PTAB

IPR2017-00624

Facebook Inc v. Windy City Innovations LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Real Time Communications System
  • Brief Description: The ’356 patent is directed to a real-time communications system involving a plurality of computers linked by a network to a controller computer. The controller computer arbitrates communication between users based on predefined rules and permissions associated with each user's identity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Galacticomm References - Claims 1-9, 12, 14-28, 31, and 33-37 are obvious over Major BBS in view of Galacticomm ICO and Worldgroup.

  • Prior Art Relied Upon: Major BBS (The Major BBS Version 6.2 System Operations Manual, 1994), Galacticomm ICO (a 1994 Boardwatch article), and Worldgroup (a 1995 Boardwatch article). These are collectively referred to as the “Galacticomm References.”
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Galacticomm References, which describe different aspects of the same commercial Bulletin Board System (BBS) product, disclose all limitations of the challenged claims. Major BBS taught the core system, including a controller computer running software that managed communications for up to 256 simultaneous users. It disclosed a User Account Database that served as a repository of "tokens" (user data, permissions, access levels) used to authenticate users and apply predefined rules ("locks and keys") for access to forums and files. Major BBS also disclosed an API with various command messages (e.g., WHISPER for private messages, CHANNEL to switch channels) transmitted over a single connection. Galacticomm ICO added Internet connectivity (telnet, FTP) to the Major BBS system. Worldgroup, the successor to Major BBS, disclosed a graphical user interface and the exchange of various multimedia content types, including images, video, and sound files.
    • Motivation to Combine: A POSITA would combine these references because they all describe the same commercial product line from Galacticomm. Major BBS is the base system, Galacticomm ICO is an official Internet add-on for it, and Worldgroup is its direct commercial successor. Combining their features represented a natural and predictable product evolution.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination merely involved integrating documented features for a single, existing software platform.

Ground 2: Obviousness over Galacticomm References in view of Choquier - Claims 1-9, 12, 14-28, 31, and 33-37 are obvious over the Galacticomm References in view of Choquier.

  • Prior Art Relied Upon: The Galacticomm References (Major BBS, Galacticomm ICO, Worldgroup) and Choquier (Patent 5,774,668).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground asserted that even if the Galacticomm References were considered not to teach the "multiplexing and demultiplexing API messages by type" limitation, Choquier explicitly supplied it. Choquier described an architecture for scalable online services that expressly taught multiplexing message streams from different client applications (e.g., chat, mail) into a single data stream for transmission over a network to a gateway, which then demultiplexed the data and routed messages to appropriate servers. This provided a more detailed disclosure of the multiplexing function that was a key reason for the patent's allowance during original prosecution.
    • Motivation to Combine: A POSITA would combine Choquier's efficient network transport teachings with the Galacticomm BBS system to improve performance and functionality. As BBS systems like Major BBS were being adapted for Internet use (as shown by Galacticomm ICO), incorporating established multiplexing techniques like those in Choquier would be a straightforward way to manage network traffic effectively.
    • Expectation of Success: The combination involved applying a known networking technique (multiplexing from Choquier) to a known application type (a BBS from Galacticomm), which would be a predictable and successful endeavor for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combining the Galacticomm References with Sociable Web (a 1994 conference paper) to explicitly teach the use of hyperlinks and URLs as "pointers" for sharing content in a chat environment (Grounds 2 and 4).

4. Key Claim Construction Positions

  • “Providing an API on the controller computer, the API multiplexing and demultiplexing API messages by type”: Petitioner argued this phrase should be construed as “providing a set of software modules that allow the controller computer to receive and send multiple types of messages over a single connection and to route each message type to the appropriate logic for execution.” This construction was central to the argument, as Petitioner contended that the basic function of handling different command types (e.g., private vs. channel messages) over a single user connection, as taught by Major BBS, met the limitation.
  • “Token”: Petitioner proposed that a "token" is “a piece of information used to control access to content or one or more services.” This construction allowed Petitioner to map the limitation to the user data stored in the User Account Database of the Major BBS prior art, which included user identity, class, and access privileges (locks and keys) that controlled access to system features.
  • “Virtual connection”: Petitioner defined this term as a “single connection simulating multiple distinct connections.” This was based on the patent’s own description that multiplexing via an API provides the virtual connection, and it mapped directly to the single telnet connection in the prior art used to transmit various types of commands and data.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-9, 12, 14-28, 31, and 33-37 of Patent 8,407,356 as unpatentable.