On March 6, 2018, BlackBerry (BB) filed suit against Facebook (FB) in the U.S. District Court for the Central District of California in Los Angeles. In its 117 page complaint, BlackBerry alleges that Facebook (including Facebook Messenger, WhatsApp, and Instagram) infringed seven BlackBerry-owned patents.
Here, I give a brief overview of a few of the patents at suit. In my opinion, many of BlackBerry’s patents are extremely broad. Because of this, Facebook infringes many of the asserted claims. Facebook’s primary defenses will be to challenge that the patents are invalid, because they were anticipated or were obvious at the time they were filed. Facebook is likely to fight BlackBerry both in district court and before the Patent and Trademark Office.
I expect litigation to be drawn out, unless the parties decide to settle. Because of the scale of both companies, the litigation will be much more important for BlackBerry than for Facebook.
If BlackBerry were to prevail, damages could be very high for Facebook since the patents cover core elements of many Facebook apps. In that scenario, BlackBerry would also be able to pursue many other violators for patent licenses – these are very broad patents that would be violated by many companies.
The suit alleges that Facebook apps co-opt BlackBerry’s messaging innovations, including innovations related to security improvements, user interfaces (message notifications, displays of timestamps, and tagging in photos), combining mobile gaming and messaging, and battery-efficient status updates.
The seven patents at suit are:
- U.S. Patent No. 7,372,961 (“the ‘961 patent”), entitled “Method of public key generation.”
- U.S. Patent No. 8,279,173 (“the ‘173 patent”), entitled “User interface for selecting a photo tag.”
- U.S. Patent No. 8,209,634 (“the ‘634 patent”), entitled “Previewing a new event on a small screen device.”
- U.S. Patent No. 8,301,713 (“the ‘713 patent”), entitled “Handheld electronic device and associated method providing time data in a messaging environment.”
- U.S. Patent No. 8,429,236 (“the ‘236 patent”), entitled “Transmission of status updates responsive to status of recipient application.”
- U.S. Patent No. 8,677,250 (“the ‘250 patent”), entitled “System and method for switching between an instant messaging conversation and a game in progress.”
- U.S. Patent No. 9,349,120 (“the ‘120 patent”), entitled “System and method for silencing notifications for a message thread.”
To prevail, BlackBerry will need to demonstrate that Facebook has satisfied each element of at least one asserted independent claim – that is, that Facebook has infringed one of BlackBerry’s asserted patents. Facebook will have 21 days to respond to (“answer”) this complaint, although that deadline may be extended by agreement of the parties.
In their answer, Facebook will argue noninfringement – that their software does not infringe the claims because it does not satisfy at least one element/step of each asserted claim.
Facebook will also argue invalidity – that the patents at suit should not have been issued by the U.S. Patent and Trademark Office (“USPTO”). This argument will be based on finding a combination of published documents and other materials (“prior art”) which pre-date the asserted patents. Facebook will argue that the prior art shows the entire subject matter of the asserted claims (that the claims are “anticipated”), or that the prior art renders the subject matter “obvious” to one of skill in the relevant art.
The claims at suit in these patents have not been tested in court. (Update 03/07/18 11:47 AM ET: SA Reader BigZ has alerted me that the ‘961 patent has been used before. BlackBerry sued Avaya in 2016 based on the ‘961 patent and other patents. That case was eventually settled, with undisclosed terms, prior to trial.)
Because of that, Facebook will have a higher chance of success in their invalidity arguments. Courts routinely find patents obvious, despite the USPTO agreeing to grant those patents. Patent examiners at the USPTO conduct only a cursory search for prior art compared to that which will be conducted by Facebook (provided the case does not settle quickly). Thus, Facebook is very likely to present a much stronger combination of prior art than was available to the patent examiner. If the claims had previously been tested in court, and were successful, this task might be a bit more difficult, since it would mean that another party had already tried and failed to prove invalidity.
Facebook is likely to challenge the patent claims both in court and before the USPTO. Statistics from the USPTO show that at least one-third of cases there strike down some or all claims of the challenged patents.
The ‘634 Patent
Some of BlackBerry’s asserted claims are very broad. For example, the ‘634 patent claims:
Source: BlackBerry Complaint at 39 (highlighting by the author).
Claim 1 here covers a method of showing notifications of messages. It required displaying an icon on a GUI, receiving messages from at least two other devices, and modifying the icon to show the number of unread messages. This is an exceptionally broad claim – it covers merely showing an icon with the number of unread messages in it and changing that number based on receiving a new message.
