Pop Top Corp. v. Nook Digital, LLC

Background

Pop Top alleged that it was the exclusive owner of U.S. Patent No. 7,966,623, which covers a computer-implemented method for enabling highlighting services for visitors to web pages. The patent’s single claim requires six steps, including serving an internet document containing code that invokes a highlighting service hosted on a server different from the content server, displaying a highlighting interface, enabling the service, and sending highlighted material to the highlighting service server for storage associated with the user.

Pop Top alleged that Nook Digital owned and operated a reading application that could be downloaded to a user’s device. According to Pop Top, users could access reading material through the application; books were served with executable code invoking a highlighting service; and the application included a highlighting service hosted by a highlighting server.

Motion and Legal Standard

Nook Digital moved for judgment on the pleadings as to Count 1. A judgment-on-the-pleadings motion asks the court to decide the claim based on the pleadings after they are closed, using the same standard applied to a motion to dismiss for failure to state a claim. The court accepts the nonmoving party’s allegations as true and asks whether the moving party is entitled to judgment as a matter of law.

For direct infringement of a method patent, the plaintiff must plausibly allege that the defendant performed or used every step of the patented method. The court explained that indirect infringement also requires that some accused actor performed the entire act of direct infringement.

Court’s Analysis

The court concluded that Pop Top did not allege that Nook Digital’s application used all six steps of the patented method. First, the court identified an inconsistency in Pop Top’s allegations: one paragraph said that downloaded e-books contained the executable highlighting code, while another said that the application itself included the highlighting service. The court also found that Pop Top did not allege that code downloaded with an e-book caused the user-interface object for invoking the highlighting service to appear. Instead, Pop Top alleged that the application itself included the highlighting tool. The court therefore concluded that the application’s highlighting feature operated through a method different from the one protected by the patent.

Second, the court found that Pop Top did not adequately allege the patent’s sixth step. That step requires highlighted material to be sent to the highlighting service server for storage in a way associated with the user. Pop Top alleged only that highlights were stored “on the backend” and associated with the user’s account. The court found that Pop Top did not explain what “the backend” meant or allege that the highlights were stored on a server, particularly the highlighting service server required by the patent.

Disposition

The court granted Nook Digital’s motion for judgment on the pleadings. The opinion did not state that the ruling was with or without prejudice. The court also directed the parties to file a joint claim-terms chart within 28 days for the separate patent at issue in the remaining count, and directed the Clerk of Court to terminate the open motions at document numbers 18 and 29.