Lumen View Technology LLC v. Findthebest.com, Inc

Filing 55

OPINION & ORDER. Claim 1 of the '073 patent claims an abstract idea, which is patent ineligible subject matter under Section 101 of the codified Patent Act. The dependent claims are invalid as well. Findthebest's September 24, 2013 motion for judgment on the pleadings is granted. The Clerk of Court shall enter judgment for the defendant and close the case. (Signed by Judge Denise L. Cote on 11/22/2013) (gr)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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Lumen View Technology LLC,
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Plaintiff,
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-v:
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Findthebest.com, Inc.,
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:
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Defendant.
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13 CIV. 3599 (DLC)
OPINION & ORDER

APPEARANCES
For the plaintiff:
Damian Wasserbauer
Aeton Law Partners, LLP
101 Centerpoint Drive, Suite 105
Middletown, CT 06457
For the defendant:
Joseph Leventhal
Leventhal Law, LLP
600 West Broadway, Suite 700
San Diego, CA 92101

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

2

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.

3

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
1

A forced choice question is a question with a closed set of
possible responses.

4

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.

2

The parties have not construed these dependent claims.
claim construction has focused on the terms in Claim 1.
5

All

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

3

Claims 5 and 6 are “method[s] according to [C]laim 4, and
Claim 7 is a “method according to Claim 6.” But since Claims 4
is a “method according to Claim 1,” Claims 5, 6, and 7 are all
ultimately predicated on Claim 1.
4
An example of such a co-evaluator given in the Specification
is a guidance counselor, whose preference data might play a role
in the matchmaking between a college and a college applicant.

6

[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”).
presumed to be valid by statute.

A patent is

See 35 U.S.C. § 282.

The

party challenging the validity of a patent bears the burden of
proving invalidity by clear and convincing evidence.

7

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, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of
this title.
35 U.S.C. § 101 (“Section 101”).

Section 101 lays out four

subject matter categories of inventions or discoveries eligible
for patent protection: processes, machines, manufactures, or
compositions of matter.

The ‘073 patent claims a “method for

facilitating evaluation,” which plainly is a process.

Section

100(b) of the Patent Act provides that “[t]he term ‘process’
means process, art or method, and includes a new use of a known
process, machine, manufacture, composition of matter, or
material.”

35 U.S.C. § 100.

The Supreme Court has elaborated

on this statutory definition:
A process is a mode of treatment of certain materials to
produce a given result. It is an act, or a series of acts,
performed upon the subject-matter to be transformed and
reduced to a different state or thing. If new and useful,
it is just as patentable as is a piece of machinery. In
the language of the patent law, it is an art. The
machinery pointed out as suitable to perform the process

8

may or may not be new or patentable; whilst the process
itself may be altogether new, and produce an entirely new
result. The process requires that certain things should be
done with certain substances, and in a certain order; but
the tools to be used in doing this may be of secondary
consequence.
Diamond v. Diehr, 450 U.S. 175, 183–84 (1981).
Courts construe the Section 101 definitions broadly.

“In

choosing such expansive terms ... modified by the comprehensive
‘any,’ Congress plainly contemplated that the patent laws would
be given wide scope.”
(1980).

Diamond v. Chakrabarty, 447 U.S. 303, 308

The Supreme Court has recognized, however, “three

specific exceptions to [Section 101’s] broad patent-eligibility
principles: laws of nature, physical phenomena, and abstract
ideas.”

Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010)(citation

omitted).

The three exceptions “are consistent with the

[statutory] notion that a patentable process must be ‘new and
useful’ . . . [and] have defined the reach of the [patent]
statute as a matter of statutory stare decisis going back 150
years.”

Id.

These exceptions protect from monopolization

concepts that constitute “part of the storehouse of knowledge of
all men ... free to all men and reserved exclusively to none.”
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130
(1948).

“Einstein could not patent his celebrated law that E =

mc2; nor could Newton have patented the law of gravity.”
450 U.S. at 185 (citation omitted).

9

Diehr,

I. Claim 1 of the ‘073 patent under Section 101
Findthebest contends that Claim 1 of the ‘073 patent is not
drawn to patent eligible subject matter under Section 101
because the claimed process constitutes the abstract idea of
matchmaking.

“[A]bstract intellectual concepts are not

patentable, as they are the basic tools of scientific and
technological work.”
(1972).

Gottschalk v. Benson, 409 U.S. 63, 67

“A principle, in the abstract, is a fundamental truth;

an original cause; a motive; these cannot be patented, as no one
can claim in either of them an exclusive right.”

Le Roy v.

