DCT

2:18-cv-01844

BlackBerry Ltd v. Facebook Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-01844, C.D. Cal., 04/04/2018
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendants maintain a regular and established place of business in the district, such as Facebook's campus in Playa Vista, and have committed acts of infringement within the district. The complaint further alleges that the defendant subsidiaries are operated as an integrated package with parent company Facebook.
  • Core Dispute: Plaintiff alleges that Defendants' social media and messaging applications—including Facebook, Facebook Messenger, WhatsApp, and Instagram—infringe nine patents related to foundational mobile technologies covering cryptographic security, user interface design, and battery-efficient data transmission.
  • Technical Context: The technologies at issue involve core functionalities of modern mobile messaging applications, a market where the accused products hold significant global positions.
  • Key Procedural History: The complaint alleges that BlackBerry first contacted counsels for Facebook and WhatsApp in April 2016 regarding its patent portfolio. It also alleges that the USPTO cited one of the patents-in-suit (U.S. Patent No. 8,279,173) against Facebook during the prosecution of three separate Facebook patent applications in 2014, which may be relevant to allegations of pre-suit knowledge.

Case Timeline

Date Event
2000-12-27 U.S. Patent No. 7,372,961 Priority Date
2001-07-23 U.S. Patent Nos. 8,296,351 & 8,676,929 Priority Date
2003-09-19 U.S. Patent No. 8,301,713 Priority Date
2003-12-01 U.S. Patent No. 8,209,634 Priority Date
2006-09-29 U.S. Patent No. 8,677,250 Priority Date
2007-05-09 U.S. Patent No. 8,279,173 Priority Date
2008-05-13 U.S. Patent No. 7,372,961 Issued
2009-01-01 WhatsApp Application First Released (approx.)
2009-04-08 U.S. Patent Nos. 8,429,236 & 9,349,120 Priority Date
2010-01-01 Instagram Application First Released (approx.)
2011-08-09 Facebook Messenger Application Released
2012-06-26 U.S. Patent No. 8,209,634 Issued
2012-10-02 U.S. Patent No. 8,279,173 Issued
2012-10-23 U.S. Patent No. 8,296,351 Issued
2012-10-30 U.S. Patent No. 8,301,713 Issued
2013-04-23 U.S. Patent No. 8,429,236 Issued
2014-03-18 U.S. Patent No. 8,677,250 Issued
2014-03-18 U.S. Patent No. 8,676,929 Issued
2016-04-01 BlackBerry Allegedly Initiates Contact with Facebook/WhatsApp (approx.)
2016-05-24 U.S. Patent No. 9,349,120 Issued
2018-04-04 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,372,961 - "Method of public key generation," issued May 13, 2008

The Invention Explained

  • Problem Addressed: The patent describes a vulnerability in public key cryptosystems, specifically in the method for generating "ephemeral" (single-session) private keys, as specified by the then-governing U.S. government standard, FIPS 186-2 (Compl. ¶¶ 94-96). The standard's method could inadvertently introduce a slight bias in the key selection process, which could be exploited by an attacker to deduce the system's long-term private key and compromise all communications (’961 Patent, col. 2:24-37).
  • The Patented Solution: The invention proposes a method to eliminate this bias. A random "seed value" is generated and processed by a hash function to create a potential key (’961 Patent, col. 3:64-4:10). Crucially, this potential key is then compared against a system parameter ("q") before any modular reduction is performed. If the value is less than the parameter, it is accepted as the key; otherwise, it is rejected, and a new value is generated until one is accepted (Compl. ¶100; ’961 Patent, col. 4:11-17). This "reject-and-repeat" process ensures a statistically uniform key distribution, removing the exploitable bias.
  • Technical Importance: This technique provided a direct solution to a known security flaw in the de facto industry and government standard for digital signatures, thereby enhancing the security of encrypted communications on computing devices. (Compl. ¶¶ 109, 111).

Key Claims at a Glance

  • The complaint asserts independent claims 15 and 23 (Compl. ¶118).
  • Essential elements of independent claim 15, a computer-readable medium claim, include instructions for:
    • generating a seed value SV from a random number generator;
    • performing a hash function H( ) on the seed value to provide an output H(SV);
    • determining whether the output H(SV) is less than an order q prior to reducing mod q;
    • accepting the output for use as a key if it is less than q;
    • rejecting the output if it is not less than q;
    • repeating the method if the output is rejected; and
    • providing the accepted key for use in a cryptographic function.
  • The complaint reserves the right to assert additional claims (Compl. ¶120).

