UNITED STATES PATENT AND TRADEMARK OFFICE _____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________________
AMERICAN EXPRESS COMPANY AND AMERICAN EXPRESS TRAVEL RELATED SERVICES COMPANY, INC.
Petitioners
v.
SIGNATURE SYSTEMS, LLC. Patent Owner
_____________________
Case CBM: Unassigned
Patent 8,423,402 June 12, 2015
_____________________
PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF U.S. PATENT NO. 8,423,402 UNDER 35 U.S.C. § 321 AND § 18 OF THE
LEAHY-SMITH AMERICA INVENTS ACT
Mail Stop: Patent Board Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
-i- AMECURRENT 716617904.1 12-Jun-15 15:42
LIST OF EXHIBITS
Exhibit 1001: U.S. Patent No. 8,423,402 Exhibit 1002: U.S. Patent No. 8,511,550 Exhibit 1003: U.S. Patent No. 8,313,023 Exhibit 1004: “American Express Creates Membership RewardsSM:
Loyalty Program Combining Travel, Retail and Food,” published by Newslink on October 18, 1995 (“Newslink”)
Exhibit 1005: U.S. Patent No. 5,774,870 to Storey (“Storey”) Exhibit 1006: Expert Declaration of Sandeep Chatterjee, Ph.D. Exhibit 1007: Prosecution File History of U.S. Patent No. 8,423,402 Exhibit 1008: Office Action in U.S. Patent Application No. 14/068,243, dated
January 23, 2015 Exhibit 1009: Transitional Program for Covered Business Method
Patents; 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) Exhibit 1010: Signature Systems, LLC. v. American Express Company et
al., Case No. 1:15-cv-20063-RNS, Dkt. No. 7, Second Amended Complaint, dated March 2, 2015
Exhibit 1011: U.S. Patent No. 3,083,906 Exhibit 1012: U.S. Patent No. 3,795,795 Exhibit 1013: 10-K Report filed by Continental Airlines with the SEC on
February 24, 1997 Exhibit 1014: 10-K Report filed by Continental Airlines with the SEC on
March 20, 1998 Exhibit 1015: 10-K Report Filed by Delta Air Lines with the SEC on
September 30, 1996
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Exhibit 1016: 10-K Report Filed by Delta Air Lines with the SEC on
September 27, 1999 Exhibit 1017: Merriam-Webster definition of “transfer” Exhibit 1018: Restatement (Second) of Contracts § 17 (1981) Exhibit 1019: Curriculum Vitae of Sandeep Chatterjee, Ph.D.
TABLE OF CONTENTS
Page
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I. INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37 C.F.R. § 42.22(a)) ...................................................................................... 1
II. PRELIMINARY STATEMENT ..................................................................... 1
III. MANDATORY NOTICES INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37 C.F.R. § 42.22(a)) ........................................ 4
A. Real Party-In-Interest ............................................................................ 4
B. Related Matters ...................................................................................... 4
C. Lead and Back-Up Counsel and Service Information .......................... 5
IV. OVERVIEW OF THE ’402 PATENT AND ITS PROSECUTION HISTORY ........................................................................................................ 6
A. The Challenged Claims ......................................................................... 6
B. Specification ........................................................................................ 10
C. Prosecution History ............................................................................. 12
V. GROUNDS FOR STANDING ...................................................................... 14
A. Petitioner Has Been Sued For Infringement of the ’402 Patent and Is Not Estopped ............................................................................ 14
B. The ’402 Patent Is A Covered Business Method Patent ..................... 14
1. The Challenged Claims Are Directed To An Apparatus For “Performing Data Processing Or Other Operations Used In The Practice, Administration, Or Management Of A Financial Product Or Service.” ............................................. 16
C. The Challenged Claims Are Not Directed to A “Technological Invention” ............................................................................................ 18
1. The Challenged Claims Do Not Recite Technological Feature(s) That Are Novel and Unobvious ............................... 19
2. The Challenged Claims Do Not Solve A Technical Problem Using A Technical Solution ....................................... 23
VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED .............................................................................. 24
A. Claims for which Review is Requested .............................................. 24
TABLE OF CONTENTS (continued)
Page
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B. Statutory Grounds of Challenge .......................................................... 27
C. Person Having Ordinary Skill In The Art In 1999 .............................. 27
D. Claim Construction ............................................................................. 28
1. Broadest Reasonable Interpretation .......................................... 28
2. Means-Plus-Function Limitations ............................................. 28
3. “Consideration” ......................................................................... 34
4. Additional Terms ...................................................................... 35
VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 36
A. Ground No. 1: The Challenged Claims Are Invalid Under 35 U.S.C. § 101 ........................................................................................ 36
1. The Challenged Claims Are Directed to the Abstract Idea of Currency Conversion ............................................................ 40
2. The Recitations of Generic Computer Elements in the Challenged Claims Does Not Transform the Abstract Idea Into a Patent-Eligible Invention ................................................ 44
3. The Basic Functions Disclosed in the Challenged Claims Can be Performed by Humans .................................................. 51
B. Ground No. 2: The Challenged Claims are Invalid Under 35 U.S.C. § 103(a) as Being Obvious Over Newslink in view of Storey and AAPA ................................................................................ 52
1. Newslink Teaches or Suggests Earning and Storing a First Set of Reward Points and a Second Set of Reward Points ....... 54
2. Newslink Teaches or Suggests Converting Reward Points Based on a Conversion Rate ..................................................... 57
3. Newslink Teaches or Suggests Decreasing Points and Adding and Combining Converted Points With Existing Points of the Second Type ........................................................ 59
4. Newslink Teaches or Suggests Redemption of Converted Reward Points ........................................................................... 61
TABLE OF CONTENTS (continued)
Page
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5. Newslink Teaches or Suggests Conveying Consideration Corresponding to the Converted Points .................................... 62
6. Newslink in Combination With Storey and AAPA Teaches Conversion of Points Via a Web Page ........................ 65
7. Claim Chart for the Challenged Claims And Newslink, Storey, and AAPA ..................................................................... 70
VIII. CONCLUSION .............................................................................................. 80
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TABLE OF AUTHORITIES
Page(s) CASES
Accenture Global Servs., GmbH v. Guideware Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) .......................................................................... 49
Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) ................................................................................. passim
Bancorp Servs. L.L.C. v. SunLife Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012) .................................................................... 49, 51
Bilski v. Kappos, 130 S. Ct. 3218 (2010) .................................................................................... 3, 36
Clear With Computers, LLC v. Altec Inds., Nos. 6:14-cv-79, 6:14-cv-89, 2015 WL 993392 (E.D. Tex. Mar. 3, 2015) ....... 52
Clear with Computers v Dick’s Sporting Goods, Inc., 21 F. Supp. 3d 758, 761, 764-65 (E.D. Tex. 2014) ............................................ 41
CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (en banc), aff’d, 134 S. Ct. 2347 (2014) .......... 49
Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560 (Fed. Cir. 1988) .......................................................................... 69
Content Extraction & Transmission LLC v. Wells-Fargo Bank, Nat’l Assoc., 776 F.3d 1343 (Fed. Cir. 2014) .......................................................................... 38
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) .......................................................................... 46
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) .................................................................... 38, 43
Dealertrack, Inc. v. Huber, 674 F. 3d 1315 (Fed. Cir. 2012) ............................ 48, 49
Diamond v. Diehr, 450 U.S. 175 (1981) ........................................................................................ 3, 36
TABLE OF AUTHORITIES (cont’d)
Page(s)
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Digitech Image Techs., LLC v. Sigma Corp., No. 8:12-cv-1681-ODW(MRWx), 2013 WL 3947137 (C.D. Cal. July 31, 2013) , aff’d sub nom., Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) .................................................................. 43
Digitech Info. Sys. v. BMW Fin. Servs., 864 F. Supp. 2d 1289 (M.D. Fla. 2012), aff’d, 504 F. App’x 920 (Fed. Cir. 2013) ................................................................................................................... 44
Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) ............................................................................................ 37
Gottschalk v. Benson, 409 U.S. 63 (1972) .................................................................................. 38, 41, 44
In re Inland Steel Co., 265 F.3d 1354 (Fed. Cir. 2001) .......................................................................... 53
In re Katz, 639 F.3d 1303 (Fed. Cir. 2011) .......................................................................... 47
In re Nomiya, 509 F.2d 566 (C.C.P.A. 1975) ............................................................................ 70
In re Venner, 262 F.2d 91 (C.C.P.A. 1958) .......................................................................... 3, 66
In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) ........................................................................... 28
Intellectual Ventures I LLC v. Mfrs. & Traders Trust Co., Civ. No. 13-1274-SLR, 2014 WL 7215193 (D. Del. Dec. 18, 2014) .......... 47, 48
Internet Patents Corp. v. Gen. Auto. Ins. Servs., Inc., 429 F. Supp. 3d 1264, 1266, 1269 (N.D. Cal. 2013) .......................................... 48
Kroy IP Holdings, LLC v. Safeway, Inc., No. 2-12-cv-800-WCB, 2015 WL 3452050 (E.D. Tex. May 29, 2015) ............ 45
TABLE OF AUTHORITIES (cont’d)
Page(s)
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KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................................................ 52, 53, 66
Le Roy v. Tatham, 55 U.S. (14 How.) 156 (1853) ............................................................................ 38
Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc., No. 2:13-CV-655, 2014 WL 4364848 (E.D. Tex. Sept. 3, 2015) ............... passim
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) ............................................................................ 37, 38, 45
McKesson Automation, Inc. v. Swisslog Holding AG, Civ. No. 06-28-SLR-LPS, 2009 WL 3648455 (D. Del. Oct. 30, 2009), report accepted in part, rejected in part by 721 F. Supp. 2d 283 (D. Del. 2010) ............................................................................................................... 3, 66
Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003) .......................................................................... 29
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) .......................................................................... 66
OIP Techs., Inc. v. Amazon.com, Inc., No. C-12-1233, 2012 WL 3985118 (N.D. Cal. Sept. 11, 2012)......................... 41
Parker v Flook, 437 U.S. 584 (1978) ............................................................................................ 41
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................... 27, 28
Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346 (Fed. Cir. 2003) .......................................................................... 70
SiRF Tech., Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010) .......................................................................... 49
TABLE OF AUTHORITIES (cont’d)
Page(s)
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Soverain Software LLC v. Newegg Inc., 705 F.3d 1333 (Fed. Cir.), amended on reh’g, 728 F.3d 1332 (Fed. Cir. 2013) ................................................................................................................... 66
TriMed, Inc. v. Stryker Corp., 514 F.3d 1256 (Fed. Cir. 2008) .......................................................................... 29
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) ............................................................................ 38
Uniloc USA, Inc. v. Rackspace Hosting, Inc., 18 F. Supp. 3d 831, 837 (E.D. Tex. 2013) .......................................................... 41
STATUTES
35 U.S.C. § 101 ................................................................................................. passim
35 U.S.C. § 103 .......................................................................................... 1, 4, 79, 80
35 U.S.C. § 112(6) ................................................................................................... 28
35 U.S.C. § 321 .................................................................................................... 1, 25
AIA § 18 ............................................................................................................... 1, 25
AIA § 18(d)(1) ................................................................................................... 15, 18
OTHER AUTHORITIES
37 C.F.R. § 42.8(b)(3) ................................................................................................ 5
37 C.F.R. § 42.8(b)(4) ................................................................................................ 5
37 C.F.R. § 42.10 ....................................................................................................... 6
37 C.F.R. § 42.10(b) .................................................................................................. 6
37 C.F.R. § 42.300(b) .............................................................................................. 28
37 C.F.R. § 42.300 et seq. .......................................................................................... 1
TABLE OF AUTHORITIES (cont’d)
Page(s)
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37 C.F.R. § 42.301 ............................................................................................. 15, 18
37 C.F.R. § 42.302(a) ................................................................................................. 14
37 C.F.R. § 42.302(b) ................................................................................................. 14
37 C.F.R. § 42.304(b)(1) .......................................................................................... 24
37 C.F.R. § 42.304(b)(2) .......................................................................................... 27
Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,734 (Aug. 14, 2012) ....................................................................................... 15
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) .................. ................................................................................................................. 18, 20, 35
157 Cong. Rec. S1365 (daily ed. Mar. 8, 2011) ...................................................... 15
CBM2012-00001, Paper 36 (P.T.A.B. Jan. 9, 2013) ......................................... 16, 18
CBM2012-00002, Paper 10 (P.T.A.B. Jan. 25, 2013) ............................................. 20
CBM2012-00003, Paper 15 (P.T.A.B. Feb. 12, 2013) ............................................ 19
CBM2014-00034, Paper No. 8 (P.T.A.B. May 15, 2014) ....................................... 24
CBM2014-00061, Paper No. 11 (P.T.A.B. July 25, 2014) ..................................... 18
CBM2014-00095, Paper 32 (P.T.A.B. Sept. 29, 2014) ......................... 15, 17, 19, 35
CBM2014-00096, Paper 23 (P.T.A.B. Sept. 29, 2014) ............................... 14, 17, 19
CBM2014-00100, Paper No. 10 (P.T.A.B. Sept. 9, 2014) ...................................... 22
CBM2014-00140, Paper No. 9, at 10 (P.T.A.B. Dec. 9, 2014) ............................... 17
CBM2014-00146, Paper No. 19 (P.T.A.B. Dec. 9, 2014) ....................................... 17
M.P.E.P. § 2129 ....................................................................................................... 70
M.P.E.P. § 2144.04 .............................................................................................. 4, 66
TABLE OF AUTHORITIES (cont’d)
Page(s)
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Restatement (Second) of Contracts § 17 (1) (1981) ................................................ 62
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I. INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37 C.F.R. § 42.22(A))
Pursuant to 35 U.S.C. § 321 and § 18 of the Leahy-Smith America Invents
Act (“AIA”) and pursuant to 37 C.F.R. § 42.300 et seq., American Express
Company and American Express Travel Related Services Company, Inc.
(collectively, “Petitioner” or “AMEX”) hereby requests Covered Business Method
review of claims 1-16 (the “Challenged Claims”) of U.S. Patent No. 8,423,402
(“the ’402 Patent,” attached as Exhibit 1001), now purportedly assigned to
Signature Systems, LLC. (“Patent Owner” or “Signature Systems”). As set forth
below, the Challenged Claims of the ’402 Patent are invalid under 35 U.S.C.
§§ 101 and 103.
II. PRELIMINARY STATEMENT
On March 2, 2015, Signature Systems filed a Second Amended Complaint
(Ex. 1010) against AMEX in the Southern District of Florida, asserting
infringement of at least claim 5 of the ’402 Patent (Ex. 1010, ¶ 25). The ’402
Patent, entitled “Method and System for Electronic Exchange Of Reward Points,”
claims the abstract idea of a currency conversion. See Ex. 1001 at 3:37-42. The
’402 Patent issued on April 16, 2013 from U.S. Patent Application No. 13/553,437,
filed on July 19, 2012, and claims priority to Provisional Application No.
60/140,603, filed on June 23, 1999.
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According to the ’402 Patent, the alleged invention “allows a user to
purchase goods or services using accumulated award points held by a variety of
award programs.” Ex. 1001 at 3:64-66. Specifically, the ’402 Patent is directed
to “convert[ing] the quantity of reward points of the first type decreased from the
reward account on the reward server computer into a corresponding amount of
reward points of the second type at a predetermined reward server conversion
rate.” Ex. 1001 at 14:5-9 (representative claim 5). In other words, the ’402
Patent is directed to converting one type of rewards points into a second type of
rewards points. See Declaration of Dr. Sandeep Chatterjee (“Chatterjee Dec.” or
Ex. 1006), ¶ 22.
