Paper Entered: 15 August 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Entered: 15 August 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DOMINION DEALER SOLUTIONS, LLC. Petitioner v. AUTOALERT, INC. Patent Owner (JL) Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION Dominion Dealer Solutions, LLC ( Dominion ) filed a petition requesting an inter partes review of claims 1-11 of U.S. Patent No. 8,396,791 (Ex. 1001, the 791 patent ). Paper 1, Pet. The patent owner, AutoAlert, Inc., ( AutoAlert ) filed a preliminary response. Paper 9, Prelim. Resp. We have jurisdiction under 35 U.S.C The standard for instituting an inter partes review is set forth in 35 U.S.C. 314(a) which provides as follows: THRESHOLD -- The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. Upon consideration of the petition and AutoAlert s preliminary response, we determine that the information presented by Dominion has not established that there is a reasonable likelihood that Dominion would prevail in showing the unpatentability of claims 1-11 of the 791 patent. Accordingly, we do not institute an inter partes review of claims 1-11 of the 791 patent. The petition is denied. A. Related Proceedings Dominion indicates that the 791 patent is involved in co-pending litigation captioned AutoAlert, Inc. v. Dominion Dealer Solutions, LLC, AutoBase, Inc. and 110 Reynolds, LLC, SACV JST (JPR) (C.D. Cal.). Pet. 2. 2

3 Dominion also has filed four other petitions seeking inter partes review of the following patents: U.S. Patent No. 8,005,752 (IPR ); U.S. Patent No. 7,827,099 (IPR ); U.S. Patent No. 8,086,529 (IPR ); and U.S. Patent No. 8,095,461 (IPR ). Id. B. The 791 Patent The subject matter of the 791 patent relates to alerting dealers of a product when favorable financial terms are available to customers. Ex. 1001, 1: The 791 patent states that, rather than paying cash for a product, a person may enter into a financial agreement to make a series of payments for a specified term, such as a lease agreement for an automobile with monthly payments. Ex. 1001, 1: During the term of the financial agreement, a person may desire to use a second product in lieu of the current product. Ex. 1001, 1: For example, a person having two years of payments remaining on an automobile lease may be willing to return the automobile to a dealership and enter a new lease for a newer model. Ex. 1001, 1: A person might agree to enter into a replacement agreement if the replacement product and payment terms are acceptable or sufficiently similar. Ex. 1001, 1: If a seller, such as an automobile dealership, knows when a customer is able to enter into a new financial agreement under terms favorable to the customer, the seller can take advantage of that knowledge by offering a deal to the customer that includes the favorable terms. Ex. 1001, 1: The 791 patent states that it provides a solution to that problem by generating and sending alerts to dealers systematically when customers are able to enter new financial arrangements under 3

4 terms favorable to the customer. Ex. 1001, 1:66 to 2:2. Figure 36 of the 791 patent illustrates a process of alerting a dealership when a customer can be offered a new lease or other financial arrangement. Ex. 1001, 3:62-65, 18: Figure 36 of the 791 patent is reproduced below: Figure 36 illustrates a method of generating an alert. According to the embodiment of Figure 36, at block 3610, process 3600 retrieves customer information, financing information, and product information. Ex. 1001, 18: The customer and financing information can include information about any lease or other financial arrangement already involving a customer, along with information about financial arrangements currently available from financial institutions. Ex. 1001, 18:64-19:1. That information can be retrieved automatically by an automated information retrieval module. Ex. 1001, 4

5 19:5-12. At block 3620, process 3600 compares each customer s current financial terms with potential financial terms being offered by financial institutions. Ex. 1001, 19: That comparison preferably takes into account all available financial variables that affect whether a customer advantageously can switch financial arrangements, such as interest rates, payoff periods, amount due on the current financial arrangement, any dealer or manufacturer incentives, and the like. Ex. 1001, 19: In block 3630, process 3600 generates, based on the comparison in block 3620, a number of alerts to inform a dealership that a customer advantageously can switch financial arrangements. Ex. 1001, 19: In one embodiment, process 3600 generates an alert whenever the difference between the amount that a customer will pay for a new but comparable financial arrangement as compared to the customer s current financial arrangement is below a threshold value, such as 10% of the current payment. Ex. 1001, 19: Finally, in block 3640, process 3600 transmits the generated alerts to a dealership. Ex. 1001, 19: In another embodiment, new information, such as a change in a financial variable, may initiate much of the same processing described with respect to Figure 36. Ex. 1001, 20: New information is used to compare current financial terms to potential financial terms and generate alerts as explained with respect to blocks 3620, 3630, and 3640 described above. Ex. 1001, 20: The new information may be inputted by a dealer or received by an automated process. Ex. 1001, 20:

