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Yahoo reply to Facebook counterclaims

Yahoo reply to Facebook counterclaims

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Charles K. Verhoeven (Bar No. 170151) charlesverhoeven@quinnemanuel.com Jennifer A. Kash (Bar No. 203679) j enniferkash@quinnemanuel.com Kevin A. Smith (Bar No. 250814) kevinsmith@quinnemanuel.com QUINN EMANUEL URQUJIART & SULLIVAN, LLP 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: (415) 875-6600 Facsimile: (415) 875-6700 for Plaintiff Yahoo! Inc. NORTHERN

8 Attorneys 9 10
11

E-filing
COURT DISTRICT OF CALIFORNIA SAN JOSE DIVISION

UNITED STATES DISTRICT

12 YAHOO! INC., a Delaware corporation, 13 14 vs. Plaintiff,

\cYs~6!-- V 1 2 12
COMPLAINT FOR PATENT INFRINGEMENT JURY TRIAL DEMANDED

15 FACEBOOK, INC, a Delaware corporation, 16 17 18 19 20 21 22 23 24 25 26 27
1.

NC

Defendant.

Plaintiff Yahoo! Inc. ("Yahoo!") complains and alleges as follows against Facebook, Inc. ("Facebook"): THE PARTIES Plaintiff Yahoo! is a corporation organized under the laws of Delaware, with its

principal place of business at 701 1st Avenue, Sunnyvale, CA 94089.

2.

Upon information and belief, Facebook is a corporation organized under the laws

of Delaware and has its principal place of business at 1601 Willow Road, Menlo Park, CA 94025. Upon information and belief, Facebook operates online networking services through its web portal FACEBOOK.COM, mobile applications, social pIugins, and other tools in the United States. NATURE OF THE ACTION 3. This is an action for patent infringement.

28

COlv11)LAINT FOR PATENT INFRINGEMENT

4. 2 J 4 5
6

Facebook has infringed and continues to infringe, contribute to the infringement

of, andlor actively induce others to infringe Yahool's U.S. Patent No. 6,907,566 ('''566 patent"), U.S. Patent No. 7,100,11 J ('''111 patent"), U.S. Patent No. 7,373,599 ('''599 patent"), U.S. Patent No. 7,668,861 ('''861 patent"), U.S. Patent No. 7,269,590 ('''590 patent"), U.S. Patent ND. 7,599,935 ('''935 patent"), U.S. Patent No. 7,454,509 ("'509 patent"), U.S. Patent No. 5,983,227 ("'227 patent"), U.S. Patent No. 7,747,648 (,"648 patent"), and U.S. Patent No. 7,406,501 (,"501 patent") (collectively "the patents-in-suit"). JUR1SD1CTION AN)) VENUE 5. This lawsuit is an action for patent infringement arising under the patent laws of

7 8 9 10 11 12 13

the United States, 35 U.S.C. §§ 1 ei seq. This Court has jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338. 6. This Court has personal jurisdiction over Facebook for at least the following

reasons: (i) Facebook maintains its principal place of business in this District; (ii) Facebook has

14 designated an agent for service of process in the State of California; (iii) Faccbook has committed 15 16 17 18 19 20 21 22 23 24 25 26 27 28 .._~ ,_ __ ._ ..... ~. ~_' "__ ... __ ~~ -2~__ ._. ~__ .__ . _ 8. acts of patent infringement and/or contributed to or induced acts of patent infringement by others in this District and elsewhere in California and the United States; (iv) Faccbook regularly docs business, solicits business, engages in other persistent courses

or conduct,

and/or derives

substantial revenue from products andlor services provided to individuals in this District and in this State; and (v) Faccbook has initiated litigation in this judicial District.
7.

Venue is proper in this judicial district pursuant to 28 U.S.c. §§ 1391(b) and (c)

and 1400(b) because Facebook does business in the State of California, has committed acts of infringement in this State and in this District, has a regular and established place of business in this District, and is subject to personal jurisdiction in this District. lNTRADISTRICT ASSIGNMENT

Pursuant to Civil L.R. 3-2(c), this case is appropriate for assignment on a district-

wide basis because this is an Intellectual Property Action.

COMPLAINT

fOR PATENT INFRINGEMENT

1
2 3 4 5 6 7 8 Yahoo!'s History 9.

