IPR2020-00972
`U.S. Patent No. 8,714,445
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC
`Petitioner
`
`v.
`
`QWIKCASH, LLC
`Patent Owner
`
`____________
`
`Case No. IPR2020-00972
`Patent No. 8,714,445
`____________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,714,445
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`TABLE OF CONTENTS
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`IPR2020-00972
`U.S. Patent No. 8,714,445
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`INTRODUCTION ......................................................................................... 1
`I.
`II. REQUIREMENTS UNDER 37 C.F.R. § 42.104 .......................................... 1
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ............................... 1
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) ..................... 1
`III. U.S. 8,714,445 ................................................................................................ 2
`A. SUMMARY .................................................................................................... 2
`B. PROSECUTION HISTORY ................................................................................ 4
`C. LEVEL OF SKILL OF A PERSON OF ORDINARY SKILL IN THE ART ..................... 5
`D. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .............................. 6
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE ........................ 8
`A. GROUND 1: CLAIMS 1-6, 12-13, AND 17-18 ARE OBVIOUS OVER CUCINOTTA IN
`VIEW OF RISAFI, IN FURTHER VIEW OF SMITH AND GROUND 2: CLAIMS 1-6, 12-13,
`AND 17-18 ARE OBVIOUS OVER CUCINOTTA IN VIEW OF RISAFI, IN FURTHER VIEW
`OF GOLDBERG ...................................................................................................... 8
`Overview of Cucinotta ................................................................................... 8
`Overview of Risafi ........................................................................................12
`Overview of Smith ........................................................................................15
`Overview of Goldberg...................................................................................16
`i.
`Claim 17 ........................................................................................18
`ii.
`Claim 18 ........................................................................................50
`iii.
`Claim 1 ..........................................................................................51
`iv.
`Claim 2 ..........................................................................................61
`v.
`Claim 3 ..........................................................................................62
`vi.
`Claim 4 ..........................................................................................63
`vii.
`Claim 5 ..........................................................................................63
`viii. Claim 6 ..........................................................................................64
`ix.
`Claim 12 ........................................................................................65
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`U.S. Patent No. 8,714,445
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`Claim 13 ........................................................................................66
`x.
`V. CONCLUSION.............................................................................................67
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................68
`A. REAL PARTIES-IN-INTEREST UNDER 37 C.F.R. § 42.8(B)(1) ..........................68
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2) ......................................68
`C. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) .....................68
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`IPR2020-00972
`U.S. Patent No. 8,714,445
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`APPENDIX OF EXHIBITS
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`Exhibit 1001 U.S. Patent No. 8,714,445 to Katz et al. (“’445 Patent”)
`Exhibit 1002
`’445 Patent File History (“’445 Patent File History”)
`Exhibit 1003 U.S. Pat. App. No. 2008/0052227 to Canard et al. (“Canard”)
`Exhibit 1004 Expert Declaration of Dr. Clifford Neuman (“Neuman Decl.”)
`Exhibit 1005 U.S. Patent Pub. No. 2009/0177582 to Cucinotta (“Cucinotta”)
`Exhibit 1006 U.S. Patent No. 6,473,500 to Risafi et al. (“Risafi”)
`Exhibit 1007 U.S. Patent Pub. No. 2004/0129777 to Smith (“Smith”)
`Exhibit 1008 U.S. Patent Pub. No. 2012/0066122 to Goldberg (“Goldberg”)
`Exhibit 1009 Goldberg Dynamic Drinkware Chart (“Goldberg Claim Chart”)
`Exhibit 1010 Goldberg Provisional App. No. 61/383,239
`(“Goldberg
`Provisional”)
`Exhibit 1011 Curriculum Vitae of Dr. Clifford Neuman
`Exhibit 1012 Voluntary Interrogatories
`Exhibit 1013 U.S. Patent No. 777,149 to Scudder (“Scudder”)
`Exhibit 1014 U.S. Pat. Pub. No. 2001/0032878 to Tsiounis et al. (“Tsiounis”)
`Exhibit 1015 NetCheque, NetCash, and the Characteristics of Internet Payment
`Services, MIT Workshop on Internet Economics, Clifford Neuman
`and Genaddy Medvinsky, March, 1995 (“Netcash/NetCheque”)
`Exhibit 1016 U.S. Patent Pub. No. 2001/0037209
`to Tarbutton et al.
