Paper 7
`Entered: April 17, 2017
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASKELADDEN L.L.C.,
`Petitioner,
`
`v.
`
`NEXTCARD, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00105
`Patent 7,552,080 B1
`____________
`
`
`
`Before MITCHELL G. WEATHERLY, CARL M. DeFRANCO, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Entered: April 17, 2017
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASKELADDEN L.L.C.,
`Petitioner,
`
`v.
`
`NEXTCARD, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00105
`Patent 7,552,080 B1
`____________
`
`
`
`Before MITCHELL G. WEATHERLY, CARL M. DeFRANCO, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-00105
`Patent 7,552,080 B1
`
`
`I. INTRODUCTION
`Askeladden L.L.C. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–11 of U.S. Patent No. 7,552,080
`B1 (Ex. 1001, “the ’080 patent”). Pet. 3. Nextcard, LLC (“Patent Owner”)
`filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition.
`To institute an inter partes review, we must determine if the
`information presented in the Petition shows “a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and
`for the reasons set forth below, we conclude that the information presented
`in the Petition establishes a reasonable likelihood that Petitioner would
`prevail in challenging claims 1–11 of the ’080 patent. Accordingly, pursuant
`to 35 U.S.C. § 314, we hereby authorize an inter partes review to be
`instituted as to claims 1–11.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the record developed thus far. This is not a final decision as to
`patentability of claims for which inter partes review is instituted. Our final
`decision will be based on the full record developed during trial.
`
`
`A. Related Proceedings
`Petitioner is not aware of any related proceedings. Pet. 1.
`
`
`B. The ’080 patent (Ex. 1001)
`The ’080 patent relates generally to an online application for a credit
`card and, more particularly, determining an offer based on an applicant’s
`preferences. Id. at 1:24–26.
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`According to the ’080 patent, an applicant for a credit card specifies
`certain credit card terms, such as the credit limit, the interest rate, or an
`annual fee, and may select a term (or terms) that is most important to him or
`her. See id. at 1:50–53, 4:38–41. Based on the applicant’s preferred terms, a
`server will generate an offer that satisfies all or some these preferences, to
`the extent possible. Id. at 1:56–59.
`
`
`C. Illustrative Claim
`Claims 1, 10, and 11 are independent, with claims 2–9 depending
`directly or indirectly from claim 1. Id. at 6:49–8:35. Claim 1 is illustrative
`of the subject matter at issue and is reproduced below:
`1. A computer implemented method of transmitting a
`customized offer to an applicant comprising:
`receiving over a network a plurality of terms requested by
`the applicant, wherein at least one of the requested
`terms is indicated by the applicant as preferred over at
`least another one of the requested terms;
`determining with one or more computers a set of offers for
`the applicant;
`if the set of offers includes at least one offer that meets all
`of the requested terms, selecting with the one or more
`computer from among the set of offers at least one offer
`that meets all of the requested terms;
`if the set of offers does not include at least one offer that
`meets all of the requested terms but includes at least
`one offer that meets at least one of the preferred
`requested terms, selecting with the one or more
`computers from among the set of offers at least one
`offer that meets the at least one of the preferred
`requested terms; and
`otherwise, not selecting an offer from the set of offers; and
`transmitting any selected offer from the set of offers to the
`applicant.
`
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`Id. at 6:49–7:2.
`
`D. References Relied Upon
`The Petitioner relies in relevant part on the following references:
`Short Name
`Reference
`Ex. No.
`Tengel
`US 5,940,812, issued Aug. 17, 1999
`1006
`Walker I
`US 5,794,207, issued Aug. 11, 1998
`1007
`Nabors
`US 7,236,983 B1, issued June 26, 2007
`1008
`Walker II
`US 5,970,478, issued Oct. 19, 1999
`1010
`Watson
`US 8,271,379 B1, issued Sept. 18, 2012
`1011
`
`
`
`E. Alleged Grounds of Unpatentability
`Petitioner contends that claims 1–11 of the ’080 patent are
`unpatentable under the following three grounds:
`Ground Basis
`Prior Art
`I
`§ 103
`Tengel, Walker I, and Nabors
`II
`§ 103 Tengel, Walker I, Nabors, and Walker II
`III
`§ 103 Tengel, Walker I, Nabors, and Watson
`Pet. 3.
`Petitioner also relies on the declaration testimony of Professor Justin
`Douglas Tygar, Ph.D. (Ex. 1013) in support of its Petition. Id.
