PTAB

CBM2013-00026

Google Inc v. Peter SProgis

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Providing Awards Using Transponders
  • Brief Description: The ’271 patent relates to methods for encouraging customer loyalty using an electronic data storage element (EDSE), such as an RFID tag, and a corresponding reader to identify a participant and provide an award. The patent discloses two primary embodiments: a "Store-Scans-You" system where a customer carries the EDSE to be scanned by a retailer's reader, and a "You-Scan-the-Store" system where the customer carries the reader to scan an EDSE at the retail location.

3. Grounds for Unpatentability

Ground 1: Anticipation of "Store-Scans-You" Claims - Claims 18-22, 42, and 44-45 are anticipated by Ariff under 35 U.S.C. §102.

  • Prior Art Relied Upon: Ariff (Patent 7,613,628).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ariff discloses every limitation of the claims directed to the "Store-Scans-You" embodiment. Ariff teaches a networked loyalty program where a consumer enrolls and is provided with a device (e.g., smart card) containing a consumer ID. At a retail location, a terminal reads the ID and a central rewards system issues an award, such as coupons or bonus points. Petitioner asserted this system directly maps to the claimed steps of independent claim 18: (a) registering participants in a loyalty program, (b) providing participants with an EDSE encoded with identifying information, (c) providing EDSE readers at locations, (d) reading the information from the EDSE, and (e) providing an award to the identified participant.

Ground 2: Anticipation of "You-Scan-the-Store" Claims - Claims 1-3, 8-9, 11, 13-14, 23-26, 28-29, 33, 35, and 37-39 are anticipated by Moskowitz under 35 U.S.C. §102.

  • Prior Art Relied Upon: Moskowitz (Patent 6,938,002).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Moskowitz discloses all elements of the claims directed to the "You-Scan-the-Store" embodiment. Moskowitz describes a system where a user is provided with an RFID reader to scan an RFID tag placed on a product. The tag contains data identifying a URL for a website. The user's client device (e.g., a wireless phone) utilizes this URL to access an award processing center (the website) and receive a reward, such as a coupon. This process was argued to directly map to the limitations of independent claim 1, including placing EDSEs with directions to an award center (the tags with URLs), providing participants with readers, reading the directions, and utilizing them to access the award center and receive an award.

  • Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges against the "Store-Scans-You" claims based on Giordano (Patent 7,571,139) and D'Arbeloff (U.S. Serial No. 10/167,888), which were argued to disclose similar customer loyalty and incentive program systems. Obviousness challenges were also raised over Ariff and Giordano for certain dependent claims.

4. Key Claim Construction Positions

  • Petitioner presented claim constructions under the broadest reasonable interpretation standard, arguing the patent owner did not act as a lexicographer. The proposed constructions were central to mapping the prior art to the claims.
    • "electronic data storage element" (EDSE): Construed as an electronic device that stores data, with an RFID transponder cited as an example. This allowed Petitioner to map prior art terms like "smart card" and "RFID tag" to this limitation.
    • "electronic data storage element reader": Construed as a device that reads data from an EDSE, with an RFID reader cited as an example. This allowed Petitioner to map prior art terms like "retailer terminal" and "smart card reader" to this limitation.

5. Key Technical Contentions (Beyond Claim Construction)

  • CBM Patent Eligibility: A central argument of the petition was that the ’271 patent qualified as a Covered Business Method (CBM) patent, making it eligible for the Transitional Post-Grant Review program. Petitioner contended the patent claims methods and apparatus for performing data processing used in the practice, administration, or management of a financial product or service (i.e., customer loyalty programs, discounts, and coupons). Furthermore, Petitioner argued the patent does not claim a "technological invention" because it merely applies well-known and conventional technology (RFID tags and readers) to implement an abstract business practice of providing awards, without reciting a novel or unobvious technological feature.

6. Relief Requested

  • Petitioner requested the Board institute a transitional post-grant review and cancel claims 1-3, 8-9, 11, 13-14, 18-26, 28-29, 33, 35, 37-39, and 42-45 of the ’271 patent as unpatentable.