PTAB

CBM2020-00015

Square Inc v. Electronic Receipts Delivery Systems LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Issuing Digital Receipts for Purchase Transactions Over a Network
  • Brief Description: The ’551 patent discloses systems and methods for automatically issuing digital receipts for credit card transactions. The invention involves a customer pre-registering a credit card account with a destination (e.g., an email address), which is stored on a server; when a transaction occurs at a point-of-sale terminal, the system retrieves the associated destination and automatically transmits a digital receipt.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 7, 8, 11, 13-16, 19, and 20 under 35 U.S.C. §102 by Moran

  • Prior Art Relied Upon: Moran (Patent 6,185,542).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Moran disclosed all limitations of the challenged claims. Moran taught a system where a customer could register personal credit cards along with an email address with a store. This registration information was stored in a record on a "store computer" or in a "common database." When the customer used the registered credit card at a point-of-sale (POS) terminal, the store computer would automatically determine that the credit card number has an associated email address, process the payment, and automatically transmit the transaction data (the "digital receipt") via email to the customer's pre-registered address over the Internet. Petitioner contended that Moran's "store computer" functioned as the claimed "server" and its "record" or "common database" met the database limitation.
    • Key Aspects: Petitioner emphasized that Moran’s system was fully automated after the initial registration, transmitting the receipt without customer input at the time of the transaction, thus meeting a key limitation of the independent claims.

Ground 2: Obviousness of Claims 2, 12, and 17 under 35 U.S.C. §103 over Moran in view of Schultz

  • Prior Art Relied Upon: Moran (Patent 6,185,542) and Schultz (Application # 2001/0029483).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring that a "solicitation" be provided with the digital receipt. Petitioner asserted that Moran provided the foundational system for generating and emailing digital receipts based on a pre-registered credit card. Schultz, which described the state of the art for e-commerce, explicitly taught that it was a well-known business practice to include "product advertisements," "coupon offers," or rebate notices within electronic receipts to "induce additional sales." The combination of Moran's system with Schultz's teaching of including solicitations rendered these dependent claims obvious.
    • Motivation to Combine: A POSITA would combine Moran and Schultz because both references operated in the same field of electronic transaction receipts and addressed the same commercial goals. A POSITA would have been motivated to enhance the basic receipt-delivery system of Moran with the value-added marketing features described as conventional in Schultz to increase business and customer engagement.
    • Expectation of Success: A POSITA would have had a high expectation of success, as Schultz described including solicitations in e-receipts as a common and routine technique, utilizing standard formats like XML, which would require only conventional software modifications to Moran’s system.

Ground 3: Obviousness of Claims 1, 7, 8, 11, 13-16, 19, and 20 under §103 over Moran in view of Tognazzini

  • Prior Art Relied Upon: Moran (Patent 6,185,542) and Tognazzini (Patent 5,739,512).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner presented this as an alternative ground for the independent and related dependent claims, arguing that if Moran's disclosure was deemed insufficient to teach the claimed "server" and "database," the combination with Tognazzini would cure any alleged deficiency. Tognazzini explicitly disclosed a client-server architecture for digital receipt delivery, teaching a "central computer" (server) connected to a plurality of merchant terminals over a network. This central computer contained a database of customer accounts and their associated email addresses, and it was configured to send an electronic receipt to the customer's email after a transaction.
    • Motivation to Combine: A POSITA seeking to implement Moran’s digital receipt concept would have been motivated to use the conventional client-server architecture detailed in Tognazzini. Both references aimed to solve the problem of replacing paper receipts with digital ones. Tognazzini provided a clear, established model for the network infrastructure (a central server and database) needed to realize the system described in Moran, making the combination a predictable implementation choice.
    • Expectation of Success: Success would have been reasonably expected because the combination merely involved applying Tognazzini's well-understood network server architecture to implement Moran's functionally similar system.

  • Additional Grounds: Petitioner asserted that claims 2, 12, and 17 are obvious over the three-way combination of Moran, Tognazzini, and Schultz. Petitioner also argued in a separate ground that all challenged claims are patent-ineligible under 35 U.S.C. §101 as being directed to the abstract idea of issuing a receipt for a purchase transaction, a fundamental economic practice, without an inventive concept.

4. Relief Requested

  • Petitioner requests institution of a Covered Business Method review and cancellation of claims 1-20 of the ’551 patent as unpatentable.