Askeladden LLCv.Sean McGhie

Patent Trial and Appeal Board

Apr 6, 2016

13532342 (P.T.A.B. Apr. 6, 2016)

Trials@uspto.gov Paper 52
571-272-7822 Entered: April 6, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ASKELADDEN LLC,
Petitioner,

v.

SEAN I. MCGHIE and BRIAN K. BUCHHEIT,
Patent Owner.
____________

Case IPR2015-00137
Patent 8,297,502 B1
____________

Before SALLY C. MEDLEY, JONI Y. CHANG, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
shown by a preponderance of the evidence that claims 1–30 of U.S. Patent
No. 8,297,502 B1 are unpatentable.
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A. Procedural History
Petitioner, Askeladden LLC,1 filed a Petition requesting an inter
partes review of claims 1–30 of U.S. Patent No. 8,297,502 B1 (Ex. 1001,
“the ’502 patent”). Paper 1 (“Pet.”). Patent Owner, Sean I. McGhie and
Brian K. Buchheit,2 filed a Preliminary Response. Paper 10 (“Prelim.
Resp.”). Upon consideration of the Petition and Preliminary Response, we
instituted an inter partes review of claims 1–30, pursuant to 35 U.S.C. §
314. Paper 31 (“Dec.”).
In the Scheduling Order, which sets times for taking action in this
proceeding, we notified the parties that “any arguments for patentability not
raised in the [Patent Owner] response will be deemed waived.”3 Patent

1 The Real Parties-in-Interest includes The Clearing House Payments
Company. See Paper 33.
2 Patent Owner is represented by inventor Brian Buchheit, who is an attorney
and registered to practice before the Office. At times during the proceeding,
Mr. Buchheit indicated that he was representing “Patent Owner”
(Mr. Buchheit and Mr. McGhie), while at other times Mr. Buchheit indicated
that he was not representing Mr. McGhie, but rather acting pro se. Papers 4,
34, 46; Ex. 2059. Over the course of the proceeding, we have provided
instructions to Patent Owner on filing papers, authorized Patent Owner leave
to refile papers and file papers beyond due dates, and expunged other Patent
Owner papers that were not authorized, not in compliance with Board rules,
and/or contained arguments beyond what was authorized. See, e.g., Papers
8, 9, 34 (and Exhibit 3001), 35, and 46.
3 See Paper 32, 3; see also Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,766 (Aug. 14, 2012) (a patent owner’s “response should identify
all the involved claims that are believed to be patentable and state the basis
for that belief”).
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Owner, however, did not file a Patent Owner Response within the time
period set forth in the Scheduling Order. To ensure clarity in our record, we
required Patent Owner to file a paper, indicating whether it had abandoned
the contest.4 Paper 47. Patent Owner indicated that it had not abandoned
the contest. Paper 50. Patent Owner did not seek authorization to belatedly
file a Patent Owner Response, nor indicate that it wished to file such a
Response. We have before us, therefore, the Petition with no Patent Owner
Response. Nonetheless, Petitioner bears the burden to show, by a
preponderance of the evidence, that the challenged claims are unpatentable.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–30 of the ’502 patent are
unpatentable.
B. Related Matter
The ’502 patent also is involved in IPR2015-00133. A final written
decision in IPR2015-00133 is entered concurrently with this decision.