`(“Tarbutton”)
`Exhibit 1017 U.S. Publication No. 2002/007351 to Hillegass et al. (“Hillegass”)
`Exhibit 1018 U.S. Publication No. 2004/0078331 to Fakih (“Fakih”)
`Exhibit 1019 U.S. Patent No. 8,672,220 to Hanna et al. (“Hanna”)
`Exhibit 1020 A 2D Barcode-Based Mobile Payment System, by Jerry Gao, et al.
`(“Gao”)
`Exhibit 1021 U.S Patent Publication No. 2008/0249951 to Gilder et al.
`(“Gilder”)
`Exhibit 1022 U.S Patent No. 9,349,063 to Steven Smith et al. (“S. Smith”)
`Exhibit 1023 U.S. Patent No. 7,864,933 to Ryoo (“Ryoo”)
`Exhibit 1024 U.S. Patent Publication No. 2011/0246284 to Chaikin et al.
`(“Chaikin”)
`Exhibit 1025 2D-barcode for mobile devices, Honours Thesis, Edith Cowan
`University, Hiroko Kato (2005) (“Kato”)
`Exhibit 1026 U.S. Patent No. 8,935,187 to Higgins, Sr. et al. (“Higgins”)
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`I.
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`INTRODUCTION
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`IPR2020-00972
`U.S. Patent No. 8,714,445
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`Unified Patents, LLC (“Petitioner”) requests inter partes review (“IPR”) of
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`claims 1-6, 12-13, and 17-18 (the “Challenged Claims”) of U.S. Patent No.
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`8,714,445 (the “’445 patent”).
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`II. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies under Rule 42.104(a) the patent for which review is sought
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`is available for IPR and Petitioner is not barred or estopped from requesting IPR
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`review challenging the patent claims on the grounds identified herein.
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`B.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b)
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`Petitioner requests claims 1-6, 12-13, and 17-18 be found unpatentable on the
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`following grounds:
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`Ground
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`Claims
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`Basis
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`Reference(s)
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`1
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`2
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`1-6, 12-13, and 17-18
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`103(a)
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`1-6, 12-13, and 17-18
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`103(a)
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`Cucinotta (Ex. 1005) in view of
`Risafi (Ex. 1006) in further view
`of Smith (Ex. 1007)
`
`Cucinotta (Ex. 1005) in view of
`Risafi (Ex. 1006) in further view
`of Goldberg (Ex. 1008)
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`IPR2020-00972
`U.S. Patent No. 8,714,445
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`III. U.S. 8,714,445
`A.
`Summary
`The ’445 patent is directed to a method of conveying monetary value between
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`two parties, employing a “unique article,” termed “QwikCash.” ’445 Patent (Ex.
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`1001), 3:64-65. QwikCash is issuable in several different forms, including an
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`electronic or printable ticket (referred to as a “QwikCash ticket”):
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`
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`Id. at Fig. 1B (annotated); 3:64-4:7. The QwikCash ticket may be associated with
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`various security measures, such as a Globally Unique Identifier (“GUID”),
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`represented as exemplary barcode 23B (boxed in purple) in Figure 1B above and,
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`optionally, a personal identification number (“PIN”) which may be used in
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`conjunction with the QwikCash ticket’s redemption. Id. at 4:23-44. The QwikCash
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`ticket may further include a textual reference denoting its monetary value, e.g.,
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`“$25.00,” (boxed in blue) and a textual reference identifying that a PIN has issued,
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`e.g., “PIN: *****,” (boxed in red) as illustrated above. Id. at Fig. 1B (annotated).
