PTAB

IPR2017-00105

Askeladden LLC v. NextCard LLC

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1. Case Identification

2. Patent Overview

  • Title: Customized Credit Offer Strategy Based On Terms Specified By An Applicant
  • Brief Description: The ’080 patent discloses a computer-implemented method for providing customized credit offers. The system receives a plurality of terms requested by an applicant, including preferred terms, determines a set of available offers, selects an offer that best meets the applicant's specified terms, and transmits it to the applicant.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-6 and 9-11 over Tengel, Walker I, and Nabors

  • Prior Art Relied Upon: Tengel (Patent 5,940,812), Walker I (Patent 5,794,207), and Nabors (Patent 7,236,983).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tengel taught the foundational system for a computer-based loan origination process, including receiving applicant attributes, determining available loans from a database, and presenting ranked loan options. However, Tengel's method for indicating preferences was basic. Petitioner asserted that Walker I and Nabors remedied this deficiency by teaching systems where a user can specify a plurality of terms for a desired product (e.g., airline tickets, vehicles) and rank or assign point values to those terms to indicate preference and importance. The combination of Tengel's loan system with the user preference and ranking features from Walker I and Nabors allegedly rendered the independent claims obvious. Dependent claims relating to identifying a "most important term" (claim 4), selecting offers with preferred values (claim 5), and ranking terms (claim 6) were allegedly taught by Walker I's point system and Nabors's explicit ranking system.
    • Motivation to Combine: Petitioner asserted multiple motivations. A POSITA would combine the references to improve Tengel's functionality by incorporating more granular, user-driven preference specifications as taught by Walker I and Nabors, which was a known technique to yield the predictable result of a more user-friendly system. Furthermore, Nabors explicitly described itself as an improvement upon the system in Walker I, providing a direct suggestion to combine them. Finally, all three references were in the same general field of facilitating product selection in electronic commerce.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these elements, as it involved applying known user-interface techniques (ranking, prioritizing) from Walker I and Nabors to a known automated loan processing system (Tengel) to achieve a predictable improvement in functionality.

Ground 2: Obviousness of Claim 7 over Tengel, Walker I, Nabors, and Walker II

  • Prior Art Relied Upon: Tengel (Patent 5,940,812), Walker I (Patent 5,794,207), Nabors (Patent 7,236,983), and Walker II (Patent 5,970,478).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the specific limitations of claim 7, which required "obtaining terms for a current card from the applicant and receiving desired changes to those terms." While the primary combination taught a system for originating new offers, Petitioner argued Walker II specifically disclosed a method for "modifying the terms of existing credit accounts" to meet customer needs. Walker II taught a user providing an existing account identifier and selecting new parameters (e.g., lower interest rate, different credit limit), directly mapping to the unique elements of claim 7.
    • Motivation to Combine: A POSITA would combine Walker II with the primary references to extend the system's capabilities from only originating new accounts to also servicing and modifying existing ones. Petitioner noted that Tengel, Walker I, and Walker II were all related to the field of credit accounts, and that inventors from Walker I were also named on Walker II, strengthening the motivation to integrate their teachings. This combination would provide greater convenience for applicants wanting to modify existing accounts rather than only applying for new ones.

Ground 3: Obviousness of Claim 8 over Tengel, Walker I, Nabors, and Watson

  • Prior Art Relied Upon: Tengel (Patent 5,940,812), Walker I (Patent 5,794,207), Nabors (Patent 7,236,983), and Watson (Patent 8,271,379).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Watson to the primary combination to address claim 8's limitation of "displaying a plurality of cards having different terms to the applicant and determining which of the cards is requested." Petitioner contended that Watson taught a customized account building system where an applicant could build a personalized credit card by selecting various services and options. As the user made selections, the displayed image and terms of the credit card were updated to reflect the changes, thereby "displaying a plurality of cards having different terms."
    • Motivation to Combine: A POSITA would have been motivated to implement the enhanced, interactive display taught by Watson into the Tengel-based system to provide an improved user experience. Watson's "select-and-see" platform was described as an advanced way to display credit offers, which would have been an obvious and desirable feature to add to the more basic loan display of Tengel. Petitioner further noted that Watson's disclosure stated it was applicable to "loans and mortgages," providing a direct rationale for its combination with a loan origination system like Tengel.

4. Key Claim Construction Positions

  • Contingent Claim Limitations: Petitioner argued that the "if...if...otherwise..." structure of claim 1 created mutually exclusive, alternative method steps. Under the broadest reasonable interpretation, the prior art only needed to teach or suggest one of these three alternative scenarios to render the claim obvious, as it is not possible for a set of offers to meet the conditions for more than one alternative.
  • "Terms requested by the applicant": Petitioner argued this phrase should be construed to mean "terms specified by the applicant," encompassing a broad range of credit terms like interest rate, annual fee, and rewards programs that are entered or selected by a user.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of Patent 7,552,080 as unpatentable under 35 U.S.C. §103.