4 An abandonment of the contest is construed as a request for adverse
judgment. 37 C.F.R. § 42.73(b)(4). A request for adverse judgment, on
behalf of a Patent Owner, would result in the cancellation of the involved
claims of a challenged patent, e.g., without consideration of the Petition, etc.
On the other hand, when a Patent Owner does not abandon the contest, but
chooses not to file a Patent Owner Response, the Board generally will render
a final written decision, e.g., based on consideration of the Petition, etc. See
37 C.F.R. § 42.71(a).
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C. The ’502 Patent
The ’502 patent relates generally to consumer reward or loyalty
programs. Ex. 1001, 1:17–2:11. According to the ’502 patent, entities
(e.g., airlines or credit card companies) often reward consumers, for utilizing
their services, with non-negotiable credits, such as frequent flier miles,
consumer loyalty points, and entertainment credits. Id. at 1:20–22, 7:16–17.
The ’502 patent discloses a graphical user interface for customers to convert
non-negotiable credits into entity independent funds that can be used as
payment for goods or services provided by a commerce partner. Id. at
Abstract, 2:32–65.
D. Illustrative Claim
Claims 1, 9, 17, and 25 are independent. Claims 2–8 depend from
claim 1; claims 10–16 depend from claim 9; claims 18–24 depend from
claim 17; and claims 26–30 depend from claim 25.
Claim 1, reproduced below, is illustrative of the challenged claims.
1. A method comprising:
a computer presenting a graphical user interface (GUI) on
a display, said graphical user interface showing a quantity of
non-negotiable credits earned through previous interactions with
an entity, the graphical user interface comprising a conversion
option to convert at least a subset of the shown non-negotiable
credits into entity independent funds in accordance with a
conversion ratio, wherein the entity independent funds are
accepted by a commerce partner as at least partial payment for
goods or services provided by the commerce partner, wherein the
commerce partner is not said entity, wherein in absence of
converting the non-negotiable credits into entity independent
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funds the commerce partner does not accept the non-negotiable
credits as payment for goods or services provided by the
commerce partner;
the computer receiving a selection of the conversion
option; and
responsive to the received selection being processed, the
computer presenting within the graphical user interface a
quantity of available entity independent funds for use as payment
for the goods or services provided by the commerce partner, said
quantity of available entity independent funds resulting from
converting the subset of non-negotiable credits into the quantity
of available entity independent funds in accordance with the
conversion ratio.
Ex. 1001, 6:22–48.
E. Prior Art Relied Upon
Petitioner relies upon the following prior art references:
Postrel US 2005/0021399 A1 Jan. 27, 2005 (Ex. 1003)
MacLean US 2002/0143614 A1 Oct. 3, 2002 (Ex. 1004)
Sakakibara US 6,721,743 B1 Apr. 13, 2004 (Ex. 1005)
F. Instituted Grounds of Unpatentability
We instituted this trial based on the following grounds:
Claims Basis References
1, 4–10, 12–17, and
20–30 § 103(a) Postrel and Sakakibara
2, 3, 11, 18, and 19 § 103(a) Postrel, Sakakibara, and MacLean
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II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
reasonable interpretation standard, claim terms are given their ordinary and
customary meaning as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner proposes constructions for the following claim terms:
“entity,” “non-negotiable credits,” and “entity independent funds,” which are
recited at least in independent claims 1, 9, 17, and 25. Pet. 6–8. In our
Decision to Institute, we adopted Petitioner’s proposed constructions
because we determined that those constructions are consistent with the
broadest reasonable construction. Dec. 5. Neither party has indicated that
our constructions are improper and we do not perceive any reason or
evidence that now compels any deviation from our initial constructions.
Accordingly, the following claim constructions apply to this Decision:
Claim Term Construction
Entity an organization that has a rewards program for a consumer
non-negotiable credits credits which are accepted only by the granting entity of the credits
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Claim Term Construction
entity independent
funds
funds acceptable as payment by at least one entity
different from the original granting entity of the
non-negotiable credits

B. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. A prima
facie case of obviousness is established when the prior art itself would
appear to have suggested the claimed subject matter to a person of ordinary
skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
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The level of ordinary skill in the art is reflected by the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
579 F.2d 86, 91 (CCPA 1978).
C. Obviousness of Claims over Postrel and Sakakibara
Petitioner asserts that claims 1, 4–10, 12–17, and 20–30 are
unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
Postrel and Sakakibara. Pet. 14–49. To support its contentions, Petitioner
provides claim charts and detailed explanations as to how the combination of
prior art meets each claim limitation. Id. Petitioner also directs our attention
to a Declaration of Mr. Matthew Calman. Ex. 1002.
Upon review of Petitioner’s contentions and supporting evidence, we
are persuaded by Petitioner’s showing, and adopt it as our own, that the
combination of Postrel and Sakakibara teaches or suggests all of the
limitations of claims 1, 4–10, 12–17, and 20–30, and renders the claimed
subject matter as a whole obvious. Pet. 14–49. In our discussion below, we
provide a brief summary of Postrel and Sakakibara, and then we address
certain claim limitations in detail as examples.
Postrel
Postrel discloses a system that has a graphical user interface, in which
a user may redeem reward or loyalty points earned with a merchant, or may
redeem the points with another merchant through an exchange network.
Ex. 1003, Abstract. The user additionally may aggregate reward or loyalty
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points from various merchants into a central exchange account, and then
redeem the post-converted points for goods or services from any approved
merchant on the network. Id. ¶¶ 10, 45–50. In short, Postrel’s system
integrates a user interface for exchanging and redeeming loyalty points with
an e-commerce interface. Id.
Sakakibara
Sakakibara describes a point managing system that provides a
web-based user interface, allowing a customer to convert the loyalty points
of a first business entity into those of a second business entity in accordance
with an exchange rate. Ex. 1005, 1:57–2:5, 7:7–10, Fig. 9. Sakakibara
discloses that, prior to conversion, the first entity’s loyalty points are
redeemable only at the first entity, and the second entity does not accept the
points issued from the first entity, as payment for the second entity’s goods
or services. Id. at 12:64–13:30. In short, the first entity’s loyalty points,
prior to conversion, are non-negotiable.
Graphical user interface for converting non-negotiable credits
Each of independent claims 1, 9, 17, and 25 requires a graphical user
interface for converting non-negotiable credits into entity independent funds;
and the claims require that, in absence of conversion, “the commerce partner
does not accept the non-negotiable credits as payment for goods or services
provided by the commerce partner.” See, e.g., Ex. 1001, 6:35–37, 7:38–41.
In addition, claims 7, 15, 23, and 28 require that the entity independent funds
to be negotiable funds, and claims 8, 16, 24, and 29 require that the entity
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independent funds to be loyalty points of the commerce partner. See, e.g.,
id. at 7:18–22, 8:14–18.
Upon review of the prior art and evidence in this record, we agree
with Petitioner’s findings, and adopt them as our own, that the combination
of Postrel and Sakakibara discloses the aforementioned “graphical user
interface” limitations. Pet. 15–49. For instance, Petitioner sufficiently
shows that Postrel discloses a system having a graphical user interface (a
web site) for converting loyalty points issued from various merchants into
loyalty points of a commerce partner in accordance with exchange rates. Id.
at 15–16 (citing Ex. 1003 ¶¶ 43, 45, 47, 49). Indeed, Postrel’s graphical user
interface allows a user to convert his non-negotiable loyalty points into
points for an exchange account based on an agreed upon exchange rate (i.e.,
conversion ration) and fee structure, where “the actual exchange rate and fee
structure may be set amongst the merchants [e.g., Smith Pizzeria] and the
exchange server operator [e.g., VISA].” Ex. 1003 ¶ 45. As Petitioner notes,
Postrel’s aggregated loyalty points in the exchange account are entity
independent funds because they can be redeemed for goods or services from
any approved merchant or from a catalog provided by a credit card company
(i.e., from a commerce partner). Pet. 16; Ex. 1003 ¶¶ 43, 45, 47, 49;
Ex. 1002 ¶¶ 61–67, 105–107, 138–142, 173–177.
We observe that Postrel also recognizes that, absent an exchange
system, redeeming loyalty points is restricted to goods or services of the
entity that issued the points. Ex. 1003 ¶¶ 5, 41. Petitioner notes that
Sakakibara discloses the concept that, absent conversion, loyalty points are
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non-negotiable credits. Pet. 17–18 (citing Ex. 1005, 12:64–13:30). We are
persuaded by Petitioner’s explanation that it was known in the art that
loyalty points, prior to conversion, are non-negotiable credits, as evidenced
by Sakakibara. See Ex. 1005, 12:64–13:30. This is consistent with the
description in the ’502 patent regarding the state of the art at the time of the
invention, which indicates that “[e]ntities often reward consumers for
utilizing their services with non-negotiable credits, such as frequent flier
miles, consumer loyalty points, and entertainment credits.” Ex. 1001, 1:20–
24 (emphases added).
Based on the evidence in this record, we agree with Petitioner’s
reasoning, which is supported by the unrebutted testimony of Mr. Calman,
and adopt it as our own, that one with ordinary skill in the art would have
recognized that, in light of Sakakibara, Postrel’s loyalty points, prior to
conversion, would have been accepted only by the merchant that issued
those points (i.e., non-negotiable), and would not have been accepted by
others as payment for their goods or services. Pet. 18; Ex. 1002 ¶¶ 56–57,
