Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

D'Agostino v. Mastercard International Inc.

United States Court of Appeals, Federal Circuit

December 22, 2016

JOHN D'AGOSTINO, Appellant
v.
MASTERCARD INTERNATIONAL INCORPORATED, Appellee

         Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2014-00543, IPR2014-00544.

          Robert Greenspoon, Flachsbart & Greenspoon, LLC, Chicago, IL, argued for appellant. Also represented by Joseph Carl Drish.

          Eliot Damon Williams, Baker Botts LLP, Palo Alto, CA, argued for appellee. Also represented by Robert C. Scheinfeld, New York, NY.

          Before Taranto, Linn, and Stoll, Circuit Judges.

          TARANTO, CIRCUIT JUDGE.

         This case involves method claims of two patents that disclose processes for generating limited-use transaction codes to be given to a merchant by a customer for the purchase of goods and services, an objective being to enhance security for the customer by withholding the customer's credit card number from the merchant and using the transaction code to complete the transaction instead. In two inter partes review proceedings, the Patent Trial and Appeal Board of the United States Patent and Trademark Office decided that the disputed claims are unpatentable for anticipation and obviousness. Because the Board's decisions rest on an unreasonable claim interpretation, we vacate the decisions and remand for further proceedings.

         I

         John D'Agostino owns U.S. Patent Nos. 7, 840, 486 and 8, 036, 988. The '988 patent is a continuation of the '486 patent. Both patents disclose methods of effecting secure credit-card purchases by minimizing merchant access to credit card numbers. '988 patent, abstract; '486 patent, abstract. The written descriptions of the two patents are materially identical.

         MasterCard International Incorporated filed two petitions with the PTO requesting inter partes review of the two patents under 35 U.S.C. ch. 31. Regarding the '988 patent, the Board, as delegee of the PTO Director, 37 C.F.R. §§ 42.4, 42.108, instituted a review of claims 1-10, 15-25, 27-33, and 35-38 for anticipation by U.S. Patent No. 6, 422, 462 to Cohen and of claims 11-14, 26, and 34 for obviousness over Cohen and U.S. Patent No. 5, 826, 243 to Musmanno (IPR2014-543). Regarding the '486 patent, the Board instituted a review of claims 1-15 and 22-30 for anticipation by Cohen and of claims 16-21 for obviousness over Cohen and Musmanno (IPR2014-544). After conducting the reviews, the Board cancelled all of the reviewed claims as unpatentable on the grounds on which it instituted review. MasterCard Int'l Inc. v. D'Agostino, 2015 WL 5159950 (P.T.A.B. Aug. 31, 2015) ('988 Decision); MasterCard Int'l Inc. v. D'Agostino, 2015 WL 5159951 (P.T.A.B. Aug. 31, 2015) ('486 Decision). The Board's two final written decisions are materially identical for present purposes, so we hereafter cite only the '988 Decision.

         As relevant here, the claims fall into two categories- those which involve "limiting a number of transactions to one or more merchants, " i.e., a "one or more merchants limitation, " '988 patent, col. 8, lines 66-67; and those which involve "limit[ing] transactions to a single merchant, " i.e., a "single merchant limitation, " id., col. 11, lines 12-13. It being undisputed that the former are unpatentable if the latter are unpatentable, the Board relied only on the "single merchant" claims in its decisions, holding them unpatentable and, solely on that ground, also holding the "one or more merchants" claims unpatentable. '988 Decision at *8. We therefore address only the "single merchant" claims.

         Claim 21 is representative of the "single merchant" claims:

21. A method for implementing a system for performing secure credit card purchases, the method comprising:
a) receiving account information from an account holder identifying an account that is used to make credit card purchases;
b) receiving a request from said account holder for a transaction code to make a purchase within a payment category that at least limits transactions to a single merchant, said single merchant limitation being included in said payment category prior to any ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.