Motion to Dismiss Denied Under Bilski Where Plaintiff Contended That a Computer Programmed in a Particular Way Was the Invention Itself

July 20, 2011

Plaintiff's complaint alleged a single count for patent infringement, which asserted that the defendant infringes its patent through the use of an online dating website. The particular feature accused is called "QuickMatch," which notifies two users who demonstrate mutual interest in each other. The patent is directed to a computerized method of notifying individuals of reciprocal interest that offers confidentiality and anonymity. The method described in the patent provides for confidentiality by allowing only the computer system to be aware of each user's expressed interests until the computer determines that there is mutual interest.

The defendant moved to dismiss the complaint pursuant to Fed.R.Civ.P. 12(b)(6) for failure to state a claim upon which relief can be granted. The defendant based its argument on the United States Supreme Court's recent decision in Bilski v. Kappos, 130 S.Ct. 3218 (2010). The defendant argued that the subject matter of the patent is an abstract idea not eligible for patent protection, asserting that the invention is the idea of having an intermediary determine whether two people (or other entities) may be interested in one another and, if so, introducing the two. Defendant also argued that the patent preempts a broad range of human activity including match-making, headhunting and silent auctions.

As the district court framed the issue, "[a]t the center of the parties' dispute is the question of whether the ... patent is limited by the use of a computer to implement the patented process. Defendants contend that the ... 'patent represents the abstract idea of having an intermediary introduce people once the intermediary confidentially determines that the individuals share mutual interest in each other and that a computer is not necessary to perform any of the steps outlined in the ... patent's claims." The district court noted that the plaintiff disagreed and contended that under the proper construction of the claims the patent requires a computer that is programmed to perform the claimed functions and that the specially programmed computer is the invention.

The district court agreed with the plaintiff and concluded that this issue could not be resolved on a motion to dismiss. "Defendants aver that this matter can be resolved on a motion to dismiss because even assuming Plaintiff's preferred claim construction, the ... patent is directed to unpatentable subject matter. ... However, the parties' positions regarding whether a computer is at the heart of the invention belie this assertion. If the Court were to accept Plaintiff's contention that a computer programmed in a particular way is the invention itself, the patent would not be drawn to an abstract idea. Therefore, the Court cannot say that abstractness is manifest in this case."

Accordingly, the district court denied the motion.

* * *

This is yet another decision involving the use of Bilski on a motion to dismiss at the earliest stages of the litigation. Although the district court declined to grant the motion to dismiss, there is a growing trend by defendants to try to use Bilski at the earliest stages of a case to try to have the case dismissed. From a defendants' perspective, there is little downside in bringing such a motion and the upside is large given the potential to have the case dismissed (as we have seen happen in a recent case from New Jersey) or to at least educate the district court that the patent-at-issue may have significant problems with patentability that should be addressed through motion practice.

Spark Networks USA, LLC v. Humor Rainbow, Inc., Case No. 2:11-cv-01430-JHN (C.D. Cal. July 7, 2011)

______________________
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.