Tele-Publishing Inc. v. Facebook, Inc. et al

Filing 423

Judge Douglas P. Woodlock: MEMORANDUM AND ORDER entered finding as moot 343 Motion to Strike ; finding as moot 359 Motion for Summary Judgment; finding as moot 360 Motion to exclude; granting 361 Motion for Summary Judgment; finding as mo ot 366 Motion for Partial Summary Judgment; denying 369 Motion for Partial Summary Judgment as to subject matter patentability and finding the remainder moot; finding as moot 409 Motion to Strike. The Clerk is directed to enter final judgment for the defendants declaring the '216 Patent to be invalid because its subject matter is not patentable. (Woodlock, Douglas)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

TELE-PUBLISHING, INC.,

)
)
)
)
)
)
)
)
)
)

Plaintiff,
v.
FACEBOOK, INC., and
THEFACEBOOK, LLC,
Defendants.

CIVIL ACTION NO.
09-11686-DPW

MEMORANDUM AND ORDER
May 11, 2017
Plaintiff Tele-Publishing, Inc. (“TPI”) and defendants
Facebook, Inc. and TheFacebook, LLC (collectively “Facebook”)
have presented various dispositive motions to resolve this
computer program patent dispute.

The focus of the instant

memorandum will be the respective requests for summary
disposition regarding the validity of the asserted claims of
U.S. Patent No. 6,253,216 (the “‘216 Patent”) under 35 U.S.C. '
101, which governs whether the subject matter is patentable as
assessed through the framework of Alice Corp. Pty. Ltd. v. CLS
Bank Intern., 134 S. Ct. 2347 (2014).

Because I conclude the

subject matter of the ‘216 Patent is not patentable, I will
direct the clerk to enter final judgment for the defendants,
resolving this case.

I.
A.

BACKGROUND

The Patent
On June 26, 2001, the Patent and Trademark Office (“PTO”)

issued the ‘216 Patent to TPI.

The claimed invention “relates

to a method and apparatus for providing a personal page over a
computer network.

More particularly, the method and apparatus

provide users with a secure way to display personal information
to other computer network users.”

‘216 Patent col 1. l. 14-18.

The patent discusses the history of “personals” sections in
newspapers and explains how with “the advent of the Internet’s
World Wide Web, systems for providing personals advertisements
on networked computer systems have appeared.”
ll. 28-32.

Id. at col. 1.

These web-based systems “consist largely of the same

information that is available in the newspaper advertisements”
and “merely mimic the newspaper advertisements” rather than
taking advantage of the new technological format.

Id. at col.

1. ll. 37-40.
According to the patent, existing networked computer
systems for providing personals advertisements have several
major shortcomings.

First, if the system allows users to

customize their personal pages, the system “often requires that
the user be able to generate the page using a programing
language or other protocol” even though “many users of personals
2

are not familiar with such languages.”
64.

Id. at col. 1. ll. 59-

Second, existing systems that use standard web pages

“provide no privacy” to users because “the Internet allows
access by users world-wide” and “a relatively large number of
Internet users exist.”

Id. at col. 1. ll. 65-68, col. 2. l. 1.

“With such a large number of users, it is desirable to restrict
access to information on some pages or even to restrict access
to some pages.”

‘216 Patent col. 2. ll. 3-6.

Finally, existing

systems struggle “to direct a desired audience to a particular
page.

The owner of such a page must simply hope that the

desired audience, out of some tens of millions of users, finds
the page.”

Id. at col. 2. ll. 8-11.

The ‘216 Patent purports to address the shortcomings of
earlier systems.

The invention is designed “to provide a secure

method for providing personal information in a network
environment which makes use of the multimedia opportunities
available on such a medium and makes the information available
in a private way, i.e., only to those people that the person
providing the information wishes to see the information.”

