Lendingtree, LLC v. Zillow, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LENDINGTREE, LLC,
Plaintiff-Appellant
v.
ZILLOW, INC.,
Defendant-Cross-Appellant
NEXTAG, INC., ADCHEMY, INC.,
Defendants
______________________
2014-1435, 2014-1531, 2015-1186
______________________
Appeals from the United States District Court for the
Western District of North Carolina in No. 3:10-cv-00439-
FDW-DCK, Chief Judge Frank D. Whitney.
______________________
Decided: July 25, 2016
______________________
STEPHEN S. KORNICZKY, Sheppard, Mullin, Richter &
Hampton LLP, San Diego, CA, argued for plaintiff-
appellant. Also represented by MARTIN BADER, MICHAEL
MURPHY; EDWARD V. ANDERSON, Palo Alto, CA.
J. DAVID HADDEN, Fenwick & West, LLP, Mountain
View, CA, argued for defendant-cross-appellant. Also
2 LENDINGTREE v. ZILLOW, INC.
represented by TODD RICHARD GREGORIAN, SAINA S.
SHAMILOV, CAROLYN CHANG, LYNN PASAHOW; RAVI
RAGAVENDRA RANGANATH, San Francisco, CA.
______________________
Before MOORE, SCHALL, and O’MALLEY, Circuit Judges.
SCHALL, Circuit Judge.
DECISION
This is a patent infringement case. LendingTree, LLC
(“LendingTree”) filed suit against Zillow, Inc. (“Zillow”)
and other defendants in the United States District Court
for the Western District of North Carolina, asserting
claims 1 and 6 of U.S. Patent No. 6,385,594 (“the ’594
patent”) and claims 1, 4, 5, 18–20, and 22–24 of U.S.
Patent No. 6,611,816 (“the ’816 patent”) (collectively, “the
patents in suit”). In due course, Zillow moved for sum-
mary judgment of invalidity under 35 U.S.C. § 101 with
respect to the asserted claims of both patents. The dis-
trict court delayed ruling on the motion until after trial,
at which point the court orally denied it from the bench.
Joint Appendix (“J.A.”) 11346. Following trial, the jury
returned a verdict finding that Zillow and the other
defendants did not infringe the asserted claims of the
patents in suit and that all claims of the patents in suit
were invalid for improper inventorship. Id. 7248–51.
After entering final judgment based upon the jury’s
verdict, id. 22, the court denied various post-trial motions,
LendingTree, LLC v. Zillow, Inc., 54 F. Supp. 3d 444, 466
(W.D.N.C. 2014).
On appeal, LendingTree argues that the district court
erred in its construction of four claim terms, in certain of
its evidentiary rulings, and in its decision not to vacate
the jury’s finding of invalidity based upon improper
inventorship. It therefore asks us to vacate the final
judgment and remand the case for further proceedings.
LENDINGTREE v. ZILLOW, INC. 3
Zillow cross-appeals the district court’s denial of summary
judgment of invalidity under 35 U.S.C. § 101.
For the reasons set forth below, we hold that the dis-
trict court erred in denying Zillow’s motion for summary
judgment of invalidity of the asserted claims of the pa-
tents in suit. In addition, we remand to permit Lend-
ingTree, if it chooses to do so, to file a motion under Fed.
R. Civ. P. 60(b) to vacate the judgment of invalidity for
improper inventorship with respect to the remaining
claims of the patents in suit. Our resolution of the case
renders moot the issues of claim construction and the
district court’s evidentiary rulings.
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1). We turn first to Zillow’s cross-appeal.
DISCUSSION
I.
A.
The patents in suit “relate[] to a process for coordinat-
ing loans on a loan processing computer over the Inter-
net.” ’594 patent at 1:8–9. 1 According to the ’594 patent,
traditional methods of applying for a loan were “tedious
and time consuming” because there was “no way to apply .