BlackBerry’s complaint goes through a relatively thorough infringement analysis of this claim for Facebook Messenger, Instagram, WhatsApp Messenger, and other Facebook apps (pp. 42-50).
Against a claim of this nature, Facebook is unlikely to have any plausible non-infringement argument. Instead, Facebook will need to argue that the patented claim – and its extremely expansive language – was either anticipated or obvious at the time the patent was filed (its “priority date”). The priority date for the ‘634 patent is December 1, 2003.
I would be surprised if this claim withstands serious scrutiny. Instant messaging applications were popularized years earlier (the first version of ICQ was released in 1996, AOL Instant Messenger in 1997, and MSN Messenger in 1999), and both instant messaging and email applications could potentially be found to contain notifications about the number of unread messages.
Even laptop computers could infringe these claims, given that Wi-Fi was introduced in 1998. While the preamble to the claim restricts it to “wireless communication devices,” nothing in the specification of the patent describes “wireless communication devices” in a narrow manner to exclude laptops using Wi-Fi. Indeed, the phrase “wireless communications device” only appears once in the specification, in the “Field of the Invention.” The ‘634 patent even specifically mentions that a computer could be the “mobile station” in its Figure 1:
Mobile station 102 may consist of a single unit, such as a data communication device, a multiple-function communication device with data and voice communication capabilities, a personal digital assistant (PDA) enabled for wireless communication, or a computer incorporating an internal modem.”
Based on this, I would expect that Facebook will be able to present a very strong invalidity defense. BlackBerry may be able to amend claim 1 to make the claim narrower – and less obvious – but such that Facebook still infringes, depending on the strength of BlackBerry’s disclosure in the specification of the ‘634 patent compared to the breadth of the prior art. I would not be confident in BlackBerry’s chances of winning on this claim, however.
Other patents in the suit also appear quite broad but may be able to withstand more scrutiny than the ‘634 patent. For example, the ‘173 patent claims:
1. A method of selecting a photo tag for a tagged photo, comprising:
displaying a tag list including tags from one or more tag sources matching a search string;
displaying a tag type indicator for each tag appearing in the tag list, said tag type being indicative of a tag source associated with the tag.”
Essentially, when tagging a photo, a tag list is displayed that lets you search for a string (a person’s name). Each of the list of results includes a “tag type indicator.” The complaint describes this as the innovation – it helps you tag photos correctly with the right person, rather than with a stranger or famous person who happens to share the same name. The complaint states that Facebook infringes since its photo tagging tool includes information such as an indication of mutual friends shared with a person or a count of likes/followers that that person has. Similarly, Instagram allegedly infringes since its tagging tool includes as indication that an account is verified. (Complaint at 59-60.)
The ‘713 patent describes selectively displaying a time stamp on messages based on the time between messages. (Complaint at 63). Facebook, and other messaging platforms, selectively display a time stamp only when a certain amount of time has passed between messages. When messages are sent consecutively, there’s no need to individually timestamp each message. However, when a new message is sent hours or days later, that message is time stamped.
Other patents relate to integrating certain game play elements with messaging applications (the ‘250 patent; complaint at 87) and methods for silencing individual message threads (the ‘120 patent; complaint at 100), among other claims.
In my opinion, BlackBerry has strong infringement arguments for most of these asserted patents. However, Facebook is likely to have strong defenses that the patents are invalid. Many of the asserted claims are extremely broad, and Facebook is likely to be able to find similar prior art for many of these claims.
I expect that Facebook will argue both non-infringement and invalidity on each of the asserted claims when they file an answer in a few weeks. Facebook is also likely to challenge the patents at the USPTO, in addition to fighting in the U.S. District Court.
Unless the case settles, I would expect litigation to be lengthy, especially if the case is held pending USPTO review.
The case will ultimately be much more important for BlackBerry than it is for Facebook, simply as a matter of scale – as per YCharts, Facebook’s revenues (past twelve months) are more than 40x those of BlackBerry, and Facebook’s operating profit is over 80x those of BlackBerry. As a result, the impact of this case is likely to have a much larger effect on BlackBerry than it will on Facebook.
If BlackBerry were to prevail, damages could be very large. The patents cover core elements of a wide variety of Facebook platforms, including Facebook, Facebook Messenger, WhatsApp, and Instagram. Further, if BlackBerry’s patents withstand court scrutiny, this could open up the door for BlackBerry to aggressively pursue licensing deals with other companies as well – the broad features described in these patents are used by many companies in addition to Facebook.
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I wrote this article myself, and it expresses my own opinions. I am not receiving compensation for it (other than from Seeking Alpha). I have no business relationship with any company whose stock is mentioned in this article.