Takeaway: If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

In its Final Written Decision, the Board found the challenged claims of the ‘063 patent to be unpatentable as obvious. The ‘063 patent “relates to the automatic conversion of non-negotiable credits to funds.” “In particular, an entity and a commerce partner agree to permit transfers or conversions of non-negotiable credits to entity independent funds in accordance with a fixed credits-to-funds ratio” and the “conversion allows the user to make a purchase from the commerce partner who accepts as payment the converted loyalty points.”

For independent claim 8, “Petitioner argues that although MacLean’s LP points are consistent with the general concept that loyalty points earned from one merchant (e.g., United Airlines or Macy’s) could not be redeemed for goods or services at another merchant (e.g., Delta Airlines or Bloomingdale’s), MacLean does not explicitly describe that the points of the different LPs are non-negotiable.” “Petitioner relies on Sakakibara for its explicit description with respect to ‘non-negotiable credits’ and that such credits are converted into entity independent funds as claimed.” Moreover, Petitioner has identified sufficient reasoning for the proposed combination of MacLean and Sakakibara. “Petitioner argues that because both MacLean and Sakakibara relate to conversion of loyalty program points, one of ordinary skill in the art would have appreciated that Sakakibara’s teachings are applicable towards the system of MacLean.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).

Thus, the Board was persuaded by Petitioner’s arguments that claims 1-20 of the ‘063 patent are unpatentable.

Askeladden LLC v. McGhie, et al., IPR2015-00122
Paper 63: Final Written Decision
Dated: March 17, 2016
Patent: 8,523,063 B1
Before: Sally C. Medley, Joni Y. Chang, and Georgianna W. Braden
Written by: Medley