`
`
`Claim(s)
`1–6 and 9–11
`7
`8
`
`II. ANALYSIS
`A. Claim Construction
`As a first step in our analysis, we determine the meaning of the claims
`using the “broadest reasonable construction in light of the specification of
`the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation approach). Under that standard, claim
`
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`terms are generally given their ordinary and customary meaning, as would
`be understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Although Petitioner and Patent Owner propose different
`interpretations for certain limitations recited in independent claims 1, 10,
`and 11 (compare Pet. 7–9, with Prelim. Resp. 3–7), we determine that there
`are no limitations that require express construction for the purposes of this
`Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
`necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`
`B. Ground I: Tengel, Walker I, and Nabors
`Petitioner contends that claims 1–6 and 9–11 are unpatentable under
`35 U.S.C. § 103 over Tengel, Walker I, and Nabors. Pet. 9.
`1. Tengel (Ex. 1006)
`Tengel discloses a system and method for matching the “best
`available loan to a potential borrower.” Ex. 1006, Abstr. In particular,
`Tengel describes a process for an applicant to complete an electronic form,
`where the applicant selects the loan type and specifies certain weighting
`factors for loan attributes. Id. at 2:33–37, 3:5–9. Tengel discloses that these
`loan attributes may be the loan’s interest rate, origination fee, and closing
`costs, for example. Id. at 7:50–51, Fig. 4. In response to the loan request,
`Tengel discloses that a single lender may offer a set of loan offers to the
`applicant, or a plurality of lenders may provide several loan offers in
`
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`competing for the applicant’s business. See id. at 5:14–19, 7:29–38, Fig.
`2A. To illustrate this disclosure, we reproduce Tengel’s Figures 2A and 2B,
`below:
`
`
`
`Tengel describes Figures 2A and 2B as a flowchart depicting the steps
`in operation of a preferred embodiment of the loan origination apparatus. Id.
`at 3:50–55.
`2. Walker I (Ex. 1007)
`Walker I discloses a method that allows prospective buyers to present
`an offer for goods and services to potential sellers, globally. Ex. 1007,
`Abstr. Walker I purports to improve the ability of prospective buyers and
`interested sellers to reach an agreement. See id. at 8:36–41. In particular,
`Walker I discloses a “Counteroffer Embodiment,” where sellers present a
`counteroffer to the prospective buyer with modified or additional conditions.
`Id. at 22:39–42, Fig. 18.
`
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`3. Nabors (Ex. 1008)
`Nabors discloses a process for helping customers purchase a product
`with multiple configurations, such as an automobile, over the Internet.
`Ex. 1008, 1:15–19. In particular, Nabors describes a process where the
`customer can assign a rank (e.g., between 1 and 5) to an automobile’s
`various features, such as transmission type, color, leather interior, price
`range, etc., and if the desired automobile configuration is not completely
`feasible, deliver a vehicle that best fits within the customer’s desired
`flexibility. See id. at 7:6–65, Fig. 4.
`4. Analysis
`Petitioner provides detailed claim charts for each of the challenged
`claims. Pet. 9–52. In addition, Petitioner provides supporting testimony
`from its expert, Dr. Justin Douglas Tygar. Ex. 1013.
`a. “receiving over a network a plurality of terms requested by the
`applicant, wherein at least one of the requested terms is
`indicated by the applicant as preferred over at least another
`one of the requested terms”
`To satisfy the above-claimed step, Petitioner relies on Tengel’s
`disclosure of an applicant’s use of a computer over the Internet to complete
`an electronic loan application. Pet. 16 (citing in part Ex. 1006, 2:33–37,
`3:5–9). Petitioner points out that Tengel describes that the applicant
`specifies weighting factors for loan attributes, such as type of loan, interest
`rate, and origination fees, and that these loan attributes satisfy the claimed
`“plurality of terms.” Id. at 16–17 (citing in part Ex. 1006, Fig. 4). To
`illustrate this finding, we reproduce Tengel’s Figure 4, below:
`
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`Tengel describes Figure 4 as a table of loan attributes. Id. at 3:59.
`Tengel discloses that the applicant may select weighting factors for each
`loan attribute. Id. at 3:5–9.
`Petitioner asserts that a person of ordinary skill in the art would
`understand that the “loan type” requested by the applicant is the term
`preferred over other terms, such as interest rate or origination fee. Pet. 17.
