DCT
2:23-cv-00474
Accessify LLC v. Financial Times Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Accessify, LLC (Texas)
- Defendant: Financial Times Limited (England and Wales)
- Plaintiff’s Counsel: Rozier Hardt McDonough, PLLC
- Case Identification: 2:23-cv-00474, E.D. Tex., 10/06/2023
- Venue Allegations: Venue is alleged to be proper because the Defendant is not a resident of the United States and may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s Financial Times website (ft.com) and its associated digital paywall and domain name systems infringe seven patents related to methods for providing secured previews of digital content and translating web addresses.
- Technical Context: The technologies at issue relate to digital rights management for online content, a critical component of subscription-based business models for news publishers and other content providers.
- Key Procedural History: The complaint notes that Certificates of Correction were issued for U.S. Patent Nos. 7,316,032 and 7,752,656. No other significant procedural events, such as prior litigation or administrative challenges, are mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2000-11-13 | U.S. Patent No. 7,039,722 Priority Date |
| 2002-12-02 | U.S. Patent No. 7,316,032 Priority Date |
| 2004-12-20 | U.S. Patent No. 7,562,397 Priority Date |
| 2006-05-02 | U.S. Patent No. 7,039,722 Issued |
| 2008-01-01 | U.S. Patent No. 7,316,032 Issued |
| 2008-07-24 | U.S. Patent No. 7,752,656 Priority Date |
| 2009-06-21 | U.S. Patent No. 8,069,489 Priority Date |
| 2009-07-05 | U.S. Patent No. 10,554,424 Priority Date |
| 2009-07-14 | U.S. Patent No. 7,562,397 Issued |
| 2010-07-06 | U.S. Patent No. 7,752,656 Issued |
| 2011-11-29 | U.S. Patent No. 8,069,489 Issued |
| 2019-12-27 | U.S. Patent No. 11,418,356 Priority Date |
| 2020-02-04 | U.S. Patent No. 10,554,424 Issued |
| 2022-08-16 | U.S. Patent No. 11,418,356 Issued |
| 2023-10-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,418,356 - Enhanced Security Preview Of Digital Content (Issued Aug. 16, 2022)
The Invention Explained
- Problem Addressed: The patent's background describes the "seller's dilemma" in distributing digital content: to make a sale, a seller must offer a preview, but once a preview is provided, the content can be easily copied and distributed without compensation to the creator, undermining its commercial value (U.S. Patent No. 11,418,356, col. 2:45-50).
- The Patented Solution: The invention proposes a method to distribute a "masked digital work" created by adding "one or more masking effect layers" to the original content. This masked version serves as a preview. Based on criteria received from a customer (e.g., a search term or a purchase request), the masking effect is dynamically generated. If a subsequent communication from the customer satisfies certain criteria (e.g., payment), the system transmits the original, unmasked digital work ('356' Patent, Abstract; col. 29:35-30:44).
- Technical Importance: This technology provides a framework for balancing the commercial need for content protection with the consumer's need to evaluate a product before purchase, a foundational concept for online subscription services ('356 Patent, col. 2:54-3:4).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶44).
- The essential elements of claim 1 include:
- Receiving a request for a digital work and a criteria from a customer.
- Creating, in response, a masked digital work by adding one or more masking effect layers to an original form of the digital work.
- The masking effect is dynamically generated based at least in part on the criteria received.
- The masking effect is of a utility-reducing character and affects an aspect like display, audio, or resolution.
- Transmitting the masked digital work.
- Receiving a further communication relating to the digital work.
- Evaluating if the further communication satisfies predetermined criteria.
- Transmitting the original digital work if a first predetermined criterion is satisfied.
- The criteria from the customer includes a search term used to generate a selected relevant portion, and the masking effect is adapted to affect the portion outside the selected relevant portion.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 7,316,032 - Method For Allowing A Customer To Preview, Acquire And/Or Pay For Information And A System Therefor (Issued Jan. 1, 2008)
The Invention Explained
- Problem Addressed: The patent identifies the core problem that digital content, unlike physical goods, can be perfectly replicated and distributed once a user is given even preview access, creating a substantial commercial risk for publishers ('032' Patent, col. 2:4-44).
- The Patented Solution: The invention describes a method for providing a "preview version" of an information product created by "superposing a masking effect" on the original. This preview version is designed to be representative of the original content but interferes with its full use or reception. The system then controls the presence, absence, duration, or permanence of this masking effect based on at least one criterion, such as a purchase ('032 Patent, Abstract; col. 5:1-6:67).
