Easyweb Innovations, LLC v. Twitter, Inc., 11-CV-4550 (JFB)(SIL)

• Decision Date: 30 March 2016
• Docket Number: No. 11-CV-4550 (JFB)(SIL),11-CV-4550 (JFB)(SIL)
• Parties: EASYWEB INNOVATIONS, LLC, Plaintiff, v. TWITTER, INC., Defendant.
• Court: U.S. District Court — Eastern District of New York

EASYWEB INNOVATIONS, LLC, Plaintiff,
v.
TWITTER, INC., Defendant.

No. 11-CV-4550 (JFB)(SIL)

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK

March 30, 2016

MEMORANDUM AND ORDER

JOSEPH F. BIANCO, District Judge:

Plaintiff EasyWeb Innovations, LLC ("EasyWeb") brings this patent infringement action against defendant Twitter, Inc. ("Twitter"), alleging that Twitter directly and indirectly infringes asserted claims in five patents assigned to EasyWeb: U.S. Patent No. 7,032,030 ("the '030 Patent"), titled "Message Publishing System and Method"; U.S. Patent No. 7,596,606 ("the '606 Patent"), titled "Message Publishing System for Publishing Messages from Identified, Authorized Senders"; U.S. Patent No. 7,685,247 ("the '247 Patent"), titled "System for Publishing and Converting Messages from Identified, Authorized Senders"); U.S. Patent No. 7,689,658 ("the '658 Patent"), titled "Method for Publishing Messages from Identified, Authorized Senders to Subscribers"; and U.S. Patent No. 7,698,372 ("the '372 Patent"), titled "System for Publishing Messages from Identified, Authorized Senders to Subscribers" (collectively, the "patents-in-suit"). The asserted independent claims are Claims 1 and 17 of the '030 Patent, Claims 1 and 18 of the '606 Patent, and Claim 1 in '247, '658, and '327 Patents.

Three motions are before the Court. First, the parties move for the construction of the disputed claims in the patents-in-suit. The Court construes the most significant and dispositive language below. Second, the parties move for summary judgment pursuant to Federal Rule of Civil Procedure 56. Twitter contends that summary judgment is warranted because (1) Twitter does not infringe the patents-in-suit under the proper construction of the claims; (2) EasyWeb has no admissible evidence of damages; and (3) under certain claim constructions, the asserted claims of the patents-in-suit are invalid as anticipated, obvious, for lack of written description, and for claiming abstract ideas. EasyWeb, which also moves to strike the Declaration of Christopher Butler ("the Butler Declaration") proffered by Twitter to authenticate documents generated from the Internet Archive's Wayback Machine, moves for partial summary judgment on Twitter's

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invalidity defenses of anticipation, obviousness, lack of written description, lack of enablement, and lack of patentability for claiming abstract ideas.

The Court first concludes that summary judgment in favor of Twitter is warranted as to Twitter's patentability of abstract ideas defense because the patents-in-suit are directed to a patent ineligible concept and do not include an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Even assuming that the patents-in-suit were patentable, the Court concludes, in the alternative, that Twitter did not infringe EasyWeb's patents. A patent may cover different or after-arising technology through its literal terms or the "doctrine of equivalents," which allows patentees to gain exclusivity beyond the literal claims. A court, however, cannot ignore the actual scope of what a patentee has invented. This litigation involves an assignee attempting to rewrite patent claims to capture technology outside the claims' proper scope—a scope the assignee recognized in earlier lawsuits against different companies—without intrinsic or extrinsic support for such interpretations. For the reasons set forth below and, specifically, because of the proper construction of the terms "format" and "central processor," the Court grants summary judgment of noninfringement to Twitter. The uncontroverted evidence establishes that Twitter's system does not authenticate senders based on the "format of the message," and its distributed server architecture does not read upon the proper construction of "central processor." Therefore, it is irrelevant whether EasyWeb has admissible evidence of damages. Moreover, in light of the Court's holdings on nonpatentability and noninfringement, the Court need not address the other defenses raised by Twitter.

I. BACKGROUND A. Factual Background

In this section, the Court broadly details the patents-in-suit and Twitter's accused technology. The Court takes the facts set forth herein from the patents-in-suit, and the parties' declarations, depositions, exhibits, and Rule 56.1 Statements of Fact. Unless otherwise noted, each fact is undisputed or the opposing party has not pointed to any contradictory evidence in the record. Where a party's Rule 56.1 Statement contains specific citations to the record as support, the Court cites to the Rule 56.1 Statement, rather than the underlying citation to the record. As to each cross-motion, the Court construes the facts in the light most favorable to the non-moving party. See Capobianco v. City of New York, 422 F.3d 47, 50 n.1 (2d Cir. 2005).