Tatham, 55 U.S. 156, 175 (1853).
Courts have had some difficulty defining with precision the
line between an impermissibly abstract idea and a patentable
process.

But the Supreme Court in the 2010 case of Bilski, 130

S.Ct. 3218, provided lower courts with some guidance in drawing
the line.

Although declining to provide an authoritative

definition of “process” for purposes of Section 101, the Court
directed lower courts to look to, as “guideposts,” its previous
applications of the abstract idea exception in the cases of
Benson v. Kappos, 409 U.S. 63, Parker v. Flook, 437 U.S. 584
(1978), and Diamond v. Dieher, 450 U.S. 175.
at 3231.

Bilski, 130 S.Ct.

The Bilski Court said that the Federal Circuit’s

“machine or transformation” test, set out in Bilski I, 545 F.3d
at 958, should serve as “a useful and important clue” and “an

10

investigative tool” for determining whether a patent claims
patent eligible subject matter under Section 101, in conjunction
with comparison of the above mentioned Court precedents, as part
of a holistic analysis.

Bilski, 130 S. Ct. at 3227.

Accordingly, to resolve this motion it is necessary to conduct a
holistic analysis of whether the ‘073 patent constitutes an
abstract idea in light of the precedents of Benson, Flook,
Dieher, and Bilski itself. 5

As part of this analysis, the

“machine or transformation” test serves as a non-dispositive
“investigative tool.”
A. The Supreme Court’s Abstract Idea Cases
In the 1972 case of Benson v. Kappos, the Court invalidated
a patent that claimed “a method of programming a general-purpose
digital computer to convert signals from binary-coded decimal
form into pure binary form.”

Benson, 409 U.S. at 65.

The

Benson Court held that the patent claimed not a patentable
process, but an algorithm which constituted an abstract idea.
The conceptual grounding of the court’s holding was the
impermissible breadth of the preemptive effect of patenting such
a method.

The Court noted that “the patent would wholly pre-

5

Bilski directs a court to look to the facts and holdings of
Benson, Flook, and Dieher as “guideposts” in determining whether
a claimed process constitutes and impermissible abstract idea.
It follows that Bilski itself should also be consulted in the
same fashion.

11

empt the mathematical formula [undergirding the conversion of
binary decimals to pure binary form] and in practical effect
would be a patent on the algorithm itself.”

Id. at 72.

The

Court further emphasized the preemption concern in noting that
the patent’s “‘process' claim is so abstract and sweeping as to
cover both known and unknown uses . . . vary[ing] from the
operation of a train to verification of drivers' licenses to
researching the law books for precedents.” Id. at 68 (citation
omitted).
In the 1978 case of Parker v. Flook, the Court invalidated
a patent that claimed a new process for monitoring certain
catalytic conditions during the oil refining process.

The

patent claimed a computer implemented method, which was
undergirded by a mathematical formula by which monitors could be
more easily alerted to dangerous developments during that
process.

Relying on its holding in Benson that a mathematical

formula constituted an abstract idea that could not be patented,
the Court framed the question in Flook as “whether the
identification of a limited category of useful, though
conventional, post-solution applications of such a formula makes
[a patented] method eligible for patent protection.”
U.S. at 585.

The Court answered in the negative.

Flook, 437

It held that

post-solution application of an abstract idea to a particular
field could not save a patent that fundamentally claimed an

12

abstract idea.

Id.

Even though the patent at issue in Flook

was more limited in its preemptive effect than that in Benson
given that it claimed a process which was restricted to a
particular industrial refining process unlike the binary decimal
conversion method of general applicability in Benson, the Court
found that the only contribution made by the patent’s claimed
invention was a mathematical algorithm, which constituted an
abstract idea.
The Flook Court also made clear that computer
implementation of the claimed process did not save it from
invalidity due to abstractness.

The Court invalidated that

patent even though it, like the claim in Benson, was limited in
being predominately tied to a computer in its application.
Recognizing that “the abstract of disclosure makes it clear that
the formula is primarily useful for computerized calculations,”
the Court nonetheless invalidated the patent’s claims.

Id. at

586.
In the 1981 case of Diamond v. Dieher, the Court outlined
the outer limits of the abstract idea in the course of upholding
a patent that claimed a process for curing synthetic rubber.
450 U.S. at 184.

There, as in Benson and Flook, the challenged

claim took the form of a mathematical formula.

The Court

distinguished the claim at issue, however, under the guiding
principle that the preemptive effect of patenting the process in

13

Dieher was more limited.

The Court reasoned that, unlike the

patent in Flook –- which claimed a formula for computing an
“alarm limit” which could be of general applicability -- the
process claimed in Dieher was of restricted applicability to the
rubber curing industry.