The Challenged Claims add no technological invention or solution to this
abstract idea. Instead, they claim the use of generic computer functionality to
implement the idea of converting reward points, which are used as currency to
purchase goods or services, from one type to another. See e.g., Ex. 1001 at 5:58-
61; see also id. Fig. 4 (showing reward servers 10, 12, 14, and trading server 20, as
general purpose computers); Ex. 1006, Chatterjee Dec., ¶ 24. General purpose
computers were indisputably well-known, conventional mechanisms by the time
the ’402 Patent was filed in 2012, as well as by its claimed priority date in 1999.
Ex. 1006, Chatterjee Dec., ¶¶ 28-31 (describing the general purpose computers
disclosed as prior art in the ’402 Patent). It is well settled that such an abstract idea
-3-
does not become patentable merely because it is accomplished using standard
computer components. Bilski v. Kappos, 130 S. Ct. 3218, 3230 (2010) (quoting
Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)); Alice Corp. v. CLS Bank Int’l,
134 S. Ct. 2347, 2358 (2014). Thus, the Challenged Claims are unpatentable under
35 U.S.C. § 101.
The Challenged Claims are also invalid for being rendered obvious in view
of the Newslink publication entitled “American Express Creates Membership
RewardsSM: Loyalty Program Combining Travel, Retail and Food,” dated October
18, 1995 (“Newslink”) (Ex. 1004) alone, or in combination with, U.S. Patent No.
5,774,870 to Storey (“Storey”) (Ex. 1005) and/or Applicant Admitted Prior Art
(“AAPA”) that is described in the background section of the ’402 Patent. For
example, four years before the priority date of the ’402 Patent, Newslink disclosed
transferring Membership Rewards points to airline miles or hotel points. See Ex.
1004 at 3; see also Ex. 1006, Chatterjee Dec., ¶ 109. Although, Newslink discloses
initiating the transfer of reward points over the phone while the ’402 Patent claims
initiating a transfer using a web page, mere incorporation of web pages and/or
routine Internet technology into well-known techniques has also been held to be
obvious. See e.g., McKesson Automation, Inc. v. Swisslog Holding AG, Civ. No.
06-28-SLR-LPS, 2009 WL 3648455, at *26 (D. Del. Oct. 30, 2009) (citing In re
Venner, 262 F.2d 91, 95 (C.C.P.A. 1958)), report accepted in part, rejected in part
-4-
by 721 F. Supp. 2d 283 (D. Del. 2010); see also M.P.E.P. § 2144.04 at III.
Moreover, both Storey and AAPA explicitly disclose the management of reward
programs and redemption of reward points over the Internet. See Ex. 1001 at
generally at Figs. 1-3 and corresponding description at 1:393:25; see also Ex.
1005, Abstract; Ex. 1006, Chatterjee Dec., ¶¶ 119, 115-116. Thus, it would have
been obvious to one of ordinary skill in the art by 1999 to automate the process
disclosed in Newslink in view of the teachings in Storey and/or AAPA. See Ex.
1006, Chatterjee Dec., ¶¶ 115-116 (describing Storey), 119 (describing AAPA).
Accordingly, the Challenged Claims are invalid under 35 U.S.C. § 103 for being
obvious in view of prior art.
Petitioner respectfully requests that the PTAB institute review of the
Challenged Claims, and find that the claims are invalid under 35 U. S. C. §§ 101
and 103.
III. MANDATORY NOTICES INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37 C.F.R. § 42.22(A))
A. Real Party-In-Interest
The real parties-in-interest are American Express Company and American
Express Travel Related Services Company, Inc.
B. Related Matters
The ’402 Patent is presently the subject of litigation in the United States
District Court for the Southern District of Florida in the case entitled: Signature
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Systems, LLC., v. American Express Company and American Express Travel
Related Services Company, Inc., Case No. 1:15-cv-20063-RNS, filed January 9,
2015.
C. Lead and Back-Up Counsel and Service Information
In accordance with 37 C.F.R. §§ 42.8(b)(3) and 42.8(b)(4), Petitioner
identifies Saqib Siddiqui as lead counsel and Stephen E. Baskin as back-up
counsel, and identifies the following service information:
Lead Counsel and Service Info. Backup Counsel
Saqib J. Siddiqui
USPTO Reg. No. 68,626
Mayer Brown, LLP
1999 K Street, N.W.
Washington, D.C. 20006-1101
Telephone: (202) 263-3167
Fax: (202) 263-5367
Email:
Stephen E. Baskin
pro hac vice motion requested
Mayer Brown, LLP
1999 K Street, N.W.
Washington, D.C. 20006-1101
Telephone: (202) 263-3364
Fax: (202) 263-3300
Email: [email protected]
Petitioner will request authorization to file a motion for Stephen E. Baskin to
appear before the USPTO pro hac vice. Mr. Baskin is an experienced patent
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litigation attorney and is serving as counsel for AMEX in the related matter in the
Southern District of Florida involving the ’402 Patent. Mr. Baskin has familiarity
with the subject matter at issue in this proceeding, and has previously been
admitted pro hac vice in CBM proceedings before the PTO. Petitioner intends to
file the motion to appear pro hac vice under 37 C.F.R. § 42.10 once the Board
authorizes the motion. Pursuant to 37 C.F.R. § 42.10(b), a power of attorney
accompanies this Petition.
IV. OVERVIEW OF THE ’402 PATENT AND ITS PROSECUTION HISTORY
A. The Challenged Claims
The ’402 Patent has four independent claims – claims 1, 5, 9, and 13, and
twelve dependent claims – claims 2-4, 6-8, 10-12, and 14-16. Claims 1 and 9 are
directed to “computer-implemented method[s] for earning, exchanging and
redeeming reward points” (Ex. 1001 at 12:37-38 and 14:41-42), claims 5 and 13
are means-plus-function claims directed, respectively, to “a reward server
computer” (id. at 13:40-41) and “a rewards exchange computer” (id. at 15:48-49).
All the independent claims include the same steps of earning reward points,
exchanging reward points, conveying consideration for exchanging the reward
points, and enabling a user to redeem the exchanged reward points. Id. at 12:37-
13:31, 13:40-14:32, 14:41-15:39, and 15:48-16:49; see also Ex. 1006, Chatterjee
Dec., ¶ 39. These claims are long on patent-speak that seek to elevate and
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complicate the simple notion of keeping records of two different forms of reward
points and then allowing one form to be converted to the other. Ex. 1006,
Chatterjee Dec., ¶ 43. For example, claim 5 of the ’402 Patent recites:
5. A reward server comprising:
memory means for storing a reward account comprising
a first set of reward points of a first type previously
earned by a user from a first reward issuing entity as a
result of a first transaction executed between the user and
the first reward issuing entity;
communications means for communicating over a
computer network with a user computer operated by the
user and a reward exchange computer that stores in a
reward exchange account a second set of reward points
of a second type earned by the user as a result of a
second transaction executed between the user and a
second reward issuing entity which is different from the
first reward issuing entity; and
processing means programmed to:
provide a web page to a user computer, the web
page comprising a control for initiating communication
over the computer network with the reward exchange
computer;
initiate, in response to receiving from the user
operating the user computer a selection of the control
from the web page, communication over the computer
network with the reward exchange computer to exchange
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a quantity of reward points of the first type,
designated by the user operating the user computer, from
the reward account on the reward server computer into
reward points of the second type for adding to the
reward exchange account on the reward exchange
computer by:
decreasing the quantity of reward points of
the first type designated by the user from the
reward account on the reward server computer,
causing the reward exchange computer to
convert the quantity of reward points of
the first type decreased from the reward
account on the reward server computer into a
corresponding amount of reward points of the
second type at a predetermined reward server
conversion rate,
add the corresponding amount of reward of
the second type to the reward exchange account,
and
combine the corresponding amount of
reward points of the second type added to the
reward exchange account with the second set of
reward points of the second type previously stored
in the reward exchange account, and
conveying consideration to the reward exchange
computer, the consideration having a value equivalent to
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the quantity of reward points of the first type decreased
from the reward account on the reward server computer;
whereby the user is able to request the reward
exchange computer to redeem at least some of the
combined reward points of the second type from the
reward exchange account for an item selected by the
user, and the reward exchange computer is able to
redeem the requested combined reward points of the
second type from the reward exchange account by
decreasing the reward exchange account by the combined
reward points of the second type requested to be
redeemed by the user for the item selected by the user.
Ex. 1001 at 13:40-14:32 (emphases added). Here claim 5 is reciting the steps that
are performed by a reward server during conversion of reward points. Independent
claims 1 and 9 are directed to this same general concept but recite steps that are
performed by both the reward exchange computer and reward server during the
conversion. Id. at 12:37-13:31 (claim 1 reciting “a reward server . . . storing” and
“a reward exchange computer storing”) and 13:40-14:32 (same recitation as claim
1). Independent claim 13 claims the same concept from the perspective of the
reward exchange computer, only reciting the means included in the reward
exchange computer. Id. at 15:48-16:49. “Generally, there is no meaningful
distinction between the independent claims” since, at their core, they are all
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directed to the abstract idea of currency conversion. Ex. 1006, Chatterjee Dec., ¶
43.
B. Specification
The ’402 Patent states that the invention “allows a user to purchase goods or
services using accumulated award points held by a variety of award programs.”
Ex. 1001 at 3:64-66. In the ’402 Patent, “[a] system and method are disclosed
where the system allows the user to redeem the accumulated reward points from a
plurality of reward entities for exchange with a merchant.” Id. at 4:9-11.
Moreover, “the user can purchase points from the system, borrow points from the
system, etc., and basically treat the points as cash consideration for purposes of
such transactions.” Id. at 10:19-21 (emphasis added). In other words, the ’402
Patent relates to using reward points as currency to purchase goods and services.
See id. at Fig. 7; see also Ex. 1006, Chatterjee Dec., ¶ 23.
As shown in Fig. 4, the disclosed system includes reward servers 10, 12, and
14, which “may be of any type of accessible server capable of holding data about
a user along with a corresponding earned value that is negotiable for other goods,
services, or points of another system” and “may be any type of computer system
that allows users to access the system in order to perform the processes involved in
this invention.” Ex. 1001 at 5:44-47 and 5:58-61 (emphasis added).
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While the system also includes “a merchant computer 30”, and a “user
computer 40” that is in communication with a network 2, there is no disclosure in
the specification that identifies these structures as anything more than a generic
server, computer and network. See Ex. 1006, Chatterjee Dec., ¶¶ 24, 27.
Specifically, when a user is ready to redeem the reward points that are gathered
from the various reward programs, the user uses the user computer 40 to access a
specific reward account with one or more of reward servers 10, 12, 14. Ex. 1001
at 5:11-12 and 6:5-24 (emphasis added). Upon the user’s request, “trading server
20 obtains the reward points from reward servers 10, 12, 14,” and allows the
user to redeem those reward points by purchasing goods and services from, for
example, merchant 30. Id. at 6:30-31 and 7:5-46 (emphasis added). The trading
server 20 then “conveys consideration to the merchant computer 30
equivalent to the cost of the item” purchased from the merchant. Id. at 7:5-46
(emphasis added). Moreover, the “network may comprise any type of
communication process where computers may contact each other.” Id. at 5:13-14
(emphasis added). Thus, the specification of the ’402 Patent makes clear that the
conversion disclosed in the claims can be done by any type of computer system,
using any type of communication process. Id. at 5:13-61; see also Ex. 1006,
Chatterjee Dec., ¶¶ 29-31 (comparing the components disclosed as “prior art” in
the ’402 Patent and the components disclosed in Figure 4 of the ’402 Patent).
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C. Prosecution History
U.S. Patent Application No. 13/553,437 (“the ’437 Application”), filed on
July 19, 2012, issued as the ’402 Patent and seeks priority from provisional
application No. 60/140,603, filed on June 23, 1999, by virtue of six parent
applications that all purport to be continuations with the first application that was
filed on June 23, 2000 as U.S. Patent Application No. 09/602,222.
On September 26, 2012, the USPTO issued a Non-Final Rejection rejecting
all the claims based on indefiniteness, obviousness, and double-patenting grounds.
Ex. 1007 at 71, 82. In response to the Office Action, Signature Systems filed a
terminal disclaimer and amended the claims to overcome the prior art by arguing
that a cited reference “teaches reward redemption while the present claims are for
reward exchange.” See e.g., Ex. 1007 at 124-126 (capitalization omitted). On
January 9, 2013, the USPTO issued a Final Rejection maintaining that the prior art
disclosed the claimed limitations. Id. at 189-191. In response to the Final Office
Action, Signature Systems amended the claims to include “conveyance of
consideration from the reward server computer to the exchange computer [and] . . .
use of a predetermined conversion rate,” and argued that the prior art does not
teach these recitations. Id. at 255-257. On March 4, 2013, the USPTO issued a
Notice of Allowance. Id. at 270.
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The ’402 Patent issued on April 16, 2013, prior to the Supreme Court’s Alice
decision. Thus, it is not unexpected that the prosecution history of the ’402 Patent
did not include any discussion about statutory subject matter and/or whether these
claims were eligible for patentability under 35 U.S.C. § 101. However, in a
continuation of the ’402 Patent (U.S. Patent Application No. 14/068,243, filed
October 31, 2013), claims similar to the Challenged Claims were rejected by the
USPTO after Alice under 35 U.S.C. § 101 for being directed to an abstract idea.
See Office Action in U.S. Patent Application No. 14/068,243, dated January 23,
2015 (Ex. 1008) at 3-4. While rejecting the claims, the USPTO asserted that the
“claim(s) is/are directed to the abstract idea of manipulating points in various
reward and exchange accounts by moving points by one account to another (i.e.,
fundamental economic practice) . . . [and] [t]he additional element(s) or
combination of elements in the claim(s) other than the abstract idea per se
amount(s) to no more than: (i) mere instruction to implement the idea on a
computer, and/or (ii) recitation of generic computer structure.” Id. The rejected
claims in U.S. Patent Application No. 14/068,243 also included a “reward
exchange computer,” “a reward server,” and recited steps for storing reward points
and exchanging reward points, yet the USPTO rejected these claims as being
directed to an abstract idea. See id. The statutory deadline for filing a response to
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this action was April 23, 2015, which can be extended up to July 23, 2015.
Signature Systems has yet to file a response.
V. GROUNDS FOR STANDING
A. Petitioner Has Been Sued For Infringement of the ’402 Patent and Is Not Estopped
Petitioner has been sued for infringement of at least claim 5 of the ’402
Patent in the United States District Court of Southern Florida. See Ex. 1010,
Second Amended Complaint, ¶¶ 24-25. Petitioner therefore meets the requirements
for standing under 37 C.F.R. § 42.302(a).
Petitioner is not estopped from challenging the claims on the grounds
identified in the petition. Petitioner has not been party to any other petition for inter
partes review or post-grant review of the challenged claims, nor has anyone in
privity with Petitioner. Petitioner therefore meets the requirements for standing under
37 C.F.R. § 42.302(b).
B. The ’402 Patent Is A Covered Business Method Patent
The PTAB has previously held that claims directed to the conversion of
rewards points – which are substantially similar to the Challenged Claims – were
“eligible for covered business method patent review.” See Claim 1 of U.S. Patent
No. 8,511,550 (“the ’550 Loyalty Patent” or Ex. 1002) at 6:42-7:26 and
CBM2014-00096, Institution Decision, Paper 23 at 21 (P.T.A.B. Sept. 29, 2014);
see also Claim 32 of U.S. Patent No. 8,313,023 (“the ’023 Loyalty Patent” or Ex.
