Thе United States District Court for the District of New Jersey held that the asserted claims of U.S. Patent No. 5,758,328 (“'328 patent”) were infringed but invalid on obviousness grounds.
See Source Search Techs., LLC v. Lending Tree, LLC,
Case No. 04-CV-4420 DRD,
I.
Source Search Technologies, LLC (“SST”) is the owner by assignment of the '328 patent, which was filed on February 22, 1996, and issued on May 26, 1998. The '328 patent claims a computerized procurement service for matching potential buyers with potential vendors over a network. Under the claimed system, the buyer submits a request for quotation (“RFQ”) for a standard good or service, which is then broadcast via the network to certain vendors. '328 patent col.2 ll.42-47. The vendors who receive the RFQ are seleсted based on filter criteria set by the buyer, the seller, and/or the network operators. Id. The selected vendors then submit responses to the RFQ to the network which in turn communicates the responses to the buyer. Id. col.2 ll.50-51.
The '328 patent claims to solve the “too much” or “too little” information problem commonly associated with running searches over a network or system — e.g., Google or Westlaw. With respect to the “too much” situation, a user will enter broad search terms into the system which yield an unmanageable number of “hits” or results. Because of the excessive number of search results, the user cannot locate the specific target in a reasonable time or with reasonable accuracy. Correspondingly, in the “too little” situation, the user *1067 enters narrow search terms which yield few, or no, results for the initial inquiry.
The '328 patent addresses these problems by using buyer, vendor, and network criteria to return both a manageable and a sufficient number of search results. The network envisioned by the '328 patent is the internet. Id. col.4 ll.61-65. Buyers and vendors complete a sign-up application on a webpage to give relevant information about the prospective member. Id. col.4 l.67-col.5 l.3.
Once registered, a buyer or vendor may submit or receive, respectively, RFQs for goods or services. ,“[T]o ensure there is no confusion as to what buyers are requesting and what sellers are offering” the goods and services must be “standard items.” Id. col.3 ll.63-65. To this end, the network contains pre-programmed menus and submenus classifying products and services into categories corresponding to their standard commercial identifications. Id. col.4 ll.12-16.
When a buyer submits an RFQ, the network applies pre-set filter conditions defined by the buyer, vendor, and/or system to determine which vendors are capable of quoting on the RFQ. Id. col.5 ll.9-12. The buyer may set certain qualifications necessary for a vendor to receive the RFQ — e.g., vendor location. Id. col.5 l.12. Similarly, the vendor may also narrow the eligible RFQs by designating certain types of buyers it wishes to do business with— e.g., government agencies. Id. col.5 ll.12— 15. Lastly, the network itself can choose to filter or prioritize results based on preselected criteria or business objectives-— e.g., vendor reliability. Id. col.5 ll.21-25. In this way, the procurement service narrows the field of vendors who will receive and subsequently bid on an RFQ. With this knowledge, vendors are more willing to provide quotations because their chances of successfully completing a transaction are increased. Buyers too are benefited because the system returns only a reasonable number of quotes.
LendingTree LLC (“LendingTree”), a subsidiary of IAC/InterAetiveCorp, operates the website www.lendingtree.com. The website refers prospective borrowers to potential lenders for a variety of home, auto, and personal loans. Prospective borrowers access the website, select a type of loan, and fill out a “qualification form” (“QF”) containing a variety of financial infоrmation about the borrower. The website describes the QF as a “request for a loan pre-qualification.” Lenders wishing to affiliate with the website provide LendingTree with information indicating the type of loan the lender may extend and the type of borrower likely to receive approval from the lender.
LendingTree’s website then uses the information submitted by the lenders along with the QF to match the borrower with potential lenders. If many lenders match the borrower’s submitted profile, the website will limit its results to five potential lenders with preference given to those lenders with high customer satisfaction scores and previous success rates. A prospective borrower who is not matched with any lender is free to complete a new lоan request at any time.
