D’AGOSTINO v. MASTERCARD INTERNATIONAL: Dec. 22, 2016. Before Taranto, Linn, and Stoll.

The Takeaway:

  • A patent with a “single merchant” limitation is not anticipated by a prior art reference that disclosed an embodiment directed to a “chain of stores.”

Procedural Posture:

On appeal from the PTAB’s decision in an IPR finding claims invalid as anticipated and obvious, the CAFC vacated and remanded the Board’s decision.

Analysis:

  • Claim Construction: D’Agostino owns two patents that disclose methods of effecting secure credit-card purchases by minimizing merchant access to credit card numbers. At issue was a claim limitation that involves “limiting transactions to a single merchant.” The Board found that the Cohen prior art reference met the “single merchant” limitation through an embodiment that limited credit card transactions to a particular chain of stores. However, limiting the transaction to a particular chain of stores, which is an identity limitation, is not the same as limiting it to a single merchant, which is a numerical limitation. Thus, the CAFC vacated the Board’s decision, as a “chain of stores” cannot be considered a “single merchant” under the clear meaning of the claim language.