Web Page Creation Patents Found to Be Directed to Patent Eligible Subject Matter

Two related patent cases Express Mobile, Inc. v. Code and Theory LLC and Express Mobile, Inc. v. Pantheon Systems Inc. within the U.S. District Court for the Northern District of California each involve allegations that the various Defendants infringe U.S. Patent Nos. 6,546,397 (the '397 patent) and 7,594,168 (the '168 patent), which share the same specification.

Defendants in these two actions moved to dismiss, contending that the patent claims are drawn only to abstract ideas, ineligible for protection under § 101 of the Patent Act, as explained in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), and its progeny.  The Court, however, found that the patents described a novel technological solution, and that Defendants' characterization of the patents as claiming only an abstract idea failed.  Thus, the motions to dismiss were denied.

The patents relate to building web pages.  The inventive methodology described in the patents involves building a web page by defining it as a set of user-selected "objects" and/or "settings."  The result is not a markup language code file for the web page, but instead a collection of user selected objects and object attributes.  These can be saved in a database, for ease of access and efficient storage.  Because complete code files for each page do not need to be stored, the page structure—the full HTML code itself—is created on the fly each time the page is loaded in a user's Web browser.  This is achieved in part through a browser-appropriate "run time engine" and related files.

Prior methods for building web pages included either programming directly in HTML or JavaScript code, or using a visual editor that output HTML formatted files.  These approaches allegedly were cumbersome and inflexible, in various respects.

Claim 1 of the '397 patent is representative of both patents for purposes of the Alice analysis.  It provides:

A method to allow users to produce Internet websites on and for computers having a browser and a virtual machine capable of generating displays, said method comprising:
    (a) presenting a viewable menu having a user selectable panel of settings describing elements on a website, said panel of setting being presented through a browser on a computer adapted to accept one or more of said selectable settings in said panel as inputs therefrom, and where at least one of said user selectable settings in said panel corresponds to commands in said virtual machine;
    (b) generating a display in accordance with one or more user selected settings substantially contemporaneously with the selection thereof;
    (c) storing information representative of said one or more user selected settings in a database;
    (d) generating a website at least in part by retrieving said information representative of said one or more user selected settings stored in said database; and
    (e) building one or more webpages to generate said website from at least a portion of said database and at least one run time file, where said at least one run time file utilizes information stored in said database to generate virtual machine commands for the display of at least a portion of said one or more web pages.

The Alice court set out a two-step framework for determining patent eligibility.  First, a court determines whether the claims at issue are directed a patent-ineligible concept, namely, an abstract idea.  If so, the court considers the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.  Step two of this analysis is described as a search for an "inventive concept"—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

Express Mobile contended that the patents bring together a number of disparate ideas and concepts, to create a new paradigm for creating, storing, and building web pages.

In contrast, Defendants relied primarily on Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015).  They argued that the patents here are not meaningfully distinguishable from one held invalid in that case, U.S. Patent No. 7,603,382, entitled "Advanced Internet Interface Providing User Display Access of Customized Webpages."  But the Court found otherwise.

The Court stated that the '382 patent in Intellectual Ventures generally related to customizing web page content as a function of navigation history and information known about the user.  The representative claim described a system for providing web pages accessed from a web site in a manner which presents the web pages tailored to an individual user.  The Intellectual Ventures court had little trouble concluding that merely tailoring the information presented to a website user based on information about that user or when the website was being viewed represented patent-ineligible abstract ideas.

The sort of information tailoring in the Intellectual Ventures court was considered a fundamental practice long prevalent in our system.  Examples given included newspaper inserts often being tailored based on information known about the customer—for instance, a newspaper might advertise based on the customer's location.  Providing this minimal tailoring—e.g., providing different newspaper inserts based upon the location of the individual—is an abstract idea.

Tailoring information based on the time of day of viewing was also given as an example of an abstract, overly broad concept long-practiced in our society.  There can be no doubt that television commercials for decades tailored advertisements based on the time of day during which the advertisement was viewed.

The Court found that the patents here are not comparable to those in Intellectual Ventures merely because they also involve webpages that reflect information provided by a user.  Indeed, the patents do not even involve the same category of user—here the "user" is the person who is trying to create webpages, whereas in Intellectual Ventures the user is a person viewing the webpage to whom customized content will be delivered.  The patents here are directed at a purportedly revolutionary technological solution to a technological problem—how to create webpages for the internet in a manner that permits "what you see is what you get" editing, and a number of other alleged improvements over the then-existing methodologies.

The Court found that a more apt comparison to the present patents are those found in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), which reversed a district court's finding of ineligibility under Alice.  At issue in Enfish was an innovative logical model for a computer database.  Enfish supports the notion that a dividing line can be drawn between patents which merely describe using a computer and/or the internet to carry out pre-existing and well-known tasks and techniques, and those that relate to the functioning of computers themselves.  The former will virtually always fail under Alice unless some "inventive concept" can be found in the second step of the analysis; the latter are substantially less easily characterized as merely abstract ideas.

Thus, the Court focused on the claims being directed to a specific asserted improvement in computer capabilities versus a process that qualifies as an "abstract idea" for which computers are invoked merely as a tool.  The claims were not found to be directed to tasks for which a computer is used in its ordinary capacity.

The Defendants further argued that any potentially patent-eligible technological improvements set out in the specification were not fully reflected in the actual claims.  But the Court stated that dismissal under Alice is not appropriate, at least at this juncture, for such reasons because full claim construction is needed.  It simply cannot be said on the present record that the claims are drawn so broadly as to be divorced from the potentially patent-eligible purported technological improvements described in the specification.  Accordingly, the Court denied the motions to dismiss, and the patents survived a first challenge in the litigation.

Express Mobile, Inc. v. Code and Theory LLC (N.D. Cal. 2019)
Order Denying Motions to Dismiss by District Judge Seeborg