FACTUAL BACKGROUND

Since its founding in 1994 by two Stanford University electrical engineering

graduate students, Jerry Yang and David Filo, Yahoo! has grown to become a premiere digital media and communications company. Yahoo! began as a directory of Internet wcbsitcs. Before

long, thousands of people were accessing the directory to identify useful wcbsites, Yahoo! celebrated its first "million-hit day" in the fall of 1994, translating to almost 100 thousand unique visitors. Yahoo! registered the domain ..www.yahoo.com •.on January 18, 1995. 10. As it grew, Yahoo! diversified its product offerings beyond its original directory

9
10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

or websites. for examp le, Yahoo! pioneered the field of providi ng customized web pages when it launched My Yahoo! in 1996. My Yahoo! allows users to combine their favorite Yahoo! content feeds into a single page. Yahoo! continued its investment in My Yahocl, launching an upgraded version in 2007. Further, in the late I 990:; and early 2000s, Yahou r began webhosting through

Yahoo! GeoCities, online gaming through Yahoo! Games, and discussion boards known as Yahoo! Groups. 11. Yahoo! has also made significant advances and investments in the field of On March 29,2005, Yahoo! made available its bJogging and social

Internet social networks.

networking service, Yahoo! 360°. On March 20,2005, Yahoo! acquired the photo sharing and social networking website, Flickr. In September 2007, Yahoo! launched the social network

service Yahoo! Mash, and later introduced the social networking service Yahoo! Pulse and Yahoo! Profiles. 12. Yahoo! has, in addition, been a leading innovator in electronic messaging.

Yahoo! inaugurated its web-mail service, Yahoo! Mail in 1997, which quickly grew to be one of the largest web-based email services In the world. Yahoo! has launched enhanced versions of Yahoo! Mail in 2007 and 2011. In 1998, Yahoo! released Yahoo! Messenger, its internet messaging client, under the name "Yahoo! Pager." When Yahoo! and Microsoft made their instant messaging clients interoperable in 2006, it created the world's second largest real-time

-3-

COMPLAINT

FOR J' ATENT INFR INGEMENT

·.~

communication 2 3 4 5 6 7 8

service.

Yahoo! Integrated

Yahoo! Messenger

and Yahoo! Mail in 2009, allowing

users to transform 13. commerce, worldwide, including shopping-to communicate

emails into instant messages. As a result, Yahoo! is today a leading global Internet communications,

and media company

that offers a comprehensive network

branded

network of services

to users

Yahoo! offers a comprehensive in news, finance, social networking,

of online products, often free of ehargesports, and

search, e-mail, instant messaging,

a com munity of millions of daily users.

Yahoo! has changed the way people and make purchases.

with each other, lind and access information,

9
10

Yahoo!ls Innovations
14. Yahoo! developed its first application Yahoo! has a long history of innovation. valuable new technologies From the earliest days of its history, usc today. Yahoo! filed

11
12 I3

that are still in widespread That application,

for a patent on June 12, 1997. customized

based on its MyYahoo!

service, claimed a method for providing

web pages using a user's preferences. has only grown since its inception. computing of millions products. of dollars in From 2008 Since

14
15 16 17 18

15.

Yahoo l's research and development of applications

1997, Yahoo! has filed thousands technologies research that it has developed.

for patents on innovative

Every year, Yahoo! spends hundreds

and development

so that it can offer its users the most innovative

through 2010 alone, Yahoo! in vested more than $3.3 bi Ilion in research and dcve lopment.

19
20 21 22 23 24 25 26 27 28 become

16.
spearheads responsible iunovarions. engineers

Yahoo ls research and development key initiatives for research Although with professors

arm is Yahoo! Labs. leading universities.

Yahoo! Labs Yahoo! Labs is

at the world's

into the science of the Internet and for creating next generation Yahoo! Labs is headquartered in locations worldwide. successes have propelled in Sunnyvale, California,

J nternet

it employs

and scientists

17.

Yahoo l's research and development most popular

Yahoo.eom

to

one of the world's

internet portals.

Over 180 million unique users access

Yahoo! 's websites

every month.

----

.•.---.~--

...---,~,.--~-----

-4---'----------

COMP/.AINT

:::c'---.----------.--.-"--~-.-

FOR PATENT INFRINGEMENT

1 2 3 4 5 6 7 8 9 10 11 12 13
14

Yahoo! (s Patents-in-Suit 18. achievements. The Patents-in-Suit arc a reflection of Yahoo's research and development To build a successful website, users need to have easy access to many functions

and tasks such as messaging and privacy options. The website owner needs revenue through functions such as advertising. All of these functions involve Yahoo!'s innovations. Without

Yahoo!'s achievements, websites such as Faccbook would not enjoy repeat visitors or substantial advertising revenue. 19. Yahoo! recognized that website users are attracted to free services. But website

operators need a way to generate revenue even when offering services lor free. Yahools Advertising Patents claim effective methods of advertising, of generating advertisements that relate to users individually and increase revenue for website operators, and monitoring advertising clicks for potentia! click fraud. Representative Yahoo! patents include the '566; '] 11; '599; and '861, patents (collectively, "Yahocls 20. Advertising Patents"). Users want to interact with websites,

k

!

Privacy is important to users ofwebsites.

