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Dow Jones & Company, Inc. v. Ablaise Ltd.

July 15, 2009

DOW JONES & COMPANY, INC., PLAINTIFF,
v.
ABLAISE LTD., ET AL., DEFENDANTS.
DOW JONES REUTERS BUSINESS INTERACTIVE, LLC, D/B/A FACTIVA PLAINTIFF,
v.
ABLAISE LTD., ET AL., DEFENDANTS.



The opinion of the court was delivered by: James Robertson United States District Judge

MEMORANDUM

Ablaise is the owner of U.S. Patent No. 6,961,737 ('737 patent) and U.S. Patent No. 6,295,530 ('530 patent). In 2006, Ablaise accused Dow Jones of infringing the patents and offered a licensing agreement. Dow Jones declined the offer and sued for a declaratory judgment that the patents were invalid and not infringed. Ablaise counterclaimed for infringement of both patents.

I issued a Markman order in July 2007. Dkt. 28. In October 2008, I denied Ablaise's motion to dismiss the '530 patent, finding that Ablaise's offer of a covenant not to sue Dow Jones did not oust me of subject matter jurisdiction over Dow Jones' claim that the patent was invalid. See Dkt. 97, at 5.

Now before me is Dow Jones' motion for summary judgment of invalidity as to all asserted claims: Claims 1, 3, 4, and 6 of the '737 patent and Claims 1-3 of the '530 patent. The motion will be granted.

Background

The '737 and '530 patents describe methods for using a computer server to send personalized content and format over the World Wide Web in the form of HTML pages that are generated dynamically. Both patents claim a priority date of May 15, 1995. Statement of Undisputed Facts [hereinafter "SUF"] ¶ 24. At that time, web browsing was fairly common, and web sites were capable of generating personalized content "dynamically" -- that is, without requiring manual alterations to the source code. Id. ¶ 7. But, in Ablaise's telling, web sites, unlike non-Web programs such as Microsoft Access and SQL, id. ¶¶ 14-15, could not display personalized content in a personalized format. The patents-at-issue provided methods for addressing this limitation.

The patented methods involve the use of HTTP, HTML, and CGI. HTTP is an Internet protocol that allows a user (known as a "client") to communicate with a server and request that the server send specific content. HTML is a rendering language that allows the server to define the content and format of a web page through the use of "tags," like "center" to center text and images, or "p" to move text to a new paragraph. CGI is a program that generates web pages dynamically, or "on the fly." Each of these technologies was well known to web developers in May 1995. Id. ¶¶ 1-6.

Although Dow Jones challenges the validity of Claims 1, 3, 4, and 6 of the '737 patent, and Claims 1-3 of the '530 patent, the focus of the parties' motions is exclusively on the validity of the first claim in each of the patents. They agree that, if Claim 1 of either patent is invalid, the remaining asserted claims of that patent are invalid as well.

Claim 1 of the '737 patent describes: A method for serving pages of viewable data to browsing devices connected to a network, wherein a page of said viewable data comprises content data defining text and/or graphics and formatting data which specifies locations of said text and/or graphics with a page, and said viewable data is displayed at a browsing device such that locations of said text and/or graphics depend on said formatting data, said method comprising: identifying requests from browsing devices that define a request for specified content data; storing content data; storing executable functions; maintaining a user database comprising information relating to user preferences; and in response to identifying a request for specified content data and a user identifier: (a) reading user preference information from said user database in response to a received user identifier; (b) selecting stored content data in dependence upon the content data specified in a received request; (c) receiving format identifiers identifying the type of formatting required; (d) selecting a set of stored functions in dependence upon a received format identifier and said read user information; and (e) executing said set of functions to generate viewable data comprising said selected content data and formatting data.

Dkt. 95, Ex. 1, at 19:65-20:25. Claim 4 teaches a "serving device" that performs the method described in Claim 1. Claim 3 is identical to Claim 1 except that it requires that the "viewable data" be "HTML data" and that the "formatting data" comprise "HTML tags." Claim 6 adds the same "serving device" requirement to Claim 3 that Claim 4 adds to Claim 1. Id. at 20:31-21:7.

