Zillow, Inc. v. Trulia, Inc., No. 2:2012cv01549 - Document 46 (W.D. Wash. 2013)
Court Description: ORDER denying dft's 34 Motion to Dismiss by Judge James L. Robart.(RS)
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Zillow, Inc. v. Trulia, Inc. Doc. 46 1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE 8 9 10 ZILLOW, INC., CASE NO. C12-1549JLR Plaintiff, 11 12 v. 13 ORDER DENYING DEFENDANT’S MOTION TO DISMISS WITHOUT PREJUDICE TRULIA, INC., 14 Defendant. 15 I. 16 INTRODUCTION On September 12, 2012, Plaintiff Zillow, Inc., (“Zillow”) sued Defendant Trulia, 17 Inc., (“Trulia”) for infringement of United States Patent No. 7,970,674 B2 (the “‘674 18 Patent”). (See Compl. (Dkt. # 1).) Before the court is Trulia’s renewed motion to 19 dismiss or, in the alternative, for summary judgment on grounds that Zillow’s patent 20 claims assert an abstract idea that is not patent-eligible under 35 U.S.C. § 101. (Mot. 21 (Dkt. # 34).) On December 19, 2013, Trulia filed its initial motion to dismiss on grounds 22 that the ‘674 Patent fails to recite patentable subject matter (Dkt. # 19). The court ORDER- 1 Dockets.Justia.com 1 deferred ruling on Trulia’s original motion pending the United States Court of Appeals 2 for the Federal Circuit’s en banc decision in CLS Bank International v. Alice Corp., 717 3 F.3d 1269 (Fed. Cir. 2013). The court had hoped that the Federal Circuit’s decision 4 would provide guidance in resolving Zillow’s and Trulia’s present dispute. (Order (Dkt. 5 # 27) at 1-2, 4-6, 8.) The Federal Circuit issued its en banc decision on May 10, 2013, 6 and Trulia has now renewed its motion to dismiss. The court has considered Trulia’s 7 renewed motion, all submissions filed in support of or opposition thereto, the applicable 8 law, and the balance of the record. For the reasons that follow, the court DENIES 9 Trulia’s motion but without prejudice to re-filing following claim construction. 1 10 11 II. BACKGROUND Zillow’s complaint alleges infringement of the ‘674 Patent, entitled 12 “Automatically Determining a Current Value for a Real Estate Property, Such as a Home, 13 that is Tailored to Input from a Human User, Such as its Owner.” (Compl. ¶ 19; ‘674 14 Patent (Dkt. # 1-1).) The ‘674 Patent was filed on February 3, 2006, and issued on June 15 28, 2011. (See ‘674 Patent at 1.) 16 Zillow launched its real estate information website, Zillow.com, in 2006. (Compl. 17 ¶ 7.) The website offers users a “Zestimate” home valuation service. (Id.) The Zillow 18 Zestimate permits homeowners and real estate professionals to update automatic 19 valuations of homes with additional facts and information to refine the valuation. (Id.) 20 21 1 Although Trulia has requested oral argument, the court considers it unnecessary here. The parties have provided excellent briefing, and the court defers ruling on the substantive 22 issues. ORDER- 2 1 Zillow alleges that, to date, approximately one-third of its database of more than 100 2 million homes has been updated in this way. (Id.) Zillow alleges that it has grown into 3 the largest real estate website, and the most popular suite of mobile real estate 4 applications for smartphones and tablet computers. (Id.) 5 Trulia offers another real estate information website, Truilia.com, and also offers 6 mobile real estate applications for smartphones and tablet computers. (Id. ¶ 9.) On 7 September 7, 2011, Trulia announced that it too would provide automatic home 8 valuations and it too would use input from homeowners to refine those valuations. (Id.) 9 Trulia calls its refined home valuations “Trulia Estimates.” (Id. ¶ 10.) 10 Zillow alleges that similar to Zestimates, Trulia Estimates provide automatic 11 valuations of properties based on recent sales of similar home and home facts—such as 12 the number of bedrooms, square footage, and others. (Id.) In addition, Zillow alleges 13 that Trulia Estimates also permit and rely upon homeowners to claim their home on the 14 site and provide additional information about their properties to refine the automatic 15 valuation provided by Trulia. (Id.) As noted above, on September 12, 2012, Zillow filed 16 suit against Trulia alleging infringement of its ‘674 Patent. (See generally id.) 17 On December 19, 2012, Trulia filed a motion to dismiss the complaint on the 18 ground that Zillow’s ‘674 patent fails to satisfy the eligibility requirements of 35 U.S.C. § 19 101. (12/19/12 Mot. (Dkt. # 19).) In their briefing on the motion, both parties 20 acknowledged the Federal Circuit’s then upcoming rehearing en banc in CLS Bank 21 International v. Alice Corp. Pty. Ltd., 685 F.3d 1341 (Fed. Cir. 2012). (12/19/12 Mot. at 22 12; 1/21/13 Resp. (Dkt. # 22) at 18-19; Mot. at 2; Resp. (Dkt. # 38) at 3.) On February ORDER- 3 1 15, 2013, the court issued an order deferring ruling “on section 101 issues [until] after the 2 Federal Circuit’s decision in CLS Bank.” (2/15/12 Order at 8.) The court expressed the 3 hope that the Federal Circuit’s en banc opinion “would be extraordinarily helpful to the 4 court in this case” and “particularly useful in resolving this motion.” (Id. at 4-5.) 