Id. at 186-87.

The Dieher Court also made two observations about the
abstract idea exception to Section 101 patentability.

First, it

stressed that “in a process claim . . . a new combination of
steps in a process may be patentable even though all the
constituents of the combination were well known and in common
use before the combination was made.”

Id. at 188.

Second, it

emphasized that although Benson and Flook had invalidated
process patents tied to computers, “a claim drawn to subject
matter otherwise statutory [under Section 101] does not become
nonstatutory simply because it uses a mathematical formula,
computer program, or digital computer.”

Id. at 187.

Instead,

in “determining the eligibility of [a] claimed process for
patent protection under § 101, [any] claims must be considered
as a whole” to determine whether their applications to a
particular context provides material of additional value beyond
the abstract idea itself.

Id. at 188.

The Court stressed,

however, that this holistic analysis “cannot be circumvented by
attempting to limit the use of the formula to a particular
technological environment.”

Id. at 191.

14

Most recently, the Supreme Court addressed the abstract
idea exception in the 2010 case Bilski v Kappos.

In Bilski, the

Court invalidated as an abstract idea a business method patent
that claimed a general method for hedging risk in the energy
commodities market.

Bilski, 130 S. Ct. at 3223.

The

independent claim in the Bilski patent read as follows:
(a) initiating a series of transactions between said
commodity provider and consumers of said commodity wherein
said consumers purchase said commodity at a fixed rate
based upon historical averages, said fixed rate
corresponding to a risk position of said consumers;
(b) identifying market participants for said commodity
having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said
commodity provider and said market participants at a second
fixed rate such that said series of market participant
transactions balances the risk position of said series of
consumer transactions.
Id. at 3223-24.

Rejecting the Federal Circuit’s application of

the “machine or transformation” test as the exclusive test for
determining Section 101 patentability, the Court relied on
Benson, Flook, and Dieher to hold that the patent claimed an
abstract idea and was invalid.

The Court held that “[t]he

concept of hedging . . . is an unpatentable abstract idea, just
like the algorithms at issue in Benson and Flook.”

Id. at 3231.

The Court also grounded its reasoning in concern about
preemption.

It explained that “[a]llowing petitioners to patent

risk hedging would pre-empt use of this approach in all fields,

15

and would effectively grant a monopoly over an abstract idea.”
Id. at 3231.
B. The Federal Circuit’s Application of Bilski
After Bilski, the Federal Circuit worked to provide further
definition to Bilski’s somewhat open-ended test for determining
process patent eligibility under Section 101.

In May 2013, the

Federal Circuit attempted, unsuccessfully, to provide definitive
guidance to lower courts adjudicating a claim of impermissible
abstractiness in its opinion in CLS Bank Int'l v. Alice Corp.
Pty. Ltd., 717 F.3d 1269 (Fed. Cir. 2013) (hereinafter “Alice”).
The patent holder in Alice claimed a computerized method of
hedging risk in a two-party deal by enlisting a mutually trusted
third party to ensure that each party complies with its payment
obligation during the period between the making of the deal and
the actual closing.

The patent holder had four patents.

The

first two were “method” patents –- which “were directed to a
method (i.e., process), while the claims of the [other two]
Patents [were] directed to a [computerized] system or product”
to implement that method.

CLS Bank Int'l v. Alice Corp. Pty.

Ltd., 768 F. Supp. 2d 221, 223 (D.D.C. 2011).

The district

court had held that both the method patents and the system
patents claimed abstract ideas and were invalid under the
“machine or transformation” test and the Supreme Court’s
precedents in Benson, Flook, Dieher, and Bilski. Id.

16

The

Federal Circuit issued a per-curium opinion, wherein a majority
of the court affirmed the invalidation of the method patents on
the ground that they claimed an abstract idea while dividing 5-5
on the question whether the system patents claimed patent
eligible subject matter.

Alice, 717 F.3d at 1273.

The Federal Circuit’s reasoning fractured into five
separate opinions.

One judge noted that

Although a majority of the judges on the court agree that
the method claims do not recite patent eligible subject
matter, no majority of those judges agrees as to the legal
rationale for that conclusion. Accordingly, though much is
published today discussing the proper approach to the
patent eligibility inquiry, nothing said today beyond our
judgment has the weight of precedent.
Alice, 717 F.3d 1269, 1292 n.1 (Fed. Cir. 2013).
different tests emerge from the five opinions.