6 C. Exemplary Claims Claims 1 and 6 are independent and are directed respectively to a method and a system. Claims 2-5 each depend directly on claim 1, and claims 7-11 each depend directly on claim 6. Claim 1 is reproduced below (emphasis added): 1. A method comprising: by a computer system comprising computer hardware: retrieving at least a portion of customer information, first financial terms that a customer has for a first vehicle, and first vehicle information; retrieving at least a portion of second vehicle information for a second vehicle and second financial terms available to the customer for the second vehicle; retrieving a configuration request for replacing the first vehicle of the customer with a different vehicle; in response to the configuration request, retrieving current information associated with at least one of the customer information, the first financial terms that the customer has for the first vehicle, the first vehicle information, the second vehicle information, or the second financial terms available to the customer for the second vehicle; determining, by the computer system, whether the current retrieved information may affect whether it is favorable for the customer to replace a first vehicle and first financial terms with a second vehicle and second financial terms by at least: calculating one or more new payments based on an estimated equity value of the first vehicle derived from the first financial terms, and based on the second financial terms; determining if the one or more new payments satisfy at least a condition based at least in part on the 6

7 first financial terms and the second financial terms, wherein the determination comprises calculating a difference between the one or more new payments and an existing periodic payment for the first vehicle, and determining whether the difference is less than or equal to a preset acceptable threshold value; generating a message if it is determined that the retrieved information may affect whether it is favorable for the customer to replace the first vehicle and first financial terms with the second vehicle and second financial terms; and transmitting the message to a dealer. Claim 6 is drawn to a computer system comprising a processor and a computer readable medium storing machine-executable instructions including a plurality of executable modules for causing the computer system to perform a number of process steps. The process steps recited are essentially the same as those recited above in the context of method claim 1. Claims 1 and 6 include similar limitations and need not be discussed separately. D. Prior Art Relied Upon Dominion relies upon the following prior art references: Weiss U.S. Pub. App. 2002/ Mar. 21, 2002 (Ex. 1002) Sheets U.S. Pub. App. 2001/ Dec. 6, 2001 (Ex. 1003) Jones U.S. Patent 7,249,322 July 24, 2007 (Ex. 1004) E. The Alleged Grounds of Unpatentability Dominion alleges that the challenged claims are unpatentable based on the alleged grounds of unpatentability set forth in the table below. Pet. 6:15-19; 38:13-14; 39:

8 Reference(s) Basis Claims Challenged Weiss 102(b) 1-11 Sheets 102(b) 1-11 Weiss and Sheets 103(a) 1-11 Weiss and Jones 103(a) 1-11 Weiss, Sheets, and Jones 103(a) 1-11 II. ANALYSIS A. Claim Construction In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R (b); Office Patent Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012). Also, claim terms are 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 Technology, Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). financial terms Claims 1 and 6 each recite first financial terms and second financial terms. The language financial terms is not defined expressly by the 791 patent. Neither Dominion nor AutoAlert provides an explicit construction. However, AutoAlert s argument implies that property valuation is neither first nor second financial terms. Prelim. Resp For reasons discussed below, we determine 8

9 that the broadest reasonable interpretation for financial terms in the context of the specification of the 791 patent is money arrangement in a financial agreement. Thus, first financial terms for a first vehicle means money arrangement in a financial agreement for the first vehicle, and second financial terms for a second vehicle means money arrangement in a financial agreement for the second vehicle. The 791 patent explains that, with respect to the embodiment of Figures 36, 37, and 38, the system compares each customer's current financial terms with potential financial terms being offered by financial institutions. Ex. 1001, 19:16-24, 20:37-41, 20: That functionality is implemented by comparing a customer s current financial arrangement to a potential new financial arrangement to determine whether the customer is able to enter into a new financial arrangement on terms favorable to the customer. Ex. 1001, 2:12-17, 5: Examples of financial agreements include purchase agreements, lease agreements, deferred or balloon payment agreements, or the like. Ex. 1001, 1: Figure 1E of the 791 patent illustrates a deal sheet including information about a current agreement for a current product. Ex. 1001, 3:42-43, 5: Figure 1E of the 791 patent is reproduced below: 9