U.S. Patent No. 8,209,634 - "Previewing a new event on a small screen device," issued June 26, 2012

The Invention Explained

  • Problem Addressed: The patent addresses the inconvenience for users of small-screen mobile devices who have multiple messaging applications. To determine which application has a new message, a user is required to check each one individually, which hinders quick access to information (’634 Patent, col. 1:60-67; Compl. ¶135).
  • The Patented Solution: The invention provides a method for visually modifying an application's icon on a graphical user interface to notify the user of a new event (’634 Patent, Abstract). The modification includes displaying a numeric character on the icon that represents "a count of the plurality of different messaging correspondents" from whom unread messages have been received (’634 Patent, Claim 1; Compl. ¶137). This informs the user not just of the existence of new messages, but also of the breadth of active conversations. Figure 7 illustrates an icon with a numeric badge indicating two unread messages (’634 Patent, col. 8:56-58).
  • Technical Importance: This approach improves the mobile user interface by providing richer contextual information about new messaging activity directly on the device's main screen, allowing users to more efficiently triage communications. (Compl. ¶¶ 139-140).

Key Claims at a Glance

  • The complaint asserts claims 1, 5-7, 11-13, 17, and 18 (Compl. ¶144).
  • Essential elements of independent claim 1, a method claim, include:
    • displaying at least one messaging-related icon on a graphical user interface;
    • receiving multiple electronic messages from multiple different correspondents; and
    • in response, visually modifying an icon to include a numeric character representing a count of the different messaging correspondents with unread messages.
  • The complaint reserves the right to assert additional claims (Compl. ¶144).

U.S. Patent No. 8,279,173 - "User interface for selecting a photo tag," issued October 2, 2012

  • Technology Synopsis: The patent addresses the difficulty of tagging people or objects in photos on mobile devices with small screens and limited input methods (Compl. ¶162). The solution is a user interface that, as a user begins typing a tag, displays a list of matching tags from one or more sources (e.g., social media friends, device contacts) and includes a "tag type indicator" to clarify the source of each suggested tag (Compl. ¶165).
  • Asserted Claims: 1, 2, 7, 8, 13, and 14 (Compl. ¶173).
  • Accused Features: The photo tagging functionality in the www.facebook.com website and the Instagram application (Compl. ¶173).

U.S. Patent No. 8,301,713 - "Handheld electronic device and associated method providing time data in a messaging environment," issued October 30, 2012

  • Technology Synopsis: The patent addresses the problem of displaying timestamps in a messaging conversation on a limited-display device; showing a timestamp for every message creates clutter, while showing none removes important context (Compl. ¶190). The invention proposes a method to automatically display a timestamp adjacent to a message only after a "predetermined duration of time has elapsed" without further communication, indicating a resumption of the conversation (Compl. ¶192).
  • Asserted Claims: 1, 5, and 9 (Compl. ¶200).
  • Accused Features: The time-stamping functionality in Facebook Messenger, WhatsApp, and Instagram applications (Compl. ¶200).

U.S. Patent No. 8,429,236 - "Transmission of status updates responsive to status of recipient application," issued April 23, 2013

  • Technology Synopsis: The patent addresses the issue of battery consumption caused by frequent transmission of status updates (e.g., live location) from a mobile device (Compl. ¶217). The solution involves using different transmission modes: a "conservative" mode with greater delay and more updates per message when the recipient is not actively viewing the data, and an "accelerated" mode with less delay when the recipient application is actively processing the updates (Compl. ¶¶ 219-221).
  • Asserted Claims: 1-2, 4, and 15-16 (Compl. ¶229).
  • Accused Features: The "Share Live Location" feature within the Facebook Messenger and WhatsApp Messenger applications (Compl. ¶231).

U.S. Patent No. 8,677,250 - "System and method for switching between an instant messaging conversation and a game in progress," issued March 18, 2014

  • Technology Synopsis: The patent addresses the user experience of playing games within a messaging platform, where a user may want to switch between the game interface and the messaging interface without losing context (Compl. ¶253). The invention enables a game application to utilize an instant messaging contact list, communicate game progress data via instant messages, and display a game progress interface after detecting a selection in the conversation interface to switch to the game (Compl. ¶251).
  • Asserted Claims: 1, 9, and 17 (Compl. ¶259).
  • Accused Features: The "Instant Games" functionality within the www.facebook.com website and Facebook Messenger application (Compl. ¶259).