`In support of this assertion, Dr. Tygar testifies that a person of ordinary skill
`in the art would understand that an “applicant only wants to consider loan
`offers for that particular loan type and does not want to receive offers for
`other loan types.” Ex. 1013, § 8.6.1.3.6. Dr. Tygar explains that if an
`applicant desired an automobile loan (i.e., the preferred term), that this
`would be preferred over other requested terms, including the interest rate
`and origination fee, for example. Id.
`At this stage, we agree with Petitioner’s assertion that Tengel satisfies
`this step.
`
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`
`b. “determining with one or more computers a set of offers for the
`applicant”
`In addressing the above-claimed step, Petitioner relies on Tengel’s
`disclosure of database 110 that stores a set of loans from a single lender or
`multiple lenders. Pet. 24 (citing in part Ex. 1006, 7:29–38). To help
`illustrate this finding, we reproduce Figure 1 of Tengel, below:
`
`
`
`Figure 1 depicts Tengel’s loan origination apparatus (id. at 3:50–51),
`including server terminal 109 with database 110 (for storing loan acceptance
`criteria available to a potential buyer) and data processor 112 (id. at 5:3–16).
`Tengel further describes that a lender may control server terminal 109. Id.
`at 7:29–32.
`Petitioner also relies on Tengel’s disclosure that a lender may narrow
`the available loans based on loan type (e.g., auto or mortgage) or geographic
`
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`area, to thereby satisfy the particular step of “determining . . . a set of
`offers.” Pet. 24–25 (citing in part Ex. 1006, 5:20–28).
`At this stage, we agree with Petitioner’s assertion that Tengel satisfies
`this step.
`
`c. “if the set of offers includes at least one offer that meets all of
`the requested terms, selecting with the one or more computer
`from among the set of offers at least one offer that meets all of
`the requested terms”
`With regards to the above-claimed step, Petitioner relies on Tengel’s
`disclosure that a loan is offered to the applicant after the borrower attributes
`are compared with the loan acceptance criteria for an offered loan. Pet. 27–
`28 (citing in part Ex. 1006, 9:23–26, Fig. 2A). Petitioner points out that
`Tengel discloses that the loan having the highest weighted composite score
`is selected and provided to the applicant. Id. at 28.
`Tengel discloses that “it is a primary object of the invention is to [sic]
`more efficiently and effectively match a best available loan against borrower
`attributes.” Ex. 1006, 2:25–27 (emphasis added). Dr. Tygar testifies that a
`person of ordinary skill in the art would understand that Tengel’s “match”
`corresponds to an “offer that meets all of the requested terms,” as recited in
`the claim. Ex. 1013, § 8.6.1.5.4.
`At this stage, we agree with Petitioner’s assertion that Tengel satisfies
`this step.
`
`d. “if the set of offers does not include at least one offer that meets
`all of the requested terms but includes at least one offer that
`meets at least one of the preferred requested terms, selecting
`with the one or more computers from among the set of offers at
`
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`least one offer that meets the at least one of the preferred
`requested terms”
`With respect to the above-claimed step, Petitioner relies on a
`combination of Tengel, Walker I, and Nabors for satisfying this limitation.
`Pet. 32.
`In relying on Nabors, Petitioner refers to Nabors’ disclosure of a seller
`offering an automobile to a buyer, despite the fact that not all of the buyer’s
`requested features are available, based on the rank of the desired features
`provided by the buyer. Id. at 33 (citing in part Nabors, 9:4–14). Nabors
`discloses that if the exact automobile is not in inventory, the seller submits a
`quote to the customer based on the customer’s general automobile request
`and attribute flexibility, which includes certain options, such as color.
`Ex. 1008, 9:4–14, 7:6–14.
`In relying on Walker I, Petitioner refers to Walker I’s disclosure that
`sellers can provide counteroffers to an applicant. Pet. 33 (citing in part
`Ex. 1007, 22:40–23:5). Walker I describes a process where a seller prepares
`a counteroffer with “modified conditions.” Ex. 1007, 22:52–55, Fig. 18.
`In combining Tengel with Walker I and Nabors, Petitioner reasons
`that a person of ordinary skill in the art would have modified Tengel’s
`system to include Walker I’s and Nabors’ teachings of providing “modified”
`offers or “counteroffers” to applicants if there are no offers that meet all of
`the applicant’s requested terms. Pet. 34. Petitioner reasons that the
`modification “would provide greater functionality and flexibility to Tengel’s
`system and be more convenient for applicants.” Id. Petitioner also submits
`the declaration evidence of Dr. Tygar, who testifies that the “modification
`would have allowed more relevant offers in Tengel’s database,” which
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`would provide greater functionality and flexibility to Tengel’s system.
