DCT
1:17-cv-03473
Mirror Worlds Tech LLC v. Facebook Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mirror Worlds Technologies, LLC (Texas)
- Defendant: Facebook, Inc. (Delaware)
- Plaintiff’s Counsel: Amster, Rothstein & Ebenstein LLP; Russ, August & Kabat
- Case Identification: 1:17-cv-03473, S.D.N.Y., 05/09/2017
- Venue Allegations: Venue is alleged to be proper as Defendant maintains a place of business with key engineering facilities in the district and has committed acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s Facebook platform, including its News Feed and Timeline features, infringes patents related to a stream-based system for organizing and displaying digital information.
- Technical Context: The technology concerns a paradigm for information management that replaces the traditional hierarchical file-and-folder system with a time-ordered, searchable "stream" of documents.
- Key Procedural History: The complaint highlights a significant history of litigation and administrative review. It notes that the ’227 Patent survived two ex parte reexaminations initiated by Apple, a jury in a separate case found its claims not invalid, and the Patent Trial and Appeal Board (PTAB) denied institution of a Covered Business Method (CBM) review petition. The complaint also alleges that Apple and Microsoft have previously licensed the patent portfolio.
Case Timeline
| Date | Event |
|---|---|
| 1996-06-28 | Priority Date for U.S. Patent No. 6,006,227 |
| 1999-12-21 | Issue Date for U.S. Patent No. 6,006,227 |
| 2000-10-13 | Priority Date for U.S. Patent Nos. 7,865,538 & 8,255,439 |
| 2001-03-01 | Plaintiff's "Scopeware" product launched |
| 2001-07-02 | Apple CEO Steve Jobs circulates article on Scopeware internally |
| 2004-01-01 | Mirror Worlds ceases operations; Facebook website launched |
| 2006-09-01 | Facebook launches "News Feed" feature |
| 2010-10-01 | Jury verdict finds claims of ’227 Patent not invalid in Mirror Worlds v. Apple |
| 2011-01-04 | Issue Date for U.S. Patent No. 7,865,538 |
| 2012-08-28 | Issue Date for U.S. Patent No. 8,255,439 |
| 2016-05-26 | PTAB denies CBM review petition for the ’227 Patent |
| 2017-05-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,006,227 - "Document Stream Operating System," issued December 21, 1999
The Invention Explained
- Problem Addressed: The patent identifies the shortcomings of conventional computer operating systems that rely on a "desktop metaphor," such as the need to name every file, store information in rigid hierarchical directories, the difficulty of archiving, and the loss of historical context for documents (’227 Patent, col. 1:21-2:9; Compl. ¶30).
- The Patented Solution: The invention proposes a new model for managing information using a "time-ordered stream" (’227 Patent, col. 3:62-64). All documents received or created by the system are placed into a single "main stream" that functions as a "diary of a person or an entity's electronic life," containing past, present, and future-dated items (’227 Patent, col. 3:6-10, 3:18-22). From this main stream, users can generate dynamic, query-based "substreams" that present filtered "views" of the document collection without altering the underlying main stream (’227 Patent, col. 4:50-59). Figure 1 of the patent depicts this concept, showing a receding stack of documents representing the stream over time (’227 Patent, Fig. 1).
- Technical Importance: This approach provided a technological alternative to the file-and-folder paradigm, proposing a temporal organization method intended to be more intuitive for managing the continuous flow of information in a networked environment (Compl. ¶15, ¶31).
Key Claims at a Glance
- The complaint asserts independent claim 13 (Compl. ¶39).
- The essential elements of claim 13 are:
- 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;
- each substream for containing data units only from the main stream;
- associating each data unit with a chronological indicator (timestamp);
- including each data unit in at least the main stream according to its timestamp; and
- maintaining the main stream and substreams as persistent streams.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,865,538 - "Desktop, Stream-Based Information Management System," issued January 4, 2011
The Invention Explained
- Problem Addressed: The patent seeks to alleviate concerns with "traditional storage and retrieval systems" by providing a more natural and intuitive approach to information management that better fits how people work and think (’538 Patent, col. 1:59-65).
