Source Search Technologies, LLC v. Lendingtree

• Decision Date: 07 December 2009
• Docket Number: No. 2008-1524.,No. 2008-1505.,2008-1505.,2008-1524.
• Citation: 588 F.3d 1063
• Parties: SOURCE SEARCH TECHNOLOGIES, LLC, Plaintiff-Appellant, v. LENDINGTREE, LLC, IAC/Interactivecorp, and Servicemagic, Inc., Defendants-Cross Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

588 F.3d 1063

SOURCE SEARCH TECHNOLOGIES, LLC, Plaintiff-Appellant, v. LENDINGTREE, LLC, IAC/Interactivecorp, and Servicemagic, Inc., Defendants-Cross Appellants.

No. 2008-1505.

No. 2008-1524.

United States Court of Appeals, Federal Circuit.

December 7, 2009.

Jeffrey I. Kaplan, Kaplan Gilman Gibson & Dernier LLP, of Woodbridge, NJ, argued for plaintiff-appellant. With him on the brief was Michael R. Gilman.

Claude M. Stern, Quinn Emanuel Urquhart Oliver & Hedges, LLP, of Redwood City, CA, argued for defendants-cross appellants. With him on the brief were Evette D. Pennypacker; Robert B. Wilson, Aaron S. Kaufman and James E. Baker, of New York, New York, and Linda J. Brewer, of San Francisco, CA.

Before RADER, PLAGER, and SCHALL, Circuit Judges.

RADER, Circuit Judge.

The 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, 2007 WL 1302443 (D.N.J. May 2, 2007) ("Summary Judgment on Infringement"). Because genuine issues of material fact bar summary judgment on both obviousness and infringement, this court vacates and remands.

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 selected 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 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 pre-selected 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/InterActiveCorp, 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 information 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 loan 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 other steps regarding loans take place without the help of LendingTree.

In March 2006, SST initiated this action against LendingTree and ServiceMagic 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 ServiceMagic, 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, 2006 WL 2990363, at *9, 16 (D.N.J. Oct.16, 2006) ("Claim Construction Order").

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).

III.

This court reviews a grant of summary judgment without deference. Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1353 (Fed.Cir.1998); Conroy v. Reebok Int'l Ltd., 14 F.3d 1570, 1574 (Fed.Cir. 1994). Thus, this court must decide for itself "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the...