Mirror Worlds Techs., LLC v. Facebook, Inc.

• Decision Date: 11 August 2018
• Docket Number: 17-cv-3473 (JGK)
• Parties: MIRROR WORLDS TECHNOLOGIES, LLC, Plaintiff, v. FACEBOOK, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

320 F.Supp.3d 538

MIRROR WORLDS TECHNOLOGIES, LLC, Plaintiff,

v.FACEBOOK, INC., Defendant.

17-cv-3473 (JGK)

United States District Court, S.D. New York.

Signed August 11, 2018

Marc A. Fenster, Arka D. Chatterjee, James Tsuei, Minna Chan, Benjamin T. Wang, Theresa Troupson, Russ, August,& Kabat, Brian D. Ledahl, Irell & Manella LLP (Los Angeles), Los Angeles, CA, Charles Robert Macedo, Amster, Rothstein & Ebenstein LLC, New York, NY, for Plaintiff.

Heidi Lyn Keefe, Lowell D. Mead, Alexandra Marie Leeper, Azadeh Morrison, Benjamin G. Damstedt, Dena Chen, Cooley LLP, Palo Alto, CA, Mark Randolph Weinstein, Cooley Godward Kronish, LLP, Palo Alto, CA, Emily E. Terrell, Phillip E. Morton, Cooley LLP (DC), Washington, DC, Joseph Michael Drayton, Cooley LLP (NY), New York, NY, for Defendant.

MEMORANDUM OPINION & ORDER

John G. Koeltl, United States District Judge

Mirror Worlds Technologies, LLC, has filed this lawsuit against Facebook, Inc., alleging that three systems within Facebook's well-known social media website -- "News Feed," "Timeline," and "Activity Log" -- violate three patents owned by Mirror Worlds.¹ Mirror Worlds's patents protect a system for organizing electronic data in a time-ordered stream of information. The technology protected by Mirror Worlds's patents has two necessary components relevant to this dispute: (1) a "main stream" or "main collection" and (2) "substreams" or "subcollections." Facebook moves for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure, arguing that the undisputed facts demonstrate that neither the News Feed, the Timeline, nor the Activity Log have a "main stream" or a "substream" and therefore that Facebook's systems do not infringe the patents-in-suit. While the parties dispute the proper construction of certain terms in the claims in the patents-in-suit, including "main stream" and "substream," those disputes do not affect the dispositive issues on this motion.

As explained in more detail below, after considering the parties' tutorials, claim construction briefs, and summary judgment briefs, and after hearing oral argument, it is plain that Mirror Worlds cannot establish that any of the Facebook systems at issue contains a "main stream" within the meaning of the patents-in-suit. Facebook's motion for summary judgment is therefore granted.

I.

A.

Summary judgment may not be granted unless "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c) ; see also Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ; Univ. of Colo. Found., Inc. v. Am. Cyanamid Co., 196 F.3d 1366 (Fed. Cir. 1999). The trial court's duty at the summary judgment motion stage of the litigation is merely to discern "whether there are disputed material facts;" it does not extend to resolving any such disputes. SunTiger, Inc. v. Scientific Research Funding Grp., 189 F.3d 1327, 1333 (Fed. Cir. 1999) ; see also Lemelson v. TRW, Inc., 760 F.2d 1254, 1260 (Fed. Cir. 1985) ("For summary judgment, fact-finding is an inappropriate exercise ...."). The moving party bears the initial burden of "informing the district court of the basis for its motion" and identifying the matter that "it believes demonstrate[s] the absence of a genuine issue of material fact." Celotex, 477 U.S. at 323, 106 S.Ct. 2548. Where the nonmoving party bears the burden of proof, summary judgment is appropriate if the moving party can show "that there is an absence of evidence to support the nonmoving party's case." Id. at 325, 106 S.Ct. 2548. The substantive law governing the case will identify those facts which are material and "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

