Rembrandt Social Media, Lp v. Facebook, Inc. , 640 F. App'x 943 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
REMBRANDT SOCIAL MEDIA, LP,
Plaintiff-Appellant
v.
FACEBOOK, INC.,
Defendant-Appellee
______________________
2014-1812
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:13-cv-00158-TSE-
TRJ, Judge T. S. Ellis III.
______________________
Decided: February 25, 2016
______________________
JOHN A. DRAGSETH, Fish & Richardson P.C., Minne-
apolis, MN, argued for plaintiff-appellant. Also represent-
ed by ROBERT E. HILLMAN, LAWRENCE K. KOLODNEY,
Boston, MA; THOMAS M. MELSHEIMER, Dallas, TX; JOHN
STEPHEN GOETZ, New York, NY; AHMED JAMAL DAVIS,
Washington, DC.
THOMAS G. HUNGAR, Gibson, Dunn & Crutcher LLP,
Washington, DC, argued for defendant-appellee. Also
represented by BLAIR A. SILVER, LUCAS C. TOWNSEND;
2 REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC.
HEIDI LYN KEEFE, MARK R. WEINSTEIN, Cooley LLP, Palo
Alto, CA; MICHAEL GRAHAM RHODES, San Francisco, CA.
______________________
Before PROST, Chief Judge, DYK and TARANTO, Circuit
Judges.
PROST, Chief Judge.
Rembrandt Social Media, LP (“Rembrandt”) appeals
from a final decision of the United States District Court
for the Eastern District of Virginia. Following a five-day
jury trial, the district court held that asserted claims of
U.S. Patent No. 6,415,316 (“’316 patent”) and U.S. Patent
No. 6,289,362 (“’362 patent”) (collectively, “patents at
issue”) were invalid and not infringed by Facebook, Inc.
(“Facebook”). We affirm the district court’s non-
infringement determinations and do not reach the issues
with respect to validity.
BACKGROUND
The patents at issue relate to web-based diary sys-
tems that allow non-technical users to post content on the
internet. Users post content, such as text, images, videos,
or links to other web pages, to personal diary pages,
which appear as web pages in a browser. ’316 patent col.
6 l. 30–col. 7. l. 20.
The ’316 patent discloses methods for displaying and
updating a diary page. A key limitation of the ’316 patent
is “assembling the cohesive diary page by dynamically
combining the content data and the page design in ac-
cordance with the configuration information.” This gen-
erally refers to the way in which diary pages are
assembled. In a preferred embodiment in the ’316 patent,
a “diary applet” performs this process by downloading
diary content (“content data”) and information about how
the page should be displayed (“page design” and “configu-
ration information”) from a central diary server and
REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC. 3
generating an HTML document for the requested diary
page. Id. at col. 6 ll. 38–43. The generated page is then
passed to the web browser for rendering and display. Id.
at col. 7 ll. 3–11.
Rembrandt asserts dependent claims 4, 20, and 26 of
the ’316 patent. Representative claim 4 (and claim 1,
from which it depends) recites:
1. A method of organizing information for display,
comprising:
sending from a diary server to a user system, a
diary program capable of being executed by a
browser in the user system;
sending diary information from the diary server to
the user system, the information comprising con-
tent data including an associated time, a page de-
sign to specify the presentation of the content
data, and configuration information for controlling
behavior of a cohesive diary page, the configura-
tion information including privacy level infor-
mation;
assembling the cohesive diary page by dynamically
combining the content data and the page design in
accordance with the configuration information for
the cohesive diary page to be displayed by the dia-
ry program running in the browser;
receiving by the diary server at least one request
for at least one change concerning the diary in-
formation, from the diary program in the user sys-
tem; and
sending, by the diary server to the user system,
new diary information for changing the cohesive
diary page.
4. The method of claim 1 wherein the new diary
information is for changing content of the diary
4 REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC.
page without changing a general appearance of
the diary page.
Id. at col. 23 l. 44–col. 24. l. 44, col. 24 ll. 47–49 (emphasis
added).
The ’362 patent also describes displaying and updat-
ing a diary page, but focuses more specifically on using an
“annotated universal address” (“AUA”) to transfer and
display content. ’362 patent col. 1 l. 65–col. 2 l. 2. An
AUA is a data structure, which contains a “universal
address (e.g., a uniform resource locator or URL)” for a
piece of content and “annotations,” which provide infor-
mation on how the piece of content should be handled,
such as expiration date, size, or privacy level. Id. at col. 6
l. 53–col. 7 l. 15. Similar to the ’316 patent, a key limita-
tion is “dynamically generating a page definition,” which
also refers to the way in which diary pages are assembled.
