Source Search Technologies, LLC, v. LendingTree, LLC, No. 2008-1505, -1524 (Fed. Cir. Dec. 7, 2009)

The patentee claimed the alleged infringers´ Web sites infringed its patent directed to computerized procurement services for matching potential buyers with vendors over the Internet and filtering the search results. On summary judgment, the district court found the patent infringed but invalid as obvious based on two sets of prior art references: the “e-commerce” prior art (early e-commerce systems) and the “bricks and mortar” prior art (pre-Internet referral services to help consumers locate a service provider). The district court denied the patentee´s motion to strike a supplemental expert report for untimely disclosure of the “bricks and mortar” prior art, and denied summary judgment of invalidity based on indefiniteness. The Federal Circuit reversed the finding of obviousness, affirmed the infringement finding, affirmed the denial of the motion to strike, and affirmed the rejection of the indefiniteness defense.

In rejecting the obviousness argument, the Federal Circuit noted that “[i]t is axiomatic that claims are construed the same way for both invalidity and infringement.” There were factual disputes in light of both the “e-commerce” and the “bricks and mortar” prior art. The prior art lacked any meaningful filtration process that the patent addressed as a problem, and the invention was more than simply a computerized version of the “bricks and mortar” prior art. The skilled artisan would not have recognized the problem addressed by the filtering feature of the claimed invention in 1996, at the dawn of the Internet era.

On the motion to strike, and under Third Circuit law, the district court did not abuse its discretion by allowing the alleged infringers to rely on the newly disclosed prior art. Despite its objections, the patentee waited nearly nine months after being served with the supplemental expert report to raise any objection. In the time that followed, the patentee had ample time to conduct full discovery on the prior art. As such, no miscarriage of justice occurred.

On indefiniteness, the Federal Circuit rejected the patentee´s argument that the claim construction introduced a subjective element as to what a “standard” good or service was, making the claim indefinite. The skilled artisan would possess a sufficient understanding of the particular market to understand what a “standard” item is. To hold otherwise would require the patent to list every possible good or service.

A copy of the opinion can be found here.