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Federal Home loan Mortgage Corp. v. Graff/Ross Holdings, LLP

United States District Court, District Circuit

September 26, 2012

FEDERAL HOME LOAN MORTGAGE CORPORATION, Plaintiff,
v.
GRAFF/ROSS HOLDINGS LLP, Defendant.

MEMORANDUM OPINION [Dkt. ##24, 33] [1]

RICHARD J. LEON United States District Judge

These actions are related to Graff/Ross Holdings LLP v. Federal Home Loan Mortgage Corp., No. 07-cv-796 ("Graff/Ross F), in which this Court recently issued a ruling of invalidity as to the challenged patent claims. Mem. Op. [Dkt. #121], Graff/Ross I, No. 07-cv-796 (Sept. 24, 2012). These cases involve two related patents issued to defendant Graff/Ross Holdings LLP ("Graff/Ross") by the United States Patent and Trademark Office ("USPTO"): Patent No. 7, 685, 053 (the '"053 patent") and Patent No. 7, 908, 202 (the "'202 patent"). On November 15, 2010, plaintiff Federal Home Loan Mortgage Corporation ("Freddie Mac") filed a complaint against Graff/Ross seeking a declaratory judgment of non-infringement or invalidity of the '053 patent.[2] Compl. [Dkt. #1]. Thereafter, defendant counterclaimed for patent infringement. See Def.'s Answer to PL's Am. Compl. for Declaratory J. ("Def.'s Ans.") [Dkt. #9] at 7. On May 19, 2011, Freddie Mac filed a complaint in a separate action seeking a declaratory judgment of non-infringement or invalidity of the '202 patent, Compl., No. 11-cv-941 [Dkt. #1] (the "'202 Complaint"), to which Graff/Ross filed a counterclaim for patent infringement.[3] See Def.'s Answer & Countercls., No. 11-cv-941 [Dkt. #7] ("Def.'s '202 Ans."). On September 9, 2011, defendant filed a Motion for Partial Summary Judgment as to Patent Validity ("Def.'s Mot. Validity") [Dkt. #24] with respect to both patents. Plaintiff opposed this motion, and on May 21, 2012, filed a Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 101 ("PL's Mot. Invalidity") [Dkt. #33] as to both patents. Upon consideration of the parties' pleadings, relevant law, and the entire record herein, plaintiff Freddie Mac's motion [Dkt. #33] is GRANTED and defendant Graff/Ross's motion [Dkt. #24] is DENIED.

BACKGROUND

On March 23, 2010, the USPTO issued the '053 patent, entitled "Bidder System Using Multiple Computers Communicating Data to Carry Out Selling Fixed Income Instruments, " to Graff/Ross. Am. Compl. ¶ 16. Nearly a year later, on March 15, 2011, the USPTO issued to Graff/Ross the '202 patent, entitled "Computer System to Generate Financial Analysis Output."[4] '202 Compl. ¶ 29, No. 11-cv-941. The patents are directed at "systems and methods that allow for the electronic sale of a component of a fixed-income asset, " and both "are continuations of the '347 Patent" at issue in related case Graff/Ross Holdings LLP v. Federal Home Loan Mortgage Corp., No. 07-cv-796. Mem. of P. & A. in Supp. of Def.'s Mot. Validity ("Def.'s Mem. Validity") [Dkt. #24-1] at 3. Plaintiff alleges that Freddie Mac has infringed on these patents "by using computer systems and methods to conduct electronic bond auctions of fixed income instruments."[5]Def.'s Ans. at 7; Def.'s '202 Ans. at 7-8, No. 11-cv-941. Now both parties seek a determination of the validity of the patents. See generally Def.'s Mot. Validity; PL's Mot. Invalidity. At issue is the validity of 614 claims of the two different patents. PL's Mem. of P. & A. in Supp. of PL's Mot. Invalidity ("PL's Mem. Invalidity") [Dkt. #33] at 4; Def.'s Mem. of P. & A. in Opp'n to PL's Mot. Invalidity ("Def.'s Mem. Opp'n") [Dkt. #37-1] at 3.[6] For the sake of ease and clarity, I will analyze the claims in accordance with the categories identified by plaintiff in its motion for summary judgment.

