Wireless Ink Corp.. v. Facebook Inc.

• Decision Date: 26 May 2011
• Docket Number: No. 10 Civ. 1841(PKC).,10 Civ. 1841(PKC).
• Citation: 787 F.Supp.2d 298,2011 Markman 2089917
• Parties: WIRELESS INK CORPORATION, Plaintiff,v.FACEBOOK, INC. and Google, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

787 F.Supp.2d 298

2011 Markman 2089917

WIRELESS INK CORPORATION, Plaintiff,

v.FACEBOOK, INC. and Google, Inc., Defendants.

No. 10 Civ. 1841(PKC).

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

May 26, 2011.

Jeremy S. Pitcock, 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, for Plaintiff.Arastu Kabeer Chaudhury, Jonathan Paul Bach, Cooley Godward Kronish LLP, Kevin X. McGann, Aaron Chase, White & Case LLP, New York, NY, Elizabeth L. Stameshkin, Cooley Godward Kronish L.L.P., San Diego, CA, Eric Tierney, Cooley Godward Kronish LLP, Michael Graham Rhodes, Cooley, LLP, San Francisco, CA, Heidi Keefe, Mark Randolph Weinstein, Cooley Godward Kronish, LLP, Palo Alto, CA, for Defendants.

MEMORANDUM AND ORDER

P. KEVIN CASTEL, District Judge:

Plaintiff Wireless Ink Corp. (“Wireless Ink”) has asserted multiple claims against defendants Facebook, Inc. (“Facebook”) and Google, Inc. (“Google”) for direct and indirect patent infringement under 35 U.S.C. § 271, both literal and under the doctrine of equivalents. Defendants assert counterclaims seeking a declaratory judgment (1) that the defendants have not infringed the patent-at-issue, U.S. Pat. No. 7,599,983 (the “'983 patent”) and (2) that the '983 patent is invalid and unenforceable. Defendants also assert multiple affirmative defenses, including a defense that the '983 patent is invalid.

Plaintiff and defendants now cross-move for judgment on the pleadings. (Docket # 62, 67.) Defendants move for judgment on the pleadings on the grounds that plaintiff has failed to state a claim for relief and has affirmatively alleged facts in the SAC demonstrating that the accused products do not infringe the '983 patent. Plaintiff cross-moves, arguing that defendants' invalidity counterclaims should be dismissed because the allegations do not plausibly allege that the '983 patent is invalid. Plaintiff also cross-moves to “dismiss” defendants' invalidity affirmative defense, which this Court construes as a motion to strike, pursuant to Rule 12(f), Fed.R.Civ.P.¹ For the reasons set forth below, the defendants' motion is denied. Plaintiff's motion to strike is denied. Plaintiff's motion to dismiss defendants' counterclaims relating to invalidity is granted.

BACKGROUNDA. Procedural History

Plaintiff filed the Complaint on March 9, 2010. (Docket # 1.) In response to perceived pleading deficiencies outlined by defendants in an April 26, 2010 letter to the Court, plaintiff elected to file an Amended Complaint on May 14, 2010. (Docket # 16, 17.) In July 2010, defendants filed Answers to the Amended Complaint asserting counterclaims against plaintiff. (Docket # 22, 24.) In November 2010, defendants moved for judgment on the pleadings. (Docket # 51.) In response to plaintiff's “cross-motion” to file an amended complaint, plaintiff was permitted to file a Second Amended Complaint (the “SAC”), and did so on December 3, 2010. (Docket # 53, 54.) Defendants filed Answers to the SAC asserting counterclaims and affirmative defenses. (Docket # 57, 58.) Plaintiff filed Answers to the counterclaims on January 7, 2011. (Docket # 60, 61.) Defendants then renewed their motion for judgment on the pleadings. (Docket # 62.) Plaintiff cross-moved for judgment on the pleadings. (Docket # 67.) Defendants have filed joint briefs with respect to both pending motions.

B. The '983 Patent

The '983 patent is entitled “Method, Apparatus and System for Management of Information Content for Enhanced Accessibility over Wireless Communication Networks” and was issued on October 6, 2009. (SAC ¶¶ 1, 10.) Since that date, Wireless Ink has been the exclusive owner of all rights in the '983 patent. (SAC ¶ 1.) David Harper, one of the founders of Wireless Ink, is the lead inventor of the '983 patent. (SAC ¶ 57.)

In basic terms, the patent discloses a method that allows an unsophisticated mobile device user to create mobile web sites with personally-authored content for display on mobile devices. The invention requires “a content management site” and “mobile information channels” to address the challenge of limited display space and navigational capacities typical of web-enabled mobile devices, such as mobile telephones, personal digital assistants and palmtop computers. (Col. 1: ll. 22–31; Col. 2: ll. 4–14, 30–34.) “The content management site permits the user to enter information in accordance with a specified format comprising a plurality of selectable mobile information channels each corresponding to an information category.” (Col. 4: ll. 58–61.) The '983 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.” (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....” (Col. 7: ll. 66–67; Col. 8: ll. 1–10.)

The inventors of the '983 invention were not the only individuals to create methods of accessing web site information content over mobile devices. Other prior-art systems are described in the “Background of the Invention.” But, according to the patent, these systems do not enable users “to make specific personalized information content available via mobile devices to their friends, colleagues, subscribers or other entities” in a satisfactory manner. (Col. 1: ll. 37–39.) Significant drawbacks among the other systems include “a failure to provide suitable integration of messaging, collaboration, location-based services or other wireless networking functionality with the generation of shared information content.” (Col. 1: ll. 46–49.) This prevents mobile device users from accessing a persistent version of shared information content upon which they could take further action. (Col. 1: ll. 49–52.) Other systems also require that the user possess sophisticated programming knowledge in order to employ them. (Col. 1: ll. 55–58.) Accordingly, the stated advantage of the present invention is that it “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.” (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 network-based communication system. (Col. 2: ll. 4–7.) This is accomplished by providing a content management site whereby a user can enter information in accordance with a specified format. (Col. 2: ll. 7–9.) The format is comprised of multiple selectable mobile information channels that correspond to an information category. (Col. 2: ll. 7–11.) 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.” (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. (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. (Col. 2: ll. 25–30.) 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. (Col. 2: ll. 30–34.)

Claim 1 describes a method for managing content on mobile web sites. (Col. 18: ll. 22–48.) It is the only independent claim at issue and teaches 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.²

(Col. 18: ll. 21–48) (emphasis added.)

THE ACCUSED PRODUCTS

The SAC alleges that defendants infringe Claims 1, 2, 3, 4, 6, 7, 9, 14 and 15 of the '983 patent. (SAC ¶ 11.) To the extent any claim element is not literally met, plaintiff alleges Facebook and Google infringe these claims under the doctrine of equivalents. (SAC ¶¶ 28, 43–51.) For the purpose of the parties' cross-motion for judgment on the pleadings,...