DCT

1:17-cv-00082

3G Licensing SA v. BlackBerry Ltd

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00082, D. Del., 04/03/2017
  • Venue Allegations: Plaintiffs allege venue is proper in the District of Delaware because Defendants place products into the stream of commerce that are sold in the state, derive substantial revenue from infringing acts within the District, and knowingly induce infringement there.
  • Core Dispute: Plaintiffs allege that Defendant’s BlackBerry Priv and DTEK 60 smartphones infringe five patents related to technologies in data transmission error checking, time-based network access, multi-antenna signal precoding, mixed-media call management, and removable data store functionality.
  • Technical Context: The patents address foundational challenges in wireless telecommunications, including improving data reliability, managing network-resource efficiency, increasing data throughput in multi-antenna systems, and enhancing user-facing features on mobile devices.
  • Key Procedural History: The complaint notes that two of the asserted patents (’662 and ’667) were previously litigated against Samsung in the Eastern District of Texas. In that context, the Patent Trial and Appeal Board (PTAB) largely declined to institute an inter partes review of the ’662 patent, finding "no reasonable likelihood" that certain asserted claims were invalid. That prior case was dismissed before trial. Subsequent to the events described in the complaint, public records indicate that the sole independent claim of the ’662 patent has been disclaimed.

Case Timeline

Date Event
1995-06-26 ’662 Patent Priority Date
1997-02-11 ’818 Patent Priority Date
2000-11-01 ’091 Patent Priority Date
2001-04-03 ’662 Patent Issue Date
2003-12-04 ’564 Patent Priority Date
2005-02-15 ’818 Patent Issue Date
2008-02-29 ’667 Patent Priority Date
2011-04-26 ’564 Patent Issue Date
2011-08-09 ’091 Patent Issue Date
2015-04-21 ’667 Patent Issue Date
2016-07-08 PTAB declines to institute IPR on claims of the ’662 patent
2016-09-21 Dismissal of prior E.D. Tex. litigation involving the ’662 and ’667 patents
2017-04-03 Complaint Filing Date

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

U.S. Patent No. 6,212,662 - "Method and Devices for the Transmission of Data With Transmission Error Checking" (Issued Apr. 3, 2001)

The Invention Explained

  • Problem Addressed: The patent describes that fixed, or static, error-checking functions used in data transmission can fail to detect systematic errors that repeat themselves. This is particularly problematic for compressed data, where a single undetected error can corrupt all subsequent data during decompression (’662 Patent, col. 1:47-59; col. 2:1-15).
  • The Patented Solution: The invention proposes using a variable error-checking function that changes over time or based on the data itself. By varying the checking function, for example by combining the user data with a pseudo-random number before generating check data, the method significantly reduces the probability that a repeating transmission error will go continually undetected (’662 Patent, Abstract; col. 2:30-47; Fig. 2).
  • Technical Importance: This approach provided a more robust method for ensuring data integrity, a critical requirement for the reliable transmission of increasingly common compressed data streams over wireless networks (’662 Patent, col. 2:5-9).

Key Claims at a Glance

  • The complaint asserts "one or more claims" of the ’662 patent (Compl. ¶24). It highlights a favorable PTAB decision concerning dependent claims 3 and 4 (Compl. ¶19).
  • The sole independent claim of the patent, Claim 1, has been statutorily disclaimed.
  • Claim 1, prior to disclaimer, described a device for producing error checking, comprising:
    • a generating device configured to generate check data; and
    • a varying device configured to vary original data prior to supplying it to the generating device;
    • wherein the varying device includes a permutating device configured to perform a permutation of bit position relative to the data's ordered sequence.

