Meridianlink, Inc.v.DH Holdings, LLC

Patent Trial and Appeal Board

Jun 24, 2013

09277771 (P.T.A.B. Jun. 24, 2013)

Trials@uspto.gov Paper No. 20
571-272-7822 Date Entered: June 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MERIDIANLINK, INC.
Petitioner

v.

DH HOLDINGS, LLC
Patent Owner
____________

Case CBM2013-00008
Patent 6,438,526
____________

Before, MICHAEL W. KIM, THOMAS L. GIANNNETTI, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION
Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208

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BACKGROUND
Pursuant to 35 U.S. C. § 321 and § 18 of the America Invents Act (AIA),
Meridianlink, LLC (Petitioner) requests that the Patent Trial and Appeal Board
initiate a Transitional Post-Grant Review Proceeding for a Covered Business
Method Patent Review of claims 1-8 (the challenged claims) of U.S. Patent
6,438,526 (the ´526 Patent). We have jurisdiction under 35 U.S.C. §§ 6(b)(4) and
324. The standard for instituting a Transitional Covered Business Method
Proceeding is the same as that for a Post-Grant Review. (§ 18(a)(1) of the AIA).
The standard for instituting Post-Grant Review is set forth in 35 U.S.C. § 324(a),
which provides:
THRESHOLD – The Director may not authorize a post-grant review
to be instituted unless the Director determines that the information
presented in the petition filed under [35 U.S.C. §] 321, if such
information is not rebutted, would demonstrate that it is more likely
than not that at least 1 of the claims challenged in the petition is
unpatentable.
Petitioner contends that pursuant to 37 CFR §§ 42.301 and 42.304(a) the
´526 Patent meets the definition of a covered business method patent and does not
qualify as a technological invention. (Pet. 2-4.) Petitioner further contends that
the challenged claims all fail to comply with the patentable subject matter
requirements of 35 U.S.C. § 101 (Pet. 15-26), that all of the challenged claims are
invalid under the 35 U.S.C. § 112 ¶ 1 (Pet. 26- 32), and that all of the challenged
claims are invalid under 35 U.S.C. § 103 (Pet. 33-74).
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We conclude that Petitioner has demonstrated that it is more likely than not
that at least one challenged claim is unpatentable, and we therefore institute a
covered business method patent review.
PENDING LITIGATION
A person may not file a petition under the Transitional Program for Covered
Business Method Patents unless the person or the person’s real party in interest or
privy has been sued for infringement or has been charged with infringement under
that patent. (§18 (a)(1)(B) of the AIA). The Patent Owner asserted the ´526 patent
against the Petitioner in DH Holdings LLC v. MeridianLink, Inc., Case No. 1:08-
cv-05127, which is now pending in the U.S. District Court for the Northern District
of Illinois. Thus, the ´526 Patent is proper subject matter for a Covered Business
Method Patent Review.
THE ´526 PATENT (EXHIBIT 1001)
The ´526 patent issued on August 20, 2002 from an application filed on
March 29, 1999. The ´526 Patent discloses and claims an automated system for
collecting and disseminating loan information over a network connection. Ex.
1001, Abstract. A server receives daily loan data, which consists of rates, points,
caps, margins, and life caps, from lenders and stores it in a database. Id., Abstract;
col. 6, ll. 54-56. A web server provides interactive web content including loan
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information and criteria which would affect quoted points, rate cap, or margins
associated with a particular loan to users, such as brokers, correspondents or retail
loan customers. Id., Abstract. In one embodiment, a user can access the system
live without downloading any files. Id., col. 8, ll. 20-21. The web server receives
a user’s applicable loan criteria selected from a list of possible criteria and the loan
data from the lender to create a list of adjustments to the points, rate cap, or
margin. Id., Abstract. A quoted interest rate and the list of applicable adjustments
are transmitted by the web server to the user. Id.
The Patent Owner agrees that making adjustments to mortgages based on
certain aspects of a loan or borrower was known in the art on the filing date of the
application for the ´526 Patent. Prelim. Resp. 16. According to the Patent Owner,
“[T]he invention of the ´526 Patent was to provide a fully automated system for
allowing searches for loan products, display of the associated adjustments, and
selection of adjustment criteria in some claims.” Id.
ILLUSTRATIVE CLAIMS
Claims 1 and 6 reproduced below are illustrative.
1. An automated system for collecting and disseminating loan
information over a network connection, comprising:
means for receiving loan data comprising daily loan data from
lenders and for storing said loan data in a database;
means for providing to a user, over said network connection, a
list of possible loan criteria;
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means for receiving, over said network connection, a user's
applicable loan criteria selected from said list of possible loan criteria;
means for using said applicable loan criteria and said loan data
to create a list of loan adjustments, said loan adjustments comprising
changes to costs, points, rates, margins, caps or life caps to be made if
associated adjustment criteria are indicated as being applicable;
means for transmitting to said user over said network
connection a quoted interest rate and said list of loan adjustments.

6. A method for collecting and disseminating loan
information over a network connection, comprising the steps of:
providing a form to users via a network connection, said form
including a series of possible adjustment criteria, adjustments to costs,
points, rates, margins, caps or life caps associated with said criteria,
and means associated with each of said adjustment criteria for
allowing said user to indicate that a criterium is applicable;
receiving via said network connection user input indicating that
particular criteria among said adjustment criteria are applicable;
providing to said user over said network connection a report
showing user-selected applicable adjustments to terms of a quoted
loan product.

BASIS OF PETITION
Petitioner asserts the following challenges to the patentability of the claims
of the ´526 Patent:
Claims 1-8 (all claims) of the ‘526 Patent are not patentable
subject matter under 35 U.S.C. § 101.