- The Patented Solution: The invention builds on the stream-based model by detailing specific user interface methods for interacting with the stream. A key feature is the "glance view" or "browse card," which automatically appears when a user's cursor "touches" a document representation in the stream, providing a summary or thumbnail without requiring a click (’538 Patent, col. 17:25-32). This allows for rapid scanning and identification of documents within the time-ordered flow (’538 Patent, col. 3:35-42).
- Technical Importance: This invention refines the user experience for stream-based systems, aiming to make browsing large collections of time-ordered information more efficient than in conventional list-based or icon-based file systems (Compl. ¶21).
Key Claims at a Glance
- The complaint alleges that every claim of the ’538 patent requires a "main stream and substreams" (Compl. ¶39). Independent claim 1 is representative.
- The essential elements of claim 1 include:
- providing the system with documents from diverse applications;
- automatically storing the documents as a time-ordered main stream;
- maintaining the main stream as live and responsive to subsequent events;
- using search criteria to create a time-ordered substream from the main stream;
- displaying a portion of the live main stream or substream; and
- automatically showing a "glance view" of a document in response to "touching with a cursor" the document's screen representation.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. 8,255,439 - "Desk-top, Stream-Based Information Management System," issued August 28, 2012
- Technology Synopsis: The ’439 patent is a continuation of the application leading to the ’538 patent and shares a nearly identical specification (Compl. ¶9). It further describes a stream-based information management system, framing the invention in terms of a "main collection" and "sub-collections" that are analogous to the "main stream" and "substreams" of the parent patents. The invention focuses on automatically generating and storing representations of documents in a consistent format, regardless of the original document type, and displaying them in a time-ordered manner (’439 Patent, Abstract).
- Asserted Claims: The complaint alleges infringement of claims requiring a "main collection and sub-collections" (Compl. ¶39). Independent claims 1 and 9 are the patent's independent claims.
- Accused Features: The accused Facebook features are alleged to generate and maintain a "main collection" of all user activities and display "sub-collections" based on user-driven filters or searches, such as viewing a specific user's timeline or using Graph Search (Compl. ¶62, ¶66).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant’s website (www.facebook.com) and associated mobile applications, specifically features known as "News Feed" and "Timeline" (Compl. ¶57, ¶60, ¶64).
Functionality and Market Context
- The complaint alleges that Facebook's "News Feed" is a "constantly updating list" that functions as a "stream of information and content from all contacts that appears on every single Facebook user's home page" (Compl. ¶61, ¶62). This feed is alleged to be a central, time-ordered repository of user activities, including posts, photos, and events, which are generated by the user or received from their social network. The complaint further alleges that related features, such as a user's "Activity Log" and "Graph Search," allow for the creation of filtered views of this central stream of information (Compl. ¶64, ¶66). The complaint highlights the News Feed as a core and highly valuable component of Facebook's service (Compl. ¶63).
IV. Analysis of Infringement Allegations
’227 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| generating a main stream of data units and at least one substream... | Facebook's systems are alleged to generate a "News Feed," which constitutes the main stream, and also generate various substreams such as a user's own timeline, a friend's timeline, or search results. | ¶60, ¶62, ¶66 | col. 4:50-59 |
| the main stream for receiving each data unit received by or generated by the computer system... | The News Feed is alleged to be the central stream that receives and incorporates all user-generated and network-generated activity, such as posts, photos, and "likes." | ¶61, ¶62 | col. 4:8-14 |
| each substream for containing data units only from the main stream... | Filtered views, such as a specific friend's activity or results from a Graph Search, are alleged to be subsets that contain only data units also present in the overall main stream. | ¶61, ¶66 | col. 4:55-59 |
| maintaining at least the main stream and the substreams as persistent streams. | The News Feed is described as a "constantly updating" and dynamically updated list, which the complaint alleges satisfies the "persistent" requirement. A screenshot shows status updates like "Rick is running," which is presented as evidence of dynamic updates. | ¶61, ¶64, ¶(p.24 visual) | col. 5:2-6 |
’538 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| causing the computer system to automatically... store the provided documents as a time-ordered main stream... | Facebook is alleged to automatically organize user posts, photos, and other activities into the chronologically-ordered News Feed and Timeline features. | ¶60, ¶62, ¶64 | col. 17:1-7 |
| said computer system maintaining the main stream live and responsive to subsequent events by automatically incorporating therein new documents... | The News Feed is alleged to be a "constantly updating list" that incorporates new activities as they occur. A screenshot shows the News Feed displaying past ("6 months ago"), present ("Just now"), and future ("Upcoming Events") items. | ¶61, ¶64, ¶(p.22 visual) | col. 17:11-16 |
| causing said computer system to search said time-ordered main stream... to create a time-ordered substream of documents... | Features like viewing a friend's timeline or using Facebook's Graph Search are alleged to be search operations that create filtered substreams from the main data collection. | ¶66 | col. 17:17-21 |
| automatically showing on the display means a display of a glance view... in response to touching with a cursor a screen area associated with the document... | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 17:25-32 |
Identified Points of Contention
- Scope Questions: The complaint cites a prior court ruling defining "main stream" as being "inclusive of every data unit received by or generated by the computer system" (Compl. ¶41). A central question will be whether Facebook’s algorithmically curated News Feed, which selectively displays content, can meet this "all-inclusive" definition, or if there is a fundamental mismatch in scope.
