PTAB

IPR2016-01721

Askeladden LLC v. Purple Leaf LLC

Key Events

Petition

petition

Title: Electronic Payment Transaction Method
Brief Description: The ’407 patent is directed to methods for conducting electronic financial transactions. The claimed methods generally involve a payment instruction being sent to a wireless computing device, a payment being initiated via that device in response, and the payment including remittance information arranged in a structured, computer-readable format.

Prior Art Relied Upon: Sirbu (Patent 5,809,144).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Sirbu, which describes a system for secure electronic payment for digital goods between a customer, merchant, and account server, discloses every element of independent claim 10. Sirbu's method involves accepting a payment instruction (an Electronic Payment Order or "EPO"), routing payment, and storing a receipt. Petitioner asserted Sirbu’s EPO contains structured remittance data, including a portion (the customer’s account number) that is encrypted and thus "kept hidden from a payee" (the merchant), as required by the claim. The account server's approval message, returned to the merchant, was identified as the claimed "receipt." Dependent claim 11 was allegedly met because Sirbu’s receipt is communicated to the merchant, who functions as an intermediary.

Prior Art Relied Upon: Sirbu (Patent 5,809,144) and Hughes (Patent 5,754,655).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Sirbu discloses the core transaction method of independent claim 1 but describes the customer device as a general-purpose computer. Hughes was introduced to supply the limitation of a "wireless computing device" that is a "cellular telephone." Hughes teaches a system for conducting remote purchase and bill payment transactions using a portable user terminal with built-in cellular functionality. Petitioner argued that the combination of Sirbu's payment protocol with Hughes's wireless device renders the claims of this ground obvious.
- Motivation to Combine: A POSITA would combine Sirbu’s payment method with the wireless terminal taught by Hughes to provide portability and allow users to conduct transactions without being tethered to a wired connection. Hughes explicitly recognized that including cellular functionality makes a terminal "more portable."
- Expectation of Success: A POSITA would have had a reasonable expectation of success in implementing Sirbu's software-based payment process on the microprocessor-based wireless terminal described in Hughes, as both systems perform similar electronic financial transactions.

Prior Art Relied Upon: Sirbu (Patent 5,809,144), Hughes (Patent 5,754,655), and Neuman ("Requirements for Network Payment: The NetCheque Perspective," a 1995 article).
Core Argument for this Ground:
- Prior Art Mapping: This ground builds upon the combination of Sirbu and Hughes to address dependent claim 2, which further requires the payment remittance information to include the "payor's first name." While Sirbu discloses customer identity information generally, Neuman was cited for its explicit disclosure of an electronic "cheque" containing payment information that includes "the name of the payor."
- Motivation to Combine: A POSITA would have been motivated to include the payor's first name, as taught by Neuman, into the payment information of the Sirbu/Hughes system to provide an additional layer of identity verification. Petitioner argued this would help prevent fraudulent transactions, analogous to a merchant checking a name on a credit card against a driver's license.
Additional Grounds: Petitioner asserted further obviousness challenges against dependent claims 4 and 5. These grounds added Kitchen (Patent 6,289,322) to teach including a "minimum acceptable payment" for bill pay transactions and Vazvan (WO 96/13814) to teach including a "payment due date," arguing a POSITA would have been motivated to add these known bill payment features for user convenience and transaction security.

"receipt": Petitioner proposed that the term "receipt" should be construed to encompass both (1) an acknowledgement that payment was received, and (2) a request for payment. This construction was based on the specification's use of the term in both contexts and was noted as being consistent with the construction previously adopted by the Patent Trial and Appeal Board in a related Covered Business Method (CBM) review (CBM2015-00051). This broad construction is critical to mapping prior art messages that request payment onto this claim limitation.

Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’407 patent as unpatentable.