“Today’s filing underscores the breadth of Facebook’s violation of Yahoo!’s intellectual property. As we have stated previously, Yahoo!’s technologies are the foundation of our business that engages over 700 million monthly unique visitors and represent the spirit of innovation upon which Yahoo! is built. We intend to vigorously protect these technologies for our customers and shareholders.”
“We remain perplexed by Yahoo’s erratic actions. We disagree with these latest claims and we will continue to defend ourselves vigorously.”
Counter claim # 1
Facebook has filed patent countersuit which is not in good faith
“Eight of these patents were purchased by Facebook in the past five months, and several of these patents were purchased (independent of any separate technology acquisition or merger) after Yahoo! filed its complaint in this action. On information and belief, many, if not all, of these patents were acquired by Facebook for purposes of retaliation against Yahoo! in this case. No employee or officer of Facebook or any affiliated company conceived of, reduced to practice, or developed the alleged inventions claimed in the eight patents acquired from non-practicing entities. In fact, the applications for many of these patents predate Facebook itself.”
The patents were bought from entities which were non-practising instead of being filed originally to cover facebbok’s inhouse technology. They could thus be ruled to lack good faith and liable to be thrown out. Facebook in this case could be left with nothing to counter the infringement claims made by yahoo.
Counter claim # 2
Apart from infringing on 10 patents as originally filed, facebook also infringes on Yahoo’s patent no. 7698315 for ”System and method allowing advertisers to manage search listings in a pay for placement search system using grouping” which basically means that Yahoo has patented the technology enabling advertisers to simultaneously modify more than one ads in a group. Facebook’s ad-tool, “Self Service” may be infringing on this Yahoo opatent by providing a similar functionality
Also Yahoo’s patent no. 7933903 for “System and method to determine the validity of and interaction on a network” whicjh is basically a technology to detect false clicks to prevent advertisers from paying for false clicks. This works by checking on the clicks per IP address.
Counter claim # 3
Facebook did not inform of IP issues before counter suing Yahoo
Contrary to an agreement between in-house counsel for Facebook and in-house counsel for Yahoo! to raise intellectual property issues with each other in the first instance, Facebook provided no notice to Yahoo! of any alleged infringement, and Facebook never attempted to resolve any alleged infringement of any of its patents by Yahoo! prior to asserting them in litigation. Indeed, the PTO did not even issue U.S. Patent No. 8,150,913 until April 3, 2012—the day Facebook asserted it.
This break in the agreement, and that fact that Facebook countersued with patents issued and that it had bought that day could lend weight to Yahoo’s previous claim that Facebook’s countersuit lacks “good faith”.
Counter claim # 4
Facebook could not know Yahoo’s technology violates its patents
Facebook asserted its newly-acquired patents against aspects of Yahoo!’s products for which there is little to no publicly-available information. Unless Facebook has unlawfully acquired Yahoo! confidential business information, Facebook could not have developed a good-faith basis for many of the infringement allegations in its counterclaims.
Counter claim # 5
The patents with which Facebook is counter suing were filed illegally
According to Yahoo, the patents number 8005896 and 8150913 were actually registered by Chris Cheah and C. Douglas improperly. “Every claim of the ‘913 patent is unenforceable due to inequitable conduct and every claim of the ‘896 patent is unenforceable under the doctrine of infectious unenforceability.”