`Ex. 1013, § 8.6.1.6.9.
`At this stage, we agree with Petitioner’s assertion that Tengel, when
`combined with Nabors or Walker I, satisfies this step.
`e. “otherwise, not selecting an offer from the set of offers”
`To satisfy the above-claimed step, Petitioner relies on Tengel’s
`disclosure that a determination is made if there are any offers that are
`available to the applicant. Pet. 35–36 (citing in part Ex. 1006, Abstr.). Dr.
`Tygar testifies that a person of ordinary skill in the art would understand that
`Tengel discloses that if no loan was available to the applicant, an offer
`would not be selected from the set of offers and sent to the applicant. Ex.
`1013, § 8.6.1.7.3.
`In the alternative, and if Tengel did not disclose this element,
`Petitioner argues—with the support of Dr. Tygar’s testimony—that it would
`have been obvious to have modified Tengel’s system so that no loan offer
`would have been submitted to the applicant, if there did not exist an offer
`that satisfied at least one of applicant’s terms, as the loan would not likely be
`relevant to the applicant. Pet. 36; Ex. 1013, § 8.6.1.7.4.
`At this stage, we agree with Petitioner’s assertion that Tengel
`discloses this limitation and, additionally, that it would have been obvious to
`have modified Tengel’s system to otherwise satisfy it.
`f. “transmitting any selected offer from the set of offers to the
`applicant”
`In addressing the above-claimed step, Petitioner relies on Tengel’s
`disclosure that selected loan offers, such as the best loan offers, are
`transmitted to the applicant on a consumer screen of a consumer terminal.
`
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`Pet. 38 (citing Ex. 1006, 9:32–59, Fig. 6). Tengel explicitly discloses that
`the “rankings of best loans are displayed to the potential borrower” on
`screen 650 of Figure 6. Ex. 1006, 9:55–56.
`At this stage, we agree with Petitioner’s assertion that Tengel satisfies
`this step.
`
`g. Patent Owner’s Arguments
`In contesting the proposed ground, Patent Owner presents several
`arguments, which we address separately below.
`First, Patent Owner argues that Tengel’s “borrower attributes” do not
`satisfy the claimed “plurality of terms requested by the applicant,” as
`Tengel’s borrower “does not appear to be able to specify” these terms. See
`Prelim. Resp. 10. In particular, Patent Owner argues that Tengel’s borrower
`attributes are not provided as “any indication of preference of for [sic] any
`particular loan attribute before a set of offers is prepared.” Id. at 11. Patent
`Owner’s argument is unpersuasive at this stage of the proceeding.
`Tengel discloses that as a first step in its loan original process, “a
`potential borrower in search of a loan enters a first portion of borrower
`attributes via a consumer terminal.” Ex. 1006, 3:53–55, 8:31–33, Fig. 2A
`(step 206). Tengel further discloses that the applicant specifies weighting
`factors for loan attributes, such as interest rate and origination fees. Id. at
`Fig. 4. Tengel also discloses that “each of the weighting factors may be
`specified by the potential borrower depending on the importance of each of
`the loan attributes to the potential borrower.” Id. at 9:51–54. Dr. Tygar also
`testifies that Tengel discloses “a potential borrower/applicant . . . select[s] a
`loan type and specif[ies] weighting factors for loan attributes to describe the
`importance of the loan attributes to the particular applicant.” Ex. 1013, §
`
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`8.6.1.3.2. Accordingly, at this stage, the record supports Petitioner’s
`assertion that Tengel’s “borrower attributes” reasonably satisfy the claimed
`“plurality of terms . . . wherein at least one of the requested terms is
`indicated by the applicant as preferred” and before the step of “determining
`. . . a set of offers” is performed.
`Patent Owner also argues that Tengel’s system does not perform the
`step of “selecting . . . at least one offer” prior to the step of “transmitting any
`selected offer,” as called for in the claims. Prelim. Resp. 11. Patent
`Owner’s argument is unpersuasive at this stage of the proceeding.
