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Wireless Ink Corp. v. Facebook, Inc.

United States District Court, S.D. New York

August 29, 2013

WIRELESS INK CORPORATION, Plaintiff,
v.
FACEBOOK, INC. and GOOGLE, INC., Defendants. WIRELESS INK CORPORATION, Plaintiff,
v.
FACEBOOK, INC.; GOOGLE, INC.; YOUTUBE, INC.; YOUTUBE, LLC; and MYSPACE, INC., Defendants

Page 319

For Wireless Ink Corporation, Plaintiff, Counter Defendant (1:10-cv-01841-PKC): Jeremy S. Pitcock, LEAD ATTORNEY, The Pitcock Law Group, New York, NY; David R. Stevens, PRO HAC VICE, Stevens Law Group, P.C., San Jose, CA; Jennifer Ishimoto, PRO HAC VICE, Banie & Ishimoto LLP, Palo Alto, CA.

For Facebook, Inc., Defendant (1:10-cv-01841-PKC): Arastu Kabeer Chaudhury, LEAD ATTORNEY, U.S. Attorney Office SDNY, New York, NY; Jonathan Paul Bach, LEAD ATTORNEY, Cooley LLP, New York, NY; Elizabeth L. Stameshkin, Heidi Lyn Keefe, Mark Randolph Weinstein, PRO HAC VICE, Cooley LLP, Palo Alto, CA; Eric Tierney, PRO HAC VICE, Cooley Godward Kronish LLP (CA), San Francisco, CA; Jeffrey T Norberg, PRO HAC VICE, Cooley LLP - Palo Alto, Palo Alto, CA; Kevin X. McGann, White & Case LLP (NY), New York, NY; Michael Graham Rhodes, PRO HAC VICE, Cooley LLP, San Francisco, CA.

For Google, Inc., Defendant (1:10-cv-01841-PKC): Aaron Chase, LEAD ATTORNEY, Kevin X. McGann, White & Case LLP (NY), New York, NY; Leon Miniovich, LEAD ATTORNEY, White & Case LLP, New York, NY; David M. Tennant, PRO HAC VICE, White & Case LLP, Washington, DC.

For Facebook, Inc., Counter Claimant (1:10-cv-01841-PKC): Arastu Kabeer Chaudhury, U.S. Attorney Office SDNY, New York, NY.

For Google, Inc., Counter Claimant (1:10-cv-01841-PKC): Aaron Chase, Kevin X. McGann, LEAD ATTORNEYS, White & Case LLP (NY), New York, NY.

For Facebook, Inc., Counter Claimant (1:10-cv-01841-PKC): Arastu Kabeer Chaudhury, LEAD ATTORNEY, U.S. Attorney Office SDNY, New York, NY; Jonathan Paul Bach, LEAD ATTORNEY, Cooley LLP, New York, NY; Eric Tierney, Cooley Godward Kronish LLP (CA), San Francisco, CA; Heidi Lyn Keefe, Mark Randolph Weinstein, PRO HAC VICE, Cooley LLP, Palo Alto, CA.

For Wireless Ink Corporation, Plaintiff, Counter Defendant (1:11-cv-01751-PKC): Jeremy S. Pitcock, LEAD ATTORNEY, The Pitcock Law Group, New York, NY; David R. Stevens, Stevens Law Group, P.C., San Jose, CA; Jennifer Ishimoto, Banie & Ishimoto LLP, Palo Alto, CA; Papool Chaudhari, PRO HAC VICE, Reyes, Browne, Reilley, Dallas, TX.

For Google, Inc., Defendant (1:11-cv-01751-PKC): Aaron Chase, Kevin X. McGann, LEAD ATTORNEYS, White & Case LLP (NY), New York, NY; Leon Miniovich, LEAD ATTORNEY, White & Case LLP, New York, NY; David M. Tennant, PRO HAC VICE, White & Case LLP, Washington, DC.

For Youtube, Inc., Defendant (1:11-cv-01751-PKC): David M. Tennant, PRO HAC VICE, White & Case LLP, Washington, DC.

For Wireless Ink Corporation, Counter Defendant (1:11-cv-01751-PKC): Jeremy S. Pitcock, LEAD ATTORNEY, The Pitcock Law Group, New York, NY; Papool Chaudhari, PRO HAC VICE, Reyes, Browne, Reilley, Dallas, TX.

OPINION

Page 320

MEMORANDUM AND ORDER

P. Kevin Castel, United States District Judge.

Plaintiff Wireless Ink Corp. (" Wireless Ink" ) has asserted multiple claims against defendants YouTube, Inc., YouTube, LLC, Google, Inc. (collectively, " Google" )[1], and Facebook, Inc. (" Facebook" ) for direct and indirect patent infringement under 35 U.S.C. § 271, both literal and under the doctrine of equivalents. Defendants move for summary judgment pursuant to Rule 56, Fed. R. Civ. P., on the bases of noninfringement and invalidity of the asserted patents. For the reasons stated below, the Court grants the defendants' motions for summary judgment of non-infringement, and denies the defendants' motion for summary judgment of invalidity as moot.

