Internet Media Interactive Corp v. Shutterfly

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Internet Media Interactive Corp. (Delaware)
  • Defendant: Shutterfly, Inc. (Delaware)
  • Plaintiff’s Counsel: Haller Law PLLC
• Case Identification: 1:19-cv-08313, S.D.N.Y., 09/06/2019
• Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant maintains an office in New York City, is registered to do business in the state, and has established minimum contacts by conducting business with residents of the district.
• Core Dispute: Plaintiff alleges that Defendant’s use of social media and link-shortening services to direct users to its website infringes a patent related to accessing web locations via a published list of "jump codes."
• Technical Context: The patent addresses methods from the early commercial internet era for simplifying user access to specific websites without requiring users to type long, complex Uniform Resource Locators (URLs).
• Key Procedural History: The complaint references a January 4, 2009, order from the Delaware District Court in a prior proceeding involving the same patent. This order reportedly construed key phrases, including “a published compilation of preselected Internet locations,” “a unique predetermined multi-digit jump code,” and “a predetermined published Internet location,” which Plaintiff now uses to support its infringement allegations.

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: In the early days of the World Wide Web, website addresses (URLs) were often long, complex strings of characters that were "extremely difficult to work with" and required "error-prone, tedious and confusing entry" (’835 Patent, col. 4:56–65; col. 7:13-15). This created a barrier for non-technical users and made accessing the growing number of websites a "frustrating and information starving experience" ('835 Patent, col. 4:5-6).
• The Patented Solution: The invention proposes a system to bypass manual URL entry. It involves a "published compilation" (e.g., a printed book or an online directory) that lists preselected, high-quality websites alongside a unique, simple "multi-digit jump code" for each ('835 Patent, col. 5:50-56). A user would first navigate to a single, "specialized Web site" (e.g., "JumpCity"), enter the short jump code from the publication into an on-screen form, and the system's software would automatically convert the code into the full destination URL and redirect the user's browser ('835 Patent, Abstract; col. 7:1-9).
• Technical Importance: The system aimed to provide a user-friendly "directory of the well-thought out and useful sites" and an "easy to use, automatic, and efficient manner" for accessing them, functioning like a curated portal to the web's best content ('835 Patent, col. 4:10-22).

Key Claims at a Glance

• The complaint asserts independent method claim 11 ('835 Patent, Compl. ¶14).
• Essential elements of claim 11 include:
  • Publishing a compilation of preselected Internet locations with a unique multi-digit jump code for each.
  • Providing a predetermined Internet location (e.g., a central website) with means for capturing a jump code entered by a user.
  • A user accessing that predetermined location and entering a jump code.
  • Receiving the entered jump code.
  • Converting the jump code to its corresponding destination URL address.
  • Automatically accessing the desired Internet location using that URL.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Defendant Shutterfly’s system for directing users to its website, which involves its advertisements and posts on its "@Shutterfly" Twitter account in conjunction with third-party link-shortening services such as ow.ly, which is managed by Hootsuite (Compl. ¶¶4, 14a-c).

Functionality and Market Context

• The complaint alleges that Shutterfly publishes posts on Twitter that contain shortened URLs (e.g., ow.ly/4nfU9A) (Compl. ¶14b). When a user clicks this link, the link-shortening service (ow.ly/Hootsuite) receives the unique code embedded in the URL, converts it to a full destination URL for a page on Shutterfly's website, and automatically redirects the user's browser to that destination (Compl. ¶14d-g). This method is used for promotional offerings and directing traffic to information of interest (Compl. ¶14d). 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 concern whether Shutterfly’s dynamic Twitter feed constitutes a "published compilation of preselected Internet locations" as contemplated by the patent, which describes curated collections like a printed book or directory of reviewed sites ('835 Patent, col. 6:26-55). A related question is whether a shortened URL from a service like ow.ly is a "jump code" plus a "predetermined Internet location," or if it is simply a single, unique URL.
• Technical Questions: The infringement theory rests on equating a user's single click on a hyperlink with the distinct, two-step process recited in the claim: "accessing said predetermined Internet location" and then "entering said desired multi-digit jump code into said predetermined Internet location." The patent describes this as a user typing a code into an "on-screen HTML box or form" after navigating to a central site ('835 Patent, col. 7:4-6), which raises the question of whether the accused single-click action meets this limitation.

V. Key Claim Terms for Construction

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

• Context and Importance: This term defines the foundational element of the claimed invention. The dispute will likely focus on whether a series of individual, time-ordered posts on a social media feed like Twitter meets the definition of a "compilation," and whether the linked sites are "preselected" according to any criteria, as described in the patent. The complaint relies on a prior construction of a similar phrase to support its theory (Compl. ¶14a).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent states that the compilation can be published as "printed matter" or "on-line" ('835 Patent, col. 8:55-59), suggesting flexibility in the medium.
  • Evidence for a Narrower Interpretation: The specification repeatedly describes the compilation as a curated, organized publication, such as a "book 110" containing "reviews of Web sites 112, 114, 116..." selected based on four specific criteria: content, usefulness, design, and authorship ('835 Patent, col. 5:50-56; col. 6:26-55). This suggests a more structured and selective collection than a typical social media feed.

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

• Context and Importance: This term is critical as it describes the key user action that initiates the process. Practitioners may focus on this term because the complaint's theory equates a single mouse click on a hyperlink with the affirmative act of "entering" a code.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not explicitly limit the mode of entry, leaving open the possibility that any user action causing the code to be transmitted could suffice.
  • Evidence for a Narrower Interpretation: The specification describes the "entering" step in the context of a user interacting with an "on-screen HTML box or form" ('835 Patent, col. 7:4-6) and using a "keyboard 104" or "remote control device 204" ('835 Patent, Fig. 1; Fig. 2; col. 7:59-62), which implies a more deliberate, manual input than a single click on an integrated link.

VI. Other Allegations

Indirect Infringement

• The complaint alleges that Defendant is liable for the performance of method steps by users and by the third-party link-shortening service (Hootsuite) (Compl. ¶¶14d-g). Liability is premised on a theory of vicarious liability under the principles of Akamai v. Limelight, alleging that Shutterfly conditions benefits (e.g., promotional offers) on the user's performance of the clicking step and establishes the manner of performance (Compl. ¶14d). Liability for Hootsuite's actions is based on the alleged existence of an agreement between Shutterfly and Hootsuite (Compl. ¶14e).

Willful Infringement

• The complaint does not contain an explicit allegation of "willful infringement" and does not plead facts to support a claim of pre-suit knowledge of the patent or the alleged infringement.

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

The resolution of this case will likely depend on the court’s answers to several fundamental questions of interpretation and application:

1. A core issue will be one of definitional scope: Can the patent's key concepts—a "published compilation," a "jump code," and the act of "entering" a code—which are described in the context of early web directories and manual input, be construed to cover the modern, integrated functionality of social media posts and one-click URL shorteners?

2. A second issue will be one of divided infringement: The complaint's infringement theory relies on combining the actions of three separate parties (Shutterfly, the user, and Hootsuite). A key legal question will be whether Plaintiff can satisfy the stringent requirements for vicarious liability set forth in Akamai, particularly by demonstrating that Shutterfly "conditions participation in an activity or receipt of a benefit" upon performance of the claimed steps by others.

3. Finally, a central evidentiary question will be the effect of prior claim construction: The complaint heavily relies on claim constructions from a 2009 Delaware case. The court will have to determine how those decade-old constructions apply to the distinctly different accused technology at issue in this case.