Internet Media Interactive Corp v. Barnes & Noble Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Internet Media Interactive Corp. (Delaware)
  • Defendant: Barnes & Noble, Inc. (Delaware) and NOOK Digital, LLC (Delaware)
  • Plaintiff’s Counsel: O'KELLY, ERNST & JOYCE LLC
• Case Identification: 1:18-cv-00426, D. Del., 03/20/2018
• Venue Allegations: Venue is alleged to be proper as Defendants are Delaware corporations that conduct business and direct advertisements to residents in the state.
• Core Dispute: Plaintiff alleges that Defendants’ use of shortened URLs in online advertisements infringes a patent related to systems for accessing web locations using unique codes.
• Technical Context: The technology relates to simplifying user access to specific websites in the early era of the World Wide Web by replacing long, complex URLs with shorter, easier-to-use "jump codes."
• Key Procedural History: The complaint alleges that in a prior proceeding related to the patent-in-suit, the District of Delaware construed several key claim phrases on January 4, 2009. These prior constructions are cited by the Plaintiff as the operative definitions for the terms in the current dispute, which may significantly influence the court's subsequent claim construction and infringement analysis.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,049,835 - "System For Providing Easy Access To The World Wide Web Utilizing A Published List Of Preselected Internet Locations Together With Their Unique Multi-Digit Jump Codes," issued April 11, 2000

The Invention Explained

• Problem Addressed: In the mid-1990s, the World Wide Web was expanding rapidly, but navigating it was difficult. The patent notes that Uniform Resource Locators (URLs) were often a "confusing string of subdirectories, files or executable commands" that were "extremely difficult to work with" and required tedious, error-prone entry by the user ('835 Patent, col. 4:56-65). This created a need for a simpler way to access useful, pre-vetted web content ('835 Patent, col. 4:8-21).
• The Patented Solution: The invention proposes a system comprising two key parts: (1) a "published compilation," such as a printed guide or book, containing reviews of preselected websites, with each site assigned a unique "multi-digit jump code"; and (2) a specialized "JumpCity" website. A user would first access the JumpCity site and then enter the jump code from the published guide. Software on the JumpCity site would then look up the full URL corresponding to the code and automatically navigate the user's browser to the desired destination, bypassing the need for the user to type the complex URL ('835 Patent, Abstract; col. 5:44-56).
• Technical Importance: The system aimed to curate the web and simplify navigation, making the Internet more accessible to non-technically skilled users by replacing complex URLs with simple, memorable codes ('835 Patent, col. 2:10-14).

Key Claims at a Glance

• The complaint asserts independent method claim 11 ('835 Patent, col. 9:1-28; Compl. ¶13).
• The essential steps of independent claim 11 are:
  • publishing a compilation of preselected Internet locations, including a unique predetermined multi-digit jump code for each location;
  • providing a predetermined Internet location (e.g., a central website) that includes means for capturing a jump code entered by a user;
  • a user accessing said predetermined Internet location and entering the desired jump code;
  • receiving the entered jump code at the predetermined Internet location;
  • converting the received jump code to a URL address for the desired preselected location; and
  • automatically accessing the desired preselected Internet location using the converted URL.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The accused instrumentality is the method by which Barnes & Noble provides and operates its website, "www.barnesandnoble.com", and related advertisements, specifically those distributed on social media platforms like Twitter via the "@BNBuzz" account (Compl. ¶7).

Functionality and Market Context

The complaint alleges that Defendants publish advertisements on Twitter that contain shortened links, created by services like Bitly, which redirect users to specific pages on the Barnes & Noble website (Compl. ¶13a-c). The complaint contends that this system of publishing a compilation of links (Tweets) that use unique codes (the alphanumeric string in the shortened URL) to direct users to preselected locations (product pages) constitutes infringement of the patented method (Compl. ¶13). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The infringement theory is one of divided infringement, where the steps of the claimed method are allegedly performed by a combination of the Defendants, the end-user, and a third-party link shortening service (e.g., Bitly). The Plaintiff asserts direct infringement under the standard articulated in Akamai Techs., Inc. v. Limelight Networks, Inc., alleging Defendants control or direct the performance of all steps (Compl. ¶14).