15 16 17 18 19 20 21 22 23 24 25

but at the same time, ensure that sensitive information is only shared with those the users choose. Indeed, without an assurance of pri vacy, many users would avoid eertai n wcbsitcs, Yahoo!

recognized the importance of privacy on the World Wide Web, and developed technology that allows users to customize how information is shared. Representative Yahoo! patents include the '590 and '935 patents (collectively, "Yahoo!'s Privacy Patents").
21.

Website users also want to be able to customize their experience according to

their needs and interests. For example, a user who is not interested in sports may not want to sec sports information highlighted on a website. On the other hand, a user interested in sports may wish that information to be the first information they encounter. Yahoo! engineer.'> recognized the importance of customizing the user's experience. Representative Yahoo! patents include the '509,
.i!

\

and '227 patents (collectively, "Yahoo! 's Customization Patents"). 22. The heart of many websites today is social networking. The World Wide Web

26
27 28

allows users to reunite and stay connected in ways that they never could before. Yahoo! recognized the importance of social interaction on the Internet and developed technology that ______________________ :5~._ _._. ... .. .-.-_. ~ _

COMPLAINT

fOR PATENT INFRINGEMENT

allows users to customize 2 3 4 5 6 7 8 9 interests as themselves,

information

about themselves, information. Patent").

join groups of others with the same A representative Yahoo! patent is the

and share interesting

'648 patent ("Yahoo! 's Social Networking 23. communicate. important

As users connect with and meet new people online, they want to be able to Instant messaging, e-mail, and other messaging communication are vitally with others who may the need for users ofa

to any social networking

website, as is the ability to communicate Yahoo!'s innovators recognized

not be communicating website to communicate Yahoo! patent includes

in the same forum.

with others through different the 'SOl patent ("Yahoo!'s

forms of messaging. Patent"),

A representative

Messaging

10 11
12 13 14 15 1(i 17 18 19 20 21 22 23 24

Facebook's History
24. Facebook Paccbook was not launched until 2004, ten years after Yahoo! was founded. sites on the Internet, That

has since grown into one of the most widely trafficked has been based in large part on Facebook's Facebook's

growth, however,

me of Yahoo!'s

patented technology. is

Mr. Mark Zuckerberg,

founder and CEO, has conceded

that the design of Faccbook

not novel and is based on the ideas of others. surprising about thc evolution of'Facebook

He has stated, "The thing that's been really

is+ l think then and 1 think now-v-thar if we didn't do view, "Getting there first is not what

this someone it's all abo ut."

else would have done

it." In Mr. Zuckerberg's

25.
and was therefore Yahool's

For much of the technology

upon which Facebook

is based, Yahoo! got there first

granted patents by the United Stale Patent Office to protect those innovations. in online products, including in messaging,

patents relate to cutting edge innovations social commenting, dramatically

news feed generation, controls.

advertising improve

display, preventing

click ij'aud, and privacy and security and

These innovations

user experience,

privacy,

enhance the ability of advertisers

to connect

with users, model, which allows users to create profiles for is based on Yahoo!',"; patented social networking technology

25
26 27 28

26.

Facebook's

entire social network

and connect with, among other things, persons and businesses, social networking technology. Prior to adopting

Yahoo l's patented

-6-

COMPLAINT

fOR PATENT INFRINGEMENT

1

in 2008, Facebook

was considered

one of the worst performing Internet sites for advertising."

2 3 4 5 6 7 8

Facebook's use ofthat social networking model has reportedly dramatically driven up Facebook's advertising click through rates.2 27. One of Facebook's most popular features is tbe News feed, launched in 200o,
011

which is a dynamically created, customized web page based preferences.

the user's and his friends'

The News Feed has been credited as the most popular feature on Faccbook ' and

described as resulting in "skyrocketing" page vievvs.4 The NeV'iSFeed's popularity, however, is directly linked 10 Facebook's infringement of Yahoo!'s Customization Patents. Similarly,

9 Facebook's privacy controls, which are essential to its entire business model, practice Yahool's
10

Privacy Patents. Mr. Zuekerberg has described addressing privacy issues as "the biggest problem Facebook addresses the privacy problem by using Yahool's Privacy

11 in social networking.":

12 Patents. Faeebook therefore owes much of its popularity with Internet users to its unauthorized 13 14 15 infringement of Yahoo!'s patents. 28. The methods that Facebook uses to profit from the web traffic that Yahoo!'s

technology facilitates also infringe Yahoo i's Advertising Patents. Faccbook generates nearly all of

