Second CBM Petition Denied As "Second Bite at the Apple"
By Joseph Herndon --
The U.S. Patent and Trademark Office Patent Trial and Appeal Board issued a decision denying institution of a covered business method (CBM) patent review in a case caption NRT Technology Corp. v. Everi Payments Inc. NRT originally filed a Petition, which was denied, and then filed this subsequent Petition requesting a review under the transitional program for covered business method patents of U.S. Patent No. 6,081,792. The '792 Patent clearly qualifies as a CBM patent, but the original Petition was found lacking in substance to persuade the Board that the claims were more likely than not invalid. The Board found this subsequent Petition to present substantially the same prior art and arguments previously presented to the Board in the prior Petition, and thus, this instant Petition was also denied.
The '792 Patent
The '792 Patent relates to a modified automated teller machine (ATM) or terminal that allows a customer to obtain cash from an account via various processes such as an ATM process or a point-of-sale (POS) process using both debit cards and credit cards. The '792 Patent notes two problems associated with obtaining cash from prior art ATMs (i.e., via an ATM network). First, with respect to using a debit/ATM card, a bank will typically impose a daily limit on ATM cash withdrawals. Second, with respect to using a credit card to obtain cash from an ATM, people often do not know the personal identification number (PIN) that is required because they may not regularly use a credit card for that purpose.
According to the '792 Patent, neither of these problems is encountered when using the same cards to make purchases, which occur over a POS network, not an ATM network. With respect to debit/ATM cards, one can reach his ATM limit and not be able to obtain more cash that day from an ATM, but will still be able to purchase goods and services via a point-of-sale transaction because of the distinct and separate limit for point-of-sale transactions. With respect to credit cards, PINs are not typically required to make purchases (which is why people often cannot recall their PINs).
The '792 Patent describes and claims methods of using a modified ATM or terminal that can access a bank via both an ATM network and a POS network. The method includes a cardholder first attempting to obtain money via a first type of transaction (i.e., conducted over an ATM network) and failing because he has exceeded his ATM daily limit or he cannot remember the PIN for his credit card and subsequently successfully obtaining money via a second type of transaction (i.e., conducted via a POS network).
The cardholder does not obtain cash (or other valuable item) directly from the terminal when using the POS network. Instead, the terminal informs a nearby money location (such as customer service windows at stores) of the approved transaction. The terminal may also issue a "script" or "pre-receipt" for the cardholder to take to the money location. At the money location, the cardholder obtains the transacted for cash or other item of value, preferably upon presentation of his identification.
Claim 1 is illustrative and is reproduced below.
1. A method of providing money or an item of value to an account-holder, the method comprising:
identifying an account to a terminal;
entering a personal identification number into the terminal;
requesting money or an item of value based upon the account via a first type of transaction;
forwarding the first type of transaction to a processor;
forwarding the first type of transaction from the processor to a first network;
forwarding the first type of transaction from the first network to a bank;
making a denial of the first type of transaction due to exceeded pre-set limit;
forwarding the denial to the processor;
notifying the account-holder at the terminal of the denial of the first type of transaction, and asking the account holder if they would like to request the money or item of value via a second type of transaction;
requesting money or an item of value based upon the account via a second type of transaction;
forwarding the second type of transaction to the processor;
forwarding the second type of transaction from the processor to a second network;
forwarding the second type of transaction from the second network to the bank;
making an approval of the second type of transaction;
forwarding the approval to the processor; and
instructing a money location separate from the terminal to provide money or an item of value to the accountholder.
As an initial matter, this is a second Petition filed by the Petitioner, and the Patent Owner argued that the Board should deny this second Petition because it presents substantially the same prior art and arguments previously presented to the Board in the original Petition, which was also denied.
The Board noted that institution of CBM patent review is subject to the Board's discretion. In determining whether to institute a CBM, the Board may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. Here, the Board determined that the grounds at issue rely on the same or substantially the same prior art and arguments that were found insufficient in a prior proceeding.
With respect to the prior art grounds asserted in the second Petition, the Board previously considered the cited reference. As such, the new combinations proffered in the second Petition could have been properly presented in the original petition. Similarly, the Board previously considered Petitioner's prior proposed express constructions, and determined that they already considered substantially the same arguments and evidence presented in the prior petition. Consequently, the Board found this second Petition to be a "second bite at the apple" used to bolster previously unsuccessful arguments.
Although the second Petition does cite a new declaration and "new" prior art references, notwithstanding, the addition of any "new" element added to a previously presented argument did not deprive the Board of discretion under § 325(d). The statute provides that the Board must consider whether "the same or substantially the same prior art or arguments previously were presented to the Office."
The Board noted that there is no requirement of identity of either prior art or arguments, and therefore, a scintilla of difference or an immaterial difference does not create necessarily "different" arguments. The Board was thus persuaded by the Patent Owner's arguments that the proposed grounds proffered in the instant Petition involve evidence and arguments previously considered in the prior proceeding and were substantially the same as those previously presented. Accordingly, the Board exercised its discretion under § 325(d) to deny the instant Petition and not institute a CBM patent review of the '792 Patent.
Before Administrative Patent Judges Kevin F. Turner, Miriam L. Quinn, and Jeffrey W. Abraham
Decision by Administrative Patent Judge Kevin F. Turner