Trulia Motion To Dismiss Zillow Suit

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 1 of 21
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
DEFENDANTS MOTION TO DISMISS COMPLAINT FOR PATENT INFRINGEMENT Case No. 2:12-cv-01549-JLR
The Honorable James L. Robart
UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE ZILLOW, INC., Plaintiff, vs. TRULIA, INC., Defendant. ORAL ARGUMENT REQUESTED Case No. 2:12-cv-01549-JLR TRULIA, INC.S MOTION TO DISMISS COMPLAINT FOR PATENT INFRINGEMENT NOTE ON MOTION CALENDAR: January 11, 2013
WILSON SONSINI GOODRICH & ROSATI 701 Fifth Avenue, Suite 5100 Seattle, Washington 98104-7036 Tel: (206) 883-2500 / Fax: (206) 883-2699
1 2 3 4 5 6 A. 7 B. 8 9 10 11 3. 12 a. 13 b. 14 C. 15 16 17 IV. 18 19 20 21 22 23 24 25 26 27 D. I. II. III.
TABLE OF CONTENTS Page INTRODUCTION .............................................................................................................. 1 FACTUAL BACKGROUND............................................................................................. 2 ZILLOWS COMPLAINT FOR PATENT INFRINGEMENT SHOULD BE DISMISSED. ...................................................................................................................... 5 Legal Standards....................................................................................................... 5 Because the 674 Patent Claims Do Not Satisfy the Eligibility Requirements of Section 101, Zillows Complaint Should be Dismissed.............. 6 1. 2. The 674 Patent Claims Unpatentable Abstract Ideas. ............................... 8 The Claimed Routine and Conventional Steps Do Not Render the Abstract Ideas and Mental Processes Patentable. ....................................... 9 The 674 Patent Claims Fail the Machine-or-Transformation Test.......... 10 The 674 Patent Claims Fail the Machine Prong. ......................... 10 The 674 Patent Claims Fail the Transformation Prong. .............. 12
Alternatively, Trulia Requests a Stay Pending the Federal Circuits En Banc Ruling in CLS Bank................................................................................ 12 The Indirect Infringement Claims Must Be Dismissed for Failure to Meet the Pleading Requirements of Rule 8.................................................................... 13
CONCLUSION................................................................................................................. 16
DEFENDANTS MOTION TO DISMISS COMPLAINT FOR PATENT INFRINGEMENT Page i Case No. 2:12-cv-01549-JLR
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
TABLE OF AUTHORITIES Page(s) CASES Alloc, Inc. v. Intl Trade Commn, 342 F.3d 1361 (Fed. Cir. 2003)................................................................................................. 15 Ashcroft v. Iqbal, 556 U.S. 662 (2009) .............................................................................................................. 5, 14 Bancorp Servs. L.L.C., v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012)................................................................................... 5, 8, 10, 11 Bell Atl. Corp. v. Twombly, 550 U.S. 554 (2007) .................................................................................................................... 5 Bilski v. Kappos, 130 S. Ct. 3218 (2010) ...................................................................................................... 6, 7, 10 Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir. 2009)................................................................................................... 14 CLS Bank Intl v. Alice Corp. Pty. Ltd., 685 F.3d 1341 (Fed. Cir. 2012)........................................................................................... 12, 13 Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005)................................................................................................. 15 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).......................................................................................... passim Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)..................................................................................... 5, 8, 9, 12 Diamond v. Diehr, 450 U.S. 175 (1981) .................................................................................................................... 7 Emblaze Ltd. v. Apple Inc., No. C 11-01079 SBA, slip op., 2012 WL 5940782 (N.D. Cal. Nov. 27, 2012) ................. 14, 15 Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317 (Fed. Cir. 2012)................................................................................................... 8 Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) .............................................................................................................. 14 Glory Licensing LLC v. Toys R Us, Inc., No. 09-4252 (FSH), 2011 WL 1870591 (D.N.J. May 16, 2011) ................................................ 6 Gottschalk v. Benson, 409 U.S. 63 (1972) .............................................................................................................. 6, 7, 8
DEFENDANTS MOTION TO DISMISS COMPLAINT FOR PATENT INFRINGEMENT Page ii Case No. 2:12-cv-01549-JLR
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