16 its revenue by selling advertisements on its webpage. The format of many of these 17 18 19 20 21 Nick Denton, Faccbook "Consistently the Worsl Performing Site," Gawker (March 7, 2007), availablc at http://gawker.com/242234/ advertisin g/face book -COIl sistentl y-the-worst23 perform ing- site 2 Kevin Kelleher, How Facebook Fixed the Social Advertising Problem (Nov. 22,20 10), 24 available at httpz//tech.fortune.cnn.com/Zf) 1011 1122/how-facebook- fixcd-the-social-adverti singprobleml 25 3 Andrew Lipsrnan et al., The Power of Like 8-9, ComSeore (2011). 4 Faeebook News Feed, Crunchliase, available at 26 http.z/www, crunch base. com! prod uct/faccboo k-news- feed. S Farham Manjoo, Didn't Mean for You to See That, Grandma, Slate (Oct. 7, 2010), available 27 at http://www.s1ate.comlidJ2270323/. 28 22
1

advertisements, such as Facebook's Premium Video Comment Ads, was invented and patented by Yahoo! Further, many advertisements on Facebook are paid for
011

a "pay-per-click" basis - i.to., Faeebook chooses

advertisers pay Facebook each time that a user clicks on all advertisement,

which ads to display to a user based in part upon how much the advertiser is willing to pay-per-

---------~-----,-,--

-7COMPLAfNT FOR PATENT INFRINGEMENT

1 2 3 4 5

click.

Facebook

then organizes Facebook's

the selected methods

advertisements

on the page in order to maximize advertisements, however,

advertising infringe

revenue.

for displaying

and arranging

Yahoo!'s

Advertising

Patents.

Those patented

methods have been shown to at least and therefore dramatically increase the

double the click-through profitability 29.

rate for online advertisements advertising. usc of a pay-per-click

of click-through Facebook's

6
7 8 9 10 11 12 13 14

advertising

model depends upon its ability to In a pay-per-click advertising

combat "click fraud" by distinguishing model, competitors

valid from invalid clicks.

can drive up each others' costs by clicking on onc another's The potential for "click fraud diminishes the reliability
t1

advertisements discourages model, and

with no actual intent to conduct business. businesses from advertising on Faccbook, advertisers.

therefore

of its advertising

results in lawsuits by aggrieved statistical methods

To combat click fraud, Faccbook clicks. Those methods

uses a variety of are, however, of its revenue is

to analyze the validity of advertising pay-per-click

patented by Yahoo], Facebook's therefore dependent on technology

advertising

model and the majority

owned by Yahoo!. patented technologies use of'Yahools in a way

15
16 17 18 19

30.

Yahoo! is harmed by Facebook 's usc ofYahoo!'s for by payment ofa royalty alone.

that cannot be compensated patented technologies

Facebook's

has increased

Facebook 's revenue and market share because in the development of the technology.

it does not
Yahoo], in turn,

have to recover the costs or time involved must hear the costs of the development 31. Even if Faccbook

of the technology. pay past due royalties, it would still enjoy property.

20
21 22 23 24

were to subsequently

a market share it has developed

during its period of "free riding" on Yahoo! 's intellectual

Yahoo! would likewise lose its portion of the market share for this period. predicting compensated whether, if at all, such market share can bc recovered, of past due royalties alone. Yahoo!'s

Due to the difficulty in harm cannot be

by payment

25 26
27 28 32. advertisements maximize

FACEBOOK INFRINGES YAlIOO!'S ADVERTISING
Yahool's Advertising Patents claim methods and systems

PATENTS
for advertising, placing bid to

on a web page in a manner according and for identifying

to click through and preventing

rate and advertiser

the revenue generated,

click fraud in such a pay-per-

___

,.~,~

"~,_ .. ",

..,,

,,__--,,-8-_ _
COMPLAINT
FOR PATENT INFRINGEMENT

1 2

click system.

Faeebook

has infringed platform,

and continues Faeebook

to infringe Ads. OF THE by reference

Yahocls

Advertising

Patents

through at least its advertising COIJNT 33. of this Complaint 34,

3
4 5

I: INFRINGEMENT and incorporates

'566 PATENT the allegations ofParagraphs 1-32

Yahoo! realleges

as though fully set forth herein. Yahoo! is the owner of all rights, title, and interest in the '566 patent, entitled Placement of Advertisements on aWe bpage, Office ("USPTO")
I'

7 8 9 10 11 12 13 14 15

"Method and System for Optimum

which was duly on June 14,

and properly issued by the United States Patent and Trademark 2005. A copy of the '566 patent is attached 35. Upon information as Exhibit

1.
01'35 U.S.C.

and belief, in violation

§ 271, Facebook is and

has been directly infringing United States, or importing inventions claimed

the' 566 patent by making, using, selling, and/or offering to sell in the into the United States, products without or processes that practice the Ads. Facebook has

in the '566 patent, including

limitation,

Faeebook

had knowledge Facebook 36,

of the '566 patent from at least February and its infringement unlawful

27, 2012, when Yahoo! notified

of its infringement,

since at least that date has been willful. infringement of the '566 patent, Yahoo! has the

16
17 18 19 20 21 22 23 24 25

As a result of Faeebook's to suffer damage.

