In a recent order from the District of Massachusetts, the court granted a defendant’s motion for summary judgment in a patent infringement dispute, finding the asserted patent claims invalid under 35 U.S.C. § 101. The court’s underlying analysis is particularly instructive for its application of the Alice two-part framework to claims that are directed to computerized systems and methods for secure data sharing on the Internet.
The patent at issue – U.S. Patent No. 6,253,216 (“the ’216 Patent”) – claims a method and apparatus for providing users with a secure way to display personal information to computer network users. According to the ’216 Patent, the shortcomings of existing computer systems in this regard include: requiring that users be capable of generating their own web pages using a programming language or other protocol; providing no privacy to users because of the world-wide access that the Internet allows; and struggling to direct a desired audience to a particular page of interest. The ’216 Patent purports to address these shortcomings by providing “a secure method for providing personal information in a network environment … and mak[ing] the information available … only to those people that the person providing the information wishes to see the information.”
In October 2009, Tele-Publishing, Inc. (“TPI”) asserted the ’216 Patent against defendants Facebook, Inc. and TheFacebook, LLC (collectively “Facebook”) in a patent infringement action. Shortly thereafter, Facebook filed a request for ex parte reexamination of the ’216 Patent. Although the Examiner initially rejected all claims of the ’216 Patent, the claims ultimately survived when the Board reversed the Examiner’s decision. Upon the resumption of the case in district court, Judge Woodlock issued a Markman Order which construed certain claim terms and found other claims invalid as indefinite. The parties then filed dispositive motions on multiple issues, including the eligibility of the asserted claims under 35 U.S.C. § 101.
To resolve the issue, Judge Woodlock relied on the two-step Alice test for determining patent eligibility. As to the first step, while TPI contended that the claims were directed to problems of particular concern to publishing online, Judge Woodlock concluded that the focus, character, and basic thrust of the relevant claims of the ’216 Patent were merely directed to the abstract idea of collecting, storing, and selectively sharing personal information. To support this conclusion, the court found that the claims of the ’216 Patent were similar to other claims found to be directed to abstract ideas—such as in the Bascom and Content Extraction decisions from the Federal Circuit, along with several district court decisions.
Turning to the second step of the Alice analysis, TPI argued that the claim elements created a two-tiered system for sharing personal information which, when considered as an ordered combination, provides a specific technological improvement that renders the claims patent-eligible. However, Judge Woodlock found that the claim elements rely on generic technologies, such as web, browsers, URLs, HTTP servers, and HTML pages, which were not sufficiently inventive to survive the analysis. In particular, the Court determined that the term “security parameters” as construed by the Markman Order did not provide a sufficiently inventive concept because they involved only basic steps that could be “performed using a pencil and paper or the human mind.”
Judge Woodlock further concluded that the dependent claims also did not contain any inventive concepts needed to transform them into patent-eligible subject matter. As a result, the Court granted Facebook’s motion for summary judgment of invalidity of the ’216 Patent.
As courts continue to fine-tune the subject matter eligibility analysis, with each new decision providing a further guidepost, Judge Woodlock’s order in this case provides instructive insight into that evolving analysis. Moreover, the result serves as a caution to potential litigants seeking to assert patents directed to the performance of basic computer functionality, utilizing generic technology in a well-known computing environment, without a sufficiently inventive feature captured in the claim elements.
The case is Tele-Publishing, Inc. v. Facebook, Inc., No. 09-11686-DPW (D. Mass.), before Hon. Douglas P. Woodlock. A copy of the Court’s order can be found here.