Facebook patent infringement suit against BlackBerry looks remarkably patent troll-like

By Gene Quinn & Steve Brachmann
September 9, 2018

FacebookOn Tuesday, September 4th, Menlo Park, CA-based social media giant Facebook filed a suit alleging claims of patent infringement against Canadian smartphone and services provider BlackBerry. In the case, filed in the Northern District of California, Facebook is asserting a series of patents the company has acquired from other firms, making its actions similar to those of non-practicing entities (NPEs) and remarkably patent troll-like; actions that have so rankled players and policymakers in the U.S. patent system.

Facebook is asserting a series of six patents in this case:

  • U.S. Patent No. 8429231, titled Voice Instant Messaging. Issued to Facebook in April 2013, it covers a method that enables voice communication between a sender and a recipient through an instant messaging host.
  • U.S. Patent No. 7567575, titled Personalized Multimedia Services Using a Mobile Service Platform. Issued to AT&T in July 2009, it covers a method for providing multimedia data from at least one controllable multimedia source in a way that minimizes congestion of multimedia services delivered to a variety of mobile device types over a wireless communication channel.
  • U.S. Patent No. 6356841, titled G.P.S. Management System. Issued to BellSouth in March 2002, it covers a management system using Global Positioning System receivers for tracking remote units from a central office and determining if those units have varied from predefined parameters of operation.
  • U.S. Patent No. 7228432, titled Method and Apparatus for Providing Security for a Computer System. Issued to a trio of inventors in June 2007, it covers a method of providing security for a computer system using a dedicated security processor to validate requested files.
  • U.S. Patent No. 6744759, titled System and Method for Providing User-Configured Telephone Service in a Data Network Telephony System. Issued to 3Com in June 2004, it covers a system for providing telephone service over a data network like the Internet.
  • U.S. Patent No. 7302698, titled Operation of Trusted State in Computing Platform. Issued to Hewlett-Packard in November 2007, it covers a computing entity that operates in a way in which a third-party user can have a high degree of confidence that the entity has not been corrupted by an external influence.
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In its patent infringement complaint, Facebook provides a summary of each invention which details where each invention originated. Even the ‘231 patent issued to Facebook originated with AOL, from which Facebook acquired the rights to the patent application resulting in the ‘231 patent grant in 2012. Further, while Facebook identifies BlackBerry products and services which infringe upon the patents in suit, Facebook doesn’t identify any of its own services which practice the technologies covered by the patents.

It is rather ironic to see a member of the Silicon Valley tech elite, a group that has collectively pushed so hard to weaken the patent system in recent years, file a lawsuit that epitomizes everything that has been decried in an attempt to push patent reform through Congress. For example, Facebook acquired these patents and now asserts them like a PAE. After all, we have been told time and time again by those who have advocated for patent reform and a systematic dismantling of the patent system that a telltale sign of a truly bad actor like a patent troll is that the patents were not the subject of homegrown innovation, but were rather acquired from true innovators and then used to sue others. That, however, is precisely what Facebook is doing here. 

But the bad optics do not stop there. Even worse for Facebook and those who have so successfully peddled the narrative of the patent troll, we have been told over and over that when there is not evidence or claim that the patent owner is using the technology behind the patent that is yet another sign of a bad actor like a patent troll. Once again, in this case it isn’t clear that Facebook even practices these technologies, which makes the company look no different than the patent trolls they and others within the Silicon Valley elite have so long lobbied to derail.

It must be awkward for a company like Facebook to enter into such litigation given its membership in organizations such as United for Patent Reform, a group dedicated to helping “American businesses of all sizes and from all industry sectors” which “are being held hostage by frivolous lawsuits and overly broad claims made by patent trolls.” Indeed, there is no doubt Blackberry will make a compelling argument that the claims Facebook is asserting, which cover abstract ideas like voice messaging and telephony over the Internet, are extraordinarily broad and preemptive. It will be interesting to see what happens to the validity of these patents if and when they become subject to the Alice/Mayo test, and if and when Blackberry elects to challenge these patents with inter partes reviews (IPRs) at the Patent Trial and Appeal Board (PTAB).

Perhaps Facebook feels it now needs to monetize its patent assets and since monetizing user data in the wake of several data privacy scandals is becoming an increasingly precarious business model.

Whatever the case, the company may soon find that the patent reform Silicon Valley has spent so many millions lobbying for will wind up costing billions as patents and exclusivity of the tech giants fall prey to the same killing fields that have plagued independent inventors, universities and startups.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

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 9 Comments comments. Join the discussion.

  1. Pro Say September 9, 2018 3:39 pm

    Facebook hypocrisy.

    Given all that they’ve done to all their 1+ billion users, no one should be surprised.

  2. Software Inventor September 9, 2018 11:36 pm

    Appears to me we are now at the beginning of end of our “reformed” patent system. I suggest combining the importance of this piece, and Mr. Brachmann’s IPWatchdog September 7, 2018 piece, Google Uses Brokered Patent Market…, show that only the big sharks are remaining and now they are turning on each other. As a result, the value of US patents and intellectual property is in free fall. Should values continue to decline – while costs to maintain and enforce increase – perhaps GAAP will soon recognize patents as liabilities and no longer assets?

