Zak v. Facebook, Inc.
Filing
167
OPINION AND ORDER granting in part 111 Zak's Motion for Partial Summary Judgment on Certain of Facebook's Invalidity Defenses (as to Patent Eligibility), and denying 128 Facebook's Renewed and Amended Motion for Summary Judgment of Invalidity Under 35 U.S.C. § 101. Signed by District Judge Terrence G. Berg. (AChu)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
BRUCE ZAK,
an individual,
4:15-CV-13437-TGB-MJH
Plaintiff,
OPINION AND ORDER
GRANTING IN PART ZAK’S
MOTION FOR PARTIAL
SUMMARY JUDGMENT ON
CERTAIN OF FACEBOOK’S
INVALIDITY DEFENSES (AS
TO PATENT ELIGIBILITY)
(ECF NOS. 111, 143, 148) AND
DENYING FACEBOOK’S
RENEWED AND AMENDED
MOTION FOR
RECONSIDERATION OF
FACEBOOK’S MOTION FOR
SUMMARY JUDGMENT OF
INVALIDITY UNDER 35 U.S.C.
§ 101 (ECF NOS. 128, 132, 157)
vs.
FACEBOOK, INC.,
a Delaware corporation,
Defendant.
In this patent infringement case, Plaintiff Bruce Zak (“Zak”) alleges
that Defendant Facebook, Inc. (“Facebook”) infringes a patent on Zak’s
web site technology, U.S. Patent No. 9,141,720 (the “’720 Patent”).
1
Presently before the Court are the parties’ cross-motions for
summary judgment regarding patent eligibility. 1 , 2 The parties have
submitted written briefs explaining their positions on patent eligibility.3
The Court held oral argument on August 13, 2021. See Notice of Mot.
Hr’g, ECF No. 158; Mot. Hr’g Tr., ECF No. 162. For the reasons stated in
this opinion and order, finding that representative Claim 2 of the ’720
Patent recites patent eligible subject matter, the Court will GRANT in
part Zak’s motion for partial summary judgment dismissing Facebook’s
Facebook’s Motion is before the Court as a motion for reconsideration
under Local Rule 7.1(h)(3). For the reasons set forth below, see infra
Section III, the Court will treat Facebook’s Motion as a new motion for
summary judgment of patent ineligibility.
1
Zak also moves for partial summary judgment dismissing Facebook’s
affirmative defenses of an on-sale bar and obviousness as to certain prior
art combinations. Because both parties have moved for summary
judgment regarding patent eligibility, the Court will decide Zak’s Motion
as to patent eligibility in this opinion and order, and as to the remaining
grounds in a separate opinion and order.
2
Pl.’s Mot. Partial Summ. J. Def.’s Invalidity Defenses (“Zak’s Motion”),
ECF No. 111; Def.’s Opp’n Pl.’s Mot. Partial Summ. J. Def.’s Invalidity
Defenses (“Facebook’s Opposition”), ECF No. 143; Pl.’s Reply Supp. Mot.
Partial Summ. J. Def.’s Invalidity Defenses (“Zak’s Reply”), ECF No. 148;
Def.’s Renewed & Am. Mot. Recons. Def.’s Mot. Summ. J. Invalidity
Under 35 U.S.C. § 101 (“Facebook’s Motion”), ECF No. 128; Pl.’s Opp’n
Def.’s Renewed & Am. Mot. Recons. Def.’s Mot. Summ. J. Invalidity
Under 35 U.S.C. § 101 (“Zak’s Opposition”), ECF No. 132; Def.’s Reply
Supp. Renewed & Am. Mot. Recons. Def.’s Mot. Summ. J. Invalidity
Under 35 U.S.C. § 101 (“Facebook’s Reply”), ECF No. 157.
3
2
affirmative defenses as to patent eligibility, and DENY Facebook’s
motion for summary judgment of patent ineligibility.
I. PROCEDURAL HISTORY
The ’720 Patent, entitled “System and Method for Managing
Content on a Network Interface,” was filed in the United States Patent
and Trademark Office (“USPTO”) on July 11, 2014 and issued on
September 22, 2015. The ’720 Patent is a third-generation continuation
in a patent “family” whose original “parent” application was filed on
February 12, 2003. See generally Zak’s Mot. Ex. 1 (“’720 Patent”), ECF
No. 111-2.
On September 29, 2015, Zak filed this patent infringement case
against Facebook, originally alleging that Facebook infringes the ’720
Patent and another member of the same patent family, U.S. Patent No.
8,713,134 (the “’134 Patent”). Pl.’s Compl., ECF No. 1. On August 30,
2016, by stipulation of the parties, Zak’s infringement claims as to
the ’134 Patent were dismissed with prejudice. Stipulation, ECF No. 31;
Order Granting Stipulation, ECF No. 32. Zak alleges that Facebook
infringes Claims 2-13 of the ’720 Patent in connection with its ubiquitous
Facebook and Instagram web sites and native apps. Facebook answered
on November 30, 2015, alleging that the ’720 Patent is invalid and
denying that it infringes the ’720 Patent. Def’s. Answer, ECF No. 9.
On September 12, 2016, the Court denied Facebook’s original
motion for summary judgment of patent ineligibility, holding that
3
representative Claim 2 of the ’720 Patent recites patent eligible-subject
matter. Op. & Order Den. Def.’s Mot. Summ. J. (“Original Order”), ECF
No. 36.
In response to this lawsuit, Facebook filed four petitions before the
USPTO’s Patent Trial and Appeal Board (“PTAB”) seeking to challenge
the non-obviousness of certain claims of the ’720 Patent through a process
known as inter partes review (“IPR”). On April 4, 2017, the PTAB denied
Facebook’s IPR petitions, and no IPRs were instituted. See Facebook, Inc.
v. Zak, Nos. IPR2017-00002, IPR2017-00003, IPR2017-00004, IPR201700005 (P.T.A.B. Apr. 4, 2017).
