May 2010 - Federal Circuit Affirms Summary Judgment of Invalidity for Rothwell, Figg Client Dow Jones & Co., Inc. (represented by Steven Lieberman, Sharon Davis, Brian Rosenbloom and Oliver Edwards), holding a patent regarding a method for generating customized websites that had been asserted by patent troll, Ablaise, Ltd. to be invalid as obvious.

On May 28, 2010 the United States Court of Appeals for the Federal Circuit affirmed the finding by the United States District Court for the District of Columbia that a patent regarding the creation of web pages with customized formatting asserted by patent troll Ablaise Ltd. against Rothwell, Figg client Dow Jones & Company was invalid as obvious. Ablaise had threatened Dow Jones (and its partially owned joint venture partner, Dow Jones Reuters Business Interactive LLC, d.b.a. Factiva) with a lawsuit under two patents regarding creating web pages on the fly. Those patents had been licensed by Ablaise to a substantial number of entities under what the District Court called “coercive licensing agreements that had more to do with avoiding the costs of litigation than with the novelty of the patent.” Dow Jones refused to take a license and brought an action for declaratory judgment in the District of Columbia alleging that both patents were invalid. During the course of discovery, after Dow Jones had uncovered anticipatory prior art with respect to one of the two patents, Ablaise provided Dow Jones with a covenant not to sue with respect to that patent. Dow Jones declined to dismiss its counterclaims when Ablaise would not extend the covenant to cover its corporate parent, News Corp.

In July 2009, Judge James Robertson of the United States District Court for the District of Columbia granted Dow Jones’ motion for summary judgment of invalidity on both patents. He had previously denied Ablaise’s motion to dismiss Dow Jones’ declaratory claim with respect to the patent as to which the covenant not sue had been offered. Ablaise had claimed that the covenant not to sue eliminated the controversy between the parties.

In its May 28, 2010 ruling, the Federal Circuit (in one of the last opinions written by Chief Judge Paul Michel) affirmed the finding of invalidity of the ‘737 patent, holding it obvious over the prior art identified by Dow Jones during the litigation. The Federal Circuit held that “Ablaise’s arguments miss the mark entirely” and that the district court “did not err in determining that the invention disclosed in the ‘737 patent would have been obvious to an artisan of ordinary skill in light of Bobo and the known art.”

With respect to the patent as to which Ablaise had offered a covenant not to sue, the Federal Circuit held that the covenant, which operated to preclude any lawsuit on the patent by Ablaise against Dow Jones in the future, eliminated the controversy. The Federal Circuit thus vacated the ruling with respect to that patent on the ground that the federal courts no longer had subject matter jurisdiction. The Federal Circuit did not address the issue of whether that patent is invalid as anticipated (the district court’s finding).

Dow Jones was represented in this matter by Steven Lieberman, Sharon Davis, Brian Rosenbloom and Oliver Edwards of Rothwell, Figg, Ernst & Manbeck. Additional information:

Dow Jones Opinion
Summary Judgment Opinion
Memorandum Deny Motion to Dismiss