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1003) at 9:59-10:27 and CBM2014-00095, Institution Decision, Paper 32, at 23
(P.T.A.B. Sept. 29, 2014). For reasons expressed in these earlier decisions, the
’402 Patent similarly qualifies for covered business method review. For at least
the reasons expressed in these earlier decisions, the ’402 Patent similarly qualifies
for covered business method review.
The AIA defines a covered business method (“CBM”) patent as “a patent
that claims a method or corresponding apparatus for performing data processing or
other operations used in the practice, administration, or management of a financial
product or service . . . .” AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The phrase,
“used in the practice, administration, or management of a financial product or
service,” has wide applicability. “[P]ractice, administration, [or] management” is
“intended to cover any ancillary activities related to a financial product or service,
including. . . marketing, customer interfaces, [and] Web site management and
functionality.” 157 Cong. Rec. S1365 (daily ed. Mar. 8, 2011) (statement of Sen.
Schumer).
The USPTO noted that the AIA’s legislative history demonstrates that
“financial product or service” should be “interpreted broadly,” encompassing
patents “claiming activities that are financial in nature, incidental to a financial
activity or complementary to a financial activity.” Transitional Program for
Covered Business Method Patents, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012)
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(“Exhibit 1009”). This Board has also explained that “[t]he term financial is an
adjective that simply means relating to monetary matters.” CBM2012-00001,
Paper 36, at 23 (P.T.A.B. Jan. 9, 2013). According to the USPTO, “patents subject
to covered business method patent review are anticipated to be typically
classifiable in Class 705.” Ex. 1009 at 48,739. The ’402 Patent is also classified
in Class 705. Ex. 1001 at 1.
A patent “need have only one claim directed to a covered business method to
be eligible for review.” CBM2015-00002, Paper 17, Institution Decision at 10
(P.T.A.B. Apr. 22, 2015).
1. The Challenged Claims Are Directed To An Apparatus For “Performing Data Processing Or Other Operations Used In The Practice, Administration, Or Management Of A Financial Product Or Service.”
The ’402 Patent and its claims satisfy the “financial product or service”
prong for CBM eligibility. For example, the Challenged Claims recite a method or
apparatus for performing the steps of “convert[ing] the quantity of first reward
points of the first type . . . into a corresponding amount of rewards point of the
second type,” “conveying consideration,” and/or enabling a sale “whereby the user
is able to request the reward exchange computer to redeem at least some of the
combined reward points.” See e.g., Ex. 1001 at 14:2-24 (claim 5); see also similar
features in claims 1, 9, and 13. Thus, the ’402 Patent and its claims are directed to
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management of the financial service of converting reward points of a first type to a
second type, and facilitating a sale via redemption of these reward points.
Indeed, the ’402 Patent concedes that “the user can purchase points from the
system, borrow points from the system, etc., and basically treat the points as
cash consideration for purposes of such transactions.” Ex. 1001 at 10:19-21
(emphasis added); Ex. 1006, Chatterjee Dec., ¶ 23. Further, the ’402 Patent
requires conveyance of consideration indicating that the exchange of points is also
a financial transaction. See e.g., Ex. 1001 at 14:18-22 (claim 5 reciting
“conveying consideration to the reward exchange computer”). In other words, the
’402 Patent and its claims relates to using reward points as currency to purchase
goods and service. See id. at Fig. 7; see also Ex. 1006, Chatterjee Dec., ¶ 23. The
PTAB has previously stated that purchasing is a financial activity. CBM2014-
00140, Paper No. 9, at 10 (P.T.A.B. Dec. 9, 2014) (describing “the purchase of a
product by a user” as “a financial transaction”); CBM2014-00146, Paper No. 19,
at 9 (P.T.A.B. Dec. 9, 2014) (describing the “purchase . . . of an automobile” as
“financial activity” to which the claimed method was complementary). Similarly,
the PTAB has also held that claims directed to converting reward points and using
them to purchase goods are eligible for CBM review. See CBM2014-00096,
Paper 23, at 21; CBM2014-00095, Paper 32, at 23.
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For these reasons, the ’402 Patent is related to the financial activity of
purchasing, and therefore satisfies the “financial product or service” prong of 37
C.F.R. § 42.301. See CBM2014-00061, Paper No. 11, at 8 (P.T.A.B. July 25,
2014) (finding that a claimed “invention relat[ing] to ‘the purchasing of goods and
services’” satisfied the financial product or service prong).
C. The Challenged Claims Are Not Directed to A “Technological Invention”
The AIA excludes “patents for technological inventions” from the definition
of CBM patents. AIA § 18(d)(1). To determine whether a patent is for a
technological invention, “the following will be considered on a case-by-case basis:
whether the claimed subject matter as a whole recites a technological feature that is
novel and unobvious over the prior art; and solves a technical problem using a
technical solution.” 37 C.F.R. § 42.301. To institute a CBM post-grant review, a
patent need only have one claim directed to a CBM, and not a technological
invention, even if the patent includes additional claims that are directed to
technological inventions. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,756 (Aug. 14, 2012); see also CBM2012-00001, Paper 36, at 26.
Decisions by the PTAB illustrate how these principles may be applied to
system claims comprising hardware elements. For example, in considering a
system claim directed to calculating insurance risk value, the PTAB stated that “on
this record, none of the claim elements, such as sensors, vehicle bus, wireless
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transmitter, database, computer, memory, and server is novel and unobvious when
considered ‘without’ the insurance nature of the data processed.” CBM2012-
00003, Paper 15, at 13-14 (P.T.A.B. Feb. 12, 2013). Moreover, “simply using
technology, even novel technology, is not sufficient to qualify for the
‘technological invention’ exception.” Id. at 10. The patent must recite a novel
technological feature that is not obvious over the prior art. The Challenged Claims
fail to recite a novel and unobvious technological feature and fail to recite a
technical solution to a technical problem. See CBM2014-00096, Paper 23, at 21
and CBM2014-00095, Paper 32, at 13.
1. The Challenged Claims Do Not Recite Technological Feature(s) That Are Novel and Unobvious
None of the technological features recited in the Challenged Claims are
novel or nonobvious over the prior art. The specification describes each claimed
feature as being capable of implementation using technological features that were
known in the art prior to the time of filing. See Ex. 1006, Chatterjee Dec., ¶ 45
(“the individual features described by the claims 1-16 of the ’402 Patent, as well as
the combination of those features recited in the claims, were well known prior to
June 1999”). In addition, as explained below, nothing in the combination of
features that comprise the Challenged Claims converts the claimed subject matter,
as a whole, into a technological feature that is novel and nonobvious over the prior
art.
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Any technological features recited by the Challenged Claims were already
known technologies at the time the application for the ’402 Patent was filed. Ex.
1006, Chatterjee Dec., ¶ 45. “Mere recitation of known technologies, such as
computer hardware, communication or computer networks, software, memory,
computer-readable storage medium, scanners, display devices or databases, or
specialized machines, such as an ATM or point of sale device,” or “[r]eciting the
use of known prior art technology to accomplish a process or method, even if that
process or method is novel and non-obvious,” will “not typically render a patent a
technological invention.” 77 Fed. Reg. at 48,764; see also CBM2014-00140,
Paper No. 9, at 11 (P.T.A.B. Jan. 25, 2013).
By way of example, the only technology recited in claim 1 is “a reward
server” “a reward exchange computer;” and “a web page.” Ex. 1001 at 12:37-
13:31. Similarly, the only technology recited in claim 5 is “[a] reward server
computer comprising” “memory means,” “communication means,” “processing
means,” and “a web page.” Id. at 13:40-14:32. These same features are recited in
the remaining claims. Id. at 13:32-16:57; see Ex. 1006, Chatterjee Dec., ¶ 46. The
’402 Patent makes clear that all of these “technological” components are nothing
but well-known computer components. Ex. 1006, Chatterjee Dec., ¶ 47. For
example, the ’402 Patent makes no distinction between the admitted “PRIOR
ART” components that are depicted in Figure 1 and the “block diagram of
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components of the present invention” depicted in Figure. Ex. 1001 at Figs. 1 and 4
and 4:52-59 (showing identical depictions of computers and servers); Ex. 1006,
Chatterjee Dec., ¶ 47.
The ’402 Patent also acknowledges that these components are simply
implemented with the use of any computer or any server. Ex. 1001 at Fig. 4; Ex.
1006, Chatterjee Dec., ¶ 48. Specifically, with respect to the claimed “reward
server, the ’402 Patent discloses that “[a]ny type of reward server may also be used
in this system” (Ex. 1001 at 5:17-18) and that reward servers 10, 12, and 14, which
“may be of any type of accessible server capable of holding data about a user
along with a corresponding earned value that is negotiable for other goods,
services, or points of another system.” Ex. 1001 at 5:44-47 (emphasis added); Ex.
1006, Chatterjee Dec., ¶ 48. Because the “reward server” recited in the Challenged
Claims may be any type of server any components or means (e.g., memory or
processing means) recited in the “reward server” corresponds to nothing but
generic computer components such as a memory and a processor. Ex. 1001 at Fig.
4; Ex. 1006, Chatterjee Dec., ¶ 60.
With respect to the claimed “reward exchange computer” of the Challenged
Claims, the ’402 Patent again emphasizes that “[t]he trading server computer may
be any type of computer system that allows users to access the system in order to
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perform the processes involved in this invention.” Ex. 1001 at 5:58-61 (emphasis
added).
With respect to the claimed “web page” or “communication means,” the
’402 Patent states that “the merchant computer 30 is representative of any site that
can communicate with the network that has goods or services for sale or trade” (id.
at 5:31-34 (emphasis added)) and that “[i]n the preferred embodiment all of the
systems described are accessible through the Internet and the user may freely
navigate to any site by means well known in the art.” Id. at 5:61-64 (emphasis
added). Further, the ’402 Patent concedes that accessing reward accounts over the
Internet was well known in the art. See id. at 1:56-2:22(“ClickRewards program
allows a user to redeem accumulated points for obtaining merchandise over the
Internet”); see also id. at 5:13-14 (“network may comprise any type of
communication process where computers may contact each other”).
None of the claimed components of the Challenged Claims are
“technological feature[s]” under 37 C.F.R. § 42.301(b) because the claim requires
no particular technology and the specification—to the extent it identifies any
“technology” at all—makes it clear that known, prior art technology can be used to
perform the steps. See Ex. 1006, Chatterjee Dec., ¶ 49; see also CBM2014-00100,
Paper No. 10, at 18 (P.T.A.B. Sept. 9, 2014) (“Reciting the use of known prior art
technology to accomplish a process or method . . . does not render the claimed
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subject matter a technological invention.”). Thus, claims 1 and 5 are directed to a
non-technological invention. Further, because “there is no meaningful distinction
between the independent claims,” independent claims 9 and 13 are also directed to
a non-technological invention. See Ex. 1006, Chatterjee Dec., ¶ 43. Similarly, the
dependent claims 2-4, 6-8, 10-12, and 14-16 merely add one of the following well-
known or non-technical features: a hyperlink, credit card reward program, and/or
airline reward program, and are also directed to a non-technological invention. See
Ex. 1001 at 13:32-16:57.
2. The Challenged Claims Do Not Solve A Technical Problem Using A Technical Solution
The Challenged Claims do not solve a technical problem using a
technological solution. See Ex. 1006, Chatterjee Dec., ¶ 50. The ’402 Patent does
not claim any improvement in computer technology. The only problem the ’402
Patent purports to solve is to provide increased flexibility in the redemption of
reward points such that “users may submit frequent flyer awards or credits
accumulated for other types of transactions for redemption or translation into a
form readily acceptable by a participating merchant.” Ex. 1001 at 3:37-40; Ex.
1006, Chatterjee Dec., ¶ 51. The purported solution is not a technological solution
but – as claimed – it merely requires communication between known computers
using known technology to allow a user to complete a purchase by redeeming
reward points. Ex. 1001 at 5:30-61; Ex. 1006, Chatterjee Dec., ¶¶ 51-53.
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Facilitating completion of a purchase is a financial solution. See CBM2014-00034,
Paper No. 8, at 16 (P.T.A.B. May 15, 2014) (“allowing an application provider to
be charged for actual computing resources used . . . is not a technical solution”). In
addition, because the claimed method can be performed entirely using known
technologies or by human without a computer, the purported problem and solution
of the Challenged Claims is not “technical.” See id. (finding that “allowing
distribution and execution on a network having distributed computer resources”
was not a technical problem solved by the claim where the patent explained that
such networks were well known).
Moreover, converting reward points was not a problem in June 1999. Those
of ordinary skill in at art already knew how to perform such conversion. See infra
at § VII.B. Thus, the ’402 Patent does not solve any problem using any solution,
let alone a technological problem using a technological solution.
Since the Challenged Claims each meet the statutory requirements, the ’402
Patent is a covered business method patent.
VI. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED
A. Claims for which Review is Requested
Pursuant to 37 C.F.R. § 42.304(b)(1), Petitioner identifies the Challenged
Claims as follows: claims 1-16 of the ’402 Patent. Petitioner respectfully requests
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review under 35 U.S.C. § 321 and AIA § 18 of the Challenged Claims, and the
cancellation of those claims as unpatentable.
Independent claims 1, 5, 9, and 13 recite known components (e.g., reward
server, reward exchange computer, memory means, processing means,
communication means, web page) to facilitate a purchase by performing currency
conversion. Ex. 1001 at 12:37-13:31, 13:40-14:32, 14:41-15:39, and 15:48-16:49;
see also id. at Fig. 1; Ex. 1006, Chatterjee Dec., ¶¶ 31-32 and 39-40.
Claim 5, set forth in full in section IV.A above, recites means that perform
the functions of: (a) storing reward points of a first type; (b) communicating with a
user computer and a reward exchange computer that is storing a second type of
reward points; (c) providing a web page to allow a user to initiate communication
between reward server and reward exchange computer to exchange reward points;
(d) initiating communication to exchange reward points; (e) causing the reward
exchange computer to exchange the reward points from the first type to a second
type; (f) conveying consideration to the reward exchange computer for the
exchanged points; and (g) enabling the user to redeem the exchanged reward
points. See Ex. 1001 at 13:40-14:32; see also infra at § VI.C (identifying the
disclosed structure corresponding to the claimed means).
Independent claims 1, 9, and 13 are similar to claim 5 and recite similar
steps and/or functions but from different perspectives. See Ex. 1006, Chatterjee
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Dec., ¶¶ 39, 43. For example, claims 1 and 9 are also directed to the abstract idea
of transferring reward points, but instead of only reciting the functions/components
of the reward server – as claimed in claim 5 – these claims recite the functions
carried out by both the reward exchange computer and reward server during the
conversion of reward points. See Ex. 1001 at 12:37-13:31 and 14:41-15:39.
Independent claim 13 recites the means and functions performed by the means
within the reward exchange computer during conversion of reward points. See id.
at 15:48-16:49; see also infra at § VI.C (identifying the disclosed structure
corresponding to the claimed means). There is no meaningful distinction between
these claims as they are all directed to the abstract idea of currency conversion.
