Facebook Inc. v. Windy City Innovations, LLC

1. Case Identification

• Patent #: 8,407,356
• Filed: January 7, 2017
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Windy City Innovations, LLC
• Challenged Claims: 1-9, 12, 14-28, 31, and 33-37

2. Patent Overview

• Title: Real Time Communications System
• Brief Description: The ’356 patent relates to a real-time communications system featuring a central controller computer that manages and arbitrates communications among multiple participant computers. The system utilizes a database of "tokens" containing user identity and permissions to control access to content and services based on predefined rules.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Major BBS (The Major BBS Version 6.2 System Operations Manual, 1994), Galacticomm ICO (a 1994 Boardwatch magazine article), and Worldgroup (a 1995 Boardwatch magazine article). These are collectively termed the "Galacticomm References."
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Galacticomm References, which describe a single commercial product line, collectively disclose all limitations of the challenged claims. Major BBS described a real-time bulletin board system (BBS) run on a controller computer (the "Sysop's" PC) that managed communications with up to 256 simultaneous users. It disclosed a User Account Database that served as a repository of tokens (storing user IDs, passwords, and access privileges) to authenticate users and control access to forums and files. Major BBS further taught an API of commands (e.g., WHISPER, CHANNEL) sent over a single connection, which constitutes multiplexing. Galacticomm ICO added Internet connectivity (telnet, FTP) to the Major BBS, and Worldgroup, its successor, added a graphical user interface and advanced multimedia capabilities (e.g., sound, video, shared drawing boards).
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would be motivated to combine these references because they all document the same evolving commercial product. Major BBS was the base system, Galacticomm ICO described an official internet add-on for it, and Worldgroup was its direct successor. The combination was not just obvious but had been implemented by Galacticomm itself.
  • Expectation of Success: A POSITA would have had a very high expectation of success, as the references demonstrate a successfully integrated and commercialized system.

Ground 2: Obviousness over Galacticomm References in view of Sociable Web - Claims 6, 7, 17, 26, and 36 are obvious.

• Prior Art Relied Upon: The Galacticomm References and Sociable Web (a 1994 paper by Judith Donath from the Second International WWW Conference).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed claims requiring content to be invoked via a "pointer" or "URL." While the Galacticomm References disclosed the core system, Petitioner asserted that Sociable Web explicitly taught the use of hyperlinks (as pointers/URLs) within a chat-like system. Sociable Web described integrating text, images, sounds, and clickable links to other web pages within a conversational flow, allowing a user to invoke content on demand.
  • Motivation to Combine: A POSITA would have been motivated to combine the features of Sociable Web with the Major BBS system for several reasons. There was a strong industry trend to merge WWW features with BBS systems. Enhancing the popular Major BBS chat system with hyperlink functionality would have been a natural and valuable improvement.
  • Expectation of Success: The combination was a straightforward integration of known web features into a known BBS platform, yielding predictable results.

Ground 3: Obviousness over Galacticomm References in view of Choquier - Claims 1-9, 12, 14-28, 31, and 33-37 are obvious.

• Prior Art Relied Upon: The Galacticomm References and Choquier (Patent 5,774,668).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative, arguing that if the Galacticomm References were found insufficient to teach the "multiplexing and demultiplexing API messages by type" limitation, Choquier explicitly disclosed it. Choquier described an architecture for a scalable on-line service network where message streams from different client applications (e.g., chat, mail) were multiplexed into a single data stream for transmission to a server, which then demultiplexed the data and routed it to the appropriate server applications.
  • Motivation to Combine: As BBS systems like Major BBS began incorporating internet connectivity, a POSITA would have looked to established network engineering principles, as taught by Choquier, to efficiently manage the transport of various message types over a single internet connection. This would be a predictable application of a known transport solution to improve the now-networked BBS.
  • Expectation of Success: Applying Choquier's established multiplexing techniques to the API messages of the Galacticomm system would have been a matter of ordinary skill and yielded the predictable result of more efficient network communication.
• Additional Grounds: Petitioner asserted a fourth ground that claims 6, 7, 17, 26, and 36 are obvious over the Galacticomm References in view of both Choquier and Sociable Web, combining the teachings of the prior grounds.

4. Key Claim Construction Positions

• "Providing an API on the controller computer, the API multiplexing and demultiplexing API messages by type": Petitioner proposed this term means "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 petition, as Petitioner argued the prior art before the Examiner during prosecution supposedly failed to teach this function, leading to allowance.
• "Token": Petitioner proposed this non-art term be construed as "a piece of information used to control access to content or one or more services." This construction maps directly to the user account information (e.g., user class, access rights) stored in the database of the prior art Major BBS system.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that statutory time-bar provisions under 35 U.S.C. §315(b) should not apply. The petition was filed concurrently with a Motion for Joinder with a previously instituted IPR proceeding (IPR2016-01067) involving the same patent. Petitioner cited 37 C.F.R. § 42.122(b), which states that the time period for filing shall not apply when the petition is accompanied by a request for joinder.

6. Relief Requested

• Petitioner requests 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 for obviousness under 35 U.S.C. §103.