Scott Daniels | January 14, 2013
On Friday the Patent Trial and Appeal Board dealt Facebook a double loss, by affirming the reexamination examiner’s decisions not to reject the claims of two real-time Internet communications patents owned by Pragmatus. An infringement action between Pragmatus and Facebook regarding the two patents in the Northern District of California has been stayed (5:11-cv-2168).
In the first reexamination (95/001,715), the Board affirmed the examiner’s decision not to reject the claims of Pragmatus’ U.S. Patent No. 7,421,470. The ‘470 patent claims a network method for real-time communication between multiple users. The ‘470 claims include the step of “maintaining a first association between a first user and corresponding addressing information of a first communication device used by the first user to log in.” The Board first construed the claim phrase “addressing information” in light of the specification to mean the “physical location of a communication device used by a prospective user to log in.” The Board then concluded that the prior art references relied upon by Facebook does not satisfy, either literally or inherently, the “maintaining” step limitation.
The second reexamination (95/001,716) involved U.S. Patent No. 7,433,921 that contains essentially the same claims as the ‘470 patent, except that they are written as system claims. The Board’s discussion of the ‘921 patent was nearly identical to that for the ‘470 patent, turning on the meaning of “addressing information” and ending with the conclusion that Facebook’s prior art fails to satisfy the “maintaining” step limitation.
Facebook and Pragmatus are now required to report this result in the reexamination proceedings to the trial judge who will then lift the stay and resume the stayed infringement action. All might not be lost for Facebook: its filings in the infringement action indicate that the claim construction arguments made by Pragmatus in the reexaminations might lead to a finding of non-infringement in the trial court.
The last chapter has not been written.