The PTAB Reaches Same Determination After Remand Despite Having Construction and Analysis Set Aside

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On July 28, 2017, the PTAB issued a final written decision holding all claims unpatentable in an IPR after the Fed. Cir. vacated and remanded the PTAB’s previous final written decision. On remand, the PTAB reached the same patentability conclusion as it had previously, despite the Fed. Cir. reversing a critical component of the PTAB’s final written decision. Mastercard Int’l Inc. v. John D’Agostino, IPR2014-00543, Paper 38 & IPR2014-00544, Paper 32 (P.T.A.B. Jul. 28, 2017).

Mastercard filed an IPR petition on two of John D’Agostino’s patents related to performing secure credit card purchases. The PTAB held all of the instituted claims to be unpatentable as either anticipated or obvious over the prior art. The claims at issue fall into two categories—claims with a “one or more merchants” limitation and claims with a “single merchant” limitation. Prior to appeal, the PTAB analyzed only the “single merchant” limitation because “one or more merchants” is necessarily unpatentable if a “single merchant” is unpatentable.

The Fed. Cir. vacated the PTAB’s decision because it found that the PTAB either departed from or misapplied the clear meaning of the “single merchant” limitation. The Fed. Cir. construed the “single merchant” limitation and explained why the prior art disclosure that the PTAB relied on does not anticipate the limitation. The main prior art reference that the PTAB relied on describes a system of disposable credit card numbers along with many examples of the ways in which they may be generated or used. The Fed. Cir. did not analyze the “one or more merchants” limitation or the other examples disclosed in the main prior art reference because the PTAB based its decision on this single example.

After the remand decision, the PTAB allowed both parties to submit additional briefing to explain how the remand decision affected the application of the prior art on the “single merchant” and “one or more merchants” limitations. In its post-remand final written decision, the PTAB found that a different disclosure from the prior art anticipated the “single merchant” limitation based on the Fed. Cir. claim construction. The Petitioner first highlighted this different disclosure in the Petition and provided additional argument for its application in briefing on remand. Further, the PTAB went on to analyze the other examples from the prior art that the parties submitted arguments for. Unlike the first final written decision which only provided one route to unpatentability, the PTAB found that other examples disclosed in the prior art  anticipate the “one or more merchants” limitation as well.

This case represents the first example in which the Fed. Cir. modified the PTAB’s claim construction, but on remand the PTAB maintained its previous decision on unpatentability of the claims.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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