10 Figure 1E illustrates a deal sheet about a current product According to Figure 1E, section 112 includes information about a current lease agreement, including the original capitalized cost, the residual amount, the contract term, a base periodic payment, an actual periodic payment, the payoff amount, a trade-in value, etc. Ex. 1001, 6: The 791 patent is explicit that this is the type of information considered when comparing agreements. For example, when comparing financial terms, the 791 patent takes into account all available financial variables that affect whether a customer advantageously can switch financial arrangements, including interest rates, payoff periods, amount due on the current financial arrangement, any dealer or manufacturer incentives currently available, and the like. Ex. 1001, 19: More specifically, the 791 patent describes financial information about existing and current agreements and uses that information to perform the disclosed comparisons. Ex. 1001, 6:24-39, 19: Independent claims 1 and 6 refer to 10

11 first financial terms and second financial terms and use those terms to perform the claimed comparison. In the context of the 791 patent, the broadest reasonable interpretation of financial terms means money arrangement in a financial agreement. Financial terms may include property valuation as long as the property valuation is a part of money arrangement for a property under the agreement. For example, the 791 patent describes an embodiment in which the trade-in value of a vehicle is part of an existing agreement. Ex. 1001, 6: B. Claims 1-11 Anticipated by Weiss Dominion contends that claims 1-11 are unpatentable under 35 U.S.C. 102(b) as anticipated by Weiss. Dominion relies on claim charts explaining how Weiss allegedly meets the claims, and also on the declaration of Dr. Ward A. Hanson. Ex We have considered Dominion s analysis and supporting evidence, as well as AutoAlert s arguments, and are not persuaded that Dominion has demonstrated a reasonable likelihood that it would prevail on showing that claims 1-11 are anticipated by Weiss. Weiss describes a system that facilitates evaluations and transactions relating to real and other properties. Ex. 1002, 16:2-5. A core property valuation system includes one or more servers having access to one or more databases of historical real estate sales and real estate characteristics information. Ex. 1002, 25:1-4. Application systems may be linked to the property valuation system and include or access various companion functional modules. Ex. 1002, 26:1-3. These functional modules are configured to generate certain types of information or perform certain tasks using information from the property valuation system and other relevant information. Ex. 1002, 26:3-7. Weiss describes a total of thirteen 11

12 different functional modules, 1 any or all of which may be embodied in a given system. Ex. 1002, 84:1-4. Certain modules may interact with other modules. E.g., Ex. 1002, 211:9-15. While the property valuation system is described primarily with respect to real property, Weiss states that the property valuation system also could be configured to accommodate any type of property where sales and characteristics information is available, including vehicles such as automobiles or boats. Ex. 1002, 25:12-16, 359: One of the functional modules described by Weiss is a relocation alert (RA) system. Ex. 1002, 46:1. The RA system provides a client with the capability to evaluate or have evaluated buying opportunities in a second market relative to a first market. Ex. 1002, 46:1-6. Markets may be defined in a variety of manners, such as a certain geographic location, a certain tier or price range in a given geographic location, a certain type of property regardless of the price, etc., and the first and second markets can be defined differently. Ex. 1002, 47:1-11, 210:1-16. The RA system tracks the second market with respect to the first market over time, and determines when the difference between the property value 1 Weiss describes the following individual functional modules: Automatically Adjusting Equity Loan (AAEL) (Ex. 1002, 85-97); Equity Card (EC) (Ex. 1002, ), Unsecured Debt Conversion (UDC) (Ex. 1002, ), Rapid Close (RC) Conforming Loan (Ex. 1002, ), Automated PMI Removal (Ex. 1002, ), Property Rating & Ranking (R&R) (Ex. 1002, ), Property Evaluation & Alert (E&A) (Ex. 1002, ), Seller-Based Property Rating (SPR) (Ex. 1002, ), Relocation Alert (RA) (Ex. 1002, ), Relocation Forecasting (RF) (Ex. 1002, ), Property Tradeoff (PT) (Ex. 1002, ), Broker Evaluation (BE) (Ex. 1002, ), and Property Guaranteed Valuation (PGV) (Ex. 1002, ). 12