. . without physically going to or calling each lender and
filling out an application or credit qualification form.” Id.
at 1:34–39. Recognizing that “[a]ll applications required
substantially the same information,” the inventors sought
to overcome those problems by “combin[ing] the vast
resources and speed of the Internet with additional
1 The ’816 patent is a continuation of the ’594 pa-
tent. ’816 patent at 1:7–9. Accordingly, because the
patents in suit share a common specification, reference to
the ’594 patent suffices for the purpose of providing
background.
4 LENDINGTREE v. ZILLOW, INC.
knowledge of various lending institution’s selection crite-
ria to create a simple mechanism whereby an Internet
user can . . . submit a single credit application to a plural-
ity of lending institutions who then make offers to the
customer via the Internet.” Id. at 1:38–43, 1:55–57. The
loan-coordination process of the ’594 patent includes ten
general stages. Id. at 2:66–3:1, Fig. 1.
Independent claims 1 and 22 of the ’594 patent and
’816 patent, respectively, are representative of the
claimed subject matter. They provide as follows:
1. A method for coordinating an electronic credit
qualification form between an Internet user and a
plurality of lending institutions via the Internet,
comprising the steps of:
a) receiving selection criteria from the plurality of
lending institutions;
b) storing the selection criteria in a database;
c) displaying a plurality of documents in a web
site;
d) receiving a plurality of credit data sent from
the Internet user;
e) applying said credit data to a filter comprising
the plurality of selection criteria of the database
to select without manual intervention each one of
said plurality of lending institutions associated
with a match of said credit data to said selection
criteria;
f) determining an appropriate transfer method to
transmit said electronic credit qualification form
to the lending institutions associated with a
match of said credit data;
g) transmitting said electronic qualification form
comprising said credit data to said plurality of
LENDINGTREE v. ZILLOW, INC. 5
lending institutions associated with a match of
said credit data via said appropriate transfer
method, the transmission of said electronic quali-
fication form comprising said credit data occurring
without a delay for reception of any credit deci-
sions from said lending institutions;
h) receiving a plurality of positive credit decisions
from said plurality of lending institutions associ-
ated with a match of said credit data regarding an
offer of credit or a loan to the Internet user;
i) simultaneously displaying the plurality of posi-
tive credit decisions to the Internet user on the web
site;
j) receiving via the web site at least one decision
from the Internet user regarding at least one of
the positive credit decisions, the Internet user’s
decision comprising an acceptance, denial or re-
quest for more information regarding a positive
decision for one of said lending institutions asso-
ciated with a match of said credit data; and
k) transmitting the at least one Internet user’s de-
cision to at least one lending institution corre-
sponding with a positive credit decision so that
said Internet user can obtain credit or a loan from
one of said lending institutions associated with a
match of said credit data,
whereby said lending institutions associat-
ed with a match of said credit data com-
pete with each other for business with the
Internet user.
’594 patent at 7:15–62 (emphases added).
22. A system for coordinating business between a
computer user and a plurality of lending institu-
tions comprising:
6 LENDINGTREE v. ZILLOW, INC.
a processing unit;
a memory storage device; and
a program module, stored in said memory storage
device for providing instructions to said pro-
cessing unit;
said processing unit responsive to said instruc-
tions of said program module, operable for
receiving selection criteria from a plurali-
ty of lending institutions;
receiving credit data sent from the com-
puter user;
employing the selection criteria to filter
the credit data and to automatically select
one or more lending institutions from the
plurality of lending institutions; and
forwarding the credit data to the selected
one or more lending institutions;
whereby the selected lending institutions
compete with each other for business with
the computer user. 2
’816 patent at 10:1–20 (emphasis added).