U.S. Patent No. 9,349,120 - "System and method for silencing notifications for a message thread," issued May 24, 2016

  • Technology Synopsis: The patent addresses a user's need to silence notifications for a single, high-traffic message thread without disabling all notifications (Compl. ¶276). The solution provides for selecting a message thread for silencing, which activates a "flag" that overrides any enabled notification setting for that specific thread. New messages in the silenced thread are still delivered to the inbox but may be displayed differently (Compl. ¶279).
  • Asserted Claims: 1, 13, and 24 (Compl. ¶286).
  • Accused Features: The conversation muting functionality in Facebook Messenger, WhatsApp, and Instagram (Compl. ¶286).

U.S. Patent No. 8,296,351 - "System and method for pushing information to a mobile device," issued October 23, 2012

  • Technology Synopsis: The patent describes a system for pushing targeted advertising to mobile devices to support free or reduced-cost information services (Compl. ¶303). The system uses a proxy content server that receives a feedback signal (e.g., location) from a mobile device, uses that signal to select a channel of information (such as location-based ads), and pushes that information to the device (Compl. ¶305).
  • Asserted Claims: 1 and 14 (Compl. ¶312).
  • Accused Features: The Facebook advertising platform, which transmits targeted advertisements to users of Facebook, Messenger, and Instagram applications (Compl. ¶312).

U.S. Patent No. 8,676,929 - "System and method for pushing information to a mobile device," issued March 18, 2014

  • Technology Synopsis: Related to the '351 patent, this invention focuses on a server that pushes advertising based on a "time triggering event" (Compl. ¶324). Upon detecting such an event (e.g., a pre-scheduled time for an ad to run), the server determines the relevant ad, inserts a "meta tag" into content information identifying the ad, and transmits the content with the tag to a mobile device (Compl. ¶324).
  • Asserted Claims: 1, 2, 9, and 10 (Compl. ¶331).
  • Accused Features: The Facebook advertising platform, particularly its functions for time-scheduled advertisements and ads delivered within Facebook Watch and Facebook Live features (Compl. ¶331).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are the Facebook, Facebook Messenger, Facebook Messenger Lite, Facebook Workplace Chat, Facebook Pages Manager, WhatsApp Messenger, and Instagram applications, along with their associated backend systems and advertising platforms (Compl. ¶¶ 6, 17, 85).
  • Functionality and Market Context: The complaint characterizes the accused products as "latecomers to the mobile messaging world" that "co-opt BlackBerry's innovations" to achieve commercial success (Compl. ¶4). These applications provide messaging and social networking services to billions of users globally. The complaint highlights the market significance of these products by noting Facebook's acquisitions of WhatsApp for approximately $19 billion and Instagram for $1 billion (Compl. ¶86).

IV. Analysis of Infringement Allegations

U.S. Patent No. 7,372,961 Infringement Allegations

Claim Element (from Independent Claim 15) Alleged Infringing Functionality Complaint Citation Patent Citation
generating a seed value SV from a random number generator The accused products utilize the OpenSSL library, which allegedly uses a random number generator to create a seed value for cryptographic key generation. ¶120(b) col. 3:64-66
performing a hash function H( ) on said seed value SV to provide an output H(SV) The OpenSSL library allegedly applies a hash function to the seed value to generate a hashed output. ¶120(c) col. 4:6-10
determining whether said output H(SV) is less than said order q prior to reducing mod q; accepting said output H(SV)...if the value...is less than said order q; rejecting said output...if said value is not less than said order q; if said output H(SV) is rejected, repeating said method The OpenSSL library allegedly compares the hashed output to the order "q" and rejects values that are not less than "q", repeating the process to eliminate bias before any modular reduction. The complaint includes a code snippet from OpenSSL's bn_rand.c file to illustrate this alleged looping and rejection process (Compl. p. 32). ¶120(d) col. 4:11-17
and if said output H(SV) is accepted, providing said key k for use in performing said cryptographic function, wherein said key k is equal to said output H(SV). Once an acceptable value is generated through the rejection process, it is allegedly provided for use as the ephemeral private key. ¶120(e) col. 4:11-17
  • Identified Points of Contention for the ’961 Patent:
    • Technical Questions: A central dispute may focus on the precise operation of the accused OpenSSL functions. The analysis will question whether the BN_rand_range function, as implemented and used by Defendants, performs the specific "test-before-reduction" comparison claimed in the patent, or if it uses an alternative, non-infringing technique to ensure an unbiased key distribution.

