Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF NORTH CAROLINA
`ASHEVILLE DIVISION
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`
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`WINDY CITY INNOVATIONS, LLC,
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`Plaintiff,
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`v.
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`Civil Action No. 15-cv-102
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`JURY TRIAL DEMANDED
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`FACEBOOK, INC.,
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`
`
`Defendant.
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`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Windy City Innovations, LLC (“Windy City”) files this Original Complaint
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`against Defendant Facebook, Inc. (“Facebook”) for patent infringement under
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`35 U.S.C. § 271 and alleges, based on its own personal knowledge with respect to its own
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`actions and based upon information and belief with respect to all others’ actions, as follows:
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`THE PARTIES
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`1.
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`Plaintiff Windy City is a limited liability company organized and existing
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`under the laws of the State of Delaware, and maintains its principal place of business at 195
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`North Harbor Drive, Suite 5403, Chicago, Illinois 60601.
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`2.
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`Defendant Facebook, Inc. is a Delaware corporation with its headquarters at
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`1601 Willow Road, Menlo Park, California 94025. Facebook is registered to conduct
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`business in the State of North Carolina. Facebook has designated Corporation Service
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`Company, 327 Hillsborough St., Raleigh, North Carolina 27603 as its agent for service of
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`process.
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`1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF NORTH CAROLINA
`ASHEVILLE DIVISION
`
`
`
`WINDY CITY INNOVATIONS, LLC,
`
`
`
`
`Plaintiff,
`
`v.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
`
`
`
`
`
`
`Civil Action No. 15-cv-102
`
`JURY TRIAL DEMANDED
`
`
`FACEBOOK, INC.,
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Windy City Innovations, LLC (“Windy City”) files this Original Complaint
`
`against Defendant Facebook, Inc. (“Facebook”) for patent infringement under
`
`35 U.S.C. § 271 and alleges, based on its own personal knowledge with respect to its own
`
`actions and based upon information and belief with respect to all others’ actions, as follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff Windy City is a limited liability company organized and existing
`
`under the laws of the State of Delaware, and maintains its principal place of business at 195
`
`North Harbor Drive, Suite 5403, Chicago, Illinois 60601.
`
`2.
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`Defendant Facebook, Inc. is a Delaware corporation with its headquarters at
`
`1601 Willow Road, Menlo Park, California 94025. Facebook is registered to conduct
`
`business in the State of North Carolina. Facebook has designated Corporation Service
`
`Company, 327 Hillsborough St., Raleigh, North Carolina 27603 as its agent for service of
`
`process.
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`1
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 2 of 11
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`JURISDICTION AND VENUE
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`3.
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`This is an action for patent infringement arising under the patent laws of the
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`United States, 35 U.S.C. §§ 1 et seq. This Court has jurisdiction over this action pursuant to
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`28 U.S.C. §§ 1331 and 1338(a).
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`4.
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`This Court has personal jurisdiction over Facebook because, among other
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`things, Facebook has committed acts of patent infringement and/or has induced and
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`contributed to acts of patent infringement by others in North Carolina, including in this
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`district, and has engaged in continuous and systematic activities in North Carolina, including
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`the operation of its 160-acre data center in Rutherford County located at 284 Social Circle,
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`Forest City, North Carolina 28043.
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`5.
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`Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b), 1391(c) and
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`1400(b) because, among other things, Facebook is subject to personal jurisdiction in this
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`district, Facebook has regularly conducted business in this judicial district, Facebook has a
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`regularly established place of business in this judicial district in Rutherford County at 284
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`Social Circle, Forest City, North Carolina 28043, and certain of the acts complained of herein
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`occurred in this judicial district.
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`PATENTS-IN-SUIT
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`6.
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`On March 26, 2013, the United States Patent and Trademark Office duly and
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`legally issued U.S. Patent No. 8,407,356 (the “’356 patent”) entitled “Real Time
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`Communications System.” A true and correct copy of the ’356 patent is attached hereto as
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`Exhibit A.
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`7.
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`On June 4, 2013, the United States Patent and Trademark Office duly and
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`legally issued U.S. Patent No. 8,458,245 (the “’245 patent”) entitled “Real Time
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`2
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 3 of 11
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`Communications System.” A true and correct copy of the ’245 patent is attached hereto as
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`Exhibit B.
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`8.
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`On June 25, 2013, the United States Patent and Trademark Office duly and
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`legally issued U.S. Patent No. 8,473,552 (the “’552 patent”) entitled “Communications
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`System.” A true and correct copy of the ’552 patent is attached hereto as Exhibit C.
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`9.