Halton Co. v. Streivor, Inc., No. C 10-00655 WHA, 2010 WL 2077203 (N.D. Cal. May 21, 2010) .................................... 15 Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300 (Fed. Cir. 2012)................................................................................................... 8 In re Bilski (Bilski I), 545 F.3d 943 (Fed. Cir. 2008)....................................................................................... 10, 11, 12 In re Grams, 888 F.2d 835 (Fed. Cir. 1989)..................................................................................................... 9 Le Roy v. Tatham, 55 U.S. 156 (1852) ...................................................................................................................... 1 Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009)................................................................................................. 14 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) ........................................................................................................ 6, 7, 9 Medtrica Solutions, Ltd. v. Cygnus Med., LLC, No. C12-538RSL, slip op., 2012 WL 5726799 (W.D. Wash. Nov. 15, 2012) ......................... 15 Nazomi Commcn, Inc. v. Nokia Corp., No. 10-CV-4686, 2011 WL 2837401 (N.D. Cal. July 14, 2011) .............................................. 14 OIP Techs., Inc. v. Amazon.com, Inc., No. C-12-1233 EMC, 2012 WL 3985118 (N.D. Cal. Sept. 11, 2012).................................. 5, 11 Pac. Biosci. Labs., Inc. v. Nutra Luxe MD, LLC, No. C10-0230 JLR (W.D. Wash. Jan. 9, 2011 Order) .............................................................. 13 Parks Sch. of Bus., Inc. v. Symington, 51 F.3d 1480 (9th Cir. 1995)....................................................................................................... 5 Vacation Exh., LLC v. Wyndham Exch. & Rentals, Inc., No. 12-04229 RGK (FFMx) (C.D. Cal. Sept. 18, 2012)............................................................. 6 Wistron Corp. v. Phillip M. Adams & Assoc., LLC, No. C-10-4458 EMC, 2011 WL 4079231 (N.D. Cal. Sept. 12, 2011)...................................... 14 STATUTES 35 U.S.C. 101........................................................................................................................... 1, 6 RULES Fed. R. Civ. P. Rule 12(b)(6)........................................................................................................................5 Rule 8 ...................................................................................................................................2
DEFENDANTS MOTION TO DISMISS COMPLAINT FOR PATENT INFRINGEMENT Page iii Case No. 2:12-cv-01549-JLR
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
I.
INTRODUCTION Plaintiff Zillow, Inc. (Zillow) and defendant Trulia, Inc. (Trulia) both run real estate
information websites. Dkt. No. 1 at 2-3. Days after Trulia commenced the roadshow for its initial public offering to begin marketing its stock to investors, Zillow filed the subject complaint against Trulia. See Dkt. No. 1 at 5. Zillow seeks damages and an injunctionbased on a feature that had been on Trulias website for over a yearthat allows homeowners to enter information about their homes to better value their homes. Dkt. No. 1 at 3, 5, 7. Zillow claims to own this business method and has claimed it in the asserted U.S. Patent No. 7,970,674 B2 (the 674 patent). Dkt. No. 1 at 3. Because the business method claimed in the 674 patent is
unpatentable, Zillows complaint should be dismissed. Abstract ideas and principles are not patentable under 35 U.S.C. 101. Le Roy v. Tatham, 55 U.S. 156, 175 (1852). The Supreme Court has reiterated this time and time again, in the seminal cases of Benson, Flook, Bilski, and most recently, in Mayo. An abstract idea is exactly, and exclusively, what is claimed in the 674 patent. The 674 patent claims the abstract idea of allowing a homeowner to adjust information about a home, such as correcting the number of bedrooms or bathrooms, and the calculation and display of a refined valuation based on the adjusted information. The claims at issue do not limit the manner in which the information is obtained or even the method used for calculating the refined valuation. Asking a homeowner for information about the home and using it to refine a valuation consists entirely of mental processes, which the Supreme Court and Federal Circuit have maintained do not meet the eligibility requirements of Section 101. The claims incidental use of a computer or recitation of a computer readable medium does not convert them into patentable material. This is especially true where, as here, the steps of the claimdisplaying, obtaining, and generating informationare routine and conventional and do not represent an inventive concept. For the reasons set forth below, the 674 patent is not eligible under Section 101. Accordingly, Trulia respectfully moves the Court to dismiss Zillows complaint for infringement with prejudice.
DEFENDANTS MOTION TO DISMISS COMPLAINT FOR PATENT INFRINGEMENT Page 1 Case No. 2:12-cv-01549-JLR
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
Trulia further moves the Court to dismiss the complaints allegations of indirect infringement as to the 674 patent for falling far short of the pleading requirements of Rule 8 of the Federal Rules of Civil Procedure, upon which the Supreme Court elaborated in the seminal cases of Iqbal and Twombly. Zillows complaint fails to make even insufficient threadbare recitations of any of the elements necessary to state a claim for contributory or induced infringement. II. FACTUAL BACKGROUND On August 17, 2012, Trulia commenced the process to become a public company. Dkt. No. 1 at 5. On September 7, 2012, Trulia commenced the roadshow for its initial public offering to begin marketing its stock to investors, and, on September 12, Zillow filed the subject complaint against Trulia. See Dkt. No. 1 at 5. Zillows complaint against Trulia alleges
infringement of the 674 patent, entitled Automatically Determining a Current Value for a Real Estate Property, Such as a Home, that is Tailored to Input from a Human User, Such as its Owner. Dkt. No. 1 at 3; Dkt. No. 1-1 (the 674 patent). The 674 patent was filed on February 3, 2006, and issued over five years later on June 28, 2011. Dkt. No. 1-1 at 1. It purports to claim a new approach to valuing homes that [is] responsive to owner input, as well as having a high level of accuracy, and being inexpensive and convenient. 674 patent at 1:53-56. The accused Trulia Estimates feature launched over a year prior to Zillows complaint. Dkt. No. 1 at 3. The 674 patent recites 40 claims. Claims 1, 2, and 15 are the only independent claims. This motion concerns each independent claim and their respective dependent claims. Claim 15 recites: 15. A method in a computing system for refining an automatic valuation of a distinguished home based upon input from a user knowledgeable about the distinguished home, comprising: (a) obtaining user input adjusting at least one aspect of information about the distinguished home used in the automatic valuation of the distinguished home; (b) automatically determining a refined valuation of the distinguished home that is based on the adjustment of the obtained user input; and (c) presenting the refined valuation of the distinguished home. 674 patent at 21:49-59.