U.S. Patent No. 8,209,634 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
displaying at least one icon relating to electronic messaging on a graphical user interface of the wireless communication device The accused applications display icons on the user's device, such as the Messenger icon within the main Facebook App. The complaint provides a screenshot showing the Facebook App interface with a messaging icon (Compl. p. 44). ¶147(b) col. 1:32-40
receiving a plurality of electronic messages...including messages from a plurality of different messaging correspondents The accused applications receive messages from multiple distinct users, creating different conversation threads. The complaint includes screenshots from WhatsApp showing unread messages from two different correspondents (Compl. p. 48). ¶147(c) col. 1:60-67
visually modifying at least one displayed icon...to include a numeric character representing a count of the plurality of different messaging correspondents for which one or more of the electronic messages have been received and remain unread. The accused applications display a numeric "badge" over their icons to indicate new messages. The complaint provides a screenshot of the Facebook app icon with a "3" badge over its messaging symbol, alleged to represent a count of correspondents (Compl. p. 49). ¶147(d) col. 8:8-13
  • Identified Points of Contention for the ’634 Patent:
    • Scope Questions: The infringement analysis will likely turn on the construction of "a count of the plurality of different messaging correspondents." The question for the court will be whether this language requires a direct counting of unique senders, or if it can be construed to cover the numeric badges on the accused applications, which may represent a count of unread conversations or total unread messages.

V. Key Claim Terms for Construction

Patent: U.S. Patent No. 7,372,961

  • The Term: "prior to reducing mod q"
  • Context and Importance: This phrase is central to the novelty of the invention, as it defines the temporal sequence that distinguishes the claimed method from prior art that introduced cryptographic bias. Infringement will depend on whether the accused code performs its check on the raw hashed output before any operation that is equivalent to a modular reduction.
  • Intrinsic Evidence for a Broader Interpretation: The patent’s background section frames the entire problem around the bias introduced by the "mod q" reduction step in the FIPS 186-2 standard, stating the standard "requires the reduction of the integer mod q" (’961 Patent, col. 2:45-47). This suggests the claim is meant to cover any method that avoids this specific problematic step.
  • Intrinsic Evidence for a Narrower Interpretation: The specification describes a specific embodiment where the output H(seed) is directly compared to "q" (’961 Patent, col. 4:11-13). A defendant may argue that this limits the claim to only this direct comparison and that other mathematical manipulations of the hashed value before comparison fall outside the claim's scope.

Patent: U.S. Patent No. 8,209,634

  • The Term: "a count of the plurality of different messaging correspondents"
  • Context and Importance: The definition of this term is critical to determining infringement. The case may depend on whether the numeric badge on the accused applications counts unique individuals (correspondents) or something else, such as conversations or total messages. Practitioners may focus on this term because it appears to be the primary point of differentiation from a simple "new message" indicator.
  • Intrinsic Evidence for a Broader Interpretation: The patent abstract describes the invention more generally as visually modifying an icon "to notify of the new event." One could argue that any numeric indicator that conveys information about the number of new conversations achieves this broader goal.
  • Intrinsic Evidence for a Narrower Interpretation: The detailed description explicitly states that "a count may represent the number of correspondents from which one or more messages have been received but remain unread" (’634 Patent, col. 8:8-13). This language provides strong support for a narrower construction requiring a direct count of unique senders.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants provide their applications to end-users with instructions that encourage use of the infringing features, such as sending messages (which triggers notifications) or using live location services (Compl. ¶¶ 126, 153, 208, 238).
  • Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges pre-suit knowledge based on direct communications regarding BlackBerry's patent portfolio beginning in April 2016 (Compl. ¶¶ 122, 149). It also alleges knowledge of at least the ’173 Patent as early as March 2014, when the USPTO cited it against three of Facebook’s own patent applications during their prosecution (Compl. ¶178).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the phrase "a count of the plurality of different messaging correspondents" from the ’634 Patent, which the specification links to counting unique senders, be construed to cover the numeric badge notifications in the accused applications, which may count unread conversations or total messages?
  • A key evidentiary question will be one of technical implementation: does the accused OpenSSL cryptographic code, as used by Defendants, perform the specific "test-before-reduction" sequence required by the ’961 Patent, or does it employ a functionally different, non-infringing method to prevent cryptographic bias?
  • A third central question will be one of intent: given the allegations of direct pre-suit notice letters and citations by the USPTO during Facebook's own patent prosecution, the court will need to determine whether Defendants' conduct, if found to be infringing, rises to the level of willfulness, which would have significant implications for potential damages.