, 49). Indeed, Postrel’s graphical user
`interface allows a user to convert his non-negotiable loyalty points into
`points for an exchange account based on an agreed upon exchange rate (i.e.,
`conversion ration) and fee structure, where “the actual exchange rate and fee
`structure may be set amongst the merchants [e.g., Smith Pizzeria] and the
`exchange server operator [e.g., VISA].” Ex. 1003 ¶ 45. As Petitioner notes,
`Postrel’s aggregated loyalty points in the exchange account are entity
`independent funds because they can be redeemed for goods or services from
`any approved merchant or from a catalog provided by a credit card company
`(i.e., from a commerce partner). Pet. 16; Ex. 1003 ¶¶ 43, 45, 47, 49;
`Ex. 1002 ¶¶ 61–67, 105–107, 138–142, 173–177.
`We observe that Postrel also recognizes that, absent an exchange
`system, redeeming loyalty points is restricted to goods or services of the
`entity that issued the points. Ex. 1003 ¶¶ 5, 41. Petitioner notes that
`Sakakibara discloses the concept that, absent conversion, loyalty points are
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`non-negotiable credits. Pet. 17–18 (citing Ex. 1005, 12:64–13:30). We are
`persuaded by Petitioner’s explanation that it was known in the art that
`loyalty points, prior to conversion, are non-negotiable credits, as evidenced
`by Sakakibara. See Ex. 1005, 12:64–13:30. This is consistent with the
`description in the ’502 patent regarding the state of the art at the time of the
`invention, which indicates that “[e]ntities often reward consumers for
`utilizing their services with non-negotiable credits, such as frequent flier
`miles, consumer loyalty points, and entertainment credits.” Ex. 1001, 1:20–
`24 (emphases added).
`Based on the evidence in this record, we agree with Petitioner’s
`reasoning, which is supported by the unrebutted testimony of Mr. Calman,
`and adopt it as our own, that one with ordinary skill in the art would have
`recognized that, in light of Sakakibara, Postrel’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. Pet. 18; Ex. 1002 ¶¶ 56–57,
`97–97, 132–133, and 167–168. We further determine that Petitioner has
`demonstrated by a preponderance of the evidence that the combination
`would have rendered the aforementioned “graphical user interface”
`limitations obvious.
`
`Reward points from a credit card company
`Each of claims 6, 14, 22, and 27 recites “wherein the non-negotiable
`credits are reward points from a credit card company, which is the entity.”
`See, e.g., Ex. 1001, 7:14–17. We agree with Petitioner’s findings, which are
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`supported by Mr. Calman’s unrebutted testimony, and adopt them as our
`own, that Postrel discloses this limitation. See Pet. 25, 33, 40, 47–48 (citing
`Ex. 1002 ¶¶ 82–84, 117–18, 152–53, 180–81; Ex. 1003 ¶ 35). Mr. Calman
`testifies that Postrel describes a network of loyalty programs that includes a
`credit card reward program. Ex. 1002 ¶ 84 (citing Ex. 1003 ¶¶ 35, 59–60).
`Indeed, Postrel describes that some banks have their own reward point
`programs (e.g., MasterCard). Ex. 1003 ¶ 35. Postrel also expressly states
`that the “reward server computer may be a credit card reward program such
`as offered by American Express where the user earns rewards based on
`purchases.” Id. ¶ 59. Postrel further discloses that the credit card reward
`server computer maintains user’s earned rewards acquired through the credit
`card program. Id. ¶ 61, Fig. 4.
`Given the evidence in this record, we are persuaded that Petitioner has
`demonstrated by a preponderance of the evidence that the combination of
`Postrel and Sakakibara would have rendered the aforementioned “credit card
`company” limitation 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. 1001, 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.
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`Upon consideration of the prior art disclosures and evidence before
`us, 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 Postrel and Sakakibara discloses the aforementioned
`“e-commerce interface” limitations. Pet. 24–25, 31–33, 39–40, 47–49
`(citing Ex. 1002 ¶¶ 76–81, 112–16, 147–48). For example, Petitioner notes
`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 or services with
`different payment options, including paying with a credit card or loyalty
`points. Id. (citing Ex. 1003 ¶¶ 26, 49, 50, 71). As Petitioner explains, the
`customer may select an item from a catalog of items provided in conjunction
`with the central exchange account. Id. at 24 (citing Ex. 1003 ¶ 49). Indeed,
`in that VISA example disclosed in Postrel, the user interface for exchanging
`and redeeming points is provided by a VISA central exchange server that
`also provides the interface for making a purchase transaction. Ex. 1003
`¶¶ 43, 49. Postrel describes that the exchange server allows a user to view
`his loyalty points, manage the exchange of points, and execute purchase
`transactions with his aggregated loyalty points on a web page. Id. ¶¶ 43, 50
`(“Once the points have been aggregated by the purchaser, he may make a
`purchase transaction . . . with aggregated points only, with points and credit,
`etc. . . . over a web site.”).