LendingTree sued Zillow in the Western District of
North Carolina, alleging that Zillow’s operation of a
“Mortgage Marketplace” on its website infringed claims 1
and 6 of the ’594 patent and claims 1, 4, 5, 18–20, and 22–
2 The district court construed the “whereby” clauses
in claims 1 and 22 to mean “the selected lending institu-
tions simultaneously compete by providing offers for
credit to the computer user via the [computer network
(‘816 patent)/Internet (‘594 patent)].” J.A. 12 (alteration
in original).
LENDINGTREE v. ZILLOW, INC. 7
24 of the ’816 patent. Zillow denied infringement and
asserted various counterclaims and affirmative defenses,
based on its view that the patents in suit were neither
infringed nor valid. After the case was underway, Zillow
moved for summary judgment of invalidity of the asserted
claims under 35 U.S.C. § 101. The district court held a
hearing on the motion but delayed ruling on it until after
trial. The court ultimately denied the motion from the
bench without a written decision. 3
B.
We review a district court’s denial of summary judg-
ment under the law of the regional circuit. Broad. Inno-
vation, L.L.C. v. Charter Commc'ns, Inc., 420 F.3d 1364,
1366 (Fed. Cir. 2005). Under the law of the Fourth Cir-
cuit, the denial of summary judgment is reviewed de novo.
Raynor v. Pugh, 817 F.3d 123, 128 (4th Cir. 2016). Sum-
mary judgment is appropriate when the movant shows
that “there is no genuine issue as to any material fact and
that the moving party is entitled to a judgment as a
matter of law.” Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986) (quoting FED. R. CIV. P. 56(c)). “The evidence of the
non-movant is to be believed, and all justifiable inferences
are to be drawn in his favor.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 255 (1986). Patent eligibility under
§ 101 is an issue of law reviewed de novo. Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1366 (Fed. Cir. 2015).
3 LendingTree agreed at oral argument before us
that we may reach the merits of the § 101 dispute, even
though the district court did not offer an explanation for
its denial of Zillow’s summary-judgment motion. Oral
Arg. at 18:33–49, available at http://oralarguments.
cafc.uscourts.gov/default.aspx?fl=2014-1435.mp3.
8 LENDINGTREE v. ZILLOW, INC.
To determine whether a patent claims ineligible sub-
ject matter, we engage in a two-step process. First, “we
determine whether the claims at issue are directed to one
of [the] patent-ineligible concepts”—laws of nature, natu-
ral phenomena, and abstract ideas. Alice Corp. Pty. Ltd.
v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1296–97 (2012)). “The ‘abstract ideas’ catego-
ry embodies ‘the longstanding rule’ that ‘[a]n idea of itself
is not patentable.’” Alice, 134 S. Ct. at 2355 (quoting
Gottschalk v. Benson, 409 U.S. 63, 67 (1972)) (alteration
in original). Although “[t]he Supreme Court has not
established a definitive rule to determine what consti-
tutes an ‘abstract idea’ sufficient to satisfy the first step of
the Mayo/Alice inquiry[,] . . . both this court and the
Supreme Court have found it sufficient to compare claims
at issue to those claims already found to be directed to an
abstract idea in previous cases.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). We know
that “fundamental economic and conventional business
practices are often found to be abstract ideas, even if
performed on a computer.” Id. (citing OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.
2015)). We also know that a claim directed to an abstract
idea is not eligible merely by limiting the invention to a
particular field of use or technological environment. See
Alice, 134 S. Ct. at 2358 (stating that limiting an abstract
idea to a particular technological environment, such as a
computer, does not confer patent eligibility); Bilski v.
Kappos, 561 U.S. 604, 612 (2010) (explaining that “limit-
ing an abstract idea to one field of use . . . d[oes] not make
the concept patentable”).
If we determine that the claims at issue recite an ab-
stract idea, we must proceed to step two, where we ana-
lyze whether the claims contain “additional features” that
embody an “inventive concept.” Alice, 134 S. Ct. at 2357.