1. The Patents-in-Suit

Beginning in 2006, the U.S. Patent & Trademark Office ("USPTO") issued the patents-in-suit to John Codignotto ("Codignotto"), who assigned them to EasyWeb. (See '030 Patent, Li Markman Decl. Ex. A; '606 Patent, Novikov MSJ Decl. Ex. 24; '247 Patent, Li Markman Decl. Ex. B; '658 Patent, Novikov MSJ Decl. Ex. 26; '327 Patent, Novikov MSJ Decl. Ex. 27.) Codignotto conceived of the underlying idea no earlier than January 23, 1998. (Def. 56.1 ¶1.) As far as he knew, people could publish information on the Internet in two ways: (1) own or have access to a computer, web publishing software "that is specifically capable of working with webpages" (i.e., HTML-type files), and an Internet server; and have the technical knowledge to use these items; or (2) hire a "webmaster" to create, publish, and maintain the content. ('030 Patent

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at 2:60-3:15; see Codignotto Dep. at 76:1-5, Novikov MSJ Decl. Ex. 1.) This could be "a daunting task," and Codignotto wanted to find a solution "[t]o truly allow virtually anyone to publish a message on the Internet." ('030 Patent at 2:59-60, 4:30-32; Codignotto Dep. at 73:8-9.) Codignotto first determined that the invention could be practiced with a fax machine. Upon receiving a fax, the invention "would handle the process of . . . tak[ing] the fax, convert[ing] it into a digital format[, t]hen convert[ing] it into a webpage[, t]hen post[ing] it on a web server on the internet."¹ (Codignotto Dep. at 73:10-74:12.) Codignotto soon decided that the system could be extended to allow posting of email and telephone voice messages to the Internet as well. (Id. at 81:21-82:15.) Thus, "in essence, the invention allows virtually anyone to automatically create a new website, complete with multiple webpages, by using just a telephone or fax machine" or email. ('030 Patent at 44:61-64.)

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.

2. Twitter's Technology

EasyWeb alleges that Twitter, a social networking site created in 2006 by Jack Dorsey, Evan Williams, and Biz Stone (Def. 56.1 ¶ 27), infringes the patents-in-suit through the operation of its "twitter.com" website and service. Twitter.com allows users to publish "tweets," which are messages of 140 characters or less. (Id. ¶ 32.) According to Twitter's expert, Paul Clark ("Clark"), "Twitter accepts messages for publication from a user in one (or a combination) of four formats: Tweets may be in text, and/or in one of the three supported image formats, JPG, PNG, and GIF." (Clark Noninfringement Report ¶ 163, Clark MSJ Decl. Ex. B.) Users can send tweets using a web browser, mobile applications, SMS ("Short Messaging Service"), or MMS ("Multimedia Messaging Service"). (Def. 56.1 ¶¶ 35, 44, 50.)

To send a tweet using a browser, a user must first log in to twitter.com. (Id. ¶ 36.) When a user loads twitter.com, the browser receives a cookie, which is an alphanumeric text string. (Id. ¶¶ 37-38.) To send a tweet, the user must type the text of the tweet (if any) into a box. (Id. ¶ 39.) When a user clicks the "Tweet" button, the browser places the text of the tweet (if any) into a HTTP ("Hypertext Transfer Protocol") POST wrapper—a data structure that permits a browser to submit data to a remote server over the World Wide Web. (Id. ¶¶ 40-41.) The HTTP POST wrapper has a header that contains a cookie. (Id. ¶ 42.) Upon receiving an HTTP POST wrapper, Twitter's servers in its data center in Sacramento, California extract the text of the tweet (if any)

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in the form of plain text. (Id. ¶ 43.)² The data center contains approximately 480 server clusters, with between 1 and 3300 servers in each cluster. (Id. ¶ 60.) The clusters perform specific, different functions during the message publishing process: one cluster receives the tweet, another cluster authenticates users, a separate cluster stores the tweet, and a separate cluster publishes the tweet. (Contreras Decl. ¶ 22.)

A user also can tweet using a mobile application, such as Twitter for iOS or Twitter for Android. (Def. 56.1 ¶ 44.) The first time a user loads a mobile application, she is prompted to input a username and password, which is transmitted to Twitter. (Id. ¶ 15.) After Twitter receives...