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`The ’445 patent notes that previous methods of conveying monetary value
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`between two parties, such as ATM cards, certain types of pre-paid gift cards, and
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`PayPal, suffer shortcomings, including lack of anonymity, flexibility, and
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`fungibility. Id. at 1:41-2:37. The disclosed methods for conveying QwikCash, as
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`further described below, seek to provide an anonymous, flexible, and fungible means
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`of transferring monetary value between parties utilizing this “unique article” to
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`obviate the need for a user to have a relationship with a bank, and to provide
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`electronic or physical means to transfer money to other parties. Id. at 2:35-37; see
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`also id. at 3:60-4:7.
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`For example, as illustrated in Figure 2 below, this exchange method operates
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`as follows: First (process steps boxed in blue), a user accesses a webpage hosted on
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`a PC or smartphone and requests to purchase one or more QwikCash tickets by
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`inputting payment. This request is transmitted over the internet where a GUID is
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`generated to associate with the ticket and optionally, a PIN code signifier if a PIN
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`was requested. Then (boxed in red), the ticket is returned with the associated GUID
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`to the user. Next (boxed in orange), the user may then use the ticket himself/herself
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`or transfer the ticket to a recipient. Finally (boxed in green), if transferred, the
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`recipient may optionally change the PIN and take the ticket to a merchant, where the
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`merchant scans the ticket using a conventional Point of Sale (“POS”) device, the
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`POS device authenticates the ticket, and the merchant pays the recipient the ticket’s
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`cash value:
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`
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`Id. at Fig. 2 (annotated); see also id. at 5:43-8:18.
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`Prosecution History
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`B.
`The application that issued as the ’445 patent was filed on July 28, 2012 and
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`claims priority to provisional application No. 61/574,288, filed on July 29, 2011.
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`’445 Patent (Ex. 1001) at (22), (60). For the purposes of this IPR only, Petitioner
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`applies this July 29, 2011 priority date to the Challenged Claims.
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`A first Office Action rejected then-pending claims 1, 14-15, 18, and 20 as
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`obvious over U.S. Pat. App. No. 2008/0052227 to Canard et al. (“Canard”) in view
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`of U.S. Pat. App. No. 2012/0197805 to Chung. ’445 Patent File History (Ex. 1002),
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`68-76. Regarding then-pending independent claims 1, 18, and 20, the examiner
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`found the claimed “requesting, by an administrator, of a PIN” and “entering by the
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`first party, of an alpha-numeric-symbolic PIN” was taught by Canard’s customer
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`“signature” appearing on its electronic voucher. Id. Moreover, the examiner found
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`that Canard taught the claimed “textual reference identifying issuance of said PIN,”
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`directing the applicant to figure 3 and paragraph 115 in Canard, both disclosing the
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`location to enter “SA signature 54.” Id. The examiner found that the prior art failed
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`to teach dependent claims’ recited PIN change functionality that, if rewritten in
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`independent form, would be allowable. Id. at 74-75.
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`Applicant amended its independent claims to include the subject matter
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`deemed by the examiner to be allowable, including the recipient having the ability
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`to change and associate a new PIN with the QwikCash ticket. Id. at 84-94. The
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`claims were then allowed. Id. at 99.
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`Level of Skill of a Person of Ordinary Skill in the Art
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`C.
`A person having ordinary skill in the art (“PHOSITA”) at the time of the ’445
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`patent would have been a person having (i) an undergraduate degree in computer
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`science or similar field; and (ii) one to two years of experience in the analysis,
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`design, or development of electronic payment systems, with additional education
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`substituting for less experience and vice versa. Neuman Decl. (Ex. 1004), ¶¶30-32.