In other words, we “consider the elements of each claim
LENDINGTREE v. ZILLOW, INC. 9
both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 132 S. Ct. at 1297–98). These “additional
features” must be more than “well-understood, routine,
conventional activit[ies].” Mayo, 132 S. Ct. at 1298.
Zillow contends that the patents in suit are directed to
the idea of “comparing credit information to lending
criteria” (i.e., a “credit application clearinghouse”). In
Zillow’s view, that idea represents a fundamental econom-
ic practice not meaningfully different from practices
previously found by us and the Supreme Court to be
abstract and is thus ineligible for patenting under § 101.
As for step two, Zillow asserts that the claims at issue
merely automate the clearinghouse concept using conven-
tional methods and generic technology and therefore do
not present an inventive concept.
According to LendingTree, the claims pass muster at
step one of the Mayo/Alice framework because they are
directed to “a specific method of employing a filter and
engendering simultaneous competition among lenders.”
Regarding step two, LendingTree asserts that the in-
ventive concept here is “simultaneous real-time competi-
tion among credit providers in favor of borrowers.” This
“timing step,” LendingTree argues, is “a feature new in
the art.” In LendingTree’s view, the claims of the patents
in suit are like those found to be patent eligible in Dia-
mond v. Diehr, 450 U.S. 175 (1981).
C.
We begin our analysis at step one. On its face, repre-
sentative method claim 1 is directed to an abstract idea;
namely, a loan-application clearinghouse or, more simply,
coordinating loans. Indeed, claim 1 is directed to a prac-
tice similar to “fundamental economic practice[s]” found
abstract by the Supreme Court. Alice, 134 S. Ct. at 2357.
Like the concepts of risk hedging in Bilski, 561 U.S. at
10 LENDINGTREE v. ZILLOW, INC.
611, and intermediated settlement in Alice, 134 S. Ct.
2356, the concept of applying for loans and receiving
offers is also long prevalent in our financial system. That
the patents in suit use a broker (i.e., a computer program
on a loan-processing computer, see ’594 patent at 3:26–30)
to organize the process is of no consequence, for “[t]he use
of a third-party intermediary (or ‘clearing house’) is also a
building block of the modern economy.” See Alice, 134 S.
Ct. at 2357. We too have held that similar claims are
directed toward abstract ideas. See, e.g., Mortg. Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1318,
1324 (Fed. Cir. 2016) (finding claims directed to the idea
of “anonymous loan shopping” to be abstract); Dealer-
track, Inc. v. Huber, 674 F.3d 1315, 1331, 1333 (Fed. Cir.
2012) (deeming claims directed to the concept of “pro-
cessing information through a clearinghouse” to be ab-
stract); OIP Techs., 788 F.3d at 1361–62 (concluding that
offer-based price optimization in an e-commerce environ-
ment is abstract); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d at 712, 715–16 (finding the claims at issue recited
the abstract idea of using advertising as a currency as
applied to the particular technological environment of the
Internet). Because claim 1 of the ’594 patent is directed
to an abstract idea, we turn to step two.
We find that claim 1 does not recite any elements that
individually, or as an ordered combination, transform the
abstract idea of coordinating loans into a patent-eligible
application of that idea. “At best, the claim[] describe[s]
the automation of [a] fundamental economic concept . . .
through the use of generic-computer functions.” OIP
Techs., 788 F.3d at 1363. It is well settled, though, that
automating conventional activities using generic technol-
ogy does not amount to an inventive concept. See Alice,
134 S. Ct. at 2358 (explaining that “if a patent’s recitation
of a computer amounts to a mere instruction to imple-
ment an abstract idea on . . . a computer, that addition
cannot impart patent eligibility”) (internal alteration,
LENDINGTREE v. ZILLOW, INC. 11
citation, and quotations omitted); Intellectual Ventures,
792 F.3d at 1367 (“claiming the improved speed or effi-
ciency inherent with applying the abstract idea on a
computer [does not] provide a sufficient inventive con-
cept”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he
fact that the required calculations could be performed
more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.”).