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
Although including a computer readable medium, claim 2 essentially recites the same underlying method as claim 15: 2. A computer readable medium for storing contents that causes a computing system to perform a method for procuring information about a distinguished property from its owner that is usable to refine an automatic valuation of the distinguished property, the method comprising: (a) displaying at least a portion of information about the distinguished property used in the automatic valuation of the distinguished property; (b) obtaining user input from the owner adjusting at least one aspect of information about the distinguished property used in the automatic valuation of the distinguished property; and (c) displaying to the owner a refined valuation of the distinguished property that is based on the adjustment of the obtained user input. 674 patent at 20:18-32. Finally, although claim 1 is much longer than claims 2 and 15, it adds no patentable subject matter. Indeed, it merely repeats slight variations of the unpatentable steps of claim 15 over and over again. 1. A method in a computing system for automatically determining a valuation for a subject home in response to input from an owner of the home, comprising: (a) presenting a display that includes an indication of a first valuation determined for the subject home and indications of attributes of the subject home used in the determination, the indicated valuation being determined by applying to the indicated attributes a geographically-specific home valuation model is based upon a plurality of homes near the subject home recently sold; (b) presenting a display that solicits input from the owner that updates one or more of the indicated attributes; (c) receiving first input from the owner that updates one or more of the indicated attributes; (d) applying the geographically-specific home valuation model to attributes of the subject home as updated by the first input to determine and display a second valuation for the subject home; (e) presenting a display that solicits input from the owner that identifies the type, cost, and timing of one or more home improvements performed on the subject home; (f) receiving second input from the owner that identifies the type, cost, and timing of one or more home improvements performed on the subject home; (g) using the second input to determine and display (a) a present value of the identified home improvements and (b) a third valuation that takes into account the present value of the identified home improvements; (h) presenting a display that solicits input from the owner that identifies other assets or liabilities of the subject home and the value attributed to them by the owner; (i) receiving third input from the owner that identifies other aspects of the subject home affecting its value and the value attributed to them by the owner; (j) determining a valuation adjustment corresponding to the identified aspects;
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
(k) displaying a fourth valuation that takes into account the determined valuation adjustment corresponding to the identified aspects; (l) presenting a display that solicits input from the owner that identifies homes near the subject home that the owner regards as similar to the subject home; (m) receiving fourth input from the owner that identifies homes near the subject home recently sold that the owner regards as similar to the subject home; (n) using the fourth input to generate a tailored geographically-specific home valuation model that (1) is based upon a plurality of homes near the subject home recently sold that is a superset of the homes identified by the fourth input, but (2) places special emphasis on the homes identified by the fourth input; (o) applying by a computer the tailored valuation model to the updated attributes of the subject home to obtain a fifth valuation of the subject home; and (p) displaying the fifth valuation based on the application of the tailored valuation model. 674 patent at 19:29-67. In the specification, the 674 patent acknowledges that [a] variety of conventional approaches exist for valuing homes, such as relying upon recent selling prices and professional appraisals. 674 patent at 1:24-51. It also recognizes that it is possible to design systems that automatically value houses, but notes that such automatic valuations would generally be performed based upon the contents of a public database, and without input from each homes owner or other information not in the public database. Id. at 1:45-49. Such systems, according to the 674 patent, fail to consider owner input and as a result, may be inaccurate. Thus, the invention claimed in the 674 patent is the idea of allowing a homeowner to input information about a house that is considered in the valuation of the property. Id. at 1:45-56. This ownerprovided information is then considered in a refined valuation of the home. Id. at 3:18-22. Zillows complaint purports to allege both direct and indirect infringement by Trulia. However, the allegations of indirect infringement fail to include the necessary factual elements. Indeed, the entirety of Zillows indirect infringement claims allege: Trulia has infringed and continues to infringe the 674 patent by its use of, for example, the Trulia Estimate feature, and by Trulias contributing to the use of, and inducement of others to use, infringing features and services. Under 35 U.S.C. 271, Trulia is liable for its infringement of the 674 patent. Dkt. No. 1 at 19. Based on the legal insufficiencies of the complaint, Trulia now moves for dismissal.
1 2
III.
ZILLOWS COMPLAINT FOR PATENT INFRINGEMENT SHOULD BE DISMISSED. A. Legal Standards
