BlackBerry Sues Facebook, Instagram and WhatsApp for Willful Infringement of Mobile Communications Patents

By Steve Brachmann
March 24, 2018

On March 6th, Canadian intellectual property owner BlackBerry Limited (NYSE:BB) filed a suit alleging patent infringement claims against Menlo Park, CA-based social media giant Facebook Inc. (NASDAQ:FB) in the Central District of California. BlackBerry alleges that Facebook, along with its subsidiaries WhatsApp and Instagram, violate patents held by BlackBerry in the field of mobile messaging communications.

BlackBerry’s complaint asserts a total of seven patents-in-suit, including:

  • U.S. Patent No. 7372961, titled Method of Public Key Generation. Issued in March 2008, it claims a method for generating a key for use in a cryptographic function which avoids a potential bias affecting the generation of private keys.
  • U.S. Patent No. 8209634, titled Previewing a New Event on a Small Screen Device. Issued in June 2012, it claims a method of providing notifications of unread messages on a wireless communication device by visually modifying a displayed icon for the messaging application to include a numeric number representing a count of received messages that have gone unread.
  • U.S. Patent No. 8301713, titled Handheld Electronic Device and Associated Method Providing Time Data in a Messaging Environment. Issued in October 2012, it discloses a method of operating an electronic device which provides users of messaging applications with time data in certain situations, such as when a conversation has been interrupted.
  • U.S. Patent No. 8677250, titled System and Method for Switching Between an Instant Messaging Conversation and a Game in Progress. Issued in March 2014, it covers a method of enabling a game to be played on an electronic device which enables a game application in the device to access the contact list of an instant messaging application to communicate a game message to particular contacts.

As BlackBerry’s complaint notes, it has been a leader in the development of mobile communications for the past 30 years and its innovations led to the commercialization of some of the earliest smartphone models available in the U.S. It has attained many mobile messaging patents, including those asserted against Facebook, which cover improved security, improved user interfaces, battery-efficient status updates and combined gaming/messaging platforms.

Facebook’s alleged infringement stems back to August 2011 when it released its Facebook Messenger application more than six years after the release of BlackBerry Messenger. WhatsApp and Instagram, which Facebook would acquire later in separate deals, also released their messaging platforms after BlackBerry Messenger had allegedly invented most of the technologically innovative messaging features at issue in the case. The success of BlackBerry Messenger relative to Facebook’s messaging services was further argued by citing to the Android and iPhone download statistics for BlackBerry’s messaging application for both of those mobile platforms. Within eight hours, the BlackBerry app was downloaded 5 million times and, within two years, that total would grow to 100 million.

Each count of infringement which BlackBerry brings in the suit also includes arguments as to why each of the inventions covered by the asserted patents were not well-understood, routine or conventional at the time that they were patented. BlackBerry alleges that the patents-in-suit disclose unconventional solutions to issues specifically arising in the context of mobile communications devices. Persons having ordinary skill in the art at the time of the inventions would not have understood that the inventions could have been performed in either the human mind or by pen and paper. Such arguments would seem to designed to head off any invalidity challenges under 35 U.S.C. § 101, the basic statute governing the patentability of inventions. In cases like Alice Corporation v. CLS Bank International, patents covering software inventions have been invalidated on the argument that the underlying software is merely an abstract idea. This style of getting ahead of a Section 101 invalidity argument was also recently seen in a case filed by Portal Communications that alleged Apple willfully infringed on patents covering natural language processing with its Siri digital personal assistant.

Along with a judgment declaring that the defendants have infringed the patents-in-suit, BlackBerry is also seeking an injunction preventing the use of Facebook, Facebook Messenger, Facebook Messenger Lite, Facebook Workplace Chat, Facebook Pages Manager, WhatsApp Messenger and Instagram applications. BlackBerry is also seeking enhanced damages under 35 U.S.C. § 284 for willful infringement.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments.