97–97, 132–133, and 167–168. We further determine that Petitioner has
demonstrated by a preponderance of the evidence that the combination
would have rendered the aforementioned “graphical user interface”
limitations obvious.
Reward points from a credit card company
Each of claims 6, 14, 22, and 27 recites “wherein the non-negotiable
credits are reward points from a credit card company, which is the entity.”
See, e.g., Ex. 1001, 7:14–17. We agree with Petitioner’s findings, which are
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supported by Mr. Calman’s unrebutted testimony, and adopt them as our
own, that Postrel discloses this limitation. See Pet. 25, 33, 40, 47–48 (citing
Ex. 1002 ¶¶ 82–84, 117–18, 152–53, 180–81; Ex. 1003 ¶ 35). Mr. Calman
testifies that Postrel describes a network of loyalty programs that includes a
credit card reward program. Ex. 1002 ¶ 84 (citing Ex. 1003 ¶¶ 35, 59–60).
Indeed, Postrel describes that some banks have their own reward point
programs (e.g., MasterCard). Ex. 1003 ¶ 35. Postrel also expressly states
that the “reward server computer may be a credit card reward program such
as offered by American Express where the user earns rewards based on
purchases.” Id. ¶ 59. Postrel further discloses that the credit card reward
server computer maintains user’s earned rewards acquired through the credit
card program. Id. ¶ 61, Fig. 4.
Given the evidence in this record, we are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that the combination of
Postrel and Sakakibara would have rendered the aforementioned “credit card
company” limitation obvious.
E-commerce interface
Each of claims 4, 12, 20, and 26 recites “wherein the graphical user
interface is an e-commerce interface through which goods or services
provided by the commerce partner are able to be purchased.” See, e.g.,
Ex. 1001, 7:3–6. Claims 6, 14, 22, and 27 require the interface to include an
on-line shopping web site, and claims 5, 13, 21, and 30 require the interface
to provide payment options, including paying using a credit card or the
points converted from non-negotiable credits. See, e.g., id. at 7:9–17.
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Upon consideration of the prior art disclosures and evidence before
us, we agree with Petitioner’s findings, which are supported by
Mr. Calman’s unrebutted testimony, and adopt them as our own, that the
combination of Postrel and Sakakibara discloses the aforementioned
“e-commerce interface” limitations. Pet. 24–25, 31–33, 39–40, 47–49
(citing Ex. 1002 ¶¶ 76–81, 112–16, 147–48). For example, Petitioner notes
that Postrel discloses an e-commerce interface (a web site) that provides on-
line shopping capabilities (e.g., in the form of a VISA catalog), in which a
customer may purchase the commerce partner’s goods or services with
different payment options, including paying with a credit card or loyalty
points. Id. (citing Ex. 1003 ¶¶ 26, 49, 50, 71). As Petitioner explains, the
customer may select an item from a catalog of items provided in conjunction
with the central exchange account. Id. at 24 (citing Ex. 1003 ¶ 49). Indeed,
in that VISA example disclosed in Postrel, the user interface for exchanging
and redeeming points is provided by a VISA central exchange server that
also provides the interface for making a purchase transaction. Ex. 1003
¶¶ 43, 49. Postrel describes that the exchange server allows a user to view
his loyalty points, manage the exchange of points, and execute purchase
transactions with his aggregated loyalty points on a web page. Id. ¶¶ 43, 50
(“Once the points have been aggregated by the purchaser, he may make a
purchase transaction . . . with aggregated points only, with points and credit,
etc. . . . over a web site.”).
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In view of the foregoing, we determine that Petitioner has shown by a
preponderance of the evidence that the combination of Postrel and
Sakakibara would have rendered the “e-commerce interface” limitations
obvious.
Additional claim limitations
Petitioner relies on Postrel in combination with Sakakibara, along
with Mr. Calman’s unrebutted testimony, to meet other limitations recited in
claims 1, 4–10, 12–17, and 20–30. Pet. 14–49; Ex. 1002. Based on the
evidence in this record, we agree with Petitioner’s showing, and adopt it as
our own, that Postrel in combination with Sakakibara discloses the
additional limitations of claims 1, 4–10, 12–17, and 20–30, and renders the
claimed subject matter as a whole obvious.
Conclusion on obviousness of claims over Postrel and Sakakibara
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 1, 4–10, 12–
17, and 20–30 are unpatentable over the combination of Postrel and
Sakakibara.
D. Obviousness of Claims over Postrel, Sakakibara, and MacLean
Petitioner asserts that claims 2, 3, 11, 18, and 19 are unpatentable
under 35 U.S.C. § 103(a) as obvious over the combination of Postrel,
Sakakibara, and MacLean. Pet. 49–58. To support its contentions,
Petitioner provides claim charts and detailed explanations as to how the
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combination of prior art meets each claim limitation. Id. Petitioner also
directs attention to a Declaration of Mr. Calman. Ex. 1002.
Upon review of the prior art disclosures and Petitioner’s supporting
evidence, we are persuaded by Petitioner’s showing, and adopt it as our own,
that the combination of Postrel, Sakakibara, and MacLean discloses all of
the limitations of claims 2, 3, 11, 18, and 19, and renders the claimed subject
matter as a whole obvious. Pet. 30–58. In our discussion below, we provide
a brief summary of MacLean5, and then we address certain limitations as
examples.
MacLean
MacLean describes a system and method for managing and
exchanging reward or loyalty points. Ex. 1004 ¶¶ 1, 4. The Background
Section of MacLean discusses a number of existing web services for
converting the points from a single loyalty program for negotiable credits.
Ex. 1004 ¶¶ 2–12. MacLean also discloses a number of specific
embodiments to provide additional improvements to those services by
allowing users to accumulate or convert the points from various loyalty
programs into those of a single program. Id. ¶ 41.