Claims 1-8 of the ´526 Patent are unpatentable under
35 U.S.C. § 112 ¶ 1.

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Claims 1-8 of the ‘526 Patent are unpatentable under
35 U.S.C. 103 over the combination of U.S. Patent No. 5,940,812
(Tegnel), U.S. Patent No. 5,844,554 (Geller) and
U.S. Patent No. 5,293,310 (Carroll).

Claims 2 and 8 are unpatentable under 35 U.S.C. § 103 over the
combination of Tengel, Geller, Carroll, and the HomeOwners
Online Mortgage Website.

Claims 4 and 7 are unpatentable under 35 U.S.C. § 103 over the
combination of Tengel, Geller, Carroll, and the E-Loan Online
Mortgage Website.1

Claims 1-8 are unpatentable under 35 U.S.C. § 103 over the
combination of Tengel, the Homeowners Online Mortgage
Website, and the E-Loan Online Mortgage Website.

CLAIM CONSTRUCTION
On May 25, 2012, the in co-pending patent infringement litigation in the
U.S. District Court for the Northern District of Illinois, the court entered a claim
construction order adopting plaintiff’s proposed constructions for some terms and
defendant’s proposed constructions for other terms. See, Ex.1013. In a covered
business method patent review, the Board applies the broadest reasonable
interpretation of each claim term. 37 C.F.R § 42.300(b). Having reviewed the
parties’ contentions and the district court’s claim construction order, and applying

1 References on pages 45 and 46 of the Petition to claims 5 and 7 as being
unpatentable on this ground appear to be typographical errors, as the Table of
Contents and the detailed claim charts on pages 62-63 refer to claims 4 and 7.
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the broadest reasonable interpretation for purposes of this covered business method
patent review, we apply the following constructions:
means for receiving loan data – This term is not addressed in the court’s
claim construction order. Ex. 1013. The means for receiving loan data appears in
claim 1, which claims an automated system for collecting and disseminating loan
information over a network connection. Claim 1 does not limit this means for
receiving to a means, such as a computer, which receives the loan data over a
network connection. See, Ex. 1001, Fig. 1, Loan Rate Service Provider Computer
103. However, the means for receiving loan data does not exclude a computer
receiving the loan data over a network, such as the Internet. For example, the ´526
patent discloses that web server 102 receives loan data from computer 103 and
stores it in server databases. Ex. 1001, col. 5, ll. 19-41. Therefore, we construe the
means for receiving loan data to be “a computer, including a server, which
receives the loan information.” In the ´526 patent, the corresponding structure
includes server 102.
means for providing to a user, over said network connection, a list of
possible loan criteria. Figure 1 shows a data base/web server 102 connected to
brokers through the Internet. See, Ex. 1001, col. 5, ll. 3-4. Because the network
connection already is recited in the claim preamble and the body of the claim, and
because communications capability is inherent in the “web server” 102 shown in
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Figure 1, it is not necessary to include the network elements in the definition of
this “means” limitation. The district court construed a list of possible loan criteria
to mean “a list of possible criteria associated with a loan or mortgage.” Ex. 1013,
p. 2-3. In the Abstract and at column 2, lines 43-48, the specification refers to a
“list of loan criteria” which would affect the quoted points, rate, cap, or margin
associated with a particular loan, but the specification does not define explicitly
“loan criteria.” Figures 6a-6d illustrate some examples of “criteria” which could
be provided for display to the broker (user) and could factor into determining the
quoted loan terms. Thus, we construe the means for providing as “a server
computer which communicates to users over a network a list of factors which
affect quoted terms of a loan.” In the ´526 patent, the corresponding structure is
server 102.
means for receiving, over said network connection, a user’s applicable loan
criteria selected from said list of possible loan criteria. Figure 1 shows this
element to be database/web server 102 connected through the Internet to brokers,
i.e., users, and to the Lender Rate Service Provider Computer 103. This limitation
does not state explicitly who selects the applicable loan criteria from the possible
loan criteria or from where the applicable loan criteria is received. The district
court construed user’s applicable loan criteria to mean “loan criteria associated
with a particular user.” Ex. 1013, p. 3. The district court further construed the
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structure corresponding to the recited function to be a web server, along with its
software, the internet, and the broker software, in addition to drop down menus
shown in Figure 4c. Ex. 1013, p.4. However, as discussed above, because the
claim already recites a “network connection,” it is not necessary to include network
elements, such as the internet, in the construction of this means for receiving. The
claim also recites a user’s applicable loan criteria selected from said list of
possible loan criteria, where the antecedent for “said list of possible loan criteria”
is the list provided to the user by the means for providing discussed above. Thus,
the recited list of applicable loan criteria is not just any list – it is a list of
applicable loan criteria selected from the list of possible loan criteria provided to
the user. Therefore, applying the broadest reasonable interpretation, we construe
this means for receiving as “a server computer which receives over a network a list
of applicable factors, selected from a list of factors provided to a user, which affect
the quoted terms of a loan.” In the ´526 Patent the corresponding structure is
server 102.
means for using said applicable loan criteria and said loan data to create a
list of loan adjustments. The district court identified the structure corresponding to
this means as including the server, its software, the internet, and broker software,
including screens displaying a chart of potential changes and an “apply” chart with
check boxes and columns for adjustment criteria and amounts. See, Ex. 1013, p. 5.
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Applying the broadest reasonable interpretation, the structure corresponding to this
means for using relates to structure that uses, rather than receives, the applicable
loan criteria and the loan data. The means for receiving the applicable loan criteria
and the loan data is recited in the means for receiving, which we construed above.
The specification identifies “server files” on server 102, including Input.FP3,
which gets data from other server files ServDail.FP3, ServBank.FP3 and
ServTC.FP3. Id., col. 5.l. 64-col. 6, l. 9. All calculations, such as computing
adjustments, are done by Input.FP3. Id., col. 6, ll. 9-10. The loan adjustments are
defined in the remainder of this claim element as comprising changes or
adjustments to loan terms such as costs, points, rates, margins, caps or life caps to
be made if associated adjustment criteria are indicated as being applicable. The
district court found that the term loan adjustments required no additional
construction. Ex. 1013, p. 5. Thus, we construe the means for using said applicable
loan criteria and said loan data to create a list of loan adjustments to mean “a
computer which calculates a list of changes or adjustments to loan terms.” In the
´526 Patent, the corresponding structure is server 102.
means for transmitting to said user over said network connection a quoted
interest rate and said list of loan adjustments. The district court’s claim
construction order, Ex. 1013, does not address this term. Figure 1 shows all
communications with the user occurring through the server. Thus, we construe the
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means for transmitting as “a server computer which communicates a quoted
interest rate and loan adjustments to a user over a network connection.” In the
´526 Patent, the corresponding structure is server 102.
form. The district court’s claim construction order, Ex. 1013, does not
address this term. Claim 6 recites providing to users via a network connection a
form including a series of possible adjustment criteria. Figures 6a-6d of the ´526
Patent illustrates a series of displays which constitute the form. Thus, we construe
form to mean “one or more displays.”
means associated with each of said adjustment criteria for allowing said
user to indicate that a criterium is applicable. The district court adopted
plaintiff’s proposed construction of this term as one or more user interface controls
which also specified square checkboxes, yes/no checkboxes, circular radio
controls, text input boxes and drop down menus. See, Ex. 1013, p. 7. The
specification describes displaying possible adjustments on a screen of a broker,
who may click “apply” or otherwise indicate each applicable adjustment. Id., col.
3, l. 60-col. 4, l. 5, Fig. 6a-6d. Figures 6a-6d show a Y or N circle for the user to
indicate the applicability of each adjustment criterium. Therefore, we construe this
term to mean “an indicator for each of the adjustment criteria displayed on a form
on the user’s screen, which indicator can be selected by the user to designate the
applicability of each such adjustment criterium.”
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THE ´526 PATENT IS NOT A PATENT FOR A TECHNOLGICAL
INVENTION