13 of a subject property in the first market and a candidate property in the second market falls below a certain threshold. Ex. 1002, 48:9-17, 215:1-6. Upon such a determination, the RA system generates an alert informing the client that it is advantageous to seek a property in the second market. Ex. 1002, 48:20-23, 215:3-6. The RA system may be implemented as an extension of the separately described evaluation and alert (E&A) system and also can include one or more components of the separately described rating and ranking (R&R) system. Ex. 1002, 211:9-15. Weiss does not describe explicitly the RA system directly interacting with or relying on systems other than the E&A and R&R systems. In describing how Weiss allegedly anticipates claims 1 and 6, Dominion provides citations to eleven of the thirteen different functional modules of Weiss. For example, each of claims 1 and 6 requires calculating one or more new payments based on an estimated equity value of the first vehicle derived from the first financial terms, and, based on the second financial terms, and Dominion cites to Weiss s description of seven different functional modules to account for that feature. Pet. 30:1-8. The seven modules do not disclose the claim feature collectively. Dominion argues (Pet. 32:4-7): Because Weiss can calculate the difference in price between a first [vehicle] and a second [vehicle], determine the shortfall amount, and determine the customer s eligibility for a loan, it is inherently taught in Weiss that the system can be used to calculate a new payment. Dominion incorrectly applies the law of anticipation as well as the doctrine of inherent disclosure. Separate disclosures of calculating a difference in price, determining a shortfall amount, and determining a customer s eligibility for a loan do not anticipate a limitation that involves all three actions in a specific manner, 13

14 for instance, calculating one or more new payments based on an estimated equity value of the first vehicle derived from the first financial terms, and, based on the second financial terms. Dominion does not explain adequately how the disparate disclosures of Weiss satisfy determining a new payment based on first and second financial terms. Anticipation requires that a reference disclose not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim. Net MoneyIN v. VeriSign, 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). The fact that a result or characteristic is possible is not sufficient to establish inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Inherency may not be established by probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). For establishing inherency, that which is missing in the express description must necessarily be present and would be so recognized by one with ordinary skill in the art. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). It is insufficient that a reference discloses functional modules that perhaps collectively include the computing or processing capacity to perform as claimed. Claims 1 and 6 also each require determining if the one or more new payments satisfy at least a condition based at least in part on the first financial terms and the second financial terms, wherein the determination comprises calculating a difference between the one or more new payments and an existing periodic payment for the first vehicle, and determining whether the difference is less than or equal to a present acceptable threshold value. Dominion relies on 14

15 three systems to satisfy that feature: (1) the Evaluation and Alert (E&A) system, (2) the Relocation Alert (RA) system, and (3) the Relocation Forecasting (RF) system. Pet The E&A system allows a buyer to enter a set of candidate property criteria and receive automated alerts when one or more candidate properties substantially satisfying the candidate property criteria is located. Ex. 1002, 195:4-8. Those criteria can be based either on simple matching, such as a target or maximum price, number of bedrooms, etc., or on a rating or ranking. Ex. 1002, 197:7-16. When using a rating criterion, a candidate list is created that excludes any property not meeting a minimum required rating. Ex. 1002, 199: Dominion has pointed to no portion of the E&A system that determines whether a new payment satisfies a condition, much less such a condition based at least in part on first financial terms and also on second financial terms. Dominion has identified no disclosure which indicates that the property criteria or the rating/ranking referred to in the E&A system measures any kind of payments. Both the RA system and the RF system perform a comparison between property valuations to generate alerts and forecasts. Ex. 1002, 214: 4-11, 248:1-5. The RA system in particular compares a current property valuation with a candidate property valuation to determine if a spread threshold is achieved. Ex. 1002, 216:5-12. However, a difference in property evaluation does not represent a payment, and a spread threshold for property valuation also does not measure payments. Furthermore, we have determined that financial terms means money arrangement in a financial agreement. Dominion has not shown that the spread threshold in property valuation, relied on as an alert condition by Dominion, 15