Plaintiff divided the claims into nine groups. Group 1 consists of independent claims describing a "computer system" similar to the independent claim found invalid by this Court in Graff/Ross I. PL's Mem. Invalidity at 4, 10. Group 2 consists of claims dependent on Group 1 Claims, [7] but limited to particular fields of use. Id. at 4. Group 3 Claims include two independent claims, and claims dependent on them, that describe the "methods" of Groups 1 and 2 Claims. Id. Group 4 Claims include two independent claims directed at multiple computer systems that implement Group 1 Claims. Id. Group 5 consists of claims dependent on Group 4 Claims, but limited to particular fields of use. Id. Group 6 contains one independent claim that describes the method used by the Group 4 Claims. Id. Group 7 consists of claims dependent on the Group 6 Claim, but limited to particular fields of use. Id. Group 8 Claims include three independent claims, and claims dependent on them, that describe the apparatus used to implement Groups 6 and 7 Claims.[8] Id. And, Group 9 consists of claims dependent on Group 8 Claims with output means limited to monitors. Id. Groups 1-5 include claims only from the '202 patent and Groups 6-9 include claims only from the '053 patent. Id. at 9.

Plaintiff contends that the "patents-in-suit" fail "to claim patent-eligible subject matter." Id. at 1. According to plaintiff, the patents "recite the abstract idea of computing a price for the sale of a fixed-income asset and generating a financial output, " and, because abstract ideas are not patentable, defendant's patents are invalid under 35 U.S.C § 101. Id. at 3-4. Defendant counters that the patents constitute subject matter eligible for patent, and in any event, plaintiff has failed to meet its burden of persuasion. Def.'s Mem. Opp'n at 1; Def.'s Mem. Validity at 1-2. Defendant argues that the patent "claims are directed to computer systems, " and are "patent-eligible because they do not. . . merely recite a fundamental principle with only the words 'apply it [using a computer].'"[9] Def.'s Mem. Opp'n at 1. For the reasons that follow, I find that plaintiff has met its burden by clear and convincing evidence, and therefore, GRANT plaintiffs motion for summary judgment, and DENY defendant's motion for summary judgment.

STANDARD OF REVIEW

Summary judgment is appropriate when, based on the record, there is no genuine issue as to any material fact, and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). The moving party bears the burden, and the court will draw "all justifiable inferences" in favor of the non-moving party. Anderson v. Liberty Lobby, Inc., All U.S. 242, 255 (1986). But, a party opposing summary judgment "may not rest upon the mere allegations . . . of his pleading"; instead, he "must set forth specific facts showing that there is a genuine issue for trial." Id. at 248 (quoting Fed.R.Civ.P. 56(e)). A genuine issue exists only when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id.

ANALYSIS

A patent is presumed valid under 35 U.S.C. § 282, and the party asserting invalidity bears the burden to show by clear and convincing evidence that the patent is invalid. Research Corp. Techs, v. Microsoft Corp., 627 F.3d 859, 870 (Fed. Cir. 2010) (citation omitted). A patent may be granted to "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, " 35 U.S.C. § 101, unless the idea to be patented is a law of nature, a physical phenomenon, or an abstract idea, Diamond v. Diehr, 450 U.S. 175, 185 (1981).[10] However, "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection, " Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1321 (Fed. Cir. 2012) (quoting Diamond, 450 U.S. at 187), provided, "the prohibition against patenting abstract ideas '[is not] circumvented by attempting to limit the use of the formula to a particular technological environment' or adding 'insignificant postsolution activity, '" Bilski v. Kappos, 130 S.Ct. 3218, 3230 (2010) (quoting Diehr, 450 U.S. at 191-92).

"[T]he form of the claims should not trump basic issues of patentability." Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1277 (Fed. Cir. 2012) (citations omitted). Therefore, a court should "look not just to the type of claim but also to the underlying invention, " and may find that "a machine, system, medium, or the like may in some cases be equivalent to an abstract mental process for purposes of patent ineligibility." Id. at 1276-77 (citation and internal quotation marks omitted). To determine the patent-eligibility of a process, [11] a court may use the "machine-or-transformation" test (the "MOT test") as "an investigative tool" for analyzing claims under § 101. Bilski, 130 S.Ct. at 3227, 3231. Under the MOT test, a process is patent-eligible if it either (1) "is tied to a particular machine or apparatus, or (2) [] transforms a particular article into a different state or thing." In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (citations omitted), affdsub nom. Bilski v. Kappos, 130 S.Ct. 3218. But, for "an otherwise unpatentable process" to be made patent-eligible by use of "a machine, the use of the machine 'must impose meaningful limits on the claim's scope.'" CyberSource Corp, v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (quoting 7rc re Bilski, 545 F.3d at 961). "[T]he machine must play a significant part in permitting the claimed method to be performed, " id. (quoting SiRF Tech., Inc. v. InVl Trade Comm 'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010)) (internal quotation marks omitted), and must be more than "incidental use ... to perform [a] mental process, " id., because "the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, " Fort Props., 671 F.3d at 1323 (quoting CyberSource Corp., 654F.3dat 1375).