- Technical Questions: The infringement theory hinges on the News Feed being a single, persistent "main stream" from which other views ("substreams") are filtered. A key technical question is whether the accused Facebook features operate this way, or if different pages (e.g., News Feed, a user's Timeline) are generated via independent queries to a back-end database, which may not align with the patented architecture of filtering a singular stream object.
V. Key Claim Terms for Construction
The Term: "main stream"
- Context and Importance: This term is the foundational concept of the asserted patents. Whether the accused "News Feed" constitutes a "main stream" is central to the entire infringement case.
- Evidence for a Broader Interpretation: The patent specification describes a "stream" more generally as a "time-ordered sequence of documents that functions as a diary of a person or an entity's electronic life" (’227 Patent, col. 3:6-9), which a party could argue does not strictly require every single piece of data to be included.
- Evidence for a Narrower Interpretation: The complaint itself puts forth a narrow definition from a prior Markman order, defining it as a stream "that is inclusive of every data unit received by or generated by the computer system" (Compl. ¶41). This definition, if adopted, may present a significant hurdle for the infringement allegation against an algorithmically curated feed.
The Term: "substream"
- Context and Importance: The definition of this term will determine whether filtered views on Facebook, such as a friend's timeline or search results, infringe. Practitioners may focus on this term because its technical implementation is key.
- Evidence for a Broader Interpretation: A party could argue that any filtered, time-ordered view of the underlying data set constitutes a "substream."
- Evidence for a Narrower Interpretation: The specification states that "substreams, unlike conventional, virtual or fixed directories... present the user with a stream ‘view’ of a document collection" and are generated "by default from all the documents in the main stream" (’227 Patent, col. 4:50-59). This may be argued to require a specific architecture where a query filter is applied directly to the main stream object, not just a separate database query.
VI. Other Allegations
- Indirect Infringement: The complaint's allegations focus on direct infringement by Facebook's operation of its systems. It does not contain separate counts for induced or contributory infringement.
- Willful Infringement: While the complaint does not use the term "willful," it lays a factual predicate for such a claim by alleging that the technology was widely publicized and that Facebook launched its "News Feed" years after the commercialization of Plaintiff's "Scopeware" product and after major technology companies had licensed the patents (Compl. ¶19, ¶35, ¶57). It further alleges that the patents have been cited as prior art in approximately 500 patent applications by numerous major technology companies (Compl. ¶34). These allegations suggest an attempt to establish pre-suit knowledge of the patents and the patented technology.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: does Facebook’s algorithmically curated News Feed, which presents a personalized and filtered subset of activities, meet the patent’s requirement for a "main stream" that is "inclusive of every data unit received by or generated by the computer system," a definition Plaintiff itself advances based on a prior court ruling?
- A key technical question will be one of architectural implementation: do the various views on Facebook (e.g., a friend's timeline, search results) function as patented "substreams"—which are described as dynamic, filtered views of a single, persistent main stream object—or are they independently generated pages resulting from distinct queries to a general database, suggesting a fundamental mismatch in technical operation?
- A potential evidentiary question exists regarding the ’538 patent: what evidence does the complaint offer that Facebook’s interface implements the specific "glance view" functionality, described as an automatic, cursor-hover-activated summary, which is a key limitation of that patent's asserted claims?