16 is based at least in part on first financial terms for a first property and on second financial terms for a second property. Weiss does disclose financial separately agreements such as property loans. Ex. 1002, 132:2-12. But Dominion has not shown in what manner is the property valuation threshold criterion deemed to be based on first and second financial terms. In any event, as noted above, that criterion does not measure payments. Dominion has not shown a reasonable likelihood that it would prevail in showing that independent claims 1 and 6 of the 791 patent are anticipated under 35 U.S.C. 102(b) by Weiss. Claims 2-5, and 7-11 each depend on claim 1 or claim 6. For the same reason discussed above in connection with independent claims 1 and 6, Dominion has not shown a reasonable likelihood that claims 2-5, and 7-11 are anticipated under 35 U.S.C. 102(b) by Weiss. C. Claims 1-11 Anticipated by Sheets Dominion contends that claims 1-11 are unpatentable under 35 U.S.C. 102(b) as anticipated by Sheets. Dominion relies on claim charts describing how Sheets allegedly meets the claims, and also on the declaration of Dr. Ward A. Hanson. Ex We have considered Dominion s analysis and supporting evidence, as well as AutoAlert s arguments, and are not persuaded that Dominion has demonstrated a reasonable likelihood that it would prevail in showing that claims 1-11 are anticipated by Sheets. Sheets describes a system for matching customers with products in inventory that will be desirable and affordable to the customers. Ex. 1003, 5:1-3. The system matches particular products in a product database with particular customers in a customer database based upon matching criteria. Ex. 1003, 5:3-9. Financial 16

17 information about a customer is stored in a deal file, and includes the desired total price or payment range, desired finance or lease term, credit rating, trade-in value, trade-in payoff amount, cash down payment, and residual amounts, etc. Ex. 1003, 17:1-14. Information about the specific product interests of the customer also is stored, such as desired car make, car model, car year, color, options, etc. Ex. 1003, 17:6-10. A salesperson preferably enters all relevant information into the system and runs an initial report for the customer, producing a list of available vehicles that match the customer s desires. Ex. 1003, 39:1-8, 47:1-8. All information stored is updated periodically by the system operator to reflect the most current set of information for products and customers. Ex. 1003, 24:1-4. When a new product is added to the inventory, a potential deals report is printed automatically to list any pending or open deals with associated customers that may be interested in the new product. Ex. 1003, 39:5-8. That report then is delivered to the appropriate salesperson responsible for one of the open deals so that the potential customers may be contacted about the new product. Ex. 1003, 39:8-11. The system calculates payments on any product in inventory based on variables such as the tax, rebates, and program eligibility discounts, and determines a monthly payment for each automobile in inventory based on the automobiles gross sales price and the customer s down payment, trade-in value, and available credit rate. Ex. 1003, 36:3-11. After making these calculations, the system can determine which automobiles a given customer may be interested in based on price, payment range, and other factors specified by the customer. Ex. 1003, 17

18 36: Vehicle availability reports only list monthly payments that are within the customer s acceptable range of monthly payments. Ex. 1003, 35:7-8. AutoAlert argues that Sheets fails to disclose the claimed feature of determining if the one or more new payments satisfy at least a condition based at least in part on the first financial terms and the second financial terms, wherein the determination comprises calculating a difference between the one or more new payments and an existing periodic payment for the first vehicle, and determining whether the difference is less than or equal to a present acceptable threshold value. Prelim. Resp. 16:1-10. After considering the arguments and evidence provided by Dominion, we agree with AutoAlert. We are not persuaded that Sheets discloses determining satisfying a condition that is based at least in part on first financial terms and also on second financial terms, particularly first financial terms for a first vehicle and second financial terms for a second vehicle. Claims 1 and 6 each require calculating a new payment based on the first financial terms and also on the second financial terms. Claims 1 and 6 further each require determining if the new payment satisfies at least a condition based at least in part on the first financial terms and also on the second financial terms. As claimed, the condition must be based at least in part on the first financial terms and also on the second financial terms. Indeed, each of claims 1 and 6 further specifies calculating a difference between a new payment, and an existing periodic payment for a first vehicle. With regard to based at least in part on the first financial terms and the second financial terms, the plain and natural reading of the language yields an understanding that both the first financial terms for a first vehicle and the second financial terms for a second vehicle must contribute to the formation of the 18