Once prospective lenders are identified, the website sends an email to the borrower containing the names and information of the lenders reviewing the borrower’s application. When a lender responds with a loan offer, the website sends the borrower an email containing details about the offer. LendingTree plays no further role in the process once the loan offers are sent to the borrower. The borrower and lender are free to contact one another on their own to complete the loan process. Verification of the QF, examination of W-2 forms, and all *1068 other steps regarding loans take place without the help of LendingTree.
In March 2006, SST initiated this аction against LendingTree and ServieeMagic Inc., alleging that websites operated by each infringed the '328 patent. Initially, SST asserted claims 1-7 and 11-14. Over the course of litigation, however, SST dropped claims 4-7 and 11-12. On appeal, only claim 14 remains at issue. Claim 14 is dependent on claim 13 which in turn is dependent on claim 12. Each is stated below:
12. A method of purchasing goods or services over a data network comprising the steps of:
—Communicating over said data network, to a filter means, at least one request for a quotation from a potential buyer of said goods or services; filtering, at said filter means the at least one request in order to ascertain a set of sellers potentially capable of supplying said goods or services; and —Obtaining, from at least one of said potential sellers, over a data network, quotes to supply said goods or services, and forwarding said quotes to said potential buyer, wherein at least part of the quote information is stored at a location remote from said filter means.
13. The method of claim 12 further comprising the step of accepting filtering conditions from said potential buyer, and utilizing said filtering conditions from said potential buyer, and utilizing said filtering conditions in said step of filtering to determine a subset of potentially capable sellers.
14. The method of claim 13 wherein said set is limited by said filter conditions and by a predetermined maximum number from which a bid is to be received.
Id. col. 9 l.45-col.10 l.16 (emphases added). Because claim 14 was not asserted against ServieeMagic, it is no longer a party to this appeal.
Following a
Markman
hearing, the district court construed several disputed terms in the asserted claims. Only two are relevant for this appeal. The trial court construed “request for a quotation” to mean “a request for the price and other terms of a particular transaction in sufficient detail to constitute an offer capable of acceptance.” The district court also construed “goods or services” to mean “standardized articles of trade and performances of work for another.”
Source Search Techs., LLC v. Lending Tree, LLC,
Case No. 04-CV-4420 DRD,
Over the next several months, the parties submitted three summary judgment motions and cross motions: (1) infringement of claims 1-3 and 12-14 by Lending-Tree; (2) invalidity of all claims on obviousness grounds; and (3) invalidity of all claims based on indefiniteness. SST also moved to strike the supplemental expert report of LendingTree’s expert, Dr. Walter Scacchi, for its untimely reliance on previously undisclosed prior art — the “bricks and mortar” prior art. The district court granted SST’s summary judgment motion of infringement, granted LendingTree’s summary judgment motion of invalidity on obviousness grounds, and denied LendingTree’s motion for invalidity based on indefiniteness. That is, the district court found the patent infringed but invalid. In addition, the district court denied SST’s motion to strike Dr. Scacchi’s supplemental report.
SST and LendingTree timely appealed each adverse judgment. This court has jurisdiction under 28 U.S.C. § 1295(a)(1).
*1069 III.
This court reviews a grant of summary judgment without deference.
Johns Hopkins Univ. v. CellPro, Inc.,
A.
Obviousness is a question of law based on underlying findings of fact. The factual determinations for obviousness include: (1) the scope and content of the prior art, (2) the characteristics and understanding of an individual of ordinary skill in the relevant field of art at the time of invention, (3) the differences between the claimed invention and the prior art, and (4) the evidence of secondary factors, also known as objective indicia of non-obviousness.
Graham v. John Deere Co.,
The district court’s grant of summary judgment of obviousness was based on two sets of prior art references: the “e-commerce” prior art and the “bricks and mortar” prior art. The former refers to early e-commerce systems employing the internet for access and distribution. The latter refers to pre-internet referral services, such as home contractor networks or social services networks, used by consumers to help locate a suitable service provider for a particular project.