BACKGROUND

The following facts are either undisputed or described in the light most favorable to Wireless Ink as the non-movant. See Costello v. City of Burlington, 632 F.3d 41, 45 (2d Cir. 2011).

I. The Patents-in-Suit.

The patents-in-suit, United States Patent No. 7,599,983 (the '" 983 patent" ) and United States Patent No. 7,908,342 (the " '342 patent" ), disclose methods and systems which allow users without web programming skills to create mobile web sites with personally-authored content for display on mobile devices. Both patents describe two separate web sites: a " content management web site" and a " mobile web site." While the asserted claims all relate to technology which allows users to create and manage mobile web sites using a content management web site, the claims of

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the patents-in-suit differ in several respects, as discussed below.

A. The '983 Patent.

The '983 patent, entitled " Method, Apparatus and System for Management of Information Content for Enhanced Accessibility Over Wireless Communication Networks," was issued to Wireless Ink on October 6, 2009. (Chase Decl., filed Feb. 20, 2013 (" Chase Decl." ), Ex. I (the " '983 patent" ).) The inventors of the '983 patent did not invent mobile web sites or the idea of accessing web site information content over mobile devices. This is admitted in the specification of the patent, and other prior-art systems are described in the " Background of the Invention." According to the patent, these prior-art systems " suffer from a number of significant drawbacks, including a failure to provide suitable integration of messaging, collaboration, location-based services or other wireless networking functionality with the generation of shared information content." ('983 patent col. 1 ll. 45-49.) These systems also " require a significant amount of programming knowledge for their proper use, and are therefore not suitable for relatively unsophisticated users." ('983 patent col. 1 ll. 55-58.) The '983 patent " provides techniques for efficient generation and management of mobile sites that are advantageously integrated with wireless networking functionality of a wireless network in a network-based communication system." ('983 patent col. 1 ll. 66-67; col. 2 ll. 1-3.)

There are two main aspects of the '983 invention. The first discloses a method whereby information content is managed in a wireless network-based communication system. ('983 patent col. 2 ll. 4-7.) This is accomplished by providing a " content management web site" whereby a user can enter information in accordance with a specified format. ('983 patent col. 2 ll. 4-11.) The format is comprised of multiple selectable " mobile information channels," each corresponding to an information category. ('983 patent col. 2 ll. 7-11.) The patent describes " mobile information channels" as channels that " allow unsophisticated users to easily and efficiently author message data or other types of information content to be made accessible via a collaborative workspace, a data mailbox, a collaborative community, or other type of mobile site or portion thereof generated or otherwise managed in the system." ('983 patent col. 7 ll. 51-56.) Examples of mobile information channels " suitable for use in the illustrative embodiment" set forth in the '983 patent include channels relating to contact information, " announcements, chat, events, guest book, diary/journal, bookmarks/links, discussion forum, survey/poll, . . . [or a] photo blog . . . ." ('983 patent col. 7 ll, 66-67; col. 8 ll. 1-10.) After the user selects certain mobile information channels, " [t]he entered information is processed to generate for the user a mobile site comprising information content that is accessible via one or more mobile devices over a wireless network of the system." ('983 patent col. 2 ll. 7-14.)

The second aspect of the '983 invention discloses a method for integrating multiple actions of the wireless networking functionality with the information content of the mobile site. ('983 patent col. 2 ll. 25-30.) The actions which may be integrated with the information content of the mobile web site include a messaging action, a collaboration action, and a location-based service action, (Id.) A user can decide which information will be associated with the wireless networking functionality when modifying the mobile web site's content via the content management site. ('983 patent col. 2 ll. 30-34.)

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Claim 1, the only independent asserted claim, reads as follows:

A method for managing information content in a network-based communication system, the method comprising the steps of:
[1] providing a content management web site identified by a first uniform resource locator and accessible to a user of the communication system, the content management web site permitting the user to author content to be added to at least one of a plurality of predetermined selectable mobile information channels and to select activation of particular ones of the plurality of predetermined selectable mobile information channels, the content management web site comprising a web page listing the predetermined selectable mobile information channels with respective indications of whether or not said channels have been activated by the user; and
[2] generating a mobile web site identified by a second uniform resource locator different than the first uniform resource locator so as to allow the mobile web site to be accessed by a plurality of users independently of the content management web site via one or more mobile devices over a wireless network of the communication system, the mobile web site comprising a web page having activatable links corresponding to respective ones of the predetermined selectable mobile information channels that have been activated by the user through the content management web site.