    While America suffers the decline, who wins? The Chinese; observing big techs devour the small techs and independent inventors, and exploiting and capitalizing on the US Congress, SCOTUS and USPTO ineptness, thereby gaining US market entry points to exploit US law and market weaknesses.

    If you want to begin to understand the Chinese and see what lies ahead, then I suggest reading Sun Tzu, The Art of War. The philosophies presented, and foundation of the Chinese military and economic playbook, were well executed against US in Asia fifty years ago. Our government and military learned from the book, having been well circulated and read, and adjusted American tactics to better deal with the Asian strategies and neutralize the threat. Have we forgotten these hard learned lessons?

    As time passed and America pivoted to the Middle East, we lost track of the Chinese. While we focused elsewhere, they have been in the interim discreetly and methodically executing Sun Tu’s philosophies and exploiting the West’s economic (trade) and intellectual property weaknesses – growing undeterred and gaining economic advantages. I suggest its time to dust off Sun Tzu’s book, refresh our memories, and get back up to speed. Better yet, read the book and send a copy to your representative.

    While we can, it is now time to rethink our patent system, adjust course, and help America regain and retain our innovation heritage and economic leadership.

  3. Night Writer September 10, 2018 8:56 am

    @2

    Yes, the irony is that the Chinese are building their patent system to create innovation as we tear our patent system down with the pretext that we need to to compete with the Chinese.

    I still want to see a graph of granted US patents where the invention was made in the US. Right now the falling innovation is masked by all the patent applications the Chinese are filing in the US.

  4. Jim Freeburg September 11, 2018 11:59 am

    Your overlooking that this is more a response to the infringement claims that BlackBerry filed against Facebook.

    This isn’t Facebook becoming a patent troll, it’s Facebook making a stand against one.

    BlackBerry started it.

  5. Gene Quinn September 11, 2018 12:36 pm

    Jim-

    Are you saying it is acceptable for a company to engage in patent troll behavior if they are responding to someone they believe is a patent troll?

    Just trying to understand your logic.

    And, of course, it is worth mentioning that Blackberry is not a patent troll anyway.

  6. Eric Berend September 11, 2018 4:25 pm

    Every day.

    Every day, another inventor somewhere who had once been fired with the inspiration of his or her genius – for if there is any part of human endeavor so clearly expressive of that notion, it is genuine invention – becomes sobered with the dawning realization and understanding that if not already substantially wealthy, there is very little chance of achieving success in the U.S.A. today, as an inventor.

    Every day, another U.S. inventor abandons her or his dreams.

    Every day, lasting discouragement of whoever might attempt to actually invent or make benefit of an inventive idea that have conceived, in the U.S.A., becomes more likely.

    An elaborate edifice of swindle often called a racket, has been allowed to hold sway over the entire domain of inventors’ interests and incentivisation in the U.S. public interest, creating a Rome-fiddles-while-it-burns situation in the halls of U.S. governance.

    Dally away, all you of the princeling jurist-legislator-attorney overclass, as the Chinese and U.S. technoristocrats continue to plunder the future of this once-sometimes-great nation. As I have pointed out in this venue time and again, inventors have been made into pariahs called “patent trolls”, and the new generation of younger persons educated in U.S. schools, are now quasi-socialist ‘useful idiots’ – so, good luck with getting any widespread recognition of the value to society of supporting inventors, for at least the next two generations.

    By then, the U.S.A., if it even still exists in anything close to a recognizable form, will have been superseded by an Asia-first consortium led by China, and be a mere ‘second-world’ country.

  7. Benny September 12, 2018 2:06 am

    Gene,
    In your blog you have repeatedly made the point – legally incontestable – that a patent owner asserting their patent against an infringer is not a troll. In this article, you appear to be accusing FB of being a troll for doing just that. Double standard?
    Eric Berend, I’m not swallowing your rhetoric. Virtually all the economically important patents I have encountered listed employees of large companies (who can bankroll the R&D costs) as inventors. Independents such as Josh Malone are few and far between, and while Josh deserves 10/10 for creativeness, I couldn’t say that his invention will have a long lasting effect on the well-being of society (though it must be said, it does add to the sum of human happiness).

  8. staff September 12, 2018 10:55 am

    ‘patents the company has acquired from other firms’

    Where did they get those patents? Our guess is some if not most were bought for a mere pittance from small firms and inventors who found it impossible for them to enforce due to the costs and slim chance of keeping and asserting them. The truth is patents for us are now far too hard to get, keep, and enforce. We simply no longer have any realistic chance of commercializing our inventions. Our only hope is to sell them to someone who has the money and power to do so. Unfortunately that means our patents have little value so we end up investing all we have in an invention that we have little hope in the end of materially benefiting from. Meanwhile, large firms who were most probably far more often defendants in patent suits buy them at fire sale prices. But if they are not permitted to enforce them then not even they will buy our patents so we lose all the time and money we put into our inventions. This is justice?

    For our position and the changes we advocate (the rest of the truth) to restore the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at aifj@mail.com

  9. LazyCubicleMonkey September 17, 2018 7:30 pm

    @Gene

    Silicon Valley never had issues using patents defensively (in a countersuit) – and if that’s indeed what FB is doing – that’s fair game. If they initiated the suit – then screw them. Thankfully I’ve deleted my account a long time ago.

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