Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
Most of the popular features that have made Facebook Inc. a successful social network are attributable to the company's unlicensed use of numerous Yahoo! Inc. patents, Yahoo alleged in an infringement lawsuit filed in the U.S. District Court for the Northern District of California March 12 Yahoo! Inc. v. Facebook Inc., N.D. Calif., No. 12-01212, complaint filed, 3/12/12)
The complaint asserted ten claims of infringement based on Yahoo patents directed to advertising, privacy, customization, networking, and messaging. Yahoo seeks an injunction and treble damages under 35 § U.S.C. §284 because it alleges that the infringement is “willful and deliberate.”
In its complaint Yahoo quoted Facebook CEO Mark Zuckerberg's statement that “Getting there first is not what it is all about.”
The problem, according to the complaint, is that much of Facebook's infrastructure was in fact developed by Yahoo. Indeed, “Yahoo! got there first and was therefore granted patents by the United States Patent and Trade Office to protect those innovations,” the complaint stated.
In particular, Yahoo alleged that Facebook is infringing four patents directed to advertising (6,907,566; 7,100,111; 7,373,599; 7,668,861); two patents directed to privacy (7,269,590; 7,599,935); two customization patents (7,454,509; 5,983,227); a networking patent (7,747,648); and a messaging patent (7,406,501).
The advertising patents have allowed Facebook to monetize the traffic that its website attracts, the complaint said, while the other patents have helped Facebook create a unique user experience. The complaint alleged that Facebook's popular News Feed feature uses Yahoo's customization patents, and that other services offered by the social network are also dependent on Yahoo patents.
The complaint stated that Yahoo notified Facebook in February that its patents were being infringed
“Yahoo! is harmed by Facebook's use of Yahoo!'s patented technologies in a way that cannot be compensated by payment of royalty alone,” the complaint said. Facebook's unlicensed use of the patents has helped it to gain market share by allowing it to profit of the research and development that Yahoo invested in the patents, the complaint said. Accordingly, Yahoo said that even if Facebook were to pay for its previous use of the technology, that would be an inadequate remedy because it would not address Facebook's market share.
Yahoo therefore asked the court to temporarily and permanently enjoin Facebook from using Yahoo's patents.
Yahoo is represented by Charles K. Verhoeven of Quinn Emanuel Urquhart & Sullivan, San Francisco.
The complaint is available at http://pub.bna.com/ptcj/121212March1212.pdf
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)