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Encyclopaedia Britannica, Inc. v. Dickstein Shapiro LLP

United States District Court, D. Columbia.

August 27, 2015


         Decided August 26, 2015.

Page 104

          For ENCYCLOPEDIA BRITANNICA, INC., Plaintiff: Joseph E. DiGenova, Victoria Toensing, LEAD ATTORNEYS, DIGENOVA & TOENSING, LLP, Washington, DC; Joseph N. Hosteny, Raymond P. Niro, LEAD ATTORNEYS, PRO HAC VICE, NIRO, HALLER, & NIRO, Chicago, IL; Neil H. Koslowe, LEAD ATTORNEY, SHEARMAN AND STERLING LLP, Washington, DC; Robert P. Cummins, PRO HAC VICE, NORMAN, HANSON, & DETROY, LLC, Portland, ME.

         For DICKSTEIN SHAPIRO, LLP, Defendant: John Douglas Aldock, Matthew Michael Hoffman, LEAD ATTORNEYS, GOODWIN PROCTER LLP, Washington, DC; Jacob R. Osborn, GOODWIN PROCTER, LLP, Washington, DC.

Page 105


         Royce C. Lamberth, United States District Judge.

         The patents at issue in this case cover multimedia systems for retrieving textual and graphical information. The question before the Court is whether these claims are patent eligible under 35 U.S.C. § 101, or are instead drawn to a patent-ineligible abstract idea. The parties agree that the § 101 issue is properly before the Court and may be addressed pursuant to a motion for judgment on the pleadings under Rule 12(c).

         I. BACKGROUND

         A. Procedural History

         In 2006, plaintiff Encyclopaedia Britannica, Inc. (" EB" ) sued several companies

Page 106

for alleged infringement of United States Patent Nos. 7,051,018 (the " '018 patent" ) and 7,082,437 (the " '437 patent" ). Compl. ¶ 7. Both patents were held invalid in Texas District Court because of a previously unnoticed defect in an earlier patent application filed in 1993. Id. ¶ ¶ 10-11 & Ex. B. EB then sued Dickstein Shapiro, the law firm that had prosecuted the 1993 application on EB's behalf before the Patent and Trademark Office (" PTO" ), for malpractice. EB contends that but for the defect in the 1993 application, the '018 and '437 patents would have been valid and that it would have won its infringement case. This Court has previously held that under the " case-within-a-case" principle that governs malpractice claims, EB must prove the merits of its underlying patent claims in order to show that the alleged malpractice actually caused it some injury. Encyclopaedia Britannica, Inc. v. Dickstein Shapiro LLP, 905 F.Supp.2d 150, 153-54 (D.D.C. 2012). Accordingly, the parties have briefed issues relating to claim construction and questions of validity under 35 U.S.C. § 112.

         While those issues have remained pending, there have been developments in patent law that Dickstein Shapiro alleges are " fatal" to EB's malpractice claim, regardless of how the disputed claim terms are construed. In Alice Corporation Party Ltd. v. CLS Bank International, 134 S.Ct. 2347, 82 L.Ed.2d 296, 189 L.Ed.2d 296 (2014), the Supreme Court held that claims directed to abstract ideas are not eligible for patent protection under § 101, and that " mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Id. at 2358. Dickstein Shapiro argues that applying the principles set forth in Alice, " the asserted claims of the '437 and '018 patents are invalid as a matter of law because they merely recite computerized implementation of abstract ideas." Def.'s Mem. in Supp. of Mot. for J. on the Pleadings Based Upon Lack of Patent-Eligible Subject Matter (" Def.'s Mot." ) at 2. If true, EB cannot prove the case-within-a-case, and Dickstein Shapiro is entitled to judgment on the pleadings. See, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1349 (Fed. Cir. Dec. 23, 2014) (affirming district court's ruling on § 101 issues based solely on the pleadings, without claim construction, discovery, or expert reports).

         B. The Patents at Issue

         Dickstein Shapiro has provided a helpful overview of the patents at issue. Because EB did not dispute this factual summary or provide an alternative, and because the Court finds it succinct and accurate, it is largely reproduced as follows.

         The '018 and '437 patents both derive from the same original patent application and share a common specification. As described in the body of the specification, the invention is a computerized encyclopedia containing both textual articles and graphical images (e.g., photographs and charts). A user can search the encyclopedia by selecting one of several " entry paths" from a main menu screen. For example, the " Topic Tree" entry path allows a user to browse through a list of topics and subtopics and then retrieve articles of interest. '437 Patent at 7:13-19. The " Idea Search" entry path allows a user to enter terms to search for in the database, and then generates a list of article titles relevant to the search request, from which the user can select an article for retrieval. Id. at 6:61-65. And the " Picture Explorer" entry path allows a user to search for pictures in the encyclopedia database, either by randomly browsing through a collection of pictures or browsing or searching through a list of picture captions and

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selecting a picture for retrieval. Id. at 7:4-12

         As described in the specification, the invention also includes a " World Atlas" entry path. Id. at 7:24-32. When this option is selected, the computer will display a map of the Western Hemisphere. Id. at 19:19-20. The user can then zoom in on particular regions or pan the map in a particular direction. Id. at 19:20-26. Places on the map are marked with place names (if the " Labels" feature is turned on) and with symbols (e.g., a circle for a city or a star for a state capital) as on a conventional map. Id. at 19:27-30, 20:54-58. The user can select a place name (e.g., by clicking with a mouse) and retrieve a list of articles related to that place. Id. at 19:30-35. In addition, the user can search for a place, either by browsing through a list of place names or entering the place name in a search box to generate a list of place names. Upon selecting a place name, a map showing that place will be displayed. Id. at 19:60-20:14.

         The specification states that other variations on the invention are possible. " More particularly, it is contemplated that this invention can be used with any information that can be stored in a database. While the present invention has largely been described with reference to an encyclopaedia, other databases of published graphical or textual information could be included." Id. at 22:23-28.

         Both patents include " method" claims, which recite a series of steps, and analogous " system" claims, which are directed to a computer-readable medium containing software that can perform the steps of the claimed method. EB has asserted that the claims that are infringed are claims 29 and 30 of the '437 patent and claims 96 and 113 of the '018 patent, and these claims are representative of the independent claims of the two patents.

         Claim 29 of the '437 patent recites:

29. A machine-implemented method for retrieving information, comprising:
storing textual information and graphical information of any type on a computer-readable medium in at least one database;
providing a plurality of entry paths for searching at least a portion of the stored textual and graphical information, the entry paths comprising:
at least one textual browse entry path allowing a user to select textual information from a predetermined list of textual information;
at least one textual search entry path allowing a user to enter text to search for in the stored textual information; and
at least one graphics entry path for graphically searching at least a portion of the graphical information;
retrieving textual information based on input of the user in the textual browse entry path or the textual search entry path;
providing a first indicator associated with the retrieved textual information indicating the availability of associated graphical information;
retrieving the associated graphical information in response to input of the user associated ...

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