Case 4:16-cv-01730-YGR Document 144-1 Filed 01/25/19 Page 1 of 4
`Case 4:16-cv-01730-YGR Document 144-1 Filed 01/25/19 Page 1 of 4
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`EXHIBIT A
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`EXHIBIT A
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`Case 4:16-cv-01730-YGR Document 144-1 Filed 01/25/19 Page 2 of 4
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`Via ECF
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`Heidi L. Keefe
`+1 650 843 5001
`hkeefe@cooley.com
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`January 15, 2019
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`Hon. Yvonne Gonzalez-Rogers
`United States District Court
`1301 Clay Street
`Oakland, CA 94612
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`Re: Windy City Innovations, LLC. v. Facebook, Inc., Case No. 4:16-cv-01730-YGR
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`Dear Judge Gonzalez-Rogers:
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`Facebook respectfully submits this letter brief requesting a pre-filing conference on Friday, January
`25, 2019 at 2:00pm regarding Facebook’s proposed motion for summary judgment of invalidity and non-
`infringement. The grounds for Facebook’s motion are explained below.
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`Windy City filed this action as a four-patent case accusing various aspects of Facebook’s
`Messenger functionality. Fact discovery and IPRs have whittled Windy City’s infringement allegations down
`to only one patent, U.S. Patent No. 8,458,245,1 and only one independent claim and four dependent claims
`of that patent. The only remaining independent claim (claim 19) is directed to a system in which a first
`participator computer sends a “private message including a pointer pointing to a communication that
`includes pre-stored data” such as video, audio, graphic or multimedia, and the “communication [is] sent in
`real time.” A second participator computer receives the “private message” and “internally determines
`whether or not the second participator computer can present the [pre-stored] data,” and if not “obtain[s] an
`agent with an ability to present the pre-stored data.” For the reasons discussed below, Windy City’s
`remaining asserted claims of the ’245 patent are invalid under 35 U.S.C. § 101 and not infringed on several
`grounds.
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`The ’245 Patent is Invalid Under 35 U.S.C. § 101
`Facebook seeks leave to move for summary judgment that the asserted claims of the ’245 patent
`are invalid for failure to claim patent eligible subject matter under 35 U.S.C. § 101. An issue of law for the
`Court, a claim falls outside § 101 where, as here: (1) it is directed to an abstract idea, and (2) the claims
`lack an “inventive concept” sufficient to transform their abstract nature into a patent-eligible application.
`See, e.g., Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citing Alice
`Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)).
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`At their heart, the asserted claims of the ’245 patent are directed to the abstract idea of sending a
`message from one party to another party in which, if the recipient (second) person cannot present the
`message, she obtains something to view it. This abstract concept can be analogized to a first person
`mailing a video tape to a second person. If the second person has a video tape player, she plays the tape.
`But if the second person instead only has a DVD player, she obtains a tape player capable of playing the
`contents of the tape.
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`At best, the asserted claims describe a generic messaging system that recites the further feature
`of determining the receiving computer’s capabilities and obtaining software that would allow for certain
`content to be displayed. But the asserted claims describe this feature with an exceedingly high level of
`generality; it does not explain how the computer actually determines whether the content can be displayed,
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`1 Windy City is asserting claims 19, 22, 23, 24, and 25 of the ’245 patent.
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`Cooley LLP 3175 Hanover Street Palo Alto, CA 94304-1130
`t: (650) 843-5000 f: (650) 849-7400 cooley.com
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`Case 4:16-cv-01730-YGR Document 144-1 Filed 01/25/19 Page 3 of 4
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`Hon. Yvonne Gonzalez-Rogers
`January 15, 2019
`Page Two
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`or how the necessary display software is to be obtained. See Two-Way Media Ltd. v. Comcast Cable
`Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (finding claims directed to converting, routing,
`controlling, monitoring and accumulating records about streams of audio and video data invalid because
`they did “not sufficiently describe how to achieve these results in a non-abstract way”).