5 On May 10, 2013, the Federal Circuit issued its en banc decision in CLS Bank, 6 affirming the patent ineligibility of the method, computer-readable medium, and system 7 claims at issue in a one-paragraph per curiam decision. CLS Bank Int’l v. Alice Corp. 8 Pty. Ltd., 717 F.3d 1269, 1273 (Fed. Cir. 2013). Unfortunately, instead of providing the 9 hoped for clarity with respect to the test the court should apply here, the ten-member en 10 banc panel released seven different opinions—none of which garnered majority support. 11 Nevertheless, a majority of the en banc panel—seven of the ten judges—agreed that the 12 method and computer-readable medium claims lacked subject matter eligibility, albeit 13 based on two different analyses. See id. at 1273-1289 (Lourie, J. concurring); id. at 129214 1305, 1311-13 (Rader, C.J. concurring in part and dissenting in part). 2 15 On May 31, 2013, 2013, Zillow served its disclosure of asserted claims and 16 infringement contentions pursuant to the court’s Local Patent Rule 120, and asserted 17 claims 2, 5, 15-25, and 40 of the ‘674 Patent. (Shanberg Decl. (Dkt. # 35) ¶ 4.) Claim 2 18 19 2 Judge Lourie wrote an opinion concurring with the per curiam opinion in which four other judges joined. In addition, Chief Judge Rader wrote an opinion dissenting in part to the per 20 curiam decision but concurring in part with respect to the patent ineligibility of the method and 21 computer-readable medium claims, in which Judge Moore joined. Thus, a total of seven judges of the Eleventh Circuit’s en banc panel found that the method and computer-readable medium claims at issue in CLS Bank were invalid under 35 U.S.C. § 101 for failure to recite patentable 22 subject matter. See CLS Bank, 717 F.3d at 1273, 1313. ORDER- 4 1 (a computer-readable medium claim) and claim 15 (a method claim) are the only two 2 independent claims. Claim 15 recites: 3 4 5 6 7 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: obtaining user input adjusting at least one aspect of information about the distinguished home used in the automatic valuation of the distinguished home; automatically determining a refined valuation of the distinguished home that is based on the adjustment of the obtained user input; and presenting the refined valuation of the distinguished home. 8 (‘674 Patent at 21:49-59.) Claim 2 similarly recites: 9 10 11 12 13 14 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. 15 (Id. at 20:18-32.) 16 On June 17, 2013, in accord with the court’s February 15, 2013, order, Trulia filed 17 it renewed motion to dismiss (or in the alternative for summary judgment) asserting once 18 again that the claims at issue in Zillow’s ‘674 Patent are directed to nothing more than an 19 abstract idea, specifically a “method of using user-entered information to adjust 20 assessments of property value, i.e., an appraisal calculation” (Mot. at 9), and therefore are 21 patent-ineligible subject matter under 35 U.S.C. § 101. (See generally Mot.) The court 22 now turns to Trulia’s renewed motion. ORDER- 5 1 III. ANALYSIS 2 A. Standards 3 Under Federal Rule of Civil Procedure 12(b)(6), a party may move to dismiss 4 based on failure to state a claim upon which relief can be granted. See Fed. R. Civ. P. 5 12(b)(6). Dismissal is appropriate only if the well-pleaded factual allegations in the 6 complaint, construed in the light most favorable to the plaintiff, suffice to establish the 7 defense. See Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007); Jones v. Bock, 8 549 U.S. 199, 215 (2007). Here, Trulia is moving to dismiss based on lack of patent9 eligible subject matter. The Federal Circuit recently declared that “Rule 12(b)(6) 10 dismissal for lack of eligible subject matter will be the exception, not the rule.” 11 Ultramercial, Inc. v. Hulu, LLC, --- F.3d ---, 2013 WL 3111303, at *2 (Fed. Cir. 2013). 