PTAB

IPR2015-01668

First Data Corp v. Coqui Technologies LLC

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1. Case Identification

2. Patent Overview

  • Title: Method for circulating an electronic gift certificate in online and offline system
  • Brief Description: The ’864 patent discloses a system and method for managing the circulation of electronic gift certificates. The system comprises a gift certificate server and database to handle the purchase, gifting, and use of electronic gift certificates requested from communication terminals over wired or wireless networks.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 6 and 17 - Claims 6 and 17 are anticipated by Stoutenburg under 35 U.S.C. §102.

  • Prior Art Relied Upon: Stoutenburg (Patent 7,086,584).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Stoutenburg, which describes a system for managing both physical and virtual stored value cards (explicitly including gift certificates), discloses every limitation of independent claims 6 and 17. For claim 6 (a sales method), Stoutenburg was alleged to teach a system with a processing server and database that receives purchase requests for electronic gift certificates from communication terminals (e.g., POS devices, computers). Petitioner asserted Stoutenburg discloses terminals that display barcodes, a system that checks a "settlement state" by determining the payment type, settles the transaction, issues the certificate, stores usage or gifting history in its database, and notifies the user of the purchase particulars in a message format (e.g., email or printed receipt).
    • Prior Art Mapping (cont.): For claim 17 (a usage method), Petitioner argued Stoutenburg similarly discloses a server and database for managing the use of electronic gift certificates. Stoutenburg's system receives usage requests from terminals, inquires into the database to determine the certificate’s existence and value, settles the price by debiting the account if funds are sufficient, and notifies the user with usage information. Petitioner contended that the electronic certificates in Stoutenburg, which can contain a barcode and human-readable text, constitute a "multimedia message" as required by the claims.

Ground 2: Obviousness of Claim 12 and Dependent Claims - Claims 12-16 and 23 are obvious over Stoutenburg in view of Karas and/or Joyce.

  • Prior Art Relied Upon: Stoutenburg (Patent 7,086,584), Karas (U.S. Provisional Application No. 60/256,127), and Joyce (Patent 6,934,533).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that independent claim 12, which recites a method for gifting an electronic gift certificate, is obvious over the combination of Stoutenburg and Karas. Stoutenburg provides the foundational system for stored value cards with a server, database, and network communication. Karas teaches a system specifically for gifting "branded electronic gift certificates" and managing person-to-person payments. The combination allegedly teaches all steps of claim 12: receiving a gifting request, inquiring into a database to verify the certificate's existence, receiving transferee information, transmitting the certificate, updating the database with both user and transferee information, and notifying the user.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Stoutenburg and Karas because both relate to the same field of virtual stored value accounts. A POSITA implementing Stoutenburg's system, which includes a basic "value transfer system," would be motivated to look to Karas to learn more specific methods for gifting electronic certificates. Stoutenburg itself suggests its system can be used with other value transfer systems, providing an explicit motivation.
    • Expectation of Success: The combination was presented as the application of known gifting techniques (from Karas) to a known stored value card system (Stoutenburg) to achieve a predictable result.
    • Key Aspects: For dependent claims, Petitioner argued that adding further known features was also obvious. For example, adding SMS/MMS notifications (claims 10 and 16) was obvious in view of Joyce, which explicitly teaches delivering electronic vouchers via SMS to mobile terminals. A POSITA would have been motivated to incorporate Joyce’s SMS delivery method into the Stoutenburg/Karas system to provide users with more notification options.

Ground 3: Obviousness of Dependent Claims - Claims 7-9, 11, 20-22, and 24-27 are obvious over Stoutenburg, alone or in view of Karas.

  • Prior Art Relied Upon: Stoutenburg (Patent 7,086,584) and Karas (U.S. Provisional Application No. 60/256,127).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the various dependent claims add only conventional and well-known features to the base methods of claims 6, 12, and 17, all of which are disclosed or suggested by the prior art. For example, claim 7’s limitation of “checking the user’s membership authentication state” was allegedly taught by Stoutenburg’s disclosure of using a biometric interface for authentication and Karas's teaching of logging into an account before transferring funds. Claim 20’s requirement that a usage request comes from a "mobile communication terminal" was argued to be an obvious design choice, as Stoutenburg teaches its system works with wireless networks and cellphones.
    • Motivation to Combine: The motivation to add features like user authentication or mobile terminal support was characterized as a predictable design choice to improve the security and usability of the base Stoutenburg system. For combinations with Karas, the motivation remained the same: to enhance Stoutenburg’s transfer capabilities with known gifting and authentication features from a compatible system.
  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges against various dependent claims, relying on the same core teachings from Stoutenburg, Karas, and Joyce to show that each additional limitation represented a simple and predictable design choice well known in the art.

4. Key Claim Construction Positions

  • "gift certificate": Petitioner proposed the construction "a bill that has an exchangeable value." This construction was based on the patent’s own definition and argued to be broad enough to encompass stored value cards, vouchers, and coupons as understood by a POSITA and as disclosed in the prior art like Stoutenburg.
  • "multimedia message including barcode data": Petitioner proposed the construction "a message containing barcode data and at least one other form of media." This was based on dictionary definitions of "multimedia" and the patent’s disclosure of gift certificates containing both barcode data and text. This construction allowed Petitioner to argue that the virtual cards in Stoutenburg, which contain a barcode and human-readable text (e.g., an identifier number or PIN), met this limitation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 6-27 of the ’864 patent as unpatentable.