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`Regarding Step Two of Alice, the asserted claims do not contain any inventive concept that would
`transform the nature of the claim into a patent-eligible application of the abstract idea. The asserted claims
`recite generic computing components such as an “Internet network,” “participator computers,” a “computer
`system,” “pre-stored data,” and arranges those components in known, conventional ways. Electric Power
`Group, 830 F.3d at 1355. The claims merely use these generic components to claim a first person sending
`a message, a second person attempting to view that message, and if the second person cannot view the
`message, obtaining something (an “agent”) to view it. Epic IP LLC v. Backblaze, Inc., --- F.Supp.3d ----,
`Case No. 1-18-141-WCB, 2018 WL 6201582, at *11 (D. Del. Nov. 21, 2018) (Bryson, J., judge of the Federal
`Circuit, sitting by designation) (finding claims that “merely call for the initiation of a chat session that is
`separate from any previously established chat room, by use of a set of generic computer components and
`display devices” did not recite an inventive concept).
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`Facebook Messenger Does Not Infringe the ’245 Patent
`Facebook requests leave to move for summary judgment of non-infringement on the following
`grounds: (1) Facebook Messenger does not send communications in “real time”; (2) “the private message”
`sent by the first user of Facebook Messenger is not the same as the message received by the second user;
`(3) Facebook Messenger never “internally determines whether or not” the computer or mobile device can
`present pre-stored data; (4) Facebook does not provide the complete system required for direct
`infringement; and (5) Facebook does not indirectly infringe any asserted claim.
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`There is no dispute that Facebook does not infringe under its construction of “real time.” Claim 19,
`the sole asserted independent claim, requires the communication that includes the pre-stored data “being
`communicated in real time.” As explained in Facebook’s claim construction briefing, based on statements
`made by Windy City during prosecution, “real time” should be construed as “immediately, without being
`stored on a server.” (See, e.g., D.I. 108 at 6-7.) The Court has not yet issued a claim construction order,
`but if it adopts Facebook’s proposed construction, such a ruling would be dispositive of the entire case.
`Windy City’s expert has conceded that there would be no infringement of the ’245 patent if Facebook’s
`construction is adopted, because the alleged “communication” is stored on a Facebook server before
`delivery. (Jones Tr. at 24-25.) Summary judgment of non-infringement should be entered if the Court
`adopts Facebook’s proposed construction of “real time.”
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`“The Private Message” sent by the first user is not the same message received by the second user.
`Claim 19 requires (1) a “first of the plurality of participator computers” to communicate “a private message”
`to the computer system and (2) that “the computer systems communicates the private message” to a
`second participator computer, “the private message” referring back to the same message sent by the first
`participator computer recited earlier in the claim. See, e.g., Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512
`F.3d 1338, 1343 (Fed. Cir. 2008) (noting that claim terms reciting “the” or “said” are “anaphoric phrases,
`referring to the initial antecedent phrase.”). It is undisputed that the “private message” the first computer
`sends to Facebook’s servers is not the same “private message” that the second computer receives from
`the servers. (See Jones Tr. at 69:14-72:3.) Thus, summary judgment of non-infringement of all asserted
`claims is appropriate.
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`Facebook Messenger Never “Internally Determines” Whether the Second Participator Computer
`Can Present Pre-Stored Data. Claim 19 also includes the limitation “the second participator computer
`internally determines whether or not the second participator computer can present the pre-stored data, if it
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`Cooley LLP 3175 Hanover Street Palo Alto, CA 94304-1130
`t: (650) 843-5000 f: (650) 849-7400 cooley.com
`
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`Case 4:16-cv-01730-YGR Document 144-1 Filed 01/25/19 Page 4 of 4
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`Hon. Yvonne Gonzalez-Rogers
`January 15, 2019
`Page Three
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`is determined that the second participator computer can not present the pre-stored data then obtaining an
`agent with an ability to present the pre-stored data.” Windy City’s expert opined that “a participator computer
`is a computer or mobile device running Messenger client software.” (Jones Infr. Rpt., ¶ 317.) Thus, it is the
`receiving computer or mobile device that must “internally determine” whether or not it can present the
`accused types of pre-stored data. Windy City’s expert agrees that the accused Facebook Messenger
`application never determines whether the computer or mobile device itself is capable of presenting the
`accused types of pre-stored data. (Jones Tr. at 87:2-87:14, 101:10-18). Windy City’s expert admitted, in
`fact, that the receiving computer or mobile device already has the supposed agent used to communicate.