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`In view of the foregoing, we determine that Petitioner has shown by a
`preponderance of the evidence that the combination of Postrel and
`Sakakibara would have rendered the “e-commerce interface” limitations
`obvious.
`
`Additional claim limitations
`Petitioner relies on Postrel in combination with Sakakibara, along
`with Mr. Calman’s unrebutted testimony, to meet other limitations recited in
`claims 1, 4–10, 12–17, and 20–30. Pet. 14–49; Ex. 1002. Based on the
`evidence in this record, we agree with Petitioner’s showing, and adopt it as
`our own, that Postrel in combination with Sakakibara discloses the
`additional limitations of claims 1, 4–10, 12–17, and 20–30, and renders the
`claimed subject matter as a whole obvious.
`
`Conclusion on obviousness of claims over Postrel and Sakakibara
`For the foregoing reasons, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1, 4–10, 12–
`17, and 20–30 are unpatentable over the combination of Postrel and
`Sakakibara.
`
`D. Obviousness of Claims over Postrel, Sakakibara, and MacLean
`Petitioner asserts that claims 2, 3, 11, 18, and 19 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over the combination of Postrel,
`Sakakibara, and MacLean. Pet. 49–58. To support its contentions,
`Petitioner provides claim charts and detailed explanations as to how the
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`combination of prior art meets each claim limitation. Id. Petitioner also
`directs attention to a Declaration of Mr. Calman. Ex. 1002.
`Upon review of the prior art disclosures and Petitioner’s supporting
`evidence, we are persuaded by Petitioner’s showing, and adopt it as our own,
`that the combination of Postrel, Sakakibara, and MacLean discloses all of
`the limitations of claims 2, 3, 11, 18, and 19, and renders the claimed subject
`matter as a whole obvious. Pet. 30–58. In our discussion below, we provide
`a brief summary of MacLean5, and then we address certain limitations as
`examples.
`
`MacLean
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`MacLean describes a system and method for managing and
`exchanging reward or loyalty points. Ex. 1004 ¶¶ 1, 4. The Background
`Section of MacLean discusses a number of existing web services for
`converting the points from a single loyalty program for negotiable credits.
`Ex. 1004 ¶¶ 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.
`
`
`5 A brief summary of Postrel and Sakakibara has been provided previously
`in our obviousness analysis based on Postrel and Sakakibara.
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`Figure 1 of MacLean is reproduced below.
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`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.
`
`
`Presenting a second quantity of non-negotiable credits
`
`Claims 2, 11, and 18 require presenting a second quality of
`non-negotiable credits, which represents an amount of non-negotiable credits
`available after converting into entity independent funds. See, e.g., Ex. 1001,
`6:49–56. In regard to this limitation, we agree with Petitioner’s findings,
`and adopt them as our own, that the combination of Postrel, Sakakibara, and
`MacLean discloses this limitation. Pet. 50–52. For example, Petitioner
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`notes that Postrel describes a central exchange server that obtains loyalty
`points information from the various databases and accounts, generates a web
`page to display the account totals to the user, and updates records indicating
`the changes and current value of user exchange accounts. Id. at 50; Ex. 1003
`¶¶ 43, 69. Petitioner also explains that MacLean describes a graphical user
`interface, displaying a second quantity of non-negotiable credits (values
`“850,000” listed under element 656) in Figure 6F, which remain after a
`subset of credits (e.g., 644a and 644b from Figure 6E) are converted into
`entity independent funds (e.g., “5,001” and “3,334”). Pet. 51; Ex. 1004,
`Figs. 6E, 6F.