suffered and will continue damages suffered 37,

Yahoo! is entitled to recover from Facebook acts. intends to continue its unlawful

by Yahoo! as a result of its unlawful On information and belief, Facebook

infringing

activity, and Yahoo! continues no adequate Facebook remedy

to and will continue to suffer irreparable infringing activities

harm - for which there is

at law - from such unlawful activities. INFRINGEMENT and incorporates

unless this Court enjoins

from further infringing COUNT II:

O_F THE by reference

'111 PATENT the allegations of Paragraphs 1-32

38. of this Complaint 39,

Yahoo! reallcges

as though fully set forth herein. Yahoo! is the owner of all rights, title, and interest in the '111 patent, entitled Placement of Advertisements on a Wcbpage," which was duly

26
27

"Method and System for Optimum

28 _____________ -(.:...9-_" ,,
COMPLAINT

,_,

_

FOR PATENT INFRlNGEMENT

and properly 2 Exhibit 2. 40.

issued by the USPTO on August 29,2006.

A copy ofthe

'111 patent is attached as

3
4 5

Upon information the 'Ill

and beliel, in violation

of35

U.S.C. § 271, Facebook

is and

has been directly infringing United States, or importing inventions claimed

patent by making, using, selling, and/or offering to sell in the or processes that practice the Ads. Faeebook has

into the United States, products

6
7

in the '111 patent, including

without limitation, 27,2012,

Faecbook

had knowledge

of the '111 patent from at least February and its infringement

when Yahoo! notified

8 9
10 11 !2 13 !4 15 16 17 18 19 20 21 22 23 24 25

Facebook of its infringement,
41.

since at least that date has been willful, infringement of the' III patent, Yahoo! has the

As a result of Face book's unlawful to suffer damage.

suffered and will continue damages suffered 42. activity,

Yahoo! is entitled to recover from Faeebook acts. intends to continue its unlawful

by Yahoo! as a result or its unlawful On information and belief, Facebook to and will continue

infringing

and Yahoo! continues

to suffer irreparable activities

harm ~- for which there is

no adequate Facebook

remedy at law _. from such unlawful activities.

infringing

unless this Court enjoins

from further infringing

COUNT III: INFRINGEM.ENT
43. of this Complaint 44. "Method Yahoo! rcallcges and incorporates

OF THE '599 PATENT
by reference the allegations of Paragraphs! -32

as though fully set forth herein. Yahoo! is the owner of all rights, title, and interest in the '599 patent, entitled Placement or Advertisements on a Wcbpagc," which was duly

and System for Optimum issued by the USPTO

and properly Exhibit 3. 45.

on May 13,2008.

A copy ofthc

'599 patent is attached as

Upon information and jointly

and belief,

ill violation of 35 U.S.C. § 271, Facebook is and
infringement by its users ofthe into

has been directly

infringing

with its users and inducing

'599 patent by making,

using, selling, and/or offering to sell in the United States, or importing or processes Faeebook that practice the inventions Ads. Faccbook claimed in the '599 patent,

26
27 28

the United States, products including without limitation,

has had knowledge

of the '599 patent from

~--.-.----.-~-

... -----"'-=---------

-10COMPLAINT FOR PATENT INFRlNGEMENT

1 at least February 27, 2012, when Yahoo! notified Faccbook ofits infringement, and its 2
3

infringement since at least that dale has been willful. 46. As a result ofFacebook's unlawful infringement of the '599 patent, Yahoo! has

4 5

suffered and will continue to suffer damage. Yahoo! is entitled to recover from Facebook the damages suffered by Yahoo! as a result of its unlawful acts. 47. On information and belief: Facebook intends to continue its unlawful infringing

6
7 8 9 10 11 12 13 14 15

activity, and Yahoo! continues to and will continue to suffer irreparable harm - for which there is no adequate remedy at law - from such unlawful infringing activities unless this Court enjoins Facebook from further infringing activities. COUNT IV: INFRINGKMENT 48. OF THE '861 PATENT

Yahoo! rcalleges and incorporates by reference thc allegations of Paragraphs 1-32

of this Complaint as though fully set forth herein. 49. Yahoo! is thc owner of all rights, title, and interest in the '861 patent, entitled
011

"System and Method To Determine the Validity of an Interaction and properly issued by the USPTO on February 23,2010.

a Network," which was duly

A copy of the '861 patent is attached as

16 Exhibit 4. 17 18 19 20 21 22 23 24 25 50. Upon information and belief, in violation 01'35 U.S.c. § 271, Faccbook is and

has been directly infringing the '861 patent by making, using, selling, and/or offering to sell in the United States, or importing into the United States, products or processes that practice the inventions claimed in the '861 patent, including without limitation, Faccbook Ads. Faccbook has bad knowledge of the '861 patent from at Ieast February 27, 2012, when Yahoo! notified Faccbook of its infringement, and its infringement since at least that date has been willful. 51. As a result of Facebook's unlawful infringemen t of the '861 patent, Yahoo! has

suffered and will continue to suffer damage. Yahoo! is entitled to recover from Facebook the damages suffered by Yahoo! as a result of its unlawful acts. 52. On information and belief, Facebook intends to continue its unlawful infringing