3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 As recently confirmed by the Federal Circuit, claim construction is not a prerequisite to a determination of subject matter eligibility under 101. See Bancorp Servs. L.L.C., v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1273 (Fed. Cir. 2012) (recognizing that the Court has never set forth a bright line rule requiring district courts to construe claims before determining subject matter).
WILSON SONSINI GOODRICH & ROSATI 701 Fifth Avenue, Suite 5100 Seattle, Washington 98104-7036 Tel: (206) 883-2500 / Fax: (206) 883-2699 1
Under Federal Rule of Civil Procedure 12(b)(6), a party may move to dismiss based on the failure to state a claim upon which relief may be granted. See Fed. R. Civ. P. 12(b)(6). A motion to dismiss under Rule 12(b)(6) challenges the legal sufficiency of the claims alleged. See Parks Sch. of Bus., Inc. v. Symington, 51 F.3d 1480, 1484 (9th Cir. 1995). In order to survive a motion to dismiss, the Supreme Court has held that a complaint must contain sufficient factual matter to state a claim of relief that is plausible on its face. Bell Atl. Corp. v. Twombly, 550 U.S. 554, 570 (2007). A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009) (citations omitted). A pleading that offers labels and conclusions or a formulaic recitation of the elements of a cause of action will not do. Nor does a complaint suffice if it tenders naked assertion[s] devoid of further factual enhancement. Iqbal, 566 U.S. at 678 (quoting Twombly, 550 U.S. at 555, 557). Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice. Id. Whether a claim recites patent-eligible subject matter is a question of law. See
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011). Accordingly, district courts have
dismissed complaints for patent infringement upon a finding that the asserted patents do not meet the patent eligibility requirements of Section 101.1 See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., No. C-12-1233 EMC, 2012 WL 3985118, at *20 (N.D. Cal. Sept. 11, 2012) (granting
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
motion to dismiss under 101 where patent claimed an automatic pricing method and apparatus for use in electronic commerce environments); Glory Licensing LLC v. Toys R Us, Inc., No. 09-4252 (FSH), 2011 WL 1870591, at *4-5 (D.N.J. May 16, 2011) (granting motion to dismiss under 101 where patent claimed a system for processing information from a template file to an application program); Vacation Exh., LLC v. Wyndham Exch. & Rentals, Inc., No. 12-04229 RGK (FFMx) (C.D. Cal. Sept. 18, 2012, Order) (attached hereto as Exhibit 1) (granting motion to dismiss under 101 for a patent that discloses a method and system for allowing a user to automatically and electronically trade timeshare properties by communicating with a central computer system that has access to a database). B. Because the 674 Patent Claims Do Not Satisfy the Eligibility Requirements of Section 101, Zillows Complaint Should be Dismissed.
Section 101 of the Patent Act provides that [w]hoever 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 therefore, subject to the conditions and requirements of this title. 35 U.S.C. 101. The Supreme Court has long held that there are three specific exceptions to this provision: laws of nature, physical phenomena, and abstract ideas. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012); Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. Gottschalk v. Benson, 409 U.S. 63, 67 (1972). In Bilski, 130 S. Ct. 3218, the Supreme Court considered a petitioners attempt to patent a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy. Id. at 3230-31. Noting that the patent essentially claimed a basic concept of hedging, or protecting against risk, which is a fundamental economic practice, the Court held that allowing petitioners to patent risk hedging would effectively grant a monopoly over an abstract idea and found the application unpatentable. Id. at 3231. / / /
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
Recently in Mayo, the Supreme Court explained that to transform an unpatentable [abstract idea] into a patent-eligible application of such [idea], one must do more than simply state the [idea] while adding the words apply it. Mayo Collaborative Servs., 132 S. Ct. at 1294 (finding a method for the use of thiopurine drugs in the treatment of autoimmune disease not patent-eligible where the steps involve well-understood routine, conventional activity previously engaged in by researchers in the field) (emphasis added). To be eligible, the patent must contain other elements or combinations of elements, sometimes referred to as an inventive concept. Id. at 1294. Simply adding steps in the claimed process that involve well-understood, routine, conventional activity is insufficient. Id. Nor can the prohibition against patenting abstract ideas [] be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant postsolution activity. Bilski, 130 S. Ct. 3218, 3230 (quoting Diamond v. Diehr, 450 U.S. 175, 191-2 (1981)). Further, methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideasthe basic tools of scientific and technological work that are open to all. CyberSource, 654 F.3d at 1371 (quoting Benson, 409 U.S. at 67). An invention that simply provided a new and presumably better method for calculating alarm limit values, but could still be made with a pencil and paper is not patent eligible under Section 101. Flook, 437 U.S. at 584. Even a method of programming a generalpurpose computer to convert binary-coded decimal numbers into pure binary through the use of a mathematical algorithm was deemed unpatentable because such conversion, while complicated, can be done mentally and without the use of a computer. Benson, 409 U.S. at 67. The Federal Circuit has also held an invention to be unpatentable if the method steps can be performed in the human mind, or by a human using a pen and paper. CyberSource, 654 F.3d at 1372. Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental steps as part of a process containing non-mental steps but rather because computational methods which
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
can be performed entirely in the human mind are the types of methods that embody the basic tools of scientific and technological work that are free to all men and reserved exclusively to none. Id. at 1373 (emphasis added). 1. The 674 Patent Claims Unpatentable Abstract Ideas.