In a preferred embodiment, a “diary applet” will generate
a page with content retrieved using an AUA and infor-
mation about how the content should be displayed
(“presentation context”). Id. at col. 7 ll. 32–65.
Rembrandt asserts dependent claim 8 of the ’362 pa-
tent. Claim 8 (and claim 1, from which it depends) of the
’362 patent reads:
1. A computer-based method, comprising the steps
of:
receiving from a client a request for access to a
content object;
responsive to the request of the client, identifying
an annotated universal address (AUA) having a
universal address identifying a location of the con-
tent object and having an annotation authored by
a content provider for controlling an aspect of a
presentation of the object, the AUA being present
in an AUA database containing one AUA;
REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC. 5
responsive to the request of the client, identifying
a presentation context for controlling ion behavior
of the object; and
transmitting to the client the presentation con-
text, the AUA and an applet for dynamically gen-
erating a page definition for the presentation of
the object, the page definition being generated
from the presentation context and the AUA.
8. The method of claim 1 wherein the annotation
further comprises:
at least one content provider authored restriction
concerning subsequent presentation of the object.
Id. at col. 19 ll. 49–67, col. 21 ll. 64–67 (emphases added).
This appeal primarily concerns Facebook’s BigPipe
technology, which was introduced in 2009. BigPipe is an
optimization feature which allows Facebook pages to
display more quickly. It accomplishes this by breaking
down a Facebook page into smaller chunks, called “page-
lets,” that can be loaded in parallel. As pagelets are
retrieved to a user’s computer, client-side BigPipe code
inserts HTML pertaining to each pagelet into a single
HTML document. If the HTML contains references to
images, CSS, JavaScript, or other resources needed by the
pagelet, the browser will download them. Once all of the
HTML and supporting resources have been retrieved, the
browser will display the Facebook page.
Certain aspects of Facebook postings are also at issue.
On Facebook, individual posts can be identified using a
unique URL, or “permalink.” On the back-end, Facebook
does not store permalinks in their entirety; instead,
Facebook stores an identifier (such as an ID number) for
each individual post and programmatically constructs
permalinks using this information.
6 REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC.
PROCEDURAL HISTORY
On February 4, 2013, Rembrandt sued Facebook in
the United States District Court for the Eastern District
of Virginia. Following claim construction briefing, the
parties agreed on the following relevant constructions:
Cohesive diary page (’316 patent): A diary page in
which the content data and the page design are
fully integrated for display.
Content data (’316 patent): Information that may
be displayed to a user that is independent of the
page design.
Dynamically generating a page definitions (’362
patent): Creating a page definition at the client at
the time it is needed
Page definition (’362 patent): Information that
completely defines the appearance of a page.
Annotated universal address (“AUA”) (’362 pa-
tent): Information consisting of the universal ad-
dress and one or more annotations associated with
it.
AUA database (’362 patent): A collection of one or
more AUAs.
Universal address (’362 patent): Uniform Re-
source Locator (URL).
J.A. 145–47.
In addition, the district court gave the following con-
struction:
Assembling the cohesive diary page by dynamical-
ly combining the content data and the page design
in accordance with the configuration information
(’316 patent): Forming the cohesive diary page to
be displayed by combining, at the time of display,
REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC. 7
the content data with the page design, to generate
a definition that is in compliance with the config-
uration information.
J.A. 148.
On December 3, 2013, the district court excluded a
portion of Rembrandt’s validity expert report and the
entirety of Rembrandt’s damages expert report. J.A. 32–
73. Rembrandt petitioned for permission to appeal,
pursuant to 28 U.S.C. § 1292(b), the district court’s exclu-
sion of its expert testimony on damages, which we denied.
Rembrandt Social Media, LP v. Facebook, Inc., No. 14-
2011 (Fed. Cir. Apr. 7, 2014). Rembrandt also attempted
to submit a supplemental expert report on damages and
to offer a modified damages theory at trial. J.A. 3979–99.
The district court rejected these efforts. J.A. 12–16, 19–
21.