In determining whether summary judgment is appropriate, a court must resolve all ambiguities and draw all reasonable inferences against the moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962) ). If the moving party meets its burden, the burden shifts to the nonmoving party to come forward with "specific facts showing a genuine issue for trial." Fed. R. Civ. P. 56(e)(2). The nonmoving party must "point to an evidentiary conflict created on the record," and may not rely only on "mere denials or conclusory statements." Armco, Inc. v. Cyclops Corp., 791 F.2d 147, 149 (Fed. Cir. 1986) ; see also Applied Cos. v. United States, 144 F.3d 1470, 1475 (Fed. Cir. 1998) ("It is well settled that ‘a conclusory statement on the ultimate issue does not create a genuine issue of fact.’ ") (quoting Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990) ). With respect to the issues on which summary judgment is sought, if there is any evidence in the record from any source from which a "reasonable inference" could be drawn "in favor of the non-movant," summary judgment is improper. Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1377 (Fed. Cir. 2008) ; see also Hypoxico, Inc. v. Colo. Altitude Training, LLC, No. 02-cv-6191, 2008 WL 4129269, at *1-2 (S.D.N.Y. Sept. 4, 2008).

B.

Infringement analysis is a two-step process: "The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc ) (citation omitted), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 ; see also N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1344 (Fed. Cir. 2005).

Claim construction, the first step in infringement analysis, is a matter of law. See Markman, 52 F.3d at 979. Courts determine the scope of a claim by applying well-known principles of claim construction and examining three relevant sources: the language of the claim, the specification, and the prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). See generally Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005).

The language of a claim provides the starting point in a claim construction analysis. See Phonometrics, Inc. v. N. Telecom Inc., 133 F.3d 1459, 1464 (Fed. Cir. 1998). "Absent a special and particular definition created by the patent applicant, terms in a claim are to be given their ordinary and accustomed meaning." Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). "[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention ...." Phillips, 415 F.3d at 1313. The specification, however, is also highly relevant to the claim construction analysis, because it is the best guide to the meaning of a disputed term. Id. at 1315 (citing Markman, 52 F.3d at 978 ). A court in its discretion may consider extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although the Court of Appeals for the Federal Circuit has indicated that extrinsic evidence is less significant than the intrinsic record and that the Court should discount expert testimony that is clearly inconsistent with the construction of the claim indicated by the written record. Phillips, 415 F.3d at 1317-19.

With respect to the second step of infringement analysis, literal infringement requires that the accused deviceembody every limitation of a claim. See Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995). If the parties only dispute claim construction and do not dispute relevant facts concerning the structure and operation of the accused products, "the question of literal infringement collapses into claim construction and is amenable to summary judgment." Gen. Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997) ; see also Mymail, Ltd. v. Am. Online, Inc., 476 F.3d 1372, 1378 (Fed. Cir. 2007). This second step of infringement analysis is a question of fact, and therefore summary judgment on a claim of literal infringement issue is appropriate "when no genuine issue of material fact exists, in particular, when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device." Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998) ; see also Hypoxico, Inc., 2008 WL 4129269, at *2-3 (footnote omitted).

II.

The following facts are undisputed unless otherwise noted.

A.

This case involves three patents owned by Mirror Worlds -- U.S. Patent No. 6,006,227 (the "'227 Patent"), U.S. Patent No. 7,865,538 (the "'538 Patent"), and U.S. Patent No. 8,255,439 (the "'439 Patent"). Def.'s 56.1 Stmt. ¶ 1. The patents-in-suit protect a technology originally developed in the early 1990s that organizes electronic information in a time-ordered stream rather than in a conventional hierarchical directory of folders. Def.'s 56.1 Stmt. ¶¶ 4-9. The three patents-in-suit overlap in substantial part. Each contains two elements relevant to this dispute -- a "main stream" and a "substream."

1.

The claims in the '227 Patent and the '538 Patent both include a "main stream" limitation. See Def.'s 56.1 Stmt. ¶¶ 35, 37. A "main stream" is "a stream that is inclusive of every data unit received by or generated by the computer system." Def.'s 56.1 Stmt. ¶ 37; Pl.'s 5 6.1 Stmt. ¶ 37.² A "stream" is "a time-ordered sequence of data units that functions as the diary of a person or an entity's electronic life and has three main portions: past,...