U.S. Patent No. 9,014,667 - "Telecommunications Network and Method for Time-Based Network Access" (Issued Apr. 21, 2015)

The Invention Explained

  • Problem Addressed: The patent identifies that conventional methods for controlling network use, such as volume-based billing, do not sufficiently regulate network resources because mobile devices can maintain active connections (e.g., a PDP context) even while idle, consuming network capacity without active data transfer (’667 Patent, col. 1:21-41).
  • The Patented Solution: The invention discloses a telecommunications network that controls access based on time. The network includes a register that stores a terminal's unique identifier in combination with a "grant access time interval." The network is configured to deny an access request from the terminal if the request is received outside of its permitted interval, thereby preventing devices from consuming resources during peak periods or other restricted times (’667 Patent, Abstract; col. 2:43-61).
  • Technical Importance: This method provides network operators with a direct mechanism to manage load and conserve resources, a crucial capability for handling the massive increase in machine-to-machine (M2M) and other automated devices that may not require immediate, 24/7 network access (’667 Patent, col. 2:49-57).

Key Claims at a Glance

  • The complaint asserts "one or more claims" of the ’667 patent (Compl. ¶32).
  • Independent Claim 1 is a system claim directed to a telecommunications network with the following essential elements:
    • A register configured to store a terminal's unique identifier with an associated grant access time interval.
    • One or more processors with memory storing instructions to perform operations.
    • An access request operation to receive an access request from the terminal.
    • An access operation to deny access if the request is received outside the time period.
    • The network is further configured to monitor network load and adapt the time period accordingly.
    • The network is configured to deny access to machine-to-machine application terminals during peak load time intervals.

U.S. Patent No. 7,933,564 - "Method for the Multi-Antenna Transmission of a Linearly-Precoded Signal, Corresponding Devices, Signal and Reception Method" (Issued Apr. 26, 2011)

  • Technology Synopsis: This patent addresses performance in multi-antenna (MIMO) wireless systems by teaching a method of linear precoding. A source matrix of data symbols is multiplied by a precoding matrix, and the resulting precoded vectors are transmitted successively across the multiple antennas in a specific column-wise manner, a technique designed to maximize both channel capacity and diversity (’564 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of one or more claims; independent claims are 1, 5, 11, 12, and 13 (Compl. ¶40).
  • Accused Features: The complaint alleges that the BlackBerry DTEK 60 and related devices incorporate "similar signal transmission technology" (Compl. ¶40).

U.S. Patent No. 7,995,091 - "Mixed Media Telecommunication Call Manager" (Issued Aug. 9, 2011)

  • Technology Synopsis: The patent discloses a method for managing mixed-media (e.g., voice and video) calls on a mobile device. It describes a system for transferring between different communication channels (e.g., a voice channel and a higher-bandwidth data channel) and, in particular, responding to the end of a mixed-media session by automatically initiating a new, lower-bandwidth call (e.g., reverting to voice-only) (’091 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of one or more claims; independent claims are 1 and 8 (Compl. ¶48).
  • Accused Features: The complaint alleges that the BlackBerry DTEK 60 and related devices incorporate "similar communication transferring technology" (Compl. ¶48).

U.S. Patent No. 6,856,818 - "Data store for mobile radio station" (Issued Feb. 15, 2005)

  • Technology Synopsis: This patent describes a method for a removable data store, such as a SIM card, to provide enhanced features to a mobile station without requiring modification of the station itself. The data store's own processor independently selects between alternative data lists (e.g., different dialing lists) based on the mobile station's operational state, making the feature implementation transparent to the host device (’818 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of one or more claims; independent claims are 1, 18, and 35 (Compl. ¶56).
  • Accused Features: The complaint alleges that the BlackBerry DTEK 60 and related devices incorporate "similar data storage technology" (Compl. ¶56).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies the BlackBerry Priv, BlackBerry DTEK 60, and "related or similar communication devices" as the accused instrumentalities (Compl. ¶¶24, 32, 40, 48, 56).
  • Functionality and Market Context: The complaint alleges that these devices are smartphones that incorporate the technologies of the asserted patents, including error checking, network access, signal transmission, communication transfer, and data storage functionalities (Compl. ¶¶24, 32, 40, 48, 56). The complaint does not describe the specific operation of these features within the accused products. It does allege, however, that the patented technologies have been licensed by BlackBerry's competitors, suggesting their commercial significance in the mobile technology market (Compl. ¶1). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide claim charts or detailed factual allegations mapping specific features of the accused products to the elements of any asserted claims. The infringement allegations are pleaded generally for each patent.

