The Software IP Report

Claims to Electronic “Message Publishing” Not Patent-Eligible

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

Twitter has won a summary judgment of invalidity, under 35 U.S.C. § 101 and the familiar Alice/Mayo “abstract idea test, concerning claims of five patents directed to authenticating a message sender and then converting a message to a format to display on the Internet.  Easyweb Innovations, LLC v. Twitter, Inc., No 11-CV-4550 (JFB)(SIL) (E.D.N.Y. March 30, 2016).  Notably, although the claims of all five patents recited computer elements and were grounded in a computer network environment, the court rejected the plaintiff’s attempt to rely on DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014).

You might want to peruse the claims (all pretty similar to one another) of the five patents-in-suit, US patent nos. 7,032,030; 7,596,606; 7,685,247; 7,689,658; and 7,698,372.  Here is the court’s characterization of the patents:

The ‘030 Patent discloses a “Message Publishing System (“MPS”) and method,” whereby a user of the MPS sends the message to be published to the MPS; the MPS verifies that the sender is an authorized user before publishing the message; and the MPS “converts the received message into one or more formats, preferably webpage(s) for display on the Internet.” (‘030 Patent at Abstract.) The message is stored in a network storage area, and “[w]hen the MPS receives a request for the message, it retrieves the requested message from the storage area and sends it to the requester for review.” (Id.) “It is a primary object of the invention to allow virtually any person or organization to easily publish a message on the Internet that can be simultaneously reviewed by a mass number of people from around the world. (Id. at 4:36-39.) The other patents-in-suit disclose a similar invention, with subtle distinctions.

This led to the court agreeing with Twitter’s argument

that the patents-in-suit are directed to the abstract idea of “authenticating a user based on the format of the user’s message,” just like the “idea of structuring an insurance claims processing system to generate tasks automatically in response to events.” (Twitter July 3, 2014 Post-Alice Letter, at 1.) It further argues that language of the claims “adds nothing to the abstract idea of format-dependent authentication”; each function performed by the central processor is “purely conventional”; and that, “[u]nder the logic of Alice, if ‘one or more computers’ collectively performing a set of conventional functions is unpatentable, a single computer performing the same set of conventional functions is not patentable either.” (Id. at 2-4.)

And the court thus rejected the plaintiff’s citation to DDR Holdings and argument

that its patents “claim a solution ‘necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,’ i.e., on-demand Internet publishing,” (EasyWeb Dec. 15, 2014 Letter, at 2 (quoting DDR Holdings, LLC, 773 F.3d at 1257)), the Court concludes that EasyWeb’s patents are directed to an abstract idea of authentication.

The holding of invalidity followed a claim construction, and was accompanied by a summary judgment of non-infringement in Twitter’s favor.