Three
First, Judge

Lourie’s opinion would ask a court to evaluate to what extent
the claim avoids broad preemption by containing “additional
substantive limitations that narrow, confine, or otherwise tie
down the claim so that, in practical terms, it does not cover
the full abstract idea itself,” id. at 1282, with particular
reference to whether the claim contains an “inventive concept .
. . a genuine human contribution to the claimed subject matter.”
Id. at 1283.

Second, Chief Judge Rader proposed an inquiry less

focused on preemption than Judge Laurie’s, stating that “the
relevant inquiry must be whether a claim includes meaningful
limitations restricting it to an application, rather than merely

17

an abstract idea.”

Id. at 1299 (emphasis added).

“A claim may

be premised on an abstract idea -- the question for patent
eligibility is whether the claim contains limitations that
meaningfully tie that idea to a concrete reality or actual
application of that idea.”

Id. at 1299-1300.

Finally, Judge

Newman, writing only for herself, would eschew the
“abstractness” Section 101 inquiry altogether and hold that if a
claim fell into the enumerated categories of “useful arts,” that
the inquiry should proceed to apply “the laws of novelty,
utility, prior art, obviousness, description, enablement, and
specificity . . . [obviating the] need for an all-purpose
definition of ‘abstractness’ or ‘preemption,’ as heroically
attempted.”

Id. at 1322.

While Alice did not produce controlling reasoning, its
holding that the method claim patents were invalid has
precedential weight and must be followed by lower courts to the
extent that the facts regarding any patents challenged in those
courts are similar.

Moreover, while the Alice judges disagreed

on the fundamental methodology to apply in adjudicating patent
invalidation questions of this type and produced no binding
method, guidance can be drawn from any reasoning to the extent
that its interpretation of the Supreme Court’s cases in this
area is persuasive.

18

C. Applying the Supreme Court’s and Federal Circuit’s
precedents to the ‘073 patent
Applying the principles of Benson, Flook, Dieher, and
Bilski, along with what guidance can be wrought from Alice, it
is evident that Claim 1 of the ‘073 patent claims an abstract
idea and does not qualify as a “process” under Section 101.

The

‘073 patent claims the idea of bilateral and multilateral
matchmaking using a computer in the context of a financial
transaction or an enterprise.
sense.

It is preemptive in the broadest

And its only real limitation –- the use of a computer --

constitutes mere post-solution application of an abstract idea
to a common context.

The patent must be invalidated under any

of the above described Supreme Court precedents as well as under
either the Judge Laurie or the Judge Rader methodology in Alice.
1. Preemption
The first common thread in the above cases is concern that
a patented process will preempt all applications of an abstract
idea.

Concern about broad preemption undergirds the Supreme

Court’s precedent of patent invalidation in Benson, Flook, and
Bilski and the Federal Circuit’s invalidation of the method
claims in Alice.

Applying that principle here, it is clear that

the ‘073 patent cannot stand.

Put simply, the patent preempts

the use of a computer to facilitate matchmaking.
breadth is enormous.

Its preemptive

“Allowing [a patent holder] to patent [a

19

broad process] would pre-empt use of this approach in all
fields, and would effectively grant a monopoly over an abstract
idea.”

Bilski, 130 S.Ct. at 3231.

Permitting Lumen View this

level of preemption would be out of step with the balance the
patent system has struck between promoting innovation and
allowing the widespread use of new and productive inventions and
discoveries.
The preemptive reach of Claim 1 of the ‘073 patent extends
at least as far as that of the invalidated patent claims in any
of the above described precedents.

For example, in Benson, the

Supreme Court lamented that the claimed process of converting
binary decimals was “so abstract and sweeping as to cover both
known and unknown uses . . . vary[ing] from the operation of a
train to verification of drivers' licenses to researching the
law books for precedents.”

Here, as there, permitting the

patenting of bilateral or multilateral matchmaking using a
computer would also cover “known and unknown uses,” varying from
the matching of online daters to securities traders looking for
trading partners.

And while the invalidated Flook patent was at

least limited to preempting the use of an alert system in the
oil refining industry, Claim 1 of the ‘073 patent preempts the
use of computer assisted matchmaking in the context of any
transaction or enterprise.

Unlike the process held patentable

in Dieher, which was directed to a specific application (rubber

20

curing), the ‘073 patent is a patent of general applicability.
Even the invalidated Bilski patent which the Supreme Court
admonishingly described as purporting “to patent both the
concept of hedging risk and the application of that concept to
energy markets,” Bilski, 130 S.Ct. at 3229, at least specified a
market where its preemptive effect would presumably be
predominantly felt.
2. Absence of meaningful limitations
A second common thread in the above cases invalidating
patent claims for abstractness is that the patents lacked
sufficient limitations to direct the claim to a particular area.
This well established notion is embodied in Judge Rader’s
proposed test in Alice that a claim must have “meaningful
limitations restricting it to an application, rather than merely
an abstract idea.”