’662 Patent Infringement Allegations

The complaint does not provide sufficient detail for analysis in a claim chart format.

  • Identified Points of Contention:
    • Legal Viability: A threshold legal question is whether Plaintiffs can maintain a cause of action on the ’662 patent. The complaint highlights a favorable PTAB finding on dependent claims 3 and 4 (Compl. ¶19), but the sole independent claim (Claim 1) from which they depend has been statutorily disclaimed. This raises the question of whether the dependent claims remain enforceable, which is a significant barrier to this count.

’667 Patent Infringement Allegations

The complaint alleges generally that the BlackBerry DTEK 60 infringes by incorporating the patented "network access technology" (Compl. ¶32). This is insufficient to construct a detailed infringement chart.

  • Identified Points of Contention:
    • Direct Infringement of a System Claim: The asserted independent claim is directed to a "telecommunications network," a system comprising elements like a register and access module that are typically part of a carrier's infrastructure. The complaint accuses BlackBerry, a device manufacturer, of direct infringement (Compl. ¶32). This raises the question of how BlackBerry could be found to "make," "use," or "sell" the entire claimed network system, a theory that may face significant challenges under current law regarding divided infringement.
    • Evidentiary Questions: The complaint lacks factual specifics on how the accused devices perform the claimed method. A key question for the court will be what evidence Plaintiffs can produce to show the accused products practice a method of being denied network access based on a time interval stored in a network register.

V. Key Claim Terms for Construction

’662 Patent

Analysis of claim terms is premature given that the sole independent claim of the patent has been disclaimed.

’667 Patent

  • The Term: "telecommunications network" (from Claim 1)
  • Context and Importance: Practitioners may focus on this term because its construction is central to the direct infringement allegation. The Defendant manufactures terminals, not carrier networks. Whether BlackBerry can be held liable for directly infringing a claim to a "telecommunications network" will depend on whether its actions are found to constitute "making" or "using" the entire claimed system.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification does not explicitly define the term, potentially leaving room for an argument that providing a key component (the terminal) that operates within and utilizes the network constitutes "using" the claimed system.
    • Evidence for a Narrower Interpretation: The figures and description show a system comprising distinct components including terminals (A-D), a serving controller entity (5), a register (6), and a gateway (7) (’667 Patent, Fig. 1). This architecture, which separates the terminal from the core network components that perform the access denial, may support a narrower construction where an entity must control all claimed components to be a direct infringer.

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges induced infringement, stating that BlackBerry encourages infringement by providing promotional materials, instructions, and product manuals that instruct on the use of the infringing functionality (e.g., Compl. ¶¶25, 33). It also alleges contributory infringement, stating that the accused products are especially designed to infringe and are not staple articles of commerce with substantial non-infringing uses (e.g., Compl. ¶¶26, 34).
  • Willful Infringement: The complaint alleges that BlackBerry had pre-suit knowledge of all asserted patents because it was "invited to take a license to the asserted patents, and have declined" to do so (Compl. ¶¶20, 27, 35, 43, 51, 59). This alleged knowledge is the stated basis for willful infringement.

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

  1. Claim Viability: A dispositive threshold issue for the ’662 patent is a question of legal viability: can Plaintiffs maintain an infringement action on dependent claims when the single independent claim on which they are based has been statutorily disclaimed?
  2. Infringement of a System Claim: For the ’667 patent and other network-side claims, a core issue will be one of divided infringement: can Plaintiffs prove that BlackBerry, as a manufacturer of end-user devices, directly infringes claims directed to a "telecommunications network" system, or will the claims be found to require control over network infrastructure that BlackBerry does not possess?
  3. Evidentiary Sufficiency: Given the complaint's general allegations, a central evidentiary question for all asserted patents will be one of technical proof: can Plaintiffs produce sufficient evidence to map the actual operation of the accused BlackBerry devices to the specific technical limitations recited in the asserted claims?