Is using a URL shortening service patent infringement? INTERNET MEDIA v. CRACKER BARREL

A patent is a set of exclusive rights granted to the inventor of an invention. An inventor gains a patent in the Untied States by filing a patent application with the Untied States Patent and Trademark Office. For a patent application to be granted, the invention described in the application must be new, useful and not obvious. If the Untied States Patent and Trademark Office determines that the invention described in a patent application meets all the requirements, the inventor will be granted a patent on the invention. A patent gives an inventor the exclusive right to make, use, sell and import an invention in the United States. If someone other than the patent owner exercises of of these rights that can be considered patent infringement. A patent owner can sue to stop patent infringement with an injunction and get monetary damages for patent infringement which has occurred.

A defendant in a patent infringement lawsuit can be liable for infringement in two different ways. Direct infringement of a patent occurs when the defendant’s performs all the actions which infringe on the claims of a patent. A defendant can also be held liable for patent infringement even if it does not personally perform all the actions which infringe on a patent under the theory of vicarious liability. Traditionally a defendant would be found vicarioulsy liable for patent infringement when (1) the defendant directed a third party to infringe on the patent or (2) where the actors form a joint enterprise. In Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368 (Fed. Cir. 2015) the Court of Appeals for the Federal Circuit articulated a third theory for vicarious liability i.e. when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.

This means that if a business creates a situation where a customer of the business is induced to infringe a patent, the business can be held vicariously liable for patent infringement. The Limelight case involved a internet content distribution network, where customers needed to complete certain configuration steps to make Limelight’s product operate. Limelight argued that it was not liable for patent infringement because its product did not infringe on the plaintiff’s patent until a customer performed certain steps. The court was not persuaded by this argument because Limelight’s product had no value to the customer until all the steps were performed.

Limelight was considered precedent changing because it expanded the definition of vicarious liability for patent infringement. Other plaintiffs are now trying to expand the precedent set in Limelight even further.

A case which cites Limelight as precedent is INTERNET MEDIA INTERACTIVE CORP., v. CRACKER BARREL OLD COUNTRY STORE, INC., 2:19-cv-00237 (M.D.FL 2019). The plaintiff in this case is a holding company that owns United States Patent No. 6,049,835, entitled “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,” which issued on April 11, 2000 (“the ‘835 Patent”). In the most simple terms, the patent relates to a URL shortener. A URL shortener takes a very long website address and reduces it down to a few characters that are easier to type or transmit through a messaging service.

The defendant operates a chain of popular restaurants throughout the United States. To promote its restaurants the defendant posts advertisements with links to coupons on social media sites. The links use a URL shortening service so the link is easier to manually type and so the links take up less space.

The plaintiff sued the defendant for direct infringement as well as vicarious infringement. The plaintiff cites Limelight as precedent to bolster its argument. Like Limelight, the defendant in this case is inducing a customer to perform and action to gain a benefit (a customer clicks a link to get a coupon). However the steps performed by customers in Limelight were more involved than merely clicking a link. If the defendant fights this case it is likely they will argue, (1) that the ‘835 patent is invalid, (2) that Limelight requires more involvement than a trivial action like clicking a link to impose vicarious liability.

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