Zak v. Facebook, Inc.
Filing
36
OPINION AND ORDER DENYING 19 MOTION for Summary Judgment. Signed by District Judge Terrence G. Berg. (AChu)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
BRUCE ZAK,
an individual,
Plaintiff,
v.
CIV. NO. 15-13437
HON. TERRENCE G. BERG
FACEBOOK, INC.,
a Delaware corporation,
Defendant.
______________________________/
OPINION AND ORDER DENYING DEFENDANT’S
MOTION FOR SUMMARY JUDGMENT (DKT. 19)
This is a patent infringement case. Plaintiff Bruce Zak (“Plaintiff”), a
computer programmer from Oakland County, Michigan alleges that Defendant
Facebook, Inc. (“Defendant” or “Facebook”) is infringing two of his software
patents—United States Patent Nos. 8,713,134 (“ the ’134 patent”) and 9,141,720
(“the ’720 patent”). Facebook now moves for summary judgment (Dkt. 19) arguing
that the subject matter of the two patents is not eligible for patent protection under
Section 101 of the Patent Act. See 35 U.S.C. § 101.
Plaintiff filed a response to
Defendant’s motion. (Dkt. 21), and Defendant filed a reply. (Dkt. 22). The Court
heard oral argument on Defendant’s motion on June 22, 2016. (Dkt. 30). For the
reasons set forth below, Defendant’s motion for summary judgment is DENIED.
I. PREFACE
At the outset, the Court notes that the Plaintiff did not follow the Court’s
practice guidelines in filing its response to Defendant’s motion for summary
judgment. The Court’s practice guidelines for motions for summary judgment are
available on the Court’s website, and provide as follows:
A Rule 56 motion must begin with a “Statement of Material Facts.” Such a
Statement is to be included as the first section of the Rule 56 Motion. The
Statement must consist of separately numbered paragraphs briefly
describing the material facts underlying the motion, sufficient to support
judgment. Proffered facts must be supported with citations to the pleadings,
interrogatories, admissions, depositions, affidavits, or documentary exhibits.
Citations should contain page and line references, as appropriate.... The
Statement of Material Facts counts against the page limit for the brief. No
separate narrative facts section shall be permitted.
The response to a Rule 56 Motion must begin with a “Counter-statement of
Material Facts” stating which facts are admitted and which are contested. The
paragraph numbering must correspond to moving party’s Statement of Material
Facts. If any of the moving party’s proffered facts are contested, the non-moving
party must explain the basis for the factual disagreement, referencing and citing
record evidence. Any proffered fact in the movant’s Statement of Material Facts
that is not specifically contested will, for the purpose of the motion, be deemed
admitted. In similar form, the counter-statement may also include additional
facts, disputed or undisputed, that require a denial of the motion.1
Plaintiff’s response failed to comply with the Court’s practice guidelines because it
did not begin with a Counter-Statement of Material Facts indicating which facts
were admitted and which were contested.
The Court nonetheless conducted a thorough review of the record and
gleaned the following facts, which are viewed in a light most favorable to the nonmoving party. Plaintiff is cautioned, however, to follow carefully the Court’s
1
Available at -- https://www.mied.uscourts.gov/index.cfm?pageFunction=chambers&judgeid=37
2
practice guidelines going forward. Any future non-conforming briefs will be
stricken from the docket.
II. FACTUAL BACKGROUND
In the early 2000s, Plaintiff, a computer programmer, started a company
called Everyware, Inc. (Dkt. 21, p. 10). This company was focused primarily on a
new software product called 7Ware, developed by Plaintiff with assistance from coinventor Regina Zak. (Id. at 10-11). The purpose of 7Ware was to allow users to
maintain a dynamic website by giving users the ability to manage the content of a
website without having to depend on a person skilled in HTML computer
programming. (Id. at 11). During creation of the software to enable users to post
content without third party assistance, Plaintiff 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. (Id.). In
order to achieve these functions, Plaintiff developed software that “generate[d] userconfigurable links based upon user-configurable business rules to control the
functionality of web pages with respect to permission to view and/or post certain
content.” (Id.).
