United States District Court, D. Columbia.
August 26, 2015.
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.
DICKSTEIN SHAPIRO, LLP, Defendant: John Douglas Aldock,
Matthew Michael Hoffman, LEAD ATTORNEYS, GOODWIN PROCTER LLP,
Washington, DC; Jacob R. Osborn, GOODWIN PROCTER, LLP,
C. Lamberth, United States District Judge.
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).
2006, plaintiff Encyclopaedia Britannica, Inc. ("
EB" ) sued several companies
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.
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).
The Patents at Issue
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.
'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
selecting a picture for retrieval. Id. at 7:4-12
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.
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.
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.
29 of the '437 patent recites:
29. A machine-implemented method for retrieving information,
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
at least one textual search entry path allowing a user to
enter text to search for in the stored textual information;
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
providing a first indicator associated with the retrieved
textual information indicating the availability of associated
retrieving the associated graphical information in response
to input of the user associated ...