Alice, 717 F.3d at 1299.

The “meaningful

limitations” inquiry is present in all of the above described
Supreme Court cases, most saliently in Dieher, where the
limitation of an algorithm to the oil processing field saved it
from invalidation on the ground of abstractness.
U.S. at 188.

Dieher, 450

Claim 1 of the ‘073 patent contains no meaningful

limitation on conventional matchmaking at all.

It is directed

to financial transactions and the operation of enterprises.
as is described below, the application of matchmaking to a

21

And

computer context is not a “meaningful” limitation that can save
the Claim from invalidity.
3. Lack of genuine human contribution to the subject matter
The ‘073 patent would also fail Judge Laurie’s proposed
test in Alice, which requires an “inventive idea” constituting a
“genuine human contribution” to the subject matter, such that
the claim moves outside of the realm of abstract ideas and into
the category of particularized inventions.
There is no inventive idea here.

Having two or more parties

input preference data is not inventive.
doing this for millennia.

717 F.3d at 1283.

Matchmakers have been

Nor is an unspecified closeness of

fit process an inventive idea.

It is merely a mathematical

manifestation of the underlying process behind matchmaking:
determining good matches.

Nothing in the ‘073 patent evinces an

inventive idea beyond the idea of the patent holder to be the
first to patent the computerization of a fundamental process
that has occurred all through human history.
4. The role of a computer in the ‘073 patent does not render
it patentable.
The abstract ideas exception to the Section 101 categories
“cannot be circumvented by attempting to limit the use of the
[idea] to a particular technological environment.”
U.S. at 191.

Dieher, 450

The fact that the the ‘073 patent’s matchmaking

claim is implemented through a computer does not save it from

22

invalidation.

Indeed, all of the process patents invalidated in

Benson, Flook, Bilski, and Alice were implemented by a computer.
The Federal Circuit’s most recent test for determining the
relevance of a computer element of a claim in the Section 101
analysis is context specific.

“To salvage an otherwise patent-

ineligible process, a computer must be integral to the claimed
invention, facilitating the process in a way that a person
making calculations or computations could not.”

Bancorp Servs.

L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d
1266, 1278 (Fed. Cir. 2012); accord SiRF Tech., Inc. v. Int'l
Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“for the
addition of a machine to impose a meaningful limit on the scope
of a claim, it must 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, i.e., through the utilization of a computer for
performing calculations.”).

Claim 1 of the ‘073 patent recites

the process of a computerized retrieval of preference data from
two or more parties and the computation of a closeness of fit
test to match parties.

The steps in the Claim are: 1)

retrieving the submitted preference data; 2) analyzing the data
to compute a closeness of fit conclusion; and 3) providing a
list.

These processes can be performed by a human absent a

computer.

The computer element of the claim “function[s] solely

23

as an obvious mechanism for permitting [matchmaking] to be
achieved more quickly.”

Id.

A slightly different test for the relevance of the
computer component to an otherwise abstract idea claim was set
forth by Judge Rader in her opinion in Alice.

Judge Rader

posited that:
The key to this inquiry is whether the claims tie the
otherwise abstract idea to a specific way of doing
something with a computer, or a specific computer for doing
something; if so, they likely will be patent eligible,
unlike claims directed to nothing more than the idea of
doing that thing on a computer.
Alice, 717 F.3d at 1302.

Under this test as well, the computer

element of Claim 1 does not save the claim from invalidation.
Neither Claim 1 nor the specification in the ‘073 patent
discloses any special way of programming a computer to achieve
the matchmaking function.

In other words, the ‘073 patent does

not disclose a specific method of using a computer to execute
the abstract idea of matchmaking, it only claims the abstract
concept of computerized matchmaking in a business or enterprise
context.
D. The Machine or Transformation Test
As part of the holistic analysis required by Bilski, the
“machine or transformation” test serves as a useful nondispositive “investigative tool.”

Bilski, 130 S.Ct. at 3227.

Under the “machine or transformation” test, “[a] claimed process

24

is surely patent-eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a
particular article into a different state or thing.”
3224 (citation omitted).

Id. at

Claim 1 of the ‘073 patent fails both

prongs of the “machine or transformation” test and therefore its
application confirms the conclusion, predicated on the above
analysis of Supreme Court precedent, that it cannot stand.
1. Whether Claim 1 of the ‘073 patent is “tied to a
particular machine or apparatus”
Claim 1 recites “[a] computer-implemented method for
facilitating evaluation,” wherein “digital storage medium[s]”
are used to hold inputted preference data and a computer
performs “multilateral analyses” of each party’s preference data
to compute a “closeness of fit value.”