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`On April 8, 2014, the United States Patent and Trademark Office duly and
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`legally issued U.S. Patent No. 8,694,657 (the “’657 patent”) entitled “Real Time
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`Communications System.” A true and correct copy of the ’657 patent is attached hereto as
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`Exhibit D.
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`10.
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`By assignment, Windy City owns all rights, title, and interest in the ’356, ’245,
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`’552, and ’657 patents (the “patents-in-suit”) and possesses all rights of recovery.
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`FACTUAL ALLEGATIONS
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`11.
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`The patents-in-suit generally cover a real time communications system for
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`managing and facilitating communication of digital data, including different media types
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`across networks. The patents-in-suit also generally cover a computer network (i.e., a server
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`network) that arbitrates permissions and distribution of multimedia information messages
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`utilizing, for example, an application program interface (“API”).
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`12.
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`In or around the year 1996, Daniel Marks, the inventor of the patents-in-suit,
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`was hired by executives at American Information Systems and asked to develop a
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`communications system for employees at American Information Systems to more easily
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`communicate and share various types of information over the Internet.
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`13.
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`Daniel Marks thereafter designed and developed a computerized
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`communications system with software that, inter alia, creates a virtual connection among
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`3
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 4 of 11
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`individual computers via the Internet, permits access to the connection in accordance with
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`predefined rules (e.g., user identity), arbitrates communications in accordance with predefined
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`rules, and provides an application programming interface multiplexing and demultiplexing
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`communications by message type.
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`14.
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`Daniel Marks is the named inventor on six issued patents claiming various
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`aspects of his inventions. For example, some embodiments feature a controller computer that
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`arbitrates communications between participator computers, using predefined rules and
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`parameter, such as user identities and censorship settings. As another example, some
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`embodiments feature a controller computer with an application programming interface that
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`multiplexes and demultiplexes messages and creates a virtual connection between, for
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`example, channels, private messages, and multimedia objects between the controller computer
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`and participator computers. As yet another example, some embodiments feature a controller
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`computer that facilitates communication of digital data between participator computers by
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`using, for example, authenticated user identities and pointer-triggered messages to fetch
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`digital communication data.
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`15.
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`In addition to his involvement with Windy City, Daniel Marks currently serves
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`as an Associate Research Professor in the Department of Electrical Engineering and
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`Computer Engineering at Duke University in Durham, North Carolina.
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`16.
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`Facebook owns and operates the widely used website located on the World
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`Wide Web at http://www.facebook.com (“Facebook.com”). Facebook.com offers
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`functionality that enables Facebook users to create and virtually connect to a network of
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`contacts, share multimedia files with all or some of those contacts, establish private groups,
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`customize privacy settings, and communicate in real time via Facebook’s chat and messages
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`4
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 5 of 11
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`functionalities. Facebook.com’s private group, chat, and messages features are real time
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`communications systems for communicating different media types over the Internet, and also
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`arbitrate permissions and distribution of multimedia information messages utilizing, for
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`example, an application program interface (e.g., Facebook’s internal APIs, Facebook’s APIs
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`for developers). “Facebook.com” refers to the Facebook.com website, client software
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`(including, e.g., plug-ins, third-party applications, or helper applications), Facebook’s internal
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`and developer APIs, servers and computers that are used to support the described
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`functionalities, including facilitating communications and virtual connections between users
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`of Facebook.com, and includes any improvements, modifications, enhancements, fixes,
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`updates, upgrades and future versions through trial.
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`17.
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`Facebook uses its website to obtain advertising revenue by placing
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`advertisements on its web pages.
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`18.
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`Facebook offers mobile apps, including the Facebook app and the Facebook
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`Messenger app (“Facebook apps”). Facebook apps offer functionality that enables Facebook
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`users to create and virtually connect to a network of contacts, share multimedia files with all
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`or some of those contacts, establish private chats, customize privacy settings, and
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`communicate in real time. The Facebook apps offer the functionality to communicate
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`different media types over the Internet, and also arbitrate permissions and distribution of
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`multimedia information messages utilizing, for example, an application program interface
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`(e.g., Facebook’s internal APIs, Facebook’s APIs for developers). “Facebook apps” refers to
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`the Facebook app, the Facebook Messenger app, client software (including, e.g., plug-ins,
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`third-party applications, or helper applications), Facebook’s internal and developer APIs,
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`servers and computers that are used to support the described functionalities, including
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`5
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 6 of 11
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`facilitating communications and virtual connections between users of the Facebook apps, and
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`includes any improvements, modifications, enhancements, fixes, updates, upgrades and future
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`versions through trial.
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`19.