See Ex. 1006, Chatterjee Dec., ¶¶ 39, 43.
Dependent claims 2-4, 6-8, 10-12, and 14-16 all add just one of three
features as shown below:
Dependent Claims Claim Language
2, 6, 10, and 14 “wherein the control comprises a hyperlink or a button”
3, 7, 11, and 15 “wherein the reward account on the reward server computer is associated with a credit card reward program.”
4, 8, 12, and 16 “wherein the reward account on the reward server computer is associated with an airline reward program.”
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B. Statutory Grounds of Challenge
Pursuant to 37 C.F.R. § 42.304(b)(2), Petitioner identifies the specific
statutory grounds on which it challenges claims 1-16 of the ’402 Patent. Petitioner
respectfully requests that the Challenged Claims be cancelled under the following
grounds:
Ground 1: Claims 1-16 are unpatentable under 35 U.S.C. § 101 for being
directed to an abstract idea.
Ground 2: Claims 1-16 are invalid under 35 U.S.C. § 103 for being obvious
over Newslink in view of Storey and AAPA.
The claim constructions, reasons for unpatentability, and specific evidence
supporting this request are detailed below.
C. Person Having Ordinary Skill In The Art In 1999
“The ordinary and customary meaning of a claim term is the meaning that
the term would have to a person of ordinary skill in the art in question at the time
of the invention, i.e., as of the effective filing date of the patent application.”
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Here, the
’402 Patent claims a priority date in 1999. In 1999, a person of ordinary skill in
the art for the ’402 Patent would have a Bachelor’s degree in Electrical
Engineering, Computer Engineering, or Computer Science, or equivalent work
experience, and at least one to two years of experience designing or working with
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web interfaces and basic Internet communication protocols, or a person with a
Master’s Degree in Electrical Engineering, Computer Engineering, or Computer
Science (or related subjects). See Ex. 1006, Chatterjee Dec., ¶ 19.
D. Claim Construction
1. Broadest Reasonable Interpretation
In a CBM proceeding, a claim in an unexpired patent is to be given its
broadest reasonable construction in light of the specification in which it appears.
37 C.F.R. § 42.300(b); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.
1984). The ’402 Patent has not expired. Thus, claims 1-16 should be given their
broadest reasonable interpretation. The framework for claim construction in
district courts is different from the “broadest reasonable interpretation standard,”
and Petitioners reserve their rights to propose constructions in District Court based
on the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312-18
(Fed. Cir. 2005) (en banc).
The below constructions and the rationale are supported by the Declaration
of Dr. Sandeep Chatterjee, Ex. 1006, ¶¶ 60-61.
2. Means-Plus-Function Limitations
Claim limitations requiring construction use means-plus-function language
that “shall be construed to cover the corresponding structure . . . described in the
specification and equivalents thereof.” 35 U.S.C. § 112(6). In construing means-
plus-function limitations, the first step is determining whether § 112(6) applies to a
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particular term in a claim. Use of the term “means” followed by a functional
statement creates a rebuttable presumption that § 112(6) governs the term’s
construction. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir.
2008). The presumption is overcome only if the claim limitation further recites
sufficient structure for performing the described function in its entirety. Id. If
§ 112(6) applies, one next looks to the specification to identify the corresponding
structure that performs the recited function. See Medical Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Claims 5 and 13 recite means-plus-function limitations. As a general matter,
the only structures disclosed in the specification of the ’402 Patent are
conventional computers and servers that – as conceded in the ’402 Patent – were
part of the prior art. See e.g., Ex. 1001 at Fig. 1 and Fig. 4; Ex. 1006, Chatterjee
Dec., ¶ 60. For example, claim 5 is directed to “[a] reward server comprising . . .
,” (Ex.1001 at 13:40-41) and the ’402 Patent explicitly states that “[a]ny type of
reward server may also be used in this system” (id. 5:17-18) and that the reward
server “may be of any type of accessible server capable of holding data about a
user along with a corresponding earned value.” Id. at 5:44-47 (emphasis added);
see also Ex. 1006, Chatterjee Dec., ¶¶ 48-49. Thus, the structure for the means
claimed in claim 5 corresponds to generic components of “any type of accessible
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server.” See Ex. 1006, Chatterjee Dec., ¶ 60 (“Since the reward server is a generic
server, the components within the reward sever are also generic.”).
Claim 13 is directed to “A reward exchange computer comprising . . . .” Ex.
1001 at 15:48-50. The ’402 Patent does not explicitly disclose a “reward exchange
computer.” Instead, the ’402 Patent discloses a “trading server 20 [that] obtains
the reward points from reward servers 10, 12, 14, and allows the user to redeem
those reward points,” and the trading server 20 “conveys consideration to the
merchant computer 30 equivalent to the cost of the item.” Id. at 6:30-31 and 7:5-
46. Thus, the disclosed “trading server” in the specification corresponds to the
claimed “reward exchange computer” of claim 9 because it is performing the
functionality of converting reward points. No detailed structure, however, of the
trading server is depicted in the ’402 Patent. Like the structure of the reward
server, the ’402 Patent states that “[t]he trading server computer may be any type
of computer system that allows users to access the system in order to perform the
processes involved in this invention.” Id. at 5:58-61 (emphasis added). Thus, the
structure for the means claimed in claim 13 corresponds to generic components of
“any type of computer system.” See Ex. 1006, Chatterjee Dec., ¶ 60 (Since the
rewards exchange computer is a generic computer, the components within the
rewards exchange computer are also generic.).
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The charts below identify the disclosed structure corresponding to the
“means-plus-function” limitations of claims 5 and 13 and are supported by the
charts included in paragraph 60 of the Declaration of Dr. Sandeep Chatterjee. See
Ex. 1006, Chatterjee Dec., ¶ 60, pp. 23-26 (supporting the chart for claim 5) and
pp. 27-30 (supporting the chart for claim 13).
Claim 5 Limitations Corresponding Disclosure in the ’402 Patent
“memory means for storing a reward account”
“A user of this system may acquire and accumulate rewards through any prior art means such as shown on FIG. 1, which are then posted in a user's reward point account 52 that is accessible through the reward server computer 10.” Ex. 1001 at 5:23-26. (emphasis added) “The trading server computer 20 ‘obtains’ the reward points from a reward server 10, 12, 14 stored in the user’s account 52.” Id. at 6:29-31. (emphases added) See id. at Fig. 4, reference 52.
“communications means for communicating over a computer network with a user computer”
“With reference to FIG. 4, a plurality of reward server computers 10, 12, 14, a trading server 20, a merchant computer 30 and a user computer40 are shown in communication with a network 2. The network may comprise any type of communication process where computers may contact each other.” Id. at 5:10-14 (emphases added). “The trading server computer 20 is in communication through the network 2 with a user on a user computer 40 and is additionally able to connect to the reward server computers 10, 12, 14 through the network 2 in accordance with techniques well known in the art for Internet communications.” Id. at 5:26-21 (emphasis added).
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Claim 5 Limitations Corresponding Disclosure in the ’402 Patent
See id. at Fig. 4, references 2 and 10. “processing means” “Any type of reward server may also be used in this
system.” Id. at 5:17-18. “The reward server computers 10, 12, 14 may be of any type of accessible server capable of holding data. Id. at 5:44-47 (emphasis added)). “The processor of the reward server may perform actions that may allow or refuse the requested action. In another embodiment, the trading server processor may be granted direct authorization to modify the user's records in the reward server database without analysis by the processor of the reward server.” Id. at 9:5-10 (emphasis added). See id. at Fig. 4, reference 10.
Claim 13 Limitations Corresponding Disclosure in the ’402 Patent
“communication means for communicating over a computer network”
“The trading server computer may be any type of computer system that allows users to access the system in order to perform the processes involved in this invention.” Id. at 5:58-61 (emphasis added). “With reference to FIG. 4, a plurality of reward server computers 10, 12, 14, a trading server 20, a merchant computer 30 and a user computer40 are shown in communication with a network 2. The network may comprise any type of communication process where computers may contact each other.” Id. at 5:10-14 (emphases added). “The trading server computer 20 is in communication through the network 2 with a user on a user computer 40 and is additionally able to connect to the reward server computers 10, 12, 14 through the
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Claim 13 Limitations Corresponding Disclosure in the ’402 Patent
network 2 in accordance with techniques well known in the art for Internet communications.” Id. at 5:26-21 (emphasis added). “The trading server also has communications means to allow users to access the server and to allow the trading server to contact reward servers and processing means to interpret the rules and coordinate the contact to the respective reward servers.” Id. at 8:47-51. See id. at Fig. 5, reference 20 (“connection”).
“means for storing in a reward exchange account a second set of reward points of a second type earned by the user”
“In the preferred embodiment, the server has memory means for storing the user account information, user profiles and rules specified by the user, system, or merchant.” Id. at 8:45-47. “The trading server computer 20 increases the reward exchange account 54 associated with the user by the received number of points (step 620). The trading server computer 20 in turn, receives the consideration from the reward server computer 10.” Id. at 6:52-56 (emphasis added). See id. at Fig. 5, reference 54.
“processing means” “The trading server also has . . . processing means to interpret the rules and coordinate the contact to the respective reward servers. The processing means is adapted to allow the user to request and exchange consideration for rewards from reward servers. The processing means additionally is adapted to coordinate the exchange of consideration and increase or decrease the user exchange accounts stored in memory in response to actions performed by the user computer, reward server and merchants.” Id. at 8:47-58 (emphasis added).
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Claim 13 Limitations Corresponding Disclosure in the ’402 Patent
“The processor establishes a communication link with the reward server and a transaction request is sent to the processor of the reward server . . . . In another embodiment, the trading server processor may be granted direct authorization to modify the user’s records in the reward server database without analysis by the processor of the reward server.” Id. at 9:3-11 See id. at Fig. 5, reference 20 (“processor”).
3. “Consideration”
Independent claim 5 recites that “the reward server computer conveying
consideration to the reward exchange computer, the consideration having a value
equivalent to the quantity of reward points of the first type decreased from the
reward account on the reward server computer.” Ex. 1001 at 14:18-22; see also
similar recitations in claims 1 (id. at 13:17-21) and 9 (id. at 15:25-29). The ’402
Patent specification states that “the consideration corresponds to the number of
reward points decreased in the account of the reward server” (id. at 4:20-21); “the
consideration may be in the form of a monetary credit to an account” (id. at 6:49-
50); and “the consideration may be a direct transfer of points to an account
associated with the merchant” (id. at 7:40-42). Thus, the ’402 Patent discloses that
consideration may be conveyed as a monetary credit or as a transfer of points. The
’402 Patent also “basically treat[s] the points as cash consideration.” Id. at 10:19-
21 (emphasis added).
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Accordingly, using the broadest reasonable interpretation, the Board should
construe the term “consideration” to mean “monetary credit or points,” as would be
understood by a person of ordinary skill in the art in view of the specification and
the claims. Ex. 1006, Chatterjee Dec., ¶ 60. This construction is supported by the
examples of consideration provided in the ’402 Patent.
4. Additional Terms
Simple statement: Pursuant to the USPTO’s Office Patent Trial Practice
Guide, a party may provide “a simple statement that the claim terms are to be
given their broadest reasonable interpretation, as understood by one of ordinary
skill in the art and consistent with the disclosure.” See 77 Fed. Reg. at 48,764. In
accordance with this regulation, Petitioner submits that remaining claims terms are
to be given their the broadest reasonable interpretation, as understood by one of
ordinary skill in the art and consistent with the disclosure, and that the broadest
reasonable interpretation of these terms would be readily apparent to one of
ordinary skill in the art in view of the disclosure. Indeed, in a previous proceeding
for similar claims that also recited the conversion of reward points, the PTAB held
that a construction of similar terms was not necessary. See CBM2014-00095,
Paper 32, at 9 (“We do not find construction of these terms necessary for this
decision”).
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VII. THE CHALLENGED CLAIMS ARE UNPATENTABLE
A. Ground No. 1: The Challenged Claims Are Invalid Under 35 U.S.C. § 101
As an initial matter, the PTAB previously instituted review in two CBM
proceedings finding that it was more likely than not that claims directed to
conversion of reward points were invalid under 35 U.S.C. § 101. See Ex. 1002 at
6:42-7:26 (claim 1) and CBM2014-00096, Paper 23, at 21; see also Ex. 1003 at
9:59-10:27 (claim 32) and CBM2014-00095, Paper 32, at 23. For similar reasons
and for the reasons discussed below, claims 1-16 of the ’402 Patent are invalid
under 35 U.S.C. § 101.
Section 101 of the Patent Act defines patentable subject matter as “any new
and useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. In determining whether a
claim is directed to eligible subject matter, courts consider the claim as a whole
rather than evaluating elements separately. Diehr, 450 U.S. at 188. Although
§ 101 includes as eligible subject matter “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof,” the Supreme Court has repeatedly emphasized, “laws of nature, physical
phenomena, and abstract ideas” are “part of the storehouse of knowledge of all
men . . . free to all men and reserved exclusively to none.” Bilski, 561 U.S. at 602
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(quoting Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948))
(internal quotation marks omitted).
The Supreme Court’s decision in Alice reaffirmed the framework first
outlined in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.
Ct. 1289 (2012), used to “distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible applications of
those concepts.” See Alice, 134 S. Ct. at 2355.
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so,
we then ask, what else is there in the claims before us?
To answer that question, we consider the elements of
each claim both individually and as an ordered
combination to determine whether the additional
elements transform the nature of the claim into a patent-
eligible application. We have described step two of this
analysis as a search for an “inventive concept”—i.e., an
element or combination of elements that is sufficient to
ensure that the patent in practice amounts to significantly
more than a patent upon the ineligible concept itself.
Id. (emphasis omitted) (internal citations omitted) (internal quotation marks
omitted). Thus, the court must determine (1) if the patented technology touches
upon ineligible subject matter, and (2) whether there are sufficient inventive
elements such that the invention is “‘significantly more’ than a patent on an
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ineligible concept.” See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1255 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2355).
Mathematical calculations are a paradigmatic example of “abstract ideas” in
view of each of Benson, Bilski, Mayo, and Alice. See e.g., Gottschalk v. Benson,
409 U.S. 63, 65 (1972); Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1853). A
claim is not patent-eligible where it merely recites a law of nature or abstract idea
and adds additional steps that merely reflect routine, conventional activity of those
who work in the field. Mayo, 132 S. Ct. at 1298. The Supreme Court accordingly
has enforced “a bright-line prohibition against patenting . . . mathematical formulas
and the like,” let alone a simple calculation involving a ratio. Id. at 1303.1
1 In the wake of Alice, the Federal Circuit has repeatedly confirmed this principle.
See Content Extraction & Transmission LLC v. Wells-Fargo Bank, Nat’l Assoc.,
776 F.3d 1343, 1348 (Fed. Cir. 2014) (noting that “[t]here is no 'inventive concept'
in . . . perform[ing] well-understood, routine, and conventional activities
commonly used in industry”); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (“Although certain additional limitations, such as consulting an
activity log, add a degree of particularity, the concept embodied by the majority of
the limitations describes only the abstract idea of showing an advertisement before
delivering free content.”).
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Most notably, a recent decision applying Alice to invalidate claims
essentially the same as the Challenged Claim confirms the invalidity of claims 1-
16 under § 101. On September 3, 2014, Judge Bryson from the Court of Appeals
for the Federal Circuit, sitting by designation in the Eastern District of Texas, held
that claims directed to the conversion of one type of reward points into a second
type of reward points are invalid under Section 101, as such a conversion is a
simple calculation that can be done by humans. See Loyalty Conversion Sys. Corp.
v. Am. Airlines, Inc., No. 2:13-CV-655, 2014 WL 4364848, at *10 (E.D. Tex. Sept.