12 The Court explained that such a dismissal “will be rare . . . because every issued patent is 13 presumed to have been issued properly, absent clear and convincing evidence to the 14 contrary.” Id. Thus, for the court to dismiss based on Rule 12(b)(6), “the only plausible 15 reading of the patent must be that there is clear and convincing evidence of ineligibility.” 16 Id. 17 Alternatively, Trulia moves for summary judgment under Federal Rule of Civil 18 Procedure 56. (Mot. at 6.) Summary judgment is appropriate when no genuine issue as 19 to any material fact exists and the moving party is entitled to judgment as a matter of law. 20 Fed. R. Civ. P. 56(a). The Federal Circuit has recently cautioned that “analysis under [35 21 U.S.C.] § 101, while ultimately a legal determination, is rife with underlying factual 22 issues.” Ultramercial, --- F.3d ---, 2013 WL 3111303, at *3. Specifically, the Federal ORDER- 6 1 Circuit has noted that “factual issues may underlie determining whether the patent 2 embraces a[n] . . . abstract idea.” Id. 3 B. CLS Bank and Ultramercial 4 In its previous order, the court expressed the hope that it would “benefit 5 substantially” from the guidance it expected to receive from the Federal Circuit’s en banc 6 decision in CLS Bank. The court had hoped that the en banc panel would provide clarity 7 with respect the test to be applied when considering whether the ‘674 Patent claims 8 asserted by Zillow are directed to patent-eligible subject matter. (2/15/13 Order at 4-5.) 9 Unfortunately, the Federal Circuit did not announce a single test in its splintered CLS 10 Bank en banc decision. Instead, the Federal Circuit “propounded at least three 11 incompatible standards, devoid of consensus, serving simply to add to the unreliability 12 and cost of the system of patents as an incentive for innovation.” CLS Bank, 717 F.3d at 13 1321 (Newman, J., concurring in part and dissenting in part). Although a majority of 14 judges on the en banc panel (seven out of ten) agreed that the method and computer15 readable memory claims in the patent-in-suit were not patent eligible, “no majority of 16 those judges agree[d] as to the legal rationale for that conclusion.” Id. at 1274 (Lourie, J., 17 concurring); id. at 1292, n.1 (Rader, C.J., concurring in part and dissenting in part). 3 18 Despite this fractured state of affairs, Trulia asserts that a combination of the 19 concurring opinions of Judge Lourie and Chief Judge Rader provide the necessary legal 20 3 In addition to seven judges agreeing that the method and computer-readable memory claims were not patent eligible, eight judges, a majority, concluded that the particular method, medium, and systems claims at issue in CLS Bank should rise or fall together in the 35 U.S.C. § 22 101 analysis. CLS Bank, 717 F.3d at 1272, n.1 (Lourie, J., concurring). 21 ORDER- 7 1 framework for the court to decide the issue of patent subject matter eligibility now. (See 2 Mot. at 8-9.) Further, Trulia asserts that the result in CLS Bank—concluding that the 3 asserted method and computer-readable media claims were directed to an abstract idea 4 and therefore not eligible subject matter under 35 U.S.C.§ 101—should also control here. 5 (Id. at 9-12.) Zillow, on the other hand, asserts that a later decision by the Federal 6 Circuit, Ultramercial , Inc. v. Hulu, Inc., --- F.3d ---, 2013 WL 3111303 (Fed. Cir. 2013), 7 which held a particular internet and computer-based method for monetizing copyrighted 8 products was not manifestly abstract so as to be ineligible for patent protection, provides 9 some clarification to the CLS Bank en bank decision and is more germane to this court’s 10 analysis. (See Resp. at 4, 16, 20, 23.) Interestingly, as in CLS Bank, Judge Lourie and 11 Chief Judge Rader again play major roles in the Ultramercial decision, with Chief Judge 12 Rader writing for the majority, and Judge Lourie writing a concurring opinion. See 13 Ultramercial, --- F.3d ---, 2013 WL 3111303, at *1-*17 (Rader, C.J. majority opinion); 14 id. at *17-*18 (Lourie, J., concurring). Because these two cases, written largely by the 15 same two Federal Circuit judges, come to opposite results with respect to the application 16 of the subject matter requirements for patent eligibility in 35 U.S.C. § 101, a comparison 17 of the cases and how they may apply with respect to the patent-in-suit is warranted. 