A covered business method patent is a patent that claims a method or
corresponding apparatus for performing data processing or other operations used in
the practice, administration, or management of a financial product or service.
37 C.F.R. § 42.301(a). The claims of the ´526 Patent, which are drawn to a system
and method for collecting and disseminating loan information over a network
connection, satisfy this definition.
A covered business method patent does not include patents for technological
inventions. Id. A technological invention is determined by considering whether
the claimed subject matter as a whole recites a technical feature that is novel and
unobvious over the prior art, and solves a technical problem using a technical
solution. 37 C.F.R. § 42.301(b). Citing the Patent Owner’s contention in the co-
pending litigation that the invention is not related to the Internet or to computer
networking, but instead to the use of the Internet or a computer network to process
loan information, Petitioner contends that the ´526 Patent does not claim a
technical feature or a solution to a technical problem. Pet. 4. The Patent Owner’s
Preliminary Response does not dispute Petitioner’s characterization.
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We agree with Petitioner that the claimed subject matter of ´526 Patent is
drawn to processing a financial product (mortgage loans) and does not solve a
technical problem using a technical solution. Thus, the ´526 Patent is a covered
business method patent subject to review under Section 18 of the AIA.
SECTION 101 SUBJECT MATTER ELIGIBILITY
We begin our analysis of the issues under 35 U.S.C. § 101 with method
claims 6-8. Method claim 6 of the ´526 patent recites providing a form to the user
including a list of adjustment criteria with means to allow the user to indicate the
applicability of each criterium, receiving the criteria, and providing the user a
report showing the terms of the loan. Claim 6 recites that each of these steps is
performed via a network connection. The specification discloses that server 102
performs each of the steps in claim 6. Citing SiRF Technology, Inc. v.
International Trade Commission, 601 F. 3d 1319, 1333 (Fed. Cir. 2010), the Patent
Owner argues that claim 6 (as well as apparatus claim 1) is patentable subject
matter because the network connection, computing structure, and database play a
significant part in the system, are integral to the method and do not preempt an
abstract idea. Prelim. Resp. 7.
The Patent Owner’s reliance on SiRF is misplaced. In order for the addition
of a machine to impose a meaningful limit on the scope of a method claim, it must
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play a significant part in permitting the claimed method to be performed, rather
than function solely as an obvious mechanism for permitting a solution to be
achieved more quickly. SiRF 601 F. 3d at 1333. In SiRF, the claims were drawn
to a method of improving a GPS receiver’s calculation of position and could not be
performed without the GPS receiver itself. Hence, the GPS receiver was essential
to the method. Id. at 1332-33. Nothing in the limitation “via a network
connection” in claims 6-8 of the ´526 Patent is essential to the method itself. In
seeking to provide a “fully automated system for allowing searches for loan
products and the display of associated adjustments,” see, Prelim. Resp. 16., the
claims of the ´526 Patent preempt the use of a conventional network to carry out
conventional steps to locate and disseminate loan information. The Patent
Owner’s analogy to SiRF misses the point – claims 6-8 are drawn to the method of
disseminating loan information, rather than to the network that may be used to
accomplish it. See, Bancorp Services LLC v. Sun Life Assur. Co. of Canada, 687
F.3d 1266, 1279 (Fed. Cir. 2012).
In a more analogous case, claims drawn to a method of applying for credit
did not satisfy § 101, even though the claims contained a limitation requiring the
invention be “computer aided.” See, Dealertrack, Inc. v. Huber, 674 F. 3d 1315,
1333 (Fed. Cir. 2012), where the court determined that even though the term
“computer aided” in the claim preamble constituted a limitation, because the
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claims were silent as to how the recited computer would aid the claimed method,
they were drawn to abstract, unpatentable subject matter. Id. Similarly, the steps
in claim 6 of the ´526 Patent, carried out via a network by the server disclosed in
the specification, are no more than a computer aided abstract method, and therefore
not patentable subject matter under Dealertrack. The case for finding patentable
subject matter in methods claims 6-8 of the ´526 Patent, which merely recite
performing the steps of the abstract method via a network connection, is even less
persuasive than that of the “computer aided” claims in Dealertrack. The basic
character of a process claim drawn to an abstract idea is not changed by claiming
only its performance by computer, or by claiming the process embodied in
program instructions on a computer readable medium. Cybersource Corp. v.
Retail Decisions, Inc., 654 F. 3d 1366, 1375 (Fed. Cir. 2011). Thus, we are
persuaded that Petitioner has demonstrated it is more likely than not that
independent method claim 6, and its dependent claims 7 and 8, do not recite
statutory subject matter under 35 U.S.C. § 101. 2