3, 2015). Specifically, Judge Bryson held that:
[t]hat core idea [of converting reward points of one
vendor into reward points of another] plainly would not
be patentable without more, as it is indistinguishable in
principle from the simple and familiar financial or
business operations that were at issue in Bilski and CLS
Bank, as well as similar financial operations at issue in
various Federal Circuit decisions in which the claims were
held to be invalid under section 101. If anything, the
conversion process at the core of the claims in this case
is simpler and more commonplace than some of the
methods held unpatentable in the cases cited above.
Loyalty Conversion, 2014 WL 4364848, at *8 (emphasis added) (internal citations
omitted).
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As in the Loyalty Conversion case, the patentee here “can fairly be said to
have claimed the unpatentable concept of currency exchange, as applied to the
exchange of currencies in the form of loyalty award credits of different vendors.”
Loyalty Conversion, 2014 WL 4364848, at *6; see also Exhibit 1002 at claim 1
and Exhibit 1003 at claim 31; Ex. 1006, Chatterjee Dec., ¶ 68. As Judge Bryson
eloquently stated:
[t]he exchange of one vendor’s loyalty award points for
another’s is not different in principle from any exchange
of monetary currencies that are not readily negotiable
outside of their country of origin. An exchange of
Belarusian rubles for Polish zùotys at the Polish–Belarus
border would be an example of such a currency
exchange, as would an exchange of Sheraton hotel award
points for miles in an American Airlines frequent flyer
account.
See Loyalty Conversion, 2014 WL 4364848, at *6, n.2.
Accordingly, as explained in detail below, the Challenged Claims are invalid
under 35 U. S. C. § 101.
1. The Challenged Claims Are Directed to the Abstract Idea of Currency Conversion
The first step of the Alice framework is to determine whether the claims at
issue are directed to an “abstract idea.” Here, all of the claims of the ’402 Patent
embody an abstract idea that is as old as commerce itself: currency conversion.
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Ex. 1001 at 12:36-16:57; Ex. 1006, Chatterjee Dec., ¶ 68. Currency conversion
has been a fundamental economic practice for centuries, and all of the claims of the
’402 Patent recite steps directed to this abstract idea. Accordingly, all meet the
first step in the Alice framework.
The Supreme Court has many times ruled that mathematical calculations,
even if they are innovative (which is not the case here), are unpatentable abstract
ideas. Benson, 409 U.S. at 72; Parker v Flook, 437 U.S. 584, 587-86 (1978); see
also Uniloc USA, Inc. v. Rackspace Hosting, Inc., 18 F. Supp. 3d 831, 837 (E.D.
Tex. 2013) (“[J]ust as in Benson, Claim 1 discloses a ‘procedure for solving a
given type of mathematical problem.’” (quoting Benson, 409 U.S. at 65)); see also
Clear with Computers v Dick’s Sporting Goods, Inc., 21 F. Supp. 3d 758, 761,
764-65 (E.D. Tex. 2014); see also OIP Techs., Inc. v. Amazon.com, Inc., No. C-12-
1233, 2012 WL 3985118, at *2, *16-17 (N.D. Cal. Sept. 11, 2012) (finding a
patent for “pricing a product for sale” invalid under Section 101 because it claimed
nothing more than “the calculation of a demand curve based on consumer response
to different price points,” and was “as abstract as Bilski’s patent.”).
The claimed “exchange” in representative claim 5 of the ’402 Patent is
nothing more than the simple application of a mathematical ratio to determine the
amount of currency that should be exchanged for a number of rewards points. Ex.
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1006, Chatterjee Dec., ¶ 82. Another way of looking at claim 5 is that it recites a
simple multiplication equation:
Currency A * Conversion Rate = Currency B.
In addition, claim recitations of “adding” reward points, “decreasing” reward
points, combining converted points to existing reward points, and/or “conveying
consideration,” also confirm that the claim recites nothing more than mathematical
steps of addition and subtraction or mental processes that can simply be performed
by a human. See Ex. 1001 at 13:40-14:32; see also Ex. 1006, Chatterjee Dec., ¶
82.
Independent claims 1, 9 and 13 likewise merely disclose the mathematical
equation for converting one type of reward point into another. See Ex. 1001 at
12:37-13:31, 14:41-15:39, and 15:48-16:49; Ex. 1006, Chatterjee Dec., ¶¶ 73-74.
Further, the dependent claims are no less abstract. All share the same underlying
idea to which the independent claims are directed. The dependent claims merely
add further steps and components in the pursuit of “currency conversion.” For
example, dependent claims 2, 6, 10 and 14 merely add the limitation that the
“control” for initiating the communication over the computer to exchange the
reward points “comprises a hyperlink or button;” dependent claims 3, 7, 11 and 15
merely add the limitation that the “the reward account on the reward server
computer is associated with a credit card reward program;” and dependent claims
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4, 8, 12 and 16 merely add the limitation that the “the reward account on the
reward server computer is associated with an airline reward program.” Ex. 1001 at
13:32-39, 14:33-40, 15:40-47, and 16:50-57; Ex. 1006, Chatterjee Dec., ¶ 84.
These limitations fail to add anything “significantly more” to the claims that would
render them patent eligible. See DDR Holdings, 773 F.3d at 1257 (subject matter
was patent-eligible in part because it was a “solution [] necessarily rooted in
computer technology in order to overcome a problem specifically arising in the
realm of computer networks.”); see also Ex. 1006, Chatterjee Dec., ¶ 84.
Here, there is no problem arising specifically in the realm of computer
networks that the alleged invention of the ’402 Patent solves. Currency conversion
occurred long before the advent of computers. See e.g., infra VII.B; see also Ex.
1006, Chatterjee Dec., ¶ 71. And the ’402 Patent does not purport to invent any
new computer technology that overcomes the technical limitations in prior
computer technology.
Moreover, Courts have long held that simple mathematical calculations are
not eligible for patent protection. See Digitech Image Techs., LLC v. Sigma Corp.,
No. 8:12-cv-1681-ODW(MRWx), 2013 WL 3947137, at *8 (C.D. Cal. July 31,
2013) (“‘[I]f a claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific purpose, the claimed
method is nonstatutory.’” (quoting Flook, 437 U.S. t 959)), aff'd sub nom.,
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Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014); see also Benson, 409 U.S. at 71–72, (merely implementing a mathematical
formula on a digital computer is not a patentable application); see also Digitech
Info. Sys. v. BMW Fin. Servs., 864 F. Supp. 2d 1289, 1297 (M.D. Fla. 2012), aff’d,
504 F. App’x 920 (Fed. Cir. 2013). Just last year, when invalidating essentially the
same claims as the Challenged Claims of the ’402 Patent, Judge Bryson held that
the “equivalent of a currency exchange as applied to loyalty award credits such as
airline frequent flyer miles or hotel loyalty award points . . . is not fundamentally
different from the kinds of commonplace financial transactions that were the
subjects of the Supreme Court’s recent decisions in Bilski . . . and Alice . . . .”
Loyalty Conversion, 2014 WL 4364848, at *5.
2. The Recitations of Generic Computer Elements in the Challenged Claims Does Not Transform the Abstract Idea Into a Patent-Eligible Invention
Because claims 1-16 are drawn to an abstract idea, they can satisfy § 101
only if they pass the second step of the two-step Alice framework by including
additional elements sufficient to “transform th[e] abstract idea into a patent-eligible
invention.” See Alice, 134 S. Ct. at 2357. The claims of the ’402 Patent fail to do
so. It is beyond dispute that “mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention,” nor can
recitation of “well-understood, routine, conventional activities” on a computer. Id.
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at 2358-59 (internal quotation marks omitted). See also Kroy IP Holdings, LLC v.
Safeway, Inc., No. 2-12-cv-800-WCB, 2015 WL 3452050, at *23-24 (E.D. Tex.
May 29, 2015) (holding claims directed to a system for providing incentive awards
to consumers were invalid under § 101 for being directed to an abstract idea and
the use of generic computers did not transform the claims into patentable subject
matter).
Here, all claims of the ’402 Patent merely recite generic and conventional
computer functionality for carrying out the abstract idea of currency conversion.
See e.g., Ex. 1001 at Fig. 4 and 13:40-14:32 (“memory means,” “communication
means,” and “processing means” where the corresponding structure of these means
is depicted in Fig. 4 as conventional computers that are no different than the
computers disclosed in Fig. 1 as “PRIOR ART”); see also Ex. 1006, Chatterjee
Dec., ¶¶ 69-70. Accordingly, all claims of the ’402 Patent fail to pass step two of
the Alice framework.
The Challenged Claims recite nothing more than “well-understood, routine,
conventional activity” associated with currency conversion. See Mayo, 132 S. Ct.
at 1294. Specifically, claim 5 recites several largely insignificant steps related to
currency conversion including: (a) storing reward points of a first type; (b)
communicating with a user computer and a reward exchange computer that is
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storing a second type of reward points; (c) providing a web page2 to allow a user to
initiate communication between reward server and reward exchange computer to
exchange reward points; (d) initiating communication to exchange reward points;
(e) causing the reward exchange computer to exchange the reward points from the
first type to a second type; (f) conveying consideration to the reward exchange
computer for the exchanged points; and (g) enabling the user to redeem the
exchanged reward points. See Ex. 1001 at 13:40-14:32; see also Ex. 1006,
Chatterjee Dec., ¶¶ 73-74. Independent claims 1, 9, and 13 are similar to claim 5
and recite similar steps and/or functions from different perspectives. See Ex. 1001
at 12:37-13:31, 14:41-15:39, and 15:48-16:49.
Indeed, all the recitations listed above add nothing more than generic
computer functionality and are not integral to the claimed invention. Ex. 1006,
Chatterjee Dec., ¶ 76. As noted above, the specification of the ’402 Patent
confirms that “any type of accessible server,” “any type of communication
process,” and/or “any type of computer system” may be used “in order to perform
2 The use of web pages and/or the Internet is also insufficient to confer
patentability. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011) (use of the Internet to verify credit-card transactions does not
add enough to the abstract idea of verification of transactions to avoid the bar of
section 101); see also Loyalty Conversion, supra.
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the processes involved in this invention.” See generally Ex. 1001 at 5:10-64; Ex.
1006, Chatterjee Dec., ¶¶ 69-70. Accordingly, there is nothing in the claim beyond
those routine and conventional activities that could confer patent eligibility.
Moreover, while claim 5 recites a reward server that includes “memory
means,” “communication means,” and “processing means,” no structure is
disclosed in the ’402 Patent other than generic computers that are no different than
the components depicted as “PRIOR ART” in Figure 1 of the ’402 Patent. Ex.
1006, Chatterjee Dec., ¶ 81. Indeed, the ’402 Patent explicitly states that the
reward server “may be of any type of accessible server capable of holding data
about a user along with a corresponding earned value that is negotiable for other
goods, services, or points of another system.” Ex. 1001 at 5:44-47 and Fig. 4
(emphasis added); Ex. 1006, Chatterjee Dec., ¶¶ 69-70. Thus, the corresponding
structure for the means is nothing more than components of any type of server,
which does not confer patent eligibility. See Intellectual Ventures I LLC v. Mfrs. &
Traders Trust Co., Civ. No. 13-1274-SLR, 2014 WL 7215193, at *8 (D. Del. Dec.
18, 2014) (“That the system of claim 1 at bar recites a “means for storing” and a
“means for presenting transaction summary data,” and claim 19 recites a “means
for listing,” does not change the analysis [under 35 U.S.C. § 101], as only generic
computers and components are disclosed in the specification.”); see also In re
Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (in analyzing means-plus-function
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claims, finding that “the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are
coextensive with the structure disclosed, i.e., a general purpose processor,” such
“functions can be achieved by any general purpose computer without special
programming”).
While claims 1, 5, 9, and 13 also recite storing data, communicating over a
network, and providing a web page, these steps are nothing more that generic
computing functions and do not make the otherwise unpatentable claim patentable.
See Dealertrack, Inc. v. Huber, 674 F. 3d 1315, 1334 (Fed. Cir. 2012) (a computer-
aided method claim with references to display device and terminal devices and
nothing more particular was found ineligible); Internet Patents Corp. v. Gen. Auto.
Ins. Servs., Inc., 429 F. Supp. 3d 1264, 1266, 1269 (N.D. Cal. 2013)(ruling that a
claim for providing “Dynamic Tabs for a Graphical User Interface” that includes
displaying icons on a web page was invalid under Section 101 because “[t]he
addition of a computer limitation does not transform the abstract idea into a
patentable invention.”); see also Intellectual Ventures I, 2014 WL 7215193, at *6-
8 (holding claims reciting “storing, in a database” and “causing communication” as
unpatentable). Further, these steps were well-known in the prior art. See Ex. 1001
at Figs. 1-2; see also Ex. 1005 at Figs.1-2; Ex. 1006, Chatterjee Dec., ¶ 81.
Moreover, as discussed above, none of the dependent claims recite or add
any elements or combinations of elements that add inventive concepts to the
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otherwise unpatentable concept of currency conversion. See supra at 41; Ex. 1006,
Chatterjee Dec., ¶ 81. For the claims of the ’402 Patent to be valid, the disclosed
computer must be “integral to the claimed invention, facilitating the process in a
way that a person making calculations or computations could not.” Intellectual
Ventures I, 2014 WL 7215193, at *4. “[A]ppending generic computer
functionality to lend speed or efficiency to the performance of an otherwise
abstract concept does not meaningfully limit claim scope for purposes of patent
eligibility.” CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013)
(en banc) (citing Bancorp Servs. L.L.C. v. SunLife Assurance Co., 687 F.3d 1266,
1278 (Fed. Cir. 2012)) (citing Dealertrack, 674 F.3d at 1333-34 (finding that the
claimed computer-aided clearinghouse process is a patent-ineligible abstract idea)),
aff’d, 134 S. Ct. 2347 (2014); see also SiRF Tech., Inc. v. ITC, 601 F.3d 1319,
1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a
meaningful limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than function solely as an
obvious mechanism for permitting a solution to be achieved more quickly, i.e.,
through the utilization of a computer for performing calculations.”); Accenture
Global Servs., GmbH v. Guideware Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
2013) (“simply implementing an abstract concept on a computer, without
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meaningful limitations to that concept, does not transform a patent-ineligible claim
into a patent-eligible one.”).
The ’402 Patent, however, does not provide any detail regarding the
hardware or structure of network 2, reward servers 10, 12, 14, trading server 20,
merchant computer 30, and/or user computer 40 disclosed in the claim other than
the fact that these components may be any type of computer systems. Ex. 1001 at
5:13-64; Ex. 1006, Chatterjee Dec., ¶¶ 75-76. The disclosure is limited to allowing
a user to buy goods or services by using reward points as currency, once converted
to the proper currency. There is no disclosure of a special purpose computer that is
used to perform the conversion.3 Ex. 1006, Chatterjee Dec., ¶¶ 69, 76-77. Nothing
in the ’402 Patent suggests that a computer is integral to the invention. Rather, the
computer is merely disclosed to provide generic computer functions of storing,
communicating, and/or providing a web page. Ex. 1006, Chatterjee Dec., ¶ 79
3 Such a conversion from one form of currency to another has been around for
years and is not a novel concept. In fact, a search for patents directed to currency
conversion on the website for the United States Patent and Trademark Office,
www.uspto.gov, reveals at least the following two such patents: U.S. Patent Nos.
