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

• Docket Number: 17-cv-3473 (JGK)
• Decision Date: 02 March 2022
• Citation: 588 F.Supp.3d 526
• Parties: MIRROR WORLDS TECHNOLOGIES, LLC, Plaintiff, v. FACEBOOK, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

588 F.Supp.3d 526

MIRROR WORLDS TECHNOLOGIES, LLC, Plaintiff,

v.FACEBOOK, INC., Defendant.

17-cv-3473 (JGK)

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

Signed March 2, 2022

Marc A. Fenster, Adam S. Hoffman, Benjamin T. Wang, Jacob R. Buczko, James Tsuei, Minna Chan, Theresa Troupson, Russ, August, & Kabat, Brian D. Ledahl, Irell & Manella LLP, Los Angeles, CA, Steven Udick, Russ August & Kabat, Frisco, TX, Charles Robert Macedo, Amster, Rothstein & Ebenstein LLC, New York, NY, for Plaintiff.

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

OPINION AND ORDER

JOHN G. KOELTL, District Judge:

The plaintiff, Mirror Worlds Technologies, LLC ("Mirror Worlds") brought this patent infringement suit against Facebook, Inc., alleging that three systems within Facebook's social media platform infringe three patents owned by Mirror Worlds.

Mirror Worlds owns U.S. Patent Nos. 6,006,227, 7,865,538, and 8,255,439, "which describe and claim systems and methods for presenting and storing data in time-ordered streams on a computer system." Mirror Worlds Techs., LLC v. Facebook, Inc., 800 F. App'x 901, 902 (Fed. Cir. 2020).¹ The ’227 patent issued from an application filed in 1996. The ’538 and ’439 patents claim priority to the ’227 patent.

The ’227 patent states that, as of its priority date, conventional computers used hierarchical directories to store and organize data. ’227 patent, col. 1, lines 21–30.² When creating a new document under that conventional system, users were required to name the document and choose a storage location within a pre-existing directory structure. Id. The patent states that this system had several disadvantages, including: needless overhead, file names that were often meaningless to the user, and requiring the user to remember a given document's name as well as where that document was stored. See id., col. 1, lines 40–59. As an alternative system, the ’227 patent describes storing documents in a chronologically ordered "stream." Id., col. 1, lines 4–6.

The ’227 patent defines a "stream" as "a time-ordered sequence of documents that functions as a diary of a person or an entity's electronic life. Every document created and every document sen[t] to a person or entity is stored in a main stream." Id., col. 4, lines 6–10. A stream contains documents from the past and present, and also could contain "documents allotted to future times and events, such as[ ] reminders, calendar items, and to-do lists." Id., col. 4, lines 18–21. The patent explains that "[a] document can contain any type of data," including "pictures, correspondence, bills, movies, voice mail and software programs." Id., col. 4, lines 16–18.

In addition to a "main stream," which contains every document in a given computer system, the patent describes "substreams." A substream is a "subset" of the main stream. Id., col. 5, lines 16–17. A user may create a substream by applying a filter to the documents in the main stream, for example "all emails I've sent to Schwartz." See id., col. 4, lines 50–51. Substreams are "dynamic" and "persistent" in that they will, at the user's request, collect applicable information as it is added to the main stream, and substreams will continue to exist "until destroyed by the user." See id., col. 5, lines 1–13. Each substream document is in the main stream, and the same document can exist in multiple substreams. Id., col. 5, lines 14–19.

Both the ’538 and ’439 patents incorporate by reference the patent application that issued as the ’227 patent. ’538 patent, col. 1, lines 14–16; ’439 patent, col. 1, lines 15–17. The specifications of the ’538 patent and the ’439 patent are "nearly identical." Compl., ECF No. 1 ¶ 9.

Each of the claims asserted by Mirror Worlds contains a "main stream" or "main collection" limitation and a "substream" or "subcollection" limitation. Mirror Worlds Techs., 800 F. Appx at 903.³ "The parties agree that the ‘main stream’ has two properties: first, it includes every data unit received or generated by the ‘computer system’; second, it is a time-ordered sequence of data units." id.