2 Our analysis of claims 6-8 is consistent with Judge Lourie’s recent concurring
opinion in CLS Bank Int’l. v. Alice Corp. Pty. Ltd., No. 2011-1301 (Fed. Cir. May
10, 2013), which noted that appending generic computer functionality to the
performance of an otherwise abstract concept does not meaningfully limit the
claim scope for purposes of patent eligibility. Id. at 27.

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Turning to apparatus claims 1-5, the Patent Owner’s arguments provide little
distinction from the analysis of method claims 6-8. See, Prelim. Resp., 2-7. The
form of the claims should not trump basic issues of patentability. See Bancorp
Services, LLC v. Sunlife Assurance Co. of Canada, 687 F. 3d 1266, 1277 (Fed. Cir.
2012), citing the Supreme Court’s decision in Parker v. Flook, 437 U.S. 584, 593
(1978), which advises against a reading of § 101 that “would make the
determination of patentable subject matter depend simply on the draftsman’s art.” 3
Written in “means plus function” language, claims 1-5 of the ´526 Patent are
not drawn to a specific machine, but instead, recite abstract loan processing
functions, where the structure corresponding to the means to perform the recited
functions, i.e., a server, is well known. The means recited in independent claim 1
of the ´526 Patent preempts the idea of using a network to carry out these abstract
loan processing functions.
The Patent Owner cites Research Corporation Technologies v. Microsoft
Corp., 672 F. 3d 859, 868-9 (Fed. Cir. 2010), to support the proposition that
inventions with specific application or improvements to technologies in the

3 See also, J. Lourie’s concurrence in CLS Bank, which notes that applying a
presumptively different approach to system claims would reward precisely the type
of clever claim drafting the Supreme Court has repeatedly instructed be ignored
and focuses the essential inquiry on whether the claim, rather than the tangible
machine, in practical effect places an abstract idea at risk of preemption and, if so,
whether the limitations of the claim add enough beyond the abstract idea itself to
limit the claim to a narrower, patent eligible application of that idea. Id. at 33, 37.
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marketplace are likely not to be so abstract that they override the statutory
language and framework of the Patent Act. Prelim Resp., 3-4. The Patent
Owner’s reliance on Research Corp. is misplaced. In Research Corp, the court
determined that method and apparatus claims drawn to half toning grey scale and
color images, utilizing a pixel-by-pixel comparison of the image to a blue noise
mask, were not abstract and therefore were patent eligible. Id. at 872-3. In
contrast, claims 1-5 of the ´526 Patent do not recite any improvements to the
technologies implemented by the means or the abstract principle of exchanging
information used in locating and selecting a mortgage loan over a network. Thus,
we are persuaded that Petitioner has demonstrated it is more likely than not that
claims 1-5 do not recite patent eligible subject matter.

ANALYSIS OF PETITIONER’S CHALLENGES UNDER
35 U.S.C. § 112 ¶1

Petitioner argues that system claims 1-5 fail to satisfy the enablement
requirement of 35 U.S.C. §112 ¶ 1 because, in failing to recite the essential
element of a means or step to select a loan product or adjustments, they omit
matter disclosed to be essential and are therefore inoperable. Pet. 26-31.
Petitioner advances similar arguments for method claims 6-8. Pet. 31-32.
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Patent Owner points out that, because the claims are drafted using the term
“comprising,” they are not limited to preferred embodiments disclosed in the
specification in which a loan search could return numerous potential loan products.
Prelim. Resp. 8-10.
Claims 1-5, which use the transitional phrase “comprising,” are open ended
system claims reciting elements limited to means for performing certain functions.
We have construed each of the means recited in claim 1 to read on server 102.
Thus, each of the functions recited in claims 1-5 can be performed by a single
structure corresponding to the recited means, i.e, server 102.
Petitioner’s argument, i.e., that user selection inputs to the server are
essential, turns on an embodiment in the specification in which the user selects the
factors or criteria that influence adjustments to the loan. However, user selection is
not essential to operation of the means (i.e., server 102) to perform the functions
recited in the claims. The fact that open ended claims 1-5 do not recite equipment
operated by the user as part of the system to select a loan product or adjustments
does not preclude user inputs, and does not render the claims inoperable. Even if
the system works better when the server receives user selections, Petitioner has not
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established that the claimed server is inoperable or not enabled for the functions
recited in the claims.4
A similar analysis applies to method claims 6-8. In open ended claim 6, the
steps performed by server 102 disclosed in the specification are: (i) providing a
form with a means for the user to indicate applicability of each criterium,
(ii)receiving the user input, and (iii) providing a report to the user. For the same
reasons as those discussed above with respect to claim 1-5, Petitioner has not
established that claims 6-8 are inoperable because they do not recite the user
making a selection. Thus, we are not persuaded that Petitioner has demonstrated it
is more likely than not that claims 6-8 are not enabled for the recited functions.
In view of the above, we decline to institute a covered business method
patent review on any of the grounds Petitioner proposes under 35 U.S.C. § 112 ¶1.