The district court relied on three e-commerce prior art systems to support its finding of obviousness. First, the FAST system was a parts-procurement service that accepted “requests for quotation” from clients, solicited responses from registered suppliers to fill those requests, and returned the supplier responses to clients. This system procured goods that varied from electronic components to hand tools. Upon receipt of a request by a client, the FAST system would send a query to all registered vendors within its database who could potentially fill the request. To help broaden its search, FAST personnel could also manually access un-registered vendor databases or contact vendors directly via phone or email. Once FAST received responses to the requests from the vendors, it would send an email to the client listing all vendors who submitted quotes and their corresponding quote рrices. Thus, the FAST system did not filter which vendors received a client’s request in any meaningful way or subsequently limit the list of potential vendors sent back to the client. The purpose of the system was to simply return the lowest possible quote regardless of any pre-set qualifications designated by the client, vendors, or system.
To place an order, the client had two options. The user could first submit a separate purchase order to FAST which would then forward the purchase order to the vendors via email or fax. Alternatively, the user could preauthorize FAST to select the vendor who returned the lowest *1070 quote and automatically submit a purchase order to that vendor. In either case, however, the quotes submitted by vendors were “non-binding, inventory availability responses, not contractual offers.” In other words, vendors were not contractually bound by the responses submitted to the FAST system. Once a purchase order was received, a vendor could reject the offer or attempt to renegotiate its terms.
The second prior art system relied upon by the district court was IQUEST-a document-searching system where users could enter queries to locate various publications and articles. Once the user selected a particular database in which to query, IQUEST would run a search and return all matching results. Aside from database selection, the system did not filter results. Nor did this system send or receive quotes. Rather, IQUEST charged subscribers a one-time fee per search depеnding on the selected database.
The third prior art system was the Federal Acquisition Computer Network, FAC-NET. FACNET was a federally run procurement service for government agencies. A government agency wishing to make a purchase would submit a request for a quote electronically to the system. The system would then solicit vendors across all its databases to bid on the quote. Vendors, in turn, would respond to the request with quotes which were then ranked in order of price by the system and communicated to the requesting agency. This system had the goal of increasing vendor competition by broadening the vendor network and ensuring solicitation of a maximum number of offers.
The district court also relied on an article appearing in a 1992 issue of Communications of the Association of Computing Machinery (“ACM”) magazine. The article discusses generally the need for information filtering to act as a mediator between information sources and their users. As described therein, an information filter can act as a “third party” in the communication line between users and sources passing only information it deems relevant to individual users.
In addition to these e-commerce references, the district court placed significant weight on the “bricks and mortar” prior art. According to LendingTree, for years prior to the '328 patent, consumers used referral systems that inherently embodied all the elements of claim 14 except that a person, rather than a computer, did the “filtering.” LendingTree highlights two such referral systems.
With home contractor networks, homeowners wishing to perform home repair or improvement would contact a referral company who would match the homeowner with a contractor based on mutual terms provided by each party. For example, a homeowner wishing to remodel his kitchen would call a referral system and provide information pertaining to the desired project — e.g., location, project type, and budget. The referral system would then search its database of vendors who had previously provided information regarding the type of services they provided — e.g., job specialties or locations serviced. After obtaining a full list of potential contractors, thе referral system would typically return only a pre-set number, around three or five, back to the homeowner. From there, the homeowner was free to call the contractor to setup an appointment and obtain a quote for the project.
Social service networks matched up individuals to providers of services for various needs such as housing, attorney referrals, counseling, and childcare. A client would call a particular social service network and provide information relating to the type of service desired. The social service network typically kept all its information re *1071 garding the providers in a card file. The service representative would then use the information submitted by the clients to match them with a particular provider who could meet their needs. Upon identifying a suitable provider, the representative would forward that information to the client who could then contact the provider directly. On occasion, the representative would contact the provider directly to setup an appointment on the client’s behalf.
As a threshold issue, SST argues that LendingTree is estopped from relying on the bricks and mortar prior art for failure to raise it in a timely manner. Whether judicial estoppel applies is a matter of regional circuit law.
