Takeaway: An expert declaration cannot be excluded on the basis that it applies claim constructions that differ from the Board’s constructions in its decision on institution.

In its Final Written Decision, the Board found that all challenged claims (1-30) of the ’486 Patent are unpatentable.  The Board also denied Petitioner’s Motion to Exclude.  The ’486 Patent discloses a method and system of performing secure credit card purchases.

The Board began with claim construction, noting that the terms are given their broadest reasonable interpretation in light of the specification.  The Board first reviewed the term “generating a transaction code,” adopting its construction from the Decision on Institution over Patent Owner’s objection that the construction was too narrow.  The Board then discussed the term “defining at least one payment category,” adopting Petitioner’s construction.  Finally, the Board adopted its prior construction of “particular merchant,” and revised its construction of “said single merchant limitation being included in said payment category prior to any particular merchant being identified as said single merchant” to comply with Patent Owner’s proposed construction.

The Board then turned to the grounds of unpatentability, first reviewing whether claims 1-15 and 22-30 are anticipated by Cohen.  As an initial matter, Patent Owner argued that an ex parte reexamination of the related ’988 patent confirmed those claims because Cohen fails to disclose the single merchant limitation.  However, the Board found that it was not bound by such arguments because Patent Owner failed in its duty to clarify its claim meaning during the reexamination process and because the Board has a different evidentiary record than what was before the examiner.

Patent Owner further argued that Cohen fails to disclose the single merchant limitation, with the single merchant limitation being included prior to any particular merchant being identified as the single merchant, and designating/selecting a payment category that places limitations on a transaction code before the transaction code is generated.  The Board was not persuaded by Patent Owner’s argument that Cohen’s disclosure of a group of stores does not meet the single merchant limitation because under the broadest reasonable interpretation, “single merchant” can include transactions to a chain of stores.  Regarding whether the single merchant limitation is included prior to any particular merchant being identified as the single merchant, the Board disagreed with Patent Owner’s rationale, finding that the relationship between the recited “particular merchant” and “single merchant” is such that the “single merchant” includes the particular merchant as a member of the single merchant chain, without identifying the particular merchant.  Finally, with regard to designating/selecting a payment category that places limitations on a transaction code before the transaction code is designated, the Board disagreed that Cohen did not teach this limitation, finding that Cohen inherently discloses this step.

The Board then discussed whether claims 16-21 are obvious over Cohen and Musmanno.  Patent Owner’s only argument regarding these claims was that they depend from independent claim 1, and the challenge fails for the same reasons as for the independent claim.  Because the Board was not persuaded by those reasons, it was also not persuaded by Patent Owner’s arguments as to claims 16-21.

The Board then turned to Petitioner’s Motion to Exclude Patent Owner’s expert declaration on the basis that Patent Owner’s expert is not one of ordinary skill in the art.  The Board found that the expert was qualified to provide testimony in general hardware and software technologies, and his alleged lack of familiarity with the payment card technologies goes to the weight of his testimony.  Petitioner also argued for exclusion of the declaration on the basis that it is inconsistent with the constructions in the Decision to Institute.  The Board agreed with Patent Owner that nothing requires the declaration to be constrained by the constructions in the Decision to Institute.

MasterCard International Incorporated v. John D’Agostino, IPR2014-00544
Paper 22: Final Written Decision
Dated: August 31, 2015
Patent 7,840,486 B2
Before: Sally C. Medley, Karl D. Easthom, and Kalyan K. Desphande
Written by: Desphande
Related Proceedings: D’Agostino v. MasterCard, Inc., No. 1:13-cv-00738 (D. Del.); IPR2014-00543; CBM2013-00058