4 The present case is distinguished from In re Mayhew, 527 F.2d 1229, 1233
(CCPA1976) cited by Petitioner. In the ´526 claims, the recited means (i.e., the
server) operates to process a loan search and application upon receipt of user’s loan
criteria. In Mayhew the applicant’s failure to include a cooling bath in the claim
resulted in a failure to terminate the alloy process, so that the product could not be
produced. In Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1337-8
(Fed. Cir. 2003), also cited by Petitioner, the lack of a limitation reciting an
expression vector did not run afoul of §112 because the presence of DNA and
transcription sequences in a cell caused them to respond as claimed. Similarly, in
the present case, the system can operate upon receipt of the user’s loan criteria.
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ART CITED IN PETITION
U.S Patent 5,940,812 to Tengel (Ex. 1016)
Tengel discloses a loan origination system and method for automatically
matching a best available loan to a potential borrower via a global
telecommunication network. Ex.1016, Abstract; col. 2, ll. 26-32. The system
accepts and stores in a database borrower attributes, including those entered by the
borrower and those sent from a credit bureau, as well as loan acceptance criteria
and respective loan attributes. Id., Abstract; Fig. 2. Tengel defines loan
acceptance criteria as the attributes a lender requires a potential borrower to
possess in order to make a loan available to that borrower, and loan attributes as
features such as pricing, credit limit and terms associated with the loan. Id., col. 4,
ll. 31-35. Lenders may establish loan acceptance criteria by defining minimum
requirements, assigning weighting factors to various criteria, or by using other
scoring models. Id., col. 6, ll. 46-61. A lender may periodically update loan
attributes and acceptance criteria stored in a database for any offered loan. Id., col.
8, ll. 19-31.
As shown in Tengel’s Figure 1, lenders and borrowers (or borrowers’
representatives) communicate from terminals with a server terminal via a
communications network. Id., col. 4, l. 53-col. 5, l. 11. A set of loans available to
a borrower, determined by comparing the borrower’s attributes to the loan
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acceptance criteria, is stored in a database. Id., col. 9, ll. 15-31. A first ranking of
available loans obtained by analyzing the respective attributes for each loan is
displayed on the borrower’s screen, e.g., lowest APR in one column, lowest current
interest rate in a second column, lowest fixed interest rate in a third column, and
lowest origination cost in a fourth column. Id., col. 9, ll. 33-43. A second ranking
of best loans is displayed based on a respective composite score for each loan
available to the borrower by weighting each of the loan attributes. Id., col. 9, ll.
44-54. The ranking of the loans may also be displayed in a list including the
second and third best loans. Id., col. 9, ll. 55-59. The borrower selects a loan
based on the attributes most important to the borrower. Id., col. 9, ll. 62-63. The
consumer is then presented a display for automatically submitting a loan
application to the selected lender via the telecommunications network. Id., col. 9,
l. 66-col. 10, l. 13.
U.S. Patent 5,844,554 to Geller (Ex. 1017)
Geller discloses a user product configuration program module that includes
user controls allowing the user to input information for use in configuration
computations. Ex. 1017, Abstract. Product configuration software allows a sales
person to gather information about a customer, receive information about the
customer’s product needs (e.g., budget constraints, model preferences, options,
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etc.), and compute a price for a product as configured. Id., col. 1, ll. 27-41. Geller
discloses that creating a configuration software model involves defining data
requirements and structure, creating a parameter structure with constraints and
formulas, preparing external data resources, creating needed queries, creating a
visual interface/model and connecting the underlying parameters, and compiling
the program. Id., col. 18, ll. 3-14.
One aspect of Geller involves storing parameters associated with the product
configurator in a hierarchical arrangement in the memory of a computer running
the developer environment, and displaying the parameters in a “parameter
explorer” window that can be invoked at any time to allow creation and
modification of the parameters underlying the configurator. Id., col. 4, ll. 40-46.
Geller further discloses displaying a constraint list associated with the selected
parameters. Id., col. 4, 47-50; col. 23, ll. 29-34. A “constraint” may be financial,
such as a customer’s price range or step increments in price. Id., col 2, ll. 38-52.
Figure 6 illustrates the main user screen in configuration software constructed in
accordance with Geller’s invention. Parameters can be keyed to product lines, so
that a user’s selection of a different product line (e.g., changing the product from
630 to 632 in Figure 6) results in a display of a different set of choices and
constraints. Id., col. 16, ll. 50-61; col. 25, ll. 23-27. Figure 6 further illustrates a
user display providing a price for the product as configured.
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U.S. Patent No. 5,293,310 to Carroll (Ex. 1018)
Carroll discloses a method and system for enabling a user to apply
customized rating adjustments to transactions charges. Ex. 1018, Abstract. A
central processor compares and correlates entered data with rating and adjustment
information stored in memory, generates a base rate and modified rate for a
particular transaction and user, and makes the calculated charges available to the
user. Id. Figure 1 shows users and service suppliers, e.g., shipping carriers,
communicatively linked to a data center. Based on information such as discount or
surcharge information received from the data center, the user requests a preference
for a custom discount from the carrier for a particular delivery transaction. Id., col.
5, ll. 19-43. Selecting Cell Keys and Value Keys, representing criteria that must be
met for a user to receive a discount or incur a surcharge for a specific delivery, a
carrier representative applies the various discount and surcharge criteria and issues
an order form to the data center. See, id., col. 5, l. 45-col. 6, l. 59. The data center
transmits the order form to the user in a suitable format. See, id., col. 6, l. 60- col.
7, l. 18. The discount and surcharge criteria can be related to the location of a
particular delivery and the particular package, such as delivery of a certain weight
package within a certain geographic zone, or to experience with the specific user,
such as the volume of transactions with that user. Id., col. 5, ll. 55-59; col. 6, ll. 9-
26.
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Although much of the disclosure in Carroll concerns discounts for users of
shipping services, Carroll specifically discloses using the method and system in the
calculation of individualized transaction charges for other goods and services,
including phone calls, insurance premiums, and mortgage rates. Id., col. 23, ll. 51-
61.
HomeOwners Online Mortgage Website (Ex. 1019)
The HomeOwners Online Mortgage Website (HomeOwners Website) allows
the user to find fixed and adjustable rate loan programs, includes a mortgage tool,
such as a mortgage calculator, provides a Refi Test Drive feature, allows the user
to view good faith closing cost estimates, and provides on line forms for
purchasing a home or refinancing. Ex. 1019, p. 1. Based on the loan duration,
rates, APRs, points, conforming loan limits and adjustments for non-conforming
loans are shown in the chart on page 4. The “Test Drive” takes the user to a page
which provides a loan analysis based on the current loan balance, monthly
payment, remaining years on the loan. Id. pp. 5-12. At the bottom of the page, the
assumptions in valuing the loan, such as interest rate, loan duration, and points, can
be modified by the user. Id. Adjustable rate charts are shown on pages 13 and 17,
closing cost estimates on pages 21 and 22, a link to an on-line Rapid Approval loan
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application is provided at page 24, and an application that can be printed and
mailed is provided at pages 26 – 33.
E-Loan Online Mortgage Website(Ex. 1020)
The E-Loan Online Mortgage Website (E-Loan) provides a series of
questions concerning loan characteristics that on-line users answer to search
available loan rates and products. Ex. 1020, pp. 1-2. The user answers another
series of questions concerning the user and the property to pre-qualify for
particular loan products. Id., p. 5-8. E-Loan also provides recommendations based
on the user’s answers to additional questions concerning the user circumstances
and preferences and the property. Id., pp. 10-11. E-Loan further provides
monitoring to determine if any loans in the market are superior to the user’s current
loan, based on the user’s response to questions concerning the user’s circumstances
and the property, id., pp. 12-22, and can assist the user in setting up a rate watch.
Id., p.23-28.

