Lumen View Tech. LLC v. Findthebest.Com, Inc.

984 F.Supp.2d 189

LUMEN VIEW TECHNOLOGY LLC, Plaintiff,

v.FINDTHEBEST.COM, INC., Defendant.

No. 13 Civ. 3599(DLC).

United States District Court, S.D. New York.

Nov. 22, 2013.

Damian Wasserbauer, Aeton Law Partners, LLP, Middletown, CT, for the plaintiff.

Joseph Leventhal Leventhal Law, LLP, San Diego, CA, for the defendant.

OPINION & ORDER

DENISE COTE, District Judge:

On September 24, 2013, defendant Findthebest.com, Inc. (“Findthebest”) moved for judgment on the pleadings in this patent infringement action pursuant to Fed.R.Civ.P. 12(c) on the ground that the patent on which plaintiff Lumen View Technology LLC (“Lumen View”) predicates its claim for infringement is invalid for failure to claim patent-eligible subject matter. For the reasons that follow, the patent claims the abstract idea of computer assisted matchmaking and is invalid under 35 U.S.C. § 101 (“Section 101”). The defendant's motion for judgment on the pleadings is granted.

BACKGROUND

Findthebest is a corporation that operates a website which matches users with goods or services according to criteria they enter. Lumen View is a company that owns patents and licenses them to other users for fees. On May 29, 2013, Lumen View brought suit against Findthebest on the ground that the matching process in Findthebest's website allegedly infringed a patent owned by Lumen View. That patent is United States Patent No. 8,069,073 (“'073 patent”).

The '073 patent

The '073 patent is entitled “System and Method for Facilitating Bilateral and Multilateral Decision–Making.” It is comprised of one independent claim and eight dependent claims. The application for the patent was filed in April 2010, and the patent was issued on November 29, 2011. The April 2010 application was a “continuation of application” for the invention claimed by this patent, and the initial application was made in 1999. The inventors of the '073 patent are listed as Eileen C. Shapiro and Steven J. Mintz. Listed as the assignee of the patent is a limited liability company called Dalton Sentry, LLC. Lumen View asserts that it is “the exclusive licensee of the ' 073 patent and possesses all rights of recovery under the '073 patent, including the right to sue and recover all damages for infringement thereof, including past infringement.”

The Independent Claim (“Claim 1”) of the '073 patent

The independent claim of the '073 patent (“Claim 1”) states in full:

We claim: A computer-implemented method for facilitating evaluation, in connection with the procurement or delivery of products or services, in a context of at least one of (i) a financial transaction and (ii) operation of an enterprise, such context involving a first class of parties in a first role and a second class of counterparties in a second role, the method comprising:

In a first computer process, retrieving first preference data from a first digital storage medium, the first preference data including attribute levels derived from choices made by at least one of the parties in the first class;

In a second computer process, retrieving second preference data from a second digital storage medium, the second preference data including attribute levels derived from choices made by at least one of the counterparties in the second class;

In a third computer process, for a selected party, performing multilateral analyses of the selected party's preference data and the preference data of each of the counterparties, and computing a closeness-of-fit value based thereon; and

In a fourth computer process, using the computed closeness-of-fit values to derive and provide a list matching the selected party and at least one of the counterparties.

The “summary of the invention” provision of the patent elaborates that:

The method involves supplying to at least one of the parties a series of forced choice questions ¹ so as to elicit party responses; supplying to at least one of the counterparties a series of forced choice questions so as to elicit counterparty responses; and delivering a list matching the at least one party and the at least one counterparty according to analysis of preference profiles determined using conjoint analysis of the party responses and the counterparty responses. In alternative embodiments the list may be ranked according to closeness of fit.

In summary, the purported invention disclosed by the '073 patent is a method of matchmaking whereby one or more parties on each side input attribute preferences and intensity of preference data and then a computer matches the parties on each side by a “closeness-of-fit” process and produces a list.

