Silver State Intellectual Tech Inc v. Facebook Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Silver State Intellectual Technologies, Inc. (Nevada)
  • Defendant: Facebook, Inc. (Delaware)
  • Plaintiff’s Counsel: Knobbe, Martens, Olson & Bear, LLP; Weide & Miller, Ltd.
• Case Identification: 2:17-cv-00643, D. Nev., 05/19/2017
• Venue Allegations: Plaintiff alleges venue is proper because Facebook resides and does business in the District of Nevada, has committed the alleged acts of infringement in the district, and has otherwise availed itself of the district by attending and presenting at trade shows.
• Core Dispute: Plaintiff alleges that Defendant’s location-based social networking features, including "Status Update/Check In" and "Place Tips," infringe patents related to a server-based system for managing and publishing user location data.
• Technical Context: The technology concerns systems where a central server receives location data from a user's mobile device, stores it in a user-specific profile, and selectively shares that data with other users or applications based on user-defined preferences.
• Key Procedural History: Plaintiff states it first notified Facebook of alleged infringement for both patents-in-suit in April 2016. The original complaint was filed on March 1, 2017. Notably, U.S. Patent No. 7,343,165 survived an inter partes review (IPR) proceeding (IPR2014-00159) initiated by a third party, Foursquare Labs, Inc., with the Patent Trial and Appeal Board confirming the patentability of asserted Claim 1.

Case Timeline

Date	Event
2000-04-11	Priority Date for ’165 and ’117 Patents
2008-03-11	’165 Patent Issued
2013-11-18	Inter Partes Review (IPR) filed against ’165 Patent by Foursquare Labs, Inc.
2014-11-18	’117 Patent Issued
2016-04-01	Plaintiff allegedly first contacted Facebook re: ’165 and '117 Patents
2017-03-01	Plaintiff filed original complaint against Facebook
2017-05-19	Complaint Filing Date (First Amended Complaint)
2017-06-30	IPR Certificate issued confirming patentability of '165 Patent Claim 1

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,343,165 - GPS PUBLICATION APPLICATION SERVER (Issued Mar. 11, 2008)

The Invention Explained

• Problem Addressed: The patent identifies a need for a better way to share location and related information for mobile individuals, noting that it can be difficult to contact or send items to someone whose location is unknown and that users may not wish to broadly disclose their contact details. (’165 Patent, col. 1:26-51).
• The Patented Solution: The invention proposes a server-based system that communicates with a user's location-aware mobile device. The server receives the device's geographic location, stores it in a user-specific data space (likened to a personal "home page"), and manages access to that information. (’165 Patent, Abstract; col. 2:5-12). This architecture, depicted in system diagrams like Figure 1, centralizes the management of location data, allowing it to be selectively published to other users or applications according to the user's preferences. (’165 Patent, Fig. 1; col. 2:40-53).
• Technical Importance: This server-centric model for managing and selectively disseminating dynamic location data from mobile devices provided a framework for early location-based social applications. (’165 Patent, col. 2:21-25).

Key Claims at a Glance

• The complaint asserts independent Claim 1. (Compl. ¶10).
• The essential elements of Claim 1, a method claim, include:
  • allocating a user-specific space in memory on a network-accessible computer;
  • associating a mobile device with the user;
  • determining the user's geographic location via the mobile device;
  • storing data of the user's location in the user-specific space;
  • receiving and storing additional user data related to the geographic location;
  • receiving and storing a user-provided "access list of possible requesters"; and
  • providing the location data and additional data to requesters who are on the access list.
• The complaint reserves the right to assert other claims. (Compl. ¶11).

U.S. Patent No. 8,892,117 - GPS PUBLICATION APPLICATION SERVER (Issued Nov. 18, 2014)

The Invention Explained

• Problem Addressed: As a continuation of the '165 patent, this patent addresses the same fundamental problem of enabling and controlling the sharing of location-based information for mobile users. (’117 Patent, col. 1:12-50).
• The Patented Solution: The invention claims a server system that receives location information from a mobile device and stores it in memory associated with that user. The key element is a server program that allows "different people different access to the memory based on the identity of the user." (’117 Patent, col. 7:10-29). This creates a user-controlled publishing system where access to location and personalized data (such as points of interest) is gated by identity-based rules managed by the server, as conceptually illustrated in the system diagram in Figure 3. (’117 Patent, Fig. 3).
• Technical Importance: This patent refines the concept of a server-managed, location-aware data-sharing system by focusing on the server's role in executing an access control program based on user identity. (’117 Patent, col. 2:36-48).

Key Claims at a Glance

• The complaint asserts independent Claim 1. (Compl. ¶16).
• The essential elements of Claim 1, a system claim, include:
  • A server connected to a network that receives location information from a mobile device.
  • Memory accessible to the server that stores information for a user, including their location, personalized points of interest, and communication data.
  • The server executes a program that allows "different people different access to the memory based on the identity of the user."
• The complaint reserves the right to assert other claims. (Compl. ¶17).

III. The Accused Instrumentality

Product Identification

The complaint identifies Facebook's "location-based social networking systems and services" generally, and specifically calls out the "Status Update/Check In" application for the ’165 Patent and the "Place Tips" application for the ’117 Patent. (Compl. ¶7, 10, 16).

