549 F.Supp.3d 1247
W.D. Wash.2021Background
- IBM sued Zillow asserting infringement of seven patents; three patents were stayed pending PTAB IPRs and Zillow moved under Rule 12(c) to dismiss four patents as ineligible under 35 U.S.C. § 101.
- The Court applied the Alice two-step framework and Federal Circuit precedent, treating representative claims where appropriate and considering the intrinsic record.
- The four patents challenged: U.S. Patent No. 7,187,389 (’389) (layered visual displays using color/opacity), U.S. Patent No. 9,158,789 (’789) (synchronized map and list displays with user-drawn selection), U.S. Patent No. 9,245,183 (’183) (retrieving images, scoring conditions, mapping overall scores), and U.S. Patent No. 7,631,346 (’346) (federated single-sign-on account creation).
- For the ’389 and ’789 patents the court found pen-and-paper analogues, result‑oriented claim language, and only generic computer implementation; these patents were held directed to abstract ideas with no inventive concept.
- For the ’183 patent the court found IBM’s allegations plausible that the claims recite an inventive concept (improving computer analysis of unstructured image data), so judgment on the pleadings was denied.
- For the ’346 patent the court relied on prior district-court analysis and technological character of the claims (SSO in a federated environment) and denied Zillow’s motion; overall the motion was granted in part and denied in part.
Issues
| Issue | IBM's Argument | Zillow's Argument | Held |
|---|---|---|---|
| Patent eligibility of ’389 (layered visual displays) | Claims solve occlusion and enable dynamic layer rearrangement; computer-specific benefits | Claims recite abstract categorization/displaying ideas performable with pen-and-paper; result‑oriented and generic computer use | Patent-ineligible under §101; judgment for Zillow granted |
| Patent eligibility of ’789 (map/list synchronization) | Claims require drawn-shape input, synchronized map/list providing user benefits; not merely conventional | Claims automate long-standing manual map-and-list practices; synchronization/use of display is generic | Patent-ineligible under §101; judgment for Zillow granted |
| Patent eligibility of ’183 (image retrieval, scoring, mapping) | Claims improve computer capability to analyze unstructured image data and iteratively recalibrate — a computer-specific inventive concept | Claims are abstract steps (retrieving, comparing, calculating, mapping) that a computer can do faster but do not disclose inventive implementation | Denied as to Zillow’s Rule 12(c) motion — plausible inventive concept; factual development required |
| Patent eligibility of ’346 (federated SSO account creation) | Patent provides a novel SSO-based technical solution at the system/network level | Zillow likened the claims to nontechnical membership/list analogies and argued abstractness | Denied as to Zillow’s Rule 12(c) motion — court adopted earlier Delaware analysis that claims present a technological solution and are not directed to an abstract idea |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (establishes the two-step test for abstract ideas under § 101)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (inventive‑concept inquiry to ensure claims amount to more than a natural law or abstract idea)
- Diamond v. Diehr, 450 U.S. 175 (1981) (distinguishing patent‑eligible applications of mathematical formulas from claims that preempt the formula itself)
- Parker v. Flook, 437 U.S. 584 (1978) (analyzing what the inventor claims to have discovered in § 101 context)
- Bilski v. Kappos, 561 U.S. 593 (2010) (limits patentability of abstract business methods)
- Gottschalk v. Benson, 409 U.S. 63 (1972) (algorithm claiming a mathematical procedure is not patentable)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (claims directed to a specific improvement in computer capabilities can be § 101‑eligible)
- BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (inventive concept can arise from a non‑conventional arrangement of known components)
- Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (case‑by‑case Alice analysis and identifying unconventional technological improvements)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (factual questions about whether claim elements are conventional can preclude § 101 disposition)
- Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019) (at the pleading stage, allegations that claimed techniques were unconventional can survive § 101 challenge)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (claims that address a problem particular to the Internet may be eligible)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (automation of longstanding human tasks does not necessarily confer eligibility)
- Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (business/entrepreneurial concepts implemented on generic computers are not patentable)