Mirror Worlds Technologies, LLC v. Meta Platforms, Inc., Appeal Nos. 2022-1600, -1709 (Fed. Cir. Dec. 4, 2024)

In this appeal from the United States District Court for the Southern District of New York, the Federal Circuit affirmed the lower court’s finding of non-infringement as a matter of law relating to certain patents that describe and claim methods for storing, organizing, and presenting data in a chronological manner on a computer system.

Mirror Worlds Technologies, LLC (“Mirror Worlds”) owns U.S. Patent Nos. 6,006,227 (“ ’227 patent”); 7,865,538 (“ ’538 patent”); and 8,255,439 (“ ’439 patent”). The three patents disclose methods for operating a computer system in which automatic storage of documents is organized by chronology—specifically, time stamps associated with the documents. According to Mirror Worlds, such a system avoids disadvantages of conventional systems, which require users to give a file name to a document, manually choose where to store it, and remember both the file name and location. The ’227 patent calls for storage of documents in a chronologically ordered “stream.” A “stream” is a time-ordered sequence of documents that functions as a diary of a person’s or entity’s electronic life. The ’227 patent states that “[e]very document created and every document sen[t] to a person or entity is stored in a main stream.” The ’227 patent also describes “substream[s],” which are a subset of the main stream document collection, created by filtering based on user-generated search criteria. The ’538 and ’439 patents similarly describe a “system [that] is stream-based in that it creates time-ordered streams of information items or assets, beginning with the oldest and continuing through current and on to future items.” Claim 1 of the ’538 patent and claim 1 of the ’439 patent—the claims at issue—both contain a requirement for the display of a “glance view,” which is described as a “pop-up window” that contains document-specific information such as the document’s title, application type and owner, and “rich multimedia cues,” displayed when the user passes a cursor over the document.

In 2017, Mirror Worlds brought the current action in district court against Meta Platforms, Inc. (“Meta”). Mirror Worlds alleged the following three features of Meta’s social-networking service infringed the ’227, ’538, and ’439 patents: (1) the “News Feed” feature, which provides “a scrolling display (or ‘feed’) that provides stories that might be of interest to a viewing user”; (2) the “Timeline” feature, which “allows a user to share information such as text, images, photos, videos, and other types of data, with other users on Facebook”; and (3) the “Activity Log” feature, which lists actions taken by a specific user. Mirror Worlds alleged that Meta had infringed the patents based on two of its “backend” computer systems (which are distinguished from the unaccused “frontend” systems that present material to users) related to the three just-noted features. One of the backend systems at issue is “the Multifeed system, which serves Facebook’s News Feed feature.” The second backend system at issue is “the Timeline backend system, which serves Facebook’s Timeline and Activity Log features.”

Meta moved for summary judgment of non-infringement. For all three patents, Meta argued the record did not permit a reasonable finding that the accused systems met the “main stream” or “main collection” limitations. For the asserted claims of the ’538 and ’439 patents, Meta presented an additional ground of non-infringement: that Mirror Worlds could not show the accused system satisfied the “glance view” limitation of those claims. The district court granted summary judgment. Although the court rejected Meta’s defense of invalidity of the asserted claims for ineligibility under 35 U.S.C. § 101, it concluded that there was no infringement as a matter of law because, on several grounds, the evidence would not allow a reasonable finding that all claim limitations were satisfied by the accused features of Meta’s service. Mirror Worlds appealed the grant of summary judgment of non-infringement, while Meta cross-appealed the rejection of the invalidity defense.

The Federal Circuit first addressed and rejected Mirror Worlds’ challenge to the summary-judgment determination that the evidence would not allow a reasonable finding that the accused features met the “glance view” limitations of the ’538 and ’439 patents. Mirror Worlds’ argument focused on allegedly “overlooked” evidence, particularly testimony from its expert related to unauthenticated screenshots from third-party websites. The Federal Circuit found it was not an abuse of discretion for the district court to exclude the screenshots and related testimony. The Federal Circuit’s conclusion on that matter foreclosed infringement regarding those two patents, so it did not address the “main collection” limitation, which appears only in the ’439 patent.

Second, the Federal Circuit addressed the ’227 patent. For that patent, the court addressed and rejected Mirror Worlds’ challenge to the “data unit” claim construction (a ruling that settled non-infringement regarding the News Feed feature) and its challenge to application of that construction to the evidence regarding the Timeline and Activity Log features. Regarding the claim construction, the Federal Circuit rejected Mirror Worlds’ argument that the district court’s construction of the phrase “data unit” was overly broad and inconsistent with the scope of the term in light of the intrinsic record. Regarding the application of the claim construction, the Federal Circuit rejected Mirror Worlds’ argument that the district court had erred in concluding that Meta presented unequivocal evidence that the Timeline backend system receives data units that are not stored in the “TimelineDB” (a database that stores information about actions taken by Meta users). According to the court, it was sufficient to focus on the coefficient score as a data unit received by the specified computer system but not included in the specified main stream.

