One idea floated when Ross Levinsohn took the reins as the interim CEO of Yahoo is that he might represent a kinder, gentler phase in the Internet company’s contentious patent fight against Facebook. There was even a suggestion that the two sides might even be able to settle.
Today, some news that could point to a different approach — at least for now. Some documents have emerged at the U.S. Patent and Trademark Office that indicate someone, just yesterday, requested for the USPTO to re-examine a patent owned by Facebook concerning news feeds, and to declare it invalid. This happens to be one of the same functions that Facebook has named in its counter-suit against Yahoo, and one patent expert believes that the re-examination request, which questions the validity of the patent, could be coming from Yahoo.
To be clear, the documents do not anywhere mention Yahoo by name. They have been filed by Gregory Hunt, from the law firm Jenkins, Wilson, Taylor and Hunt. One patent lawyer tells me that typically these requests are made by companies that are getting sued by the patent holders, as a defensive move to neutralize the suit. At the time of writing, the only company that is getting sued by Facebook over patent infringement is Yahoo. Update: Yahoo tells us that is has not filed any requests for re-examination.
Even if the re-examination request has not come from Yahoo, it could represent a problem for Facebook, if it gets approved, because
this is one of the patents in its countersuit.
The circumstances of the filing are, in typical legal/patent fashion, pretty confusing but here is the gist: According to the documents we have embedded below, Hunt’s client is questioning patent number 7,669,123, which is a patent for “dynamically providing a news feed about a user of a social network.” The patent is registered by Mark Zuckerberg, Facebook’s founder and CEO, along with several others (it’s embedded below, too).
The re-examination filing from yesterday says that this patent should be rendered invalid because it is based on another patent that is still the subject of an application — not yet approved — which was filed before the one that was approved. That patent is number WO 2007/0052285 and was filed some months before the 7,669,123 application.
Patent number 7,669,123 was named, along with 10 in all, by Facebook in its counter-suit against Yahoo, which it filed in response to Yahoo suing Facebook over several social-media-related patents. It is not clear whether these other patents will also get questioned by Hunt’s clients.
Why the secrecy of who is behind the suit? It’s not clear but our patent expert offers this explanation: “I think they wanted to avoid the side effects of naming themselves so they’ve picked the anonymous route. This is what we used to do in the old days.”
We have reached out to Facebook and Yahoo for their responses to this and will update this story as we learn more.
The full whack of patent documents is embedded here: