PTAB

CBM2014-00139

DealerSocket Inc v. AutoAlert LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: System and Method for Assessing and Managing Financial Transactions
  • Brief Description: The ’791 patent discloses a computer-implemented system for assessing financial transactions, specifically for identifying "pull-ahead" opportunities in the automotive industry. The system analyzes customer and vehicle data to determine if a customer can advantageously trade their current vehicle for a new one with a similar periodic payment.

3. Grounds for Unpatentability

Ground 1: Subject Matter Ineligibility - Claims 1 and 3-7 are ineligible under 35 U.S.C. §101

  • Prior Art Relied Upon: This ground was primarily based on legal precedent and admissions from the patent owner and inventor, rather than traditional prior art documents.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the claims are directed to the abstract idea of performing a series of mathematical manipulations. The core of claim 1 was characterized as data gathering (retrieving customer and vehicle information), followed by abstract calculations (calculating a new payment based on estimated equity, comparing the new payment to the old payment, and determining if the difference is below a threshold), and concluding with conventional post-solution activity (generating an alert). Petitioner contended this sequence of steps constitutes an unpatentable abstract idea.
    • Key Aspects: The petition emphasized that the claimed computer system is not integral to the invention but is merely used as a tool to automate a known business process for speed and scale. Evidence cited included the inventor's testimony that the same process was performed manually for "one client at a time" before the alleged invention. Furthermore, Petitioner highlighted that in related district court litigation, a judge had already issued an order finding claim 1 was likely invalid under §101 as an abstract idea. The petition also argued the claimed method is inoperable because its steps only determine if a favorable transaction exists overall, but fail to perform the specific claimed step of determining whether current retrieved information is what affects the favorability.

Ground 2: Obviousness over Known Manual Processes - Claims 1 and 3-7 are obvious under 35 U.S.C. §103

  • Prior Art Relied Upon: The background knowledge of a person of ordinary skill, including well-known manual business practices in the automotive sales industry as detailed in the declarations of Brian Allan and Darren VanCleave.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the claimed invention is nothing more than the obvious automation of a decades-old manual process. The petition deconstructed claim 1 into its "analog" steps and mapped each step to prior art business methods. Declarations from industry veterans described performing the exact same process in the 1980s using paper files ("tickler" files), amortization charts, Kelley Blue Book for valuations, and handheld calculators. This manual process involved retrieving customer financial data, estimating vehicle equity, calculating a potential new payment on a different vehicle, and comparing the payments to identify a sales opportunity.
    • Motivation to Combine: A person of ordinary skill in the art would have been motivated to automate this known, time-consuming manual process using a general-purpose computer. The motivation was simple and compelling: to increase the speed, efficiency, and scale of the analysis, allowing a salesperson to evaluate an entire customer database rather than just a handful of prospects per day. Petitioner noted that the inventor's own planning documents for the "Balboa Software" confirmed the goal was to "automat[e] the process" to make it "commercially viable."
    • Expectation of Success: There would have been a high expectation of success in automating these routine data retrieval and calculation steps, as using computers for such tasks was a well-understood and predictable application of technology at the time of the invention.

4. Key Claim Construction Positions

  • "configuration request": Petitioner argued this term is indefinite under 35 U.S.C. §112 because the specification provides no antecedent basis or clear guidance as to its meaning. The petition asserted that the specification never uses the full term "configuration request" and that its use of "request" is in a different context (generating a deal sheet, not retrieving information). Without a definition or example, a person of ordinary skill would not understand what the term configures or what the scope of the limitation is.
  • "may affect": Petitioner contended this term is indefinite, lacks written description support, and is not enabled. The argument centered on the ambiguity of "may," which fails to clearly circumscribe the claim. A process that determines whether information "may affect" an outcome would seemingly read on situations where the information does affect the outcome as well as those where it does not, rendering the boundary of the claim unascertainable and making it impossible for the public to determine what infringes.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method patent review and cancellation of claims 1 and 3-7 of the ’791 patent as unpatentable for failing to comply with 35 U.S.C. §§ 101, 103, and 112.