On February 13, 2003, Plaintiff filed a patent application for the invention.
The United States Patent and Trademark Office issued three patents stemming
from the parent patent. (Dkt. 19, p. 12). The dispute in this case centers on patent
infringement claims by Plaintiff against Defendant regarding two of the patents
derived from Plaintiff’s original application: the ’134 patent and the ’720 patent.
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(Id.). The patents teach a system that permits users to input characteristics into
configurable applications generated by the computer and to act as administrators
for different sets of web pages within the same website. The claims of these patents
are directed to enabling users, without third-party assistance, to post content to a
website and to control which users can view the posted content. (Dkt. 21, p. 8). In
their briefs, both parties direct their analysis of patent eligibility toward claim 2 of
the ’720 patent. (Dkt. 22, p. 9). The Court accepts claim 2 as a representative claim.
Claim 2 states:
A system, including a computer and a web site, for managing content
displayable on the web 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,
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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, 22:52-23:20.
In the “Background of the Invention,” the ’720 patent states that large and
small entities experienced difficulties keeping their websites updated with
information and functionality due to the lack of available personnel with the
technological skills necessary to manage and create websites. Id. at 1:27-63.
Consequently, to avoid the potentially embarrassing problem of having an outdated
website, most companies did not provide content-rich websites, which decreased the
utility of those websites. Id. 37-40. Additionally, due to the large number of people
involved in website management with existing art, there was a greater possibility
both of errors resulting in content and of style inconsistences due to
miscommunication. Id. at 1:64-2:1. Given how useful the Internet nonetheless was,
small and large entities required the ability to create and configure their websites
in an automated manner. Id. at 2: 13-15.
In response to this need, the ’720 patent describes its invention as providing
non-technical users control over the content of a website without the need for more
technical personnel to assist and as also providing users the ability to create,
modify, or delete content automatically. Id. at 2:25-46. The claimed invention
allows users to customize not only who can view the content but also who can post
content. In these systems, users have stored profiles. The profiles consist of at
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least a first configurable application and a second configurable application, one of
which is a biography application. Id. at 22:56-64. Users, acting as administrators,
manage business rules using the profiles of other users in the system to control
interactions between users and web pages. Id. at 23:3-11. There is at least one
configurable link that directs users to configurable applications. Id. at 23:12-13.
The configurable link generated by the computer utilizes user profiles to determine
what content on the computer can be viewed by each of the other users of the
system. Id. at 23:14-20.
To summarize, the users of the system create profiles containing biographical
information. The user can control the interaction other users have with her web
page by altering business rules that utilize the biographical information from other
users’ profiles. The system receives a request to view and/or post content to a
website and uses the configured rule to determine whether the user can view or post
content. The ’720 patent states that not only was there no existing art resolving
challenges regarding customizable and automated features, but also that technology
actually required an increasing amount of sophistication, making the invention an
advancement in existing art. Id. at 2:4-14. Defendant claims that the patents relate
to “techniques for group collaboration and targeted communication.” (Dkt. 19, p. 12).
Defendant, therefore, asserts that the patents are not patent-eligible because the
claim is directed to abstract ideas with no inventive concept. (Id. at 10). Plaintiff
contends, however, that the invention is patent-eligible because the claim improves
the functioning of a computer. (Dkt. 25). Plaintiff also argues that Defendant
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overgeneralizes the claims, and that the representative claims are not directed to an
abstract idea. (Dkt. 21, p. 24). Plaintiff also argues in the alternative that, even if
claim 2 were directed at an abstract idea, the inventions are still patent-eligible
because the claim includes an inventive concept. (Id. at 8-9). Additionally, Plaintiff
argues that Facebook’s website utilizes similar software “to enable its users to
control which of the other Facebook users can view content on his or her “About”
and “Timeline” applications, as well as which of the other users can post content on
the first user’s “Timeline.” (Dkt. 22, p. 12). Furthermore, Plaintiff states that the
’720 patent is patent-eligible because it was examined, approved, and issued after
the Supreme Court set out its framework for considering eligibility challenges in
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) and Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012). (Dkt.