`Tengel discloses that “[t]he loan origination system compares the
`borrower attributes of the potential borrower with all of the loan acceptance
`criteria stored in the database to determine any available loans for the
`potential borrower.” Ex. 1006, Abstr. Tengel further discloses, “[f]rom the
`rankings of [the] best loans, the borrower chooses a selected loan provided
`by the selected lender.” Id. Furthermore, Tengel’s Figures 2A and 2B also
`disclose that the step of determining if any loans are available (step 210) and
`the step of ranking the best loans (step 212) occur prior to the step of
`displaying the best loans to a potential borrower (step 216). Dr. Tygar also
`testifies that “one or more of the best loan offers ranked by the individual
`loan attributes and provided to the applicant meets all of the requested terms
`and is selected from the set of offers in Tengel.” Ex. 1013, § 8.6.1.5.3. For
`the foregoing reasons, we find that Tengel’s disclosed “determination” and
`ranking of available loans satisfies the claimed “selecting . . . at least one
`offer,” and Tengel’s disclosure of subsequently displaying the rankings of
`best loans to the borrower satisfies the subsequent step of “transmitting [a]
`selected offer.”
`
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`Patent Owner further argues that neither Nabors nor Walker I teach
`the claimed limitation “if the set of offers does not include at least one offer
`that meets all of the requested terms but includes at least one offer that meets
`at least one of the preferred requested terms, selecting with the one or more
`computers from among the set of offers at least one offer that meets the at
`least one of the preferred requested terms.” Prelim. Resp. 13. In support of
`this argument, Patent Owner asserts that Nabors instead discloses an
`“intermediary system that simply passes along the quotes to the prospective
`customer” (id. at 14) and Walker’s system “neither determines offers nor
`selects among them” (id. at 15).
`Patent Owner’s argument is not persuasive, as nonobviousness cannot
`be established by attacking the references individually when the
`unpatentability ground is predicated upon a combination of prior art
`disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
`1986). In the present case, Petitioner relies on a combination of Tengel,
`Walker I, and Nabors to satisfy the claimed limitation. Pet. 34. In
`particular, Petitioner reasons that a person of ordinary skill in the art would
`have modified Tengel’s system to incorporate Nabors’ and Walker’s
`teachings of providing an offer that includes at least one, but not all, of an
`applicant’s requested terms. See id. at 32–34. Petitioner reasons that this
`modification would have provided greater functionality and flexibility to
`Tengel’s system, resulting in a more convenient system for applicants. Id.
`at 34. Petitioner’s reasoning is also supported by the declaration testimony
`of Dr. Tygar. Ex. 1013, § 8.6.1.6.9. At this stage, we agree with Petitioner’s
`findings and reasoning.
`
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`Notwithstanding Patent Owner’s arguments, discussed above, we are
`persuaded at this stage of the proceeding by Petitioner’s asserted reasons for
`combining Tengel, Walker I, and Nabors and Petitioner’s showing that the
`proposed combination satisfies the limitations recited in claims 1–6 and 9–
`11. Therefore, we conclude that, on the record presented, Petitioner has
`demonstrated a reasonable likelihood of prevailing on its challenge to claims
`1–6 and 9–11 as unpatentable over Tengel, Walker I, and Nabors.
`
`
`C. Ground II: Tengel, Walker I, Nabors, and Walker II
`Petitioner contends that dependent claim 7 is unpatentable under
`35 U.S.C. § 103 over Tengel, Walker I, Nabors, and Walker II. Pet. 53.
`1. Walker II (Ex. 1010)
`Walker II discloses a method for “modifying the terms of existing
`credit accounts and customizing the terms of new credit accounts to meet
`specific customer needs.” Ex. 1010, 1:5–9. Walker further discloses that a
`customer may select new credit card parameters, such as a different interest
`rate or credit limit (id. at 5:43–46) and, based on these new parameters, the
`customer may be charged a fee (id. at 6:48–54). In particular, Walker
`discloses that “a customer requesting a lower interest rate and lower
`minimum payments might be charged a fee of twenty dollars.” Id. at 6:52–
`54.
`
`2. Analysis
`Claim 7 depends directly from claim 1 and further recites, “wherein
`receiving the plurality of terms requested by the applicant includes obtaining
`terms for a current card from the applicant and receiving desired changes to
`those terms.” Ex. 1001, 7:21–25.
`
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`To satisfy this claimed limitation, Petitioner reasons that a person of
`ordinary skill in the art would have modified Tengel’s system to allow an
`applicant to request changes to the applicant’s current card terms, such as by
`requesting a lower interest rate or a lower minimum payment, as taught by
`Walker II. Pet. 54. Petitioner reasons that the modification would
`“provid[e] greater convenience for the applicant” and “might help a credit
`issuer retain the applicant’s business,” as also taught by Walker II. Id.