18 The patents at issue in CLS Bank were directed to “a computerized trading 19 platform used for conducting financial transactions in which a third party settles 20 obligations between a first and a second party so as to eliminate . . . ‘settlement’ risk.” 21 CLS Bank, 717 F.3d at 1274 (Lourie, J., concurring). In other words, they describe the 22 “concept of using a neutral intermediary in exchange transactions to reduce risk that one ORDER- 8 1 party will not honor the deal, i.e., escrow arrangement.” Id. at 1311 (Rader, C.J. 2 concurring in part and dissenting in part). Similar to the claims at issue here, some of the 3 claims at issue in CLS Bank were method and some were computer-readable media. 4 Id. 4 at 1273. CLS Bank filed suit against the patent owner seeking, in part, a declaratory 5 judgment of patent invalidity under 35 U.S.C. § 101. CLS Bank, 717 F.3d at 1274 6 (Lourie, J., concurring). The district court granted summary judgment to CLS Bank, 7 ruling that the asserted claims were invalid because they were directed to an abstract idea 8 and therefore were patent ineligible subject matter. Id. at 1275. As discussed above, a 9 divided majority of the Federal Circuit’s en banc panel affirmed the district court’s 10 holding that the asserted method and computer-readable medium claims were ineligible 11 and invalid under 35 U.S.C. § 101. 12 Judge Lourie, joined by four members of the panel, advanced a test for evaluating 13 abstractness under 35 U.S.C. § 101, which he called an “Integrated Approach.” First, the 14 court must determine whether the claimed invention fits within one of the four broad 15 statutory classes set forth in 35 U.S.C § 101: “any new and useful process, machine, 16 manufacture, or composition of matter,” or an improvement thereof. See CLS Bank, 717 17 F.3d at 1282 (Lourie, J., concurring). Assuming that this condition is met, the court next 18 must determine whether one of the judicial exceptions to subject matter eligibility—a law 19 of nature, natural phenomenon or an abstract idea—nonetheless bars the claim. Id. With 20 21 4 In addition, the en banc panel in CLS Bank addressed systems claims which are not at issue here. See CLS Bank, 717 F.3d at 1273 (“An equally divided court affirms the district 22 court’s holding that the asserted system claims are not directed to eligible subject matter . . . .”). ORDER- 9 1 regard to this second step Judge Lourie stated: “A preliminary question in applying the 2 exceptions to such claims is whether the claim raises § 101 abstractness concerns at all. 3 Does the claim pose any risk of preempting an abstract idea?” Id. To address this issue, 4 Judge Lourie cautioned that “it is important at the outset to identify and define whatever 5 fundamental concept appears wrapped up in the claim so that the subsequent analytical 6 steps can proceed on a consistent footing.” Id. In this instance, Judge Lourie identified 7 the concept as “a form of escrow.” Id. at 1286. 8 Once the pertinent abstract idea has been identified, under Judge Lourie’s 9 Integrated Approach, the court next evaluates the balance of the claim “to determine 10 whether it contains additional substantive limitations that narrow, confine, or otherwise 11 tie down the claim so that, in practical terms, it does not cover the full abstract idea 12 itself.” Id. at 1282. Judge Lourie explains that “[t]he requirement for substantive claim 13 limitations beyond the mere recitation of a disembodied fundamental concept has 14 ‘sometimes’ been referred to as an ‘inventive concept,’” id. (citing Mayo Collaborative 15 Servs. v. Prometheus Labs., Inc., --- U.S. ---, 132 S.Ct. 1289, 1294 (2012)), and “in the § 16 101 context refers to a genuine human contribution to the claimed subject matter” or “a 17 product of human ingenuity,” id. at 1283. Further, the human contribution must be more 18 than “a trivial appendix to the underlying abstract idea,” “token or trivial limitations,” or 19 “vague limitations cast in highly general language.” Id. (internal quotations and citations 20 omitted). 