The 674 patent involves the fundamental practice of assessing the value of real property, and claims the abstract idea of allowing a homeowner to adjust information regarding a house that is subsequently factored into a refined valuation of the home.2 Simply reciting the use of a general computer to perform the routine and conventional step of allowing a homeowner to input information regarding a home, the 674 patent contains no inventive concept that would render the claims patent-eligible. Indeed, the patent claims are indistinguishable from abstract ideas previously rejected by the Supreme Court and the Federal Circuit. See Benson, 409 U.S. at 67 (method of programming a general purpose computer to convert binary-coded decimal numbers into pure binary through the use of a mathematical algorithm was not patent eligible); CyberSource, 654 F.3d at 1370 (method for verifying the validity of a credit card transaction over the Internet was not patent eligible); Dealertrack, 674 F.3d at 1317 (a computer-aided method and system for processing credit applications over electronic networks was unpatentable abstract idea); Bancorp Servs., 687 F.3d at 1277-78 (system for administering and tracking the value of separate-account life insurance policies not patent eligible); Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1318 (Fed. Cir. 2012) (patent describing an investment tool designed to enable property owners to buy and sell properties without incurring tax liabilities not eligible under 101); Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300 (Fed. Cir. 2012) (Mayer, J., dissenting-in-part) (noting that if Bilski had been decided prior to the trial, the district court have resolved the case under 101 and finding system in which a user enters
Although reciting a computer readable medium, independent claim 2 (and its dependent claims) should be subject to the same scrutiny for purposes of determining eligibility under 101. [A] claim directed to a computer readable medium, despite its format, should be treated no differently from the comparable process claims held to be patent ineligible under 101. Bancorp Servs., 687 F.3d at 1276.
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
data regarding a patients symptoms and a computer generates a list of possible diseases or conditions was not patent eligible). 2. The Claimed Routine and Conventional Steps Do Not Render the Abstract Ideas and Mental Processes Patentable.
In the context of this precedent, there can be no doubt that the steps of presenting and inputting information, and even the more complicated step of calculating a valuation of a home, can be performed mentally and with a pencil and paper. Indeed, it is beyond dispute that the valuations of a home can and have in the past been performed entirely by the human mind. That the steps claimed in the 674 patent can be performed mentally further demonstrates that the claims are unpatentable abstract ideas. Further, simply adding steps in the claimed process that involve well-understood, routine, conventional activity is insufficient to render an abstract idea patentable. Mayo Collaborative Servs., 132 S. Ct. at 1294. Each of the steps of the 674 patent claims comprise such routine and conventional activity: (a) presenting or
displaying information about the property; (b) obtaining adjusted information from the owner about the property; (c) automatically determining a refined valuation based upon the input from the owner; and (d) presenting or displaying the refined valuation to the owner. The 674 patents steps are precisely the type that the Federal Circuit has found to be ineligible. The steps of displaying or presenting information used in a valuation do not render the 674 patent-eligible. Similarly routine steps such as receiving and forwarding data have
previously been found to not impose meaningful limits on the claims scope. Dealertrack, 674 F.3d at 1333 (quoting Bilski I, 545 F.3d at 961-62). Likewise, the claimed step of obtaining information about a home from the owner is not a meaningful limitation. In CyberSource, 654 F.3d at 1370, the Federal Circuit considered a method for verifying the validity of a credit card transaction over the Internet, which required one to obtain and compare intangible data pertinent to business risks. The Court found that the mere collection and organization of data regarding credit card numbers cannot make an otherwise nonstatutory claim statutory. CyberSource, 654 F.3d at 1370 (citing In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)).
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
In Bancorp Servs., 687 F.3d at 1279-80, the claimed steps included determining values and then storing, removing, and/or accumulating those values in managing a stable value protected life insurance policy. The Court determined that performing calculations and
manipulating the results of the valuessimilar to what is claimed in the 674 patentwere ineligible subject matter. Id. That the method claimed in the 674 patent is limited to the real estate market makes no difference. The Federal Circuit rejected the idea that the limited use to the life insurance market saves the claim, noting that limiting an abstract idea to one field of use or adding token post-solution components did not make the concept patentable. Id. at 1280 (citing Bilski, 130 S. Ct. at 3231). The steps of the claimed method do not impose a meaningful limitation that would render the 674 claims patentable. 3. The 674 Patent Claims Fail the Machine-or-Transformation Test.
Though not dispositive, the machine-or-transformation test is nevertheless a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under 101. Bilski, 130 S. Ct. at 3227. In Bilski, the Federal Circuit held that a claimed process would only be patent-eligible under Section 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. In re Bilski (Bilski I), 545 F.3d 943, 954 (Fed. Cir. 2008). Application of the machine-or-
transformation test to the 674 claims further demonstrates that they are not patent-eligible. a. The 674 Patent Claims Fail the Machine Prong.
The methods claimed in the 674 patent fail to identify a specific machine. In fact, the 674 specification confirms that no specific machine is required. Rather, the specification
