IP Law Daily, PATENT—W.D. Tex.: Dismissal granted to Facebook in digital rights management dispute, (Jun 7, 2022)

By Kevin M. Finson, J.D.

Patentee failed to show Facebook Messenger and Pay apps infringed in light of the claim interpretations the patentee had previously adopted during inter partes review.

Facebook was entitled to dismissal of a suit alleging that the Facebook Messenger and Pay apps infringed a digital rights management (DRM) patent, the U.S. District Court in Waco has held. The patentee was unable to show how Facebook’s products actually infringed the asserted claims, in light of the claim interpretations the patentee had previously advanced before the Patent Trial and Appeals Board during inter partes review of the patent at issue (Grecia Estate Holdings, LLC v. Meta Platforms, Inc., June 6, 2022, Albright, A.).

Grecia Estate Holdings, LLC (Grecia) was the owner of U.S. Patent No. 8,402,555 (the ’555 patent), which related to a process for linking rights to access electronic media under digital rights management to a user account, as opposed to the prior art techniques that linked the right of access to a particular user device. Grecia filed suit for infringement against Facebook, Inc., which was renamed during the litigation to Meta Platforms, Inc. (Facebook), alleging that Facebook’s Messenger app and Facebook Pay infringed the ’555 patent by associating a QR code with the user’s account and using that code to monitor access to digital money. Facebook moved to dismiss for failure to state a plausible infringement claim and for collateral estoppel.

Collateral estoppel. Facebook argued that Grecia was barred from litigating the claim at issue because it was substantively identical to claims previously invalidated in other patent proceedings. The court held that while another court had found similar claims in a related patent invalid, those claims were decided on the ground that the claim term “customization module” was indefinite, and the ’555 patent did not contain any reference to a customization module. Another court had also found that similar patent claims were directed at an abstract idea, but again, the language was not so close as to be identical. The court declined to determine the validity of the ’555 patent prior to claim construction and denied the motion to dismiss on this ground.

Plausible infringement. Facebook argued that Grecia failed to plead infringement with sufficient detail because Facebook Pay’s user information did not correspond to any “encrypted digital media” and the complaint lacked allegations for all of the claim limitations. In its complaint, Grecia argued that a payment account such as a PayPal account or debit or credit card number was the “member verification token” required by the claim terms. However, the court found that Grecia had expressly disavowed this position before the PTAB during an inter partes review proceeding and could not therefore assume it now. The court also held that Grecia failed to show how Facebook “brands the metadata of the encrypted digital media” when the allegations concerned money, not media. The court granted the motion to dismiss on this ground.

The Case is No 6:21-cv-00677-ADA.

Attorneys: Matthew M. Wawrzyn (Wawrzyn LLC) for Grecia Estate Holdings LLC. Sarah E. Piepmeier (Perkins Coie LLP) for Meta Platforms, Inc.

Companies: Grecia Estate Holdings LLC; Meta Platforms, Inc.

Cases: Patent TexasNews