Wang Labs., Inc. v. Applied Computer Scis, Inc.,
Notably, LendingTree did not cite to any bricks and mortar reference until after service of its opening invalidity expert report. Thus, only supplemental invalidity expert reports referred to the bricks and mortar references. SST seeks estoppel based on this delay. LendingTree, for its part, contends that the belated addition was strictly due to new developments in the case, specifically the Supreme Court’s decision in
KSR International Co. v. Teleflex Inc.,
While LendingTree’s proffered grounds for modifying its invalidity contentions are questionable, the district сourt did not abuse its discretion by allowing Lending-Tree to rely on the bricks and mortar prior art. Despite its current objections to the bricks and mortar references, SST waited nearly nine months after being served with the supplemental expert report to raise any objection with the district court. In the time that followed, SST had ample opportunity to conduct full discovery on the bricks and mortar prior art. SST did so. As such, no “miscarriage of justice” occurred.
Turning to the ultimate question at hand, this court finds that the district court erred in its finding of obviousness. Genuine issues of material fact bar entry of summary judgment. Specifically, factual disputes prevent a conclusion on the obviousness of claim 14, viewed as a whole, in light of the prior art. Claim 14, through independent claim 12, requires the e-commerce system to obtain “quotes” from potential sellers and to forward “said quotes” to the potential buyer. Although the district court did not construe the term “quotes,” it did construe the term “request for a quotation” to mean “a request for the price and other terms of a particular transaction in sufficient detail to constitute an offer capable of acceptance.”
Claim Construction Order,
In its opinion finding the assertеd claims obvious, the district court stated:
The FAST system ... acquired competing quotes from multiple online vendors and returned them to the customer through the electronic data inter *1072 change.... Once the queries had been sent out, FAST returned quotes from suppliers directly to the customer.
The record shows that some of these points about this critical prior art reference remain in factual dispute. For instance, the record reflects that the “quotes” forwarded back to the potential customers in the FAST system were “nonbinding, inventory availability responses, not contractual offers.” Thus, even where a FAST customer pre-authorized the system to submit an offer on their behalf, this prior art system did not forward a “quote” from a seller, as the term wаs effectively construed by the district court. Indeed, the potential seller retained the option to reject or to renegotiate the terms of the offer. As well, when the FAST system placed an order automatically, the system would necessarily never send a “quote” back to the buyer as required by the district court’s construction. Similarly, none of the other prior art e-commerce systems on the record returned “quotes,” as defined in claim 14, to its users.
Nor do the bricks and mortar references fill the gap by supplying a qualifying “quote.” Quite the opposite, those referral systems had even greater points of difference in comparison to claim 14. The clients of these prior art services contact the “network” which in turn connects them with service providers. After establishing a connection between the client and service provider, these systems left the burden on the client to set up an appointment with the provider. Only at a meeting between the client and service provider would a quote, in any meaningful sense of the word, arise. The prior art referral systems, however, had nothing to do with this post-connection process or any later “quote.” The record explains this difference between the claimed invention and the prior art. Unlike the '328 patent, the referral systems of the bricks and mortar prior art involved non-fungible, non-commodity services that could not be quantified or quoted immediately over the phone. In other words, a referral systеm would have no way to know the cost to remodel a kitchen without first notifying a contractor to visit the location and put together an estimate. Similarly, a referral system would have no way to know the cost of representing a client in a legal proceeding without first sending an attorney to ascertain the specific facts in the dispute.
For this reason, among others, Lending-Tree’s argument that the '328 patent discloses nothing more than a computerized version of the bricks and mortar prior art fails.