Id.

at col. 2. ll. 12-18.
Claim 1 recites:
A method for providing a personal page on a computer system
accessible to a plurality of remote users through a
computer network, the remote users having profile
information stored in the computer network and accessible
to other remote users, comprising the steps of:
3

a) acceptable [sic] [accepting] profile information from a
plurality of remote users;
b) prompting a page-creating remote user with a plurality
of page templates for the personal page and receiving a
template selection from the remote user;
c) prompting the page-creating remote user to enter text to
the personal page and receiving entered text from the
remote user;
d) prompting the page-creating remote user to select or
enter graphical information to display on the personal page
and receiving the selection or entry from the remote user;
e) storing attributes representing each selection or entry
made by the page-creating remote user in one or more
databases;
f) providing the page-creating remote user with means to
input security parameters for the personal page, the
security parameters specifying authorization of at least
one other remote user to access the personal page;
g) storing the security parameters in one or more
databases; and
h) displaying the personal page upon request only to remote
users who are authorized to access the personal page. Id.
at col. 12 ll. 48-67, col. 13 ll. 1-9.
Claims 2, 9, 25, and 26 depend upon Claim 1.1

1

Claim 2 recites “[t]he method of claim 1, wherein each page
template is stored as a plurality of rows in one or more
databases on the computer system.” ‘216 Patent col. 13 ll. 1012.
Claim 9 recites “[t]he method of claim 1, wherein only
graphics having a smaller storage size than a predetermined
storage size may be entered by a user.” Id. at col. 13 ll. 3638.
Claim 25 recites “[t]he method of claim 1, wherein the pagecreating user may grant authorization to view the personal page
to another remote user when sending an electronic mail message
to that other remote user.” Id. at col. 15 ll. 27-30.
Claim 26 recites “[t]he method of claim 1, wherein when the
page-creating user authorizes a remote user to view the personal
page, an electronic mail message is sent by the computer system
to the authorized remote user indicating to that user that the
user may view the personal page of the page-creating remote
user.” Id. at col. 15 ll. 31-36.
4

Similarly, Claim 21 recites:
A computer program product comprising computer useable
medium having computer readable program code to:
(a) prompt a page-creating remote user with a plurality of
page templates for displaying personal information and to
receive a template selection from the remote user;
(b) prompt the page-creating remote user to enter text to
the personal page and to receive entered text from the
remote user;
(c) prompt the page-creating remote user to select or enter
graphical information to display on the personal page and
to receive the selection or entry from the remote user;
(d) store attributes representing each selection or entry
made by the page-creating remote user in one or more
databases;
(e) provide the page-creating remote user with means to
input security parameters for the personal page, the
security parameters specifying authorization of at least
one other remote user to view the personal page;
(f) store the security parameters in one or more databases;
and
(g) display the personal page only to remote users who are
authorized to access the personal page. Id. at. col. 14,
ll. 56-67, col. 15 ll. 1-11.
Claim 22 depends upon Claim 21.2
B.

The Procedural History
On October 7, 2009, TPI initiated this litigation against

Facebook alleging that Facebook’s products infringed the ‘216
Patent.

Facebook responded on November 11, 2009 with

counterclaims alleging, inter alia, that the ‘216 patent is

2

Claim 22 recites “[t]he method of claim 21, wherein the
computer readable program code to display the personal page to
an authorized remote user includes computer readable program
code to retrieve the attributes representing selections or
entries by the page-creating user, and graphically displaying
the page-creating user’s selections and entries using the
selected page template.” ‘216 Patent, col. 15 ll. 12-18.
5

invalid.

On December 22, 2009, Facebook submitted a request to

the PTO for ex parte reexamination of the ‘216 Patent.
Facebook’s reexamination request raised questions of
patentability based on prior art not cited in the original
prosecution of the ‘216 Patent.

On November 5, 2010, the PTO

issued an Office Action affirming rejection of all claims of the
‘216 Patent.

The Board of Patent Appeals and Interferences,

however, on February 23, 2012 reversed the PTO’s decision,
holding that the PTO erred in finding that the claims were
anticipated or made obvious by prior art.
After the return of the case to this court as the forum for
resolution of the dispute, I issued my September 7, 2016
Memorandum and Order (“Markman Order”) in which I construed the
claims of the ‘216 Patent and found claims and claim elements
10(d), 16(e), 23, 24, 27, 29(d), 32(d), 31, and 34 invalid as
indefinite.

