You Win Some and Lose Some: Judge Koeltl Finds Claims Patent-Eligible But Not Infringed
On March 8, 2022, Judge John G. Koeltl (S.D.N.Y.) denied Defendant Facebook Inc.’s (“Facebook”) motion for summary judgment that the claims of three related patents directed to “storing documents in a chronologically ordered ‘stream’” and “substreams” are invalid, but granted Facebook’s motion for summary judgement of non-infringement.
A main “stream” would contain every document in the system, while “substreams” could be used to filter documents in the main stream. Facebook argued that the claims were directed to the abstract idea of “organizing information in a time-ordered manner.” Mirror Worlds argued that the claims were directed “to the way in which computers name, organize, and retrieve electronic documents and distinguish the way in which conventional computers had done so.” Mirror Worlds further argued the claims were directed to improving computer functionality, which is eligible for patent protection. The Court sided with Mirror Worlds.
The Court compared the asserted claims of the patents-in-suit to the claims in Enfish, LLC v. Microsoft Corp., in which the Federal Circuit found the claims eligible for patent protection. “The claims asserted here are also aimed at improving the storage and retrieval of data on a computer. The patents teach that conventional operating systems were cumbersome, difficult to navigate, and carried several disadvantages.” The Court found “the claimed invention attempts to solve these problems by storing documents in a computer system in time-ordered streams.” “The asserted claims seek to improve upon traditional computer operating systems by storing and retrieving data in a more efficient way. Accordingly, the claims are directed to improving computer functionality.” While the Court acknowledged that storing and organizing information is “a human problem that exists independent of computers,” it found the claims here are specifically focused on the way in which computers store and retrieve data.
The Court next addressed Facebook’s motion for summary judgment of noninfringement. The Court focused on the construction of two terms: “data unit” and “main collection.” The Court noted that “data unit” is in issue because the parties’ infringement dispute hinges on whether the alleged “main streams” include every data unit received or generated by the alleged computer systems. Mirror Worlds argued that “data unit” meant “an item of information that is of direct user interest.” The Court rejected this construction because, inter alia, “the doctrine of prosecution disclaimer precludes Mirror Worlds’ construction.” Indeed, the Court found that Mirror Worlds “disclaim[ed] the very construction that they urge this Court to adopt.” Instead, the Court construed “data unit” as “an item of information.”
As for “main collection,” Facebook argued that “main collection” meant “main stream,” while Mirror Worlds argued that it meant “main collection of document representations.” The Court agreed with Facebook, finding that because the “patents use the terms ‘stream’ and ‘collection’ interchangeably, ‘main stream’ and ‘main collection’ are synonymous.”
Given these constructions, the Court found that the claims are not infringed because the accused Facebook instrumentalities (“Newsfeed,” “Timeline,” and “Activity Log”) did not include the claimed “main stream.” As such, the Court found that Facebook was entitled to summary judgment of noninfringement with respect to all asserted claims of the patents-in-suit.
The case is Mirror Worlds Techs., Inc. v. Facebook, Inc., No. 17-cv-3473 (JGK) (S.D.N.Y. Mar. 08, 2022)