IP Law Daily, TOP STORY—S.D.N.Y.: Lumen View Technology’s computer-assisted matchmaking patent claimed ineligible subject matter, (Nov 25, 2013)

By Mark Engstrom, J.D.

Patent holding company Lumen View Technology (Lumen View) could not pursue a patent infringement claim against Findthebest.com, Inc. (Findthebest), a privately held company that allegedly infringed Lumen View’s patent for a “System and Method for Facilitating Bilateral and Multilateral Decision-Making (the “matchmaking patent”), the federal district court New York City in has ruled (Lumen View Technology LLC v. Findthebest.com, Inc., November 22, 2013, Cote, D.). Because the asserted patent claimed an abstract idea—computer-assisted matchmaking—it was invalid under 35 U.S.C. §101. The defendant’s motion for judgment on the pleadings was granted.

Background. Findthebest operated a website that matched users with goods or services using user-defined criteria. Lumen View owned patents and licensed them for fees. Lumen View’s patent at issue in the litigation was U.S. Patent No. 8,069,073 (the “'073 patent” or “matchmaking patent”) was issued November 29, 2011. The '073 patent described a “matchmaking” method in which one or more parties disclosed their preferences—and the intensity of those preferences—and a computer matched the parties using a “closeness-of-fit” process. The patent comprised one independent claim and eight dependent claims. In May 2013, Lumen View sued Findthebest for patent infringement on the ground that Findthebest’s website used a matching process that infringed the Lumen View’s matchmaking patent.

Decision. According to the court, Lumen View’s method for “facilitating evaluation” was clearly an unpatentable process. Applying the principles of four U.S. Supreme Court cases and guidance that was provided by the Federal Circuit, the court concluded that the independent claim of the matchmaking patent described an abstract idea that did not qualify as a §101 “process.” In the court’s view, the independent claim described the abstract idea of bilateral and multilateral matchmaking, using a computer, in the context of a financial transaction or an enterprise. It was “preemptive in the broadest sense,” and its only real limitation—the use of a computer—constituted a post-solution application of an abstract idea to a common context.

Preference data. Having two or more parties input preference data was not inventive, the court explained. Matchmakers had been doing that “for millennia.” Nor was an unspecified “closeness of fit” process an inventive idea. The process was merely a mathematical manifestation of the underlying process of matchmaking: determining good matches. Nothing in Lumen View’s patent revealed an inventive idea, the court concluded, “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.”

Computer implementation. The fact that the patent’s matchmaking process was implemented by a computer did not save it from invalidation. The independent claim of the patent recited a process of computerized retrieval of preference data from two or more parties and the application of a “closeness of fit” computation to match interested parties. The steps of the claim were: (1) retrieve the submitted preference data; (2) analyze the data to compute a closeness of fit result; and (3) provide a list of matches. Those processes could be performed by a human, the court concluded, without using a computer. According to the court, the computer element of the independent claim functioned solely as an “obvious mechanism for permitting [matchmaking] to be achieved more quickly.”

Machine or transformation test. Under the machine or transformation test, a claimed process was “surely patent-eligible” under §101 if it: (1) was tied to a particular machine or apparatus or (2) transformed a particular article into a different state or thing. In Lumen View’s case, the independent patent claim failed both prongs of the test. Application of the machine or transformation test thus confirmed the conclusion that the patent could not stand.

Dependent claims. Each of the eight dependent claims of the matchmaking patent relied on the sole independent claim—the computerized matchmaking process. The dependent claims merely added broad, non-value-added limitations to the independent claim’s process of computerized matchmaking.

According to the court, the dependent claims were invalid for two reasons. First, all of them expressly depended on the invalid independent claim. Without the independent claim, the claims were “no longer grounded in anything” and thus were “incoherent.” Second, none of the dependent claims’ limitations materially limited the independent claim such that the dependent claims could survive independently, even if the independent claim was not invalid.

Separarate suit. Separately, Findthbest has filed suit against Lumen View and related parties, claiming that defendants use the legal process not to vindicate legitimate patent rights, but to extort licensing fees in exchange for dismissal of frivolous patent suits. In its complaint, Findthebest asserts that the defendants’ modus operendi of filing infringement suits without just cause violates the federal Racketeer Influenced Corrupt Organizations (RICO) Act, California’s Unfair Competition Law, and amounts to extortion, abuse of process, and malicious prosecution under California common law. The complaint in FindTheBest.com, Inc. v. Lumen View Technology, LLC, No. 13 CV 6521, was filed September 16, 2013 and is pending in the federal district court in New York City.

The case is No. 13 CIV. 3599 (DLC).

Attorneys: Damian Wasserbauer (Aeton Law Partners, LLP) for Lumen View Technology LLC. Joseph Leventhal (Leventhal Law, LLP) for Findthebest.com, Inc.

Companies: Lumen View Technology LLC; Findthebest.com, Inc.

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