Tele-Publishing, Inc. v. Facebook, Inc., 205 F.

Supp. 3d 142, 158-61 (D. Mass. 2016).

On December 1, 2016, I

denied TPI’s motion for reconsideration as to my finding that
claims 31 and 34 were invalid as indefinite.

Tele-Publishing,

Inc. v. Facebook, Inc., No. 09-11686-DPW, ---F. Supp. 3d---,
2016 WL 7042063, at *3 (D. Mass. Dec. 1, 2016).

In light of the

Markman Order as reaffirmed, the parties pressed dispositive
motion practice on multiple fronts, including the question of

6

patentability raised by Facebook’s motion #366 and raised in
part by TPI’s motion #369.
II.
A.

DISCUSSION

Summary Judgment
A court will grant summary judgment “if the movant shows

that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
P. 56.

Fed R. Civ.

At this stage, I read the facts in the light most

favorable to the non-moving party and draw all reasonable
inferences in its favor.

Ramos-Santiago v. United Parcel Serv.,

524 F.3d 120, 122 (1st Cir. 2008).

I likewise “view the record

‘through the prism of the evidentiary standard of proof that
would pertain at a trial on the merits . . . Thus, a moving
party seeking to invalidate a patent at summary judgment must
submit such clear and convincing evidence of invalidity so that
no reasonable jury could find otherwise.’”

Exergen Corp. v.

Brooklands, 125 F. Supp. 3d 307, 312 (D. Mass. 2015) (quoting
Eli Lily Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir.
2001)).3

3

 As I discussed in Exergen, “[w]hether an inquiry into patentable
subject matter under ' 101 is subject to the same presumption of
validity has recently become a matter of debate.” Exergen Corp.
v. Brooklands, 125 F. Supp. 3d 307, 311 (D. Mass. 2015). For
now, I continue to apply the clear and convincing standard,
although I view the presumption of validity as having “less
significance in the context of a largely legal determination”
like a ' 101 inquiry. Id. at 312. 

7

B.

Invalidity Under 35 U.S.C. ' 101 and Alice
Section 101 of the Patent Act establishes the subject

matter which may receive patent protection.

As a conceptual

matter, the Supreme Court has “‘long held that this provision
contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable. . .’”
because they represent “‘the basic tools of scientific and
technological work.’”

Alice, 134 S. Ct. at 2354 (quoting

Association for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)).
In order to “distinguish between patents that claim the
‘buildin[g] block[s]’ of human ingenuity and those that
integrate the building blocks into something more,” the Supreme
Court in Alice directed a two-part inquiry for determining
patent eligibility under ' 101.

Id. (quoting Mayo Collaborative

Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1303 (2012)).
Under the first step, I “determine whether the claims at issue
are directed to one of those patent-ineligible concepts.”
at 2355.

Id.

If I find that they are, I proceed to the second step,

where I “consider the elements of each claim 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

1298, 1297).
8

In the wake of Alice, the Federal Circuit has issued a
number of decisions involving ' 101 challenges to patents and has
begun to refine the path for the two steps of the Alice
protocol.

According to the Federal Circuit, at the first step,

a court should consider, as alternatively stated, “the focus of
the claims,” Elec. Power Grp.; LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016); their “character as a whole” or the
“basic character of the subject matter,” Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1346 1348 (Fed. Cir.
2015); or their “basic thrust,” Bascom Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016).4

4

TPI argues for a narrower view of the first step, relying on
the Federal Circuit’s recent decision in Thales Visionix Inc. v.
United States, 850 F.3d 1343 (Fed. Cir. 2017). In Thales, the
Federal Circuit cautioned courts to “articulate what the claims
are directed to with enough specificity to ensure the step one
inquiry is meaningful.” Id. at 1347. The court proceeded to
discuss the claims in detail and concluded that they were not
directed to an abstract idea. Id. at 1347-49. I understand
Thales to reaffirm the importance of step one, but not to change
its scope. The two Alice steps “are plainly related” Elec.
Power Grp., 830 F.3d at 1353 and are not always separated
distinctly by the Federal Circuit. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir.
2016) (“Whether at step one or step two of the Alice test, in
determining the patentability of a method, a court must look to
the claims as an ordered combination, without ignoring the
requirements of the individual steps.”). At times, “there can
be close questions about when the inquiry should proceed from
the first stage to the second.” Elec. Power Grp., 830 F.3d at
1353. Even in light of Thales, I view the first step as a
distinct and separate inquiry in which I examine the basic
character of the claims as a whole in order to determine whether
they are directed to an abstract idea.
9

Although the first step analyzes the basic character of the
claims, the step remains “a meaningful one, sometimes ending the
' 101 inquiry.”