ANALYSIS OF PETITIONER’S CHALLENGES UNDER 35 U.S.C. § 103
Introduction
The Patent Owner directs us to an automated system for searching and
displaying loan information and, in some claims, selecting loan adjustments as the
subject matter of the invention. Prelim. Resp. 16. For system claims 1-5, we have
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construed each of the means recited in claim 1 as corresponding to server 102
disclosed in the ´526 Patent. All of the functions recited in claim 1, i.e., receiving
loan data, providing the user loan criteria, receiving a user’s applicable loan
criteria, using the loan criteria to create a list of loan adjustments, and transmitting
a quoted interest rate to the user, involve server 102 transmitting, receiving, and
using information in a conventional manner in a well-known client-server
architecture. Similarly, all of the steps recited in independent method claim 6, i.e.,
over a network providing a form that allows the user to indicate selected criteria,
receiving the form and providing a report to the user showing the user selected
criteria and a quoted product (in this case, a loan) are carried out by a conventional
server.
Challenges To Claims 1-8 Based on the Combination of Tengel, Geller and Carroll

Before addressing Petitioner’s specific challenges under 35 U.S.C. § 103, we
consider two arguments which the Patent Owner contends distinguish all the
claims of the ´526 Patent over Tengel.
The Patent Owner’s Contention That Tengel Does Not Disclose Displaying
Adjustments Or Allowing A User To Select Adjustments

The Patent Owner contends that claims 1-8 are distinguished over Tengel’s
loan matching system because Tengel does not disclose displaying adjustments to
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loan products or allowing a user to select certain adjustments5. Prelim. Resp. 11-
12. The Patent Owner’s contentions are misplaced.
Independent apparatus claim 1 does not recite either of these features. Claim
1 recites means for using applicable loan criteria and loan data to create a list of
loan adjustments and means for transmitting to the user, over a network
connection, a quoted interest rate and the list of loan adjustments. Claim 1 does
not recite displaying the list of loan adjustments to the user or a means for
displaying the loan adjustments. As claim 1 is written, no display is required.
Server 102 is sufficient to provide both the “means for using” and the “means for
transmitting” the quoted rate and list of loan adjustments. Claim 1 also does not
recite the user selecting the loan adjustments.
Independent method claim 6 recites providing the user a report showing the
user-selected applicable adjustments to the terms of a quoted product. However,
claim 6 does not recite displaying the report; claim 6 merely recites providing the
report. The “providing” step in claim 6 is carried out in Tengel by server 102.
In short, none of the claims recites displaying the loan adjustments – instead,
the claims recite providing the loan adjustments to the user, either as a step carried
out, e.g., by the server, (claims 6-8) or where the server is the means for

