Internet Media Interactive Corp v. Morgan Stanley

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Internet Media Interactive Corp. (Delaware)
  • Defendant: Morgan Stanley (Delaware)
  • Plaintiff’s Counsel: Haller Law PLLC
• Case Identification: 1:19-cv-00223, S.D.N.Y., 01/09/2019
• Venue Allegations: Venue is alleged to be proper based on Defendant conducting business in New York, directing advertisements at New York residents, being registered to do business in the state, and having a designated agent for service.
• Core Dispute: Plaintiff alleges that Defendant’s use of shortened URLs (e.g., "mgstn.ly") in its social media marketing on platforms like Twitter infringes a patent related to providing access to internet locations via "jump codes."
• Technical Context: The technology concerns simplifying web navigation by using short codes as proxies for long, complex Uniform Resource Locators (URLs), a concept foundational to modern link shortening services.
• Key Procedural History: The complaint notes that on January 4, 2009, the U.S. District Court for the District of Delaware construed several key phrases from the patent-in-suit in a prior proceeding, which may influence claim construction in the current case.

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"

• Patent Identification: 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: The patent's background section describes the difficulty for non-technical users in the early days of the web to navigate using long, "confusing," and error-prone URLs, calling the task "arduous." (’835 Patent, col. 3:56-65).
• The Patented Solution: The invention proposes a centralized system to simplify this process. It involves creating a "published compilation," such as a printed book or a dedicated website, containing a curated list of web locations. (’835 Patent, col. 7:11-19). Each location is assigned a simple, "unique multi-digit jump code." A user accesses a single "specialized Web site" (e.g., "JumpCity"), enters a code from the published list, and software on that specialized site automatically looks up the corresponding full URL and redirects the user to the desired destination. (’835 Patent, Abstract; col. 5:34-49).
• Technical Importance: This system aimed to create a user-friendly, curated portal to the web, abstracting away the technical complexity of URLs at a time when web browsers and search engines were less sophisticated. (’835 Patent, col. 4:8-21).

Key Claims at a Glance

• The complaint asserts independent method claim 11. (Compl. ¶14).
• The essential steps of independent claim 11 are:
  • Publishing a compilation of preselected Internet locations with an assigned unique multi-digit jump code for each location.
  • Providing a predetermined Internet location that has means for capturing a jump code entered by a user.
  • A user accessing the predetermined location and entering the jump code.
  • Receiving the entered jump code at the predetermined location.
  • Converting the received jump code into a full URL address.
  • Automatically accessing the desired location using that converted URL.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is a method involving Defendant's website ("www.morganstanley.com"), its Twitter account ("@MorganStanley"), and its use of a third-party link shortening service (identified as "e.g., Bitly") to create and distribute shortened links (e.g., "mgstn.ly"). (Compl. ¶¶4, 14.a-c).

Functionality and Market Context

• The complaint alleges that Defendant publishes posts on its Twitter account that contain shortened links. (Compl. ¶14.a). These links, when clicked by a user, direct the user's browser to a link shortening service. This service resolves the short alphanumeric code contained within the link into a full destination URL (e.g., a page on "morganstanley.com") and automatically redirects the browser to that destination. (Compl. ¶¶14.d-g). The complaint frames Defendant’s Twitter feed as the "published compilation" and the unique path of each shortened link as the "multi-digit jump code." (Compl. ¶¶14.a-b). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'835 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central dispute may be whether a dynamic, real-time social media feed (Twitter) constitutes a "published compilation" as that term is used in the patent, which describes more static media like a printed book or a curated "on-line list." (’835 Patent, col. 5:51-58, col. 7:15-19). Another question is whether the alphanumeric string in a modern shortened link (e.g., "1VlUO81") meets the definition of a "multi-digit jump code," particularly given the patent's repeated references to a "four-digit" code. (’835 Patent, Claim 19).
• Technical Questions: The infringement theory hinges on whether a user clicking a complete, single hyperlink ("mgstn.ly/1VlUO81") is equivalent to the claimed sequence of first "accessing" a location and then separately "entering" a code into it, as the patent specification appears to describe. (’835 Patent, col. 7:3-14). The complaint’s theory treats these as a single action, which raises a question of potential operational mismatch with the claim language.

V. Key Claim Terms for Construction

The Term: "a published compilation of preselected Internet locations"

• Context and Importance: This term is foundational to the infringement claim. The nature of Defendant’s Twitter feed must fall within the scope of this term for the first step of the claimed method to be met.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The complaint cites a prior construction from a Delaware case: "a publicly accessible collection of information which corresponds to preselected Web sites..." (Compl. ¶14.a). The patent also states the compilation can be published as "printed matter" or "on-line." (’835 Patent, Claims 6-7).
  • Evidence for a Narrower Interpretation: The specification’s primary embodiment describes a "book 110" containing "a plurality of reviews of Web sites" selected based on specific criteria, suggesting a curated, organized, and static collection rather than an unstructured, real-time feed. (’835 Patent, col. 5:51-61; col. 6:26-55).

The Term: "entering said desired multi-digit jump code into said predetermined Internet location"

• Context and Importance: The definition of "entering" is critical because the accused method involves a single user click on a hyperlink, not manual data entry. Practitioners may focus on this term to determine if there is a mismatch between the user action required by the claim and the action performed in the accused system.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A broader, functional interpretation could argue that causing the code to be transmitted to and processed by the server, regardless of method, constitutes "entering."
  • Evidence for a Narrower Interpretation: The specification describes the code being "entered in a standard on-screen HTML box or form," implying a distinct action of typing or inputting data after arriving at the webpage. (’835 Patent, col. 7:3-6). This suggests a two-step process (navigate, then enter) that differs from the single click alleged to infringe.

VI. Other Allegations

• Indirect Infringement: The complaint advances a theory of direct infringement under 35 U.S.C. § 271(a) based on divided infringement, as articulated in Akamai Techs., Inc. v. Limelight Networks, Inc. (Compl. ¶15). It alleges Defendant is "vicariously liable" for the actions of the end-user (who clicks the link) and the third-party link shortening provider (e.g., Bitly), asserting that Defendant conditions benefits on the performance of these steps and establishes the manner of their performance. (Compl. ¶¶14.d-f). The complaint does not plead separate counts for induced or contributory infringement.

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

• A core issue will be one of definitional scope: can the patent’s key terms, "published compilation" and "multi-digit jump code," which originate from the context of curated print or online directories of the 1990s, be construed to cover a modern, dynamic social media feed and its associated alphanumeric shortened links?
• The case will also turn on a question of divided infringement liability: does the complaint allege sufficient facts to show that Defendant directs or controls the actions of both the end-users and the independent, third-party link shortening service to the degree required by the Akamai standard to hold Defendant liable for every step of the claimed method?
• A third key question will be one of operational equivalence: is a user's single click on a complete hyperlink technically and legally equivalent to the claimed method step of "entering" a jump code into a predetermined location, or does the claim require a separate, distinct user action of data input as described in the patent's specification?