Wireless Ink Corp. v. Facebook, Inc.
787 F. Supp. 2d 298
S.D.N.Y.2011Background
- Wireless Ink accuses Facebook and Google of direct and indirect patent infringement of the '983 patent under 35 U.S.C. § 271, including the doctrine of equivalents.
- Defendants move for judgment on the pleadings; Wireless Ink cross-moves to maintain claims and to strike invalidity defenses.
- The '983 patent discloses a method for mobile content management and two integrated aspects: (i) managing content via a content management site with selectable mobile information channels, and (ii) integrating wireless functions with content on a mobile site.
- Claim 1 is the sole independent claim at issue and was construed at a Markman hearing to require a content management site that activates channels and a mobile site with corresponding activatable links.
- Facebook and Google allegedly generate mobile sites (e.g., m.facebook.com, touch.facebook.com, m.google.com) with links corresponding to activated channels; the pleadings describe user actions at the content management sites and subsequent mobile-site generation.
- The court addresses Rule 12(c) standards, pleading sufficiency, and the relationship between the content management site and the generated mobile site, ultimately denying most of the defendants’ motion while granting in part plaintiff’s motion to strike and dismissing invalidity counterclaims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether SAC pleads infringement of Claim 1. | Wireless Ink pleads activation of channels and mobile-site generation. | SAC lacks specific element-by-element mapping to Claim 1. | SAC states a plausible infringement claim. |
| Whether activatable links on mobile sites must match activated channels. | Links reflect channels turned on at the content management site. | Links must strictly correspond to activated channels per the court’s construction. | Court adopts construction; facts do not negate infringement at pleadings stage. |
| Whether invalidity counterclaims should be dismissed for failure to plead. | Invalidity counterclaims are conclusory and fail Rule 8. | Counterclaims properly plead patent invalidity. | Invalidity counterclaims dismissed. |
| Whether invalidity affirmative defense should be struck. | Invalidity defense is legally insufficient and improper. | Defense is a valid affirmative defense. | Invalidity affirmative defense denied strike; still included for completeness. |
| Whether the asserted claims require a causal link between content management actions and mobile-site generation. | Content management actions drive mobile-site activation and visibility. | Product architecture renders actions on CMS irrelevant to mobile-site generation. | Claim construction supports linkage; pleadings not fatal at this stage. |
Key Cases Cited
- Twombly v. Bell Atlantic Corp., 550 U.S. 544 (U.S. 2007) (plausibility standard for pleading claims)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (pleading must state plausible claims, not mere conclusions)
- McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir. 2007) (pleading patent infringement need not plead every claim element)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (claim construction is a question of law)
- Aspex Eyewear, Inc., 531 F. Supp. 2d 620 (S.D.N.Y. 2008) (motion to strike invalidity defenses and pleadings)
- Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364 (Fed. Cir. 2003) (‘comprising’ open-ended claim language)
- Genentech, Inc. v. Chiron Corp., 112 F.3d 495 (Fed. Cir. 1997) (‘comprising’ means listed elements are essential but others may be added)