LendingTree contends that the particular limitation
relating to “simultaneous competition” amounts to an
inventive concept sufficient to render the claims patent
eligible. We do not agree. This court and the Supreme
Court have addressed claims with similar limitations and
have found that they lack an inventive concept. In Mortg.
Grader, the representative claim of the patents at issue
required a computer system that was configured to enable
a borrower “to search [a] database to identify a set of loan
packages” from a plurality of lenders and “to compare the
loan packages within the set,” and that also was config-
ured “to display to the borrower an indication of a total
cost of each loan package in the set.” See Mortg. Grader,
811 F.3d at 1318. Viewed another way, through the
claimed computer system, multiple lenders could compete
simultaneously for the potential borrower’s business. We
concluded in that case that the claims did not include an
inventive concept. Id. at 1324. In Alice, “the claimed
method require[d] the use of a computer to create elec-
tronic records, track multiple transactions, and issue
simultaneous instructions.” 134 S. Ct. 2359 (emphasis
added). The Supreme Court found that such claims
lacked an inventive concept because they did no more
than “simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Id. In our view,
using a generic computer to display a “plurality of positive
credit decisions,” as recited in claim 1 of the ’594 patent,
is not meaningfully different from using a generic com-
12 LENDINGTREE v. ZILLOW, INC.
puter to display competing loan packages or to issue
instructions. Consequently, we think that, like the claims
in Mortg. Grader and Alice, claim 1 is patent ineligible
because it does nothing more than facilitate the claimed
loan-application process using generic technology. 4
LendingTree also argues that the claimed invention is
comparable to the invention found patent eligible by the
Supreme Court in Diehr. LendingTree’s reliance on Diehr
is misplaced. Contrary to LendingTree’s assertion, the
claims at issue are not like those in Diehr. The pertinent
claim in that case “employed a ‘well-known’ mathematical
equation . . . used . . . in a process designed to solve a
technological problem in ‘conventional industry practice.’”
Alice, 134 S. Ct. at 2358 (quoting Diehr, 450 U.S. at 177,
178) (emphasis added). The claims here, however, are not
designed to solve a technological problem. Rather, they
merely provide a generic, technological environment (i.e.,
computers and the Internet) in which to carry out the
abstract idea of coordinating loans. 5 The specification
4 Because system claim 22 of the ’816 patent does
not differ in any meaningful way from method claim 1 of
the ’594 patent, we conclude that it too is directed to
patent-ineligible subject matter. See Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1342–46 (Fed. Cir. 2013) (finding that system claims fall
with patent-ineligible method claims when “the system
claims offer no meaningful limitations beyond the method
claims”). Additionally, LendingTree does not contend that
our analysis should differ for any of the other challenged
claims (i.e., claim 6 of the ’594 patent and claims 1, 4, 5,
18–20, 23, and 24 of the ’816 patent). Consequently, those
claims also fall with claims 1 and 22.
5 Likewise, we also do not think the claims are di-
rected to “improvements in computer-related technology,”
Enfish, 822 F.3d at 1335, or to solving “a challenge par-
LENDINGTREE v. ZILLOW, INC. 13
underscores this point by emphasizing that the aim of the
invention is speeding up the loan-application process by
enabling borrowers to avoid “physically going to or calling
each lender and filling out an application.” See ’594
patent at 1:34–44.
We have considered all of LendingTree’s remaining
arguments and have found them unpersuasive. Accord-
ingly, because the asserted claims of the patents in suit
are directed to an abstract idea and do not present an
“inventive concept,” we hold that they are directed to
ineligible subject matter under 35 U.S.C. § 101. We
therefore reverse the district court’s denial of Zillow’s
motion for summary judgment. We turn next to the issue
of inventorship.
II.