Mirror Worlds contends that three Facebook systems infringe the asserted claims: "News Feed," "Timeline," and "Activity Log." "News Feed provides a scrolling display (or ‘feed’) that provides stories that might be of interest to a viewing user, for example, if friends of the user posted comments or photos, uploaded videos, or performed other actions." ECF No. 241, at 13. Timeline "allows a user to share information such as text, images, photos, videos, and other types of data, with other users on Facebook." Tang Decl., ECF No. 250-17 ¶ 4. " ‘Activity Log’ is similar to Timeline in that it can provide a list of actions that occurred on Facebook that pertain to a particular user." Id. ¶ 6.

Mirror Worlds contends that the following Facebook components satisfy the main stream/main collection and computer system limitations: in News Feed, Mirror Worlds alleges that the Multifeed System (the backend infrastructure for News Feed) meets the computer system limitation, and that the Multifeed Leaves (a storage system for keeping track of recent user actions) meets the main stream/main collection limitation. In both Timeline and Activity Log, Mirror Worlds alleges that the Timeline backend system meets the computer system limitation, and that the TimelineDB (Timeline database) meets the main stream/main collection limitation. See Mirror Worlds Techs., 800 F. Appx at 905–06 ; ECF No. 288, at 4; Mirror Worlds’ Response to Facebook's Statement of Material Facts ("Mirror Worlds’ RTSMF"), ECF No. 288-1, at 12-13.

Mirror Worlds asserts claims 13, 14, and 17 of the ’227 patent. These claims recite:

13. A method which organizes each data unit received by or generated by a computer system, comprising the steps of:

generating a main stream of data units and at least one substream, the main stream for receiving each data unit received by or generated by the computer system, and each substream for containing data units only from the main stream;

receiving data units from other computer systems;

generating data units in the computer system;

selecting a timestamp to identify each data unit;

associating each data unit with at least one chronological indicator having the respective timestamp;

including each data unit according to the timestamp in the respective chronological indicator in at least the main stream; and

maintaining at least the main stream and the substreams as persistent streams.

14. The method of claim 13, wherein each timestamp is selected from the group consisting of: past, present, and future times.

17. The method of claim 13, wherein each data unit includes textual data, video data, audio data and/or multimedia data.

’227 patent, col. 16.

Mirror Worlds asserts claim 1 of the ’538 patent and claim 1 of the ’439 patent. Claim 1 of the ’538 patent recites:

1. A method of operating a computer system comprising:

providing the computer system with documents from diverse applications in respective formats unique to the respective applications;

causing the computer system to automatically, without user interaction and without requiring a user to designate directory structures or other pre-imposed document categorizations structures, store the provided documents as a time-ordered main stream of documents associated with respective automatically generated time indicators;

said time-ordered main stream being unbounded to thereby accommodate documents associated with time indicators related to past, present and future times;

said time-ordered main stream requiring no fixed beginning or end and being maintained and being selectively retrievable and searchable by the computer system;

said computer system maintaining the main stream live and responsive to subsequent events by automatically incorporating therein new documents as provided to the computer system while maintaining the thus expanded main stream time-ordered;

providing selected search criteria;

causing said computer system to search said time-ordered main stream according to said search criteria and use search results to create a time-ordered substream of documents from the main time-ordered stream;

further causing said computer system to maintain said substream live and responsive to subsequent events by automatically incorporating therein new document provided to the computer system that meet the search criteria while maintaining the thus expanded substream time-ordered;

displaying at least selected portion of the live main stream or substream on computer display means as a display reflecting the time-ordered nature thereof;

automatically showing on the display means a display of a glance view of a displayed document in response to touching with a cursor a screen area associated with the document;

said glance view being an abbreviated version of the document and indicative of content thereof; and

said showing of the glance view occurring essentially instantaneously in response to said touching with the cursor of the screen area associated with the document.

Claim 1 of the ’439 patent recites:

1. A method of operating a computer system comprising:

providing the computer system with documents in respective formats according to respective different applications through which the provided documents are generated or modified, which formats differ from one of the document to another for at least some of said provided documents, said provided documents being delivered to the computer system or generated by the computer system;

storing at least some of the documents provided to the computer system in computer storage;

said computer system being configured to automatically generate and store in computer storage respective representations related to the documents

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