PTAB

IPR2016-01157

Facebook Inc. v. Windy City Innovations, LLC

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1. Case Identification

2. Patent Overview

  • Title: Real Time Communications System
  • Brief Description: The ’356 patent describes a system for real-time communication among users of independent computers connected over a network. The system uses a central controller computer to manage user authentication via a database of "tokens," arbitrate connections, provide a messaging API, and facilitate the exchange of multimedia content.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 8, 9, 12, 14-16, 19-24, 27, 28, 31, 33-35, and 37 are obvious over Roseman, Rissanen, and Vetter.

  • Prior Art Relied Upon: Roseman (Patent 6,608,636), Rissanen (EP 0621532 A1), and Vetter (Videoconferencing on the Internet, IEEE Computer Society, Jan. 1995).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Roseman disclosed the core elements of the claimed invention, including a server-based virtual conferencing system with a "host computer" (the controller) and participant computers. Roseman's use of "keys" for access control was asserted to be analogous to the claimed "tokens," and its system for managing user interactions, private messages, and shared documents taught the claimed real-time communication and arbitration functions. To the extent Roseman did not explicitly teach a "database" for storing these keys, Petitioner asserted Rissanen taught the conventional practice of storing authentication credentials in a database. For claims requiring communication "via the Internet," Petitioner relied on Vetter, which taught using the Internet for the exact type of videoconferencing and collaboration described in Roseman.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Roseman's conferencing system with Rissanen's database storage as a predictable, well-known solution for managing authentication data. A POSITA would also find it obvious to implement Roseman's system over the Internet (per Vetter), as the Internet was a leading and logical choice for connecting remote computers for wide-area communication.
    • Expectation of Success: Combining these known elements for their established functions—a conferencing system, a database for authentication, and the Internet for networking—would have predictably resulted in the claimed system with no technical hurdles.

Ground 2: Claims 6, 7, 17, 26, and 36 are obvious over Roseman, Rissanen, and Vetter in further view of Pike.

  • Prior Art Relied Upon: Roseman (Patent 6,608,636), Rissanen (EP 0621532 A1), Vetter (Videoconferencing on the Internet, IEEE Computer Society, Jan. 1995), and Pike (Using Mosaic, 1994).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring a "pointer" or a "URL" for on-demand content access. Petitioner argued that while Roseman disclosed pointers (e.g., clickable icons for documents), Pike explicitly taught using Uniform Resource Locators (URLs) as a complete description for identifying and retrieving content over the Internet.
    • Motivation to Combine: A POSITA building an internet-based conferencing system (per Roseman and Vetter) would be motivated to incorporate URLs (per Pike) as the standard and preferred method for referencing shared resources. Using URLs would be particularly advantageous for managing network bandwidth, as content would only be transferred upon a user's explicit request by invoking the URL, rather than being pushed to all participants automatically.
    • Expectation of Success: Integrating URL functionality into an internet-based application was a common and well-understood practice at the time, with a high expectation of success.

Ground 3: Claims 18 and 25 are obvious over Roseman, Rissanen, and Vetter in further view of Gosling.

  • Prior Art Relied Upon: Roseman (Patent 6,608,636), Rissanen (EP 0621532 A1), Vetter (Videoconferencing on the Internet, IEEE Computer Society, Jan. 1995), and Gosling (Java Intermediate Bytecodes, Jan. 1995).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring the controller software to be a "JAVA™ application." Petitioner argued that Gosling described the Java programming language and its key features.
    • Motivation to Combine: A POSITA would be motivated to use Java to implement the controller software in Roseman's system due to Java's well-known platform independence and portability. This would allow the conferencing software to run on various hardware architectures without being rewritten, a significant and well-understood advantage for developers.
    • Expectation of Success: Choosing a known, suitable programming language like Java to create software was a conventional design choice with a high expectation of success.

4. Key Claim Construction Positions

  • "token": Petitioner argued this term should be construed as "a piece of information associated with user identity." This broad construction was based on the specification's description and was used to map Roseman's "keys" to the claim term.
  • "channel": Petitioner argued this term means "a group of users that can communicate with each other." This construction was based on the patent's equation of a "channel list" with a "group list" and its depiction of a channel as a "chat room."
  • "providing an API on the controller computer, the API multiplexing and demultiplexing API messages by type": Petitioner proposed this lengthy phrase be construed as "providing software functionality on the controller computer for sending and receiving messages of different types and communicating each message to software functionality based on the message type." Petitioner contended this construction was required by the patentee's own statements during prosecution, which disavowed the standard technical meaning of "API" (Application Programming Interface) and instead described it as a collection of message types routed based on type.
  • "pointer": Petitioner argued this term should be construed as "a piece of information that points to or references other information." This construction was based on the patent's explicit identification of a URL as an example of a pointer.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9, 12, 14-28, 31, 33-37 of the ’356 patent as unpatentable under 35 U.S.C. §103.