This claim fails the

machine prong of the machine or transformation test for two
reasons.

First, the matchmaking functions claimed do not

require a computer to be performed.

“[M]erely claiming a

software implementation of a purely mental process that could
otherwise be performed without the use of a computer does not
satisfy the machine prong of the machine-or-transformation
test.”

Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d

1366, 1375 (Fed. Cir. 2011).

The core of the claimed process in

Claim 1 of the ‘073 patent is the abstract idea of bilateral and
multilateral matchmaking.

Matchmaking by having parties declare

25

preference data and deciding on good fits is a process as old as
humanity itself.

Adding a computer to the mix without showing

how the computer adds significant value constitutes mere “post
solution activity.”

Flook, 437 U.S. at 590.

And as Bilski

makes clear, “the prohibition against patenting abstract ideas
cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment or adding
insignificant post-solution activity.”

Bilski, 130 S. Ct. at

3230 (citation omitted).
The Federal Circuit addressed a similar claim in which a
computerized process could be performed by a human alone in
Cybersource, 654 F.3d at 1366.

There, the claim at issue

recited a method of detecting fraud in credit card transactions
that were conducted over the Internet.

The patent holder

claimed that the patent was tied to a machine or apparatus
because the claimed process required the Internet in order to be
performed.

Id. at 1370.

The district court rejected that

notion, and the Federal Circuit affirmed on the ground that the
Internet was not required to perform the core function in the
claim.

The Federal Circuit noted that “while [the claim]

describes a method of analyzing data regarding Internet credit
card transactions, nothing in [the claim] requires an infringer
to use the Internet to obtain that data.”
at 1370.

CyberSource, 654 F.3d

Similarly, here, the use of a computer to perform a

26

process humans can perform independently is insufficient to
fulfill the machine prong of the “machine or transformation”
test.
Second, Claim 1 of the ‘073 patent fails the machine prong
of the test because it is not tied to a “particular machine or
apparatus,” as the test requires.

Lumen View argues that the

claimed process requires a “specifically programmed computer”
such that it satisfies the machine prong of the test.
contention is unavailing.

This

Merely directing a computer to

perform a function does not transform the computer into a
specialized computer.

Such a principle would lead to the absurd

result of allowing the patenting the computerized use of even
the most basic abstract ideas.

Given the ubiquity of computers

in modern life, adopting such a principle would have enormous
preemptive effect.

Nothing in Section 101 or the precedents

interpreting it allow a party to monopolize the building blocks
of innovation in a computerized world.

Moreover, as noted

above, all of the process patents invalidated in Benson, Flook,
Bilski, and Alice were implemented by a computer.

In none of

those cases was there any intimation that the patents could be
saved by virtue of the notion that the computers used were
somehow “specialized” by virtue of performing the abstract
processes at issue.

Consequently, to the extent that the

“machine” prong serves as an “investigative tool” it cuts

27

against holding that the ‘073 patent claims Section 101 eligible
subject matter.
2. Whether Claim 1 of the ‘073 patent “transforms a
particular article into a different state or thing”
If a process is not tied to a particular machine then the
“machine or transformation” test next asks whether the process
produces a “transformation and reduction of an article to a
different state or thing.”

Benson, 409 U.S. at 70.

Lumen View

argues that pulling preference data and creating a list derived
from a closeness-of-fit analysis is transformative such that it
fits this prong.

This contention is unavailing.

The “transformation” prong originally contemplated physical
transformation of a physical entity through a given process.

By

way of early example, in Dieher, the patent which the Court
upheld under the transformation prong claimed a process that
physically transformed raw, uncured rubber into molded, cured
rubber products.

See Dieher, 450 U.S. at 187.

Later, a

doctrine emerged allowing the transformation test to apply to
manipulations of non-physical data.

The Federal Circuit

explained that:
The raw materials of many information-age processes . . .are
electronic signals and electronically-manipulated data. . .
[raising the question of] [w]hich, if any, of these processes
qualify as a transformation or reduction of an article into a
different state or thing constituting patent-eligible subject
matter?

28

Bilski I, 545 F.3d at 962.

The Federal Circuit drew a line in

Bilski I in holding that the data manipulated must transform
either a “physical object or substance, or an electronic signal
Id. at 964

representative of any physical object or substance.”