The district court held a jury trial from June 9–12,
2014. On June 13, 2014, the jury returned a verdict in
favor of Facebook, finding the ’316 and ’362 patents were
invalid and not infringed. J.A. 3–4. On July 11, 2014,
Rembrandt filed motions for judgment as a matter of law
(“JMOL”) and a new trial, which the district court denied
on August 8, 2014. J.A. 1.
In parallel, Facebook sought relief from the U.S. Pa-
tent and Trademark Office, filing a request for inter
partes review (“IPR”) of claims of the ’316 patent, includ-
ing claims (4, 20, and 26) at issue here, on February 6,
2014. The IPR was instituted on July 7, 2014, nearly one
month after the jury verdict. On July 22, 2015, the Pa-
tent Trial and Appeal Board (“PTAB”) issued a Final
Written Decision finding that Facebook did not show that
any of the challenged claims of the ’316 patent were
obvious by a preponderance of the evidence. Facebook,
Inc. v. Rembrandt Social Media, L.P., IPR2014-00415,
Paper 33 (PTAB June 22, 2015).
8 REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC.
Rembrandt now appeals the denial of its post-trial
motions for JMOL and a new trial. In addition, Rem-
brandt has filed a motion requesting that we apply the
estoppel provisions of 35 U.S.C. § 315(e)(2) and find that
Facebook is estopped from challenging the validity of
claims 4, 20, and 26 of the ’316 patent in light of the
PTAB’s IPR decision. This court has jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
The issues on appeal involve Rembrandt’s motion for
JMOL and motion for a new trial. We take these in turn.
I. JMOL of Non-Infringement and Invalidity
We review a denial of a motion for JMOL under re-
gional circuit law. Lazare Kaplan Int’l, Inc. v. Photoscribe
Techs., Inc., 628 F.3d 1359, 1366 (Fed. Cir. 2010). The
Fourth Circuit reviews a denial of JMOL de novo. John-
son v. MBNA Am. Bank, NA, 357 F.3d 426, 431 (4th Cir.
2004). “The question is whether a jury, viewing the
evidence in the light most favorable to [the non-movant],
could have properly reached the conclusion reached by
this jury.” Id. (quoting Baynard v. Malone, 268 F.3d 228,
234 (4th Cir. 2001)). “We must reverse if a reasonable
jury could only rule in favor of [the movant]; if reasonable
minds could differ, we must affirm.” Id.
A. Non-Infringement
1. ’316 Patent
Rembrandt argues that BigPipe “assembl[es] the co-
hesive diary page” within the meaning of the ’316 patent
because the HTML that BigPipe supplies to the browser
“fully integrat[es]” content and page design for display.
Rembrandt acknowledges that the browser may still need
to download images, CSS files, or other resources in order
to render the page, but argues that this is of no conse-
quence because BigPipe specifies the URLs (directly or
REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC. 9
indirectly) from which these resources are downloaded.
In essence, according to Rembrandt, at the moment of
hand-off between BigPipe and the browser, the page is
completely specified. No design or content choices are left
to be made. Because of this, Rembrandt argues, there
cannot be a legally sufficient evidentiary basis for the
jury’s verdict.
Rembrandt’s argument misses the point. While we
agree that BigPipe reserves no content or design choice to
the browser, the district court’s claim constructions—
which Rembrandt does not challenge—override these
considerations. The district court construed “[a]ssembling
the cohesive diary page by dynamically combining the
content data and the page design in accordance with the
configuration information” to mean “[f]orming the cohe-
sive diary page to be displayed by combining, at the time
of display, the content data with the page design, to
generate a definition that is in compliance with the con-
figuration information.” J.A. 148. The parties further
agreed that “content data” means “[i]nformation that may
be displayed to a user that is independent of the page
design.” J.A. 145 (emphasis added). For example, when a
user views a website, images, not URLs to images, are
displayed to the user. Thus, the ’316 patent’s require-
ment of “dynamically combining content data and the
page design” must be done where the actual image file is
made available. It is the browser that downloads these
bits and displays them on a page. Thus, this step is only
completed after the hand-off from BigPipe to the browser.
