Paper 9 Tel: Entered: April 15, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper 9 Tel: Entered: April 15, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ASKELADDEN LLC, Petitioner, v. isourceloans LLC, Patent Owner. Case Before RICHARD E. RICE, SCOTT A. DANIELS, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION Denying Inter Partes Review 37 C.F.R

2 I. INTRODUCTION A. Background Askeladden LLC ( Petitioner ) filed a Petition to institute an inter partes review of claims 1 20 of U.S. Patent No. 7,340,435 B2 (Ex. 1001, the 435 patent ). Paper 1 ( Pet. ). isourceloans LLC ( Patent Owner ) did not file a Preliminary Response. We have jurisdiction under 35 U.S.C. 314(a), which provides that an inter partes review may not be instituted unless... there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. For the reasons given below, we do not institute an inter partes review in this proceeding. B. Related Proceedings Petitioner and Patent Owner indicate that the 435 patent is the subject of the following co-pending federal district court case: isourceloans LLC v. Caliber Home Loans, Inc., No. 2:14-cv JRG-RSP (E.D. Tex.). Pet. 1; Paper 6, 1. C. Asserted Grounds of Unpatentability and Evidence of Record Petitioner contends that the challenged claims are unpatentable under 35 U.S.C. 103 based on the following grounds (Pet ). References Basis Claim(s) Challenged Peterson 1, Guttentag 2, and RESPA and Handbook 3 1 PCT Pub. No. WO 97/36253, published Oct. 2, 1997 (Ex. 1003, Peterson ). 2 Guttentag et al., Point-of-Sale Mortgage Technology, Housing Finance International (1997) (Ex. 1007, Guttentag ). 3 Comptroller of the Currency Administrator of National Banks, 2

3 References Basis Claim(s) Challenged Peterson, Guttentag, RESPA Handbook, and HUD Pamphlet 4 Peterson, Guttentag, RESPA Handbook, and Oh Petitioner also provides testimony from Steven R. Kursh, Ph.D., CSDP, CLP. Ex ( the Kursh Declaration ). D. The 435 Patent The 435 patent is directed to a system and method for processing mortgage loan data. Ex. 1001, Abstract. More specifically, the 435 patent explains that [t]he invention... [is] a method and system for a loan broker enabling... persons to originate a real estate loan or mortgage transaction for potential home buyers or homeowners in compliance with [the Real Estate Settlement Procedures Act (RESPA)] and other regulatory agencies. Id. at 1: The 435 patent describes a computer system for originating a real estate loan transaction. Id. at 2:4 8. Figure 2 generally illustrates the process for loan origination employed by the computer system, and is reproduced below. Id. at 2: Comptroller s Handbook, Consumer Compliance Examination Real Estate Settlement Procedures (1996) (Ex. 1006, RESPA Handbook ). 4 U.S. Department of Housing and Urban Development, Buying Your Home Settlement Costs and Helpful Information (1997) (Ex. 1008, HUD Pamphlet ). 5 Oh, Keytack H., When is a Good Time to Refinance? Illustrating Income Property Cases on the Computer, Proceedings of the 8 th Annual Conference of Computers and Industrial Engineering, Industrial Engineering Computers Applications in Engineering Economy, (1986) (Ex. 1015, Oh ). 3

4 Figure 2 is a flow chart illustrating the steps for loan origination using the computer system of the 435 patent. At step 26a, useful information already possessed by a loan originator is identified. Id. at 4: Data is imported to the loan origination system at step 26b, and the necessary forms for the borrower are generated at step 26c. Id. at 4: Additional information from the borrower is collected at step 26d, and all of the 4

5 borrower information is transferred to a lender/broker where the loan application is finalized and approved at step 26e. Id. at 4: The 435 patent explains that a number of more detailed flow charts (Figs. 3A 3AE) illustrate the loan origination process for a variety of different types of loan originators (real estate agents or brokers, home builders, etc.). Id. at 4: For the various originators, the process begins with an initial determination as to whether a special license is required for loan origination, and, if so, whether the originator has the required license. See, e.g., id. at 5:21 24, Fig. 3B. The process proceeds to gather information from the borrower to determine loan approval. See, e.g., id. at Figs. 3C E, Y AA. E. Illustrative Claim As noted above, Petitioner challenges claims Claim 1 is the only independent claim challenged, and claims 2 20 depend from claim 1. Claim 1 is reproduced below: 1. A system comprising: means for processing a mortgage loan for a loan customer by a loan originator at least partly operating a loan originator computer in coordination with a loan broker distinct from the loan originator, comprising: means for the loan originator providing services necessary for the origination of the mortgage loan and not duplicative of services provided by the loan broker, further comprising: means for transferring the loan application data for the loan customer from a loan originator computer to the loan broker computer operated by a loan broker; means for reviewing the loan application data to determine completeness; and means for completing the loan application whenever loan 5