Applying that test to the facts at issue in Bilski I, the
Federal Circuit declared that a computerized risk hedging
process which transformed “public or private legal obligations
or relationships, [or] business risks” did not fulfill the
transformation prong:
Purported transformations or manipulations simply of public
or private legal obligations or relationships, business,
risks, or other such abstractions cannot meet the
[transformation] test because they are not physical objects
or substances, and they are not representative of physical
objects or substances.
Id. at 963.
Here, the preferences that are manipulated in the claimed
matchmaking process do not represent physical objects or
substances.
the test.

They are inapposite “abstractions” for purposes of
Consequently, the transformation prong of the test

also cuts in favor of invalidating the ‘073 patent.
II.

The Dependent Claims of the ‘073 patent are also Invalid

The eight dependent claims of the ‘073 patent rely on Claim
1’s claim of the computerized matchmaking process.

The claims

simply add broad, non-value added limitations to Claim 1’s
process of computerized matchmaking.

29

They are invalid for two

reasons.

First, all of the dependent claims expressly depend on

the invalid Claim 1.

Claims 2, 3, 4, 8, and 9 are all disclosed

as “method[s] according to claim 1.”

Claims 5 and 6 are

disclosed as “method[s] according to claim 4” (which is
dependent on the invalid Claim 1).

And claim 7 is disclosed as

a “method according to claim 6” (which is dependent on Claim 4,
which in turn is dependent on the invalid Claim 1”).

Without

Claim 1, the claims are no longer grounded in anything and are
incoherent.
Second, none of the limitations materially limit Claim 1
such that they could survive independently even if Claim 1 were
not invalidated.

Claim 2 is simply the concept of adding a

closeness of fit test to Claim 1.

Claim 3 adds the abstract

idea of using data from external co-evaluators in the process.
Claims 4 and 6 claim the abstract idea of assigning a value to
the preferences inputted.

Claims 5 and 7 claim the equally

abstract idea of not revealing that value to the parties in the
matchmaking process.

Finally, Claims 8 and 9 claim the

quintessentially commonplace idea of using the internet.

It is

clear that none of these limitations create a process that can
survive under the foregoing tests.

None of them are tied to a

particular machine nor do they transform anything.

And they are

all even more abstract than the processes invalidated in Benson,
Flook, Bilski, and Alice.

30

The dependent claims of the ‘073 patent are analogous to
the dependent claims invalidated by the Supreme Court in Bilski
following the Court’s invalidation of the underling independent
claim there.

See Bilski, 130 S. Ct. at 3231.

After

invalidating the independent claim of the process of risk
hedging in the commodities context, the Bilski Court invalidated
the dependent claims on the ground that the “remaining claims
are broad examples of how hedging can be used in commodities and
energy markets.”

Id.

The Court explained that “[t]these

[dependent] claims attempt to patent the use of the abstract
idea of hedging risk in the energy market and then instruct the
use of well-known random analysis techniques to help establish
some of the inputs into the equation.”

Id.

The dependent claims in the ‘073 patent add similarly
little value to those invalidated in Bilski.

Like the dependent

claims in Bilski, the dependent claims here merely add to the
unpatentable abstract idea of matchmaking the “well-known . . .
analysis technique[s]” of: incorporating “closeness of fit”
analysis (Claim 2); adding data from external co-evaluators
(Claim 3); assigning a value figure to the preference data
inputted (Claims 4 and 6); hiding that value figure from
participants (Claims 5 and 7); and using the Internet (Claims 8
and 9).

Notably, although Findthebest devoted a section in its

31

initial motion as to why Claims 2-9 were invalid, Lumen View
failed to respond with any defense of those claims individually.
III. Lumen View’s Arguments that the Motion is Procedurally
Improper
Lumen View contends that a motion to invalidate a patent
based on Section 101 is premature at the motion to dismiss stage
for three reasons.

First, Lumen View argues that the only

relevant inquiry is whether it complied with the “Form 18” -- an
illustrative pleading form for patent cases in the Federal Rules
of Civil Procedure.

Second, Lumen View argues that the “clear

and convincing” evidence standard for patent invalidation means
that a patent usually should not be invalidated at the pleadings
stage.

And third, Lumen View somewhat contradictorily argues

both that this motion should not be decided before claim
construction has occurred and that the Court should adopt Lumen
View’s proffered claim construction in deciding this motion now.
Lumen View’s Form 18 argument can be disposed of quickly.
Lumen View confuses the fact that compliance with Form 18 may
immunize a complaint from an attack on the sufficiency of the
details pled 6 with the notion that compliance with Form 18
prevents a legally meritless claim from being dismissed on the
pleadings.

