PTAB

CBM2014-00201

DealerSocket Inc v. AutoAlert LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Assessing and Managing Financial Transactions
  • Brief Description: The ’099 patent discloses a computer-based system for identifying customers who are favorable candidates for "pull-ahead" automobile lease or finance transactions. The system analyzes customer financial data to generate alerts for dealers when a customer is in a position to exit an existing vehicle contract early and enter a new one on favorable terms.

3. Grounds for Unpatentability

Ground 1: Lack of Written Description for Hybrid Processes (Claims 1–3, 6, 8, 10–13, 15–20)

  • Legal Basis: Unpatentable under 35 U.S.C. §112, first paragraph, for lacking adequate written description.
  • Core Argument:
    • Unsupported Combination: Petitioner argued that the challenged claims recite improper hybrids of three distinct and mutually exclusive processes disclosed in the specification: (1) a periodic data-mining batch process, (2) a reactive data-mining batch process triggered by new information, and (3) a customer-specific real-time process. The specification allegedly describes these only as distinct alternatives.
    • Claim Mapping Example: Petitioner asserted that independent claim 1 improperly combines elements from all three processes. For instance, the claim recites determining "in real-time" whether changed information affects favorability (an element of the third process) and then causing hardware to "periodically monitor" financial terms (an element of the first process). Petitioner contended this combination is not described or enabled anywhere in the specification.
    • Key Aspects: The core of this ground is that the claims create an "unsupported agglomeration" of disclosed processes, attempting to claim an invention that is different from what the patentee actually described.

Ground 2: Indefiniteness of Key Claim Terms (Claims 1, 8, 13 and their dependents)

  • Legal Basis: Unpatentable under 35 U.S.C. §112, second paragraph, for indefiniteness.
  • Core Argument:
    • "May Affect": Petitioner argued that the claim limitation requiring a determination of whether changed information "may affect" favorability is fatally indefinite. Because information that "may affect" favorability is indistinguishable from information that "may not affect" favorability, the claim boundary is unclear. This ambiguity allegedly makes it impossible for a person of ordinary skill in the art to determine the scope of the claims with reasonable certainty.
    • "Favorable": Petitioner contended the term "favorable" is also indefinite because the specification provides no objective standard for its meaning. The patent describes "favorable" transactions as potentially including scenarios where a customer pays less, pays more (to "buy up"), or changes vehicle class (to "buy down"). Without a determinate standard, the term allegedly fails to inform skilled artisans of the invention's scope.
    • Key Aspects: The combination of these two indefinite terms was argued to compound the ambiguity, rendering the claims invalid because they do not clearly circumscribe what is being claimed.

Ground 3: Lack of Written Description for Claimed Software Modules (Claims 1–3, 6)

  • Legal Basis: Unpatentable under 35 U.S.C. §112, first paragraph, for lacking adequate written description.
  • Core Argument:
    • Undisclosed Modules: Petitioner asserted that claim 1 recites eight distinct software modules, but the specification provides a written description for only three of them: the "information retrieval module," "financial terms comparison module," and "alert generation and transmission module."
    • Unsupported Limitations: The remaining five modules—"vehicle comparison module," "value estimation module," "second vehicle cost calculation module," "financial terms generation module," and "alert management module"—were argued to be entirely absent from the specification. Petitioner contended that introducing these functional modules for the first time in the claims, without antecedent basis in the disclosure, violates the written description requirement.
    • Key Aspects: This argument focused on the principle that a patentee cannot claim subject matter, even if it is an obvious variant, that was not described in the specification as part of the inventor's possession at the time of filing.

4. Key Claim Construction Positions

  • "Batch Process" vs. "In Real-Time": Petitioner argued these terms are central to the patent but are mutually exclusive, both in their ordinary meaning and as used in the specification.
    • Proposed Construction: Petitioner proposed that "batch process" be construed as a process performed on accumulated data that executes without manual intervention, and explicitly not in real time. Conversely, "in real-time" should be construed as computation performed during the actual time that an external process occurs, and explicitly not a batch process.
    • Relevance: This construction was critical to Petitioner's indefiniteness argument for claim 20, which recites "retrieving in real time of changed information... performed as a batch process." Petitioner argued this limitation is an "inexplicable inconsistency" and renders the claim nonsensical and invalid.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method patent review and cancellation of claims 1–3, 6, 8, 10–13, and 15–20 of the ’099 patent as unpatentable for failing to comply with the requirements of 35 U.S.C. §112.