BigPipe cannot satisfy this limitation. 1
1 We note that, although the error in Rembrandt’s
argument is most easily illustrated with respect to Big-
Pipe’s treatment of images, this analysis also applies to
other types of “content data” discussed in the parties’
briefing, such as videos, CSS files, and Java files. In
10 REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC.
This conclusion is bolstered by the testimony of Rem-
brandt’s own expert, who testified that “[a] photo can be
content data.” J.A. 10717. Rembrandt’s expert also
testified that the file for an image is retrieved by the
browser, and not provided by BigPipe. J.A. 10721–22. On
this record, the jury could have reasonably found that
BigPipe does not “dynamically combin[e] the content data
and the page design.” We cannot conclude that, constru-
ing the evidence in the light most favorable to Facebook,
the jury could have “only rule[d] in favor of [Rembrandt].”
Johnson, 357 F.3d at 431.
2. ’362 Patent
Similar to the ’316 patent, Rembrandt argues that
BigPipe “dynamically generat[es] a page definition”
within the meaning of the ’362 patent because the HTML
that BigPipe supplies to the browser “completely defines
the appearance of a page.” Again Rembrandt presses that
the browser’s subsequent downloading activities are
irrelevant—“page definition” only requires a specification
for building a page, which is what BigPipe supplies.
Rembrandt also argues that the district court erred
because there is no dispute that Facebook practices the
“AUA database” limitation under the doctrine of equiva-
lents. Specifically, Rembrandt contends that its expert
gave unrebutted testimony that Facebook’s method of
storing only identifiers was not substantially different
from the ’362 patent’s method of storing URLs in AUAs,
these cases as well, what gets displayed to the user is the
video itself, the styles specified in the CSS files, and the
programmatic behavior specified in the Java files, respec-
tively. Arriving at this point of successful display re-
quires the file themselves, which are downloaded by the
browser, not BigPipe.
REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC. 11
providing the jury with no reasonable basis to find other-
wise.
Taking these arguments in reverse order, we disagree
that the jury could not have reasonably concluded that
Facebook did not practice an “AUA database” under the
doctrine of equivalents. Rembrandt’s expert testified that
the identifiers stored by Facebook and the URLs stored in
AUAs operate in different universes: URLs can be used
anywhere on the internet, whereas Facebook’s identifiers
are used inside the closed Facebook system. J.A. 10726.
Viewing this testimony in the light most favorable to
Facebook, the jury could have reasonably concluded that
the differences between these approaches were not insub-
stantial. On this basis alone, then, we must affirm the
jury’s finding of non-infringement.
Because we can affirm the jury’s non-infringement
verdict based on the “AUA database” limitation, we need
not reach Rembrandt’s arguments with respect to the
separate “dynamically generating a page definition”
limitation. We therefore conclude that the district court
did not err in denying Rembrandt’s motion for JMOL of
infringement.
B. Validity
Rembrandt also challenges the jury verdicts invalidat-
ing the ’316 and ’362 patents. However, because Face-
book asserted invalidity only as an affirmative defense
and there is no separate declaration of invalidity in the
judgment in the case, we need not address invalidity once
we have affirmed non-infringement. Solomon Techs., Inc.
v. Int’l Trade Comm’n, 524 F.3d 1310, 1319 (Fed. Cir.
2008) (“Where invalidity is raised as an affirmative de-
fense, however, it is not necessary for the reviewing court
to address the validity issue.”). In exercising this option,
we rely on the well-established rule of federal preclusion
law that will deny issue-preclusive effect to the invalidity
rulings because we leave them unreviewed as unneces-
12 REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC.
sary to the judgment. Fairbrook Leasing, Inc. v. Mesaba
Aviation, Inc., 519 F.3d 421, 428 (8th Cir. 2008); Levine v.
McLeskey, 164 F.3d 210, 213 (4th Cir. 1998); Greene v.
United States, 79 F.3d 1348, 1352 (2d Cir. 1996); In re
PCH Assocs., 949 F.2d 585, 593 (2d Cir. 1991); 18 Charles
Alan Wright, Arthur R. Miller & Edward H. Cooper,
Federal Practice and Procedure § 4432 & n.24 (2d ed.
2002) (citing In re Peters, 642 F.3d 381, 385–386 (2d Cir.
2011)); Restatement (Second) of Judgments § 27 cmt. o
(1982); see also Hill-Rom Co. v. Kinetic Concepts, Inc., 209
F.3d 1337, 1344 (Fed. Cir. 2000) (“[T]he district court’s
resolution of the issue of invalidity was not necessary to
the judgment. For that reason, the court’s invalidity
ruling will have no collateral estoppel effect in any possi-
ble future dispute between the parties involving the ’346
patent.”); cf. Aqua Marine Supply v. AIM Machining, Inc.,
247 F.3d 1216, 1221 (Fed. Cir. 2001) (“In a future action,
it is possible that Aqua Marine could avoid collateral
estoppel by arguing that it did not have a full and fair
opportunity to litigate the issue of invalidity.”).
