Windy City Innovations, LLC v. Facebook, Inc.

Background

Windy City brought a patent-infringement action against Facebook concerning U.S. Patent No. 8,458,245, titled “Real Time Communications System.” The opinion states that all other patent issues originally raised in the complaint had been resolved through the inter partes review process. The remaining asserted claims were Claim 19 and its dependent claims.

Facebook moved for summary judgment on three grounds: Windy City lacked standing because it did not own enforceable rights in the patent; Claim 19 and its dependent claims were invalid under 35 U.S.C. § 101; and Facebook did not directly or indirectly infringe the patent. Both parties also moved to strike or exclude opinions from opposing experts.

Standing

Facebook argued that the patent rights belonged to UtiliCorp under a Work for Hire Agreement between UtiliCorp and American Information Systems, Inc. The agreement stated that intellectual property developed by American Information Systems for the project would be UtiliCorp’s property and that American Information Systems assigned related intellectual-property rights pending a fair-market-value joint licensing agreement.

Windy City argued that this language created only a future promise to assign rights, conditioned on a later joint licensing agreement, and that no such agreement occurred. The court concluded that the record did not establish that a later agreement transferred the patent rights to UtiliCorp. It found that disputed material facts about ownership prevented summary judgment for lack of standing and denied Facebook’s motion on that ground. The court also stated that jurisdiction was established and proceeded to the patent-eligibility issue.

Patent Eligibility Under Section 101

The court applied the two-step framework from Alice Corp. v. CLS Bank International. First, it considered whether the claims were directed to an abstract idea. If so, it considered whether the claim elements, individually or in combination, added an inventive concept sufficient to make the claim patent-eligible.

Claim 19 describes an apparatus with a computer system, multiple participant computers, a database containing tokens, and private messages containing pointers to pre-stored video, graphic, sound, or multimedia data. The recipient computer determines whether it can present the data and, if necessary, obtains an agent able to present it.

At the first Alice step, the court held that Claim 19 was directed to the abstract idea of communicating a message from a sender to a recipient through a computer network and having the recipient obtain the means to display the message when necessary. The court rejected Windy City’s argument that the claim covered a specific improvement to Internet communications. It found that the claim did not explain a particular way to perform the claimed functions and that the specification could not supply technical details missing from the claim.

At the second Alice step, the court held that the claim did not contain an inventive concept. The claim used generic computers, networks, databases, authentication, messaging, and display functions in conventional ways. The court noted that Windy City offered attorney argument but no opposing evidence showing that the claimed combination was inventive or unconventional. The court also found that technical features described in the specification, such as “out-of-band” messages, a “virtual connection,” and multiplexing improvements, were not recited in Claim 19 and therefore could not create a factual dispute about the claims at issue.

Ruling and Disposition

Judge Yvonne Gonzalez Rogers granted Facebook’s motion for summary judgment on the ground that Claim 19 and its dependent claims were invalid under Section 101. The court ordered that judgment be entered for Facebook, Inc. against Windy City Innovations, LLC on the remaining claims in the patent. Because summary judgment resolved the case, the court did not reach Facebook’s remaining non-infringement arguments. The court denied as moot both parties’ motions to strike or exclude expert opinions and terminated Docket Nos. 153, 155, and 160.