On October 12, 2018, the parties filed a joint stipulation on the
constructions of some claim terms within the ’720 Patent. Stipulation,
ECF No. 70. On February 6, 2020, the Court issued an order construing
the disputed claim terms within the ’720 Patent that are material to the
infringement and validity issues in this case, pursuant to Markman v.
Westview Instruments, Inc., 517 U.S. 370 (1996). Order Construing
Disputed Claim Limitations (“Markman Order”), ECF No. 97.
II. BACKGROUND
The Court provided an extensive background of the facts of this case
in its original summary judgment order and elsewhere. See Original
Order (reported at Zak v. Facebook, Inc., 206 F. Supp. 3d 1262 (E.D. Mich.
2016)), ECF No. 36; Markman Order (reported at Zak v. Facebook, Inc.,
2020 WL 589433 (E.D. Mich. Feb. 6, 2020)), ECF No. 97. In summary,
4
plaintiff Bruce Zak4 was a skilled computer programmer who left his job
at Microsoft in the early 2000s to start a new company in Michigan called
EveryWare, Inc. (“EveryWare”). EveryWare was formed around 7Ware,
a software product developed by Zak with input from coinventor Regina
Wilson (who at the time of the invention was Regina Zak, Bruce Zak’s
wife). The original parent application of the ’720 Patent was filed on
7Ware on February 12, 2003.
III. RECONSIDERATION
Facebook’s Motion is before the Court as a motion for
reconsideration under Local Rule 7.1(h)(3). See Original Order, ECF No.
36. The Court is not persuaded that Facebook has established grounds
for reconsideration. In general, Facebook seeks reconsideration alleging
newly available evidence and an intervening change in the controlling
law on patent eligibility. As to the first ground, the new evidence is a
report from Facebook’s technical expert on validity. In the report,
Facebook’s technical expert describes decades-old web site technology in
view of the original parent application’s February 12, 2003 filing date.
Although this report may be new, its content is not “newly available.”
Newly researched might be the better way to put it. And, in supporting
its position entirely with this newly researched evidence, Facebook
cannot be said to be seeking “reconsideration.” Accordingly, the Court
will treat Facebook’s Motion as a new motion for summary judgment of
4
Mr. Zak passed away at the age of 55 on July 14, 2021.
5
patent ineligibility based on new evidence. As to the second ground—
intervening change in the controlling law—the most controlling law on
patent eligibility, namely, Supreme Court precedent, has not changed.
But the Court need not address these points in detail because it will
decide Facebook’s Motion in the exercise of its discretion. See E.D. Mich.
LR 7.1(h)(3) (setting forth grounds for reconsideration “[g]enerally, and
without restricting the court’s discretion”). The reasons are simple. First,
Zak’s Motion is based on the same new evidence as Facebook’s Motion.
Accordingly, there is little judicial economy to be gained by declining to
decide Facebook’s Motion for lack of newly available evidence. Second,
while the most controlling law on patent eligibility has not changed, the
Court is mindful that the Federal Circuit has decided many patent
eligibility cases in the five years since the Court’s Original Order. Having
considered the cases cited by Facebook, it is clear that the Federal Circuit
has provided further guidance on applying Supreme Court precedent in
an area of patent law that was still under development at the time of the
Court’s Original Order. Accordingly, Facebook’s discussion of these cases
and their applicability to this case is helpful to the Court and will be
considered.
IV. ’720 PATENT
A. Patented System
The ’720 Patent is directed to a system for managing web site
content. The specification contemplates that prior to the ’720 Patent,
6
existing web site technology was focused on creating advanced features.
These advanced features required technical personnel with increasingly
sophisticated levels of expertise in the information technology used to
manage web sites. According to the specification, existing web site
technology thus created problems with keeping web sites up to date. Even
for large entities with substantial resources, there might be a limited
number of technical personnel. Moreover, technical personnel might not
be best situated to manage web sites from a content standpoint.
Accordingly, even routine content management might require multiple
interactions and communications between different personnel in
different roles. The specification contemplates that the key to solving
these problems is customizable and automated features that would allow
non-technical users to control the information technology used to manage
web sites. Allowing non-technical users to manage content without the
assistance and intervention of technical personnel saves time, resources,
and the possibility of errors, and supports the allocation of content
responsibilities. ’720 Patent 1:13-2:15, ECF No. 111-2 at PageID.4247.
B. Claims
The parties have agreed that for purposes of patent eligibility,
Claim 2 of the ’720 Patent is representative of the asserted claims.
Representative Claim 2 recites:
2. A system, including a computer and a web
site, for managing content displayable on the web
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site to multiple users of the system who have
profiles stored on the system, comprising:
at least a first configurable application and a
second configurable application, wherein each of
the first and second configurable applications
includes content that is stored on the computer
and that is displayable to the users of the web site,
and wherein one of the applications is a biography
application that is managed by the computer and
that displays biographical information that is
received from and that is about one of the users of
the system;
wherein at least one of the configurable
applications is generated by the computer at least
in part based on inputs received from multiple
users of the system, the inputs including at least
one of text, graphics, sounds, documents, and
multi-media content;
an administrator portal through which users
of the system are permitted to act in the role of an
administrator of certain web pages, wherein a user
acting in the role of an administrator may manage
business rules that utilize profiles of the users of
the system to control interaction of the users with
the certain web pages, wherein each user of the
system is permitted to act in the role of an
administrator at least with respect to a subset of
web pages on the web site; and
at least one configurable link on the web site
that points to at least one of the plurality of
configurable applications,
wherein the at least one configurable link is
generated by the computer based at least in part
on a profile attributed to at least one user of the
system and at least one rule that is configurable
by a user acting in the role of an administrator and
which applies user profiles to select what content
8
stored on the computer can be viewed by which of
the users of the system.
