PTAB

IPR2021-00799

Unified Patents LLC v. Caselas LLC

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1. Case Identification

2. Patent Overview

  • Title: System and Method for Providing Information Regarding an Account
  • Brief Description: The ’691 patent discloses systems and methods for processing financial transaction information to mitigate fraud. The system provides merchants with access to historical account information, specifically chargeback history, for a consumer involved in a current transaction to help the merchant assess risk.

3. Grounds for Unpatentability

Ground 1: Claims 1-23 are obvious over Justice.

  • Prior Art Relied Upon: Justice (Patent 6,516,056)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Justice, which teaches a fraud prevention system for card-not-present transactions, discloses all limitations of the challenged claims. Independent claims 1, 18, and 20 recite a computer-implemented method or apparatus that processes information regarding an account in a transaction, generates a report containing information about a previous chargeback, and transmits that report to a communication device associated with a merchant. Petitioner asserted that Justice’s fraud detection system performs these exact functions. Specifically, Justice’s server (a “processing device”) receives a customer order and assesses a risk level by analyzing past transactions for fraud indicators, explicitly including chargebacks. If the risk exceeds a threshold, the server generates a “strike ticket” (the claimed “report or message”) that contains a detailed list of strikes against the account, including those for prior chargebacks. This strike ticket is transmitted to a Customer Service Representative (CSR) or fraud clerk computer terminal (the claimed “communication device”) for review. Petitioner contended that this system directly maps to the limitations of the independent claims. For dependent claims, Petitioner argued that Justice also teaches the recited additional features, such as the account being a telephone calling card or membership account (claim 3), transmitting the report prior to fulfilling the transaction (claims 9-10), and determining transaction authorization (claims 8, 18, and 21).
    • Motivation to Combine (for §103 grounds): As this ground relied on a single reference, Petitioner’s argument was that Justice itself rendered the claims obvious. The motivation was inherent in Justice’s own disclosure, which aimed to solve the same problem as the ’691 patent: inhibiting fraud in card-not-present transactions by providing merchants with historical account data. No combination of references was necessary.
    • Expectation of Success (for §103 grounds): Petitioner implicitly argued that a person of ordinary skill in the art (POSITA) would have had a high expectation of success as Justice describes a complete, functional, and self-contained system for fraud detection using the very methods claimed in the ’691 patent.
    • Key Aspects: The core of the argument was that the “strike ticket” generated in Justice, which details historical fraud indicators including chargebacks, is functionally identical to the “charge-back information report” central to the ’691 patent’s claims.

4. Key Claim Construction Positions

  • “processing device” (claims 1, 13, 18, and 20): Petitioner argued that this term is not a means-plus-function term under 35 U.S.C. §112, ¶ 6, and should be given its plain and ordinary meaning. A POSITA would understand "processing device" to connote a definite structure, such as a processor, CPU, or other computing device. However, in the alternative, if the Board were to construe the term as a means-plus-function limitation, Petitioner proposed a corresponding structure based on the specification. The proposed function was "processing ... information regarding an account" and "generating ... a report or a message," with the corresponding structure being a computer or server programmed with an algorithm to perform those functions, as detailed in Justice’s disclosure of its server-based order processing program. This construction was central to the argument, as Petitioner mapped Justice's server 38 to this limitation under both interpretations.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-23 of the ’691 patent as unpatentable.