Tele-Publishing, Inc. v. Facebook, Inc.

252 F.Supp.3d 17

TELE–PUBLISHING, INC., Plaintiff,

v.FACEBOOK, INC., and TheFacebook, LLC, Defendants.

CIVIL ACTION NO. 09-11686-DPW.

United States District Court, D. Massachusetts.

Filed May 11, 2017

Alison C. Casey, Daniel J. Gleason, Heather B. Repicky, Ronald E. Cahill, Rory P. Pheiffer, Cynthia M. Guizzetti, Matthew J. Connolly, Nutter, McClennen & Fish, LLP, Timothy D. Johnston, Greenberg Traurig LLP, Boston, MA, for Plaintiff.

Andrew C. Mace, Javier Torres, Cooley, LLP, Daniel Knauss, Pro Hac Vice, Heidi Keefe, Pro Hac Vice, Jeffrey Norberg, Pro Hac Vice, Mark Weinstein, Pro Hac Vice, Melissa Keyes, Pro Hac Vice, Phillip E. Morton, Pro Hac Vice, Reuben Chen, Pro Hac Vice, Sarah B. Whitney, Pro Hac Vice, Cooley Godward Kronish LLP, Palo Alto, CA, Donald K. Stern, Ellen A. Scordino, Maria Ostrovsky, Richard S. Sanders, Cooley LLP, Boston, MA, Jonathan Bach, Cooley LLP, New York, CA, Meghan M. Hart, Cooley Godward Kronish LLP, Boston, MA, Michael G. Rhodes, Cooley, LLP, San Francisco, CA, for Defendants.

MEMORANDUM AND ORDER

DOUGLAS P. WOODLOCK, UNITED STATES DISTRICT JUDGE

Plaintiff Tele–Publishing, Inc. ("TPI") and defendants Facebook, Inc. and TheFacebook, LLC (collectively "Facebook") have presented various dispositive motions to resolve this computer program patent dispute. The focus of the instant memorandum will be the respective requests for summary disposition regarding the validity of the asserted claims of U.S. Patent No. 6,253,216 (the "'216 Patent") under 35 U.S.C. § 101, which governs whether the subject matter is patentable as assessed through the framework of Alice Corp. Pty. Ltd. v. CLS Bank Intern. , ––– U.S. ––––, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). Because I conclude the subject matter of the '216 Patent is not patentable, I will direct the clerk to enter final judgment for the defendants, resolving this case.

I. BACKGROUND

A. The Patent

On June 26, 2001, the Patent and Trademark Office ("PTO") issued the '216 Patent to TPI. The claimed invention "relates to a method and apparatus for providing a personal page over a computer network. More particularly, the method and apparatus provide users with a secure way to display personal information to other computer network users." '216 Patent col 1. l. 14–18.

The patent discusses the history of "personals" sections in newspapers and explains how with "the advent of the Internet's World Wide Web, systems for providing personals advertisements on networked computer systems have appeared." Id. at col. 1. ll. 28–32. These web-based systems "consist largely of the same information that is available in the newspaper advertisements" and "merely mimic the newspaper advertisements" rather than taking advantage of the new technological format. Id. at col. 1. ll. 37–40.

According to the patent, existing networked computer systems for providing personals advertisements have several major shortcomings. First, if the system allows users to customize their personal pages, the system "often requires that the user be able to generate the page using a programing language or other protocol" even though "many users of personals are not familiar with such languages." Id. at col. 1. ll. 59–64. Second, existing systems that use standard web pages "provide no privacy" to users because "the Internet allows access by users world-wide" and "a relatively large number of Internet users exist." Id. at col. 1. ll. 65–68, col. 2. l. 1. "With such a large number of users, it is desirable to restrict access to information on some pages or even to restrict access to some pages." '216 Patent col. 2. ll. 3–6. Finally, existing systems struggle "to direct a desired audience to a particular page. The owner of such a page must simply hope that the desired audience, out of some tens of millions of users, finds the page." Id. at col. 2. ll. 8–11.

The '216 Patent purports to address the shortcomings of earlier systems. The invention is designed "to provide a secure method for providing personal information in a network environment which makes use of the multimedia opportunities available on such a medium and makes the information available in a private way, i.e., only to those people that the person providing the information wishes to see the information." Id. at col. 2. ll. 12–18.