Elec. Power Grp., 830 F.3d at 1353.

Because

neither the Supreme Court nor the Federal Circuit has
“established a definitive rule to determine what constitutes an
‘abstract idea,’” both “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).
If a court reaches the second step, it looks “more
precisely at what the claim elements add,” Elec. Power Grp., 830
F.3d at 1353, and determines whether the “specific improvements”
identified “go beyond ‘well-understood routine, conventional
activit[ies]’ and render the invention patent-eligible.”
Bascom, 827 F.3d at 1348 (quoting Alice, 134 S. Ct. at 2359).
In the second step, a court will “‘search for an inventive
concept—i.e., an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible concept
itself.’”

Intellectual Ventures I LLC v. Symantec Corp., 838

F.3d 1307, 1313 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at
2355).

10

III. ANALYSIS
A.

Alice Step One
Facebook argues that the ‘216 Patent is directed to the

abstract idea of collecting and storing a person’s personal
information, and sharing it with selected other persons.

TPI

contends that this categorization ignores key limitations placed
on the claims through both the specification within the patent
and my claim construction.

According to TPI, the claims are

directed to three problems of particular concern to publishing
personals online: the lack of privacy on the Internet, which the
claims purport to solve by using security parameters to provide
restricted access to a user’s personal page; the challenge of
targeting audiences online, which the claims purport to solve by
making a user’s profile information accessible; and the
difficulty of customizing personal pages online, which the
claims purport to solve by enabling users to create personal
pages without using programming languages.
I conclude that the focus, the character, the basic thrust
of the relevant claims in the ‘216 Patent is directed to the
abstract idea of collecting, storing, and selectively sharing
personal information.

Elec. Power Grp., 830 F.3d at 1353.

The

section on the field of the invention, when speaking “[m]ore
particularly,” states that the method and apparatus recited
“provide users with a secure way to display personal information
11

to other computer network users.”

‘216 Patent col 1. l. 14-18.

The additional details provided in the claim elements do not
appear to alter the “basic character of the subject matter” of
the claims.

Internet Patents Corp., 790 F.3d at 1348.

Rather,

they simply set out the steps the system takes to collect and
store personal information and the steps users may take to share
selectively their personal information.

Because I find the

claims and their limitations “do not readily lend themselves to
a step-one finding that they are directed to a nonabstract
idea,” I will defer consideration of whether these steps are
sufficient to narrow or transform the claims until step two.
Bascom, 827 F.3d at 1349.
The claims in the ‘216 Patent are similar to claims which
in the post-Alice period the Federal Circuit has found to be
directed to abstract ideas, and are strikingly similar to claims
several district courts have found to be directed to abstract
ideas.
1.

Federal Circuit Case Law

In Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, the court stated that claims directed to “filtering content
on the Internet” were directed to an abstract idea because
filtering content “is a longstanding, well-known method of
organizing human behavior.”

827 F.3d at 1348.

12

The court noted

that “[a]n abstract idea on ‘an Internet computer network’ or on
a generic computer is still an abstract idea.”

Id.

In Content Extraction and Transmission LLC v. Wells Fargo
Bank, National Association, the court considered claims that
“generally recite a method of 1) extracting data from hard copy
documents using an automated digitizing unit such as a scanner,
2) recognizing specific information from the extracted data, and
3) storing that information in a memory.”
(Fed. Cir. 2014).

776 F.3d 1343, 1345

The court held those claims were directed to

the abstract idea of “1) collecting data, 2) recognizing certain
data within the collected data set, and 3) storing that
recognized data in a memory.”

Id. at 1347.