describes the invention as [a] software facility for automatically determining a current value for a home or other property is tailored to input from its owner or another user (the facility) is described. 674 patent at 2:57-59. Figure 1 illustrates that any general computer can be used to practice the claimed method, and the specification lists typical components including: a central processing unit, a computer memory, a storage device such as a hard drive, a computer-readable media drive such as a CD-ROM, and a network connection such as the internet. 674 patent at
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
4:25-46 (computer systems configured as described above are typically used to support the operation of the facility); Figure 1. This list of general components found on any computer does not tie the 674 patent to a particular machine. [M]erely identifying general machine elements does not satisfy the [machine-or-transformation test]; were that so virtually any use of devices beyond the human body for a claimed method would satisfy the test. OIP Techs., 2012 WL 3985118, at *13. Nor do the 674 patent claims impose meaningful limits on the claims scope. See Bilski I, 545 F.3d at 961; CyberSource, 654 F.3d at 1369. Although claim 2 recites a computer readable medium for storing contents that causes a computing system to perform a method for procuring information about a distinguished property from its owner, and claims 1 and 15 require a method in a computing system, the Federal Circuit has repeatedly held such incidental use of a computer to be insufficient to satisfy the machine prong. [T]he use of a computer in an otherwise patent-ineligible process for no more than its basic functionmaking calculations or computationsfails to circumvent the prohibition against patenting abstract ideas and mental processes. Bancorp Servs., 687 F.3d at 1278. 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. Id. (the performance of repetitive calculations does not impose meaningful limits on the claims). The machine must play a significant part in permitting the claimed method to be performed. See CyberSource, 654 F.3d at 1375 (finding the computer readable medium limitation unpatentable under 101). Merely reciting a computer readable medium for performing the claimed method does not render the claim patentable. [T]he basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely 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. Id.
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
Where, as here, the claims do not specify how the computer hardware and database are specially programmed to perform the steps claimed in the patent, the patent is ineligible under Section 101. See Dealertrack, 674 F.3d at 1333. Like the patent at issue in Dealertrack, the 674 patents claims are silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method. Id. Moreover, [b]ecause the computer here can be programmed to perform very different tasks in very different ways, it does not play a significant part in permitting the claimed method to be performed. Id. (citations omitted). Thus, the 674 patent fails the machine prong of the test. b. The 674 Patent Claims Fail the Transformation Prong.
Nor do the 674 claims transform a physical object or substance, or something representing a physical object or substance, into a different state or thing. See Bilski I, 545 F.3d at 963. Purported transformation or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances. Id. The mere manipulation or reorganization of data, however, does not satisfy the transformation prong. CyberSource, 654 F.3d at 1375. Manipulation of information is precisely what the 674 patent claims and, as in Bilski, does not effect a transformation. The 674 patent does not meet the eligibility requirements of Section 101; therefore, the complaint should be dismissed with prejudice. C. Alternatively, Trulia Requests a Stay Pending the Federal Circuits En Banc Ruling in CLS Bank.
Trulia believes the Court should rule in its favor on the instant motion to dismiss irrespective of the outcome of the Federal Circuits upcoming rehearing en banc in CLS Bank Intl v. Alice Corp. Pty. Ltd., 685 F.3d 1341 (Fed. Cir. 2012), vacated, scheduled for February 8, 2013. Specifically, CLS Bank should not affect the outcome here because, in CLS Bank, the computer limitations played a far more significant role in the performance of a far more specific application of an inventive concept than that at issue here. CLS Bank Intl, 685 F.3d at 1355
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
(claims cover computer-implemented steps of exchanging obligations maintained at an exchange institution by creating electronically maintained shadow credit and shadow debit records). Nonetheless, the questions presented in CLS Bank are: a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible abstract idea; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patentineligible idea? b. In assessing patent eligibility under 35 U.S.C. 101 of a computerimplemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for 101 purposes? Trulia recognizes that the Court may believe that the rehearing en banc will impact its determination of the present motion or provide guidance useful to the present motion. Should the Court so believe, Trulia requests that the Court defer resolution of the present motion and stay the case pending the Federal Circuits ruling. See e.g., Pac. Biosci. Labs., Inc. v. Nutra Luxe MD, LLC, No. C10-0230 JLR (W.D. Wash. Jan. 9, 2011, Order) (analogous situation granting motion to stay pending reexamination due, in part, to potentially significant impact of reexamination on case). D. The Indirect Infringement Claims Must Be Dismissed for Failure to Meet the Pleading Requirements of Rule 8.