21, p. 12). Defendant disagrees and states that there is no indication that the
Patent Office actually considered whether the subject matter was patent-eligible
because the issue was never raised during prosecution of the ’720 patent. (Dkt. 22,
p. 7).
III. LEGAL STANDARDS
A. The Standard for Summary Judgment
Summary judgment is proper “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.” See Fed. R. Civ. P. 56(a). A fact is material only if it might affect the
outcome of the case under the governing law. See Anderson v. Liberty Lobby, Inc.,
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477 U.S. 242, 249 (1986). On a motion for summary judgment, the Court must view
the evidence, and any reasonable inferences drawn from the evidence, in the light
most favorable to the non-moving party. See Matsushita Elec. Indus. Co. v. Zenith
Radio Corp., 475 U.S. 574, 587 (1986) (citations omitted); Redding v. St. Edward,
241 F.3d 530, 531 (6th Cir. 2001).
The moving party has the initial burden of demonstrating an absence of a
genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 325
(1986). If the moving party carries this burden, the party opposing the motion
“must come forward with specific facts showing that there is a genuine issue for
trial.” Matsushita, 475 U.S. at 587. The Court must determine whether the
evidence presents a sufficient factual disagreement to require submission of the
challenged claims to a jury or whether the moving party must prevail as a matter of
law. See Anderson, 477 U.S. at 252 (“The mere existence of a scintilla of evidence in
support of the plaintiff’s position will be insufficient; there must be evidence on
which the jury could reasonably find for the plaintiff”).
Moreover, the trial court is not required to “search the entire record to
establish that it is bereft of a genuine issue of material fact.” Street v. J.C. Bradford
& Co., 886 F.2d 1472, 1479–80 (6th Cir. 1989). Rather, the “nonmoving party has
an affirmative duty to direct the court’s attention to those specific portions of the
record upon which it seeks to rely to create a genuine issue of material fact.” In re
Morris, 260 F.3d 654, 655 (6th Cir. 2001).
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B. The Mayo/Alice Test for Patent Eligibility
Determining whether the subject matter of an invention is patent-eligible
turns on the application of 35 U.S.C. § 101, which states:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
35 U.S.C. § 101. Consistent with the statute’s requirement that patents be limited
to “new and useful” processes and machines, for over 150 years courts have
recognized three exceptions to the otherwise broad scope of patent eligibility:
subject matters not eligible for patent protection include “laws of nature, physical
phenomena, and abstract ideas.” Bilski v. Kappos, 561 U.S. 593, 601-02 (2010).
Since “all inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas[,]” it is not enough to ask whether the
claims merely involve a subject matter that is excepted from patent eligibility. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012).
Instead, it is necessary to examine the entire character of a patent to determine
whether it is “directed to excluded subject matter,” Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) (emphasis added), which would
make it ineligible, or whether it is applying an abstract idea to a new and useful
end, Gottschalk v. Benson, 93 S. Ct. 253 (1972), which would render it eligible.
Courts evaluate patent eligibility questions using the two-step analytical
framework developed by the Supreme Court in Mayo Collaborative Services v.
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Prometheus Laboratories, Inc. 132 S. Ct. 1289, 1296-97 (2012) and Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). Step one of the Mayo/Alice
test “determin[es] whether the computer-implemented claims at issue here are
‘directed to’ a patent-ineligible abstract idea.” DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257-58 (Fed. Cir. 2014) (quoting Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2355 (2014)). If the court concludes at step one that the
claims are directed to an abstract idea, the court must then ask at step two whether
the elements of each claim, both individually and “as an ordered combination,”
include an inventive concept such that it transforms the nature of the claim into a
patent-eligible application. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.Ct. at
1298, 1297).
1. Evaluating Claims Under Step One
Determining whether a patent’s claims are “directed” to an abstract idea can
be difficult because the Supreme Court and the Federal Circuit have not defined
precisely what an abstract idea entails. Consequently, district courts look to
previous decisions to help define the type of claims that would qualify as directed
toward an abstract idea.
