Judge Bianco Holds EasyWeb’s “Publishing Patent” Is Not Infringed Even Though It Broadly Claims an Abstract Idea
On March 30, 2016, District Court Judge Joseph F. Bianco granted defendant Twitter Inc.'s ("Twitter") motions for summary judgment of invalidity and non-infringement against plaintiff EasyWeb Innovations, LLC ("EasyWeb"), holding that EasyWeb's asserted patents (the "patents-in-suit") were not directed to eligible subject matter under 35 U.S.C. § 101 and did not cover Twitter's accused technology.
The patents-in-suit were directed to web-based message publishing methods conceived by a single inventor in 1998. The inventor described his invention as a method that would automatically take a fax, phone message, or e-mail; convert it to a digital format; convert it into a webpage; and post it on the web server on the Internet, thereby allowing "virtually anyone" to create a new website "automatically." The claims themselves actually required an additional limitation, namely, the "identif[ication]" of a sender of a message as an "authorized sender" before publishing the message.
The inventor assigned his rights in the patents-in-suit to EasyWeb, who sued Twitter in late 2011 for infringement of these patents. Between 2011 and 2013 the parties filed claim construction briefs and motions for summary judgment, including by Twitter for invalidity under § 101. These motions were all resolved by the Court in this decision.
On the § 101 issue specifically, the Court began by citing the framework established in Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354 (2014) to determine whether a patent is directed to patent-ineligible subject matter:
First, [the court] determine[s] whether the claims at issue are directed to one of those patent-ineligible concepts. If not, the claims pass muster under § 101. Then, in the second step, if [the court] determine[s] that the claims at issue are directed to one of those patent-ineligible concepts, [it] must determine whether the claims contain an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Following this test and analyzing the patents together, as opposed to claim-by-claim, the district court found that the "inventive (and non-obvious) concept in the patent-in-suit . . . is the format-based authentication system, not the message publishing system itself" (emphasis in original), and that this concept was not eligible subject matter under 35 U.S.C. § 101.
For the first step, the district court noted that the invention of the patents-in-suit were indeed "directed to an abstract idea of authentication," noting that they, like other patents found to be invalid under § 101, involved the "transformation and transmission of information in one form to another form constituted abstract idea" (citing Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Morales v. Square, 75 F. Supp. 3d 716, 724 (W.D. Tex. 2014); and Parus Holdings, Inc. v. Bank, __ F. Supp. 3d __, No. 14-CV-1427 (SLR), 2015 WL 5886179, at *9 (D. Del. Oct. 8, 2015)).
For the second step, the district court noted that there was nothing in the claims that would make inventive concept amount to "significantly more than a patent upon the ineligible concept itself." Alice, 134 S. Ct. at 2354. Properly construed, the claims of the patents-in-suit simply required carrying out the method on a "generic computer," which, without more, "cannot transform a patent-ineligible abstract idea in to a patent-eligible invention." Id. Moreover, the Court noted that the patents-in-suit fail the transformation prong of the machine-or-transformation test, which although not the "sole test" for determining patent eligible subject matter, still "provide[s] a 'useful clue'" as to whether it bears on patent-eligible subject matter under § 101. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (citing Bilski v. Kappos, 561 U.S. 593, 604 (2010)).
The district court also found that Twitter did not infringe the patents-in-suit. According to the district court, Twitter’s system did not authenticate senders based on the “format of the message,” and its distributed server architecture did not read upon the proper construction of “central processor," which were both required by the claims of the patents-in-suit. The court characterized the litigation as "involv[ing] an assignee attempting to rewrite patent claims to capture technology outside the claims' proper scope–a scope the assignee recognized in earlier lawsuits against different companies–without intrinsic or extrinsic support for such interpretations."
Case: EasyWeb Innovations, LLC v. Twitter, Inc, No. 11 Civ. 4550 (JFB) (SIL) (E.D.N.Y. March 30, 2016). The patents-in-suit are: U.S. Patent No. 7,032,030; U.S. Patent No. 7,596,606; U.S. Patent No. 7,685,247; U.S. Patent No. 7,689,658; and U.S. Patent No. 7,698,372.