Claim 1 recites:

A method for providing a personal page on a computer system accessible to a plurality of remote users through a computer network, the remote users having profile information stored in the computer network and accessible to other remote users, comprising the steps of:

a) acceptable [sic] [accepting] profile information from a plurality of remote users;

b) prompting a page-creating remote user with a plurality of page templates for the personal page and receiving a template selection from the remote user;

c) prompting the page-creating remote user to enter text to the personal page and receiving entered text from the remote user;

d) prompting the page-creating remote user to select or enter graphical information to display on the personal page and receiving the selection or entry from the remote user;

e) storing attributes representing each selection or entry made by the page-creating remote user in one or more databases;

f) providing the page-creating remote user with means to input security parameters for the personal page, the security parameters specifying authorization of at least one other remote user to access the personal page;

g) storing the security parameters in one or more databases; and

h) displaying the personal page upon request only to remote users who are authorized to access the personal page. Id. at col. 12 ll. 48–67, col. 13 ll. 1–9.

Claims 2, 9, 25, and 26 depend upon Claim 1.¹

Similarly, Claim 21 recites:

A computer program product comprising computer useable medium having computer readable program code to:

(a) prompt a page-creating remote user with a plurality of page templates for displaying personal information and to receive a template selection from the remote user;

(b) prompt the page-creating remote user to enter text to the personal page and to receive entered text from the remote user;?

(c) prompt the page-creating remote user to select or enter graphical information to display on the personal page and to receive the selection or entry from the remote user;

(d) store attributes representing each selection or entry made by the page-creating remote user in one or more databases;

(e) provide the page-creating remote user with means to input security parameters for the personal page, the security parameters specifying authorization of at least one other remote user to view the personal page;

(f) store the security parameters in one or more databases; and

(g) display the personal page only to remote users who are authorized to access the personal page. Id. at. col. 14, ll. 56–67, col. 15 ll. 1–11.

Claim 22 depends upon Claim 21.²

B. The Procedural History

On October 7, 2009, TPI initiated this litigation against Facebook alleging that Facebook's products infringed the '216 Patent. Facebook responded on November 11, 2009 with counterclaims alleging, inter alia , that the '216 patent is invalid. On December 22, 2009, Facebook submitted a request to the PTO for ex parte reexamination of the '216 Patent. Facebook's reexamination request raised questions of patentability based on prior art not cited in the original prosecution of the '216 Patent. On November 5, 2010, the PTO issued an Office Action affirming rejection of all claims of the '216 Patent. The Board of Patent Appeals and Interferences, however, on February 23, 2012 reversed the PTO's decision, holding that the PTO erred in finding that the claims were anticipated or made obvious by prior art.

After the return of the case to this court as the forum for resolution of the dispute, I issued my September 7, 2016 Memorandum and Order ("Markman Order") in which I construed the claims of the '216 Patent and found claims and claim elements 10(d), 16(e), 23, 24, 27, 29(d), 32(d), 31, and 34 invalid as indefinite. Tele–Publishing, Inc. v. Facebook, Inc. , 205 F.Supp.3d 142, 158–61 (D. Mass. 2016). On December 1, 2016, I denied TPI's motion for reconsideration as to my finding that claims 31 and 34 were invalid as indefinite. Tele–Publishing, Inc. v. Facebook, Inc. , No. 09–11686–DPW, 219 F.Supp.3d 237, 240–41, 2016 WL 7042063, at *3 (D. Mass. Dec. 1, 2016). In light of the Markman Order as reaffirmed, the parties pressed dispositive motion practice on multiple fronts, including the question of patentability raised by Facebook's motion #366 and raised in part by TPI's motion #369.

II. DISCUSSION

A. Summary Judgment

A court will grant summary judgment "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." Fed R. Civ. P. 56. At this stage, I read the facts in the light most favorable to the non-moving party and draw all reasonable inferences in its favor. Ramos–Santiago v. United Parcel Serv. , 524 F.3d 120, 122 (1st Cir. 2008). I likewise "view the record ‘through the prism of the evidentiary standard of proof that would pertain at a trial on the merits ... Thus, a moving party seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of invalidity so that no reasonable jury could find otherwise.’ " Exergen Corp. v. Brooklands , 125 F.Supp.3d 307, 312 (D. Mass. 2015) (quoting Eli Lil l y & Co. v. Barr Labs., Inc. , 251 F.3d 955, 962 (Fed. Cir. 2001) ).³

B. Invalidity Under 35 U.S.C. § 101 and Alice

Section 101 of the Patent Act establishes the subject matter which may receive patent protection. As a conceptual matter, the Supreme Court has " ‘long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable ...’ " because they represent " ‘the basic tools of scientific and technological work.’ " Alice , 134 S.Ct. at 2354 (quoting Association for...