- Technical Importance: This method provided an early technical framework for implementing paywalls, allowing content creators to monetize digital assets by offering a "try-before-you-buy" experience without ceding control of the underlying product ('032 Patent, col. 2:4-11).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶61).
- The essential elements of claim 1 include:
- Providing a preview version of an information product.
- The preview version is created by superposing a masking effect on an original form of the information product.
- The preview version is readily accessible, representative of the original, and enables evaluation for a purchase decision.
- The masking effect is adapted to interfere with receiving the original form.
- Allowing a user to access the preview version.
- Controlling at least one of presence, absence, duration, and permanence of the masking effect based on at least one criterion, thereby controlling receipt of the original form.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 7,562,397
- Patent Identification: U.S. Patent No. 7,562,397, "Method And System For Facilitating Search, Selection, Preview, Purchase Evaluation, Offering For Sale, Distribution, And/Or Sale Of Digital Content And Enhancing The Security Thereof," Issued July 14, 2009.
- Technology Synopsis: This patent describes a method for controlling the distribution of a digital work by arranging it into a plurality of layers, including at least a first layer with a masking effect and a second layer with the content. The masking layer is superposed onto the content layer to create a masked, preview version, and its presence is controlled to manage access to the original work (Compl. ¶79).
- Asserted Claims: At least independent claim 1 (Compl. ¶78).
- Accused Features: The Financial Times paywall and associated systems that control access to digital news content (Compl. ¶79).
U.S. Patent No. 8,069,489
- Patent Identification: U.S. Patent No. 8,069,489, "Method And System For Facilitating Search, Selection, Preview, Purchase Evaluation, Offering For U.S. Patent Documents Sale, Distribution, And/Or Sale Of Digital Content And Enhancing The Security Thereof," Issued Nov. 29, 2011.
- Technology Synopsis: The technology involves a method for controlling access to a digital work on a computer network by providing a "masked configuration" of the work. This masked version is created by applying a masking effect to the original work to interfere with viewing or rendering, while still remaining representative for user examination (Compl. ¶95).
- Asserted Claims: At least independent claim 1 (Compl. ¶95).
- Accused Features: The Financial Times paywall and its system for providing masked or preview versions of articles over its website (Compl. ¶95).
U.S. Patent No. 10,554,424
- Patent Identification: U.S. Patent No. 10,554,424, "Enhanced Security Preview Of Digital Content," Issued Feb. 4, 2020.
- Technology Synopsis: This patent discloses a method where a user device requests an information product, and a preview version is generated based on customer-specified relevance criteria. A masking effect is selected and superposed onto the preview version to create a masked version, which is then provided to the user for evaluation prior to purchase (Compl. ¶111).
- Asserted Claims: At least independent claim 1 (Compl. ¶110).
- Accused Features: The Financial Times' systems for generating and displaying previews of articles, allegedly based on user requests and preferences, behind a paywall (Compl. ¶111).
U.S. Patent No. 7,039,722
- Patent Identification: U.S. Patent No. 7,039,722, "Method And Apparatus For Translating Web Addresses And Using Numerically Entered Web Addresses," Issued May 2, 2006.
- Technology Synopsis: This invention describes a method for generating a request for a domain name from a computer. It involves receiving a name, such as "financialtimes.com," and using a translation formula to convert its sub-domain portion into a different sub-domain portion, such as "ft.com," to generate a new "scheme specific name" for the request (Compl. ¶¶127-128).
- Asserted Claims: At least independent claim 1 (Compl. ¶126).
- Accused Features: The functionality of the Financial Times website to receive a request for "financialtimes.com" and translate or redirect it to "ft.com" (Compl. ¶128).
U.S. Patent No. 7,752,656
- Patent Identification: U.S. Patent No. 7,752,656, "Controlling Access To Name Service For A Domain Name System," Issued July 6, 2010.
- Technology Synopsis: This patent describes a method for a name server to control access to content. Upon receiving a request for a domain name, the server determines if the request is associated with user access privileges and responds by providing either the IP address for the requested content server or the IP address for an authorization server (Compl. ¶137).
- Asserted Claims: At least independent claim 1 (Compl. ¶136).
- Accused Features: The name server and back-end infrastructure for FT.com, which allegedly controls access to content based on a user's subscription status (i.e., access privileges) (Compl. ¶¶137-138).
III. The Accused Instrumentality
Product Identification
The Accused Products are the Financial Times website, accessible at domains including https://financialtimes.com/ and https://www.ft.com/, and the associated paywall, hardware, software, and functionalities used for viewing and accessing digital content (Compl. ¶¶ 34-36).
