from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. IPR2014-00543, IPR2014-00544.
Greenspoon, Flachsbart & Greenspoon, LLC, Chicago, IL,
argued for appellant. Also represented by Joseph Carl Drish.
Damon Williams, Baker Botts LLP, Palo Alto, CA, argued for
appellee. Also represented by Robert C. Scheinfeld, New York,
Taranto, Linn, and Stoll, Circuit Judges.
TARANTO, CIRCUIT JUDGE.
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
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
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.
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"
21 is representative of the "single merchant"
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
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 ...