Functionality and Market Context

The accused instrumentalities are described as applications that allow users to share their location with others within the Facebook social network. (Compl. ¶10, 16). The complaint alleges that when a user "checks in" or uses a location-based feature, their location is determined and transmitted to Facebook's servers, which then make that information available to other users or use it to provide location-relevant content like "Place Tips." (Compl. ¶10, 16). The complaint references an "Exhibit C" containing a more detailed element-by-element analysis, but that exhibit was not provided with the complaint document. (Compl. ¶11, 17).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement of both patents but refers to a claim chart in an external Exhibit C, which was not available for this analysis. (Compl. ¶11, 17). The infringement theories must therefore be inferred from the complaint’s narrative allegations.

For the ’165 Patent, the complaint alleges that Facebook's "Status Update/Check In" feature practices the method of Claim 1. (Compl. ¶10). The narrative suggests that Facebook's servers allocate storage for each user (a profile), receive and store location data when a user "checks in," and share that data with other users. The core of this allegation likely depends on equating a user's Facebook privacy settings (e.g., "Friends," "Public," custom lists) with the claimed "access list of possible requesters."

For the ’117 Patent, the complaint alleges that Facebook's system, which enables the "Place Tips" feature, constitutes the system of Claim 1. (Compl. ¶16). The narrative implies that Facebook's servers receive a user's location, store it, and run a program that controls access to that information and provides location-based content. This allegation likely hinges on the argument that Facebook's access control logic, which determines who can see a user's information, performs the function of the claimed program that allows "different people different access... based on the identity of the user."

Identified Points of Contention

• Scope Questions: A primary dispute for the ’165 Patent will likely be whether Facebook's complex, graph-based privacy system constitutes an "access list" as that term is used in the patent. For the ’117 Patent, a key question is whether the claim phrase "based on the identity of the user" refers to the data owner, the data requester, or the relationship between them, and how that maps to Facebook's architecture.
• Technical Questions: Without the claim charts, it is an open question what evidence Plaintiff will present to show that the accused features meet every limitation of the asserted claims. For instance, for the ’165 Patent, what constitutes the "additional data... related to the geographic location," and for the '117 Patent, how precisely does the "Place Tips" feature rely on the specific memory and server program structure defined in Claim 1?

V. Key Claim Terms for Construction

’165 Patent, Claim 1: "access list of possible requesters"

• Context and Importance: This term is central to the infringement allegation against the ’165 Patent. Its construction will determine whether a modern social media privacy framework, which is often more complex than a simple list, falls within the scope of the claim.
• Intrinsic Evidence for a Broader Interpretation: The specification discusses providing information that "may vary by the requester" and refers generally to "subscribers and parties requesting location and contact information," suggesting the mechanism is a flexible permissioning system rather than a static, literal list. (’165 Patent, col. 4:65-5:2).
• Intrinsic Evidence for a Narrower Interpretation: The use of the specific word "list" could be argued to imply a more structured, enumerated compilation of authorized individuals, which may not directly describe Facebook’s relationship-based (e.g., "friends of friends") or attribute-based privacy controls.

’117 Patent, Claim 1: "based on the identity of the user"

• Context and Importance: The meaning of "the user" in this phrase is critical. Practitioners may focus on this term because if it refers only to the data owner, the claim may be narrower than if it refers to the person requesting the data. The infringement analysis for Facebook's system, which grants access based on the identity of the requester in relation to the owner, depends on this interpretation.
• Intrinsic Evidence for Interpretation (as Requester): The parent ’165 patent specification, incorporated by reference, discusses configuring the system to provide different information "to different requesters," which may support reading "user" as the person requesting access. (’165 Patent, col. 7:21-23).
• Intrinsic Evidence for Interpretation (as Data Owner): The claim consistently refers to "a user of the mobile communication device" and "information relating to a user." This consistent antecedent could support an interpretation where "the user" in the disputed phrase also refers to the data owner, implying the access rules are based on some attribute of the owner's identity or status. (’117 Patent, col. 7:12-29).

VI. Other Allegations

• Indirect Infringement: While the prayer for relief seeks an injunction against indirect infringement, the body of the complaint does not contain specific factual allegations of either induced or contributory infringement, such as instructing users to perform infringing acts. (Compl. p. 6, ¶C).
• Willful Infringement: The complaint alleges willful infringement for both patents. The allegations are based on pre-suit knowledge, stemming from notice letters and claim charts that Plaintiff claims it provided to Facebook in April 2016 for both the ’165 and ’117 patents, more than a year before the amended complaint was filed. (Compl. ¶13, 19).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope: can the term "access list," as used in the ’165 patent, be construed broadly enough to read on the complex, relationship-based privacy controls of a modern social network like Facebook? The patentability of this claim having been confirmed in an IPR proceeding may give the Plaintiff leverage on this and other validity questions.
• A second central issue will be one of claim construction and functional mapping: for the ’117 patent, does the claim phrase "based on the identity of the user" refer to the data owner or the data requester? The outcome of this question will determine whether Facebook's access control system, which functions based on the relationship between the two, matches the architecture required by the claim.
• A key evidentiary question will be what proof is developed during discovery to show that Facebook's systems meet each technical limitation of the asserted claims, particularly since the infringement theories presented in the complaint rely on an unprovided claim chart exhibit.