The Federal Circuit has vacated and remanded a district court decision in favor of Meta, rejecting the lower court’s finding that Adnexus, the patent owner, had failed to state a claim for direct patent infringement.

Adnexus owns US Patent No. 8,719,101, which claims a “[s]ystem and method of online advertising.” The patent purports to enable internet advertising companies “to promote products and services to potential customers” without “the risk o[f] pushing numerous advertisements to potential customers that are not relevant or desired by the recipient,” as doing so can cause “the potential customer [to] build[] an unfavorable image of the advertiser pushing such unwanted advertisements.” 

According to the patent, “[w]hat is needed is a system and method of gathering a recipient’s email address, or other preferred information delivery method, and sending targeted advertisements via this delivery method in response to the recipient’s subsequent requests for information.”

Adnexus sued Meta (the owner of Facebook, Instagram, and other platforms) for alleged infringement of the patent via Meta’s Lead Ads product.

The Federal Circuit focused on the following portion of claim 1 of the patent:

[1f] if the identifier containing unique identifying information about the recipient is present on the computing device: 

retrieving a user profile associated with the recipient from a visitor information database using at least a portion of the identifier, wherein the user profile comprises at least delivery method preferences and demographic information;

(Emphasis added by the court.)

Meta argued below that the plaintiff failed to state an adequate claim of direct infringement because it failed to plausibly allege that Meta’s Lead Ads practices limitation [1f], which requires retrieval of a “user profile compris[ing] at least delivery method preferences” for delivery of online ads to a user.

The district court granted Meta’s motion to dismiss, finding that the complaint made “no allegation that Meta Lead Ads retrieves any user profile that includes any delivery method preferences.”

The district court rejected Adnexus’ argument that Facebook users’ profiles and prefilled contact information satisfied this claim element, and concluded that “contact information [is] sufficiently distinct from delivery method preferences” such that “contact information” cannot be a “delivery method preference.”

The district court found that no claim construction was needed, but the Federal Circuit disagreed, saying:

the only way Meta could win dismissal based on lack of plausibility would be to obtain a claim construction rendering Adnexus’ “delivery method preferences” allegations implausible. That is, Meta needs a claim construction that determines “contact information” and “delivery method preferences,” as those terms are used in claim 1 of the ’101 patent, to be so distinct that the former cannot indicate anything meaningful about the latter.

Adnexus suggested that the two terms are “synonymous,” while Meta argued they must have different definitions under a “plain and ordinary meaning” reading of both terms.

Said the Federal Circuit:

It appears to us that if a person of ordinary skill in the art would understand the claim terms “contact information” and “delivery method preferences,” in the context of the ’101 patent, to have any degree of overlap, Adnexus’ allegations about Lead Ads and limitation [1f] remain plausible. Or if, alternatively, “contact information” is a subset of “delivery method preferences,” then, again, plausibility is retained. That Meta and the district court had a narrower view of the scope of the claims confirms that Meta’s argument for dismissal is a claim construction argument.

Thus, said the Federal Circuit, the district court erred by construing the disputed claim term against Adnexus without first giving it the opportunity it requested to be heard on the issue of the proper construction of the term.

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