Functionality and Market Context
The complaint alleges the Accused Products operate as a digital news service that implements a paywall to monetize its content (Compl. ¶35). This system is alleged to provide users with limited previews of news articles, such as headlines or initial paragraphs, while obscuring or blocking the full content (Compl. ¶¶ 45, 62). Access to the full, unrestricted content is granted to users who satisfy certain criteria, such as purchasing a subscription (Compl. ¶¶ 45, 62). A screenshot included in the complaint shows an article partially obscured by an overlay prompting the user to subscribe, which illustrates the paywall functionality. (Compl. FIG. 2B, p. 12). The complaint also accuses the functionality of translating the domain name "financialtimes.com" to "ft.com" and the underlying DNS server operations that control content access based on user privileges (Compl. ¶¶ 128, 137).
IV. Analysis of Infringement Allegations
U.S. Patent No. 11,418,356 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a request for a digital work and a criteria from a customer | The Financial Times system receives a request for a digital work (e.g., a news article) when a user clicks a link, which includes criteria such as a search term that generated the link (Compl. ¶45). | ¶45 | col. 32:45-51 |
| creating, in response to receiving the request and the criteria, a masked digital work by adding one or more masking effect layers to an original form of the digital work to add a masking effect to the original form of the digital work, the masking effect being dynamically generated by selecting the one or more masking effect layers to add to the original form of the digital work based at least in part on the criteria received... | In response to the user's request, the system creates a masked digital work by applying a masking effect (the paywall overlay or blur) to the full article text. This masking effect is allegedly generated dynamically based on the user's request and subscription status (Compl. ¶45). | ¶45 | col. 29:35-44 |
| ...the masking effect being of a utility-reducing character and adapted to affect at least one aspect of the original form of the digital work selected from a group consisting of display, audio, playback quality, and resolution of the digital work | The paywall's masking effect reduces the utility of the article by obscuring its display and preventing the user from reading the full text (Compl. ¶45). | ¶45 | col. 25:9-13 |
| transmitting, in response to the request, the masked digital work | The system transmits the partially obscured or truncated article to the user's browser (Compl. ¶45). A screenshot shows such a masked work being transmitted and displayed. (Compl. FIG. 2B, p. 12). | ¶45 | col. 43:55-58 |
| receiving, in response to transmitting the masked digital work, a further communication relating to the digital work; evaluating whether the further communication satisfies one of a plurality of predetermined criteria; and in response to the further communication satisfying a first predetermined criteria transmitting the digital work in the original form | After presenting the masked work, the system receives further communication (e.g., a subscription purchase). It evaluates this communication against predetermined criteria (e.g., successful payment). If the criteria are met, the system transmits the original, unmasked article (Compl. ¶45). | ¶45 | col. 13:1-10 |
| ...wherein the criteria from the customer includes a search term that is used to generate a selected relevant portion of the digital work, the masking effect being adapted to affect at least a portion of the digital work determined to be outside of the selected relevant portion. | The complaint alleges that when a user-provided search term identifies a relevant portion of an article, the system generates a preview where that relevant portion is shown, and the masking effect is applied to the parts of the article outside that selected portion (Compl. ¶45). | ¶45 | col. 41:2-10 |
Identified Points of Contention
- Scope Questions: A primary question may be whether the term "masking effect layers" can be construed to cover modern web technologies like CSS overlays, content blurring, or server-side text truncation, versus requiring distinct data layers as depicted in the patent's figures.
- Technical Questions: The case may turn on what evidence supports the allegation that the masking effect is "dynamically generated" based on user "criteria." The defendant might argue its paywall is a static rule (e.g., show first paragraph) applied to all non-subscribers, rather than a dynamic process responsive to specific user criteria like a search term.
U.S. Patent No. 7,316,032 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a preview version of said information product; said preview version being created by superposing a masking effect on an original form of said information product... | The Financial Times website provides a preview version of its articles (e.g., the first few sentences) which is allegedly created by superposing a masking effect (the paywall) on the full, original article (Compl. ¶62). | ¶62 | col. 5:1-12 |
| ...said preview version being readily accessible and remaining representative of said original form of said information product and enabling said user in evaluating said information product for making a purchase decision, said masking effect being superposed on a region of said information product and adapted to interfere with receiving of said information product in said original form by said user | The preview is accessible to all users and is representative of the full article's content, allowing a user to evaluate it for a purchase (subscription). The paywall's masking effect interferes with reading the full article (Compl. ¶62). The screenshot in FIG. 2B shows a representative preview obscured by an overlay that interferes with full access and prompts a purchase decision. (Compl. FIG. 2B, p. 12). | ¶62 | col. 5:13-25 |
| allowing said user to access said preview version of said information product | The system allows any user to access the preview version of an article by navigating to its URL (Compl. ¶62). | ¶62 | col. 6:21-23 |
| and controlling at least one of presence, absence, duration of application and permanence of said masking effect, superposed on said information product, in accordance with at least one criterion thereby controlling receiving of said information product in said original form by said user. | The system controls the presence or absence of the masking effect based on the criterion of the user's subscription status. For non-subscribers, the mask is present; for subscribers who are logged in, the mask is absent, thereby controlling whether the user receives the original, full version of the article (Compl. ¶62). | ¶62 | col. 6:24-33 |
Identified Points of Contention
- Scope Questions: The dispute may center on the term "superposing." Defendant may argue its paywall does not "superpose" an effect in the manner described by the patent, but rather truncates content or applies a client-side script that is not equivalent to the claimed method.