As noted, the jury found all claims of the patents in
suit invalid for improper inventorship. J.A. 7250. Our
conclusion on the § 101 issue—that claims 1 and 6 of the
’594 patent and claims 1, 4, 5, 18–20, and 22–24 of the
’816 patent are invalid—still leaves a number of claims
intact; namely, claims 2–5 and 7–36 of the ’594 patent
and claims 2, 3, 6–17, and 21 of the ’816 patent. We must
therefore address inventorship as it relates to those
claims.
A.
After the jury returned its verdict, LendingTree re-
newed its previous motion for judgment as a matter of
law, based on its view that the patents in suit are not
invalid for failing to identify the correct inventors. Lend-
ingTree, LLC v. Zillow, Inc., 54 F. Supp. 3d 444, 449
(W.D.N.C. 2014). LendingTree also moved to correct
ticular to the Internet,” DDR Holdings, LLC v. Ho-
tels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
14 LENDINGTREE v. ZILLOW, INC.
inventorship of the patents in suit pursuant to 35 U.S.C.
§ 256. 6 Id. at 451. The district court ruled on the motions
together, denying both. See id. at 449–52. In doing so,
the court noted that the jury’s verdict form did not specify
the particular error(s) on which the jury based its deter-
mination of improper inventorship. See id. at 451–52. In
addition, the court determined that, based on the evidence
before it, there were “several combinations of inventors”
that the jury could have reasonably concluded should be
listed on the patents in suit (instead of the originally
listed inventors). See id. Concluding that “the inventor-
ship dispute may be resolved by the [U.S. Patent and
Trademark Office (“PTO”)],” the court “decline[d] to make
a determination as to inventorship.” Id. at 452. Follow-
ing the court’s denial of its § 256 motion, LendingTree
petitioned the PTO to correct inventorship by adding
James F. Bennett, Jr. as a named inventor. J.A. 12511–
12.
On appeal, LendingTree initially asserted that the
district court erred by not considering whether inventor-
ship could be corrected. However, after LendingTree filed
its opening brief, the PTO issued Certificates of Correc-
tion (adding James F. Bennett, Jr. as a named inventor)
for the patents in suit. 7 Id. 13207–08. In LendingTree’s
view, the PTO’s actions rendered moot the inventorship
dispute. LendingTree thus urges that we vacate the
jury’s finding of improper inventorship. Zillow contends
that the jury’s general verdict form forecloses a remand
because it leaves open the question of whether the jury
found that Mr. Stiegler was improperly named as an
6 When the patents in suit first issued, they both
listed two named inventors: Douglas Lebda and Richard
Stiegler.
7 On May 12, 2016, we took judicial notice of the
PTO’s issuance of Certificates of Correction.
LENDINGTREE v. ZILLOW, INC. 15
inventor, that Mr. Bennett was improperly omitted as an
inventor, or that both errors occurred. 8
B.
In light of the PTO’s corrections to the patents in suit,
we think a remand is appropriate. 35 U.S.C. § 256(b)
provides as follows:
The error of omitting inventors or naming persons
who are not inventors shall not invalidate the pa-
tent in which such error occurred if it can be cor-
rected as provided in this section. The court before
which such matter is called in question may order
correction of the patent on notice and hearing of
all parties concerned and the Director shall issue
a certificate accordingly.
35 U.S.C. § 256 (2012) (emphasis added). In this case,
absent a remand, the judgment of invalidity will remain
in place, which would appear to violate the letter and
spirit of § 256, for one or more alleged errors will have
invalidated the patents in suit notwithstanding that they
could have been (and in fact might have been) fully cor-
rected. A remand is also consistent with our approach in
Airbus DS Commc’ns, Inc. v. Microdata GIS, Inc., (Case
No. 15-1037, Dkt. No. 28) (nonprecedential). In that case,
the district court entered judgment against Airbus “based
on a jury verdict that a co-inventor . . . was omitted from
the patent.” Id. at 2. After Airbus filed its notice of
appeal, the PTO issued a Certificate of Correction that
added the omitted inventor. Id. We granted a limited
remand to allow the district court to determine whether to
vacate the invalidity judgment pursuant to Fed. R. Civ.