The Federal Circuit

observed that:
The concept of data collection, recognition, and storage is
undisputedly well-known. Indeed, humans have always
performed these functions. And banks have, for some time,
reviewed checks, recognized relevant data such as the
amount, account number, and identity of account holder, and
stored that information in their records. Id.
Finally, in Cyberfone Systems, LLC v. CNN Interactive
Group, Inc., an unpublished decision issued a few months before
Alice that I find remains instructive and persuasive, the court
considered claims that recited a method of “obtaining data,
‘exploding’ the data, i.e., separating it into component parts,
and sending those parts to different destinations.”
App’x 988, 990 (Fed. Cir. 2014).

13

558 Fed.

The court held that the claims

were directed to the abstract idea of “collecting information in
classified form, then separating and transmitting that
information according to its classification,” stating that
“using categories to organize, store, and transmit information
is well-established.”
2.

Id. at 992.

District Court Case Law

In parallel with such Federal Circuit precedent, several
district courts have found patents involving the collecting,
storing, and processing of information in some way, including
selectively sharing information, to be directed to abstract
ideas.

In Zkey Investments v. Facebook, Judge Lew of the

Central District of California considered a patent for what the
plaintiff characterized as a “networked, real-time electronic
information exchange system that permits a user to exercise
granular control over access to specific data elements in a user
profile stored by a database management system.”

No. CV 16-

00782-RSWL-KS, ---F. Supp. 3d---, 2016 WL 7046593, at *4 (C.D.
Cal. Dec. 2, 2016).

He determined that “the computer-related

terms used by Plaintiff do not change the purpose of the ‘204
Patent—users are able to have control of what information is
stored in the database and who has access to the information as
it is updated in real-time.”

Id.

He concluded that the claims

of the patent were “directed towards the abstract idea of

14

collecting, storing, and sharing information of registered users
with other registered and non-registered users.”

Id. at *6.

In Zak v. Facebook, Judge Berg of the Eastern District of
Michigan considered two patents with claims “directed to
enabling users, without third-party assistance, to post content
to a website and to control which users can view the posted
content.”

206 F. Supp. 3d 1262, 1264-65 (E.D. Mich. 2016).

Much like the ‘216 Patent now before me, the patents at issue in
Zak sought to “giv[e] users the ability to manage the content of
a website without having to depend on a person skilled in HTML
computer programming.”

Id. at 1264.

The inventors in Zak also

“realized that the software would be more useful if users could
control which other users could view content on the website and
which other users could post content on certain web pages.”
(emphasis in original).

Id.

Looking to Bascom, Judge Berg found the

claims in the patents were directed to “group collaboration with
targeted communication and restricting public access, which—like
filtering data—are arguably methods of organizing human
behavior” and therefore concluded that the claims were directed
to an abstract idea.

Id. at 1270.

Similarly, in SkillSurvey, Inc. v. Checkster LLC, Judge
Jones in the Eastern District of Pennsylvania considered a
patent that “relates to a human resource management system, and
more particularly to a system for collecting and analyzing
15

information from references identified by job candidates.”
F. Supp. 3d 247, 252 (E.D. Pa. 2016).

178

He held the patent was

directed to the abstract idea “of soliciting, storing, and
analyzing of information provided by references in such a way as
to hedge the risk of receiving incomplete or inaccurate
responses from references during the hiring process.”

Id. at

256.
Finally, in Listingbook, LLC v. Market Leader, Inc., Judge
Biggs of the Middle District of North Carolina considered a
claim in a patent that disclosed:
a method of providing a real estate agent and two clients
with access to a database of real estate information,
monitoring the actions of the agent and clients as they
access that information, generating and storing the
information they access, and providing some client-accessed
information to the agent and some agent-accessed
information to the clients, so that each has “knowledge of
the actions” of the other. 144 F. Supp. 3d 777, 786-87
(M.D.N.C. 2015).
She held that the claim “is directed to the abstract ideas of
information exchange (sharing) and collaboration.”
3.

Id. at 788.

Conclusion

After reviewing the developing case law regarding the Alice
approach in settings similar to that before me, I conclude that
the relevant claims in the ‘216 Patent are directed to the
abstract idea of collecting, storing, and selectively sharing
personal information.

Having determined that the claims are

16

directed to an abstract idea, I now turn to the second step of
the Alice inquiry.
B.

Alice Step Two
Facebook contends that the ‘216 Patent does not contain

sufficient specific improvements to render the invention patenteligible.

Facebook asserts that the ‘216 Patent merely combines

a computer-implemented version of a newspapers personals section
with the abstract idea of limiting access to personal
information to selected users.

TPI argues that Facebook

oversimplifies the claim elements of the ‘216 Patent.5

According

to TPI, when the claim elements are considered as an ordered
combination, they create a two-tiered system for sharing
personal information, in which users have both private personal
pages protected by security features and unrestricted profile
information accessible to the online public at large.

5

 TPI also asserts that Facebook improperly focuses on whether the
claims of the ‘216 Patent are novel, an inquiry more appropriate
for a 35 U.S.C. ' 102 challenge, instead of whether they are
inventive concepts, the proper focus of a ' 101 challenge.
Bilski v. Kappos, 561 U.S. 593, 620 (2010) (Stevens, J.,
concurring) (“‘The proper construction of ' 101 . . . does not
involve the familiar issu[e] of novelty’ that arises under '
102.”) (quoting Parker v. Flook, 437 U.S. 584, 588 (1978)). Of
course, the novelty inquiry of ' 102 remains separate and
distinct from that of ' 101. Intellectual Ventures I, 838 F.3d
at 1315. Having found that the claims of the ‘216 Patent are
directed to an abstract idea, however, I must ensure that the
claims possess an inventive concept sufficient for me to
conclude “‘that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’”
Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294).  

17

The claims rely on generic technologies, such as web
browsers, URLs, HTTP servers, and HTML pages, which are not
sufficiently inventive, in and of themselves, to render the
claims non-abstract.

Element (f) of claim 1, which discusses

the selection of “security parameters,” does not describe any
specific type of security improvement.

The ‘216 Patent

describes how in the security attribute table, “a permission
attribute, consisting of the name of the remote user (User ID
202) wishing to give permission and the user to whom permission
is given (Viewer ID 204), may then be stored in a database on
the local computer network by a CGI program executing on a CGI
processer 92.”

‘216 Patent col. 10 ll. 23-25.6

The “security parameters” recited in the claim elements of
claims 1 and 21, even when considered in light of my
construction, are not sufficiently inventive to transform the
claims into patent-eligible applications.

“General privacy

protections are not considered sufficiently inventive” to save a
claim directed to an abstract idea.

Whitepages, Inc. v. Isaacs,

196 F. Supp. 3d 1128, 1136 (N.D. Cal. 2016).

I construed the

6

Other sections of the specification reflect the general
technologies and techniques being used. The specification
explains that the databases may be accessed “by having query
commands embedded in the CGI programs” that “may be provided in
Structured Query Language (SQL) . . . an industry standard query
language which allows access to data in relational database
management systems such as database systems for example.” ‘216
Patent col. 6 ll. 65-67, col. 7 ll. 1-4.
18

terms “security attribute” and “security parameter” as
“information consisting of both (1) the name or User ID of the
page-creating remote user, and (2) the name or Viewer ID of the
user to whom permission is given, where the User ID and Viewer
ID are a unique user identification name or ‘handle.’”
F. Supp. 3d at 157.

TPI, 205

I construed the structure for the claim

element “describing means for the page-creating remote-user to
enter or input security parameters or attributes granting
permission to others to view the personal page” found in several
of the claims at issue to include “a Web page programmed to
prompt the page-creating remote user for the name or User ID of
the remote user to whom the page-creating remote user wishes to
give permission to view the page-creating remote user’s personal
page, and to create a security attribute/parameter” or “a Web
page that prompts the page-creating remote user to send an
electronic mail message to the user to whom the remote user
wishes to give permission, giving the remote user an option to
give permission to view the personal page, and creating a
security attribute/parameter."

Id. at 154.

The security feature of the claims involves three steps: 1)
the user enters the name of a person who will be given access,
2) the system stores the name in a list, 3) the system compares
a visiting user’s name to the list and grants access if the
user’s name is on the list.

Such a basic security measure is
19

not a sufficiently inventive concept.

Ultramercial, Inc. v.

Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) (“Adding
routine additional steps such as . . . restrictions on public
access, and use of the Internet does not transform an otherwise
abstract idea into patent-eligible subject matter.”).

In

CyberSource Corp. v. Retail Decisions, Inc., the Federal Circuit
held that a claim for a method of detecting fraud in credit card
transactions that consisted of obtaining transaction information
associated with an IP address, storing the transaction
information in a list, and utilizing the list to determine if
the transactions are fraudulent was invalid because all three
steps could “be performed in the human mind.”
1372-73 (Fed. Cir. 2011).7

654 F.3d 1366,

Here, the security feature similarly

recites steps that could be performed using a pencil and paper
or the human mind.

A host of an event checking names on a guest

list or recalling from memory who had been invited to the party
would appear to employ the same security feature recited in the
claims.

7

CyberSource was decided before Alice and therefore did not by
terms employ Alice’s two-step framework. The Federal Circuit
has since reaffirmed CyberSource in decisions using the Alice
framework, discussing CyberSource both at step one, Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1333-34 (Fed. Cir.
2015) and at step two, Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1368-69 (Fed. Cir. 2015).
20

Nor does the security feature offer a new solution to a
technological problem.

To be sure, “[w]here a patent arguably

directed toward an abstract idea nevertheless addresses a
technological problem and offers a new solution for that
problem, it may be recognized as including an inventive concept
which will make it eligible for patent protection.”
Supp. 3d at 1269.

Zak, 206 F.

The problem of securing personal information

may take on new dimensions in the digital age, but it is not an
inherently technological problem.

OpenTV, Inc. v. Apple, Inc.,

No. 14-CV-01622-HSG, 2015 WL 1535328, at *4 (N.D. Cal. Apr. 6,
2015) (“The problem of how to transmit, receive, store, and
organize confidential information deriving from multiple sources
is not a creature of the Internet age: solutions to this problem
date back to the invention of smoke signals.”).

TPI presents

the claims as an “Internet-centric solution” to an Internet
problem, but talismanic invocations of the Internet will not
alone transform an abstract idea. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014) (“[N]ot
all claims purporting to address Internet-centric challenges are
eligible for patent.”).8

8

TPI’s effort to frame the claims of the ‘216 Patent in line
with the claims considered in DDR Holdings is unavailing. The
patents in DDR Holdings were directed to “systems and methods of
generating a composite web page that combines certain visual
elements of a ‘host’ website with content of a third-party
merchant.” 773 F.3d at 1248. The Federal Circuit held the
21

When the claim elements are read together, the system TPI
puts forward as an inventive concept simply allows for the
designation of some information onto a personal page and other
information as unrestricted and searchable profile information.
In Zkey, Judge Lew found a system “whereby users input either
pre-defined or ‘dynamically’ new user information and from that
select either other registered or non-registered users from whom
may or may not have access to the user’s information” recited
routine and conventional activities that were not sufficiently
inventive to transform the claim.

2016 WL 7046593, at *7.

Just

as a similar system of selective information sharing was not
sufficiently inventive to transform the claims in Zkey, the twotiered system that emerges from combining the claim elements of
the ‘216 Patent does not save it from invalidity.

claims contained a sufficiently inventive conceptive to be
patent-eligible because they advanced a solution “necessarily
rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” Id. at
1257. The court stated that the claims “do not attempt to
preempt every application of the idea of increasing sales by
making two web pages look the same” but instead “recite a
specific way to automate the creation of a composite web page by
an ‘outsource provider’ that incorporates elements from multiple
sources in order to solve a problem faced by websites on the
Internet.” Id. at 1259.
Here, the claims of the ‘216 Patent do not recite a
specific solution to the problem of privacy on the Internet
beyond a two-tiered system of information sharing. In turn, the
claims purport to preempt every application of idea of
selectively sharing personal information through a two-tiered
system where some information is publically displayed while
other information is held back.
22

TPI relies heavily on Zak, in which claims similar to those
of the ‘216 Patent were found to possess an inventive concept
even though they were directed towards an abstract idea.
Supp. 3d at 1271-73.

206 F.

In Zak, Judge Berg found claims directed

to the abstract ideas of “group collaboration with targeted
communication and restricting public access” possessed an
inventive concept because they specified a solution to “a
business challenge particular to the Internet, namely allowing
ordinary users to maintain dynamic websites by managing the
content of websites and controlling users’ interactions with web
pages.”

Id. at 1270, 1273 (citing DDR Holdings, 773 F.3d at

1257).

He further found that the ordered combination of claim

limitations in the patent narrowed the manner in which users
“will be able to control interactions on their web pages.”

Id.

at 1273 (citing Bascom, 827 F.3d at 1350-52).
As did the solution offered by the claims in Zak, the
solution offered by the claims of the ‘216 Patent falls
somewhere on the spectrum of “a technology-based solution . . .
that overcomes existing problems with other” computer-based
systems and “an abstract-idea-based solution implemented with
generic technical components in a conventional way.”
827 F.3d at 1351.

Bascom,

As the Federal Circuit continues further to

illuminate the precise dimensions of this spectrum, it is useful
to return to the underlying purpose of the ' 101 inquiry, which
23

is to ensure “‘that patent law not inhibit further discovery by
improperly tying up the future use of’ these building blocks of
human ingenuity.”
S. Ct. at 1301).

Alice, 134 S. Ct. at 2354 (quoting Mayo, 132
I find that characterizing the two-tiered

system as an inventive concept “‘would risk disproportionately
tying up’” others’ use of the abstract idea of collecting,
storing, and selectively sharing personal information, whether
in the physical or digital world.

Id. at 2355 (quoting Mayo,

132 S. Ct. at 1294).
Moreover, I conclude that the dependent claims do not
contain the inventive concepts needed to transform them into
patent-eligible applications.

Zkey, 2016 WL 7046593, at *5

(finding claims invalid that were “mostly dependent claims on
claim 1 and are the means by which information is collected,
analyzed, and displayed based on the user’s granting or denial
of access to other registered and non-registered users.”9

9

 Dependent claims 2 and 9 recite the methods of claim 1 and are

likewise directed to the same abstract idea. Dependent claim 2
adds only that each page template is stored as a plurality of
rows in one or more databases on the computer system, an
addition which does not transform the claim into a patentable
application. Dependent claim 9 recites only the addition of
graphics by the user, which again is not sufficient to transform
the abstract idea. Dependent claim 22 is directed to the same
abstract idea of claim 21 and recites the function of retrieving
the selections or entries by the user and displaying the
selections using the selected page template. The displaying of
the selections from claim 21 does not transform the dependent
claim from an abstract idea. Dependent claims 25 and 26 are
directed to the same abstract idea of claim 1 but add the use of
24

IV.

CONCLUSION

For the reasons discussed more fully above, I grant
Facebook’s motion [Dkt. No. 361] for summary judgment and find
the asserted claims of the ‘216 Patent invalid under 35 U.S.C. '
101.

In turn, I deny TPI’s motion [Dkt. No. 369] for summary

judgment in part and treat it as moot in part.
With respect to the remaining outstanding matters, I treat
as moot Facebook’s motion [Dkt. No. 343] to strike new
infringement theories, Facebook’s motion [Dkt. No. 359] for
summary judgment of non-infringement, Facebook’s motion [Dkt.
No. 360] to exclude the testimony of Phillip Green, Facebook’s
motion [Dkt. No. 366] for summary judgment of invalidity as to
claims 21 and 22, and Facebook’s motion [Dkt. No. 409] to strike
the declaration of Dr. Latanya Sweeney.
The Clerk shall enter final judgment for defendants
declaring the ‘216 Patent to be invalid because its subject
matter is not patentable.

/s/ Douglas P. Woodlock______
DOUGLAS P. WOODLOCK
UNITED STATES DISTRICT JUDGE

email to grant authorization. The use of email is not
sufficient to transform the abstract idea. Intellectual
Ventures I, 838 F.3d at 1317-19. 
25