3,083,906 (Ex. 1011) and 3,795,795 (Ex. 1012) (showing a 1963 and a 1974
apparatus including a slide-rule for currency conversion). Ex. 1006, Chatterjee
Dec., ¶ 71.
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3. The Basic Functions Disclosed in the Challenged Claims Can be Performed by Humans
Each of the steps disclosed in the Challenged Claims can be performed by
humans and the disclosed means are merely automating steps humans can, and
have, easily performed on their own for some time. See Ex. 1011, U.S. Patent Nos.
3,083,906 and Ex. 1012, 3,795,795 (showing a 1963 and a 1974 apparatus
including a slide-rule for currency conversion); Ex. 1006, Chatterjee Dec., ¶¶ 71,
83. The Federal Circuit has confirmed that “mental processes” – such as those in
Benson, Flook, Alice and the ’402 Patent – are not patentable, whether they are
completed manually, or require computer implementation. Bancorp, 687 F.3d at
1278. Further, Judge Bryson held in the Loyalty Conversion case, that:
[T]he basic functions of converting non-negotiable
loyalty award credits of one vendor into loyalty award
credits of a second vendor according to an agreed-upon
conversion rate, and then allowing the consumer to use
the converted loyalty award credits to make purchases
from the second vendor, are all functions that are readily
within the capacity of a human to perform without
computer aid.
Loyalty Conversion, 2014 WL 4364848, at *10 (emphasis added). As is clear from
the “means-plus-function” language of claim 5, the steps performed by the claimed
means could easily be performed by a human. Instead of a human performing the
conversion of currency and a user using the exchanged currency to buy goods,
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generic computer means are performing these functions. However, using a generic
computer to implement an abstract idea does not make claim 5 patentable. See
Clear With Computers, LLC v. Altec Inds., Nos. 6:14-cv-79, 6:14-cv-89, 2015 WL
993392, at *5 (E.D. Tex. Mar. 3, 2015) (“Although verbose, the claims as a whole
broadly recite a simple process which, in this case, does not require the type of
complex programming that confers patent eligibility. Importantly, the claims in no
way ‘purport to improve the functioning of the computer itself.’” (quoting Alice,
134 S.Ct. at 2359)).
Because the Challenged Claims are directed to an abstract idea and merely
recite generic computer functionality, the claims are invalid under 35 U.S.C. § 101.
B. Ground No. 2: The Challenged Claims are Invalid Under 35 U.S.C. § 103(a) as Being Obvious Over Newslink in view of Storey and AAPA
The U.S. Supreme Court decision in KSR International Co. v. Teleflex Inc.,
550 U.S. 398, 415-16 (2007) (“KSR”) held that patents that are based on new
combinations of elements or components already known in a technical field may
be found to be obvious. Specifically, the Court in KSR rejected a rigid application
of the “teaching, suggestion, or motivation [to combine]” test. Id. at 418-19. “In
determining whether the subject matter of a patent claim is obvious, neither the
particular motivation nor the avowed purpose of the patentee controls. What
matters is the objective reach of the claim.” Id. at 419-20. “Under the correct
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analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining the
elements in the manner claimed.” Id. at 420. In particular, the Supreme Court
emphasized the principle that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416. A key inquiry is whether the “improvement is more than the
predictable use of prior art elements according to their established function.” Id. at
417.
The rationale to combine or modify prior art references is significantly
stronger when the references seek to solve the same problem, come from the same
field and correspond well. In re Inland Steel Co., 265 F.3d 1354, 1362 (Fed. Cir.
2001) (allowing two references to be combined as invalidating art under similar
circumstances where the art “focus[ed] on the same problem . . . c[a]me from the
same field of art [and] . . . the identified problem found in the two references
correspond[ed] well”).
Newslink was published on October 18, 1995, and therefore qualifies as prior
art under 102(b). Storey was published on June 30, 1998, and therefore qualifies as
prior art under at least 102(a) and 102(e). AAPA qualifies as prior art in view of
Signature Systems’ concessions in the Background Section of the ’402 Patent. As
discussed in detail below, it would be obvious to one of ordinary skill in the art to
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combine these references because such a combination would have required routine
skills and would have yielded nothing more than predictable results. Ex. 1006,
Chatterjee Dec., ¶ 124.
Signature Systems concedes that the following features were well-known in
the art at the time of the filing of the ’402 Patent: (a) earning reward points for
purchasing goods and services; (b) storing reward points on a server; (c) accessing
web pages for viewing reward point balances; (d) accessing and viewing the
current balance of reward points by using a user computer to communicate with a
server of an airline over the Internet; and (e) redeeming the stored reward points
over the Internet. See Ex. 1001 at generally at Figs. 1-3 and corresponding
description at 1:39 to 3:25; see also Ex. 1006, Chatterjee Dec., ¶¶ 119-122.
Further, features related to the administration of reward programs over the internet
and redemption of points via web pages are disclosed in Storey. Ex. 1005,
Abstract; Ex. 1006, Chatterjee Dec., ¶¶ 114-116. Moreover, Newslink discloses
allowing users to exchange their Membership Rewards points into frequent flyer
miles. See Ex. 1004 at 3; see also Ex. 1006, Chatterjee Dec., ¶¶ 108-109. Thus, as
discussed fully below, the Challenged Claims of the ’402 Patent are obvious in
view of Newslink, Storey, and AAPA.
1. Newslink Teaches or Suggests Earning and Storing a First Set of Reward Points and a Second Set of Reward Points
Newslink discloses earning multiple types of reward points as required by
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independent claims 1, 5, 9, and 13. Ex. 1006, Chatterjee Dec., ¶¶ 125, 127. For
example, Newslink discloses: “MEMBERSHIP REWARDS, the new program
allows enrollees to earn one point for every dollar spent on eligible American
Express Cards® and Optima Cards.” Ex. 1004 at 1 (italics in original). Newslink
also discloses that “[f]rom Nov. 1 to Dec. 15, U.S. Membership Rewards enrollees
will earn double points when shopping at 20 of Membership Rewards retail and
gourmet partners.” Id. (italics in original). Thus, Newslink teaches “a first set of
rewards points of a first type previously earned by a user from a first reward
issuing entity as a result of a first transaction executed between the user and the
first reward issuing entity,” as recited in claim 5. See Ex. 1001 at 13:41-45; see
also similar recitations in independent claims 1 (id. at 12:39-46), 9 (id. at 14:43-
48), and 13 (id. at 15:51-55); Ex. 1006, Chatterjee Dec., ¶ 125.
Newslink further discloses that “these points don’t expire and there is no
limit to how many you can earn” (Ex. 1004 at 1) and that the “[m]inimum number
of points needed to transfer into most participating programs.” Id. at 3. One of
ordinary skill in the art would understand that by disclosing that the Membership
Rewards points do not expire and that they need to be accumulated to reach a
“minimum number,” Newslink is disclosing that these points are stored in an
account. Ex. 1006, Chatterjee Dec., ¶ 126. Without storage of points in an account,
there would be no accumulation where a minimum number of points would exist.
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Id. Thus, Newslink discloses “storing a reward account comprising a first set of
reward points of a first type . . . ,” as recited in claim 5. Ex. 1001 at 13:41-45; see
also similar recitations in independent claims 1 (id. at 12:39-46), 9 (id. at 14:43-
48), and 13 (id. at 15:51-55); Ex. 1006, Chatterjee Dec., ¶ 126.
With respect to the claimed “second set of reward points of a second type”
Newslink discloses “Airline Frequent Flyer and Hotel Frequent Guest Rewards”
(Ex. 1004 at 3 (italics in original)) and that “[t]o get free airline tickets and hotel
stays, you can transfer Membership Rewards points into any participating frequent
flyer or frequent guest program.” Id. (italics in original). Newslink further
provides a specific example of airlines with frequent flyer programs by explaining
that “Southwest Airlines and El Al Israel Airlines require points transfer in
increments of 1,250 and 1,050 respectively.” Id. at 3. Newslink also discloses that
these points are stored in a user account by stating that “[y]ou can transfer points in
increments of 1,000 to top off your existing airline or hotel account balances” (id.
at (emphasis added)). One of ordinary skill in the art would understand that by
disclosing that points are added into existing airline or hotel accounts, Newslink is
disclosing that these points are being stored in an account. Ex. 1006, Chatterjee
Dec., ¶¶ 127-128.
By teaching frequent flyer programs and hotel reward points, Newslink also
teaches “a reward exchange computer that stores in a reward exchange account a
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second set of reward points of a second type . . . ,” as recited in claim 5. Ex. 1001
at 13:46-53; see also similar recitations in independent claims 1 (id. at 12:47-52), 9
(id. at 14:49-54), and 13 (id. at 15:56-16:2); Ex. 1006, Chatterjee Dec., ¶¶ 127-128.
Thus, Newslink discloses earning and storing a first set of reward points
(Membership Rewards points issued by AMEX) and a second set of reward points
by a different entity (frequent flyer miles or hotel points issued by airlines or
hotels, respectively). Ex. 1006, Chatterjee Dec., ¶¶ 125-128.
2. Newslink Teaches or Suggests Converting Reward Points Based on a Conversion Rate
Newslink also discloses the conversion of points, as required by independent
claims of the ’402 Patent. Ex. 1006, Chatterjee Dec., ¶ 129. For example,
Newslink discloses “[t]ransferring points into participating airline or hotel
programs.” Ex. 1004 at 3. Newslink further discloses that “you can transfer
Membership Rewards points into any participating frequent flyer or frequent guest
program . . . [such that y]ou can transfer points in increments of 1,000 to top off
your existing airline or hotel account balances.” Id. at 3 (italics in orginal).
Moreover, Newslink provides a specific example of converting Membership
Reward points into frequent flyer miles by disclosing that “Southwest Airlines and
El Al Israel Airlines require points transfer in increments of 1,250 and 1,050
respectively.” Id.
While Newslink does not explicitly disclose the use of a “conversion ratio,”
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one of ordinary skill in the art would understand that any exchange of Membership
Reward points to frequent flyer miles would require a ratio to determine the
number of points that will need to be added into the account of the user. Ex. 1006,
Chatterjee Dec., ¶ 130. For example, even if one Membership Reward point
equaled one hotel point, one of ordinary skill in the art would understand that the
applicable ratio for the conversion is 1:1. Id.
Further, as additionally explained by Dr. Chatterjee, by disclosing that
10,000 Membership Rewards points may be redeemed for a three-day car rental
from Hertz or for a “$200 gift Certificate” from Timberland, “one of ordinary skill
would understand that there are different ratios that have been negotiated between
AMEX and Hertz and AMEX and Timberland.” Ex. 1006, Chatterjee Dec., ¶ 131;
see also Ex. 1004 at 3. Such a disclosure in Newslink suggests that disclosed ratio
for conversion between Timberland and AMEX is 1 point to 0.02 cents, and the
disclosed ratio for conversion between AMEX and Hertz is 10,000 points to the
value of a three-day car rental. Ex. 1006, Chatterjee Dec., ¶ 131.
Dr. Chatterjee also explains that Newslink suggests that the ratio for
conversion from Membership Rewards points to Southwest frequent miles “would
be understood to be a multiple of 1/1250, and the conversion ratio between AMEX
and El Al Israel Airlines would be a multiple of 1/1050” because Newslink
discloses that Southwest Airlines requires AMEX Points to be transferred in
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increments of 1,250 and El Al Israel Airlines requires AMEX Points to be
transferred in increments of 1,050. Ex. 1006, Chatterjee Dec., ¶ 132; see also Ex.
1004 at 3.
Moreover, one of ordinary skill would understand that the disclosure in
Newslink of conversion to Hilton points and/or Continental miles (Ex. 1004 at 1
and 3) suggests that AMEX will negotiate different ratios with Hilton and
Continental based on the values that these entities associate with their reward
points/miles. Ex. 1006, Chatterjee Dec., ¶ 133. This is because “Hilton will attach
a value to its hotel points that is different than the value that Continental will attach
to its miles.” Id.
Thus, Newslink discloses to “convert the quantity of reward points of the
first type decreased from the reward account on the reward serer computer into a
corresponding amount of reward points of the second type at a predetermined
reward server conversion rate,” as recited in claim 5. Ex. 1001 at at 14:5-9; see
also similar recitations in independent claims 1 (id. at 13:5-9), 9 (id. at 15:12-16),
and 13 (id. at 16:28-32).
3. Newslink Teaches or Suggests Decreasing Points and Adding and Combining Converted Points With Existing Points of the Second Type
Newslink also teaches the steps decreasing, adding, and combining reward
points, as required by the independent claims. For example, independent claims 1,
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5, 9, and 13 recite the following steps that appear to occur when there is a
conversion of reward points:
decreasing the quantity of reward points . . .
add the corresponding amount of reward points of
the second type to the reward exchange account, and
combine the corresponding amount of reward
points of the second type added to the reward exchange
account with the . . . reward points of the second type
previously stored in the reward exchange account.
Ex. 1001 at 14:1-17; see also similar recitations in independent claims 1 (id. at
13:1-16), 9 (id. at 14:19-24), and 13 (id. at 16:24-40). These steps merely require
that points be reduced from one account and be added to another account – steps
that will be understood to be part of the transfer disclosed in Newslink. Ex. 1006,
Chatterjee Dec., ¶ 135.
For example, Newslink discloses that “[y]ou can transfer points in
increments of 1,000 to top off your existing airline or hotel account balances . . . .
Or you can transfer the entire amount of points needed for the desired reward” and
that 1,000 is the “Minimum number of points needed to transfer into most
participating programs.” See Ex. 1004 at 3. One of ordinary skill in the art would
understand that the plain and ordinary meaning of “transfer” is to “to convey from
one person, place, or situation to another.” See Merriam-Webster dictionary
definition of “transfer” (Ex. 1017 at 1); see also Ex. 1006, Chatterjee Dec., ¶ 136.
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By disclosing a “transfer,” Newslink provides that the Membership Rewards points
are being moved from the user’s Membership Rewards’ Account to a frequent
flyer or hotel account. Ex. 1006, Chatterjee Dec., ¶ 136. This movement will
result in the points being decreased in the Membership Rewards’ Account and the
points being increased and combined with the existing points in the frequent flyer
or hotel account. Id. If the Membership Rewards points were not decreased after a
transfer, the customer would have a never-ending balance of points. Id.
Finally, Newslink explicitly discloses “adding” points into a second account
and “combining” the points in the second account by stating that “[y]ou can
transfer points in increments of 1,000 to top off your existing airline or hotel
account balances” and “[p]lease allow two weeks for transfers of points into
international airline programs.” Ex. 1004 at 3 (emphases added); Ex. 1006,
Chatterjee Dec., ¶ 137. Thus, Newslink also discloses these features of claims 1, 5,
9, and 13.
4. Newslink Teaches or Suggests Redemption of Converted Reward Points
Newslink discloses the step of redeeming the converted reward points by
explaining that “[t]o get free airline tickets and hotel stays, you can transfer
Membership Rewards points into any participating frequent flyer or frequent guest
program. Before you call to transfer, be sure to confirm the availability of your
desired reward . . . . Or you can transfer the entire amount of points needed for
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the desired reward.” Ex. 1004 at 3 (emphases added, italics in original).