`Indeed, Windy City’s expert confirmed that he has no opinion that Facebook infringes if Facebook
`Messenger must check to see whether the actual computer or mobile device (with all of its software) can
`present the pre-stored data. (id. at 104:20-105:5). Accordingly, summary judgment of non-infringement of
`all asserted claims is appropriate.
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`No Direct Infringement by Facebook. The asserted claims are directed to a system which includes both
`a computer system and a plurality of participator computers, which are capable of sending and receiving
`messages. To be liable for direct infringement of a system claim, “a party must put the invention into service,
`i.e., control the system as a whole and obtain benefit from it.” Centillion Data Systems, LLC v. Qwest
`Comms. Int’l, Inc., 631 F.3d 1279, 1284 (Fed. Cir. 2011). Facebook does not provide the claimed system
`as a whole because Facebook does not provide the accused participator computers (i.e., Android or iOS
`devices, or computers running web browser software). Nor did Windy City put forth any evidence that
`Facebook directs its users to use the claimed system nor do Facebook’s users act as Facebook’s agents.
`Id. at 1287 (no liability for direct infringement of customers where the accused infringer “in no way directs
`its customers to perform nor do its customers act as its agents” and only “provides software and technical
`assistance.”) In fact, Facebook expressly states tells its users in its terms of service that it does “not control
`or direct” their actions.2 In sum, there is no evidence that Facebook has directly infringed any asserted
`claim and therefore summary judgment of non-infringement is appropriate.
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`No Indirect Infringement. Liability for indirect infringement requires knowledge of the patent and
`knowledge of the alleged infringement. Commil USA, LLC v. Cisco Systems, Inc., 135 S.Ct. 1920, 1926
`(2015) (“In contrast to direct infringement, liability for inducing infringement attaches only if the defendant
`knew of the patent and that ‘the induced acts constitute patent infringement.’”) (citing Global-Tech
`Appliances, Inc. v. SEB S.A, 131 S.Ct. 2060, 2068 (2011)); id. (“Like induced infringement, contributory
`infringement requires knowledge of the patent in suit and knowledge of patent infringement.”) (citing Aro
`Mfg. Co. v. Convertible Top Replacement Co., 377 U. S. 476, 488 (1964)). There is no allegation (let alone
`evidence) that Facebook had knowledge of the asserted ’245 patent prior to Windy City’s filing of the lawsuit
`on June 2, 2015. Similarly, with respect to post-filing activities, Facebook was not willfully blind to its alleged
`infringement, and Windy City has no evidence that Facebook believed that it infringed the ’245 patent and
`no evidence that Facebook took deliberate actions to avoid learning about any alleged infringement of the
`’245 patent. Indeed, Windy City’s expert admitted to the lack of any evidence thereof. Moreover, there can
`be no contributory infringement because Windy City’s expert agreed that Facebook Messenger has
`numerous non-infringing uses, including sending text messages, sending group messages with
`attachments, audio and video calls and payments.
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`Sincerely,
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`/s/ Heidi L. Keefe
`Heidi L. Keefe
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`2 http://www.facebook.com/terms.php
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`Cooley LLP 3175 Hanover Street Palo Alto, CA 94304-1130
`t: (650) 843-5000 f: (650) 849-7400 cooley.com
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