21 Chief Judge Rader, joined by three members of the en banc panel, articulated a 22 different approach. Id. at 1299-1302 (Rader, C.J., concurring in part and dissenting in ORDER- 10 1 part). One court has referred to Judge Rader’s approach as the “Meaningful Limitations 2 Approach.” See Planet Bingo, LLC v. VKGS, LLC, --- F. Supp. 2d ---, 2013 WL 3 4427811, at *3 (W.D. Mich. 2013). Under this approach, the court first must determine 4 whether the claim involves an intangible abstract idea. CLS Bank, 717 F.3d at 1297 5 (Rader, C.J., concurring in part and dissenting in part) (“[T]he relevant inquiry under the 6 exceptions is whether the claim covers merely an abstract idea . . . .”); id. at 1299 (“The 7 concern . . . is whether the claim seeks to patent an idea itself, rather than an application 8 of that idea.”); see also Ultramercial, --- F.3d ---, 2013 WL 3111303, at *14, n.2 (“When 9 assessing the abstract idea exception, the § 101 inquiry is a two-step one: first, whether 10 the claim involves an intangible abstract idea . . . .”). This fact alone, however, will not 11 disqualify the patent. Rather, the court must then engage in the second step of the 12 inquiry: “whether a claim includes meaningful limitations restricting it to an application, 13 rather than merely an abstract idea.” CLS Bank, 717 F.3d at 1299. In other words, the 14 claim limitations must “meaningfully tie that idea to a concrete reality or actual 15 application of that idea.” Id. at 1299-1300. 16 Chief Judge Rader and others have criticized Judge Lourie’s interpretation of the 17 phrase “inventive concept” from the Supreme Court’s Mayo decision. Id. at 1315 (Rader, 18 C.J. dissenting in part); see also id. at 1314 (Moore, J., dissenting in part) (arguing that 19 Judge Lourie’s interpretation of “inventive concept” “trample[s] upon a mountain of 20 precedent that requires us to evaluate each claim as a whole when analyzing validity.”). 21 Although it is well established that claims must be considered as a whole when assessing 22 subject matter eligibility, Chief Judge Rader contends that Judge Lourie’s interpretation ORDER- 11 1 of “inventive concept” results in “stripping away all known elements from the asserted 2 system claims and analyzing only whether what remains, as opposed to the claim as a 3 whole, is an abstract idea.” See id. at 1315 (Rader, C.J., dissenting in part). 5 Judge 4 Lourie is critical of Chief Judge Rader’s approach because in Judge Lourie’s view is it 5 inconsistent with the Supreme Court’s Mayo decision. See Ultramercial, --- F.3d ---, 6 2013 WL 3111303, at *17 (Lourie, J., concurring). 6 7 Although Chief Judge Rader and Judge Lourie propone different approaches, both 8 agreed that the method and computer-readable media claims at issue in CLS Bank were 9 patent-ineligible because they were directed to a patent-ineligible abstract idea – the 10 concept of escrow. 7 Id. at 1285-89 (Lourie, J., concurring); id. at 1311-1313 (Rader, C.J., 11 concurring in part). Likewise, in Ultramercial, both judges came to the same conclusion 12 based upon their differing approaches but the opposite result. In other words, in 13 Ultramercial, both judges came to the conclusion that the patent at issue for a particular 14 15 5 18 6 At least one court has found Chief Judge Rader’s criticism to be “overstated,” in part because Judge Lourie expressly emphasizes that claims are to be evaluated as a whole for 16 whether they result in a product in a product of human ingenuity. See, e.g., Planet Bingo, LLC v. VKGS, LLC, --- F. Supp. 2d ---, 2013 WL 4427811, at *5 (W.D. Mich. 2013) (citing CLS Bank, 17 717 F.3d at 1281, 1284 (Lourie, J., concurring)). See also Planet Bingo, --- F. Supp. 2d ---, 2013 WL 4427811, at *5 (concurring that Chief Judge Rader’s interpretation of “inventive concept” in his Meaningful Limitations 19 Approach is inconsistent with or “oversimplifies” the meaning of the phrase). 7 The outcomes reached by Chief Judge Rader and Judge Lourie, however, split with respect to the systems claims at issue in CLS Bank. Judge Lourie concluded that these claims were also directed to a patent-ineligible abstract idea, see CLS Bank, 717 F.3d at 1289-92 21 (Lourie, J., concurring), while Chief Judge Rader concluded that the systems claims were patent eligible, id. at 1305-06 (Rader, C.J., dissenting in part). There are no systems claims at issue in 22 the present dispute between Zillow and Trulia. 20 ORDER- 12 1 internet and computer-based method for monetizing copyrighted products was not 2 manifestly abstract so as to be ineligible for patent protection. Ultramercial, --- F.3d ---, 3 2013 WL 3111303, at *14-*17; id. at *17-*18 (Lourie, J., concurring). 4 At issue in Ultramercial was a patent claiming “a method for distributing 5 copyrighted products . . . over the Internet where the consumer receives a copyrighted 6 product for free in exchange for viewing an advertisement, and the advertiser pays for the 7 copyrighted content.” Id. at *1. In other words, “[t]he claimed invention [was] a method 8 for monetizing and distributing copyrighted products over the Internet.” Id. at *14. 