On 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.
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.