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`D. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`In IPR proceedings, claims are construed under the same standard applied by
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`Article III courts (i.e., the Phillips standard). 37 C.F.R. § 42.100(b); 83 Fed. Reg.
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`197, 51340 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
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`2005) (en banc). Under this standard, words in a claim are given their plain meaning,
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`which is the meaning understood by a person of ordinary skill in the art in view of
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`the patent and file history. Phillips, 415 F.3d 1303, 1312-13.
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`Other than the below discussion of “administrator” Petitioner proposes no
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`claim language requires express construction to resolve the grounds herein.
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`1. “administrator”
`Independent claims 1, 16, and 17 and dependent claims 2, 5, 6, and 18 recite
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`the term “administrator.” ’445 Patent (Ex. 1001), 12:2-16:27. The ’445 patent’s
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`specification does not define an “administrator.” However, the specification
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`describes methods of conveying monetary value, where such methods are
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`effectuated by the combination of hardware and/or software operating on behalf of
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`the issuer of the QwikCash ticket, such that the hardware and/or software can
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`administer the financial methods disclosed therein. Id. at 10:28-29 (“Software of the
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`present invention may run on a computer, a server, a cell phone, tablet, or other smart
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`device….”); 11:19-21 (“specific hard-wired digital circuitry may be used in the place
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`of, or in combination with, software instructions to implement the invention”); see
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`also id. at Abstract (describing how the administrator requests a PIN); 2:51-53
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`(describing an administrator database maintained by the issuer); 6:31-34; Fig. 9
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`(depicting a distributed system where the aforementioned software may run on
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`computing unit 201, network devices 262-264, or any other device/server, boxed in
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`green):
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`See also id. at 10:32-39 (describing a distributed system including computing unit
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`201 interacting with network resources 203 through the use of the internet 261);
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`
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`11:51-56.
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`Thus, an “administrator” should be construed to at least include a combination
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`of hardware and/or software operating on behalf of the issuer of the ticket, where
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`such software may be distributed across various devices.
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`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Ground 1: Claims 1-6, 12-13, and 17-18 Are Obvious Over Cucinotta
`in View of Risafi,
`in Further View of Smith AND
`Ground 2: Claims 1-6, 12-13, and 17-18 Are Obvious Over Cucinotta
`in View of Risafi, in Further View of Goldberg
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`Overview of Cucinotta
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`U.S. Patent App. Pub. No. 2009/0177582 to Cucinotta (“Cucinotta”) was
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`published on July 9, 2009 and is therefore prior art to the ’445 patent under at least 35
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`U.S.C. § 102(b).
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`Cucinotta is analogous art to the ’445 patent. The field of the ’445 patent at least
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`includes systems and methods for providing flexible and secure forms of payment,
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`such as with regard to electronic commerce. ’445 Patent (Ex. 1001), 1:18-22; 2:35-
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`37; 3:60-4:7. Like the ’445 patent, Cucinotta discloses similar flexible payment
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`systems and methods for providing secure financial transactions. Cucinotta (Ex.
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`1005), [0006]; [0009]-[0010]. Moreover, the ’445 patent is directed at providing a
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`payment exchange method where a user does not need a relationship with a bank,
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`such as a bank account, to effectuate payments. ’445 Patent (Ex. 1001), 3:64-4:22
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`(describing the use of a printed or electronic “QwikCash” ticket as a form of non-
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`account-based payment). Cucinotta solved this same problem years before by
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`providing a “simple, flexible” printed or electronic voucher-based system for
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`providing “access to any of a plurality of services without the need for a pre-existing
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`account or application process.” Cucinotta (Ex. 1005), [0019]; [0021]-[0042].