The following categories have been recognized by either
the Supreme Court or the Federal Circuit as abstract ideas: (1) something that
could “be performed in the human mind, or by a human using a pen and paper,” (2)
“fundamental economic practices long prevalent,” (3) methods of organizing human
activity, or (4) mathematical formulas. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); In re Bilski, 545 F.3d 943, 1013 (Fed. Cir.
10
2008); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, No. 2015-1763,
2016 WL 3514158 (Fed. Cir. June 27, 2016); Parker v. Flook, 437 U.S. 584, 594-95
(1978).
In addition to considering whether a patent is directed to any of the subject
matters that other courts have found to be abstract ideas, in applying step one of
the Alice/Mayo test, courts also look to whether the representative claim is directed
to the improvement of the functioning of the computer itself. Enfish, LLC v.
Microsoft Corp., No. 2015-1244, 2016 WL 2756255, at *4-*5 (Fed. Cir. May 12,
2016). If the claims are directed to the improvement of the functioning of the
computer itself, rather than to an abstract idea, they may be found eligible for
patent protection at step one. Enfish, 2016 WL 2756255, at *5.
Improvements to
computer technology are not limited to hardware; software can also improve
computer technology by non-abstract means. Id. at *4. Hardware and software
technology can create improvements in speed, storage, and flexibility. Id. at *3. If
the claims do not result in an improvement, the Court assesses whether the claims
are directed to an abstract idea. Id. at *4.
2. Evaluating Claims Under Step Two
If the claims at issue do not improve the function of a computer itself but
instead are directed to a patent-ineligible abstract idea, courts look to step two of
the Mayo/Alice test. Step two of the Mayo/Alice test searches for an “inventive
concept,” which is “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent upon
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the [ineligible concept] itself.’” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1294). Although, patents that claim an abstract idea are not patent-eligible, Mayo,
132 S. Ct. at 1297, if the claims include an inventive concept, the ineligible abstract
idea transforms to a patent-eligible application. Alice, 134 S. Ct. at 2355.
Courts look for an inventive concept in order to “provide practical assurance
that the process is more than a drafting effort designed to monopolize the [abstract
idea] itself.” Mayo, 132 S. Ct. at 1292. It is not enough to state an abstract idea and
try to make it patentable by adding the words “apply it with a computer” or by
limiting its use to a “particular technological environment.” Alice, 134 S. Ct. at
2350; Diamond v. Diehr, 450 U.S. 175, 191 (1981). Furthermore, courts look for
more than “routine activity” to transform an abstract idea to a patent-eligible
application. Ultramercial, Inc. v. Hulu LLC, 772 F.3d 709, 714 (Fed. Cir. 2014).
“The notion that post-solution activity, no matter how conventional or obvious in
itself, can transform an unpatentable principle into a patentable process exalts form
over substance.” Parker, 437 U.S. at 590.
Where 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.
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, No. 20151763, 2016 WL 3514158 (Fed. Cir. June 27, 2016).
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IV. ANALYSIS
A. Arguments of the Parties
Defendant contends that the ’134 and ’720 Patents are ineligible under the
Mayo/Alice framework. (Dkt. 19) because they are directed to an abstract idea. (Id.
at 10). Defendant further argues that the patents do not improve the functioning of
the computer itself. (Dkt. 26). Finally, Defendant argues that the patents do not
include an inventive concept because the claim merely recites generic computer
functions that are routine and conventional. (Dkt. 19, p. 10). During oral
arguments, Defendant emphasized that Plaintiff never specified precisely how the
system functions, which could have added the inventive concept needed to take the
patent out of the realm of a patent-ineligible abstract idea. (Dkt. 30, p. 15).
