Askeladden LLC v. FINnAvatIONs LLC

1. Case Identification

• Case #: IPR2016-01906
• Patent #: 8,132,720
• Filed: September 29, 2016
• Petitioner(s): Askeladden L.L.C.
• Patent Owner(s): Finnavations, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Financial Management System
• Brief Description: The ’720 patent discloses an online financial management system that captures transaction data upon completion of an online purchase. The system uses a "financial assistant" to intercept and populate this data into corresponding fields of a "personal financial management application," allowing a user to track and categorize transactions electronically.

3. Grounds for Unpatentability

Ground 1: Obviousness over Schrader - Claims 1-3, 12, and 14 are obvious over Schrader.

• Prior Art Relied Upon: Schrader (Patent 5,649,115).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schrader, an early Intuit patent, taught the core elements of the ’720 patent more than five years before its priority date. Schrader disclosed a computerized financial management platform with an "account store" (the claimed "personal financial management application") to track transaction data including date, amount, and payee ("merchant"). Schrader also disclosed software that functions as a "financial assistant" by generating a graphical user interface ("display form") to view and edit completed transaction data. This interface included fields for amount, date, merchant, and category, as well as a "save command" (the claimed "accept button"). Petitioner contended that the only limitations not expressly disclosed—an "online transaction" and a "card identification field"—were obvious modifications.
  • Motivation to Combine (for §103 grounds): While this ground is based on a single reference, Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to adapt Schrader's system for online transactions. Schrader taught receiving data from remote point-of-sale (POS) terminals, and by the ’720 patent’s priority date in 1999, using the internet for transactions was a well-known and obvious extension of this capability. Furthermore, a POSITA would have been motivated to display a "card identification field" on Schrader's edit screen for the simple, practical purpose of allowing the user to identify which account was being edited.
  • Expectation of Success: A POSITA would have had a high expectation of success in adapting Schrader’s financial tracking software to handle data from then-commonplace online transactions, as it involved applying known web technologies to an existing software framework.

Ground 2: Obviousness over Schrader and Cassidy - Claims 4-7, 11, 13, and 15-20 are obvious over Schrader in view of Cassidy.

• Prior Art Relied Upon: Schrader (Patent 5,649,115) and Cassidy (Patent 7,107,226).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Schrader by adding Cassidy to teach the web-based limitations in the dependent claims. Schrader provided the foundational financial management system. Cassidy disclosed an internet-based, online comparison shopping system that explicitly "operates within the context of a web browser" (e.g., Internet Explorer, Netscape Navigator). Cassidy’s system allowed users to purchase multiple items in a single transaction (a "plurality of particular items"), storing detailed order histories including products, quantities, and prices in a database.
  • Motivation to Combine: A POSITA would combine Schrader and Cassidy to migrate Schrader's desktop application to a web-based environment, which was a common technological trend in the late 1990s. The motivation was to centralize the application on a server, simplifying maintenance and eliminating the need for users to install updates on client computers. Cassidy provided the known blueprint for implementing such an online, browser-based system capable of handling complex transactions.
  • Expectation of Success: The combination would have yielded predictable results, as it involved integrating a known financial management backend (Schrader) with a standard web-based frontend architecture (Cassidy).

Ground 3: Obviousness over Schrader, Cassidy, and Chancey - Claims 8-10 are obvious over Schrader in view of Cassidy and Chancey.

• Prior Art Relied Upon: Schrader (Patent 5,649,115), Cassidy (Patent 7,107,226), and Chancey (Patent 5,842,185).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Chancey to the web-based system of Schrader and Cassidy to teach the intelligent categorization features of claims 8-10. These claims require creating "an associated list of merchants and categories based on previous selections" and providing a "suggested name" or "suggested category." Chancey, another Intuit patent, expressly taught a system for automatically assigning financial transactions to categories. If a transaction's payee was already known to the system, Chancey would assign the transaction to a category previously "associated with that payee."
  • Motivation to Combine: A POSITA would be motivated to improve the user efficiency of the Schrader/Cassidy combination by reducing manual data entry. Chancey provided the exact solution: a method for automatically suggesting or assigning transaction categories based on historical data for a given merchant. Integrating this feature would make the financial management application faster and more user-friendly, a well-understood goal in software development.
  • Expectation of Success: A POSITA would have reasonably expected success in adding Chancey’s known categorization logic to the combined Schrader/Cassidy system, as it involved a straightforward database lookup and display function.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’720 patent as unpatentable.