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`Further, like the ’445 patent, Cucinotta discloses a distributed transaction
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`architecture including multiple devices (boxed in green) interconnected by a network
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`(highlighted yellow), such as the internet, where such transaction architecture
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`utilizes software implemented on the devices or network servers for completing the
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`transaction methods disclosed therein. Compare Cucinotta (Ex. 1005), Fig. 11
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`(annotated) with ’445 Patent (Ex. 1001), Fig. 9 (annotated):
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`
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` 1
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` Cucinotta further provides a more detailed depiction of the same architecture in
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`Figure 2. Cucinotta at Fig. 2.
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`Thus, Cucinotta is in the same field of endeavor as the ’445 patent and is reasonably
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`pertinent to the problems addressed by the ’445 patent. Neuman Decl. (Ex. 1004),
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`¶¶25-29; ¶¶59-65.
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`Cucinotta discloses methods, utilizing the above transaction architecture, for
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`providing a user one or more vouchers representing specific monetary
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`denominations, capable of transference to a recipient. See, e.g., Cucinotta (Ex.
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`1005), [0059]-[0075]; [0076]-[0078]; see also id. at Fig. 3 (describing an exemplary
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`method):
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`Id. at Fig. 3 (annotated). In this method, first (blue), a user accesses a remote terminal
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`(e.g., computer, atm, or website) and inserts payment (e.g., cash, check, credit card
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`amount) to receive a voucher. Id.; see also id. at [0076]. The user can input additional
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`information to be included on the voucher or stored in a database. Id. For example,
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`the monetary sum can be included on the voucher and a PIN can be associated with
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`the voucher and stored in a database. Id. at [0073] (a “dollar amount” may be printed
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`on the voucher); see also id. at [0066] (describing storing useful information for a
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`transaction, such as a PIN number); [0076]-[0078]. Then (red), the remote terminal
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`issues a voucher which can optionally include a barcode containing information
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`associated with the voucher. Id. at [0076]; see also id. at [0068]. Next (orange), the
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`user can visit a validation station (e.g., merchant or other entity), or electronically
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`transfer the voucher to a validation station, to authenticate the user’s identity and
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`activate the voucher. Id. at [0077]. The validation station can then deliver the
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`activated voucher, which can be the same voucher as originally issued, to the user.
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`Id. Finally (green), the user may then provide the voucher to a second party, along
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`with identifying information (e.g., a PIN), where the second party can access a
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`remote terminal to scan the voucher and confirm the voucher is valid and active. Id.
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`at [0078].
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`Overview of Risafi
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`U.S. Patent No. 6,473,500 to Risafi et al. (“Risafi”) issued on Oct. 29, 2002 and
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`is therefore prior art to the ’445 patent under at least 35 U.S.C. § 102(b). See Risafi (Ex.
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`1006).
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`Risafi is analogous art to the ’445 patent. Both Risafi and the ’445 patent relate
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`to offering flexibility and security when transacting electronic payments. Compare id.
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`at 3:53-55 (“It is therefore an object of the present invention to present a system and a
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`method for using a prepaid card that offers the flexibility needed in transacting
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`electronic payments”); see also id. at 3:38-44 (describing selecting a PIN for security
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`purposes) with’445 Patent (Ex. 1001) at 1:18-22 (describing providing a flexible
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`payment system with reversible security measures); id. at 2:35-37.
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`Moreover, both Risafi and the ’445 patent address the problem of providing
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`payment means for users who do not have a bank account. Compare Risafi (Ex. 1006)
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`at 7:11-15 (“Advantageously, these cards are useful for consumers who are not eligible
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`for a credit card…[or] who do not have a bank account with which a financial card may
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`be linked”); with ’445 Patent (Ex. 1001) at 3:64-4:2 (describing the advantages of the
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`claimed system obviating the need for a bank account). Thus, Risafi is in the same field
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`of endeavor as the ’445 patent and is reasonably pertinent to the problems addressed by
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`the ’445 patent. Neuman Decl. (Ex. 1004), ¶¶25-29; ¶¶66-69.