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`Facebook offers these apps for download on mobile devices, including for
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`example, iOS devices through Apple’s App Store, Windows Phones and Microsoft Surface
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`tablets through the Windows Store, Android devices through Google’s Play Store, and
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`Amazon devices through Amazon’s Appstore.
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`20.
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`Facebook.com and the Facebook apps are collectively referred to as
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`“Facebook’s Accused Instrumentalities.”
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`COUNT ONE: PATENT INFRINGEMENT BY FACEBOOK
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`21.
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`Plaintiff incorporates by reference the preceding paragraphs as if fully set forth
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`herein.
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`22.
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`As described below, Facebook has infringed and continues to infringe the
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`patents-in-suit.
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`23.
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`Facebook’s Accused Instrumentalities meet claims of the patents-in-suit. For
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`example, Facebook includes or operates a controller computer that arbitrates communications
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`between participator computers of end users, using predefined rules and parameters, such as
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`user identities (e.g., Facebook accounts or account identifiers, etc.) and censorship settings
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`(e.g., blocked users, private chat settings, private groups, privacy settings, muted
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`conversations, device capability restrictions, etc.). As another example, Facebook includes or
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`operates a controller computer with an application programming interface (e.g., Facebook’s
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`internal APIs, Facebook’s APIs for developers, etc.) that multiplexes and demultiplexes
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`messages and creates a virtual connection between, for example, channels, private messages,
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`6
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 7 of 11
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`and multimedia objects (e.g., private groups, private chats, group chats, video chats, messages
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`with text, hyperlinks, video, audio, or graphics, etc.) between the controller computer and
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`participator computers of end users. As yet another example, Facebook includes or operates a
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`controller computer that facilitates communication of digital data (e.g., text, hyperlinks, video,
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`audio, or graphics, etc.) between participator computers of end users by using, for example,
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`authenticated user identities (e.g., Facebook accounts or identifiers, etc.) and pointer-triggered
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`messages (e.g., messages, including notifications, with URLs, IP addresses, or other
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`location/address identifiers, etc.) to fetch digital communication data.
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`24.
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`Facebook makes, uses, provides, sells and/or imports Facebook’s Accused
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`Instrumentalities within the United States or into the United States without authority from
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`Windy City.
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`25.
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`Facebook therefore infringes the patents-in-suit under 35 U.S.C. § 271(a) with
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`Facebook’s Accused Instrumentalities.
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`26.
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`Facebook has actual knowledge of all patents-in-suit at least as of the filing of
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`this Complaint for Patent Infringement.
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`27.
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`Facebook indirectly infringes the patents-in-suit by inducing infringement by
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`others, such as end-users and application developers, because Facebook, for example,
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`instructs and/or requires these third parties to make, use, sell, offer to sell or import
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`Facebook’s Accused Instrumentalities in or into the United States. Facebook additionally
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`indirectly infringes the patents-in-suit by encouraging, facilitating and instructing its users to
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`use the inventions while they use Facebook’s Accused Instrumentalities. Facebook does this
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`by, without limitation, modifying, in response to user actions, the configuration of user
`
`computers and devices and by encouraging users to use their computers and devices, so
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`
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`7
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 8 of 11
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`modified, to interact with Facebook’s Accused Instrumentalities, thereby inducing use of the
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`claimed inventions. Facebook also provides APIs for use by application developers.
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`28.
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`29.
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`Facebook takes the above actions intending to cause infringing acts by others.
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`Facebook is aware of the patents-in-suit and knows that others’ actions, if
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`taken, would constitute infringement of those patents. Alternatively, Facebook believes there
`
`is a high probability that others would infringe the patents-in-suit but remains willfully blind
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`to the infringing nature of others’ actions. Facebook therefore infringes the patents-in-suit
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`under 35 U.S.C. § 271(b).
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`30.
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`Facebook indirectly infringes the patents-in-suit by contributing to
`
`infringement by others, such as end-users and application developers, by providing within the
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`United States software components for operating Facebook’s Accused Instrumentalities and
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`interacting with end user client software and platforms. These software components are
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`known by Facebook to be especially made or adapted for use in Facebook’s Accused
`
`Instrumentalities. These software components constitute a material part of the inventions
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`claimed in the patents-in-suit, and are used to practice one or more processes/methods
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`covered by the claims of the patents-in-suit. Such Facebook-related components are, for
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`example, the software components that perform the authentication functionality claimed in the
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`patents-in-suit, the software components that query Facebook servers to perform arbitration of
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`computer connections, the software components comprising Facebook’s internal APIs and
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`APIs for application developers, the software components that perform the multiplexing and
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`demultiplexing of messages, and the software components that install Facebook’s Accused
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`Instrumentalities on a computer or server.