Id. 22:52-23:20, ECF No. 111-2 at PageID.4257-4258.
Stripped of excess verbiage, representative Claim 2 recites a
computer-based system for managing user interaction with web site
content. In addition to the computer and the web site, the claim language
involves user profiles, configurable applications, configurable business
rules, configurable access rules, and configurable links. More specifically,
the claim language centers on the relationship between a configurable
application whose content is stored on the computer and displayable to
users, a configurable access rule that applies user profiles to select what
content can be viewed by which users, and a configurable link on the web
site that points to the configurable application. According to the claim
language, the configurable application is generated by the computer
based on user inputs. Zak identifies the configurable link “in particular”
as a point of novelty over the prior art. Zak’s Mot. Br. 11, ECF No. 111 at
PageID.4215. According to the claim language, the configurable access
rule is configurable by an administrator via an administrator portal, and
the configurable link is generated by the computer based on a user profile
and the configurable access rule.
C. Constructions
With respect to the various terms in representative Claim 2, the
constructions of record largely incorporate generic definitions and
9
descriptions from the specification. By stipulation of the parties, “profile,”
“user profile,” and “profile information” mean “information about a user
of the website.” “Application” means “a unit of content provided on a web
site” and “configurable application” means “an application that can be
modified and/or configured by a user of the web site.” “Business rule(s)”
and “rule” mean “any rule incorporated into a system that controls how
the system functions.” “Administrator portal” means “interface used to
manage applications and/or business rules” and “administrator” means
“any user of the web site that has the ability to create, update, delete,
and/or schedule a business rule of the web site.” Stipulation 1-2, ECF No.
70 at PageID.1833-1834. See also ’720 Patent 10:27-28 (describing a
“profile”), 5:20-21 (defining “application”), 5:45-46 (defining “configurable
application”), 8:29-30 (defining “business rule”), 7:20-22 (describing an
“administrator portal”), 9:22-27 (describing an “administrator”), ECF No.
111-2 at PageID.4249-4251.
At the claim construction stage of this case, among other terms in
representative Claim 2, the parties requested that the Court construe the
term “configurable link.” The Court construed the term to mean “a
mechanism by which a user of a web site activates an application, where
the mechanism can be modified or configured by the user as permitted by
any relevant business rules.” Markman Order 11-12, ECF No. 97 at
PageID.3178-3179. See also ’720 Patent 5:53-54 (defining “link”), 5:62-64
(defining “configurable link”), ECF No. 111-2 at PageID.4249. As noted
10
above, according to the claim language, the configurable access rule is
configurable by an administrator, and the configurable link is generated
by the computer based on a user profile and the configurable access rule.
Put together with the Court’s construction, Zak reads the claim language
as reciting that the configurable link can be modified or configured by an
administrator by modifying or configuring the configurable access rule.
Zak’s Opp’n Br. 10 n.1, ECF No. 132 at PageID.7526.
V. LEGAL STANDARDS
“Summary judgment is as available in patent cases as in other
areas of litigation.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d
1264, 1265 (Fed. Cir. 1991).
A. Standard for Summary Judgment
Under Rule 56, summary judgment is proper when there is “no
genuine dispute as to any material fact,” and the moving party is entitled
to judgment as a matter of law. Fed. R. Civ. P. 56(a). “In deciding a motion
for summary judgment, the court must view the evidence in the light
most favorable to the non-moving party, drawing all reasonable
inferences in that party’s favor.” Sagan v. United States, 342 F.3d 493,
497 (6th Cir. 2003). “Where the moving party has carried its burden of
showing that the pleadings, depositions, answers to interrogatories,
admissions and affidavits in the record, construed favorably to the nonmoving party, do not raise a genuine issue of material fact for trial, entry
of summary judgment is appropriate.” Gutierrez v. Lynch, 826 F.2d 1534,
11
1536 (6th Cir. 1987) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986)). The court does not weigh the evidence to determine the truth of
the matter, but rather, to determine if the evidence produced creates a
genuine issue for trial. Sagan, 342 F.3d at 497 (quoting Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 249 (1986)).
In order to succeed on its motion for summary judgment, the
moving party must show 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, 477 U.S. at 322. The moving party discharges its
burden by “‘showing’—that is, pointing out to the district court—that
there is an absence of evidence to support the nonmoving party’s case.”
Horton v. Potter, 369 F.3d 906, 909 (6th Cir. 2004) (citing Celotex, 477
U.S. at 325). The burden then shifts to the nonmoving party, who “must
do more than simply show that there is some metaphysical doubt as to
the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 586 (1986). The non-moving party must put forth enough
evidence to show that there exists “a genuine issue for trial.” Horton, 369
F.3d at 909 (citing Matsushita, 475 U.S. at 587). Summary judgment is
not appropriate when “the evidence presents a sufficient disagreement to
require submission to a jury.” Anderson, 477 U.S. at 251-52.
The existence of a factual dispute alone does not, however, defeat a
properly supported motion for summary judgment—the disputed factual
issue must be material. “The judge’s inquiry, therefore, unavoidably asks
12
whether reasonable jurors could find . . . that the plaintiff is entitled to a
verdict—‘whether there is [evidence] upon which a jury can properly
proceed to find a verdict for the party producing it, upon whom the onus
of proof is imposed.’” Id. at 252 (alteration in original) (citation omitted).
A fact is “material” for purposes of summary judgment when proof of that
fact would establish or refute an essential element of the claim or a
defense advanced by either party. Kendall v. Hoover Co., 751 F.2d 171,
174 (6th Cir. 1984) (citation omitted).
B. Patent Eligibility
The Patent Act establishes invalidity as a defense to infringement.
35 U.S.C. § 282(b). Under an invalidity defense, an accused infringer can
“attempt to prove that the patent never should have issued in the first
place.” Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 96 (2011). A patent
enjoys a statutory presumption of validity, and the party asserting
invalidity must prove invalidity by clear and convincing evidence. 35
U.S.C. § 282(a); Microsoft, 564 U.S. at 95.