26
27

activity, and Yahoo! continues to and wi 11continue to suffer irreparable harm ~ for which there is

28
-1 1COMPLAINT FOR PArENT INFRINGEMENT

no adequate 2 3 4 5 6 53. Facebook

remedy at law - from such unlawful activities.

infringing

activities

unless this Court enjoins

from further infringing

FACEBOOKINFRINGES

YAHOO!'S PRIVACY PATENTS
and systems for managing personal privacy. the display of has

Yahoo l's Privacy Patents claim methods so that users can preserve

social network user information infringed and continues

Faccbook

to infringe Yahoo ls Privacy

Patents through

at least its privacy controls.

7 8
9

COUNT V: INFRINGEMENT

OF THE '590 PATENT
by reference the allegations of Paragraphs 1-31

54.

Yahoo! reallegcs

and incorporates

& 53 ofthis Complaint
55. Yahoo!

as though fully set forth herein. is the owner of all rights, title, and interest in the '590 patent, entitled Views of Information issued by the USPTO Associated on September with a Socia! Network 11, 2007. A copy of the

10
11 12 13 14 15 16 17 18 19

"Method and System for Customizing User," which was duly and properly '590 patent is attached as Exhibit 5.

56.

Upon information

and belief, in violation

of35 U.S.C. § 271, Facebook

is and

has been directly infringing United States, or importing inventions Facebook

the '590 patent by making,

using, selling, and/or offering to sell in the or processes that practice the privacy controls.

into the United States, products without

claimed in the '590 patent, including has had knowledge

limitation,

Faccbook's

of the' 590 patent from at least february and its infringement unlawful

27, 2012, when Y MOO!
.,j

notified Faccbook

of its infringement,

since at least that date has been willful, of the '590 patent, Yahoo! has to recover from Faccbook the

j

20
21 22 23 24 25 26 27

57.

As a result of Facebook's

infringement

I

j

suffered and will continue damages

to suffer damage.

Yahoo! is entitled acts.

suffered by Yahoo! as a result of its unlawful

58.

On information

and belief, Facebook to and will continue

intends to continue

its unlawful

infringing

activity, and Yahoo! continues no adequate Faccbook

to suffer irreparable activities

harm - for which there is

remedy at law - from such unlawful from further infringing activities.

infringing

unless this Court enjoins

28
-12COMPLAINT FOR PATENT INFRINGEMENT

,'1 I

I,
COUNT VI: INFRINGEMENT

i

I

OF THE '935 PA'fENT
the allegations of Paragraphs 1-31

2
3 4

59.

Yahoo! reallcgcs

and incorporates

by reference

& 53 of this Complaint

as though fully set forth herein.

60.
"Control

Yahoo! is the owner of all rights, title, and interest in the '935 patent, entitled a User To Preview Display of Selected Content Based on Another User's 6, 2009. A

5
6 7 8 9 10 11 12 13

for Enabling

Authorization

Level," which was duly and properly 6.

issued by the USPTO on October

copy of the '935 patent is attached as Exhibit

61.
has been directly

Upon information infringing

and belief, in violation

of 35 U.S.C. § 271, Faeebook

is and

the '935 patent by making,

using, selling, and/or offering or processes

to sell in the

United States, or importing inventions Facebook notified

into the United States, products without

that practice the privacy controls. when Yahoo!

claimed in the '935 patent, including has had knowledge

limitation,

Facebook's

of the '935 patent from at least February 27,2012, and its infringement unlawful

Faccbook

of its infringement,

since at least that date has been willful. of the '935 patent, Yahoo! has the

14
15 16

62.

As a result of Facebook's to suffer damage.

infringement

suffered and will continue damages

Yahoo! is entitled to recover from Facebook acts. intends to continue its unlawful

suffered by Yahoo! as a result of its unlawful

17
18 activity,

63.

On information

and belief, Faccbook to and will continue

infringing

and Yahoo! continues

to suffer irreparable

harm - for which there is

19 no adequate remedy at law - from such unlawful
20 21 Faeebook from further infringing activities.

infringing

activities unless this Court enjoins

.FACEHOOK INFRiNGES YAHOO!'S CUSTOMIZAflON
64. Yahool's Customization

PATENTS

22
23 24 25

Patents claim methods and systems for creating custom and user preferences. Patents through Facebook has

data streams and web pages lor users based on community infringed and continues to infringe Yahoo!'s Wall. Customization

at least the Facebook

News Feed and the faeebook

26
27 28 65.

COUNT VII: INFRINGEMENT
Yahoo! rcallcgcs and incorporates

OF THE '509 PATENT
the allegations of Paragraphs 1-3]

by reference

& 64 of this Complaint

as though fully set forth herein.

