Myspace, Inc. v. Graphon Corp.

101 U.S.P.Q.2d 1873

672 F.3d 1250

MYSPACE, INC., Plaintiff–Appellee,andFox Audience Network, Inc., Third Party Defendant–Appellee,andCraigslist, Inc., Plaintiff–Appellee,

v.GRAPHON CORPORATION, Defendant/Third Party Plaintiff–Appellant.

No. 2011–1149.

United States Court of Appeals, Federal Circuit.

March 2, 2012.

Kevin B. Collins, Covington & Burling, LLP, of Washington, DC, argued for plaintiff-appellee, MySpace, Inc. and third party defendant-appellee, Fox Audience Network, Inc. With him on the brief was Jeffrey M. Davidson, of San Francisco, CA.

Christopher Kao, Perkins Coie, LLP, of Palo Alto, CA, argued for the plaintiff-appellee, Craigslist, Inc. With him on the brief was J. Patrick Corrigan.

Michael D. Rounds, Watson Rounds, of Reno, NV, argued for defendant/third party plaintiff-appellant. With him on the brief were Cassandra P. Joseph and Adam K. Yowell.

Before NEWMAN, MAYER, and PLAGER, Circuit Judges.

Dissenting opinion filed by Circuit Judge MAYER.

PLAGER, Circuit Judge.

This is a patent infringement case in which plaintiffs, MySpace, Inc. and craigslist, Inc., filed declaratory judgment suits in the Northern District of California against defendant GraphOn Corporation (“GraphOn”). Plaintiffs alleged that certain patents owned by GraphOn were invalid and not infringed by them. GraphOn counter-claimed for infringement, and asserted third-party claims against Fox Audience Network, Inc. (“FOX”). Plaintiffs' suits were consolidated. Shortly thereafter, FOX joined MySpace in a summary judgment motion on the issue of invalidity, and craigslist followed with its own summary judgment motion that incorporated by reference the MySpace/FOX motion. These three parties will hereafter be referred to as “the MySpace parties.”

The District Court granted the MySpace parties' motion for summary judgment, and rendered final judgment for the MySpace parties. GraphOn timely appeals. Because we believe the case is properly decided under §§ 102 and 103 of the Patent Act and not under § 101, and because the district court did not err in its grant of summary judgment of invalidity of the patents-in-suit under those sections, we affirm.

Background

1. Underlying Technology

For purposes of this opinion, we need only summarize the history and development of the underlying patented technology in this case, which relates to the ability to create, modify, and store database records over a computer network. For a full description, see the district court's opinion, MySpace, Inc. v. Graphon Corp., 756 F.Supp.2d 1218 (N.D.Cal.2010).

In the early 1980's, desktop software applications ran entirely on a single computer, so that the files, code, and data relating to a given program were all stored on a personal computer (“PC”). This configuration presented a problem for larger-scale applications. Users could not easily share documents, images, files, and other data between computers.

The mid–1980's to mid–1990's brought about the development of client-server applications. Id. at 1222. Companies began placing their applications on a server so that client machines could access files, documents, and other data held in a centralized location. This configuration allowed for easier sharing of information and enabled users to reduce the amount of data stored in the memory of their PCs. The data stored on the centralized servers were generally stored in file systems. Id. File systems are a method of organizing and storing data that are typically configured hierarchically using a parent-child type of relationship ¹ similar to the folder and directory configuration common in today's PC operating systems.

While a marked improvement from the early single desktop PC configuration, the file system-based client-server configuration was not without its problems. Issues such as functionality, performance, and data security became troublesome for many applications. Spielman Decl. at ¶ 36. Further, the file system method of data storage was not easily searchable or writable. Id. at ¶¶ 41 and 69–70. Consequently, the notion of using a relational database to store information on these servers was born.

A relational database separates the stored data into multiple relations or “tables” and connects them through the use of identification (“ID”) fields. MySpace, Inc., 756 F.Supp.2d at 1223. An ID field generally is a numeric field that can be synchronized across multiple tables in order to allow for faster searching, storing, and editing of information. Because the data is compartmentalized into tables, relational databases can be configured so that the ID fields that map to sensitive textual fields, such as security numbers and bank account information, can be locked while less guarded data, such as a person's name and gender, are available upon query.