The Federal Court found those two conclusions were sufficient to support the district court’s grant of summary judgment of non-infringement. Because the Federal Circuit uphold the non-infringement determination of the district court, there was no further dispute between the parties over the patents (which expired by the end of April 2018), so the court did not address the ineligibility issue raised by Meta on cross-appeal.

The full opinion can be found here.

By Mario E. Delegato

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Galderma Laboratories, L.P. v. Lupin Inc., Appeal No. 2024-1664 (Fed. Cir. Dec. 6, 2024)

In this case, the Federal Circuit affirmed the district court’s holding that Lupin’s generic drug would not infringe patents covering Galderma’s Oracea^® drug. When Lupin filed an ANDA for a generic version of the drug, Galderma sued for infringement. Galderma’s patents protect a drug with 30 mg immediate-release doxycycline and 10 mg delayed-release doxycycline. In contrast, Lupin’s proposed drug contains 22 mg immediate-release doxycycline and 18 mg delayed-release doxycycline.

In district court, Galderma argued that 8 mg of the delayed-release portion of Lupin’s drug actually released immediately, and therefore Lupin’s drug would infringe under the doctrine of equivalents. To support this argument, Galderma submitted a two-stage in vitro test which showed the release of Lupin’s drug at pH 1.1 and pH 4.5. Galderma’s expert witness testified that the experiment supported its contention that the 8 mg delayed-release portion of Lupin’s drug actually released immediately. Lupin argued this in vitro test was not sufficiently demonstrative of the actual physiological conditions of the human digestive tract in vivo, and therefore, it did not prove that 8 mg of their delayed-release drug was actually released immediately. The district court agreed with Lupin and found that Lupin’s drug would not infringe Galderma’s patents.

The Federal Circuit agreed with and affirmed the district court. Specifically, the Federal Circuit agreed Galderma’s in vitro test was not sufficiently representative of in vivo physiological conditions and Galderma had not provided sufficient evidence to support a finding of infringement under a doctrine of equivalents theory.

The full opinion can be found here.

By Ann Bernert

PS Products Inc. v. Panther Trading Co. Inc., Appeal No. 2023-1665 (Fed. Cir. Dec. 6, 2024)

In this case, the Federal Circuit affirmed the district court’s award of $25,000 in deterrence sanctions under its inherent authority for plaintiff/appellant PS Products’ frivolous lawsuit, in addition to an award of attorneys’ fees pursuant to 35 U.S.C. § 285. PS Products had filed a complaint for design patent infringement that was meritless on its face, in view of the clear dissimilarity between the claimed and accused designs, and had done so in the Eastern District of Arkansas notwithstanding that venue was plainly improper there. Concluding this was the latest in a string of frivolous lawsuits PS Products had filed in E.D. Ark. on the same patent, the district court ruled that PS Products’ bad faith warranted additional sanctions to deter future misconduct.

The Federal Circuit affirmed. Relying on precedent concerning Rule 11 sanctions and the imposition of expert witness fees, the Court stated “[i]t is well-settled that § 285 does not preclude a district court from separately imposing sanctions or fees under another authority,” and specifically held this includes sanctions pursuant to a district court’s inherent authority. The Federal Circuit also found the district court had not abused its discretion in imposing sanctions under the regional circuit law. However, the Court declined to shift attorneys’ fees for the appeal itself, noting that “[w]hile this appeal, and the arguments made herein, are entirely without merit, they are not quite frivolous.” The Court particularly noted the fact that it had not previously decided the specific question of whether deterrence sanctions may be awarded in addition to attorneys’ fees under § 285, and found that other considerations raised by the appellee did not quite bring the appeal over the threshold that would warrant the imposition of further sanctions.

The full opinion can be found here.

By Jason A. Wrubleski

EcoFactor, Inc. v. Google LLC, Appeal No. 2023-1101 (Fed. Cir. Dec. 4, 2024)

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The full opinion can be found here.

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In an appeal from the Board’s decision in six inter partes reviews (“IPRs”), that the petitioner had failed to present evidence to support a lead-compound analysis for purposes of establishing obviousness of the composition claims of the patents, the Court reviewed whether the Board had erred by failing to conduct the lead-compound analysis. The Court clarified that the obviousness inquiry is a flexible one, and the lead-compound analysis was not required where the prior-art references expressly suggested the proposed modification.

Having affirmed the Board’s conclusion of obviousness of the composition claims of the patents, the Court turned to the opposite conclusion with respect to the process claims of the patents. The Court explained the process claims and the composition claims contained only immaterial differences, and as such, it concluded the Board had erred in its determination that the process claims were not unpatentable under the obviousness inquiry.

The full opinion can be found here.

By Michael A. Cofield