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Does Boston Alt-Weekly Really Want A Patent Battle With Facebook?

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Phoenix Media, which owns The Boston Phoenix alt-weekly and related websites, may be getting more than it bargained for when it chose to sue Facebook last year for patent infringement. Today, Facebook filed a counter-suit in a Massachusetts District Court, asserting that Phoenix Media and related businesses infringe two patents owned by Facebook. The suit demands unspecified damages as well as an injunction shutting down key parts of the Phoenix’s website.

The original lawsuit was filed in October 2009 by Tele-Publishing Inc., a division of Phoenix Media that provides online and voice personals services to newspapers around the country. Phoenix’s patent, which was granted in 2001, makes broad claims to the creation of “personal pages” on the internet, such as those used by Facebook and personal services.

In Facebook’s counter-suit [PDF], it alleges that key features of websites run by The Boston Phoenix and related companies, including personals sites run by Tele-Publishing and the website of WFNX, a radio station owned by Phoenix Media, infringe two patents owned by Facebook.

Filing a counter-suit such as Facebook’s is a common tactic for tech companies accused of patent infringement. Generally, a defendant in a patent suit can try to prove their opponent’s patent invalid; but a much stronger tactic is to sue over one’s own patent, which threatens the revenue stream of the original filer.

Facebook, which was founded in 2006, has few granted patents of its own. But it was able to acquire the two patents used in this counter-suit from other tech companies. Such a purchase isn’t unusual when a company needs defensive patents but doesn’t have enough of its own.

Records from the U.S. Patent and Trademark Office indicate that the two patents in Facebook’s counter-suit originated at Applied Materials and Hewlett-Packard, but were transferred to Facebook in 2009 and 2010, respectively.

Court records show that Facebook has been sued 15 times for patent infringement since 2007, but the lawsuit filed against Phoenix Media appears to be the first time the social media company has been a plaintiff in a patent suit. Nearly all of the 15 suits have been brought by patent-holding companies that appear to have no business beyond filing patent lawsuits–the type of companies often referred to as “patent trolls” in technology circles.

Facebook hasn’t settled any of the 15 lawsuits against it. That suggests Facebook is taking a hard line on patent lawsuits, with the hopes of deterring other “patent trolls” that might be thinking about coming after it.

In their counter-suit, Facebook’s lawyers allege that basic functions of The Boston Phoenix website, such as its “Band Guide,” events search, and “Find Restaurants” features infringe the two patents. The lawsuit asks for damages and an injunction shutting down the infringing services.

Tech companies generally have large patent stockpiles, many of but the threat of counter-suits is one of the factors that deters constant patent litigation. Some observers call this patent detente “mutually assured destruction.” The litigation between Facebook and Phoenix Media is striking because it’s highly unusual for a traditional media company to acquire patents and file lawsuits with them. Now that Facebook has hired a team of experienced patent litigators and launched a counter-suit that threatens key parts of Phoenix Media’s digital operation, some newspaper executives are likely to find out that trying to boost revenues with patent litigation is a risky business.

»  Read the Facebook v. Phoenix patent lawsuit [PDF]

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