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`31.
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`Facebook knows these Facebook-related components to be especially made or
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`8
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 9 of 11
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`especially adapted for use in an infringement of the patents-in-suit and are not a staple article
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`or commodity of commerce suitable for substantial non-infringing use. Alternatively,
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`Facebook believes there is a high probability that others would infringe the patents-in-suit but
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`remains willfully blind to the infringing nature of others’ actions. Facebook therefore
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`infringes the patents-in-suit under 35 U.S.C. § 271(c).
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`32.
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`Facebook’s acts of infringement have caused damage to Windy City. Windy
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`City is entitled to recover from Facebook the damages sustained by Windy City as a result of
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`Facebook’s wrongful acts in an amount subject to proof at trial. In addition, the infringing acts
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`and practices of Facebook have caused, are causing, and, unless such acts and practices are
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`enjoined by the Court, will continue to cause immediate and irreparable harm to Windy City
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`for which there is no adequate remedy at law, and for which Windy City is entitled to
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`injunctive relief under 35 U.S.C. § 283.
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`33.
`
`To the extent that Facebook releases any new version of Facebook’s Accused
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`Instrumentalities, such instrumentalities meet the claims of the patents-in-suit and infringe 35
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`U.S.C. § 271(a)-(c) in ways analogous to Facebook’s current infringement described above.
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`DEMAND FOR JURY TRIAL
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`Plaintiff hereby demands a jury for all issues so triable.
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`PRAYER FOR RELIEF
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`1.
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`A judgment that Facebook has directly infringed the patents-in-suit, contributorily
`
`infringed the patents-in-suit, and/or induced the infringement of the patents-in-suit;
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`2.
`
`A preliminary and permanent injunction preventing Facebook and its officers,
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`directors, agents, servants, employees, attorneys, licensees, successors, and assigns, and those in
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`9
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 10 of 11
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`active concert or participation with it, from directly infringing, contributorily infringing, and/or
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`inducing the infringement of the patents-in-suit;
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`3.
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`A ruling that this case be found to be exceptional under 35 U.S.C. § 285, and a
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`judgment awarding to Plaintiff its attorneys’ fees incurred in prosecuting this action;
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`4.
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`A judgment and order requiring Facebook to pay Plaintiff damages under 35
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`U.S.C. § 284, including supplemental damages for any continuing post-verdict infringement up
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`until entry of final judgment, with an accounting, as needed;
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`5.
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`A judgment and order requiring Facebook to pay Plaintiff the costs of this action
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`(including all disbursements);
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`6.
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`A judgment and order requiring Facebook to pay Plaintiff pre-judgment and post-
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`judgment interest on the damages awarded;
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`7.
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`A judgment and order requiring that in the event a permanent injunction
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`preventing future acts of infringement is not granted, that Plaintiff be awarded a compulsory
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`ongoing licensing fee; and
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`8.
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`Such other and further relief as the Court may deem just and proper.
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`10
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`Case 4:16-cv-01730-YGR Document 1 Filed 06/02/15 Page 11 of 11
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`Dated: June 2, 2015
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`Respectfully submitted,
`
`s/Philip S. Anderson
`N.C. Bar Nº 21323
`s/Robert B. Long, Jr.
`N.C. Bar Nº 2787
`Long, Parker, Warren, Anderson &
`Payne, P.A.
`14 South Pack Square, Suite 600
`Asheville, North Carolina 28801
`Telephone: 828/258-2296
`Fax: 828/253-1073
`email: philip@longparker.com
`email: fran@longparker.com
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`CALDWELL CASSADY & CURRY
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`
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`
`
`/s/ Bradley W. Caldwell
`Bradley W. Caldwell
`Texas State Bar No. 24040630
`(Pro Hac Vice Motion to be filed)
`Email: bcaldwell@caldwellcc.com
`Jason D. Cassady
`Texas State Bar No. 24045625
`(Pro Hac Vice Motion to be filed)
`Email: jcassady@caldwellcc.com
`John Austin Curry
`Texas State Bar No. 24059636
`(Pro Hac Vice Motion to be filed)
`Email: acurry@caldwellcc.com
`Warren J. McCarty
`Illinois State Bar No. 6313452
`Email: wmccarty@caldwellcc.com
`(Pro Hac Vice Motion to be filed)
`CALDWELL CASSADY & CURRY
`2101 Cedar Springs Road, Suite 1000
`Dallas, Texas 75201
`Telephone: (214) 888-4848
`Facsimile: (214) 888-4849
`
`ATTORNEYS FOR PLAINTIFF
`WINDY CITY INNOVATIONS, LLC
`
`
`
`
`
`11
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