PTAB

IPR2015-01667

First Data Corp v. Coqui Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for circulating an electronic gift certificate in online and offline system
  • Brief Description: The ’864 patent relates to a gift certificate service system for managing the sale, gifting, and usage of electronic gift certificates. The system uses a central server and database to process requests from user communication terminals over wired or wireless networks, where the electronic gift certificate is a multimedia message containing barcode data.

3. Grounds for Unpatentability

Ground 1: Obviousness over Stoutenburg and Karas - Claims 1-5 are obvious over Stoutenburg in view of Karas.

  • Prior Art Relied Upon: Stoutenburg (Patent 7,086,584), which incorporates by reference Seifert (Application # 2002/0104878), and Karas (U.S. Provisional Application 60/256,127).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Stoutenburg and Karas taught all limitations of the challenged claims.
      • Independent Claim 1: Stoutenburg was asserted to teach a system for managing stored value cards (equivalent to gift certificates) using a processing system (server) and a database, accessible by communication terminals over various networks. Its "virtual stored value cards" were described as "multimedia messages" containing both a barcode and human-readable text (e.g., a PIN). Petitioner contended Stoutenburg’s database, which maintains an "account record" and "accounting of phone card use," met the limitation of storing a "usage history." The gifting function was taught by Karas, which explicitly discloses a "gift certificate service server" for gifting branded electronic gift certificates, and by Seifert (incorporated by reference into Stoutenburg), which teaches transferring funds on stored value cards. Petitioner asserted Stoutenburg’s network processor was responsive to the use of the gift certificate, thereby teaching the final limitation of claim 1.
      • Dependent Claims 2-4: Petitioner mapped the various means-plus-function limitations of these claims to structures in the prior art. It was argued that Stoutenburg's "processing system," "settlement engine," and "database" correspond to the claimed means for receiving user requests (purchase, gifting, usage), checking settlement states, settling transactions, issuing certificates, storing information, and notifying the user via email or printed receipt. Karas was cited as providing additional support for a "payment enabler" that performs similar gifting and notification functions.
      • Dependent Claim 5: Stoutenburg’s database was alleged to store information including types of cards, balances, and transaction data, while Karas’s database stores information pertinent to payment methods. Petitioner argued a POSITA would understand these records could be classified by type, user, and price as claimed.
    • Motivation to Combine: Petitioner asserted a POSITA would combine Stoutenburg and Karas because both references relate to the same field of virtual stored value accounts and disclose highly compatible systems. A POSITA reviewing Stoutenburg’s value transfer system would have been motivated to consult Karas to learn additional methods for gifting electronic certificates. Furthermore, Stoutenburg itself suggests its processes can be used "in conjunction with a value transfer system," providing an explicit motivation to combine its teachings with a system like Karas.
    • Expectation of Success: The combination was presented as the predictable use of known elements from Karas (gifting functionality) within the established system of Stoutenburg to create an improved, more versatile electronic gift certificate platform.

4. Key Claim Construction Positions

  • "gift certificate": Petitioner proposed the construction "a bill that has an exchangeable value," relying on the patent’s own lexicography in the specification. This broad construction was used to equate Stoutenburg’s "stored value cards" with the claimed "gift certificate."
  • "multimedia message including barcode data": Petitioner proposed this term means "a message containing at least barcode data and some other form of media." This construction was central to arguing that Stoutenburg’s virtual cards—which could include a barcode graphic and textual information like a PIN—met this claim limitation.
  • Means-Plus-Function Terms (Claims 2-4): Petitioner dedicated a significant portion of its argument to construing the numerous "means for..." limitations in the dependent claims. For each claimed function (e.g., "means for receiving," "means for settling," "means for notifying"), Petitioner identified corresponding structures in the ’864 patent’s specification, primarily the "gift certificate service server (220)," "settlement manager (221, 223)," and "gift certificate database (230)." These constructions were then used to map the functions onto analogous structures in the Stoutenburg and Karas references.

5. Relief Requested

  • Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1-5 of the ’864 patent as unpatentable.