The sum total of Zillows pleading related to indirect infringement constitutes a conclusory mention in paragraph 19 of the complaint that Trulia has infringed and continues to infringe the 674 Patent by its use of, for example, the Trulia Estimatefeature, [sic] and by Trulias contributing to the use of, and inducement of others to use, infringing features and services and a similar conclusory mention of indirect infringement in its Prayer for Relief. Dkt. No. 1 at 6-7. Zillows allegations of indirect infringement should, therefore, also be dismissed for their failure to make even threadbare recitations of the elements required to support contributory and induced infringement. To state a claim for inducement, a plaintiff must establish first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
possessed specific intent to encourage anothers infringement. Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 697-98 (Fed. Cir. 2009) (citations omitted); see also Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011) (Accordingly, we now hold that induced infringement under 271(b) requires knowledge that the induced acts constitute patent infringement.). In order to succeed on a claim of contributory infringement, in addition to proving an act of direct infringement, plaintiff must show that defendant knew that the combination for which its components were especially made was both patented and infringing and that defendants components have no substantial non-infringing uses. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1320 (Fed. Cir. 2009) (citations omitted). Zillow failed to plead any of the elements required to state a claim for contributory or induced infringement. The absence of even a single element warrants dismissal. See Iqbal, 129 S. Ct. at 1949. Zillows multiple omissions require dismissal. 1. Zillow Pled No Factual Allegations Regarding Knowledge and Intent.
For both inducement and contributory infringement, the complaint must allege knowledge of the patent and specific intent. See Global-Tech Appliances, 131 S. Ct. at 2068; Lucent Techs., 580 F.3d at 1320. Zillows complaint is completely silent, and fails to allege even conclusory allegations of knowledge, for which Courts in this Circuit have routinely dismissed indirect infringement claims. See, e.g., Emblaze Ltd. v. Apple Inc., No. C 11-01079 SBA, slip op., 2012 WL 5940782, at *7 (N.D. Cal. Nov. 27, 2012) (dismissing indirect infringement claims where complaint was devoid of any allegations alleging how [defendant] actively induced infringement with knowledge that the induced acts constitute patent infringement); Wistron Corp. v. Phillip M. Adams & Assoc., LLC, No. C-10-4458 EMC, 2011 WL 4079231, at *5 (N.D. Cal. Sept. 12, 2011) (dismissing indirect infringement claims and noting that [p]ost-Twombly and Iqbal, courts have typically rejected conclusory allegations of knowledge); Nazomi Commcn, Inc. v. Nokia Corp., No. 10-CV-4686, 2011 WL 2837401, at *3 (N.D. Cal. July 14, 2011) (dismissing claim for inducement where plaintiff failed to allege specific facts to support the conclusory allegations that defendant actively and knowingly induced).
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
2.
Zillow Pled No Factual Allegations Regarding Direct Infringement by a Third Party.
Claims for induced infringement and contributory infringement cannot exist in the absence of direct infringement by third parties. See Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005); Alloc, Inc. v. Intl Trade Commn, 342 F.3d 1361, 1374 (Fed. Cir. 2003). Zillows failure to allege direct infringement by any third party therefore provides a separate, independent ground for dismissal. See Emblaze Ltd., 2012 WL 5940782, at *7 (dismissing indirect infringement claims where complaint failed to allege facts plausibly showing direct infringement by any third party); Halton Co. v. Streivor, Inc., No. C 10-00655 WHA, 2010 WL 2077203, at *2 (N.D. Cal. May 21, 2010) (dismissing indirect infringement claims where no entity other than defendant has been accused of directly infringing the asserted patent) (emphasis added). 3. Zillow Pled No Factual Allegations That Trulias Products Were Especially Designed for Infringing Use.
Finally, Zillows contributory infringement claim should be dismissed in the complete absence of allegations [] that [the accused product] is a component of a patented invention, or that the component has no substantial noninfringing use. Medtrica Solutions, Ltd. v. Cygnus Med., LLC, No. C12-538RSL, slip op., 2012 WL 5726799, at *2 (W.D. Wash. Nov. 15, 2012); see also Emblaze Ltd., 2012 WL 5940782, at *7 (granting dismissal where plaintiff failed to allege that no substantial non-infringing uses); Halton Co., 2010 WL 2077203, at *2 (complaint failed to state a claim for contributory infringement where there was no allegation by plaintiff that the accused . . . product was a component of a patented machine . . . constituting a material part of the [patented] invention or that the accused product was not capable of substantial noninfringing use). In sum, Zillows complaint makes no attempt to plead any of the elements necessary to state a claim for contributory and induced infringementit pleads nothing relating to knowledge of the patent and intent to infringe, nothing relating to direct infringement by a third party, and
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
nothing related to a lack of noninfringing use.
Lacking each and every required element,
Zillows indirect infringement claims should be dismissed. IV. CONCLUSION For the foregoing reasons, defendant Trulia respectfully requests that the Court grant its motion to dismiss. Dated: December 19, 2012 /s/ Stefani E. Shanberg Stefani E. Shanberg, Pro Hac Vice Jennifer J. Schmidt, Pro Hac Vice WILSON SONSINI GOODRICH & ROSATI Professional Corporation One Market Plaza Spear Street Tower, Suite 3300 San Francisco, California 94105 Telephone: (415) 947-2000 Facsimile: (415) 947-2099 Email: sshanberg@wsgr.com Barry M. Kaplan, WSBA #8661 WILSON SONSINI GOODRICH & ROSATI Professional Corporation 701 Fifth Avenue, Suite 5100 Seattle, Washington 98104-7036 Telephone: (206) 883-2500 Facsimile: (206) 883-2699 Email: bkaplan@wsgr.com Attorneys for Defendant TRULIA, INC.
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
CERTIFICATE OF SERVICE I hereby certify that on December 19, 2012, I electronically filed the foregoing with the Clerk of the Court using the CM/ECF system, which will send notification to counsel of record.
/s/ Stefani E. Shanberg Stefani E. Shanberg