Lumen View relies on the Federal Circuit’s statement

6

Under the pleading standards enunciated in Bell Atlantic Corp.
v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S.
662, (2009).

32

in In re Bill of Lading Transmission & Processing Sys. Patent
Litig., 681 F.3d 1323 (Fed. Cir. 2012), that “[a]s long as the
complaint in question contains sufficient factual allegations to
meet the requirements of Form 18, the complaint has sufficiently
pled direct infringement.”

Id. at 1336.

But the reason that

compliance with Form 18 was sufficient to save those claims from
dismissal at the pleading stage was that the patent-invalidation
“arguments all focus[ed] on whether the amended complaints'
allegations of direct infringement contain[ed] sufficient
factual detail to withstand attack under Twombly and Iqbal.”
Id. at 1335.

In other words, compliance with Form 18 is usually

sufficient to defeat an argument that a pleading is
insufficiently detailed.

But compliance with a pleading form

cannot, of course, prove that a claim is legally meritorious.
Second, Lumen View argues that the “clear and convincing
evidence” standard under which a patent invalidation motion must
be adjudicated makes resolution of this motion improper at this
procedural stage.

But as Lumen View concedes, a motion to

invalidate a patent on the pleadings is “not precluded, at this
stage.”

It is true that “it will be rare that a patent

infringement suit can be dismissed at the pleading stage for
lack of patentable subject matter . . . because every issued
patent is presumed to have been issued properly, absent clear
and convincing evidence to the contrary.”

33

Ultramercial, Inc. v.

Hulu, LLC, 722 F.3d 1335, 1338 (Fed. Cir. 2013).
not mean never.

But rare does

Whether a patent is valid under Section 101 is

a pure question of law.

And when “the only plausible reading of

the patent must be that there is clear and convincing evidence
of ineligibility” the patent must be invalidated at the pleading
stage.

Id.

As described in the foregoing, whether the ‘073

patent is addressed to Section 101 ineligible subject matter is
not a close question.

It is evident by clear and convincing

evidence that the patent is invalid.
Finally, Lumen View objects to the fact that this motion
was brought before claim construction has occurred.

At the same

time, Lumen View argues that “since the parties have already
filed their statement of [claim construction] this Court should
adopt Lumen View’s proffered constructions in considering this
motion.”

Findthebest urges that this motion be resolved absent

any claim construction, and in the alternative it consents to
use the construction of the claims submitted by Lumen View for
purposes of this motion.
While claim construction may sometimes be helpful in
resolving a Section 101 motion where detailed explication of the
claims in a patent would reveal material legal issues, the
Federal Circuit has said that “conducting a claim construction
analysis before addressing § 101” is “not required.”

This is

“because eligibility is a ‘coarse’ gauge of the suitability of

34

broad subject matter categories for patent protection, . . .
[and therefore] claim construction may not always be necessary
for a § 101 analysis.”

Id. at 1339.

In support of its holding

that claim construction is not required prior to a Section 101
analysis, the Federal Circuit has “cited [Bilski, 130 S. Ct. at
3225], noting that the Supreme Court ‘f[ound] subject matter
ineligible for patent protection without claim construction.’”
Bancorp Servs., 687 F.3d at 1273.
This motion turns on the question of whether one
independent claim in the ‘073 patent claims a process that is
impermissibly abstract.
are straightforward.

The claimed process elements of Claim 1

No components are opaque such that claim

construction would be necessary to flush out its contours.
“[T]he question of eligible subject matter must be determined on
a claim-by-claim basis.

Construing every asserted claim and

then conducting a § 101 analysis may not be a wise use of
judicial resources.”

Ultramercial, 722 F.3d at 1340.

Here, the

Section 101 inquiry encompasses only “broad subject matter
categories” and claim construction is not necessary to reveal
any material legal issues and would not be “a wise use of
judicial resources.” 7

Id.

7

In any event, having examined Lumen View’s proposed claim
construction, nothing contained in these submissions would alter
the outcome of this motion. In fact, Lumen View urged in its
claim construction brief that all of the claim terms which it
35

CONCLUSION
Claim 1 of the ‘073 patent claims an abstract idea, which
is patent ineligible subject matter under Section 101 of the
codified Patent Act.

The dependent claims are invalid as well.

Findthebest’s September 24, 2013 motion for judgment on the
pleadings is granted.

The Clerk of Court shall enter judgment

for the defendant and close the case.

Dated:

New York, New York
November 22, 2013
__________________________________
DENISE COTE
United States District Judge

sought to be construed by the Court be construed according to
their “plain and ordinary meaning[s].”

36