Accordingly, Newslink discloses the redemption steps recited in independent
claims 1, 5, 9, and 13. See Ex. 1001 at 13:22-31, 14:23-32, 15:30-39, 16:41-49;
see also Ex. 1006, Chatterjee Dec., ¶ 138.
5. Newslink Teaches or Suggests Conveying Consideration Corresponding to the Converted Points
Newslink also suggests the conveyance of consideration based on the
converted reward points because Newslink discloses that AMEX was in a
partnership with various airlines (e.g., Continental and Delta) and hotels that
allowed users to transfer their Membership Rewards points to reward points of
these “partners.” Ex. 1004 at 1-3. One of ordinary skill in the art would
understand that it would be obvious that any “partnership” between AMEX and
participating airlines or hotels would involve a contract and/or agreement. Ex.
1006, Chatterjee Dec., ¶ 139. Further, one of ordinary skill in the art would
understand that any valid and enforceable contract requires a conveyance of
consideration. See Restatement (Second) of Contracts § 17 (1) (1981) (Ex. 1018)
(emphasis added) (“the formation of a contract requires a bargain in which there is
a manifestation of mutual assent to the exchange and a consideration.”). Thus, in
accordance with the basic tenets of contract law, it would be obvious to one of
ordinary skill in the art that any transaction of transferring points between AMEX
and the participating partners would require a conveyance of consideration based
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on the number of points that are transferred. Ex. 1006, Chatterjee Dec., ¶ 139.
Further, in its 10-K report filed with the Security and Exchange Commission
(SEC) on February 24, 1997 (Ex. 1013), Continental acknowledged that frequent
flyer miles are accounted for as a liability: “Continental sponsors a frequent flyer
program (“OnePass”) and records an estimated liability for the incremental cost
associated with providing the related free transportation at the time a free travel
award is earned. The liability is adjusted periodically based on awards earned,
awards redeemed and changes in the OnePass program.” Ex. 1013 at 54
(emphases added); see also Continental’s 10-K Report dated March 20, 1998 at 50
(Ex. 1014) (“Continental sponsors a frequent flyer program (“OnePass”) and
records an estimated liability . . . .”). Delta Air Lines also described reward points
as a liability in its SEC filings. See Delta Air Lines 10-K Report dated September
30, 1996 at 8 (Ex. 1015) (“Delta accounts for its frequent flyer program obligations
by recording the . . . the potential flight awards as a liability . . .”); see also similar
language in Delta Air Lines 10-K Report dated September 27, 1999 at 11 (Ex.
1016). Similarly, both Continental and Delta Air Lines acknowledged in these
SEC filings that they receive consideration from their partners because they sell
their frequent flier miles to their partners. See Ex. 1013 at 54 (“The Company also
sells mileage credits to participating partners . . . , such as credit card
companies. The resulting revenue . . . is recorded as other operating revenue”); see
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also Ex. 1016 at 78 (“Delta also sells mileage credits to participating partners . . .
such as . . . credit card companies, and recognizes the resulting revenue as other
operating revenue at the time of sale.”).
Accordingly, it would be obvious to one of ordinary skill in the art that
Newslink discloses the conveyance of consideration from AMEX to its partners
(e.g., Continental and Delta) in exchange for the transferred points. Ex. 1004 at 3;
see also Ex. 1006, Chatterjee Dec., ¶¶ 140-145. This is because one of ordinary
skill in the art would understand that AMEX’s partners would only agree to take
on this additional liability of transferred points if AMEX would convey
consideration to them that compensates them for this additional liability. Id. at ¶
145. Indeed, one of ordinary skill in the art would understand that such a
conveyance of consideration would be obvious because – as evidenced by SEC
filings – companies view frequent flier miles as liabilities and companies generate
revenue by selling their miles to their partners. See id. See also Exs. 1013-1016
(describing AMEX’s disclosed partners in Newslink (Continental and Delta Air
Lines) receiving consideration by selling frequent flier miles to credit card
companies).
Thus, while Newslink does not explicitly disclose conveying consideration, it
would be obvious to one of ordinary skill in the art that Newslink suggests
“conveying consideration to the reward exchange computer, the consideration
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having a value equivalent to the quantity of reward points of the first type
decreased from the reward account on the reward server computer,” as recited in
claim 5. Ex. 1001 at 14:18-22; see also similar recitations in claims 1 (13:17-21)
and 9 (15:25-29). Such a recitation would be obvious because: (a) a contract
between AMEX and its partners would require exchange of consideration; and/or
(2) reward points are considered a liability and AMEX’s partners would only be
willing to acquire additional liability if AMEX was willing to compensate them for
the additional liability. Ex. 1006, Chatterjee Dec., ¶¶ 140-145.
6. Newslink in Combination With Storey and AAPA Teaches Conversion of Points Via a Web Page
Newslink discloses that a user may transfer their Membership Rewards
points to frequent flyer mile by calling “Membership Rewards at 1-800-AXP-
EARN (297-3276).” Ex. 1004 at 3. Independent claims 1, 5, 9, and 13 recite that
the conversion of reward points is performed using a web page. Ex. 1001 at 12:37-
13:31, 13:40-14:32, 14:41-15:39, and 15:48-16:49. Further, claims 1, 5, 9, and 13
also recite additional components such as “a reward exchange computer,” “a
reward server computer,” and/or “a user computer,” that communicate to perform
the conversion.
While Newslink discloses performing the same steps via a telephone and
does not explicitly disclose the claimed “server” and “computers,” one of ordinary
skill in the art would understand that it would be obvious to perform the tasks
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disclosed in Newslink over the Internet. Ex. 1006, Chatterjee Dec., ¶ 146. Such a
modification would require the use of basic computer components such as servers
and computers, which is insufficient to overcome the prior art. Id. at ¶ 147. This is
at least because “[p]roviding an automatic or mechanical means to replace a
manual activity that accomplishes the same result is also obvious and not sufficient
to distinguish over the prior art.” See McKesson Automation, 2009 WL 3648455,
at *26 (citing In re Venner, 262 F.2d at 95); see also M.P.E.P. § 2144.04 at III.
Further, one of ordinary skill in the art would understand that performing the
steps disclosed in Newslink on the Internet – instead of over the phone – would
have been obvious because all the claimed elements (e.g., web page, server,
computer) were known in the prior art and one skilled in the art could have
combined the elements as claimed by known methods with no change in their
respective functions, and the combination would have yielded nothing more than
predictable results to one of ordinary skill in the art. See Ex. 1006, Chatterjee
Dec., ¶ 147; see also KSR, 550 U.S. at 416. Mere incorporation of web pages
and/or routine Internet technology into well-known techniques has been held to be
obvious as a matter of law. See Soverain Software LLC v. Newegg Inc., 705 F.3d
1333, 1344 (Fed. Cir.), amended on reh’g, 728 F.3d 1332 (Fed. Cir. 2013),; see
also Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326-27 (Fed. Cir.
2008) (concluding that claims which added a web browser to a prior art electronic
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system were obvious as a matter of law).
Indeed, the ’402 Patent itself concedes that the claimed computers
components are nothing more than conventional and generic computers such that
“[a]ny type of reward server” (Ex. 1001 at 5:17-18); the “any type of
communication process” (id. at 5:13-14); “[t]he trading server computer may be
any type of computer system” (id. at 5:58-61); the claimed web page “is
representative of any site” (id. at 5:31-34 (emphasis added)); and that “the user
may freely navigate to any site by means well known in the art.” Id. at 5:61-64
(emphasis added); Ex. 1006, Chatterjee Dec., ¶ 48.
Thus, it would be obvious to one of ordinary skill in the art to use general
purpose computers to perform the transfer function disclosed in Newslink online.
Ex. 1006, Chatterjee Dec., ¶ 148. One of ordinary skill in art would be motivated
to implement such a system as it would increase customer satisfaction for AMEX’s
customers by providing them the option of transferring points online. Ex. 1006,
Chatterjee Dec., ¶ 149. In addition, such a modification would reduce the costs of
AMEX with respect to hiring people in call centers to facilitate transfers via
telephone. Id. Further, such a modification would also allow AMEX the ability to
generate additional revenue from customers by placing online advertisements on
their Membership Rewards webpage. Id.
To the extent that the PTAB determines that such a modification would not
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be obvious in view of Newslink alone, Storey and AAPA disclose these features.
For example, Storey discloses a “fully integrated on-line frequency award program
. . . [where t]he program also calculates award points, updates the award account of
enrolled users, and communicates that number of awarded points to the user.
Enrolled users may browse through an award catalog and electronically redeem an
amount of awarded points towards an award.” Ex. 1005 at Abstract. Thus, Storey
discloses a rewards program where the user can accumulate rewards, view his
account online, and redeem the points online as well. Id. at Fig. 1, 2:16-27, 5:51-
63, 9:45-67.4
Similarly, AAPA discloses that “user computers” and servers storing reward
points, such as “airline servers” were well-known before the filing of the ’402
Patent. Ex. 1001 at Fig. 1. For example, AAPA discloses that “a system whereby
the user can make purchase of products over the Internet and receive award points,
which are stored in an associated database” was prior art to the ’402 Patent. Ex.
1001 at 1:59-62. AAPA also discloses that using prior art systems “[b]onus miles
4 While Storey was discussed in the specification of the ’402 Patent, there is no
indication in the prosecution history that the Examiner applied or considered
Storey prior to allowing the ’402 Patent. Moreover, the PTAB has the benefit of
considering Storey as a secondary reference in combination with Newslink, which
the Examiner did not consider prior to allowing the ’402 Patent.
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or points may additionally be accumulated based on the user’s actions in response
to offers made by the airline . . . [and that the] user can view accumulated miles by
accessing the airline server. Id. at Figs. 1, 3, and 2:66-3:25.
Thus, it would be obvious to modify Newslink with the teachings of Storey
and AAPA to enable users to perform the transfer of Membership Reward points –
as disclosed in Newslink – online. Ex. 1006, Chatterjee Dec., ¶ 152. Such a
modification of Newslink would have been obvious to make because all the
claimed elements (e.g., web pages, server, and computer) were known in the prior
art and one skilled in the art could have combined the elements as claimed by
known methods with no change in their respective functions, and the combination
would have yielded nothing more than predictable results to one of ordinary skill in
the art. Ex. 1006, Chatterjee Dec., ¶¶ 152-153. This combination would have had
the same advantages for AMEX as discussed above with respect to modifications
in view of Newslink alone.
Moreover, a combination of Newslink with AAPA and Storey would be
proper because “[a] statement by an applicant in the specification . . . identifying
the work of another as ‘prior art’ is an admission which can be relied upon for both
anticipation and obviousness determinations.” See Constant v. Advanced Micro-
Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that
something is in the prior art is binding on the applicant and patentee for
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determinations of anticipation and obviousness”); see also Riverwood Int’l Corp. v.
R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003); In re Nomiya, 509 F.2d
566, 571, (C.C.P.A. 1975) (holding applicant’s labeling of two figures in the
application drawings as “prior art” to be an admission that what was pictured was
“‛prior art’ for any purposes”); M.P.E.P. § 2129.
7. Claim Chart for the Challenged Claims And Newslink, Storey, and AAPA
A claim chart disclosing each and every element of the Challenged Claims
in Newslink, Storey, and AAPA is included below.
’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA 1. A computer-implemented method for earning, exchanging and redeeming reward points comprising the steps of: 1a) a user earning a first set of reward points of a first type from a first reward issuing entity as a result of a first transaction executed between the user and the first reward issuing entity; 1b) a reward server computer associated with the first reward issuing entity storing
Newslink “MEMBERSHIP REWARDS, the new program allows enrollees to earn one point for every dollar spend on eligible American Express Cards® and Optima Cards.” Ex. 1004 at 1 (italics in original). “these points don’t expire and there is no limit to how many you can earn.” Id. “Minimum number of points needed to transfer into most participating programs.” Id. at 3. “Airline Frequent Flyer and Hotel Frequent Guest Rewards.” Id. at 3 (italics in original). “To get free airline tickets and hotel stays, you can transfer Membership Rewards points into any participating frequent flyer or frequent guest program.” Id. (italics in original) “Southwest Airlines and El Al Israel Airlines require points transfer in increments of 1,250 and 1,050
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’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA the first set of reward points of the first type in a reward account on the reward server computer; 1c) a reward exchange computer storing in a reward exchange account a second set of reward points of a second type earned by the user as a result of a second transaction executed between the user and a second reward issuing entity which is different from the first reward issuing entity;
respectively.” Id. Storey “In FREQUENCY DATABASE 170 the user’s information is checked against the database of enrolled users . . . . Thereafter the program proceeds to add the points to the enrolled user's account, 200, and display the account information and the added points to the user, 210.” Ex. 1005, 5:39-47 (emphases added). AAPA “The ’870 patent provides a system whereby the user can make purchase of products over the Internet and receive award points, which are stored in an associated database. The user can subsequently view an award catalog to determine which awards he may be able to redeem based on the number of points in his account.” Ex. 1001 at 1:59-64 (emphasis added). “ClickMiles may be awarded for a purchase of Gap products at the Gap web site. The ClickMiles can ultimately be redeemed for frequent flyer miles, for example at one of several major airlines.” Id. at 2:7-10. “With regard to FIG. 1, a model of the frequent flyer systems of the prior art is presented. Two different airlines servers are shown surrounded by their related marketing partners.” Id. at 2:53-55 (emphasis added). “FIG. 3 is representative of a typical user account that shows various earnings . . . . The user can view the accumulated miles by accessing the airline server.” Id. at 3:16-25; see also id. at Fig. 1, reference 100 (“User Accounts”). See supra at §§ VII.B.1 and VII.B.6; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 66-68.
1d) the reward server computer providing a web page to a user computer, the web page
Storey “In FIG. 1, 10 indicates access via an on-line provider such as AOL™, CompuServe™ etc . . . . Upon gaining an access to the internet, 30, the program proceeds to a
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’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA comprising a control for initiating communication over a computer network between the reward server computer and the reward exchange computer;
selection menu 40. Depending on the user's choice, from the selection menu 40 the program may proceed to PRODUCT A HOMEPAGE 100A or PROGRAM HOMEPAGE 300.” Ex. 1005, 2:56-63. “An [sic] fully integrated on-line frequency award program is disclosed. A user may access the program on-line and may browse a product catalog for shopping . . . . . Enrolled users may browse through an award catalog and electronically redeem an amount of awarded points towards an award. The program then electronically places an award redeeming order with the fulfillment house and updates the user's award account.” Id. at Abstract (emphases added). “In the preferred embodiment, the user may enter the REDEEM routine 500 at any point in the program . . . . Thus, only the identification code may be required if on-line access was gained via an on-line provider . . . the user may be prompted to verify that this is the correct award he wished to redeem and enter appropriate selections, such as color, size, etc . . . . A link is then established to the fulfillment house or directly to the product manufacturer and an award order is communicated.” Id. at 9:45-10:5 (emphases added). AAPA “The ’870 patent provides a system whereby the user can make purchase of products over the Internet and receive award points, which are stored in an associated database. The user can subsequently view an award catalog to determine which awards he may be able to redeem based on the number of points in his account.” Ex. 1001 at 1:59-64 (emphases added). “FIG. 3 is representative of a typical user account that shows various earnings in the system transferred in from any of the co-branded partners . . . . The user can view the accumulated miles by accessing the airline server.”
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’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA Id. at 3:16-25 (emphasis added). See supra at § VII.B.6; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 68-70.
