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Cross Atlantic Capital v. Facebook

March 17, 2011

CROSS ATLANTIC CAPITAL
PARTNERS, INC.
v.
FACEBOOK, INC., AND
THE FACEBOOK, LLC



The opinion of the court was delivered by: Padova, J.

MEMORANDUM

I. INTRODUCTION

This patent infringement action brought by Plaintiff Cross Atlantic Capital Partners, Inc. ("XACP") concerns U.S. Patent No. 6,519,629 (the "'629 patent"), entitled "System for Creating a Community for Users with Common Interests to Interact In." The defendants are Facebook, Inc., and The Facebook, LLC (collectively "Facebook"). On February 29, 2008, we issued a Markman*fn1 opinion construing numerous terms contained in the '629 Patent. Cross Atlantic Capital Partners, Inc. v. Facebook Inc., Civ. A. No. 07-2768, 2008 WL 564956 (E.D. Pa. Feb. 29, 2008) ("Markman Opinion"). Thereafter, Facebook instituted an inter partes reexamination proceeding in the United States Patent and Trademark Office ("PTO").*fn2 The final decision of the Patent Examiner has led to XACP filing a motion seeking to amend our construction of the patent term "transmitting the created community" (the "transmitting phrase"). In its response to XACP's motion, Facebook asks that we amend our construction of three other terms. We held a supplemental Markman hearing on February 18, 2011.*fn3

II. HISTORY OF LITIGATING THE "TRANSMITTING PHRASE"

A. The First Markman Proceeding

XACP seeks to amend our construction of the phrase "transmitting the created community" contained in claim 1 of the '629 Patent*fn4 to reflect the supplemental intrinsic record created during the inter partes reexamination.*fn5 It asks that we change our construction to read "transmitting at least one application object*fn6 of the community. (Pl. Mot. to Amend the Court's Claim Construction ("Pl. Mot.") at 2.)*fn7 In the first Markman proceeding, we construed several terms contained in the transmitting phrase. We initially held that the term "transmitting" meant "electronically connecting, sending out and/or communicating by any wireless or wire mechanism." Markman Opinion, 2008 WL 564956, at *6-7. We later amended this construction to read electronically connecting and/or communicating by any wireless or wire mechanism.*fn8 Order, Apr. 3, 2008. In reaching this conclusion, we were focused upon whether the term "transmit" included "connecting" and "communicating," or just "sending," the primary difference between the parties' proffered constructions. Based exclusively on the intrinsic evidence of the Patent's specifications, rather than dictionary definitions, we concluded that the "transmitting" term requires a construction that includes the concept of "connecting" in its definition because the Patent requires two-way communication.*fn9

Markman Opinion, 2008 WL 564956, at *7.

We construed the term "community" to mean "information and at least one function, . . . and/or an expression of interest that may be accessed . . . through a communications network."*fn10

Markman Opinion, 2008 WL 564956, at *5. We held that a "created community" is "information and at least one function relating to a specific transaction, interaction, and/or expression of interest that may be accessed and/or interacted with by a plurality of users with common interests through a private or public communications network, such as web pages or an Internet site, that was caused to come into existence, brought into being, made or originated."*fn11 Id.

B. The Inter Partes Proceeding

The Examiner initially rejected Claims 1-32 of the '629 Patent as anticipated and/or made obvious by a prior art reference known as the "Tatham" patent.*fn12 (Ex. A to Decl. Of Elizabeth Stameshkin in Support of Defs.' Supplemental Claim Construction Br. ("Def. Ex. A") at 3, 5-6.) Tatham discloses a method whereby a user is invited to use a "private office suite" that "may be created on a server."*fn13 Later, the Examiner changed her decision and concluded that even though the '629 Patent and Tatham contain similar elements, the '629 Patent is distinguishable from Tatham:

Tatham does not disclose or suggest transmitting the created community to the at least [one] communication address in combination with the other features set forth in [claim 1 of the '629 Patent]. Tatham expressly discloses:

"The private office suite may be created on the server for a period of time desired by the primary user, after which time the private suite can be erased to free-up system resources. . . ." . . . . Accordingly, claims 1, 9, 17, and 25 are patentably distinguished from Tatham because the user of Tatham is invited to use the private office suite created on the server whereas the Harvey ['629] patent transmits the created community, i.e. the private office suite, to the user. As a result, the rejections of claims 1-32 as being anticipated and/or obvious over Tatham are withdrawn. (Ex. A to Pl. Mot. ("Pl. Ex. A") at 29 (emphasis in original).)*fn14 This change was not made in response to any argument presented by XACP. In fact, the Examiner rejected all of the arguments XACP presented to attempt to show that the patent in suit was not anticipated by Tatham,*fn15 concluding "[i]n summary, none of [XACP's] arguments . . . were persuasive. Accordingly, claims 1-32 remain rejected as being anticipated by Tatham."*fn16 (Pl. Ex. A at 9.) Even though she rejected each of XACP's arguments, she nonetheless altered her interpretation of the prior art reference sua sponte based upon her construction that, while the user of Tatham is invited to use the private office suite created on the server, the '629 patent transmits the created community, i.e., the private office suite, to the user.

III. CONSTRUCTION OF "COMMUNITY" AND THE "TRANSMITTING PHRASE"

A. "Community"

Preliminarily, Facebook contends that we cannot construe "transmitting the created community" without first reexamining the meaning of "community." (Def. Supp. Claims Construction Br. ("Def. Br.") at 5-6.) It asks that we change our prior construction, information and at least one function to now read information and the at least one application object that was selected by the user. It grounds its contention on the fact that during the inter partes proceeding, XACP modified claim 9 of the '629 Patent, replacing the phrase "community function" with "application object" to clarify that the community being created is based on "the at least one application object" selected by the registered user.*fn17 Because we originally construed "community" to mean "information and at least one function," and XACP has now expressed in its amendment to claim 9 that it meant the "at ...


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