Since 1992, Fairytale Brownies has sold delicious brownies based on a secret family recipe. It’s a small business founded by two childhood friends who were quick to see the potential of the Internet and registered the domain www.brownies.com in 1995. Fairytale Brownies became an e-commerce website before the first dot-com boom and has remained in business ever since.
But earlier this year, Fairytale Brownies received a surprising letter. The letter said its e-commerce website infringes U.S. Patent No. 9,373,261 (“the ’261 patent”). The ’261 patent is owned by Electronic Communication Technologies, LLC (“ECT”), a company that was previously known as Eclipse IP. We have written about it many times before.
What is the technology claimed by the patent?
Generally, ECT states that it patented “unique solutions to minimize hacker’s impacts when mimicking order confirmations and shipment notification emails.” From what we can tell, it claims to have invented sending an automated email in response to an online order, that contains personally identifiable information (“PII”). ECT claims that including PII allows customers to know that the email is not a “phishing” email or “part of an email fraud system,” and as a consequence customers will know to trust the links in the email.
There are a few more details about what exactly ECT claims to have invented and what it says infringes, which can be seen in the “chart” ECT provided to Fairytale Brownies. The chart points to claim 11 of the ’261 patent and describes how it believes Fairytale Brownies infringes the ’261 patent. In doing so, ECT tells Fairytale Brownies (and everyone else) what it thinks the ‘261 patent allows it to claim, and at least some subset of what it claims to have “invented.”
Fairytale Brownies disputes that ECT is properly reading its claims, and that Fairytale Brownies infringes. Regardless, as we point out in our letter on behalf of Fairytale Brownies, many, many companies engaged in the behavior ECT says it invented long before ECT ever applied for a patent. That patent, entitled “Secure notification messaging with user option to communicate with delivery or pickup representative,” issued in 2016, but ECT claims the technology was invented in 2003. But many other companies did exactly what Fairytale Brownies does, and we provided copies of order confirmation emails from Amazon.com that included the so-called “anti-phishing invention” from over two years before ECT’s “invention.” (We have redacted some information from those emails to protect privacy). We included examples from many other companies that show the same thing, including emails from NewEgg, Crate & Barrel, and Old Navy. Indeed, this “invention” seems practically mundane, and nothing that should have been seen as “novel” in 2003.
We also note in our letter that the ’261 patent is likely invalid under Alice. The Alice decision was the basis of a court ruling that invalidated claims from three of ECT’s other patents (this ruling issued when it was still known as Eclipse IP). We attach a motion that is currently pending in the Southern District of Florida that seeks a finding that claim 11 of the ’261 patent, the same claim that is asserted against Fairytale Brownies, is invalid for failing to claim patentable subject matter.
Electronic Communication Technologies demanded Fairytale Brownies pay $35,000 to license the ’261 patent. We think that $1 would be too much. As a small business, getting a letter out of the blue demanding a payment for infringing on patents you’ve never heard of based on technology that forms a standard part of any e-commerce business can be a daunting experience. With EFF’s help, Fairytale Brownies is pushing back, and refusing to pay for something that was commonplace in e-commerce long before ECT claims to have invented it.