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`Risafi discloses various methods for transferring a reloadable prepaid card of
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`any chosen denomination, along with a user-selectable PIN, to a second party, where
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`the second party may change the original PIN to a new PIN for future use. Risafi (Ex.
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`1006), 9:26-34; 18:43-67 (describing a gift-giving embodiment); see also id. at 8:35-
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`52; 18:9-24 (describing a payroll embodiment). Figure 10a illustrated below
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`summarizes Risafi’s disclosed gift-giving embodiment:
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`Id. at Fig. 10a. Here, Risafi allows a donor to place value on a card, select a PIN, and
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`activate the card. Id.; see also id. at 18:43-67. The activation process includes
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`providing the card number, PIN, and amount to a terminal which creates an account
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`for this card and completes activation. Id. The donor may then give the card, along
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`with the PIN, to a recipient. Id. The recipient is able to change the PIN to one he or
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`she can more easily remember and then use the card. Id. Optionally, the recipient
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`may then reload the card after use, or close the card account. Id.
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`Overview of Smith
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`IPR2020-00972
`U.S. Patent No. 8,714,445
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`U.S. Patent Pub. No. 2004/0129777 to Smith (“Smith”) published on July 8, 2004
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`and is therefore prior art to the ’445 patent under at least 35 U.S.C. § 102(b). See Smith
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`(Ex. 1007).
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`Smith is analogous art to the ’445 patent. Both Smith and the ’445 patent relate
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`to distributing forms of payment between parties, and both seek to solve the problem of
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`unsecure transfers by providing PIN based security measures. Compare id. at [0002]
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`(“the present invention is related to the distribution of personal identification numbers
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`(PINs)”); see also id. at [0004] (“The merchant terminal prints the PIN on a receipt, and
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`the receipt is provided to the customer”) with ’445 Patent (Ex. 1001), 7:61-65 (“when
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`the transferee has been given the ticket and the corresponding PIN, the transferee
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`may…use the PIN to create a new PIN number to personally secure the face value of
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`the QwikCash”). Thus, Smith is in the same field of endeavor as the ’445 patent and is
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`reasonably pertinent to solving the problem of unsecure payments methods. Neuman
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`Decl. (Ex. 1004), ¶¶25-29; ¶¶70-71.
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`Smith discloses a method for automating a stored-value card transaction
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`request, comprising a customer selecting a keycard (e.g., a card associated with a
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`particular stored-value card); inputting a product identification number at a merchant
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`terminal; relaying the product identification number to a central processor; and
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`delivering, by the central processor, indicia associated with the keycard (i.e., a PIN)
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`to the customer. Smith (Ex. 1007), [0012]. In a preferred embodiment, the final
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`delivery step includes printing a receipt providing the PIN—which may comprise an
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`identification number, password, code, or other information associated with a
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`particular transaction—along with instructions for using the PIN. Id. at [0029];
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`[0031]. The back side of the keycard itself, as depicted in Figure 5, contains a textual
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`reference referring a user to the printed receipt to follow its redemption instructions
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`for using the PIN. Id. at Fig. 5. Smith notes that the keycard is not initially associated
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`with a PIN. Id. at [0034].
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`Overview of Goldberg
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`U.S. Patent Pub. No. 2012/0066122 to Goldberg (“Goldberg”) was filed on
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`April 7, 2011 with a provisional application filed on September 15, 2010. Goldberg
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`(Ex. 1008) at (60) (Provisional App. No. 61/383,239). Goldberg is entitled to its
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`provisional filing date of September 15, 2010 as its 35 U.S.C. § 102(e) date2 under
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`In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) and under Dynamic
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`Drinkware, LLC v. Nat.’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
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` 2
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` Petitioner notes that should Goldberg not be afforded this earlier § 102(e) date,
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`Goldberg is still prior art under § 102(e) as of its filing date.