In response, Plaintiff asserts that the patents are patent-eligible under 35
U.S.C. § 101 and that Defendant impermissibly over-generalizes and integrates the
claims of the patents. (Dkt. 21, p. 24). Using the Mayo/Alice test, Plaintiff first
asserts that the claim improves the functioning of a computer and is not directed to
an abstract idea. (Id. at 27). To explain how the claim improves the functioning of
the computer, Plaintiff says the software is more efficient and usable for nontechnical people. (Dkt. 30, p. 29). Second, Plaintiff claims that although the patents
do not constitute an abstract idea, if they did, the patents nonetheless include an
inventive concept because “[c]ontrolling a computer to generate a link based on
business rules that are configurable or modifiable by users to control which other
users can view and/or post content on the website is . . . a technical solution that is
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‘rooted in computer technology in order to overcome a problem specifically arising in
the realm of computer networks.’” (Dkt. 21, p. 10-11) (quoting DDR Holdings, 773
F.3d at 1257 (Fed. Cir. 2014)). Plaintiff emphasized that the claim does not merely
recite generic steps but rather describes how the idea is executed. (Dkt. 30, p. 24).
B. Applying Step One of the Mayo/Alice Test
Claim 2 is directed to allowing non-technical individuals to control who is
able to (1) post content and (2) view content on a number of websites. In applying
step one of the Mayo/Alice test, the Court will first look to whether claim 2 is
directed to the improvement of the functioning of the computer itself rather than to
an abstract idea. In Enfish, the patents at issue were for a logical model for a
computer database described by the patents as a “self-referential model.” Enfish,
2016 WL 2756255, at *1. The self-referential model was an improvement on the
prior relational model because it could “store all entity types in a single table and . .
. define the table’s columns by rows in that same table.” Id. at *2. The Federal
Circuit held that the claims were patent-eligible because they improved the
functioning of the computer by permitting “faster searching of data”, “more effective
storage of data,” and “more flexibility in configuring the database.” Id.
Furthermore, the Federal Circuit determined that “the claims [were] directed to a
specific implementation of a solution to a problem in the software arts.” Id. at 8.
Because the claims were not directed to an abstract idea, the Federal Circuit did not
proceed to step two of the Mayo/Alice test. Id.
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Unlike the claims in Enfish, the claim in the present case, in consideration of
its limitations, does not unambiguously purport to increase speed, improve storage,
or improve functionality of the computer itself. Plaintiff argues that the claim
improves the functioning of the computer due to “the user-configured business rules
and configurable/application links.” (Dkt. 25, p. 3). However, the claim language of
the patent does not clearly state how these features improve the functioning of the
computer itself. The claims describe a method to manage and control posting
content and viewing content; they do not suggest that a computer’s functioning
would be improved, but rather that a user’s ability to harness that functionality
would be improved. Since the claim language is less than completely clear, the
Court cannot conclude with any certainty that the claim and its limitations improve
the functioning of the computer itself.
If the claims cannot be said to improve computer functionality, are they
directed to an abstract idea? The patent eligibility issues raised in the recent case
of BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, No. 2015-1763, 2016
WL 3514158 (Fed. Cir. June 27, 2016) closely parallel those of the patents in this
case. Id. at *1. In BASCOM, the Federal Circuit determined that the purpose of
the patent was to filter content on the Internet. Id. at *3. The Federal Circuit held
that “filtering content is an abstract idea because it is a long-standing, well-known
method of organizing human behavior . . . .” Id. at *5. Indeed, filtering “is a method
of organizing human activity, not a ‘truth’ about the natural world ‘that has always
existed.’” Alice, 134 S. Ct. at 2356 (quoting Flook, 437 U.S. at 593, n. 15).
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In this case, the purpose of 7Ware was to provide users the opportunity to
maintain a dynamic website by being able to manage who posts and views content
of their website without the need for specialized assistance. The claim states that
the system “manag[es] content displayable on the web site to multiple users of the
system who have profiles stored on the system . . . .” ’720 patent, 22:53-54. The
claim further states “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 . . . .” Id. at 23:5-8. Plaintiff’s
patents are directed to group collaboration with targeted communication and
restricting public access, which—like filtering data—are arguably methods of
organizing human behavior. Consequently, the Court concludes that the
representative claim of the ’134 and ’720 patents is directed to the abstract idea of
organizing human behavior and does not clearly improve the functioning of a
computer.