-13-

____

~w

•• "'·.··.·"_.

_

COMPLAINT

FOR PATENT INFRjN(H~:MENT

1

66.

Yahoo! is the owner of all rights, title, and interest in the '509 patent, entitled

2

"Online Playback System with Community Bias," which was duly and properly issued by the
A copy of the '509 patent is attached as Exhibit 7.

3 OSPTO on November 18,2008.
4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 70. 67.

Upon information and belief: in violation of35 U.S.c. § 271, Faccbook is and

has been directly infringing the '509 patent by making, using, selling, and/or offering to sell in the United States, or importing into the United States, products or processes that practice the inventions claimed in the '509 patent, including without limitation, Facebook News Feed. Facebook has had knowledge of the '509 patent from at least February 27,2012, when Yahoo! notified Pacebook of its infringement, and its infringement since at least that date has been willful. 68. As a result of Faccbook's unlawful infringement of the '509 patent, Yahoo! has

suffered and will continue to sutler damage. Yahoo! is entitled to recover from Facebook the damages suffered by Yahoo! as a result of its unlawful acts. 69. On information and belief, Facebook intends to continue its unlawful infringing

activity, and Yahoo! continues to and will continue to suffer j rreparable harm - for which there is no adequate remedy at law - from such unlawful infringing activities unless this Court enjoins Facebook from further infringing activities. COUNT VIII INFRINGEMENT OF THE '227 PATENT

Yahoo! realleges and incorporates by reference the allegations of Paragraphs 1-31

& 64 of this Complaint as though fully set forth herein. 71.

20
21 22 23 24 25 26 27 28

Yahoo! is the owner or all rights, title, and interest in the '227 patent, entitled

"Dynamic Page Generator," which was duly and properly issued by the USPTO on November 9, 2009. i\ copy of the '227 patent is attached as Exhibit 8. 72. Upon information and helief, in violation of 35 U .s.c. § 271, Facebook is and

has been directly infringing the '227 patent by making, using, selling, and/or offering to seU in the United States, or importing into the United States, products or processes that practice the inventions claimed in the '227 patent, including without limitation, Faccbook News Feed and Facebook Wall. Facebook has had knowledge of the '227 patent from at least February 27, 2012,
::"
... j

-1_4_-

... ,
COMPLAINT

..
FOR P II.TENT INFRlNGEMENT

_

when Yahoo! notified Faccbook

or its infringement,

and its infringement

since at least that date

2 3
4 5 6 7

has been \vi Illu L
73. As a result of Facebook's to suffer damage. unlawful infringement ofthe '227 patent, Yahoo! has from Faccbook the

suffered and will continue damages

Yahoo! is entitled to recover

suffered by Yahoo! as a result of its unlawful acts.
74. On information and belief: Facebook to and will continue intends to continue its unlawful infringing

activity, and Yahoo! continues no adequate

to suffer irreparable activities

harm - for which there is unless this Court enjoins

8 9
10

remedy at law - from such unlawful activities.

infringing

Facebook from further infringing FACEBOOKINFIUNGES
75. model containing infringed

VAHDDt'S

SOCIAL NETWORKING

PATENT

11
12 13 14 15 16 17 18 19 20 21

Yahoo l's Social Networking

Patent claims a method and system using a world Facebook has

entity models for, among other things, people and businesses. to infringe Yahoo! 's Social Networking

and continues

Patent through at least Faccbook

Pages and Facebook Groups.

COUNT IX: INFRINGEl\lENT
76. Yahoo! realleges and incorporates

OF THE '648 PATENT
by reference the allegations of Paragraphs 1-31

& 75 of this Complaint 77. "World Modeling

as though fully set forth herein.

Yahoo! is the owner of all rights, title, and interest in the '648 patent, entitled Using a Relationship Network with Communication on June 29,2010. Channels to Entities,"

which was duly and properly attached as Exhibit 9. 78.

issued by the USPTO

A copy of the '648 patent is

22
23 24 25 26 27 28

Upon information

and belief, in violation

of35

U.S.C. § 271, Faccbook

is and

has been directly infringing United States, or importing inventions Groups.

the '648 patent by making,

using, selling, and/or offering or processes that practice

to sell in the the

into the United States, products

claimed in the '648 patent, including Facebook has had knowledge

without limitation,

Facehuok

Pages and Facebook 27,2012, when

of the '648 patent from at least February and its infringement

Yahoo! notified Facebook willful. _-----------_.

of its infringement,

since at least that date has heen

-15-

COMPLAINT

FOR I'ATENT rNFRrNGEMENl'

=---~~

.._-_--

79. 2 3
4

As a result of Faccbook's unlawful infringement ofthe '648 patent, Yahoo! has

suffered ancl will continue to suffer damage. Yahoo! is entitled to recover from Faeebook the damages suffered by Yahoo! as a result of its unlawful acts. 80. On information and belief, Facebook intends to continue its unlawful infringing

5 6 7 8 9

activity, and Yahoo! continues to and will continue to suffer irreparable harm=- for which there is no adequate remedy at law - from such unlawful infringing activities unless this Court enjoins Faeebook from further infringing activities. FACEBOOK INFRJNG~S YAUOO!'S MESSAGING PATENT

81.