1e) the reward server computer receiving from the user operating the user computer a selection of the control from the web page and, in response, initiating communication over the computer network with the reward exchange computer to exchange a quantity of reward points of the first type, designated by the user operating the user computer, from the reward account on the reward server computer into reward points of the second type for adding to the reward exchange account on the reward exchange computer by:
1f) decreasing the quantity of reward points of the first type designated by the user from the reward account on the reward server computer, causing the reward exchange computer to
Newslink “Transferring points into participating airline or hotel programs.” Ex. 1004 at 3. “[Y]ou can transfer Membership Rewards points into any participating frequent flyer or frequent guest program . . . You can transfer points in increments of 1,000 to top off your existing airline or hotel account balances.” Id. (emphases added, italics in original). “Southwest Airlines and El Al Israel Airlines require points transfer in increments of 1,250 and 1,050 respectively.” Id. Storey “In FIG. 1, 10 indicates access via an on-line provider such as AOL™, CompuServe™ etc. On the other hand, 20 indicates a direct access to the internet, such as via Netscape™. Upon gaining an access to the internet, 30, the program proceeds to a selection menu 40. Depending on the user's choice, from the selection menu 40 the program may proceed to PRODUCT A HOMEPAGE 100A or PROGRAM HOMEPAGE 300.” Ex. 1005, 2:56-63. “An [sic] fully integrated on-line frequency award program is disclosed. A user may access the program on-line and may browse a product catalog for shopping . . . . . Enrolled users may browse through an award catalog and electronically redeem an amount of awarded points towards an award. The program then electronically places an award redeeming order with the fulfillment house and updates the user’s award account.” Id. at Abstract (emphases added).
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’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA 1g) convert the quantity of reward points of the first type deceased from the reward account on the reward server computer into a corresponding amount of reward points of the second type at a predetermined reward server conversion rate, 1h) add the corresponding amount of reward points of the second type to the reward exchange account, and 1i) combine the corresponding amount of reward points of the second type added to the reward exchange account with the second set of reward points of the second type previously stored in the reward exchange account, and
“In the preferred embodiment, the user may enter the REDEEM routine 500 at any point in the program . . . . Thus, only the identification code may be required if on-line access was gained via an on-line provider . . . the user may be prompted to verify that this is the correct award he wished to redeem and enter appropriate selections, such as color, size, etc . . . The proper amount of points is then subtracted from the user's account and an adjustment is made in the frequency database, 520. A link is then established to the fulfillment house or directly to the product manufacturer and an award order is communicated.” Id. at 9:45-10:5 (emphases added). AAPA “The ’870 patent provides a system whereby the user can make purchase of products over the Internet and receive award points, which are stored in an associated database.” Ex. 1001 at 1:59-64 (emphases added). “FIG. 3 is representative of a typical user account that shows various earnings in the system transferred in from any of the co-branded partners . . . . The user can view the accumulated miles by accessing the airline server.” Id. at 3:16-25 (emphasis added). See also id. at Fig. 1 “User Accounts” in Server 100 and “User Computer” and Fig. 3 “Miles” See supra at §§ VII.B.2, VII.B.3, VII.B.6; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 70-72.
1j) conveying consideration to the reward exchange computer, the consideration having a value equivalent to the quantity of reward points of the first type
Newslink “[Y]ou can transfer Membership Rewards points into any participating frequent flyer or frequent guest program . . . You can transfer points in increments of 1,000 to top off your existing airline or hotel account balances.* Or you can transfer the entire amount of points needed for the desired reward.” Ex. 1004 at 3 (emphases added,
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’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA decreased from the reward account on the reward server computer;
italics in original).
“Southwest Airlines and El Al Israel Airlines require points transfer in increments of 1,250 and 1,050 respectively.” Id.; see also id. (“REWARDS AT A GLANCE”)
See supra at VII.B.5; see also Ex. 1006, Chatterjee Dec., ¶ 155, p. 73
1k) the user requesting the reward exchange computer to redeem at least some of the combined reward points of the second type from the reward exchange account for an item selected by the user; and 1l) the reward exchange computer redeeming the requested combined reward points of the second type from the reward exchange account by decreasing the reward exchange account by the combined reward points of the second type requested to be redeemed by the user for the item selected by the user.
Newslink “To get free airline tickets and hotel stays, you can transfer Membership Rewards points into any participating frequent flyer or frequent guest program. Before you call to transfer, be sure to confirm the availability of your desired reward with the airline or hotel . . . . Or you can transfer the entire amount of points needed for the desired reward.” Ex. 1004 at 3 (emphases added, italics in original). Storey “An [sic] fully integrated on-line frequency award program is disclosed . . . . Enrolled users may browse through an award catalog and electronically redeem an amount of awarded points towards an award. The program then electronically places an award redeeming order with the fulfillment house and updates the user’s award account.” Ex. 1005 at Abstract (emphasis added). “In the preferred embodiment, the user may enter the REDEEM routine 500 at any point in the program. In FIG. 4 this feature is represented by the several REDEEM 500 selections depicted at many points of the program . . . . Otherwise, the user may simply be prompted to enter the award by, for example, an award code . . . . The proper amount of points is then subtracted from the user's account and an adjustment is made in the frequency database, 520. A link is then established to the fulfillment house or directly to the product manufacturer and an award order is
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’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA communicated.” Id. at 9:45-10:5 (emphasis added). AAPA “The user can subsequently view an award catalog to determine which awards he may be able to redeem based on the number of points in his account.” Ex. 1001 at 1:59-64 (emphasis added). “ClickMiles may be awarded for a purchase of Gap products at the Gap web site. The ClickMiles can ultimately be redeemed for frequent flyer miles, for example at one of several major airlines.” Id. at 2:7-10. See supra at VII.B.4; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 73-74.
Claim 2
2. The method of claim 1 wherein the control comprises a hyperlink or a button.
Storey “In FIG. 1, 10 indicates access via an on-line provider such as AOL™, CompuServe™ etc. On the other hand, 20 indicates a direct access to the internet, such as via Netscape™. Upon gaining an access to the internet, 30, the program proceeds to a selection menu 40. Depending on the user's choice, from the selection menu 40 the program may proceed to PRODUCT A HOMEPAGE 100A or PROGRAM HOMEPAGE 300.” Ex. 1005, 2:56-63. “In the preferred embodiment, the user may enter the REDEEM routine 500 at any point in the program . . . the user may be prompted to verify that this is the correct award he wished to redeem and enter appropriate selections, such as color, size, etc. Otherwise, the user may simply be prompted to enter the award by, for example, an award code . . . . A link is then established . . . and an award order is communicated.” Id. at 9:45-10:5 (emphases added). AAPA
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’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA “FIG. 3 is representative of a typical user account that shows various earnings in the system transferred in from any of the co-branded partners . . . . The user can view the accumulated miles by accessing the airline server.” Id. at 3:16-25 (emphasis added). See supra at § VII.B.6; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 73-75.
Claims 3 and 4
3. The method of claim 1 wherein the reward account on the reward server computer is associated with a credit card reward program. 4. The method of claim 1 wherein the reward account on the reward server computer is associated with an airline reward program.
Newslink “MEMBERSHIP REWARDS, the new program allows enrollees to earn one point for every dollar spend on eligible American Express Cards® and Optima Cards.” Ex. 1004 at 1 (italics in original). “Before you call to transfer, be sure to confirm the availability of your desired reward with the airline or hotel. You can transfer points in increments of 1,000 to top off your existing airline or hotel account balances.” Ex. 1004 at 3 (emphases added). AAPA “The user can view the accumulated miles by accessing the airline server.” Ex. 1001 at 3:16-25 (emphasis added); see also id. at Fig. 1 “Airline 1” server 100. See Ex. 1006, Chatterjee Dec., ¶ 155, pp. 76-77.
Claim 5 5. A reward server comprising: 5a) “memory means for storing . . . a first set of reward points of a first type . . .” 5b) “communications means for communicating . . . with a user computer . . . that stores in a reward exchange account a second set of reward . . .” See supra claim 1a), 1b), 1c) and 1d) at 70-71; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 77-80. 5c) “processing means programmed to: provide a web page . . . comprising a control for initiating communication . . . with the reward exchange computer” See supra claim 1d at 71-73; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 80-82. 5d) “initiate . . . communication . . . to exchange a quantity of reward points of the first type . . . into reward points of the second type . . . ” 5e) “decreasing the quantity of reward points of the first type . . . from the reward account . . .”
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’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA 5f) “convert the quantity of reward points of the first type . . . . into a corresponding amount of reward points of the second type . . . , add the corresponding amount of reward . . . , and” 5g) “combine the corresponding amount of reward points of the second type . . . with the second set of reward points of the second type . . . .” See supra claim 1e), 1f), 1g), 1h), and 1i) at 73-74; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 82-84. 5h) “conveying consideration to the reward exchange computer . . . equivalent to the quantity of reward points of the first type . . . .” See supra claim 1j) at 74-75; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 84-85.5i) “whereby . . . the reward exchange computer is able to redeem the requested combined reward . . .” See supra claim 1k) and 1l) at 75-76; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 85-86.
Claims 6, 7, and 8 See supra claims 2, 3, and 4, respectively at 76-77; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 86-89. Claim 9 9. “A computer-implemented method . . . comprising the steps of:” 9a) “a reward server computer . . . storing . . . a first set of reward points . . . ;” 9b) “a reward exchange computer storing . . . a second set of reward points . . .” See supra claim 1a), 1b), and 1c) at 70-71; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 89-91. 9c) “the reward exchange computer providing to a user computer a display of a number of the reward points of the first type . . . and a control to . . . designate a quantity of the reward points of the first type to be exchanged . . . ” See supra claim 1d) at 71-73; see also Ex. 1001 at Figs. 1 and 3 and 3:21-23; Ex. 1006, Chatterjee Dec., ¶ 155, pp. 91-93. 9d) “the reward exchange computer receiving an instruction . . . from the user computer that designates the quantity of reward points . . . be exchanged . . .” 9e) “the reward exchange computer exchanging . . . reward points of the first type . . . into reward points of the second type” 9f) “causing the reward server computer to decrease the designated quantity of reward points . . . ,” 9g) “converting the quantity of reward points of the first type . . . into a . . . second type . . . , and” 9h) “combining the corresponding amount of reward points . . .” See supra claim 1e), 1f), 1g), 1h), and 1i) at 73-74; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 93-95. 9i) “the reward server computer conveying consideration . . . having a value equivalent to the quantity of reward points of the first type decreased from the reward account on the reward server computer”
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’402 Patent Claims Exemplary Disclosure in Newslink, Storey, and AAPA See supra claim 1j) at 74-75; see also Ex. 1006, Chatterjee Dec., ¶ 155, p. 95. 9j) “the user requesting . . . to redeem . . . the combined reward points . . . redeeming the requested combined reward points of the second type . . .” See supra claim 1k) and 1l) at 75-76; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 95-96.
Claims 10, 11, and 12 See supra claims 2, 3, and 4, respectively at pp. 76-77; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 96-99.
Claim 13 13. “A rewards exchange computer comprising” 13a) “communications means for communicating . . . and a reward server computer that stores . . . a first set of reward points . . . ;” 13b) “means for storing in a reward exchange account a second set of reward points of a second type . . .” See supra claim 1a), 1b), 1c) and 1d) at 70-71; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 99-102. 13c) “processing means programmed to . . . display of a number of the reward points of the first type . . . and a control . . . to designate a quantity of the reward points of the first type to be exchanged . . .” See supra claim 1d) at 71-73; see also Ex. 1001 at Figs. 1 and 3 and 3:21-23; Ex. 1006, Chatterjee Dec., ¶ 155, pp. 102-104. 13d) “receive an instruction from the user computer . . . for adding . . . ” 13e) “exchange the designated quantity of reward points of the first type . . . into reward points of the second type . . .” 13f) “causing the reward server computer to decrease the designed quantity of reward points of the first type . . . ,” 13g) “converting . . . , adding the corresponding amount of reward points . . . and” 13h) “combining the corresponding amount of reward points . . .” See supra claim 1e), 1f), 1g), 1h), and 1i) at 73-74; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 104-106. 13i) “receive from the user computer a request to redeem . . . redeem the requested combined reward points of the second type . . . for the item selected by the user.” See supra claim 1k) and 1l) at 75-76; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 106-107.
Claims 14, 15, and 16See supra claims 2, 3, and 4, respectively at 76-77; see also Ex. 1006, Chatterjee Dec., ¶ 155, pp. 107-110.
Thus, the Challenged Claims should be canceled for being invalid under 35
U.S.C. § 103 as being obvious over Newslink, Storey, and AAPA.
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VIII. CONCLUSION
Petitioner have established a reasonable likelihood that the Challenged
Claims are invalid under at least one or more of 35 U.S.C. §§ 101 and 103.
Petitioners therefore respectfully request that a post-grant review of these claims be
instituted, and that the Challenged Claims be held unpatentable. The required fees
in the amount of $30,550.00 were submitted on June 12, 2015. If there are any
additional fees due in connection with the filing of this paper, please charge the
required fees to our Deposit Account No. 130019.
Respectfully submitted, Date: June 12, 2015
/Saqib J. Siddiqui/___________ Saqib J. Siddiqui (Lead Counsel) Registration No. 68,626 Mayer Brown, LLP 1999 K Street N.W. Washington, DC 20006-1101 Telephone: (202) 263-3167 Fax: (202) 263-5367 Email: [email protected]
Stephen E. Baskin (Backup Counsel pro hac vice motion requested) Mayer Brown, LLP 1999 K Street N.W. Washington, DC 20006-1101 Telephone: (202) 263-3364 Fax: (202) 263-3300 Email: [email protected]
Counsel for Petitioners American Express Company and American Express Travel Related Services Company, Inc.
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CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
The undersigned hereby certifies that the above-captioned “Petition for
Covered Business Method Patent Review of U.S. Patent No. 8,423,402 Under 35
U.S.C. § 321 and § 18 of the Leahy-Smith America Invents Act,” including its
supporting evidence (EXHIBITS 1001-1019), was served in its entirety on June
12, 2015, upon the attorneys of record for the patent at the following addresses via
USPS Express Mail:
Anthony Barkume Anthony Natoli
Barkume & Associates, P.C. 20 Gateway Lane
Manorville, NY 11949
Respectfully submitted, /Saqib J. Siddiqui/ Saqib J. Siddiqui Registration No. 68,626 Mayer Brown, LLP 1999 K Street N.W. Washington, DC 20006-1101 Telephone: (202) 263-3167 Fax: (202) 263-5367 Email: [email protected]
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ADDITIONAL SERVICE INFORMATION
Further, the undersigned hereby certifies that a courtesy copy the above-
captioned “Petition for Covered Business Method Patent Review of U.S. Patent
No. 8,423,402 Under 35 U.S.C. § 321 and § 18 of the Leahy-Smith America
Invents Act,” including its supporting evidence (EXHIBITS 1001-1019), was
served in its entirety on June 12, 2015, upon the attorneys of record in related
matters in the Southern District of Florida at the following email addresses via
Electronic Mail:
Steven E. Brust Edward A. Pennington
Smith, Gambrell & Russell, LLP [email protected]
Respectfully submitted, /Saqib J. Siddiqui/ Saqib J. Siddiqui Registration No. 68,626 Mayer Brown, LLP 1999 K Street N.W. Washington, DC 20006-1101 Telephone: (202) 263-3167 Fax: (202) 263-5367 Email: [email protected]
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