19 condition. Nothing in the specification of the 791patent redefines the ordinary conjunction and as meaning the disjunction or in any circumstance. Sheets discloses calculating a new payment based on information about a customer s existing deal and a possible future deal, and then comparing that new payment to a desired payment range. Ex. 1003, 36:3-15, 44:1-7. The desired payment range, however, is not described as based on any information about the customer s existing deal or possible future deal. According to Sheets, customers simply tell the dealership representatives what they are looking for, and the price or payment range they desire. Ex. 1003, 42:3-5. While Sheets describes an example in which the customer discloses that he or she wants to purchase a vehicle that will keep his payments under $300 a month (Ex. 1003, 44:8-9), the use of the word keep in that context is not sufficiently clear to convey that the decision is based on a current payment of less than $300 a month. Rather, it simply could mean that the customer is conveying a maximum, cap, or ceiling on his or her desired monthly payment without regard to any current payment. Dominion has pointed to no portion of Sheets that discloses a relationship between a customer s desired payment range and any existing or potential financial terms, and has provided no reasonable basis for regarding why such a relationship is inherent. In any event, the alert parameter, as claimed, has to be based at least in part on both first financial terms for a first vehicle and second financial terms on a second vehicle. Dominion cites to Exhibit K (Exhibit 1025) of the declaration of Dr. Hanson (Exhibit 1005). In that exhibit, it is stated, although it is unclear whether Dr. Hanson or counsel for Dominion is making the statement that: 19

20 Sheets discloses a system that calculates the difference between the comparison criteria and the existing comparison criteria for the first vehicle. Comparison criteria could include payment amounts and therefore calculating the difference in payment amounts is one form of calculating the difference in comparison criteria. Exhibit 1025, K39:9-13. The above-quoted statement cites no supporting disclosure in Sheets and is nebulous. It is unclear how such language pertaining to comparison criteria translates to satisfying the claim limitation of determining whether the new payment satisfies a condition that is based in part on the first financial terms for a first vehicle and also on second financial terms for a second vehicle. The statement omits specifics, refers instead to generalities, and then simply concludes that generalized comparison criteria between two vehicles can be in the form of calculating a difference in the payment amounts of the first and second vehicles. Such a statement appears to be describing not the actual disclosure of Sheets but a speculation. We have reviewed 0005, 0017, 0018, 0027, 0035 and 0036 of Sheets, all of which are cited in Dominion s claim chart with respect to the claim feature of determining if the new payment satisfies at least a condition based at least in part on the first financial terms and also on the second financial terms (Ex. 1025, K39-40). None of those disclosures teaches calculating the difference between a customer s current monthly payment on a first vehicle and the potential payment on a second vehicle, much less using that difference as a measurement criterion or condition, as Dominion asserts with respect to the disclosure of Sheets. Also in Exhibit K (Exhibit 1025) of the declaration of Dr. Hanson (Exhibit 1005), it is stated, although it is unclear whether Dr. Hanson or counsel 20

21 for Dominion is making the statement, that [i]n order to calculate net prices or net payments the system must calculate the difference between the terms for the two products. Ex. 1025, K40:3-4. The statement is not accompanied by any explanation and it is not apparent why any of the paragraphs cited in Dominion s claim chart in connection with the feature of determining if the new payment satisfies at least a condition based in part on the first financial terms and also on the second financial terms supports the statement. The statement is unpersuasive. For the foregoing reasons, Dominion has not established a reasonable likelihood that it would prevail in showing that independent claims 1 and 6 of the 791 patent are anticipated under 35 U.S.C. 102(b) by Sheets. Claims 2-5 and 7-11 each depend on claim 1 or 6. For the same reason discussed above in connection with claims 1 and 6, Dominion has not shown a reasonable likelihood that claims 2-5 and 7-11 are anticipated under 35 U.S.C. 102(b) by Sheets. D. Claims Obvious over Weiss and Sheets Dominion contends that claims 1-11 are unpatentable under 35 U.S.C. 103(a) as obvious over Weiss and Sheets. A patent claim is unpatentable under 35 U.S.C. 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary 21