C. Applying Step Two of the Mayo/Alice Test
Because the Court has found that the representative claim of the patents at
issue is directed to an abstract idea, the Mayo/Alice test requires the Court to
consider whether the representative claim, taken as a whole, nonetheless has an
inventive concept. Merely applying an abstract idea to the field of computers is not
sufficient to transform the patent-ineligible abstract idea to a patent-eligible
innovative or inventive application. Alice, 134 S. Ct. at 2350.
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A few cases illustrate what it means for a claim to include an inventive
concept.
In Ultramercial, Inc. v. Hulu LLC, the abstract idea was receiving
copyrighted material in exchange for watching an advertisement. 772 F.3d at 715.
The additional steps included “updating an activity log, requiring a request from
the consumer to view the ad, restrictions on public access, and use of the Internet . .
. .” Id. at 716. The Federal Circuit determined in that case that the claim did not
include an inventive concept because the steps “both individually and ‘as an ordered
combination’” did not amount to anything significantly more to transform the
abstract idea to a patent-eligible subject matter. Alice, 134 S. Ct. at 2355 (quoting
Mayo, 132 S. Ct. at 1298). In other words, the additional steps simply consisted of
routine and conventional activity. Ultramercial, 772 F.3d at 715.
By contrast, in DDR Holdings, although it was difficult for the Federal
Circuit to determine the precise nature of the abstract idea, it determined that the
patents nonetheless contained an inventive concept. DDR Holdings, 773 F.3d at
1257. The representative claim 19 of the ’399 patent stated that the invention
created a system that would use existing computer technology to create a hybrid
web page between the host web page and the commerce web page. Id. at 1249. The
claim began by describing how a computer will contain data for a plurality of first
web pages with at least one active link to a selected merchant’s website. Id. When
the link is clicked, the computer server at the outsource provider will receive a
signal indicating that the link has been activated. Id. Once activated, a second web
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page will be generated with information from the merchant’s web page and
elements visually corresponding to the source page. Id. at 1250.
Regardless of whether the underlying abstract idea was “making two web
pages look the same” or “syndicated commerce on the computer using the Internet,”
the claims were patent-eligible because they contained an inventive concept to
resolve the Internet-centric problem of retaining website visitors. Id. at 1257. The
claims at issue “d[id] not broadly and generically claim ‘use of the Internet’ to
perform an abstract business practice (with insignificant added activity). . . . [T]he
claims at issue here specif[ied] how interactions with the Internet are manipulated
to yield a desired result . . . .” Id. at 1258. Rather than the routine, conventional
activities that would occur when a hyperlink for an advertisement is clicked
(namely being transported away from a host website to the advertisement), the
claim stated that the user was transported to a hybrid web page of the host website
and the third-party website. Id. at 1257. As a result, the claim did not preempt an
abstract idea because the steps went beyond routine and convention to obtain the
desired result to the business challenge of retaining website visitors. Id. at 1259.
Furthermore, in BASCOM, the Federal Circuit determined that although the
claims of a patent might argue improvements in computer technology, in cases
where there was a close call in determining what the claims were directed to,
asserting that a patent improves computer technology was not sufficient to deem a
patent non-abstract under step one. BASCOM, 2016 WL 3514158, at *5. The claims
of the ’606 patent in BASCOM were directed to filtering content on the Internet. Id.
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The Federal Circuit determined that, unlike the patent in Enfish, which was held
not to be directed to an abstract idea because the claim and its limitations led to an
improvement in the functioning of the computer itself, it was difficult to determine
in BASCOM whether the claims were directed to an improvement in computer
capabilities. Id. As a result, the BASCOM court could not conclude under step one
that the claims were directed to a non-abstract idea and deferred its determination
to its analysis in step two. Id.