9 Without performing claim construction, the district court granted the motion to dismiss 10 finding that the asserted claims invalid as being directed to ineligible subject matter, an 11 abstract idea. Id. at *2. The Federal Circuit reversed finding the asserted claims to be 12 patent eligible. Id. at *1 (citing Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. 13 Cir. 2011)). The Supreme Court vacated and remanded the initial Federal Circuit 14 decision. See Wildtangent Inc. v. Ultramercial LLC, 132 S.Ct. 2431 (2012). A second 15 three-judge panel of the Federal Circuit, in which Chief Judge Rader wrote the opinion 16 for the court and Judge Lourie wrote a concurring opinion, revisited the case and again 17 determined that the asserted claims were eligible for patent protection. See generally 18 Ultramercial, --- F.3d ---, 2013 WL 3111303, at *14-*17; id. at *17-*18 (Lourie, J., 19 concurring). 20 In his Ultramercial opinion, Chief Judge Rader stated: 21 A claim can embrace an abstract idea and be patentable. . . . Instead, a claim is not patentable only if, instead of claiming an application of an abstract idea, the claim is instead to the abstract idea itself. The inquiry 22 ORDER- 13 1 2 here is to determine on which side of the line the claim falls: does the claim cover only an abstract idea, or instead does the claim cover an application of an abstract idea? 3 Id. at *7 (internal citations omitted; italics in original). Applying different methodology, 4 both Chief Judge Rader and Judge Lourie found that the claimed invention fell on one 5 side of the patent-eligibility line in CLS Bank and on the other side of that line in 6 Ultramercial. Here too, this court must decide on which side of the patent-eligibility line 7 the patent claims asserted by Zillow fall. Without expressly deciding, at this point in the 8 litigation it appears to the court that the patent claims at issue fall somewhere in between 9 the spectrum of patentability represented by Federal Circuit’s decisions CLS Bank and 10 Ultramercial. Unfortunately, knowing that Zillow’s patent claims fall somewhere 11 between CLS Bank and Ultramercial does not resolve which side of the patentability line 12 the patent-in-suit ultimately falls. The abstractness of the subject matter of the patent in 13 this case is not certain. Because the court is unable to make this determination at this 14 point in the litigation, it must conclude that Trulia has failed to meet its burden of 15 establishing that “the only plausible reading of [Zillow’s] patent [is] that there is clear and 16 convincing evidence of ineligibility.” See Ultramercial, --- F.3d ---, 2013 WL 3111303, 17 at *2. Consequently, it would be err to dismiss the entire case at this stage of the 18 litigation. 19 Although Chief Judge Rader and Judge Lourie do not agree on the methodology 20 the court should use in making a patent subject matter eligibility determination, they do 21 agree that going through the claim construction process (although not always required) 22 may assist the court. See, e.g., Ultramercial, --- F.3d ---, 2013 WL 3111303, at *4 ORDER- 14 1 (“[C]laim construction . . . may clarify the actual subject matter at stake in the invention 2 and can enlighten, or even answer, questions about subject matter abstractness.”); CLS 3 Bank, 717 F.3d at 1282 (Lourie, J., concurring) (noting that “[a]lthough not required, 4 conducting a claim construction analysis before addressing § 101 may be especially 5 helpful . . . by facilitating a full understanding of what each claim entails.”). A claim 6 construction hearing has not yet taken place and the claims asserted by Zillow have not 7 yet been interpreted. It is entirely possible that following such a hearing, the court will be 8 convinced that the claims at issue do recite patentable subject matter. However, the court 9 also may still make the determination that the patent claims at issue fail under 35 U.S.C. 10 § 101. Thus, the court denies Trulia’s motion without prejudice, and Trulia will be free 11 to raise this issue again following claim construction. 12 13 IV. CONCLUSION Based on the forgoing, the court DENIES Trulia’s motion to dismiss Zillow’s 14 complaint for lack of subject matter eligibility under 35 U.S.C. § 101 without prejudice to 15 re-filing following the court’s ruling on claim construction. 16 Dated this 6th day of September, 2013. 17 19 A 20 JAMES L. ROBART United States District Judge 18 21 22 ORDER- 15
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