22 considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, (1966). Based on the arguments and evidence presented by Dominion, we are unpersuaded that it has established a reasonable likelihood that it would prevail on showing the unpatentability of claims 1-11 under 35 U.S.C. 103 as obvious over Weiss and Sheets. As discussed above in the context of the anticipation analysis with regard to Weiss, and separately with regard to Sheets, neither Weiss nor Sheets discloses a condition that is based at least in part on first financial terms on one property and also on second financial terms on another property, as is required by each of independent claims 1 and 6. Dominion s obviousness argument assumes that at least one of Weiss or Sheets discloses that limitation. Weiss states that a client customer may specify a desired spread between the market value (or automated property evaluation) of the client s current property and candidate properties. Ex. 1002, 214:4-10. That spread can be represented as a percentage or as a dollar amount and also can be specified as a minimum or a maximum. Ex. 1002, 214:10-11, 226:6. But Dominion has not established how that desired spread in current market value or automated property valuation of the properties constitutes an alert range that is based on financial terms on the current property and also on the financial terms for a second property. Dominion bears the burden of proof on satisfying that limitation for each independent claim. In that regard, neither market value nor assessed value automatically equates to contract price or some other provision in a financial agreement on a property. 22

23 Rationale to Combine Teachings To support combining the teachings of Weiss and Sheets, Dominion states the following: Pet. 55. A shown, every limitation of claims 1-11 of the 791 patent is found in each of Weiss and Sheets, and both references independently anticipate the claims. To the extent that any claim is found not to be anticipated because it is found that some claim element is not explicitly taught by either of those references, it is readily seen that it would have been obvious to combine the teachings of these references (and, in few cases, Jones) to arrive at the systems and methods of the claims. There was a clear motivation to combine these references, in part, because they all [are] related to a similar or related (alleged) problem as that addressed by the [ 791] patent, they overlap in their discussion of how to use databases and the like, and they are all in the same patent classification. Hanson at Dominion s stated rationale is not sufficiently specific and indicates, at best, that the prior art references are each analogous art to the invention of the 791 patent and perhaps also to each other. That does not suffice as an articulated reason with a rational underpinning to combine specific teachings in the references in a particular manner to arrive at the claimed invention, as is required for a showing of obviousness. See KSR Int l Co., 550 U.S. at 418. Notably absent from Dominion s stated rationale is a sufficient explanation of how the references may be combined, from the perspective of one with ordinary skill in the art, to arrive at the claimed invention, and why the proffered combination accounts for all the features of each claim. 23

24 Dominion has not established a reasonable likelihood that it would prevail in showing that independent claims 1 and 6 of the 791 patent would have been obvious under 35 U.S.C. 103(a) over Weiss and Sheets. Each of claims 2-5 and 7-11 depends on claim 1 or 6. Therefore, Dominion also has not established a reasonable likelihood that it would prevail in showing that dependent claims 2-5 and 7-11 would have been obvious under 35 U.S.C. 103(a) over Weiss and Sheets. E. Claims 1-11 Obvious over Weiss and Jones Dominion contends that claims 1-11 are unpatentable under 35 U.S.C. 103(a) as obvious over Weiss and Jones. Dominion s reliance on Weiss and Jones is deficient for essentially the same reasons as those discussed above in the context of the obviousness contention over Weiss and Sheets. Weiss fails to disclose a condition that is based at least in part on first financial terms on one property and also on second financial terms on another property, as is required by each of independent claims 1 and 6, and Dominion does not rely on Jones for meeting that limitation (Pet ). F. Claims 1-11 Obvious over Weiss and Sheets and Jones Dominion contends that claims 1-11 are unpatentable under 35 U.S.C. 103(a) as obvious over Weiss, Sheets, and Jones. Dominion s reliance on Weiss, Sheets, and Jones is deficient for essentially the same reasons as those discussed above in the context of the obviousness contention over Weiss and Sheets. Weiss and Sheets both fail to disclose a condition that is based at least in part on first financial terms on one property and 24

25 also on second financial terms on another property, as is required by each of independent claims 1 and 6, and Dominion does not rely on Jones for meeting that limitation (Pet ). III. CONCLUSION For the forgoing reasons, we determine that the information presented in the petition does not establish a reasonable likelihood that Dominion would prevail in showing the unpatentability of any one of claims 1-11 of the 791 patent. IV. ORDER Accordingly, it is ORDERED that Dominion s petition for inter partes review is denied, and no inter partes review will be instituted pursuant to 35 U.S.C. 314(a) with respect to any claim of the 791 patent on any of the grounds of unpatentability alleged in the petition. 25

26 For PETITIONER: Steven J. Rocci Henrik D. Parker For PATENT OWNER Craig S. Summers Brenton R. Babcock David G. Jankowski 26