In order to determine whether the subject matter was nonetheless patenteligible, the Federal Circuit in BASCOM moved to step two to analyze whether the
claim limitations included an inventive concept. Id. The Federal Circuit explained
that “some inventions’ basic thrust might more easily be understood as directed to
an abstract idea, but under step two of the Alice analysis, it might become clear that
the specific improvements in the recited computer technology go beyond ‘wellunderstood, routine, conventional activit[ies]’ and render the invention patenteligible.” Id. (quoting Mayo, 132 S. Ct. at 1294). The Federal Circuit stated that
although the individual limitations may recite generic computer and Internet
components that are not inventive alone, the ordered combination of limitations
extend beyond routine and convention. Id. at *6. Since the filtering system is “more
dynamic and efficient” given the claim limitations, the software improves the
computer itself. Id. at *7. The Federal Circuit held that the claims are patent
eligible because they do not preempt all methods of filtering content on the Internet
but rather “recite a specific, discrete implementation of the abstract idea.” Id.
19
Unlike the claims in Ultramercial, which contain the routine and
conventional step of restricting public access and use of the Internet, claim 2 in this
case specifies how the websites may be manipulated to achieve a desired result.
Representative claim 2 states that the system stores profiles from multiple users.
’720 patent, 22:53-54. The users input text, graphics, sounds, and more to create at
least one configurable application that displays biographical information about the
users. Id. at 22:56-23:2. Each user can act as an administrator to manage business
rules that permit the user to control the interaction of other users with his or her
web page(s), creating a configurable link. Id. 23:3-18. The link will utilize user
profiles to determine what content can be viewed by which users. Id. 23:18-20.
The representative claim at issue in this case is similar in specificity to claim
19 in DDR Holdings, which was held to include an inventive concept. In DDR
Holdings, the claim did not “merely recite the performance of some business
practice known from the pre-Internet world along with the requirement to perform
it on the Internet.” DDR Holdings, 773 F.3d at 1257. Instead, the claim offered a
solution to the business challenge of retaining website visitors, which was a
problem “arising in the realm of computer networks.” Id. Likewise, in the present
case, the claim does not merely permit a known business practice to be performed
on the Internet. Instead, the claim here specifies how a solution will be
implemented that addresses 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.
20
Additionally, similar to the claims in BASCOM, although the limitations to the
claim in this case are not inventive alone, the ordered combination of these
limitations is inventive because, taken together, the limitations are not routine and
conventional. The claim does not simply dictate that communication must be
targeted and access restricted. Instead, the claim states that users themselves will
be able to control interactions on their web pages by managing business rules that
will utilize profiles of other users to generate configurable links to determine how
other users may interact with his or her web page. ’720 patent, 22:52-23:20. The
claim and its limitations “recite a specific, discrete implementation of the abstract
idea.” BASCOM, 2016 WL 3514158, at *7. This is a sufficiently inventive concept to
allow the conclusion that the patent is not directed to an ineligible subject matter
under the Mayo/Alice test.
Although, as Defendant asserts, the claim could be compared to applying the
concept of a bulletin board to a computer, it is more accurate to say, as the Federal
Circuit did in BASCOM, that the claim and its limitations offer “a technical way to
satisfy an existing problem for website hosts and viewers.” BASCOM, 2016 WL
3514158, at *7. Just as in BASCOM, where the court found that the patent was
directed to more than simply filtering data, here the patent is directed to more than
merely targeting and restricting communications on a computer. As in BASCOM,
here it could be said that the patent is instead claiming: “a technology-based
solution (not an abstract-idea-based solution implemented with generic technical
components in a conventional way) . . . that overcomes existing problems . . .” Id.
21
Regardless of whether the subject matter of the patent is characterized as group
collaboration with targeted communication or as restrictions on public access, the
claim contains enough inventive elements to be aimed at more than a patent on the
abstract idea itself. Mayo, 132 S. Ct. at 1294.
Consequently, Defendant’s challenge to the eligibility of the patent under §
101 of the Patent Act must be rejected.
V.
CONCLUSION
For the reasons set forth above, Defendant’s motion for summary judgment
(Dkt. 19) is DENIED.
SO ORDERED.
s/Terrence G. Berg
TERRENCE G. BERG
UNITED STATES DISTRICT JUDGE
Dated: September 12, 2016
Certificate of Service
I hereby certify that this Order was electronically submitted on September
12, 2016, using the CM/ECF system, which will send notification to each party.
s/A. Chubb
Case Manager
22
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