  1. angry dude March 24, 2018 12:47 pm

    here we go…

    Black Berry complained so much about being sued by patent troll (NTP) back in their good cash making days…

    and now they are patent troll themselves…

    how times have changed..

    “Luke 6:31 Do to others as you would like them to do to you.”

    Bible Study time

  2. B March 24, 2018 4:50 pm

    Angry dude,

    Respectfully, I’d hardly call Blackberry a “troll.”

    That said, the size of the defendants will likely necessitate a vigorous 101 argument. I’ll bet the judge dismisses everything under FRCP 12(b)(6) or 12(c).

    Generating a key for use in a cryptographic function? Abstract
    Having a conversation on a mobile phone? Abstract
    Multiplayer games on a mobile device? Abstract
    Providing notifications of unread messages? Abstract

    Cite Electric Power Group, TLI communications and Cyberphone.

    CAFC panel will either be forced to declare above-mentioned cases b.s. and hold for Blackberry, re-affirm said cases and hold against blackberry, or hold for Blackberry citing meaningless distinctions

  3. Andrew March 24, 2018 5:36 pm

    Business is business

  4. angry dude March 24, 2018 5:36 pm

    B @2

    “I’d hardly call Blackberry a “troll.”

    Well, what goes around usually comes back

    BlackBerry called Campana (patent holder behind NTP) a troll but they are no different now – no major products in the market, just patents and lawsuits

    “the size of the defendants will likely necessitate a vigorous 101 argument”

    Yeah,right

    too big to fail

    just like Blackberry itself was too big to fail back in early 2000s when they got so nice a treatment from USPTO (being a foreign company btw)

    only now the roles reversed

  5. Benny March 25, 2018 5:30 am

    Angry @ 1 ,
    ” Luke 6:31 Do to others as you would like them to do to you.”
    Bible Study time”

    Luke paraphrased Leviticus 19:18.
    “You shall not take vengeance or bear a grudge against your kinsfolk. Love your neighbor as yourself:”

    You need to brush up on your Bible studies.

  6. angry dude March 25, 2018 10:03 am

    Benny@4

    If you view large corporation as a person … like they do here in US

    But the right way for me or other inventors is to treat large corps as hostile inhumane creatures out there to steal the fruits of our labor
    That includes your company too

  7. Benny March 25, 2018 10:16 am

    Angry –
    “That includes your company too”

    My company pays my paycheck. ‘Nuff said.

    (We don’t knowingly infringe patents – we do FTOs – but if we did, we wouldn’t steal a patent. We would only borrow it. We would give it back after 17 years.)

  8. angry dude March 25, 2018 10:36 am

    Benny

    I know exactly how your company operates
    You constantly browse uspto website (from anonymous ip addresses) and industry publications for anything new you can use
    Once you come across patent app you size up patent holder
    If its Interdigital then you have second thoughts
    If its some schmuck in the middle of nowhere then you dont have second thoughts
    Thats all to it

  9. Benny March 25, 2018 11:20 am

    Angry.
    Wrong on all counts.
    I don’t browse USPTO. I use search and alerting services. I am also tuned to my competitor’s applications. None of them will give me a free pass. In our field, the little guys, so far, have never had anything of value to offer.

  10. angry dude March 25, 2018 11:43 am

    Benny

    What is your field then?
    High energy particle physics?
    Or advanced pharmaceutical?
    In most engineering fields little guys are the.main source of new ideas

  11. B March 25, 2018 7:44 pm

    “In most engineering fields little guys are the main source of new ideas”

    I’m honestly not sure if this statement is accurate. That said, I do believe that large companies had a great gift in Michelle Lee, and have a great interest in a weak patent system.

  12. angry dude March 25, 2018 9:05 pm

    B @11

    Consider this – each and every large tech company was a little “garage” startup with one or two brilliant founders no so long ago

    google, apple, microsoft, amazon, hp, dell etc etc etc

    inventions come from individual people, not from corporations, despite all the lies paid propaganda wants you to believe

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