Dow Jones & Co. Inc v. Ablaise Ltd

• Decision Date: 28 May 2010
• Docket Number: No. 2009-1524.,2009-1524.
• Citation: 606 F.3d 1338
• Parties: DOW JONES & COMPANY, INC. and Dow Jones Reuters Business Interactive, LLC, (Doing Business as Factiva), Plaintiffs-Appellees,v.ABLAISE LTD. and General Inventions Institute A, Inc., Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

606 F.3d 1338

DOW JONES & COMPANY, INC. and Dow Jones Reuters Business Interactive, LLC, (Doing Business as Factiva), Plaintiffs-Appellees,v.ABLAISE LTD. and General Inventions Institute A, Inc., Defendants-Appellants.

No. 2009-1524.

United States Court of Appeals Federal Circuit.

May 28, 2010.

Steven M. Lieberman, Rothwell, Figg, Ernst & Manbeck, P.C., of Washington, DC, argued for plaintiffs-appellees. With him on the brief were Sharon L. Davis, Brian S. Rosenbloom and Oliver L. Edwards.

Jacob M. Holdreith, Robins, Kaplan, Miller & Ciresi, L.L.P., of Minneapolis, MN, argued for defendants-appellants. With him on the brief were Ronald J. Schutz, Cyrus A. Morton, Trevor J. Foster and Patrick M. Arenz. Of counsel was Seth A. Northrop.

Before MICHEL, Chief Judge,

RADER, Circuit Judge, and FOLSOM ^*, District Judge

MICHEL, Chief Judge.

This appeal arises from a decision of the United States District Court for the District of Columbia granting summary judgment of invalidity against appellants Ablaise Ltd. and General Inventions Institute A, Inc.'s (collectively, “Ablaise”) U.S. Patent Nos. 6,961,737 (the '737 patent) and 6,295,530 (the '530 patent). Specifically, the district court held that the asserted claims of the '737 patent were invalid as obvious under 35 U.S.C. § 103 and that the asserted claims of the '530 patent were invalid under 35 U.S.C. § 102 as anticipated by prior art. Additionally, Ablaise appeals the district court's denial of its motion to dismiss appellees' Dow Jones & Co., Inc. and Dow Jones Reuters Interactive, LLC's (d/b/a Factiva) (collectively, “Dow Jones”) claim against the '530 patent on the grounds that Ablaise's proffer of a covenant not to sue Dow Jones for infringement of that patent divested the court of subject matter jurisdiction. For the reasons set forth below, we reverse the district court's denial of Ablaise's motion to dismiss Dow Jones' invalidity claim against the '530 patent and affirm the district court's grant of summary judgment that the asserted claims of the ' 737 patent are invalid as obvious. Because the district court lacked subject matter jurisdiction to hear Dow Jones' claim against the '530 patent, this court cannot reach the question of whether the asserted claims of that patent are invalid.

I.

A. The Patents-in-suit

The '737 and '530 patents-in-suit both claim a method for generating computer web pages that are generated and customized for the specific individual viewing them based upon information encoded in the signal sent to the location generating the pages.

In the early 1990s, the continuing development and increasing availability of the Internet and the arrival of more powerful personal computers (“PCs”) set the stage for the advent of the World Wide Web (the “Web”). The functioning of the Web depends upon a basic technology, Hypertext Transfer Protocol (“HTTP”) and a computer language, Hypertext Markup Language (“HTML”). HTTP is an Internet protocol that enables a Web browser (a program installed upon an individual's PC) to request a Web server (a Web site at which information is stored) to send specific content in the form of a Web page to the user's Web browser. This content includes information, in the form of HTML content, which specifies the formatting of the layout and informational content of the web page displayed on the PC user's computer screen.

HTML is a language embodying sets of instructions that control the format of a Web page displayed on the browser application of a user's PC. HTML employs particular instructions, known as “tags” to determine the appearance of a Web page. A tag is designated by placing the instruction within the symbols . For example, the tag indicates that the text following the tag should be in boldface type and the tag

indicates the end of the boldface text sequence. It is undisputed that by May 15, 1995 (the priority date claimed by the '737 patent and the '530 patent), HTML was well known to persons of ordinary skill in the art of Web design.

In the nascent days of the Web, Web pages were typically constructed and stored as single, invariant handcoded pages. Thus, for a company making its catalogue available on the Web, each product in the catalog required that its own page be individually constructed and stored separately. Needless to say, for a company that offered hundreds or thousands of changing products, constructing a page for each was extremely labor-intensive. Moreover, each Web page so constructed and stored would appear identical upon every user's screen, regardless of the user's preferences or her PC's capabilities.

A more flexible and less costly solution to this situation is to dynamically generate Web pages upon user demand (colloquially referred to as being generated “on the fly”). In this method, the HTML formatting information for a given Web page would be generated automatically only after the page was requested by the PC user. It is undisputed by the parties that by May 15, 1995, the ability of Web Site developers to construct Web pages on the fly by using programs known as Common Gateway Interfaces (“CGI programs” or “CGI scripts”) was well known in the art. CGI programs are standard protocols that define how the software of a Web server delegates the generation of Web pages to the browser on a user's PC. Using a CGI program, a person of ordinary skill in the art could create individualized, dynamically-generated Web pages for each end user.

The '737 and '530 patents each claim methods for using a Web server to send individualized content and formatting instructions in the form of Web pages that are generated on the fly in response to user preference information encoded in the user's HTTP request for the specific Web page. At issue in this appeal are claims 1, 3, 4, and 6 of the '737 patent and claims 1-3 of the ' 530 patent. However, in the district court, both parties focused on the first claim of each patent, agreeing that if that claim is invalid, the remaining asserted claims are also invalid. Claim 1 of the '737 patent discloses:

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 within 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;

(b) 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.

'737 patent col.19 l.65-col.20 l.16. Claim 4 teaches a “serving device” that performs the method recited 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” limitation to claim 3 that claim 4 adds to claim 1.

Claim 1 of the '530 patent discloses:

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 part of said content data representing specific 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 browsing device derived from said output processed data,

in which said output signals represent commands executable by a browsing device so as to display said specific 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.

'530 patent col.19 l.55-col.20 l.19. Claim 2 requires that the “content data” include “graphics data.” Claim 3 requires that a “serving device” perform the method described in claim 1.

The patents differ from one another in two relevant respects. First, the method claimed by the '737 patent is capable of more flexible formatting than that claimed by the '530 patent. The '737 patent discloses a method of generating Web page formatting that coincides with a user's individual preferences, whereas the '530 patent limits a user's formatting options to certain prescribed templates which can be chosen by the user.

Second, only the '737 patent discloses a server that stores the user's preferences in a database to be matched against subsequent...