Monday, July 22, 2013

Facebook, Mitel Enter Confidential Settlement Agreement Ending Patent Dispute

Case Closed: Jul 12, 2013

Judge: Edward M. Chen

Case Summary:
On May 2013, Canadian unified communications solutions company, Mitel Networks filed a lawsuit against Facebook, alleging that the social networking company/website has infringed on two of its patents.  The patents in suit were:

US5940834, entitled Automatic web page generator, issued on Aug 17, 1999 and expiring* by Mar 13, 2017
US7292685, entitled Pro-active features for telephony, issued on Nov 06, 2007and expiring* by Dec 06, 2021

The patents are currently assigned+ to Wilmington Trust (as second collateral agent) (source: MaxVal’s Assignment Database) and as per the complaint, Mitel is the assignee and holds the right on the patents. 

The complaint alleged that defendant infringes the patents by offering a web-based service and/or product via the operation of its website including Facebook user pages, groups and chat features that are claimed in the ‘834 and ‘685 patents.  It is also stated that Mitel did not receive a response from Facebook for offering to discuss possible licensing arrangement. Mitel sought:
  • A judgment in favor
  • Damages adequate to compensate the infringement
  • Permanent injunction
  • Attorney fees, costs and other expenses to which the Court may deem the plaintiff entitled
The case was originally filed in District Court of Delaware and was transferred to California as requested by Facebook. It then filed a request with USPTO for reexamination of claims 1-5 of the '685 patent. 

Both the parties have now agreed to end the dispute and entered into a confidential settlement agreement, which is effective from July 03. Pursuant to reaching the agreement, Facebook withdrew its request to re-examine the ‘685 patent. Mitel filed a joint stipulation of dismissal and consent judgment. Upon consideration, the Court ordered the claims and counterclaims to be dismissed with prejudice and no charges imposed.

See case 3:13-cv-02073 for more details. To get alerts on cases filed/closed, subscribe to our Litigation Alerts.

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* Expected expiration date. Patent Term Estimator is a free web-based tool that automatically calculates patent terms and expiration dates for U.S. utility patents
+ MaxVal offers Patent Assignment Alert service where subscribers receive email alerts when assignments relating to target applications, patents or entities of interest are recorded.

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