I. Group 1 Claims

Group 1 Claims describe computer systems "that allow for the electronic sale of a component of a fixed-income asset."[12] Def.'s Mem. Validity at 3. Claim 104 of the '202 patent is representative:

A computer system to make financial analysis output having a system-determined purchase price for at least one component from property in consummating a sale, the system comprising:

an input device converting input data, representing at least one component from property, wherein the property is a fixed-income asset, into input digital electrical signals representing the input data;
a digital electrical computer system controlled by a processor electrically connected to receive said input digital electrical signals and electrically connected to an output means, the processor controlled to manipulate electrical signals to compute a system-determined purchase price for at least one component from property in consummating a sale and corresponding purchase of the component, and to generate financial analysis output at said output means.

U.S. Patent No. 7, 908, 202 col.6111.8-24, Ex. B to PL's Mem. Invalidity at 55.

Claim 104 is nearly identical to the independent method claim previously found invalid by this Court in Graff/Ross I.[13] See Mem. Op., Graff/Ross /, No. 07-cv-796. The equivalence of these claims is readily apparent and the only real difference between the claims is the form in which they were drafted. For example, Claim 104 describes "[a] computer system to make financial analysis output, " whereas Claim 101 of the '347 patent describes "[a] method for making financial analysis output." The computer system is comprised of "an input device converting input data, representing at least one component from property, ... a digital electrical computer system controlled by a processor . . ., the processor controlled to manipulate electrical signals to compute a system-determined purchase price . . . and to generate financial analysis output." U.S. Patent No. 7, 908, 202 col.6111.8-24, Ex. B to PL's Mem. Invalidity at 55. Similarly, the steps of the Graff/Ross I method claim include "converting input data, representing at least one component from property, .. . providing a digital electrical computer system controlled by a processor . . .; controlling a digital electrical computer processor to manipulate electrical signals to compute a system-determined purchase price . . . and generating the financial analysis output." Mem. Op. at 3, Graff/Ross I, No. 07-cv-796. This Court will not fall victim to "the draftsman's art/' Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1294 (2012), and "exalt form over substance, " particularly here, where "the claim is really to the method or series of functions itself, " CyberSource Corp., 654 F.3d at 1374 (citation omitted). Therefore, for purposes of patent-eligibility, these claims are equivalent. See Bancorp Servs., 687 F.3d at 1277.

The method underlying the Group 1 computer systems is clearly the same as the method described by the Graff/Ross I independent method claim—i.e., computing a price for the electronic sale of a component of a fixed-income asset and generating financial analysis output. Thus, having already determined that the Graff/Ross I independent method claim was a patent-ineligible abstract idea, Mem. Op. at 11-13, Graff/Ross I, No. 07-cv-796, 1 easily conclude that the Group 1 Claims are also patent-ineligible.

Like the claim to "computer readable medium" in CyberSource Corp., and contrary to defendant's assertions, the Group 1 Claims recite abstract ideas that fail to meet the MOT test. Emphasizing the applicability of the Federal Circuit's decision in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994), Graff/Ross argues that its computer system claims are special purpose machines, and as such, cannot "f[all] within the 'abstract idea' exception to patent eligibility." Def.'s Mem. Opp'n at 14-16 (citations omitted). However, the Federal Circuit has also noted that, "[a]t its most basic, ... a computer is an automatic electronic device for performing mathematical or logical operations, " and "prior to the information age, a computer was not a machine at all; rather, it was a job title: a person employed to make calculations." Bancorp Servs., 687 F.3d at 1277-78 (citations and internal quotation marks omitted). Therefore, "the use of a computer in an otherwise patent-ineligible process for no more than its most basic function . . . fails to circumvent the prohibition against patenting abstract ideas and mental processes." Id. at 1278. Here, by looking to the substance of the claims, I find that the computer components are "functioning] solely as an obvious mechanism for permitting a solution to be achieved more quickly, "[14]SiRF Tech., Inc., 601 F.3d at 1333, and "[s]imply adding a 'computer aided' limitation"—even multiple computer component limitations—"to a ...


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