The patent also contains in its specification examples illustrating potential uses of the claimed process. One example is the matching of job applicants with employers based on both parties' preferred attributes in applicants and employers, respectively. The specification contemplates having each party disclose desired attributes, and intensity of preferences with respect to those attributes, and then having a computer match employees and employers whose desired attributes and intensities of preferences mutually align. Also listed as an exemplar use of the '073 patented method is the matching of “college applicants and ... colleges seeking applicants” by having each input preference data.

The Dependent Claims of the '073 patent

Claims 2 through 9 of the '073 patent are all dependent on Claim 1. They purport to add limitations to Claim 1's claimed process of computerized bilateral and multilateral decisionmaking. The claims are as follows: ²

2. A method according to claim 1, wherein the list is ranked according to closeness of fit.

3. A method according to claim 1, further comprising receiving co-evaluator choices made by a party co-evaluator or a counterparty co-evaluator, wherein the list matches the at least one party and the at least one counterparty according to a multilateral analysis of preference data determined using such co-evaluator choices.

4. A method according to claim 1, wherein the party choices reveal, with respect to each level of each of a first series of attributes, a utility value which indicates the value that the party places on the level of the attribute.

5. A method according to claim 4, wherein the party choices reveal the utility values without the utility values being provided explicitly.

6. A method according to claim 4, wherein the counterparty choices reveal, with respect to each level of each of a second series of attributes that complements the first series of attributes, a utility value which indicates the value that the counterparty places on the level of the attribute.

7. A method according to claim 6, wherein the counterparty choices reveal the utility values without the utility values being provided explicitly.

8. A method according to claim 1, wherein at least one of the first preference data, second preference data, and the list is obtained from a remote server over a communication network.

9. A method according to claim 1, wherein the party choices and the counterparty choices are provided to a remote server over a communication network.

All of these method claims are expressly predicated on Claim 1.³ Claim 2 (perhaps redundantly) claims the closeness of fit component of Claim 1's computerized bilateral and multilateral decision-making process claim. Claim 3 claims the process of inclusion of a “co-evaluator's data in the multilateral analysis.” ⁴ Claim 4 claims the process of attributing a utility value, indicating the value a party places on an attribute. Claim 5 permits the utility values to be created but not revealed to the participants. Claims 6 and 7 are identical to Claims 4 and 5 but are applied to a counterparty, rather than the initial party. Claims 8 and 9 allow the process claimed in Claim 1 to be provided to a remove server over a communication network-presumably the Internet.

Procedural History

On May 29, 2013, Lumen View filed suit against Findthebest for infringement of the '073 patent. In its complaint, Lumen View contends that Findthebest infringes on the '073 patent in

[O]ffer[ing] recommendation services via the www. findthebest. com website (‘Defendant Website’) for individuals seeking the purchase of products and individuals offering to sell the products,” by “execut[ing] a computer implemented method for facilitating evaluation, in connection with the procurement or delivery of products or services, in a context of the operation of an enterprise, such context involving a first class of parties (e.g., consumers) in a first role and a second class of counterparties in a second role (e.g., individuals selling goods).

On September 24, Findthebest moved for judgment on the pleadings on the ground that the '073 patent was invalid because it claimed an “abstract idea,” which does not constitute patent eligible subject matter under Section 101 of the codified Patent Act. 35 U.S.C. § 101. The motion was fully submitted on October 18.

DISCUSSION

The standard governing a Section 101 challenge is well established. “Whether a claim is drawn to patent-eligible subject matter under § 101 is a threshold inquiry, and any claim of an application failing the requirements of § 101 must be rejected even if it meets all of the other legal requirements of patentability.” In re Bilski, 545 F.3d 943, 950 (Fed.Cir.2008) (citation omitted) (hereinafter “Bilski I ”). A patent is presumed to be valid by statute. See35 U.S.C. § 282. The party challenging the validity of a patent bears the burden of proving invalidity by clear and convincing evidence. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359 (Fed.Cir.2007). The question of whether a patent is invalid under Section 101 of the codified Patent Act is an “issue of law.” Bilski I, 545 F.3d at 951.

Section 101 of the Patent Act

Section 101 of the codified Patent Act defines the subject matter that is patentable:

Whoever invents or discovers any new and useful process, machine,...