5 The latter distinction of allowing a user to select certain adjustments applies only
to method claims 6-8 (claim 4 recites allowing the user to select a loan, but does
not recite allowing a user to select adjustments).
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performing the recited function of “transmitting” the quoted interest rate and list of
loan adjustments (claims 1-5). Thus, the Patent Owner’s contentions that the
claims are not obvious over the references, because those references do not
disclose displaying the loan adjustments, are not persuasive.
Separate files
The Patent Owner also contends that claims 1-8 are distinguished over
Tengel, because Tengel does not disclose the use of separate files for storing daily
loan data and loan data that does not vary from day-to-day. Prelim. Resp. 12. The
Patent Owner’s contentions are again misplaced. Claim 1 recites “means for
receiving loan data, comprising daily loan data from lenders,” and means for
storing the loan data. Claim 5 recites that the loan data further comprises loan
product data which remains constant from day-to-day. Thus, claim 5 recites that
all loan data, including daily and non-daily loan data, is stored in the same
database. However, none of the claims, including claim 5, specifically recites that
the means for storing daily and non-daily loan data are separate files.
Independent System Claim 1

Turning to Petitioner’s specific challenges to system claim 1 based on the
combination of Tengel, Geller and Carroll, we agree with Petitioner that the
primary issue is whether the references disclose the claimed “means for using.”
Pet. 35. The loan searching system disclosed by Tengel includes a display of
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several loans ranked according to their respective attributes. Ex. 1016, col. 9, ll.
33-43; Fig. 6. We have noted previously that claim 1 of the ´526 Patent defines
loan adjustments as changes or adjustments to costs, points, rates, margins, caps or
life caps. Claim 1 of the ´526 Patent, which recites means for using the applicable
loan criteria and loan data to create a list of loan adjustments, is not limited to
creating adjustments for a single loan.
Tengel discloses receiving and storing lender and borrower information, and
comparing the information to search and rank available loans. Ex. 1016, Fig. 2A,
2B. Figure 6 of Tengel discloses displaying a list of loans with various rates,
points, caps, fees, terms, and other attributes. Depending upon the user’s
preferences, loan terms change or adjust from column to column. For example, by
looking at the table in Figure 6, a user who changes his or her preference from the
lowest APR in loan attribute column 602 to the highest credit limit in loan attribute
column 610 will observe how the loan terms in each row of the chart, such as APR,
margin, and origination fee change or adjust. Thus, as shown by Figure 6, Tengel
discloses both means for using the loan criteria and loan data to create a list of loan
adjustments, and means for providing (transmitting) to the user over a network, a
quoted interest rate and a list of loan adjustments, as the term “adjustments” is used
in claim 1 of the ´526 Patent.
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We further agree with Petitioner that Geller discloses the “means for using”
in the context of selecting options and obtaining pricing for a product, which in
Geller’s case is an automobile. Pet. 51-52. We are not persuaded by Patent
Owner’s contention that Geller and Tengel are not combinable because Geller does
not suggest displaying adjustments to points, rates, margins, caps, or life caps or
allowing a user to select adjustments, and instead relates to a method and system
for user interfaces and configuration software. Prelim. Resp. 12-13. We agree
with Petitioner that it would be obvious to apply the means disclosed in Geller to
configure a financial product, such as a mortgage loan, as in Tengel. We further
agree with Petitioner that Carroll, which discloses applying custom adjustments to
transaction, including mortgage transactions, is combinable with Tengel and
Geller.
In view of the above, we agree that Petitioner has demonstrated it is more
likely than not that independent claim 1 of the ´526 Patent is unpatentable over the
combination of Tengel, Geller, and Carroll.
Independent Method Claim 6
Claim 6 of the ´526 Patent recites “providing a form to users” with means
for allowing the user to indicate applicable criteria, receiving the criteria the user
indicates are applicable and providing the user a report of user selected applicable
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adjustments to the terms of a quoted loan product. Figure 5 of Tengel discloses a
form the borrower completes to generate the loan ranking display of Figure 6.
Tengel does not require the user to select or indicate the applicable loan
adjustment criteria, as recited in claim 6, because, in Tengel the adjustment
information is provided automatically, as illustrated by the ranking display in
Figure 6. However, we agree with Petitioner that Geller, Ex. 1017, and Carroll,
Ex. 1018, supplement Tengel’s disclosure of pricing a financial instrument, such as
a mortgage loan, based on communicating user-selectable applicable adjustment
criteria and can be combined with Tengel.
We agree with Petitioner that Geller discloses searching for and selecting a
product, being presented with selectable product options, and receiving a price for
the configured product. Pet. 36. Petitioner further points out that Geller discloses
providing buttons or tabs allowing a user to select features and options in
configuring a chosen product, such as an automobile, resulting in the display of a
price for the product as configured. Pet. 51-52.
Petitioner further points out that Carroll discloses adjusting transaction
charges from a base charge in accordance with characteristics of the user and the
transaction. Id. p. 52-53. Contrary to Patent Owner’s contention that Carroll and
Tengel are not combinable, Prelim. Resp. 13-15, Carroll specifically notes that its
techniques can be applied to mortgage loans, such as those in Tengel. Id., col. 23,
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ll. 59-62. Therefore, we are persuaded that Petitioner has established that it is
more likely than not that claim 6 is unpatentable over the combination of Tengel,
Geller and Carroll.
Dependent Claims 2, 3, 4, 5, 7, and 8
Dependent system claims 2 and 3 and dependent method claim 8 describe
details of the loan adjustments and the loan data, such as points, caps, and margins
or changes to these loan features. These claim recitations do not further
substantively limit the claims to the system or method from which they depend.6
We therefore agree that Petitioner has demonstrated it is more likely than not that
claims 2, 3 and 8 are unpatentable over the combination of Tengel, Geller and
Carroll.
Dependent system claim 4 recites a means for interactively allowing a user
to select, register and lock a loan over a network connection. Dependent method
claim 7 recites the step of receiving an indication that the user desires to lock the
quoted loan product. Steps 281, 220 and 222 of Figure 2 of Tengel (Ex. 1016)
show the user accepting a selected loan, the system generating a loan application
and the user sending the loan application to the selected lender via the network.

