Gabara v. Facebook, Inc.

Background

Thaddeus Gabara sued Facebook, Inc. for allegedly direct, induced, and contributory infringement of five United States patents: Nos. 8,930,131; 8,620,545; 8,836,698; 8,706,400; and 9,299,348. The alleged infringement involved Facebook 360, 3D Photos, and Workplace by Facebook. Gabara is listed as an inventor of each patent. The opinion states that he appeared without a lawyer, although he engaged an attorney for a limited time to help prepare his opposition to Facebook’s motion.

Four patents, called the Image Patents, concern using a portable device as a “sliding window” over a larger stationary image. Instead of scrolling the image on the device, a user moves the device to view different portions of the image. The patents refer to ordinary mobile-device components, including accelerometers, gyroscopes, and microprocessors. The fifth patent, the ’348 Patent, concerns an “intelligent conversation system” that separates a conversation into topics, sends search parameters to a search engine, stores the results, and uses a finite state machine to generate additional conversation topics.

Facebook moved to dismiss the Second Amended Complaint under 35 U.S.C. § 101, arguing that the patents claim patent-ineligible subject matter. Section 101 permits patents for new and useful processes, machines, manufactures, compositions of matter, and improvements, but excludes abstract ideas, laws of nature, and natural phenomena. The court applied the two-step framework from Alice Corp. v. CLS Bank International: first, determine whether the claims are directed to an abstract idea; second, if they are, determine whether the claims contain an “inventive concept,” meaning additional features that transform the abstract idea into a patent-eligible application.

The Image Patents

The court held that moving a portable device to change the user’s view of an image, rather than scrolling the image on the device, is an abstract idea. It compared the claimed activity to moving a sliding window, telescope, or magnifying glass across a stationary object. The court concluded that the claims did not describe a sufficiently specific technological method for achieving the claimed result.

The court treated Claim 1 of the ’400 Patent as representative of all claims in the Image Patents. That claim recites displaying an image, mapping a point on the display to a corresponding point in a stationary map, moving the portable device, identifying a new location, determining a vector, and moving the center of the screen to that location. The court found that these steps describe results rather than how to achieve them. The related descriptions of using an accelerometer, gyroscope, microprocessor, and vector calculations were also insufficiently specific because they used conventional components and processes in their ordinary manner.

At the second Alice step, the court found no inventive concept. The Image Patents used existing mobile-device hardware without specialized equipment and did not describe a novel or unconventional arrangement of components. The court therefore concluded that the Image Patents did not claim patent-eligible subject matter under § 101.

The ’348 Patent

The court held that the ’348 Patent’s core functions—identifying conversation topics, searching for information about them, storing search results, and generating additional topics—are abstract ideas involving the collection, analysis, storage, and retrieval of information. The court compared the process to a student taking notes during a lecture, researching topics from those notes, and using the research to form questions later.

The court found that the patent merely applied generic computer components, including memory, electronic circuits, a finite state machine, and a search engine, to that abstract process. The patent did not describe an improvement in computer technology, identify a deficiency in prior art, or explain a specific and unconventional way to arrange the listed components. The court also found no inventive concept at the second Alice step because the claimed computer components and internet searches were conventional.

Ruling

Judge Denise Cote granted Facebook’s March 6, 2020 motion to dismiss the Second Amended Complaint. The court directed the Clerk of Court to enter judgment for Facebook and close the case. The opinion does not state that the dismissal was with or without prejudice.

Classification note

Under the requested classification convention, this is a procedural order because it resolves a Rule 12 motion to dismiss, even though the court analyzed patent eligibility under § 101.