This post is in response to recent articles covering the Yahoo patent lawsuit against Facebook. Yahoo’s lawsuit is BS, but the journalistic coverage is almost just as bad. However, I want to first be clear about a couple things:

1. I am not a patent lawyer (however, I am the co-founder and CEO of Roobiq, which deals with patents).

2. I do not support Yahoo’s actions and I am glad that it has sparked a discussion around patents.

I have though, learned a great deal since I have been working in the patent space and interacting with several patent attorneys and researchers. Based on this knowledge, I want to clarify a few points.

First, the most important part within a patent document is the claims. These define the scope of the patent owner’s exclusionary rights. There are two opposing forces when writing patent claims. On one hand, the patent applicant wants the claims to be as broad as possible to offer the greatest exclusionary capability. On the other hand, the claims must be specific and novel to actually get the patent approved. Let’s take a look at Yahoo’s patent: “System and method for instant messaging using an e-mail protocol,” claims and see how this plays out.

The first claim listed is an independent claim, of which there are six: claims 1, 29, 33, 52, 55, 62. These claims are the most important, as one must infringe them before infringing on any of the other claims which are dependent on other claims (for a great primer on reading claims check out these articles: How To Read Patent Claims and Reading Claims For Infringement). Here is the first claim:

1. “A method for exchanging messages between an instant messaging user who is subscribed to an instant messaging service and an e-mail user, the method comprising:

receiving a first outgoing instant message from the instant messaging user for delivery to an e-mail address of the e-mail user;

creating a first outgoing e-mail message from the first outgoing instant message prior to delivery of the first outgoing e-mail message to the e-mail user;

generating a token that represents a unique pairing identifier of the instant messaging user and the e-mail user;

including the token, in a username portion of a fully qualified e-mail address in a sender-identifying header of the first outgoing email message; and

transmitting the first outgoing e-mail message to the e-mail address,

wherein a subsequently received e-mail message addressed to a fully-qualified e-mail address that includes the token as a username portion is deliverable to the instant messaging user as an incoming instant message from the e-mail user, and wherein the token cannot be used by another instant messaging user to deliver an instant message to the e-mail user.”

In plain English, this is claiming a method that creates an email out of an instant message by creating a token that connects the instant messaging user to the email user and utilizes this token within the sent/reply email address of the resulting email. The token in the return address is then used to convert the email reply into an instant message back to the original IM user (hopefully that helped?).

Now compare that to the patent abstract:

“Systems and methods allowing an instant messaging user to exchange messages with an e-mail user. To the instant messaging user, the experience is a seamless exchange of instant messages; to the e-mail user, the experience is a seamless exchange of e-mail messages. Conversion of an instant message to an e-mail message includes insertion of a token into the e-mail message, and conversion of an e-mail message to an instant message includes validating a token extracted from the e-mail message.”

The abstract is much more broad because it is an overview, but in the end the claims are what matters. Actually, the most important part of the claim is not in the abstract (hint…it has something to do with the token).

So what? Well let’s narrow down to what exactly the Facebook messaging system does and compare this to the claims. When I tried sending a message to an email address, I could not replicate the email notification that utilizes a machine created return address: notification+fl16cr1f@facebookmail.com depicted in this TechCrunch post. This is because I have setup my Facebook email address, so the messages I send utilize this as a return address. As a result, for my use-case, Facebook is not infringing on the Yahoo patent, because the claim specifically states:

“generating a token that represents a unique pairing identifier of the instant messaging user and the e-mail user;

including the token, in a username portion of a fully

qualified e-mail address in a sender-identifying header of the first outgoing email message; and”

However, even in Josh’s case the token (fl16cr1f) must represent a unique pairing identifier of the instant messaging user and the e-mail user. Without knowing how the Facebook messaging system works internally or their database structure, this token could be a unique pairing of the email and the actual messaging thread, rather than between the two users since Facebook utilizes several different ways on notifying users (email, text, mobile, internal notifications, etc.).

So based on this alone, we can start to see that the strict definition of the patent claim is actually limiting its infringement. If you just read the abstract, the important part of the claim discussing the specifics of the token would be lost.

Facebook’s lawyers though won’t stop here. Secondly, the next place to look to understand the patent claims are in the “file wrapper” or prosecution history of the patent. These can be found online through the Patent Application Information Retrieval online system provided by the USPTO. After a quick look over the documents, it appeared the patent was rejected several times with the most recent rejection specifying:

“Claims 1, 2, 4-9, 11-13, 20-22, 25-39 and 44-60 are rejected under 35 U.S.C. 103(a) as being unpatentable over Mache et al (US 2001/0003202) in view of Mendiola et al (US 7,200,634).

Although Mache et al teach converting instant message into e-mails and vice versa, Mache et al fail to explicitly teach generating a token that represents an identifier of the instant messaging user and the e-mail address of the e-mail user, including the token in a username portion of a fully qualified e-mail address in a sender-identifying header of the first outgoing email message, wherein a subsequently received e-mail message addressed to a fully qualified e-mail address that includes the token as a username portion is deliverable to the instant messaging user as an incoming instant message from the e-mail user. However, Mendiola et al teach generating a unique identifier for a user, including the token in the username portion of the email address and performing the conversion with the token included as the username and provisioning a database for storing the unique identifiers.

It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Mache et al with Mendiola et al for the purpose of implementing the tokens in the username portion of the e-mail header; because this allows for the token to function as a user identifier which allows the system to associate tokens with the respective user and the user device type in order to properly convert the message into appropriate format for the user. The use of tokens as user indicia is well-known in network communications when sending and receiving messages.”

Essentially what this is saying is that a previous patent application (Mache et al, or US 2001/0003202) already covers converting an instant message into emails or vice versa. Furthermore, a granted patent Mendiola et al (US 7,200,634) covers a claim of creating a unique identifier or token for a user and including that in an email address.

To address this rejection, Yahoo’s lawyers spoke with the patent examiner and the result of that conversation was this:

“Applicant and Attv described the scope of claimed invention and the proposed claimed amendments—specifically incorporating “unique pairing” to further limit the claimed identifier element. Examiner noted that the proposed claim amendments appear to differentiate from the prior art of record. Examiner will update search upon official submission of the proposed claim amendments.”

That is the smoking gun. Yahoo specifically had to add this into their claim. As a result, this narrowly defines their method to include:

generating a token that represents a unique pairing identifier of the instant messaging user and the e-mail user;

including the token, in a username portion of a fully qualified e-mail address in a sender-identifying header of the first outgoing email message; and”

This is also detrimental to Yahoo’s claim because recent court decisions have limited the scope of what is called the Doctrine of Equivalents (basically allowing the claim to cover equivalents of what is literally claimed), especially if the claim is amended during the prosecution, as happened with this. Said differently, Yahoo won’t be able to rely on the Doctrine of Equivalents to broaden the claim in court because the claim was amended to narrow the scope and get it approved.

So going back to Facebook, is their token representing a unique pairing identifier of the instant messaging user and the email user? Not sure, but I doubt it given the complexity of the unified messaging system. Which means hopefully Facebook will fight this.

Now I want to remind you that I am not a patent attorney so this might include several errors or even more things I have missed. However, I hope this gives you a better understanding of the finer points around patents. Without truly understanding the claims, a lot of patents would appear to cover everything. However, most are quite specific as they have been through a rigorous multi-year review process.

This does not excuse Yahoo from trying to take advantage of Facebook’s vulnerable position during the pre-IPO though. Patent trolling is destroying wealth (to the tune of $500B). I hope Facebook will take a stand, even if it means court costs in the process, and set a precedent against what appears to be a frivolous shakedown.

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