A claim of a patent is invalid if it is not directed to patent eligible
subject matter pursuant to 35 U.S.C. § 101. Section 101 provides that a
patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof.” 35 U.S.C. § 101. But the Supreme Court has held
that the statutory definition of patent-eligible subject matter includes an
implicit exception for laws of nature, natural phenomena, and abstract
13
ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The judicial
exception is driven by a concern of preemption. Id. Laws of nature,
natural phenomena, and abstract ideas are not patent-eligible because
they are “building blocks of human ingenuity.” Id. at 217. In determining
patent eligibility, courts must distinguish between patents that “claim
the building blocks” and those whose claims “integrate the building
blocks into something more.” Id. Courts must “tread carefully” lest the
judicial exception “swallow all of patent law.” Id. It is not enough that the
claims “involve” a patent-ineligible concept because “[a]t some level, all
inventions embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.” Id. (quotation, alteration, and
citation omitted).
The Supreme Court has articulated a two-step framework for
determining patent eligibility. See id. at 217-18 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73, 77-79
(2012)). At step one, courts must determine whether the claims are
“directed to” a patent-ineligible concept, such as an abstract idea. Id. at
218. If the claims are directed to a patent-ineligible concept, at step two,
courts must consider the claim elements “both individually and as an
ordered combination” to determine whether the claims contain
“additional elements” that constitute an “inventive concept” sufficient to
“transform” the concept into a patent-eligible “application.” Id. at 217-18
(quotation and citation omitted). These “additional elements” must
14
involve
more
than
performance
of
“well-understood,
routine,
conventional activities previously known to the industry.” Id. at 225
(quotation and citation omitted).
Patent eligibility is a question of law based on underlying factual
findings. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). At
step two, the determination of whether the claims contain an inventive
concept is a question of law that may be informed by factual
determinations of whether a claim element or combination of claim
elements was well-understood, routine, and conventional. BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (citing
Berkheimer, 881 F.3d at 1368). Any fact concerning whether a claim
element or combination of claim elements was well-understood, routine,
and conventional must be proven by clear and convincing evidence.
Berkheimer, 881 F.3d at 1368 (citing Microsoft, 564 U.S. at 95). When
there is no genuine dispute as to any material fact concerning whether a
claim element or combination of claim elements was well-understood,
routine, and conventional, the legal determination of whether the claims
contain an inventive concept can be decided on summary judgment as a
matter of law. Id.
VI. PATENT ELIGIBILITY ANALYSIS
In their motions for summary judgment, Zak moves for summary
judgment
dismissing
Facebook’s
15
affirmative
defense
of
patent
ineligibility, and Facebook moves for summary judgment that the
asserted claims are invalid for lack of patent eligibility.
A. Original Order
In the Original Order, the Court held that representative Claim 2
of the ’720 Patent recites patent eligible subject matter. Original Order,
ECF No. 36. At step one, the Court determined that representative Claim
2 is directed to the abstract idea of “group collaboration with targeted
communication and restricting public access” and “does not clearly
improve the functioning of a computer.” Id. 16, ECF No. 36 at PageID.895.
At step two, however, the Court noted that the claim language “does not
simply dictate that communication must be targeted and access
restricted.” Id. 21, ECF No. 36 at PageID.900. The Court determined that
representative Claim 2 contains an inventive concept because it and its
claim elements “recite a specific, discrete implementation of the abstract
idea.” Id. (quoting BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)).
The parties do not ask the Court to revisit its previous step one
determination. The dispute between the parties concerns whether new
evidence on the web site technology existing at the time of the invention
bears on the Court’s previous step two determination that representative
Claim 2 contains an inventive concept. As will become clear from the
below discussion of their positions on patent eligibility, the parties focus
on the configurable link.
16
B. New Evidence
The new evidence is a report from Facebook’s technical expert on
validity, Dr. Weissman. Zak’s Mot. Ex. 3 (“Weissman Report”), ECF No.
111-4. On the issue of patent eligibility, Dr. Weissman concludes that the
asserted claims are not directed to an improvement in web site
technology because they “recite no more than functional results using
routine and conventional technologies and techniques.” Weissman
Report ¶¶ 488, 495, ECF No. 111-4 at PageID.4646, 4658. Zak’s technical
expert on validity, Dr. Mangione-Smith, has not rebutted Dr. Weissman’s
testimony on patent eligibility. Facebook’s Mot. Ex. 3 (“Mangione-Smith
Rebuttal Report”), ECF No. 128-4.
Dr. Weissman testifies that the web site technology existing at the
time of the invention “enabled users to provide content to a web site and
configure rules that used user information to control users’ interaction
with that site and content” and “provided functionality for receiving and
storing content and for retrieving that content to generate web pages.”
Weissman Report ¶¶ 489-90, ECF No. 111-4 at PageID.4646-4655. Dr.
Weissman also describes that “URLs that were configurable or
modifiable by a user and that included or were generated based on user
action or information were commonplace.” Id. ¶ 491, ECF No. 111-4 at
PageID.4655-4656. For example, Dr. Weissman describes that Yahoo!
Calendar allowed users to create and share events, and used URLs that
included date, time, and title information input by the users who created
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the events to identify the events and enable other users to view them. Id.
¶¶ 489, 491, ECF No. 111-4 at PageID.4646-4656. Dr. Weissman also
describes that shopping web sites used URLs that included unique
shopping IDs or user IDs to identify users. Id. ¶ 493, ECF No. 111-4 at
PageID.4657-4658.
C. Arguments
Zak does not dispute that Dr. Weissman’s testimony is unrebutted.
Nor does Zak dispute Dr. Weissman’s description of existing web site
technology. Put in terms of the claim language, there does not appear to
be a genuine dispute that user profiles, configurable applications,
configurable business rules, configurable access rules, and configurable
links were individually well-understood, routine, and conventional.
Moreover, there does not appear to be a genuine dispute that these items
were conventionally used to some degree in combination to manage user
interaction with web site content.
Zak nonetheless argues that Facebook’s patent ineligibility defense
fails as a matter of law. As noted above, Zak identifies the configurable
link “in particular” as a point of novelty over the prior art. Zak’s Mot. Br.
11, ECF No. 111 at PageID.4215. Zak emphasizes that according to the
claim language, the configurable link is generated by the computer based
on a user profile and the configurable access rule. While appearing to
accept that the URLs described by Dr. Weissman are generated based on
user profiles, Zak argues that they are not generated based on
18
configurable access rules. Zak takes issue with Dr. Weissman’s testimony
for addressing the configurable link’s claim elements “individually”
because the “decision to include particular information” in the
configurable link “is itself an ordered combination.” Id. 14, ECF No. 111
at PageID.4218.
It follows, Zak argues, that Facebook’s patent ineligibility defense
fails as a matter of law for lack of evidence that the ordered combination
of the configurable link’s claim elements was well-understood, routine,
and conventional. See id. 14-15 (arguing that the lack of evidence on “this
particular ordered combination” is “fatal to Facebook’s § 101 defense”),
ECF No. 111 at PageID.4218-4219. Zak also argues that, in any event,
Facebook cannot prevail on summary judgment because the PTAB’s nonobviousness findings create a genuine dispute on this point. See Zak’s
Opp’n Br. 21-23 (arguing that the PTAB’s non-obviousness findings are
“compelling evidence” that the ordered combination of the configurable
link’s
claim
elements
was
not
well-understood,
routine,
and
conventional), ECF No. 132 at PageID.7537-7539.
Facebook does not dispute that the URLs described by Dr.
Weissman are not generated based on configurable access rules. Likewise,
Facebook does not dispute the lack of evidence that the ordered
19
combination of the configurable link’s claim elements was wellunderstood, routine, and conventional.5
However, as to Zak’s argument that its patent ineligibility defense
therefore fails as a matter of law, Facebook argues that Zak misstates
the law on the step two determination. The Court agrees. The Federal
Circuit has explained that whether the ordered combination of the
configurable link’s claim elements was well-understood, routine, and
conventional is not the “appropriate question.” See Chamberlain Grp.,
Inc. v. Techtronic Indus., 935 F.3d 1341, 1348-49 (Fed. Cir. 2019). Rather,
there are “two distinct questions”: (1) the underlying factual
determination of whether the configurable link’s claim elements were
individually well-understood, routine, and conventional, and (2) the legal
determination of whether the configurable link’s claim elements as an
ordered combination constitute an inventive concept or instead add
It is more accurate to say that the Court is not persuaded that Facebook
genuinely disputes these points. In response to the Court’s questioning at
oral argument, Facebook argued that the date and time information in
the Yahoo! Calendar URLs is “enough” because “the claims . . . just say
use a business rule” and “the patent that tells us that a business rule is
any rule incorporated into the system that controls how the system
functions.” Mot. Hr’g Tr. 39:13-40:10, ECF No. 162 at PageID.1022110222. However, as opposed to a configurable business rule in general,
the claim language specifically involves the configurable access rule—i.e.,
that “which applies user profiles to select what content stored on the
computer can be viewed by which of the users of the system.” ’720 Patent
23:14-20, ECF No. 111-2 at PageID.4258.
5
20
nothing to the abstract idea not already present when they are considered
separately. See id. (citing Mayo, 566 U.S. at 73, 79).
Facebook argues that as opposed to improperly addressing the legal
determination, Dr. Weissman’s testimony properly addresses the
underlying factual determination. The Court agrees. As Facebook
explains, Dr. Weissman’s testimony demonstrates that user profiles,
configurable access rules, and configurable links were individually wellunderstood, routine, and conventional, and conventionally used to some
degree in combination. See Facebook’s Opp’n Br. 15 (arguing that “Dr.
Weissman not only showed that the claimed features were well-known
individually, but explained how those feature [sic, features] were actually
conventionally used in combination with each other through well-known
systems and technologies”), ECF No. 143 at PageID.8977.
With respect to the PTAB’s non-obviousness findings, Facebook
argues that they are irrelevant because novelty and non-obviousness are
distinct from patent eligibility. If Zak was relying on the PTAB’s nonobviousness findings to imply that the configurable link’s claim elements
as an ordered combination constitute an inventive concept, the Court
would agree that they are irrelevant. This is the very point the Federal
Circuit was illustrating in Chamberlain. Chamberlain, 935 F.3d at 134849; see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed.
Cir. 2018) (explaining that it is not “enough for subject-matter eligibility
that claimed techniques be novel and nonobvious in light of prior art,
21
passing muster under 35 U.S.C. §§ 102 and 103”) (collecting cases). But
Zak relies on the PTAB’s non-obviousness findings for the stated purpose
of creating a genuine dispute concerning whether the ordered
combination of the configurable link’s claim elements was wellunderstood, routine, and conventional. Although Facebook does not
address Zak’s reason for relying on the PTAB’s non-obviousness findings,
the Court nonetheless agrees that they are irrelevant. The PTAB’s nonobviousness findings do not create a genuine dispute for the simple
reason that they were not made in light of Dr. Weissman’s references.
Compare Zak’s Mot. Br. 11-12 n.2 (noting that Facebook’s IPR petitions
were based on “Boyce,” “Weiss,” and “Bezos” references), ECF No. 111 at
PageID.4215-4216, with Weissman Report ¶¶ 489-90, 493 (describing
“Hill,” “Neibauer,” and “Morgan” references), ECF No. 111-4 at
PageID.4646-4655, 4657-4658.
D. Step Two Determination
For the reasons set forth below, the Court finds that the new
evidence does not raise any genuine dispute as to any material fact.
Moreover, the Court finds that representative Claim 2 contains an
inventive concept as a matter of law and therefore recites patent eligible
subject matter. Zak is therefore entitled to summary judgment
dismissing Facebook’s affirmative defense of patent ineligibility.
Given Dr. Weissman’s unrebutted testimony, the Court accepts
that user profiles, configurable access rules, and configurable links were
22
individually well-understood, routine, and conventional. As well, the
Court accepts that these items were conventionally used to some degree
in combination to manage user interaction with web site content. At the
same time, given that Facebook does not genuinely dispute the lack of
evidence on this point, the Court accepts that the ordered combination of
the configurable link’s claim elements—i.e., that the configurable link is
generated by the computer based on a user profile and the configurable
access rule—was not well-understood, routine, and conventional. This
last factual determination does not, as Zak appears to assume, resolve
the issue of patent eligibility. But it is nonetheless important because the
overall step two determination can proceed to the legal determination of
whether the configurable link’s claim elements as an ordered
combination constitute an inventive concept or instead add nothing to the
abstract idea not already present when they are considered separately.
Berkheimer, 881 F.3d at 1368; Chamberlain, 935 F.3d at 1348-49.
It follows that, despite Dr. Weissman’s testimony, and despite the
Court agreeing with Facebook on procedural aspects of the law on the
step two determination, the record simply sets the stage for the Court to
make the step two legal determination in much the same way it did before.
Put in context of the Court’s previous step one determination that the
claim is directed to the abstract idea of group collaboration with targeted
communication and restricting public access, representative Claim 2
contains “additional elements” that as an “ordered combination”
23
constitute an “inventive concept” sufficient to “transform” the concept
into a patent-eligible “application.” Alice, 573 U.S. at 217-18 (quotations
and citations omitted).
The Supreme Court has instructed courts that patent eligibility is
“only a threshold test” that precedes consideration of whether the
claimed invention satisfies the Patent Act’s novelty, non-obviousness,
enablement, and written description requirements. Bilski v. Kappos, 561
U.S. 593, 602 (2010) (citing 35 U.S.C. §§ 101, 102, 103, and 112 (pre-AIA).
The Supreme Court has also instructed courts to “tread carefully” lest the
judicial exception “swallow all of patent law.” Alice, 573 U.S. at 217. The
Court therefore finds it instructive to start at first principles.
In the context of the ’720 Patent, representative Claim 2 does not
purport to preempt all use of the abstract idea, but instead, seeks to
improve existing web site technology the same way that “[a]t some level,
all inventions embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.” Id. at 216-17 (quotation,
alteration, and citation omitted). The Court observes that the
specification seems to write against a blank slate where customizable and
automated features that would allow non-technical users to control the
information technology used to manage web sites simply did not exist.
While Dr. Weissman’s testimony demonstrates that the patented system
may not have been as innovative as the specification contemplates,
neither is representative Claim 2 drawn to “wholly generic computer
24
implementation” of any “longstanding” or “fundamental” method of
organizing human activity. Id. at 220, 224-25. Rather, in its application
of the abstract idea, representative Claim 2 requires “doing something to”
a web site, “not simply doing something on” a web site, “a difference that
the [Federal Circuit in DDR Holdings] regarded as important to the issue
of patent eligibility.” See Affinity Labs of Tex., LLC v. DirecTV, LLC, 838
F.3d 1253, 1262 (Fed. Cir. 2016) (summarizing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir. 2014)).
Similarly, the Federal Circuit has held that “[s]oftware can make
non-abstract improvements to computer technology just as hardware
improvements can.” Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327,
1335 (Fed. Cir. 2016). Although Facebook uses Dr. Weissman’s testimony
to undermine the innovativeness of the patented system, the complex,
technical nature of Dr. Weissman’s description of existing web site
technology demonstrates that representative Claim 2 is firmly in the
realm of non-abstract, technical application of the abstract idea. See SAP,
898 F.3d at 1169 (“What is needed is an inventive concept in the nonabstract application realm.”).
Turning to the issue of whether representative Claim 2 contains an
inventive concept, the Court, like the parties, focuses on the configurable
link. At the outset, the Court notes that representative Claim 2 is a
“system” claim whose claim language involves generating, but not
necessarily using, the configurable link. More specifically, the claim
25
language at issue appears in a “wherein” clause at the end of the claim.
For reference, the asserted “method” claims, whose claim language
similarly involves generating the configurable link, include further claim
language that involves using the configurable link. For example,
according to the claim language of independent Claim 7 and dependent
Claim 10, when a user permitted to view the configurable application
selects the configurable link, the computer “selectively” displays content
of the configurable application, which includes applying the configurable
access rule to their user profile to select what content they can view. ’720
Patent 23:14-20 (representative Claim 2 “wherein” clause), 23:44-24:19
(independent Claim 7), 24:36-41 (dependent Claim 10), ECF No. 111-2 at
PageID.4258.
Zak has maintained throughout this case that as opposed to being
generic features of the patented system, the configurable links together
with the configurable access rules implement a solution to a problem that
arose during the 7Ware development process. See generally Pl.’s Opp’n
Def.’s Mot. Summ. J. Invalidity Under 35 U.S.C. § 101 (“Zak’s Original
Opposition”), ECF No. 21. Zak maintains that because non-technical
users were allowed to freely manage web site content broadly available
to other users, for privacy reasons, it became desirable to enable them to
control what content can be viewed by which users. Zak explains that the
privacy function was achieved by allowing users to configure the
configurable access rules, and by programming the computer to
26
automatically generate the configurable links based on the configurable
access rules. Zak’s Original Opp’n Br. 4-5, ECF No. 21 at PageID.397-398.
In response to the Court’s questioning at oral argument, Zak further
explained that by generating the configurable links based on the
configurable access rules, the computer “associates” the configurable
access rules with the configurable links, thus enabling it to easily retrieve
and apply the configurable access rules when the configurable links are
selected. Mot. Hr’g Tr. 29:18-32:8, ECF No. 162 at PageID.10211-10214.
In light of this background, the Court once again finds the Federal
Circuit’s BASCOM decision instructive. In BASCOM, the Federal Circuit
held that an inventive concept exists when claims “recite a specific,
discrete implementation of the abstract idea” where the “particular
arrangement of elements is a technical improvement over prior art ways”
of applying the abstract idea. BASCOM, 827 F.3d at 1350. In accordance
with these principles, representative Claim 2 does not generically recite
any way of using user profiles, configurable access rules, and
configurable links in combination to manage user interaction with web
site content. Instead, representative Claim 2 contains an inventive
concept because as an ordered combination, the configurable link’s claim
elements recite that the configurable link is generated by the computer
in a specific way, namely, based on a user profile and the configurable
access rule, and the specific way the configurable link is generated is an
27
improvement to web site technology that pertains to solving the problem
of enabling users to control what content can be viewed by which users.
In an effort to show that representative Claim 2 does not contain
an inventive concept, Facebook cites Federal Circuit cases invalidating
claims that “recite only functional results without specifying how to
achieve those results.” Facebook’s Mot. Br. 10-11, ECF No. 128 at
PageID.7384-7385. See, e.g., Affinity Labs of Tex., LLC v. Amazon.com
Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (holding at step one that claims
are directed to an abstract idea where they have a “purely functional
nature” and “do no more than describe a desired function or outcome,
without providing any limiting detail that confines the claim to a
particular solution to an identified problem”); id. at 1271 (holding that
an inventive concept does not exist when claims thus “do not go beyond
‘stating [the relevant] functions in general terms, without limiting them
to technical means for performing the functions that are arguably an
advance over conventional computer and network technology’”) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016)) (alteration in original); Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1341-42 (Fed. Cir. 2017) (holding that an
inventive concept does not exist when claims “merely describe the
functions of the abstract idea itself, without particularity” in connection
with “generic data structures”); Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (holding at step one
28
that claims are directed to an abstract idea where they recite “functional
results” but do not “sufficiently describe how to achieve these results in
a non-abstract way”); id. at 1339 (holding that an inventive concept does
not exist when claims thus “merely recit[e] an abstract idea performed
on a set of generic computer components”).
In
reliance
on
these
principles,
Facebook
argues
that
representative Claim 2 does not contain an inventive concept because it
does not specify how to generate the configurable link. Facebook’s Reply
Br. 5 (arguing that “Zak never explains how its claims specify how to
create . . . [configurable] links”), ECF No. 157 at PageID.10041. But
according to the claim language, the configurable link is generated by the
computer based on a user profile and the configurable access rule. 6
Because the configurable link is generated in a specific way,
representative Claim 2 does not recite the type of “pure” functionality or
“mere” results as the claims at issue in the cases cited by Facebook. The
Federal Circuit has explained that cases invalidating result-oriented
claims “hearken back to a foundational patent law principle: that a result,
While the Court paraphrases the claim language for brevity, it notes
that the actual claim language at issue is: “wherein the at least one
configurable link is generated by the computer based at least in part on
a profile attributed to at least one user of the system and at least one rule
that is configurable by a user acting in the role of an administrator and
which applies user profiles to select what content stored on the computer
can be viewed by which of the users of the system.” ’720 Patent 23:14-20,
ECF No. 111-2 at PageID.4258.
6
29
even an innovative result, is not itself patentable.” Finjan, Inc. v. Blue
Coat Sys., 879 F.3d 1299, 1305 (Fed. Cir. 2018). On the other hand, the
Federal Circuit has explained that such cases are distinguishable when
claims recite “more than a mere result” in the form of “specific steps . . .
that accomplish the desired result.” Id. (holding at step one that the
challenged claims were patent eligible). To the extent the result is, as
Facebook argues, generating the configurable link, representative Claim
2 recites more than the mere result in the form of the specific way the
configurable link is generated.
Facebook also argues that representative Claim 2 does not contain
an inventive concept because it does not specify how the configurable link
is used in connection with enabling users to control what content can be
viewed by which users. Facebook’s Reply Br. 5 (arguing that “Zak never
explains how its claims specify how to . . . use [configurable] links or how
to achieve their functional results”), ECF No. 157 at PageID.10041. As
noted above, representative Claim 2 is a “system” claim whose claim
language involves generating, but not necessarily using, the configurable
link. Facebook’s argument thus refers, not to a functional result recited
without specifying how to achieve it, but to a result that representative
Claim 2 does not purport to recite at all.
The Federal Circuit has held that when a tool is part of an overall
system, “[a] claim that is directed to improving the functionality of [that]
tool does not necessarily need to recite how that tool is applied in the
30
overall system in order to constitute a technological improvement that is
patent-eligible.” Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d
1143, 1151 (Fed. Cir. 2019) (“KPN”) (internal parentheticals omitted).7 In
KPN, the Federal Circuit addressed claims drawn to an error checking
device for generating “check data” used by error detection systems to
perform error detection in data transmissions. Id. The challenged claims
recited a new way of generating check data that enabled error detection
systems to detect previously undetectable systematic errors. Id. Similar
to Facebook’s argument here, the accused infringer argued that the
challenged claims were “doomed to abstraction” because they did not
recite a “last application step” of using check data generated by the error
checking device to perform error detection. Id. The Federal Circuit
rejected this argument because the challenged claims recited a
“sufficiently specific implementation” of the error checking device that
“improves the functioning of the overall technological process.” Id.
“Importantly,” the Federal Circuit explained, as opposed to the “mere
desired result” of detecting previously undetectable systematic errors,
the challenged claims recited a “specific solution for accomplishing that
goal.” Id.
Although the Federal Circuit in KPN held at step one that the
challenged claims were patent eligible, its holding arose in the same
context of distinguishing cases invalidating result-oriented claims. See id.
at 1150-53.
7
31
In accordance with these principles, representative Claim 2 does
not generically recite using the configurable link in connection with
enabling users to control what content can be viewed by which users.
Instead, representative Claim 2 recites an improvement to web site
technology that pertains to solving that problem in the form of the
specific way the configurable link is generated. More specifically, the
configurable link is generated by the computer based on a user profile
and the configurable access rule, thus enabling it to easily retrieve and
apply the configurable access rule when the configurable link is selected.
Accordingly, while representative Claim 2 does not include further claim
language that involves using the configurable link, this does not preclude
the existence of an inventive concept with respect to the specific way the
configurable link is generated.
Facebook also argues that representative Claim 2 does not contain
an inventive concept because user profiles, configurable access rules, and
configurable links are abstract ideas. On this point, Facebook urged the
Court at oral argument to consider, in particular, the Federal Circuit’s
PersonalWeb and Two-Way Media decisions. Mot. Hr’g Tr. 22:13-23:2,
ECF No. 162 at PageID.10204-10205 (arguing that “they are on all fours
with what we have here”).
In PersonalWeb, the Federal Circuit addressed claims drawn to
using a “content-based identifier” to perform the data-management
functions of controlling access to data items, retrieving data items, and
32
marking data items for deletion. PersonalWeb Techs. LLC v. Google LLC,
2021 U.S. App. LEXIS 23980, at *3-4 (Fed. Cir. Aug. 12, 2021). The
Federal Circuit held at step one that the challenged claims were directed
to an abstract idea because they recited a combination of “mental
processes” (i.e., using the content-based identifier, comparing the
content-based identifier against other values, and performing the datamanagement functions) that were each an abstract idea and were “clearly
focused” on the “combination” of the abstract ideas. Id. at *9-14 (quoting
Elec. Power, 830 F.3d at 1354). “Stringing together the claimed steps by
adding one abstract idea to another,” the Federal Circuit explained,
“amounts merely to the abstract idea of using a content-based identifier
to perform an abstract data-management function.” Id. at *14 (quotation,
alteration, and citation omitted). At step two, the Federal Circuit held
that an inventive concept did not exist because, to the extent the
challenged claims recited “inventive use” of the content-based identifier,
they “just restate the abstract ideas.” Id. at *16-17.
In Two-Way Media, the Federal Circuit addressed a claim drawn to
routing data over a communications network. Two-Way Media, 874 F.3d
at 1334-35. The Federal Circuit held at step one that the challenged claim
was directed to an abstract idea because it recited a series of “functional
results”
(i.e.,
converting,
routing,
controlling,
monitoring,
and
accumulating records) but did not “sufficiently describe how to achieve
these results in a non-abstract way.” Id. at 1337. At step two, the Federal
33
Circuit noted that the challenged claim recited data “complying with the
specifications of a network communication protocol” and routing data “in
response to selection signals received from the users.” Id. at 1339. But,
the Federal Circuit explained, the challenged claim did not specify the
“rules forming the communication protocol” or the “parameters for the
user signals,” thus “precluding their contribution to the inventive concept
determination.” Id.
Having given these cases careful consideration, the Court is not
persuaded that representative Claim 2 does not contain an inventive
concept. At bottom, what Facebook cannot overcome at step two of the
“threshold” patent eligibility test is that representative Claim 2 does not
generically recite any way of using user profiles, configurable access rules,
and configurable links in combination to manage user interaction with
web site content. Instead, representative Claim 2 contains an inventive
concept because it recites that the configurable link is generated by the
computer in a specific way, and the specific way the configurable link is
generated is an improvement to web site technology that pertains to
solving the problem of enabling users to control what content can be
viewed by which users.
For this reason, the Court finds that the Federal Circuit’s
PersonalWeb and Two-Way Media decisions are distinguishable. For
instance, with respect to user profiles, configurable access rules, and
configurable links, an inventive concept exists irrespective of whether
34
these items are abstract ideas. More specifically, an inventive concept
exists because the specific way that these items are used in “combination”
and put to “inventive use” to manage user interaction with web site
content goes further than merely amounting to or restating the abstract
idea. Cf. PersonalWeb, 2021 U.S. App. LEXIS 23980, at *14, *16-17. And,
while the Court has emphasized that the configurable link is generated
in a specific way, the point is not that a user profile and the configurable
access rule are sufficiently specific to independently supply an inventive
concept. Rather, the point is that these items are sufficiently specified to
“contribut[e] to the inventive concept determination” with respect to the
specific way the configurable link is generated. Cf. Two-Way Media, 874
F.3d at 1339.
Having considered the written briefs, relevant caselaw, and the
evidence of record, the Court must again conclude that representative
Claim 2 contains an inventive concept as a matter of law because the
configurable link’s claim elements as an ordered combination add
significantly more to the abstract idea that is not already present when
they are considered separately. Accordingly, the Court finds that
representative Claim 2 recites patent eligible subject matter, and that
Zak is therefore entitled to summary judgment dismissing Facebook’s
affirmative defense of patent ineligibility.
35
VII. CONCLUSION
For the reasons stated in this opinion and order, finding that
representative Claim 2 of the ’720 Patent recites patent eligible subject
matter, the Court will GRANT in part Zak’s motion for partial summary
judgment dismissing Facebook’s affirmative defenses as to patent
eligibility, and DENY Facebook’s motion for summary judgment of
patent ineligibility.
SO ORDERED.
Dated: September 30,
2021
s/Terrence G. Berg
TERRENCE G. BERG
UNITED STATES DISTRICT JUDGE
Certificate of Service
I hereby certify that this Order was electronically filed,
and the parties and/or counsel of record were served on
September 30, 2021.
s/A. Chubb
Case Manager
36
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