'835 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question will be whether the combination of a user, the Defendant, and a third-party service provider (Bitly) can collectively satisfy the requirements for direct infringement under 35 U.S.C. § 271(a). The complaint's theory of vicarious liability for the actions of the user and Bitly will be a focal point of the dispute (Compl. ¶13d, 13e).
• Technical Questions: The case may turn on whether clicking a single shortened URL, which contains the "jump code" within it, constitutes the two distinct actions of "accessing said predetermined Internet location" and then "entering said desired multi-digit jump code" as recited in the claim. The patent specification appears to contemplate a user first navigating to a central site and then separately inputting a code ('835 Patent, col. 6:60-62), whereas the accused method combines these into a single user click.

V. Key Claim Terms for Construction

The complaint bases its infringement allegations on claim constructions from a prior 2009 court proceeding. The application of these constructions to the accused technology will be critical.

The Term: "a unique predetermined multi-digit jump code"

Context and Importance

The complaint alleges that the 2009 court construed this term to mean "a unique predetermined code consisting of more than one number" (Compl. ¶13b). However, the complaint then provides an example of an accused code, "1CyaU5J", which contains letters (Compl. ¶13b). This apparent mismatch between the cited prior construction and the accused functionality raises the question of whether an alphanumeric string can satisfy a limitation allegedly construed to require only "numbers."

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The patent frequently refers to the code as a "multi-digit jump code" without specifying that the digits must be numeric ('835 Patent, col. 9:5). The purpose of the code is to simplify entry compared to a full URL, a purpose that could be served by short alphanumeric strings as well as purely numeric ones.
• Evidence for a Narrower Interpretation: The patent repeatedly uses the example of a "four-digit jump code" and a "four digit number," suggesting a numeric context ('835 Patent, col. 5:60-66; col. 6:58-59). The term "digit" itself is often understood in a numeric sense. The prior construction cited in the complaint, if accurate, provides strong evidence for a narrower, numbers-only interpretation.

The Term: "entering said desired multi-digit jump code"

Context and Importance

This term is pivotal because the patent specification describes a user inputting a code into an "on-screen HTML form" after arriving at the central "JumpCity" website ('835 Patent, col. 6:60-62). The complaint, however, alleges that a user's single click on a shortened URL constitutes both "accessing" the predetermined location (Bitly) and "entering" the code (Compl. ¶13d). Practitioners may focus on whether "entering" requires a distinct, manual user action separate from the initial act of navigation.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The claims do not specify the method of entry. One could argue that by clicking a link containing the code, the user is causing the code to be "entered" into the link-shortening system for processing.
• Evidence for a Narrower Interpretation: The specification's only embodiment describes manual entry into a form field ('835 Patent, col. 6:60-62, "The code is entered in a standard on-screen HTML box or form"). This specific description may be used to argue that "entering" implies a more active input than simply clicking a hyperlink.

VI. Other Allegations

Indirect Infringement

The complaint does not plead separate counts for indirect infringement. Instead, it frames the case as one of direct infringement under a divided infringement theory, alleging that Defendants are vicariously liable for the actions of users and third-party services, thereby performing all steps of the claimed method as a single entity under the law (Compl. ¶13d-f, ¶14).

Willful Infringement

The complaint does not contain specific allegations of willful infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this case will likely depend on the court’s answers to three central questions:

1. A core issue will be one of divided infringement: Can the Plaintiff establish that Barnes & Noble exercises sufficient direction or control over the actions of both its customers (who click the links) and the third-party link shortening service (Bitly) to be held directly liable for their performance of claim steps under the Akamai standard?
2. A key evidentiary question will be one of functional operation: Does the modern, integrated act of clicking a single shortened URL align with the patent's more sequential process of first "accessing" a central website and then separately "entering" a code? The court will have to determine if there is a fundamental mismatch in the technical operation.
3. A final question will be one of definitional scope: Can an alphanumeric string, as used in modern URL shorteners, satisfy the claim limitation of a "multi-digit jump code," particularly in light of a prior judicial construction that the complaint itself alleges required the code to consist of "more than one number"?