`at 54–55 (citations omitted).
`Patent Owner does not respond to this challenge. We have considered
`Petitioner’s analysis, and on the record presented, find it persuasive.
`Accordingly, we determine that Petitioner has demonstrated a reasonable
`likelihood it will prevail on its challenge to claim 7 as unpatentable over
`Tengel, Walker I, Nabors, and Walker II.
`
`
`D. Ground III: Tengel, Walker I, Nabors, and Watson
`Petitioner contends that dependent claim 8 is unpatentable under
`35 U.S.C. § 103 over Tengel, Walker I, Nabors, and Watson. Pet. 56.
`1. Watson (Ex. 1011)
`Watson discloses a system where an “applicant builds and designs a
`desired credit card.” Ex. 1011, 4:25–28. Watson further discloses that an
`applicant can select various services and options, including frequent flyer
`miles and on-line bill paying. Id. at 6:62–7:6. Watson’s card building
`system then displays card information to the applicant, and the “applicant is
`allowed to choose from all service options and benefits available from the
`issuing institution.” See id. at 6:32–53, Fig. 3.
`
`
`
`17
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`IPR2017-00105
`Patent 7,552,080 B1
`
`2. Analysis
`Claim 8 depends directly from claim 1 and further recites, “wherein
`receiving the plurality of terms requested by the applicant includes
`displaying a plurality of cards having different terms to the applicant and
`determining which of the cards is requested.” Ex. 1001, 7:26–30.
`To satisfy this claimed limitation, Petitioner reasons that a person of
`ordinary skill in the art would have modified Tengel’s system to “display
`cards having different terms to the applicant and allow the applicant to select
`one of the cards as described by Watson.” Pet. 57. Petitioner reasons that a
`person of ordinary skill in the art would have been motivated to implement
`the enhanced credit offer display taught by Watson to Tengel’s system, and
`doing so would have provided for more advanced capabilities with
`additional flexibility and features. See id. at 57–58. Dr. Tygar testifies that
`a person of ordinary skill in the art would have recognized that the
`combination would “provide an interactive ‘select-and-see’ platform that
`allows applicants to temporarily select from a plurality of options before
`committing to a single account” and that the “combination could allow an
`applicant to more easily customize a loan product thereby providing greater
`convenience to the applicant.” Ex. 1013, § 8.6.3.1.6
`Patent Owner does not respond to this challenge. We have considered
`Petitioner’s analysis, and on the record presented, find it persuasive.
`Accordingly, we determine that Petitioner has demonstrated a reasonable
`likelihood it will prevail on its challenge to claim 8 as unpatentable over
`Tengel, Walker I, Nabors, and Watson.
`
`
`
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`
`III. CONCLUSION
`For the foregoing reasons, upon review of Petitioner’s analysis and
`supporting evidence, we conclude that Petitioner has demonstrated a
`reasonable likelihood that it will prevail with regards to its challenge of:
`claims 1–6 and 9–11 under Ground I; claim 7 under Ground II; and claim 8
`under Ground III. At this stage of the proceeding, although we exercise our
`discretion and institute review, we remind the parties that we have not yet
`made a final determination as to the patentability of any challenged claims.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is instituted as to claims 1–6 and 9–11 of the ’080 patent as
`unpatentable under 35 U.S.C. § 103 over Tengel, Walker I, and Nabors;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), an inter
`partes review is instituted as to claim 7 of the ’080 patent as unpatentable
`under 35 U.S.C. § 103 over Tengel, Walker I, Nabors, and Walker II;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), an inter
`partes review is instituted as to claim 8 of the ’080 patent as unpatentable
`under 35 U.S.C. § 103 over Tengel, Walker I, Nabors, and Watson;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, the trial
`commencing on the entry date of this Decision; and
`FURTHER ORDERED that the trial is limited to the grounds
`identified above.
`
`
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`IPR2017-00105
`Patent 7,552,080 B1
`
`PETITIONER:
`
`John Steven Gardner
`Alton L Absher III
`Bryan S. Foster
`Kilpatrick Townsend & Stockton LLP
`sgardner@kilpatricktownsend.com
`aabsher@kilpatricktownsend.com
`bfoster@kilpatricktownsend.com
`
`
`
`PATENT OWNER:
`
`Marc A. Hubbard
`HUBBARD JOHNSTON, PLLC
`mhubbard@hubbardjohnston.com
`
`
`
`20
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