David Yates Mar. 2, 2016, 12:45pm


AUSTIN - A federal Texas judge recently tossed an email patent lawsuit against Facebook, finding that the plaintiff’s claims of infringement were more “abstract” than substantial.

Plaintiff A PTY, an Australian company, filed suit against Facebook on Feb. 23, 2015, in the U.S. District Court for Western Texas, alleging infringement of U.S. Patent No. 7,010,572, entitled “System for handling electronic mail.”

In the mid ‘90s, an associated company of A PTY was involved with the provisioning and printing of telephone directories in Australia. In an effort to increase the value and utility of the directories, the subject technology was developed to enable users of the directory to locate the email address of a desired recipient, according to the lawsuit.

The method proposed the idea of adding identifiers next to advertised names, addresses, and phone numbers in the printed directories. The identifiers were intended to indicate to a user of the directory that any person linked to that address or phone number could be located and contacted via email.

The ‘572 patent is generally directed towards a method for conveying email messages, where the email message includes an address field that is different from the unique address of the intended recipient of the email message.

Citing the U.S. Supreme Court’s ruling on Alice v. CLS, Facebook moved for judgment on the pleadings on Nov. 18, arguing that “the ’572 patent is invalid because it claims nothing more than the abstract idea of using information in a message’s destination address to look up the recipient’s correct address.”

On Feb. 29 U.S. District Judge Robert Pitman issued an order finding that the claims of the '572 patent do not have sufficient "additional features" beyond the abstract idea of an address directory to transform the claims into patent eligible subject matter.

“The Supreme Court has made clear that simply implementing a long standing practice on a computer is not enough for patentability,” the order states.

A PTY had also filed suit against Google for infringing the ‘572 patent, which was also terminated.

A PTY is represented by William Parrish, attorney for the Austin law firm DiNovo Price Ellwanger & Hardy.

Facebook is represented in part by attorneys Heidi Keefe and Aland Albright.

Case No. 1:15-cv-00156

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