Claim 1 of the '530 patent describes: A method of serving output signals from a serving device to a plurality of browsing devices connected to a network, wherein said output signals represent commands executable by a browsing device so as to display viewable data in accordance with a specified page format, said method comprising steps of: identifying requests from browsing devices that define a request for specified viewable data, said request including formatting type identification data; maintaining a plurality of formatting types of data defining respectively corresponding predetermined formats for portions of said viewable data; storing content data representing said viewable data; selecting a specific one of said types of formatting data in response to said formatting type identification data; processing said content data and said formatting types of data so as to combine said selected part of said content data with said specific one of said types of formatting data, and for outputting processed viewable data with executable instructions; and supplying output signals to the requesting browser device derived from said output processed data, in which said output signals represent commands executable by a browsing device so as to display said viewable data in accordance with a first specified page format when a first type of formatting data is selected and in a second specified page format when a second type of formatting data is selected.

Dkt. 95, Ex. 2, at 19:55-20:29. Claim 2 requires that the "content data" include "graphics data." Claim 3 requires that a "serving device" perform the method described in Claim 1. Id. at 20:30-21:24.

The patents differ from one another in two relevant respects. First, the '737 patent describes a server that is capable of more flexible formatting than is the '530 patent. If, for example, a user expresses a preference for certain content to appear higher on the web page, the server can generate a web page that satisfies those preferences, while the '530 patent limits a user's formatting options to certain templates. The '530 patent user can choose between available templates, but cannot express more particular formatting preferences.

Second, only the '737 patent describes a server that stores a user's preferences in a database. Once a user expresses a preference for particular content to appear in a particular location, the content will appear in that location whenever the user visits the website until or unless the user expresses a different preference. The '530 patent describes a server that is only capable of accommodating a user's current request for a particular template. If a user requests a specific template, the page will appear in that template at that time, but the user will have to re-request a template the next time he visits the page.

Analysis

A. Legal Standards

On this motion for summary judgment, all reasonable inferences are drawn in favor of Ablaise, the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

Dow Jones contends that the patent claims are either invalid as anticipated, or, if not anticipated, invalid as obvious. Invalidity must be proven "with facts supported by clear and convincing evidence." Adenta GMBH v. Orthoarm, Inc., 501 F.3d 1364, 1371 (Fed. Cir. 2007) (quoting SSIH Equip. S.A. v. U.S. Int'l Trade Comm'n, 718 F.2d 365, 375 (Fed. Cir. 1983)). To prevail on its motion, Dow Jones must first identify relevant prior art. In this case, art is only prior art if patented, used, or published before the priority date of the challenged patents. See 35 U.S.C. § 102(a).*fn1 The art was "used" if there is evidence of "any use of the [art] by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor." Adenta, 501 F.3d at 1371. The art was "published" if it was "made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence [could] locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation." Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006).

Dow Jones then must prove that the prior art anticipates the patents. Under 35 U.S.C. § 102, a patent is anticipated if "all of [its] elements and limitations . . . [are] expressly or inherently described in a single prior art reference." Elan Pharmaceuticals, Inc. v. Mayo Found. for Med. Educ. & Research, 304 F.3d 1221, 1227 (Fed. Cir. 2002). The reference "must not only disclose all the elements of the claim within the four corners of the document, but must also disclose those elements 'arranged as in the claim.'" Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).

If Dow Jones fails to prove anticipation, it can still prevail if it proves that the patents are obvious. Under 35 U.S.C. § 103(a), Dow Jones must show that "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." This § 103 analysis requires an assessment of the "interrelated teachings of [the prior art]; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art." KSR Int'l. Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1740 (2007).

B. The '737 patent

1. Fishwrap

Fishwrap was an online newspaper developed at M.I.T. that used CGI programs to generate HTML-formatted pages dynamically. SUF ¶ 35. In its initial form, it allowed users to select the sections and topics they wanted the web page to display. Id. ¶ 34. Later, developers added a "self- organization feature," which recorded a user's reading habits in a database, fed that information into an algorithm, and used the algorithm's output to re-format the newspaper to reflect the user's implied preferences. For instance, if a user viewed sports stories first, or more frequently, then sports stories would eventually appear higher on the page.

a. Prior Art

Dow Jones asserts that Fishwrap is prior art because it was in use before May 15, 1995. Ablaise concedes that versions of Fishwrap were in use before that date, and that some of those versions "self-organized the order of topics generated by the newspaper," Dkt. 99, at 15. But Ablaise maintains that Dow Jones has not shown by clear and convincing evidence that the ...


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