PTAB

CBM2015-00067

Square Inc v. Think Computer Corp

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and System for Transferring an Electronic Payment
  • Brief Description: The ’808 patent discloses an electronic payment system for transactions between purchasers and merchants. The purported novelty centers on using "bi-directional" accounts that can selectively function as either a purchaser or merchant account during a transaction and storing the merchant's product catalog on the remote payment system rather than at the merchant's location.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tumminaro, Ogilvy, and Ondrus II - Claims 1, 2, 6-10, 13, 14, and 19-22 are obvious over Tumminaro in view of Ogilvy and Ondrus II.

  • Prior Art Relied Upon: Tumminaro (Application # 2007/0255652), Ogilvy (WO 2006/000021), and Ondrus II (a 2004 conference proceeding).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this combination teaches every limitation of the challenged claims. Tumminaro disclosed a mobile payment system with the core transaction flow and the allegedly novel bi-directional accounts, allowing any user to "send money or request money from anyone." Ogilvy supplied the second key feature: a system for mobile transactions where a product catalog is stored remotely in the payment system ("downloaded from a database 86") and not at the merchant location. Ondrus II was added to teach the specific user authentication steps, disclosing a merchant terminal receiving a picture of the purchaser to verify their identity.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references to achieve a predictable and beneficial result. Adding Ogilvy's robust, remote product catalog and Ondrus II's image-based security to Tumminaro's flexible peer-to-peer payment framework was described as a common-sense amalgamation of known, complementary features to expand usability.
    • Expectation of Success: A POSITA would have a high expectation of success as all three references relate to mobile payment systems, and combining their respective features was well within the capabilities of practitioners at the time.

Ground 2: Obviousness over Bemmel, Dalzell, and Ondrus II - Claims 8 and 19 are obvious over Bemmel in view of Dalzell and in further view of Ondrus II.

  • Prior Art Relied Upon: Bemmel (Application # 2008/0046366), Dalzell (Application # 2003/0204447), and Ondrus II (a 2004 conference proceeding).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative combination of prior art. Bemmel disclosed the fundamental transaction flow for a mobile payment system using a user ID (e.g., barcode) at a merchant's point-of-sale terminal. However, Bemmel lacked bi-directional accounts and a remote product catalog. Petitioner argued Dalzell, which describes an electronic marketplace, supplied these missing elements. Dalzell taught accounts that could be used to both buy and sell items, and its "Marketplace Web Site" included a "Product Information Database" and "Product Listing Database," thus teaching a catalog stored in the payment system. Ondrus II was again introduced to supply the limitation of using a purchaser's photograph for identity confirmation, which was absent from Bemmel and Dalzell.
    • Motivation to Combine: Petitioner argued there was an explicit motivation to combine these references. Dalzell stated its electronic marketplace could be employed in mobile devices and kiosks, while Bemmel suggested its authentication system could be implemented in online e-commerce channels. A POSITA would combine Dalzell's proven marketplace features with Bemmel's mobile POS authentication to create a more robust system. Substituting Bemmel’s voice biometrics with Ondrus II's more common image-based verification was presented as an obvious design choice.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the core combination of Tumminaro, Ogilvy, and Ondrus II, with the further addition of Dalzell, Carlson, Elston, Tripp, and Deschryver to address specific dependent claim limitations regarding adding items to the catalog, location-based catalog navigation, post-purchase tipping, bill splitting, and automated budgeting rules, respectively.

4. Key Claim Construction Positions

  • (Role of a) merchant account / (role of a) purchaser account: Petitioner argued this means a single user account (not a person) within the payment system is adapted to selectively function to either send or receive money depending on the transaction. This "bi-directional" capability of the account itself was asserted as a key feature.
  • User ID Token: Proposed as an "encoded value that includes information identifying a user, which can be a barcode."
  • Identity Confirmation Information: Proposed as "any information suitable to verify the identity of a purchaser," such as an image, password, or address information.
  • Account portal: Construed as "the interface between the electronic terminal and the payment system," which supports user interaction.

5. Arguments Regarding Discretionary Denial

  • The petition was filed as a Covered Business Method (CBM) patent review, which required showing the patent was for a financial product or service and not a "technological invention." Petitioner argued the ’808 patent is a CBM patent because its claims are directed to a financial activity: "transferring an electronic payment."
  • Petitioner further argued the patent does not qualify for the "technological invention" exception. It asserted that the claims as a whole fail to recite a novel and unobvious technological feature, instead merely using known technologies (e.g., "merchant terminal," "purchaser terminal," "user ID token") to implement a conventional business process. The patent did not, in Petitioner's view, solve a technical problem with a technical solution.

6. Relief Requested

  • Petitioner requested institution of a CBM review and cancellation of claims 1-11, 13-17, and 19-22 of the ’808 patent as unpatentable.