('983 patent col. 18 ll. 21-47.)

B. The '342 Patent.

The '342 patent, entitled " Method, Apparatus and System for Management of Information Content for Enhanced Accessibility Over Wireless Communication Networks," was issued to Wireless Ink on March 15, 2011. (Chase Decl., Ex. K (the " '342 patent" ).) The patent application that issued as the '342 patent was a continuation of the application that issued as the '983 patent. Accordingly, the specification of the '342 patent is similar to that of the '983 patent. As in the '983 patent, the '342 patent discloses a content management web site and a mobile web site, where the content management web site creates the mobile web site and allows the user to manage content for the mobile web site. ('342 patent col. 2 ll. 4-15.) The method disclosed by the '342 patent additionally allows users of the content management web site " to designate at least one data source that is external to the content management web site," from which the generated mobile web site will automatically receive data. ('342 patent col. 2 ll. 7-9.) The patent explains that " [t]he external data source may comprise, for example, one or more of a rich site summary (RSS) feed, a source of extensible markup language (XML) documents, a database source, a file source, a syndication services source, a device-captured data source, and a web services source." ('342 patent col. 2 ll. 16-20.)

Claim 1, the only independent asserted claim, reads as follows:

A method for managing information content in a network-based communication system, the method comprising the steps of:

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[1] providing a content management web site identified by a first uniform resource locator and accessible to a user of the communication system, the content management web site being configured to permit the user to designate at least one data source that is external to the content management web site; and
[2] generating a mobile web site identified by a second uniform resource locator different than the first uniform resource locator, the mobile web site being accessible independently of the content management web site via one or more mobile devices, the mobile web site being configured to receive data automatically from the external data source designated by the user at the content management web site.

('342 patent col. 18 ll. 25-42.)

II. Procedural History.

The motions for summary judgment presently before the Court were filed in two separate but related actions that were consolidated for pretrial proceedings. On March 9, 2010, Wireless Ink commenced an action against Facebook and Google claiming infringement of the '983 patent. (Docket # 1, 10 Civ. 1841(PKC).) In response to perceived pleading deficiencies outlined by the defendants in an April 26, 2010 letter to the Court, Wireless Ink elected to file an Amended Complaint on May 14, 2010. (Docket # 16, 17.) In July 2010, the defendants filed Answers to the Amended Complaint asserting counterclaims against Wireless Ink. (Docket # 22, 24.) On October 21, 2010, the Court held a claim construction hearing and orally issued rulings for the '983 patent. On November 19, 2010, the defendants moved for judgment on the pleadings. (Docket # 51.) In response to Wireless Ink's " cross-motion" to file an amended complaint, Wireless Ink was permitted to file a Second Amended Complaint (the " SAC" ), and did so on December 3, 2010. (Docket # 53, 54.) The defendants filed Answers to the SAC asserting counterclaims relating to invalidity. (Docket # 57, 58.) Wireless Ink filed Answers to the counterclaims on January 7, 2011. (Docket # 60, 61.) The defendants then renewed their motion for judgment on the pleadings, (Docket # 62), and Wireless Ink cross-moved for judgment on the pleadings, (Docket # 67). In a Memorandum and Order filed May 26, 2011, (Docket # 79), the Court denied the defendants' motion and granted Wireless Ink's motion to dismiss the defendants' counterclaims seeking a declaration of invalidity.

Meanwhile, on March 15, 2011 -- the day that the '342 patent issued -- Wireless Ink commenced a separate action against Facebook, Google, and MySpace, Inc., claiming infringement of the '342 patent. (Docket # 1, 11 Civ. 1751(PKC).) On April 25, 2011, the defendants filed Answers to the Complaint, with MySpace, Inc. asserting counterclaims against Wireless Ink. (Docket # 11, 13, 17, 19.) Wireless Ink filed an Answer to the counterclaims on May 16, 2011. (Docket # 34.) In June 2011, Facebook and MySpace, Inc. amended their Answers and Facebook asserted a counterclaim for patent infringement against Wireless Ink. (Docket # 45, 46.) Wireless Ink filed Answers to the counterclaims on July 14, 2011. (Docket # 48, 49.) On November 9, 2011, the Court held a claim construction hearing and orally issued rulings for the '342 patent. The Court later dismissed with prejudice all claims brought by Wireless Ink against MySpace, Inc. and all counterclaims

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brought by MySpace, Inc. against Wireless Ink, pursuant to a stipulation of voluntary dismissal entered as an Order on April 11, 2012. (Docket # 85.) The Court also dismissed without prejudice the counterclaim for patent infringement brought by Facebook against Wireless Ink, pursuant to a stipulation of ...


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