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`Specifically, as evidenced in the attached claim chart, Goldberg’s provisional
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`application provides 35 U.S.C. § 112 support for at least one as-filed claim of
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`Goldberg’s non-provisional application and the relied-upon subject matter, which
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`appear in Goldberg’s published application. Goldberg Claim Chart (Ex. 1009)
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`(demonstrating support); Goldberg Provisional (Ex. 1010); Comcast Cable
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`Commc’ns, LLC v. Promptu Sys. Corp., Case IPR2018-00345, Paper 10, at 25
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`(PTAB July 2, 2018) (confirming Dynamic Drinkware requires only one claim in
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`the non-provisional to be supported by the provisional) (citing Ex Parte Mann, 2016
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`WL 7487271 at *5-6 (PTAB Dec. 21, 2016)).
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`Goldberg is analogous art to the ’445 patent. Goldberg, like the ’445 patent, is
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`directed at providing flexibility when conveying monetary sums. Compare
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`Goldberg (Ex. 1008), [0011] (“A new card and related system have been developed
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`that allow for ultimate flexibility for the purchaser and giftee”) with ’445 Patent (Ex.
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`1001) at 1:18-22; 2:35-37; 3:60-4:7. Moreover, Goldberg, similar to the ’445 patent,
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`is directed to reducing the number of payment items remitted to a recipient, e.g.,
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`payment article plus a receipt with a PIN. Compare Goldberg (Ex. 1008), [0011]
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`(describing embodiments where the gift-card is the only item transferred to a
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`recipient) with’445 Patent (Ex. 1001), 6:34-37. Thus, Goldberg is in the same field
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`of endeavor as the ’445 patent and is reasonably pertinent to the problems addressed by
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`the ’445 patent. Neuman Decl. (Ex. 1004), ¶¶25-29; ¶¶114-115.
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`Goldberg discloses a gift card comprising a designated PIN space that
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`identifies a PIN has been issued and needs to be used in conjunction with the card to
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`make a purchase. Goldberg (Ex. 1008), [0012]. For example, when a purchaser buys
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`a card, a code (e.g., PIN) is provided by the computer that corresponds to the card
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`and the card amount. Id. at [0017]. The purchaser can then optionally “print” the PIN
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`on the card in the designated PIN space. Id. at [0018].
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`i.
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`Claim 17
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`17[P] A method of operating a monetary value transfer system for the conveying
`of monetary value between at least two parties, said method comprising:
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`To the extent the preamble is limiting, Cucinotta discloses a method “for a user
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`wanting to obtain a voucher for a specific denomination that can be used to send
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`money to another person in a different location” (i.e., [a] method of operating a
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`monetary value transfer system for the conveying of monetary value between at least
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`two parties). Cucinotta (Ex. 1005) at [0076]; see also id. at Abstract (describing the
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`operation of a financial services and transaction network, including, inter alia,
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`networked remote terminals and validation stations for conveying monetary value
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`between a user and optionally, a recipient); Fig. 3 (outlining the method steps of this
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`conveyance):
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`17[a] requesting, by a first party, of a total amount of monetary value to be in one
`or more desired incremental monetary amounts;
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`Cucinotta discloses or at least renders obvious this limitation, or alternatively,
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`this limitation is obvious over either Cucinotta in view of Smith (Ground 1) or
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`Cucinotta in view of Goldberg (Ground 2).
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`Cucinotta discloses a “user” (i.e., first party) that requests to obtain a
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`“voucher for a specific denomination.” Cucinotta (Ex. 1005) at [0076] (emphasis
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`added). To accomplish this, the user “accesses a remote terminal and selects a
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`financial service or transaction type provided by the remote terminal,” where such
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`user “inputs a source of funding…such as cash, a check, a credit card, an ATM card,
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`an online or offline debit card, a smart card, or any other source known or used in
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`the art for providing or accessing funds” to obtain a voucher(s) for a specific
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`amount(s) (i.e., requesting of a total amount of monetary value to be in one or more
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`desired incremental monetary amounts). Id. (emphasis added); see also id. at [0059]
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`(“For example, if the inserted item is a check, the remote terminal might assume that
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`the user wishes to obtain a voucher for the amount of the check”); Fig. 3 (302-304).
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`A PHOSITA would have understood that Cucinotta discloses the claimed “one or
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`more desired incremental monetary amounts” in view of the disclosed embodiments
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`permitting cash or check as the specific source of funds, where the resulting voucher
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`would include the full purchase amount as the one of the one or more incremental
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`monetary amounts (e.g., the total amount). Neuman Decl. (Ex. 1004), ¶¶72-74.
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`Moreover, Cucinotta permits a user to “choose to receive multiple
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`vouchers…allowing the user to distribute funds across multiple vouchers. This can
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`be useful for sending multiple amounts to multiple people while only having to go
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`through one validation process, as well as being useful for allowing a user to carry
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`around vouchers in smaller denominations for safety or other purposes.” Cucinotta
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`at [0074]. (emphasis added). Based on this disclosure, a PHOSITA would have
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`understood that a user could input a total amount of funds (e.g., $100), and receive
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`multiple vouchers representing increments of this total value (e.g., a $25 voucher
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`and a $75 voucher) to send these multiple vouchers to multiple recipients as desired.
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`Neuman Decl. (Ex. 1004), ¶75. This aligns with the disclosure in the ’445 patent
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`describing distributing a full purchase amount of QwikCash (e.g. $100) across
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`multiple smaller QwikCash tickets. ‘445 Patent (Ex. 1001), 5:55-6.3. Thus, a
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`PHOSITA would have understood that Cucinotta’s ability to have a voucher of a
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`“specific denomination” or to have multiple vouchers representing specific “smaller
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`denominations” additionally discloses this limitation. Neuman Decl. (Ex. 1004),
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`¶¶72-75.
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`Alternatively, in the event it is argued that Cucinotta does not disclose the one
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`or more desired incremental monetary amounts, Cucinotta in view of Smith renders
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`this limitation obvious (Ground 1). Smith discloses the well-known approach of
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`offering standard incremental monetary amounts for its PIN-protected stored-value
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`cards. Smith (Ex. 1007), [0006] (disclosing a method of obtaining a stored-value
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`card including “$20, $30, and $50”).
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`Alternatively, Cucinotta in view of Goldberg renders this limitation obvious
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`(Ground 2). Goldberg discloses that gift cards may come in designated
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`denominations such as “$10, $25, and $100.” Goldberg (Ex. 1008) at [0004].
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`A PHOSITA would have been expressly motivated for Cucinotta’s vouchers
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`to be purchased at designated incremental monetary amounts as disclosed in Smith
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`or Goldberg, as Cucinotta discloses issuing a voucher at a specific “denomination”
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`and issuing multiple vouchers of “smaller denominations.” Neuman Decl. (Ex.
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`1004), ¶76. Such standard designated incremental amounts were well-known and
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`commonly used in the marketplace to provide denominations for gift cards, stored
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`value cards, and vouchers to ease the process of selecting amounts. Id. at ¶¶50-53;
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`76; ¶116. A PHOSITA would have had a reasonable expectation of success issuing
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`vouchers for incremental monetary amounts, as taught by Smith or Goldberg,
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`because it would have been the straightforward application of standard monetary
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`amounts to Cucinotta’s well-known method of issuing vouchers representing
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`monetary sums. Id. at ¶76.
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`17[b] providing a payment, by the first party, for said total amount of monetary
`value;
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`Cucinotta discloses or at least renders obvious this limitation. See supra at 17[a]
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`(providing payment mechanisms, including cash, check, debit card, credit card, etc.).
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`Further, Cucinotta discloses that any fees associated with issuance of a voucher can
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`be added to the initial amount or otherwise paid by the user, rather than deducted.
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`Cucinotta at [0060] (“Options that can be displayed to the user