PTAB

IPR2021-01260

Unified Patents LLC v. AuthWallet LLC

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1. Case Identification

2. Patent Overview

  • Title: Intermediary Service for Processing Transactions
  • Brief Description: The ’852 discloses a method and system for an intermediary service to process financial transactions. A customer provides unique identifying information to a merchant, which is sent through an acquirer to the service, which then retrieves the customer's payment instruments, including stored value items like coupons, for use in the transaction.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nobrega, Keith, and Hansen

Claims 1-4, 7-9, 11-17, 20-22, 24-30, 33-35, and 37-40 are obvious over Nobrega in view of Keith and Hansen.

  • Prior Art Relied Upon: Nobrega (Patent 7,292,996), Keith (Application # 2007/0174116), and Hansen (Application # 2007/0011044).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Nobrega, Keith, and Hansen taught all limitations of the challenged claims. Nobrega disclosed the foundational transaction processing system where a commerce platform receives an authorization request from a point-of-sale terminal via an acquirer, using a unique purchaser identifier. Keith was argued to supply the missing functionality of managing and applying "stored value items" (coupons). Keith taught an electronic coupon system where coupons associated with a user account are determined to be applicable to a transaction, presented to the user on a mobile device for selection, and then applied to the purchase. Finally, Petitioner asserted that while Nobrega and Keith taught applying a discount, they were silent on calculating the remaining balance. Hansen was introduced to teach this missing step, disclosing a system that determines a modified transaction amount after a discount is applied and forwards that modified amount to a credit provider (acquirer) to complete the transaction.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Nobrega and Keith to enhance Nobrega’s electronic wallet functionality with the known and desirable feature of electronic coupon processing. This would improve user convenience and leverage known techniques to improve a similar system. A POSITA would then further incorporate Hansen’s teachings to solve the problem of completing the transaction after a coupon is applied. This would ensure the customer is charged the correct, reduced amount, a predictable and necessary step for any discount system.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because combining these systems involved applying known techniques (coupon management, discount calculation) to improve an existing transaction processing framework. The similarity of the systems and the commonality of the proposed features in the art would make the integration straightforward.

Ground 2: Obviousness over Nobrega, Keith, Hansen, and Churchill

Claims 5-6, 18-19, and 31-32 are obvious over Nobrega in view of Keith, Hansen, and Churchill.

  • Prior Art Relied Upon: Nobrega (Patent 7,292,996), Keith (Application # 2007/0174116), Hansen (Application # 2007/0011044), and Churchill (Patent 7,461,022).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination asserted in Ground 1 and adds Churchill to teach the specific limitations of claims 5-6, 18-19, and 31-32. These claims require the "stored value item" to be expressed in non-currency units (e.g., points) and converted to a currency amount using a conversion rate before being applied to the transaction. Petitioner argued that Churchill explicitly taught a system for conducting financial transactions using points, which could be redeemed or converted into a currency amount (e.g., a $20 gift certificate) based on a fixed or variable conversion rate. Churchill also taught that the conversion rate could be determined based on transaction characteristics, such as the date of the transaction.
    • Motivation to Combine: A POSITA would be motivated to modify the Nobrega-Keith-Hansen system to include the point-based valuation method taught by Churchill. This was a common method for valuing coupons and discounts at the time and would provide additional flexibility and benefits for both consumers and merchants. It represented the use of a known coupon valuation technique to improve the combined transaction processing system.
    • Expectation of Success: There would be a high expectation of success in this combination. Adding a point-based discount system was a known and common technique in the art, and Churchill provided express teachings for its implementation, including the conversion to currency before application.

4. Key Claim Construction Positions

  • "stored value item": Petitioner proposed this term be construed to mean "a particular unit of stored value that may be applied to pay a portion of a transaction," and should expressly include a "coupon." This construction was based on the patent's specification, which explicitly defined the term and provided coupons as a primary example. This construction is critical for Petitioner's reliance on prior art like Keith, which focuses on electronic coupon management systems, to meet the "stored value item" limitations of the claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-9, 11-22, 24-35, and 37-40 of the ’852 patent as unpatentable.