Yahoo!'s Messaging Patent claims a method and system for allowing an instant

10 messenger user to exchange messages with an email user. Facebook has infringed and continues 11 12 13
14

to infringe Yahoo ls patent rights through at least Facebook Messages. COUNT X: INFRINGEMENT 82. OF THE '501 PATISNT

Yahoo! real leges and incorporates by reference the allegations of Paragraphs 1-31

& 81 ofthis Complaint as though fully set forth herein.

15 16 17 18 19 20 21 22 23 24 25 26 27 28

83.

Yahoo! is the owner of all rights, title, and interest in the '501 patent, entitled

"System and Method for Instant Messaging Using an E-Mail Protocol," which was duly and properly issued by the USPTO on July 29, 2008. A copy of the '501 patent is attached as Exhibit 10. 84. Upon information and belief, in violation of 35 U.S. C. § 271, Facebook is and

has been directly infringing the '501 patent by making, using, selling, and/or offering to sell in the United States, or importing into the United States, products or processes that practice the inventions claimed in the '501 patent, including 'without limitation, Facebook Messages. Facebook bas had knowledge of the '501 patent from at least february 27, 2012, when Yahoo! notified Faecbook of its infringement, and its infringement since at least that date has been willful. 85. As a result of Facebook's unlawful infringement ofthe 'SOl patent, Yahoo! has

suffered and will continue to suffer damage. Yahoo! is entitled to recover from Facebook the damages suffered by Yahoo! as a result of its unlawful acts.

___

--'-'IQ~.,,__

._._ _ .._

...._.

_
FOR Pi\TENT INFRINGEMENT

COMPLAINT

1

86.

On information and belief, Faccbook intends to continue its unlawful infringing for which there is

2

activity, and Yahoo! continues to and will continue to suffer irreparable harm-

3 no adequate remedy at law - from such unlawful infringing activities unless this Court enjoins 4 5 6 7Facebook from further infringing activities. PRA YEI{ FOR RELIEF WHEREFORE, Yahoo! prays for the following relief: A. That Faeebook be declared to have willfully infringed, induced others to

8 infringe and/or committed acts of contributory infringement with respect to the claims ofthe 9 10 patents-in-suit as alleged above;

B.

That Fucebook and its officers, agents, servants, employees, and all those

11 persons acting or attempting to act in active concert or in participation with them or acting on their 12 behalf be immediately, preliminarily and permanently enjoined from further infringement of the 13 patents-in-suit; 14 15 16 17

c.

That Facebook be ordered to account for and pay to Yahoo! all damages infringement of the patents-in-suit pursuant to 35

caused to Yahoo! by reason ofFacebook's

U.S.C. § 284 and that such damages be trebled in view of the willful and deliberate nature of the infringement; D. That Yahoo! be granted pre-judgment and post-judgment interest on the

18
19

damages caused to it by reason of Facebook's infringement of the patents-in-suit; E. F. That Facebook be ordered to pay all costs associated with this action; and That Yahoo! be granted such other and additional reliefas the Court deems

20
21

22 just and proper. 23

24
25

26
27 28 ____ -l7~_____..
COMPLAINT fOR PATEN'l-INFRTNGEMENT

,,_

1

DATED:

March 12, 2012

2
3 4 By:~-i----4..,.fFo=--------- ... .---------.~ ,,. hs les _Verhoeven Jc nife }\. Kash evin A. Smith Quinn Emanuel Urquhart & Sullivan ILP 50 California Street, 22nd floor San Francisco, CA 94111 Telephone : 415-875- 6600 Attorneys for Plaintiff Yahoo! Tnc. 8 9
.... -

5 6
7

10 11
12 13 14 15

]6
17

18

]9
20 21

22
23

24
25

26
27

28
-18COMPLAINT
I·'OR PATENT INFRINC;CMENT

1 2 3 4 5 DATED: March 12, 2012

DEMAND

FOR .JURY TRJAL Plaintiff hereby demands a

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, trial by jury as to all issues so triable.

6 7 8
9 10 11 12 13 14 har s . Verhoeven

Quinn Emanuel Urquhart & Sullivan LLP 50 California Street, 22nd floor San Francisco, CA 94111 Telephone: 415-S75-6600

'len ifc A. Kash Yin A Smith

A uorneys for Plaintilf Yaho 0 1 Inc.

15 16
17 18 19 20 21 22 23

24
25

26 27
28
-19~, _
-------------- ..--------

COlvlPLAINT

FOR. PATI:Hl' fl'<FRINGEl\-1ENT

.::

:;

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