- Technical Questions: A key factual question will be how the FT.com system technically creates its previews. The analysis will depend on whether content is merely hidden on the user's browser (e.g., via CSS, which could be seen as "superposing") or if only a truncated portion of the article is ever sent to non-subscribers (which may not meet the claim language).
V. Key Claim Terms for Construction
For U.S. Patent No. 11,418,356
- The Term: "adding one or more masking effect layers"
- Context and Importance: The infringement theory hinges on whether the technical implementation of the FT.com paywall constitutes "adding... layers." Practitioners may focus on this term because its construction will determine whether modern web design techniques fall within the scope of a claim drafted using a "layer"-based metaphor that was more common in earlier graphics and document software.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The '356 patent's parent specification (U.S. Pat. No. 10,554,424) describes a masking effect broadly as an "interruption", "discontinuity", "veil", or "masquerade" that limits the utility of the content, suggesting the "layer" is a functional concept rather than a strict structural one ('424 Patent, col. 21:38-44).
- Evidence for a Narrower Interpretation: The specification includes figures (e.g., '424 Patent, FIGS. 6a-7c) that explicitly depict distinct "layers" with an "ON" or "OFF" status, such as a "Masking Effect Layer" and a "Digital Content Layer." This could support a narrower construction requiring separable data structures rather than just a visual effect.
For U.S. Patent No. 7,316,032
- The Term: "superposing a masking effect on an original form"
- Context and Importance: This term is critical because the method of obscuring content on FT.com must be found to be an act of "superposing." The defendant will likely argue that its method of content delivery (e.g., sending only a snippet of text to non-subscribers) is not "superposing" an effect on an "original form" that is present on the user's device.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the purpose of superposing as creating a preview that "interfere[s] with receiving of said information product in said original form" ('032 Patent, col. 5:22-25), suggesting that any technical method achieving this interference could qualify as "superposing."
- Evidence for a Narrower Interpretation: The term "superposing" implies placing one thing on top of another. Figures in related patents (e.g., '397' Patent, FIG. 10) illustrate a "Light Masking Layer" (101) physically placed over a "Clear Text Layer" (102), which may support an interpretation requiring a literal layering of elements rather than simply withholding or truncating data.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by providing the Accused Products and advertising, promoting, or distributing instructions that guide end-users to use them in an infringing manner (Compl. ¶¶ 46, 63). It also alleges contributory infringement, stating that the special features of the paywall are not staple articles of commerce and have no substantial non-infringing use (Compl. ¶¶ 47, 64).
- Willful Infringement: Willfulness is alleged based on Defendant's knowledge of the patents "at least as of the date when they were notified of the filing of this action" (Compl. ¶¶ 48, 65). The complaint also alleges willful blindness based on a purported "policy or practice of not reviewing the patents of others" (Compl. ¶¶ 49, 66).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical scope: does the Financial Times' paywall, likely implemented with modern web technologies such as CSS overlays, content truncation, or client-side scripting, meet the claimed limitations of "adding... masking effect layers" or "superposing a masking effect," which are rooted in a "layer"-based paradigm described in the patents? The case may depend on whether these claim terms are interpreted functionally to cover any method of obscuring content for a preview, or structurally to require distinct data layers.
- A key evidentiary question for the DNS-related patents ('722' and '656') will be one of non-obviousness and conventionality: can the plaintiff demonstrate that the accused functionalities—domain name redirection (e.g., financialtimes.com to ft.com) and subscriber-based DNS resolution—are implementations of the specific, patented methods rather than merely the application of standard, conventional internet protocols that have been in widespread use?
- A central question for the '356 and '424' patents will be one of causation and functionality: does the Financial Times system "dynamically generate" a masked version in response to user-provided "criteria" like a search term, as claimed, or does it apply a static, uniform rule to all non-subscribers, which may not satisfy the specific interactive elements required by the claims?