In Dealer Socket, Inc. v. AutoAlert, Inc., CBM2014-001146, Paper 19 (December 9, 2014), the Board instituted a covered business method review of claims 1, 3–5, 10, 12–14, 16, and 19 of U.S. Patent No. 8,086,529 on grounds of indefiniteness under §112, lack of written description, and patent ineligible subject matter under §101. DealerSocket is timely reminder to practitioners that invalidity under 35 USC §112 available under covered business method review, as well as its cousin, post grant review.
The indefiniteness challenge centered around the claim language: determining whether: “changed 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”. The Board agreeing with Dealer Socket that “may affect” and favorable” were indefinite:
Given the evidence in this record, we determine that DealerSocket has established that the “may affect” limitation is more likely than not indefinite. This limitation includes not one, but two terms of degree, “may affect” and “favorable.” Both are highly subjective. The uncertainty is multiplied when one subjective term is used to modify another, as is the case here. Contrary to the argument of AutoAlert, the Specification contains no objective standard for determining reasonably precise boundaries of either term.
The written description challenged focused on the claim language “automatically accessing in real-time, by the computer system, information that has changed.” The Board noting that the only disclosed embodiment performing retrieval of “changed information” is not associated with the immediate presence of any particular customer, and is not described as occurring in real-time.
However just because you can, doesn’t mean you should. There is at least the theoretical possibility of fixing some 35 USC §112 defects through amendment, while a successful §112 challenge in court results in invalidity. Of course, indefiniteness challenges are more likely to be overcome by rewording than the lack of an adequate written description.