P. 60(b). Id. As in Airbus, we think that, upon motion by
8 There is no dispute that Mr. Lebda is properly
named as an inventor.
16 LENDINGTREE v. ZILLOW, INC.
LendingTree, 9 the district court in this case should be
given the opportunity to consider vacatur. 10
We do not agree with Zillow that the jury’s general
verdict form forecloses a remand. Zillow cites no case
establishing that an ambiguous jury form precludes
inventorship from being corrected under § 256. However,
given that the district court found “there [were] several
combinations of inventors that the jury could have rea-
sonably concluded should be listed on the [patents in
suit],” and given that LendingTree did not timely request
identification of the inventors by the jury, LendingTree,
54 F. Supp. 3d at 451, the district court may decide that
vacatur is inappropriate. See FED. R. CIV. P. 60(b)
(providing that a district court “may relieve a party . . .
from a final judgment” when “[(5)] applying it prospective-
ly is no longer equitable” or there is “(6) any other reason
that justifies relief”); Nat’l Org. for Women v. Operation
Rescue, 47 F.3d 667, 669 (4th Cir. 1995) (“The power of a
district court to vacate a judgment under Federal Rule of
Civil Procedure 60(b) rests within the district court’s
equitable powers.”); Am. Games, Inc. v. Trade Prods., Inc.,
9 A motion to vacate a judgment under Rule
60(b)(4)-(6) must be brought “within a reasonable time . . .
after the entry of the judgment or order.” FED. R. CIV. P.
60(c)(1).
10 Without a remand, the district court will not have
jurisdiction to consider a Rule 60(b) motion. S & E Ship-
ping Corp. v. Chesapeake & O. Ry. Co., 678 F.2d 636, 641
n.10 (6th Cir. 1982) (explaining that “absent a remand by
[an] appellate court, a district court may not decide a
[Rule] 60(b) motion to vacate judgment after notice of
appeal has been filed”); see also Russell v. Lane, 890 F.2d
947, 949 (7th Cir. 1989) (remanding to provide appellant
“a reasonable opportunity to file a motion under Rule
60(b)(6) to vacate . . . [a] judgment”).
LENDINGTREE v. ZILLOW, INC. 17
142 F.3d 1164, 1168 (9th Cir. 1998) (explaining that “Rule
60 provides the basis for a district courts’ vacation of
judgments when the equities so demand”); Liljeberg v.
Health Servs. Acquisition Corp., 486 U.S. 847, 864 (1988)
(stating that Rule 60(b)(6) “provides courts with authority
adequate to enable them to vacate judgments whenever
such action is appropriate to accomplish justice”) (internal
quotation marks omitted).
Accordingly, we grant a remand to allow LendingTree
to file, and the district court to consider, a motion pursu-
ant to Fed. R. Civ. P. 60(b) to vacate the judgment of
invalidity on account of incorrect inventorship.
CONCLUSION
We hold that claims 1 and 6 of the ’594 patent and
claims 1, 4, 5, 18–20, and 22–24 of the ’816 patent are
directed to patent-ineligible subject matter and are there-
fore invalid. We therefore reverse the district court’s
denial of Zillow’s motion for summary judgement under
35 U.S.C. § 101. At the same time, we remand in order to
permit LendingTree to file a motion pursuant to Fed. R.
Civ. P. 60 to vacate the judgment of invalidity on account
of improper inventorship as to claims 2–5 and 7–36 of the
’594 patent and claims 2, 3, 6–17, and 21 of the ’816
patent. Our resolution of the case renders moot the issues
of claim construction and the district court’s evidentiary
rulings. We therefore do not reach them.
AFFIRMED IN PART AND REMANDED IN PART
COSTS
Each party shall bear its own costs.