Takeaway: The disclosure of the prior art as a whole must be considered when analyzing an asserted ground of unpatentability.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1 and 8-14 of the ’207 patent are unpatentable. The Board also dismissed-in-part and denied-in part Patent Owner’s Motion to Exclude.

The ’207 patent “relates to the use of devices having information or patterns carried in or on some storage media, examples of which include photographic patterns, keys or the magnetic strip on credit cards.”

The Board began with claim construction, stating that because the ’207 patent expired on November 4, 2014, the claims are construed “according to the standard applied by the district courts.” In particular, the Board applied the principles in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), looking “principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.”

The Board addressed the parties’ arguments regarding various terms and decided to adopt the constructions for the terms “emitter,” “universal credit card,” “transducer,” and “host system” set forth in the Decision on Institution.

The Board then turned to the asserted ground of unpatentability, namely, anticipation of claims 1 and 8-14 based on Pitroda. The parties focused the arguments on the following terms, which the Board addressed in turn: “(1) in claims 1, 8, 13, and 14, the terms (a) ‘emitter’ and (b) ‘control circuit;’ (2) in claim 9, the terms ‘operator interface’ and ‘account location;’ and (3) in claim 10, the term ‘account identifier.’”

With respect to the term “emitter,” Patent Owner argued that the term should be limited to only wireless transmissions, relying primarily on the “Examiner’s Statement of Reasons for Allowance” from the prosecution of the ’207 patent. Petitioner cited “Pitroda’s IR/RF option embodiment” that could transmit data to a “communication interface unit” as satisfying the emitter limitation. The Board found Petitioner’s arguments persuasive.

Regarding the “control circuit” limitation, the Board found that Patent Owner’s argument “disregards the disclosure of Pitroda as a whole,” and instead found Petitioner’s argument and supporting evidence that Pitroda discloses the limitation to be persuasive.

Turning to claim 9, Patent Owner’s arguments related to the terms “operator interface” and “account location.” The Board was persuaded by Petitioner’s arguments and evidence, finding again that Patent Owner’s arguments were unpersuasive in view of the totality of Pitroda’s disclosure. In particular, the Board found that “Patent Owner does not explain why the existence of possible additional configurations defeats a finding of express anticipation based on an already disclosed embodiment.”

With respect to anticipation of claim 10, Patent Owner argued that Pitroda does not disclose an “account identifier” as recited in the claim. However, the Board found Petitioner’s arguments to be persuasive. The dependent claims were not disputed by Patent Owner, and the Board found that Petitioner had shown by a preponderance of the evidence that the claims were also anticipated.

The Board then addressed Patent Owner’s Motion to Exclude Exhibits 1012, 1013, and 1014 based on relevance, hearsay, and authentication. Exhibits 1012 and 1013 were not relied upon by the Board, and therefore, the Motion to Exclude was dismissed as to these exhibits. With regard to Exhibit 1014, there was no evidence in the record that Patent Owner had timely objected to the exhibit prior to filing its motion. Therefore, the Motion was denied as to Exhibit 1014.

Square, Inc. v. J. Carl Cooper, IPR2014-00157

Paper 36: Final Written Decision

Dated: May 14, 2015

Patent: 7,828,207 B2

Before: Jameson Lee, George R. Hoskins, and Kristina M. Kalan

Written by: Kalan

Related Proceedings: (1) eCharge Licensing LLC v. Square, Inc., No. 1:13-cv-06445 (N.D. Ill.); (2) SCVNGR, Inc. v. eCharge Licensing LLC, No. 1:13-cv-12418 (D. Mass.)