5 A brief summary of Postrel and Sakakibara has been provided previously
in our obviousness analysis based on Postrel and Sakakibara.
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Figure 1 of MacLean is reproduced below.

As shown in Figure 1 of MacLean, point management system 100
facilitates interactions between customer 110, transaction center 120, and
issuers 130a–c. Id. ¶ 40. The system provides a graphical user interface,
enabling a customer to exchange reward points from one loyalty program to
those of another loyalty program in accordance with an exchange rate. Id.
¶¶ 27, 41. Alternatively, the customer may exchange points issued by
various loyalty programs into those of a single program, and redeem the
post-converted points for the goods or services offered by that single
program. Id.
Presenting a second quantity of non-negotiable credits
Claims 2, 11, and 18 require presenting a second quality of
non-negotiable credits, which represents an amount of non-negotiable credits
available after converting into entity independent funds. See, e.g., Ex. 1001,
6:49–56. In regard to this limitation, we agree with Petitioner’s findings,
and adopt them as our own, that the combination of Postrel, Sakakibara, and
MacLean discloses this limitation. Pet. 50–52. For example, Petitioner
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notes that Postrel describes a central exchange server that obtains loyalty
points information from the various databases and accounts, generates a web
page to display the account totals to the user, and updates records indicating
the changes and current value of user exchange accounts. Id. at 50; Ex. 1003
¶¶ 43, 69. Petitioner also explains that MacLean describes a graphical user
interface, displaying a second quantity of non-negotiable credits (values
“850,000” listed under element 656) in Figure 6F, which remain after a
subset of credits (e.g., 644a and 644b from Figure 6E) are converted into
entity independent funds (e.g., “5,001” and “3,334”). Pet. 51; Ex. 1004,
Figs. 6E, 6F.
Moreover, Mr. Calman testifies that one of ordinary skill in the art
would have included the remaining balance of merchant loyalty points after
a conversion in Postrel’s web page, in light of MacLean, so that the
customer viewing such remaining balance knows how many merchant
loyalty points remain and can plan upcoming transactions based on the
up-to-date quantity of loyalty points (non-negotiable credits). Ex. 1002
¶¶ 69–71, 111, 144. We give Mr. Calman’s testimony substantial weight in
that regard as it is supported by the prior art disclosures and what the
disclosures would have conveyed to one with ordinary skill in the art at the
time of the invention. See, e.g., Ex. 1003 ¶¶ 43, 69; Ex. 1004, Figs. 6E, 6F.
Based on the evidence before us, we determine that Petitioner has
demonstrated by a preponderance of the evidence that the combination of
Postrel, Sakakibara, and MacLean would render claims 2, 11, and 18
obvious.
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Confirmation selector
Claims 3 and 19 require a confirmation selector. Ex. 1001, 6:61–62;
8:62–64. Upon review of the prior art disclosures and evidence before us,
we agree with Petitioner’s findings, which are supported by Mr. Calman’s
unrebutted testimony, and adopt them as our own, that the combination of
Postrel, Sakakibara, and MacLean discloses the aforementioned limitations
of claims 3 and 19. Pet. 52–55, 57–58. For instance, Petitioner points out
that MacLean describes a graphical user interface (web pages) that allows a
user to convert loyalty points, confirm the exchange selection, and review
the balance. Id. (citing Ex. 1004 ¶ 52, Figs. 6E, 6H). Indeed, MacLean
discloses that, in response to the user’s exchange selection, the system
processes the selection to effectuate changes in the web pages. Ex. 1004
¶ 52. Importantly, after the user clicks “continue xchange” button 648
(shown in Figure 6E), the system displays a series of web pages to process
the exchange (shown in Figures 6F–6H), including an option to confirm the
exchange selection (a confirmation selector)—“submit” button 678 shown in
Figure 6H. Id. Therefore, we are persuaded that MacLean describes a
confirmation selector, as required by claims 3 and 19.
We also are persuaded by Petitioner’s reasoning, which is supported
by the unrebutted testimony of Mr. Calman (Ex. 1002 ¶ 75), that one with
ordinary skill in the art would have combined MacLean’s confirmation
selector with Postrel’s system because it would have reduced error and
provided the user with the opportunity to consider an exchange selection
before committing to the transaction. Pet. 52–53. Notably, both MacLean
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and Postrel utilize exchange rates for converting the loyalty points of an
entity into those of a commerce partner. Ex. 1003 ¶ 45 (“When the
purchaser utilizes the exchange server for aggregating his or her loyalty
points from various merchants, exchange rates may be set . . .”); Ex. 1004
¶ 52 (“In step 510, the customer selects the depositing LP and clicks on
‘calculate advanced exchange’ button 634. Step 511 calculates the exchange
rates for this points transaction and displays page 640, a summary of the
withdrawal and deposit points, as illustrated in Fig. 6E.”). Moreover, both
MacLean and Postrel utilize an exchange server, enabling users to exchange
loyalty points from various merchants into a single account. Ex. 1003
¶¶ 43–47, 59; Ex. 1004 ¶¶ 51–52.
As Petitioner explains, MacLean provides greater detail regarding a
web interface for providing the point balance and a confirmation selector,
whereas Postrel discloses greater detail concerning an e-commerce interface
with on-line shopping capabilities and different payment options. Pet. 50.
Given the evidence before us, we determine that Petitioner has demonstrated
sufficiently that it would have been obvious, in light of MacLean, to include
a confirmation selector in Postrel’s user interface, allowing the user to
confirm and check the exchange selection before finalizing the transaction.
See KSR, 550 U.S. at 417 (“If a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”).
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In view of the foregoing, we determine that Petitioner has shown by a
preponderance of the evidence that the combination of Postrel, Sakakibara,
and MacLean would have rendered the “confirmation selector” limitation, as
recited in claims 3 and 19, obvious.
Additional claim limitations
Petitioner relies on Postrel in combination with Sakakibara and
MacLean, along with Mr. Calman’s unrebutted testimony, to meet other
limitations recited in claims 2, 3, 11, 18, and 19. Pet. 49–58; Ex. 1002.
Based on the evidence in this record, we agree with Petitioner’s showing,
and adopt it as our own, that Postrel in combination with Sakakibara and
MacLean discloses the additional limitations of claims 2, 3, 11, 18, and 19,
and renders the claimed subject matter as a whole obvious.
Conclusion on obviousness of claims over Postrel, Sakakibara, and MacLean
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 2, 3, 11, 18,
and 19 are unpatentable over the combination of Postrel, Sakakibara, and
MacLean.
IPR2015-00137
Patent 8,297,502 B1

21
III. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has
demonstrated by a preponderance of the evidence that claims 1–30 of the
’502 patent are unpatentable based on the following grounds:
Claims Basis References
1, 4–10, 12–17, and
20–30 § 103(a) Postrel and Sakakibara
2, 3, 11, 18, and 19 § 103(a) Postrel, Sakakibara, and MacLean

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–30 of the ’502 patent are held unpatentable;
and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
IPR2015-00137
Patent 8,297,502 B1

22
PETITIONER:
Robert H. Fischer
AskeladdenIPR@fchs.com

Frank A. DeLucia
AskeladdenIPR@fchs.com

Stephen Yam
AskeladdenIPR@fchs.com

Justin Oliver
joliver@fchs.com

PATENT OWNER:

Brian K. Buchheit
bbuchheit@gmail.com