But cf. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
Combining the bricks and mortar references with any of the e-commerce systems produces the same conclusion. In simple terms, none of the prior art discloses a qualifying “quote” that is directly forwarded to a client. Even if the prior art included a quoting feature, a person with ordinary skill in this art would still have to *1073 take the further step of equating the “filtering” done by human judgment in the bricks and mortar systems with the search results of the e-commerce procurement services. The record shows that the prior art lacked any meaningful filtering process in all of the e-commerce prior art. Indeed, the claimed invention places great emphasis on addressing this problem. A person of ordinary skill in this art may not have even recognized the problem addressed by the filtering feature of the claimed invention in 1996, at the dawn of the internet era. And even if the problem was apparent to one of ordinary skill, a solution may not have been a straightforward step. The article in the ACM publication does generally discuss filtering in the computer context, but does not apply those general filtering methods to the '328 patent’s context of matching buyers with vendors. More specifically, that article does not teach the use of specifications submitted by the buyer, vendor, and network. Nor does it suggest that these specifications might be simultaneously used to filter one set of results. Thus, even beyond the problem of no “quote” in the prior art systems, the claimed invention’s filtering system presents factual issues preventing a conclusion that one of ordinary skill in 1996 would find the advances of the '328 patent easy, obvious, routine, or within the grasp of a common sense application of prior art to the apparent problems.
In sum, the district court erred in finding claim 14 obvious in view of the prior art e-commerce systems and the bricks and mortar referral services. Genuine issues of material fact related to the understanding of a person of ordinary skill, the character and number of the differences between the claimed invention and the pri- or art, and even the scope of those prior art references prevent a grant of summary judgment. Without resolution of these factual issues, the trial court cannot venture to reach a legal conclusion that a person having ordinary skill would have known to combine those references to achieve the system taught in claim 14.
B.
Turning to infringement, the district court found that LendingTree’s website infringed claim 14 of the '328 patent. LеndingTree challenges this finding because its service lacks two limitations in claim 14: “request for a quotation” and “goods and services.”
As explained above, the district court construed “request for a quotation” to mean “a request for the price and other terms of a particular transaction in sufficient detail to constitute an offer capable of acceptance.”
Claim Construction Order,
As an initial matter, SST argues that LendingTree is collaterally estopped from arguing that its website does not provide “quotes” to its customers. The basis for SST’s argument is a decision in a different сase involving LendingTree and a third party company IMX.
See IMX, Inc. v. LendingTree, LLC,
“Because the application of collateral estoppel is not a matter within the exclusive jurisdiction of this court, this court applies the law of the circuit in which the district court sits.”
Bayer AG. v. Biovail Corp.,
In this case, the district court declined to apply the estoppel doctrine. This court perceives no abuse of discretion in that decision. Significantly, the IMX litigation involved an unrelated рatent, with different asserted claims, and dissimilar claim constructions. In other words, the issues presented in the IMX case were wholly different from those in this case.
Turning to the merits, this court again perceives that a material issue of fact bars summary judgment that LendingTree’s website meets the “request for quote” limitation. To restate from above, users of the LendingTree website fill out a four- to five-page qualification form before applying for a loan. The “Licenses and Disclosures” page of the website explains that the form is “NOT an application for credit” but rather “a request for a loan qualification.” The glossary page of the website defines the term “qualification:”
[T]he initial process to see if you have enough cash and sufficient income to meet the requirements of the lender for a loan you want. Qualification is not an approval because it does not include your credit history. Qualified borrowers can be turned down if they have poor credit history.
The “Frequently Asked Questions” page adds:
After you accept an offer, you will need to communicate with the Lender directly (via mail, email or phone) to complete the loan process. You will need to verify the information you provided through our site through W-2 forms, pay stubs, house appraisals etc. You also need to sign the official application forms from the Lender and schedule a closing.
These references indicate that the buyer must take significant steps before closing a loan.
On the other hand, the record supports a finding that the LendingTree website returns an “offer capable of acceptance” to users. Lenders affiliated with Lending-Tree receive specialized software in advance to help create an interface where the data and terms associated with a potential loan can more readily be established before forwarding to the user. The '328 patent describes a similar process. See '328 patent col.6 ll.46-52 (“Any operating system may be resident on the computer. Programming for the buyer’s and vendor’s computer type equipment would be appropriate to the variety of goods and services buyers and vendors wish to sell over the network and would change as new goods and sеrvices come into existence and old ones are discontinued.”).