For the same reason, we do not reach Rembrandt’s
specific request that we vacate the invalidity ruling
regarding the ’316 patent by applying 35 U.S.C § 315(e) to
the final written decision of the Patent Trial and Appeal
Board. Here too we rely on the absence of any prospective
effect of the district court’s invalidity rulings.
C. Evidentiary Rulings
Finally, Rembrandt argues that the district court
abused its discretion in excluding portions of its validity
opinions, in excluding its damages expert, and in ruling
that it could not otherwise present any evidence of dam-
ages to the jury. Because we affirm on non-infringement,
we need not reach these issues.
REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC. 13
II. Motion for a New Trial
The law of the regional circuit also governs a motion
for a new trial. Bettcher Indus., Inc. v. Bunzl USA, Inc.,
661 F.3d 629, 638 (Fed. Cir. 2011). In the Fourth Circuit,
“[a] district court’s denial of a motion for a new trial is
reviewed for abuse of discretion, and will not be reversed
save in the most exceptional circumstances.” Minter v.
Wells Fargo Bank, N.A., 762 F.3d 339, 346 (4th Cir. 2014)
(internal quotation marks omitted).
Rembrandt maintains that it is entitled to a new trial
because the district court improperly intervened during
the proceedings. At trial, the district court interrupted
the examination of a Facebook fact witness and asked
questions about the infringement issues to which he was
testifying, one of which mentioned the claim term “cohe-
sive diary page.” J.A. 10769. The district court also
questioned witnesses at other points in the trial, includ-
ing asking Rembrandt’s fact witnesses about financial
interest and Rembrandt’s expert about internet history, a
background topic she volunteered on direct. J.A. 10648,
10658–59, 10675–76. According to Rembrandt, this
involvement revealed prejudice and improperly swayed
the jury.
A district court may interrogate witnesses under Fed-
eral Rule of Evidence 614(b). It is “settled beyond doubt
that in a federal court the judge has the right, and often
an obligation, to interrupt the presentations of counsel in
order to clarify misunderstandings or otherwise insure
that the trial proceeds efficiently and fairly.” United
States v. Cole, 491 F.2d 1276, 1278 (4th Cir. 1974). When
a district court exercises this right, its conduct is reviewed
for an abuse of discretion. United States v. Villarini, 238
F.3d 530, 536 (4th Cir. 2001). “A new trial is required
only if the resulting prejudice was so great ‘that it denied
any or all the appellants a fair, as distinguished from a
14 REMBRANDT SOCIAL MEDIA, LP v. FACEBOOK, INC.
perfect, trial.’” Id. (quoting United States v. Parodi, 703
F.2d 768, 776 (4th Cir. 1983)).
None of the interventions identified by Rembrandt
amount to abuse of discretion. In questioning Facebook’s
fact witness on infringement issues, the district court was
simply clarifying issues for the jury. Even the exchange
that invoked the “cohesive diary page” term—the inter-
vention Rembrandt complains of most—simply clarified
testimony that Facebook’s fact witness had already given
about the interaction between BigPipe and the browser.
Compare, e.g., J.A. 10759, with J.A. 10764. It was within
the district court’s discretion to do so, particularly given
the highly technical nature of the technology at issue.
Other interjections operated in a similar way: questions
about financial interest clarified testimony about why
Rembrandt’s witnesses had come to testify, J.A. 10648,
10658–59, and questions about internet history clarified
Rembrandt’s expert’s knowledge about a topic to which
she opened the door, J.A. 10675–76. Moreover, to the
extent Rembrandt disagreed with the district court’s
conduct, it had ample opportunity for curative measures,
including cross-examination, opportunities for rebuttal
testimony from Rembrandt’s expert, and jury instruc-
tions. None of the conduct Rembrandt identifies per-
suades us that it was not given a “fair, as distinguished
from a perfect, trial.” Villarini, 238 F.3d at 536. The
district court did not abuse its discretion.
CONCLUSION
Accordingly, we affirm the district court’s determina-
tion that the asserted claims are not infringed and its
denial of Rembrandt’s request for a new trial.
AFFIRMED
COSTS
Each party shall bear its own costs.