6 application data is incomplete by contacting the loan originator; and means for verifying the services are legally compliant with the guidelines of federal and state law. Ex. 1001, 27: II. ANALYSIS A. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable interpretation in light of the specification in which they appear and the understanding of others skilled in the relevant art. 37 C.F.R (b); see also In re Cuozzo Speed Techs., LLC., 778 F.3d 1271, (Fed. Cir. 2015) ( Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA, and the standard was properly adopted by PTO regulation. ). Applying that standard, we interpret the claim terms of the 435 patent according to their ordinary and customary meaning in the context of the patent s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for several terms, including means for reviewing the loan application data to determine completeness and means for completing the loan application whenever loan application data is incomplete by contacting the loan originator. Pet Petitioner acknowledges, and we agree, that these are means-plus-function limitations that should be construed in accordance with 35 U.S.C. 112, 6. 6 See id. at 6 Section 4(c) of the Leahy-Smith America Invents Act ( AIA ) redesignated 35 U.S.C. 112, 6, as 35 U.S.C. 112(f). Pub. L. No , 125 Stat. 284, 296 (2011). Because the 435 patent has a filing date before 6

7 6, 8. We address only means for reviewing the loan application data to determine completeness and means for completing the loan application whenever loan application data is incomplete by contacting the loan originator, which are recited in claim 1, as those phrases are dispositive for our decision in this case. As to the means for reviewing the loan application data to determine completeness, Petitioner identifies the function as reviewing the loan application data to determine completeness. Id. at 8. Petitioner identifies the corresponding structure as a computerized [] system... for coordinating and processing mortgage loans ( 435 patent, 3:31-33 and Fig. 1; Ex. 1001) including memory unit [] with [] program software (id., 3:60-4:3; Ex. 1001), operable to perform the algorithmic step of review[ing] the package to determine whether or not the package is complete (id., 16:38-40 and Fig. 3Y; Ex. 1001). Id. (citing Ex ). Paragraphs of the Kursh Declaration simply repeat the contentions in the Petition noted above. With respect to the means for completing the loan application whenever loan application data is incomplete by contacting the loan originator, Petitioner identifies the function of the limitation as completing the loan application whenever loan application data is incomplete by contacting the loan originator. Id. at 8. Petitioner identifies the corresponding structure as a computerized [] system... for coordinating and processing mortgage loans ( 435 patent, 3:31-33 and Fig. 1; Ex. 1001) including memory unit [] with [] program software (id., 3:60- September 16, 2012 (effective date of 4(c)), we will refer to the pre-aia version of

8 4:3; Ex. 1001), operable to perform the algorithmic step of the Broker/Lender contact[ing] the originator to get missing information and arrange for delivery of missing documents [i]f the package is incomplete (id., 16:40-42 and Fig. 3Y; Ex. 1001). Id. (citing Ex ). Paragraphs of the Kursh Declaration simply repeat the contentions in the Petition noted above. Our rules require Petitioner to direct us to the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. 37 C.F.R (b)(3). As the Federal Circuit has noted, structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing 112, 6. Saffran v. Johnson & Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). We are not persuaded that Petitioner has identified sufficient corresponding structure for these means-plus-function limitations. Petitioner s asserted structure for each of the means-plus-function limitations in question is a computerized system with program software operable to perform the recited function. Pet. 8. For the corresponding structure in both limitations, Petitioner cites column 3, lines 31 33, and column 3, line 60, to column 4, line 3, of the 435 patent. Id. The first of these passages (column 3, lines 31 33) generally states that [t]he present invention is a computerized data processing system and method for coordinating and processing mortgage loans. The second (column 3, line 8

9 60, to column 4, line 3) discusses software and data stored in computer memory of the computerized data processing system generally. For example, the cited passage explains that [t]he software of the computer system 10 preferably includes the following commercially available application software or its equivalent: WINDOWS 95 software or greater software available from Microsoft and a commercially available database such as Microsoft Access. Ex. 1001, 3: As such, Petitioner contends that the means-plus-function limitations are computerimplemented. However, the corresponding structure for such a limitation must be more than simply a general purpose computer. [T]he corresponding structure for a claim for a computer-implemented function is the algorithm disclosed in the specification. Aristocrat Techs. Austl. Party Ltd. vs. Int l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Here, Petitioner has failed even to establish that the structure corresponding to the recited reviewing and completing functions is a general purpose computer. Moreover, Petitioner also has failed to identify a computer-implemented algorithm in the specification corresponding to the recited functions. The passages discussed above discuss the computer components generally employed in various portions of the 435 patent s computer system, but are not linked to the recited reviewing and completing functions. The additional portions of the 435 patent identified by Petitioner as corresponding to the recited reviewing and completing functions describe a person ( a Broker/Lender ) performing these functions, not a structure, such as a computer with a specific algorithm, as alleged by 9

10 Petitioner. See Ex. 1001, 16:38 42 ( Broker/Lender receives package from the originator and reviews the package to determine whether or not the package is complete and [i]f the package is incomplete, the Broker/Lender contacts the originator to get missing information ). Petitioner has not directed us to any portion of the 435 patent specification or prosecution history sufficient to link a structure to the function of reviewing the loan application data to determine completeness or completing the loan application whenever loan application data is incomplete by contacting the loan originator. Thus, we are unable to construe the claimed means for reviewing and means for completing, and we do not institute inter partes review of claim 1 or claims 2 20, which depend from claim 1. III. ORDER For the reasons given, it is ORDERED that the Petition is denied and no inter partes review is instituted. 10

11 PETITIONER: Donald R. Steinberg Brian M. Seeve WILMER HALE LLP PATENT OWNER: Jason H. Vick Robert R. Brunelli Benjamin B. Lieb SHERIDAN ROSS, PC 11