Trulia Motion To Dismiss Zillow Suit

Transféré par

Informations du document

Titre original

Copyright

Formats disponibles

Partager ce document

Partager ou intégrer le document

Options de partage

Avez-vous trouvé ce document utile ?

Ce contenu est-il inapproprié ?

Droits d'auteur :

Formats disponibles

Trulia Motion To Dismiss Zillow Suit

Transféré par

Droits d'auteur :

Formats disponibles

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 1 of 21

The Honorable James L. Robart

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 2 of 21

1 2 3 4 5 6 A. 7 B. 8 9 10 11 3. 12 a. 13 b. 14 C. 15 16 17 IV. 18 19 20 21 22 23 24 25 26 27 D. I. II. III.

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 3 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 4 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 5 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 6 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 7 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 8 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 9 of 21

ZILLOWS COMPLAINT FOR PATENT INFRINGEMENT SHOULD BE DISMISSED. A. Legal Standards

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 10 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 11 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 12 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 13 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 14 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 15 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 16 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 17 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 18 of 21

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 19 of 21

Zillow Pled No Factual Allegations Regarding Direct Infringement by a Third Party.

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 20 of 21

nothing related to a lack of noninfringing use.

Lacking each and every required element,

Case 2:12-cv-01549-JLR Document 19 Filed 12/19/12 Page 21 of 21

/s/ Stefani E. Shanberg Stefani E. Shanberg

Vous aimerez peut-être aussi