2. Patents–In–Suit and Procedural History

The four patents at issue, U.S. Patent Nos. 6,324,538 (“'538 Patent”), 6,850,940 (“'940 Patent”), 7,028,034 (“'034 Patent”), and 7,269,591 (“'591 Patent”), disclose a method and apparatus that allow a user to create, modify, and search for a database record over a computer network. Id. All four patents claim priority to a parent application, filed on December 14, 1995, and subsequently issued as U.S. Patent No. 5,778,367 (“'367 Patent”), that is not being contested in this case. Id.

The inventors of the patents-in-suit were motivated to find a way to better control the content of an Internet listing. Id. Early search engine developers edited and categorized each listing based on their own understanding of the listing without input from the user. Id. This occasionally created listings that were miscategorized or that contained typographical errors—both of which were difficult to search. The inventors attempted to solve these problems by creating a system that enabled a user to control the creation and classification of the user's own database entry over a computer network such as the Internet. Id. Users could create a database entry with their own text and graphics and then choose or create searchable categories that best matched the information. Id. The patents-in-suit claim various aspects of this invention.

Before the earliest priority date of the patents-in-suit, however, the Mother of all Bulletin Boards (“MBB”) was developed by Dr. Oliver McBryan at the University of Colorado. The MBB was first made available for public use in November 1993, more than two years before the priority application for the patents-at-issue was filed. Id. at 1224. The MBB provided the ability to have online Internet catalogues that could grow through user input without the need for intervention by a webmaster or administrator. Id. The MBB stored all its entries in the file system of the computer running the MBB. The data within the file system was stored hierarchically as opposed to relationally.

As earlier noted, not long after the MySpace and craigslist cases were consolidated in May of 2010, MySpace and FOX jointly filed a motion for summary judgment on the issue of invalidity of all four patents-in-suit. This motion was based on the MBB prior art system. The motion sought summary judgment that all the claims were invalid as anticipated or obvious. And as noted, days later craigslist also filed a similar motion for summary judgment. A hearing was held on October 1, 2010. Following the hearing, and pursuant to the court's instruction, each party filed supplemental briefs directed towards specific topics including the functioning of the MBB software. In November 2010 the district court entered an order granting the motion for summary judgment of invalidity. The district court concluded that all the claims were either anticipated or rendered obvious by the MBB, and entered a final Judgment under Fed. R. Civ. Pro. 54(b) for the MySpace parties.

GraphOn timely appealed. Under 28 U.S.C. § 1295(a)(1), we have jurisdiction over final judgments arising under the patent laws.

Discussion

1. Claim Construction

The parties dispute what is covered by the term “database,” a term that is found in each of the 73 claims in the patents-in-suit. Although our precedent establishes that claim construction is an issue of law that we review without deference, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–55 (Fed.Cir.1998) (en banc), we weigh carefully the guidance provided by the trial court.

If the term “database” is understood to cover different types of data organization systems, including both file (hierarchical) and relational systems, then the MBB, which all parties concede is prior art and which taught the same basic approach as the patents-in-suit, would invalidate all the claims as either anticipated under 35 U.S.C. § 102 or obvious under § 103. If, on the other hand, “database” covers only relational systems as urged by GraphOn, it would not be so clear that the MBB invalidates the claims because the patents-in-suit would be understood to disclose and claim a differently-designed system to accomplish essentially the same end. At a minimum there would be a genuine issue of disputed fact on the question of invalidity, and summary judgment would be inappropriate.

The district court construed “database” to mean “a collection of data with a given structure that can be stored and retrieved,” thus including both file (hierarchical) and relational systems. MySpace, Inc., 756 F.Supp.2d at 1232. This was essentially the construction urged by the MySpace parties. GraphOn argues that we should reverse the district court's “database” construction and redefine it as limited to a relational database. In GraphOn's view, the claims, written description, and file histories limit the term to relational databases. Thus, according to GraphOn, hierarchical databases, such as the file system used by the MBB, cannot be prior art.

In construing the claims, we begin with an examination of the ordinary and customary meaning of the claim language itself in the context of the written description of the...