PTAB

CBM2019-00019

Price f(x) AG v. Vendavo, Inc.

Title: System and Method for Grouping Products in a Catalog
Brief Description: The ’421 patent discloses computer-implemented systems and methods for preparing a price quote. The invention involves determining if a product belongs to a "product collection" by evaluating a "dynamic selection rule set," and then applying a complex pricing scheme with various rule types (e.g., inheritance, assertion, arbitration) to determine the final price.

Prior Art Relied Upon: Not applicable for this ground.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that all challenged claims are directed to the patent-ineligible abstract idea of determining a price through the application of rules, a fundamental economic practice. Under the first step of the Alice framework, Petitioner asserted the claims, stripped of verbiage, focus on this abstract concept. The method could be performed entirely in the human mind but for the recitation of a generic "computer system."
- Motivation to Combine (for §103 grounds): Not applicable.
- Expectation of Success (for §103 grounds): Not applicable.
- Key Aspects: Under the second step of Alice, Petitioner contended the claims lack an inventive concept. The implementation on a generic computer system, using conventional components, does not transform the abstract idea into a patent-eligible application. Petitioner argued that features like using a "dynamic selection rule set" or a hierarchy of rules are merely aspects of the abstract pricing scheme itself and do not improve the functioning of a computer. The claims were compared to those found abstract in cases like OIP Techs. and Versata, and distinguished from the technological improvement in McRO.

Prior Art Relied Upon: Not applicable for this ground.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that claims 1-15 are invalid as indefinite because they contain computer-implemented means-plus-function and step-plus-function limitations without disclosing the corresponding algorithm or structure in the specification. For example, the term "computerized price quotation system configured to" in claim 9 was argued to be a generic nonce term that fails to connote structure. Similarly, the method step in claim 1 of "applying said price rules ... determined in accordance with a pricing scheme" was argued to recite a function without disclosing the acts for its performance.
- Motivation to Combine (for §103 grounds): Not applicable.
- Expectation of Success (for §103 grounds): Not applicable.
- Key Aspects: The core of the argument was the specification's failure to provide an algorithm. Petitioner contended that for the conflict-resolution rules required by the claims (inheritance, assertion, arbitration, and connectivity rules), the specification only describes their function or goal (e.g., an inheritance rule "may be used to filter out" other rules) but provides no specific steps, flowchart, or mathematical formula detailing how to implement them. Without this corresponding structure, a person of ordinary skill in the art (POSITA) would not understand the scope of the claims.

Prior Art Relied Upon: Not applicable for this ground.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that, separate from the means-plus-function issue, the claims are indefinite because they recite conflicting and ambiguous instructions about which price rules to apply. Claim 1, for example, first requires "identifying one or more price rules associated with said particular product collection" and then "applying said price rules," which implies applying all previously identified rules.
- Motivation to Combine (for §103 grounds): Not applicable.
- Expectation of Success (for §103 grounds): Not applicable.
- Key Aspects: The indefiniteness arises from a subsequent "wherein" clause that redefines the rules to be applied as those "determined in accordance with a pricing scheme." Petitioner argued that a POSITA would not know whether to apply the originally identified "said price rules" or a different set of rules determined by the "pricing scheme." This conflict renders the claims insolubly ambiguous, as it is unclear how to differentiate an infringing pricing approach from a non-infringing one.

"computerized price quotation system configured to" (claims 9-15): Petitioner proposed this term should be construed under §112, ¶ 6 (pre-AIA) as a means-plus-function limitation. Petitioner argued that "system" is a generic nonce word that fails to recite sufficiently definite structure, and "computerized" does not add the necessary structural specificity. This construction is central to the indefiniteness argument in Ground 2.
"applying said price rules . . . wherein said one or more price rules . . . are determined in accordance with a pricing scheme . . ." (claim 1): Petitioner argued this phrase should be construed as a step-plus-function limitation under §112, ¶ 6 (pre-AIA). The argument was that the claim recites the function (determining and applying rules) without reciting the specific acts or algorithm of how this determination is accomplished, particularly given the purely functional description of the "pricing scheme" and its sub-rules (inheritance, assertion, etc.).

Petitioner requested institution of a Covered Business Method (CBM) patent review and cancellation of claims 1-15 of the ’421 patent as unpatentable under §101 and §112.