Mortgage Grader, Inc. v. First Choice Loan Services Inc.
811 F.3d 1314
| Fed. Cir. | 2016Background
- This is an appeal in the Federal Circuit from the district court in California concerning patents on anonymous loan shopping.
- Patents at issue: U.S. Patent Nos. 7,366,694 ('694) and 7,680,728 ('728).
- Mortgage Grader accuses the claims of being patent-eligible; Costco was sued earlier and Appellees joined in 2013.
- Appellees asserted §101 patent-ineligibility as a defense; they initially dropped it in invalidity contentions, then added it in final contentions after Alice.
- Judge Guilford applied his Standing Patent Rules (S.P.R.) requiring validity contentions with §101 grounds and allowed amendment for good cause after Alice.
- The district court granted summary judgment that the claims are not patent-eligible under Mayo/Alice, and Mortgage Grader appealed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court abused its discretion in allowing the §101 defense after Alice. | Mortgage Grader argues no good cause to amend invalidity contentions. | Appellees contend Alice created good cause to amend. | No abuse of discretion; good cause shown. |
| Whether the district court correctly granted summary judgment under §101 that the claims are abstract and lack an inventive concept. | Mortgage Grader contends genuine issues of material fact exist. | Appellees argue claims are directed to abstract idea with no inventive concept. | Yes, claims lack patent-eligibility under Mayo/Alice. |
Key Cases Cited
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1309 (2012) (two-step framework for distinguishing patent-eligible concepts)
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (abstract ideas require inventive concept; generic computer use not enough)
- Ultramercial, LLC v. Hulu, LLC, 772 F.3d 1335 (Fed. Cir. 2014) (Alice changes can revive §101 defenses; claims involving generic computer steps not inventive)
- buySAFE, Inc. v. Google, Inc., 765 F.3d 1354 (Fed. Cir. 2014) (generic computer implementation not inventive)
- Accenture Global Servs. GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) (computer-implemented claims lacking inventive concept)