6 These limitations are non-functional descriptive material and do not further
substantively limit the claims to the system or method from which they depend. In
re Ngai, 367 F. 3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983)
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Figure 5 of Tengel illustrates a borrower loan application form that a borrower fills
out and sends via the network. Ex. 1016, col. 3, ll. 60-62. Figure 7 of Tengel
shows a display of information relating to the selected loan the borrower has
chosen from the ranking of loans. Ex. 1016, col. 3, ll. 65-67. Thus, Tengel
discloses a means for interactively allowing a user to select, register and lock a
loan, as recited in claim 4 and the corresponding step recited in claim 7. We are
therefore persuaded that Petitioner has demonstrated that it is more likely than not
that claims 4 and 7 are unpatentable over the combination of Tengel, Geller and
Carroll.
Claim 5 recites that the loan data comprises loan product data that remains
constant from day-to-day. We agree with Petitioner’s contention that loan product
data which does not change from day-to-day, such as the name of the lender, is
well known. Pet. 55. Therefore, we are persuaded that Petitioner has
demonstrated that it is more likely than not that claim 5 is unpatentable over the
combination of Tengel, Geller and Carroll.
In view of the disclosures in Tengel, Geller, and Carroll, we agree that
Petitioner has demonstrated it is more likely than not that claims 1-8 are
unpatentable over this combination of references. Therefore, we grant the Petition
to institute a covered business method review on the ground that claims 1-8 of the
´526 Patent are unpatentable over the combination of Tengel, Geller, and Carroll.
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The Combination of Tengel, HomeOwners and E-Loan
Petitioner also asserts that claims 1-8 are unpatentable because it would have
been obvious to combine Tengel, HomeOwners, and E-Loan, as they provide users
options and information regarding loan adjustments and allow a user to receive an
automatically updated calculation of loan cost. Pet.. 47-48. The Patent Owner
argues that HomeOwners does not disclose automatically calculating and
separately displaying adjustments based on loan criteria. Prelim. Resp. 16.
Similarly, the Patent Owner argues that E-Loan does not calculate and display
adjustments of existing loan products or allow the user to select adjustment criteria.
Id., p. 17. As we discussed above, however, the claims do not recite displaying
adjustments of existing loan products. The Test Drive feature in HomeOwners
allows the user to modify the assumptions used in valuing a loan and receive
responsive loan information. Ex. 1019, pp. 5-12. E-Loan provides similar
capabilities. Ex. 1020, pp. 14-22. E-Loan allows the user to lock a loan. Ex.
1020, pp. 1, 31-32. Based on these disclosures, Petitioner has demonstrated it is
more likely than not that claims 1-8 are unpatentable over the combination of
Tengel, HomeOwners, and E-Loan, and we therefore grant the Petition on this
ground.
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Petitioner asserts that claim 2 and 8 are unpatentable over the combination
of Tengle, Geller, Carroll, and HomeOwners, and that claims 4 and 7 are
unpatentable over the combination of Tengel, Geller, Carroll, and E-Loan. These
grounds are redundant in light of the grounds on which we already havegranted the
petition for covered business method patent review of the same claims. Therefore,
we do not initiate a covered business method patent review on either of these
grounds.

SUMMARY
I. The Petition is GRANTED as to the grounds asserted under 35 U.S.C. §
101.
II. The Petition is GRANTED as to the following grounds asserted under
35 U.S.C. § 103:
Claims 1-8 as obvious over the combination of Tengel, Geller, and
Carroll; and

Claims 1-8 as obvious over the combination of Tengel,
HomeOwners, and E-Loan.

III. We do not authorize a covered business method patent review on the
grounds asserted under 35 U.S.C. § 112 ¶ 1.
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IV. We do not authorize a covered business patent review on the following
grounds asserted under 35 U.S.C. § 103:
Claims 2 and 8 as obvious over the combination of Tengel, Geller,
Carroll, and HomeOwners;

Claims 4 and 7 as obvious over the combination of Tengel, Geller,
Carroll, and E-Loan

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is granted
FURTHER ORDERED that pursuant to 35 U.S.C. § 324(a) a covered
business method patent review of the ´526 Patent is hereby instituted, commencing
on the entry date of this Order, and pursuant to 35 U.S.C. § 324(d) and 37 C.F.R. §
42.4, notice is hereby given of the institution of a trial.
FURTHER ORDRED that the trial is limited to the grounds identified in
Sections I. and II. of the above Summary, and no other grounds are authorized.
FURTHER ORDERED than an initial conference call with the Board is
scheduled for 3:30 PM Eastern Time on July 23, 2013. The parties are directed to
the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14, 2012) for
guidance in preparing for the initial conference call, and should come prepared to
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discuss any proposed changes to the scheduling order entered herewith and any
motions the parties anticipate filing during the trial.

PETITIONER:
David L. Hoffman
Albert Wu
HOFFMAN PATENT GROUP
David@dlhpatent.com
Albert@dlhpatent.com

PATENT OWNER
Steven L. Reinhart
steve@uspatentlaw.us