`Moreover, Mr. Calman testifies that one of ordinary skill in the art
`would have included the remaining balance of merchant loyalty points after
`a conversion in Postrel’s web page, in light of MacLean, so that the
`customer viewing such remaining balance knows how many merchant
`loyalty points remain and can plan upcoming transactions based on the
`up-to-date quantity of loyalty points (non-negotiable credits). Ex. 1002
`¶¶ 69–71, 111, 144. We give Mr. Calman’s testimony substantial weight in
`that regard as it is supported by the prior art disclosures and what the
`disclosures would have conveyed to one with ordinary skill in the art at the
`time of the invention. See, e.g., Ex. 1003 ¶¶ 43, 69; Ex. 1004, Figs. 6E, 6F.
`Based on the evidence before us, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that the combination of
`Postrel, Sakakibara, and MacLean would render claims 2, 11, and 18
`obvious.
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`Confirmation selector
`Claims 3 and 19 require a confirmation selector. Ex. 1001, 6:61–62;
`8:62–64. Upon review of the prior art disclosures and evidence before us,
`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
`Postrel, Sakakibara, and MacLean discloses the aforementioned limitations
`of claims 3 and 19. Pet. 52–55, 57–58. For instance, Petitioner points out
`that MacLean describes a graphical user interface (web pages) that allows a
`user to convert loyalty points, confirm the exchange selection, and review
`the balance. Id. (citing Ex. 1004 ¶ 52, Figs. 6E, 6H). Indeed, MacLean
`discloses that, in response to the user’s exchange selection, the system
`processes the selection to effectuate changes in the web pages. Ex. 1004
`¶ 52. Importantly, 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)—“submit” button 678 shown in
`Figure 6H. Id. Therefore, we are persuaded that MacLean describes a
`confirmation selector, as required by claims 3 and 19.
`We also are persuaded by Petitioner’s reasoning, which is supported
`by the unrebutted testimony of Mr. Calman (Ex. 1002 ¶ 75), that one with
`ordinary skill in the art would have combined MacLean’s confirmation
`selector with Postrel’s system because it would have reduced error and
`provided the user with the opportunity to consider an exchange selection
`before committing to the transaction. Pet. 52–53. Notably, both MacLean
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`and Postrel utilize exchange rates for converting the loyalty points of an
`entity into those of a commerce partner. Ex. 1003 ¶ 45 (“When the
`purchaser utilizes the exchange server for aggregating his or her loyalty
`points from various merchants, exchange rates may be set . . .”); Ex. 1004
`¶ 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 into a single account. Ex. 1003
`¶¶ 43–47, 59; Ex. 1004 ¶¶ 51–52.
`As Petitioner explains, MacLean provides greater detail regarding a
`web interface for providing the point balance and a confirmation selector,
`whereas Postrel discloses greater detail concerning an e-commerce interface
`with on-line shopping capabilities and different payment options. Pet. 50.
`Given the evidence before us, we determine that Petitioner has demonstrated
`sufficiently that it would have been obvious, in light of MacLean, to include
`a confirmation selector in Postrel’s user interface, allowing the user to
`confirm and check the exchange selection before finalizing the transaction.
`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.”).
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`In view of the foregoing, we determine that Petitioner has shown by a
`preponderance of the evidence that the combination of Postrel, Sakakibara,
`and MacLean would have rendered the “confirmation selector” limitation, as
`recited in claims 3 and 19, obvious.
`
`Additional claim limitations
`Petitioner relies on Postrel in combination with Sakakibara and
`MacLean, along with Mr. Calman’s unrebutted testimony, to meet other
`limitations recited in claims 2, 3, 11, 18, and 19. Pet. 49–58; Ex. 1002.
`Based on the evidence in this record, we agree with Petitioner’s showing,
`and adopt it as our own, that Postrel in combination with Sakakibara and
`MacLean discloses the additional limitations of claims 2, 3, 11, 18, and 19,
`and renders the claimed subject matter as a whole obvious.
`
`Conclusion on obviousness of claims over Postrel, Sakakibara, and MacLean
`For the foregoing reasons, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that claims 2, 3, 11, 18,
`and 19 are unpatentable over the combination of Postrel, Sakakibara, and
`MacLean.
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`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
`1, 4–10, 12–17, and
`20–30
`
`2, 3, 11, 18, and 19
`
`
`Basis
`
`References
`
`§ 103(a)
`
`Postrel and Sakakibara
`
`§ 103(a)
`
`Postrel, Sakakibara, and MacLean
`
`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
`
`
`
`PATENT OWNER:
`
`Brian K. Buchheit
`bbuchheit@gmail.com
`
`
`
`
`