LendingTree also explains to its lenders that any “conditional offer for the Loan Product type requested” must contain “any conditions which must be satisfied before the Lender is obligated to provide *1075 the Loan Product to the Site User.” This language suggests that the forwarded offer contains all material terms for acceptance by the user. The LendingTree website often refers to “offers” forwarded to users. In addition, the '328 patent arguably envisions conditions, such as credit verification, that must still be satisfied before a transaction is complete:
Shipping companies can be included in the process if a credit purchase conditions the vendor’s рayment on the confirmation from the shipper that the delivery has been received and accepted by the buyer. The quotation system would verify the buyer’s credit and notify the vendor of the purchase order and credit code.
'328 patent col. 6 ll.12-17.
As this court has repeatedly instructed in the past, “[i]t is axiomatic that claims are construed the same way for both invalidity and infringement.”
Amgen Inc. v. Hoechst Marion Roussel, Inc.,
The district court construed the term “goods or services” to mean “standardized articles of trade and performances of work for another.” LendingTree first argues that the loans offered on its websites are not a good or a service. To the contrary, LendingTree’s website provides a location where potential borrowers can seek particular types of loans. These loans are simply a debtor’s promise to repay a sum of money to a lender in exchange for the lender’s promise to advance a sum of money to the debtor. In advancing the money, the lender is offering a service to the borrower — namely, a financial service. The '328 patent expressly contemplates similar types of services. See '328 patent col. 2 ll.3-7 (“In yet another existing system a seller, such as an insurance agency, offers to provide buyers premium quotations from the insurance carriers for which the agency is an agent.” (emphasis added)).
LendingTree also contests the district court’s holding that loans are “standard” services because the majority of loans are customized to the borrower’s means and *1076 needs. This court also detects no merit in that argument. According to the '328 patent’s specifications, “[standardization of product оr service descriptions is essential to avoid confusion....” Id. col.4 ll.9-11. The district court properly relied on this language in the patent. A loan is a “standard” item because both the borrower and lender have a shared understanding of the promises made and the financial services offered. In other words, this court perceives no fundamental likelihood of misunderstanding in the transaction. Even if borrowers submit and receive different types of information to and from lenders, the transaction remains within the realm of a standard financial operation. Thus, this court sustains the trial court’s summary judgment that LendingTree’s website meets the “good or services” limitation.
C.
The last question presented is one of indefiniteness. “The statutory requirement of particularity and distinctness in claims is met only when [the claims] clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise.”
United Carbon Co. v. Binney & Smith Co.,
LendingTree asserts that the district court’s construction оf “goods or services” introduces a subjective element into claim 14 that renders it indefinite. More specifically, LendingTree argues that a person practicing the claimed invention would not be able to differentiate between “standard” and “non-standard” “goods or services.” Beyond its conclusory statements and bald assertions, LendingTree offers no support for this position. Of course a person wishing to practice the invention will not know the exact terms of the “good or service” until the specific market or network is chosen. Upon that choice, however, the “good or service” comes into clear focus. To hold otherwise would require the patent to list every possible good or service. This court does not load the indefiniteness requirement with this unreasonable baggage. Although at times difficult to determine the bounds of a “standard” product or service, a person having ordinary skill in the art will possess an understanding of the system that will supply an objective definition to the various markets and applications of the system.
See Shatterproof Glass Corp. v. Libbey-Owens Ford Co.,
This court does not judge indefiniteness according to the subjective impressions of any particular user of the system, as LendingTree urges. Instead,
*1077
this court measures indefiniteness according to an objective measure that recognizes artisans of ordinary skill are not mindless “automatons.”
KSR,
IV.
For the above-stated reasons, this court vacates-in-part, affirms-in-part, and remands. The district court’s grant of summary judgment of invalidity and infringement are vacated except to the extent that the latter grant forecloses LendingTree’s argument that its website does not offer “goods or services.” This court also affirms the district court’s grant of summary judgment on the charges of indefiniteness.
VACATED-IN-PART, AFFIRMED-IN-PART, AND REMANDED.
COSTS
Each party shall bear its own costs.