DCT

1:17-cv-00082

3G Licensing SA v. BlackBerry Ltd

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Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00082, D. Del., 05/30/2017
  • Venue Allegations: Plaintiffs allege venue is proper in the District of Delaware because Defendants place infringing products into the stream of commerce through established distribution channels with the knowledge that they will be sold in Delaware, and because they derive substantial revenue from such sales.
  • Core Dispute: Plaintiffs allege that Defendant’s smartphones and other mobile telecommunication devices infringe five patents related to fundamental wireless technologies, including data error checking, time-based network access management, multi-antenna (MIMO) transmission, mixed-media call handling, and subscriber identity module (SIM) data storage.
  • Technical Context: The patents-in-suit relate to core functional aspects of modern mobile telecommunications, particularly technologies implemented in the 3G, 4G LTE, and UMTS standards.
  • Key Procedural History: The complaint alleges an extensive pre-suit history of licensing negotiations, including providing BlackBerry with notice of infringement of the ’662 patent as early as October 2014. Additionally, two of the asserted patents (’662 and ’667) were previously litigated against Samsung Electronics in a case that was dismissed. The complaint also notes that the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review against claims 3 and 4 of the ’662 patent, finding no reasonable likelihood of invalidity based on the arguments presented in that proceeding.

Case Timeline

Date Event
1995-06-26 U.S. Patent No. 6,212,662 Priority Date
1997-02-11 U.S. Patent No. 6,856,818 Priority Date
2000-11-01 U.S. Patent No. 7,995,091 Priority Date
2001-04-03 U.S. Patent No. 6,212,662 Issue Date
2003-12-04 U.S. Patent No. 7,933,564 Priority Date
2005-02-15 U.S. Patent No. 6,856,818 Issue Date
2008-02-29 U.S. Patent No. 9,014,667 Priority Date
2011-04-26 U.S. Patent No. 7,933,564 Issue Date
2011-08-09 U.S. Patent No. 7,995,091 Issue Date
2014-10-07 BlackBerry receives notice of alleged ’662 patent infringement
2015-04-21 U.S. Patent No. 9,014,667 Issue Date
2015-06-01 BlackBerry receives notice of alleged ’818 and ’091 patent infringement
2015-10-28 BlackBerry receives notice of alleged ’667 patent infringement
2016-06-06 BlackBerry receives notice of alleged ’564 patent infringement
2016-07-08 PTAB declines to institute inter partes review on claims 3-4 of the ’662 patent
2016-09-21 Prior litigation involving ’662 and ’667 patents against Samsung is dismissed
2017-01-30 Original Complaint filed in the instant action
2017-05-30 Second Amended Complaint Filing Date

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

The Invention Explained

  • Problem Addressed: The patent addresses the problem of "systematic errors" in data transmission—repetitive errors caused by factors like signal interference—which may not be detected by conventional, fixed error-checking functions. In systems using data compression, a single undetected error can corrupt all subsequent data, rendering it unusable (’662 Patent, col. 1:47-59, col. 2:1-15).
  • The Patented Solution: The invention proposes a variable or "time-dependent" error checking function. Instead of applying a fixed algorithm to the original data to generate check data (e.g., parity bits), the invention first varies the original data itself, for example by permuting the bits or adding a pseudo-random number, and then generates the check data. This constant variation ensures that a systematic transmission error is unlikely to repeatedly produce an erroneous data block that coincidentally passes the error check (’662 Patent, Abstract; col. 2:42-48).
  • Technical Importance: This method increases the reliability of data transmission, a critical factor for the performance of mobile networks that rely heavily on data compression to manage limited bandwidth (Compl. ¶50-51).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-4 (Compl. ¶58).
  • The essential elements of independent claim 1 are:
    • A device for producing error checking on original data provided in blocks.
    • A generating device configured to generate check data.
    • A varying device configured to vary the original data before it is supplied to the generating device.
    • The varying device includes a "permutating device" that performs a "permutation of bit position" on at least some bits within the data blocks "without reordering any blocks of original data."
  • The complaint reserves the right to assert dependent claims, which add limitations related to modifying the permutation over time and based on the original data itself (Compl. ¶¶62-64).

U.S. Patent No. 9,014,667 - Telecommunications Network and Method for Time-Based Network Access

The Invention Explained

  • Problem Addressed: The patent addresses network congestion caused by the proliferation of machine-to-machine (M2M) devices (e.g., smart meters), which may involve thousands of devices attempting to access network resources, often for non-urgent data transfers. This can strain network capacity, particularly during peak usage hours (’667 Patent, col. 1:23-41).
  • The Patented Solution: The invention describes a network that can manage access for terminals based on time. The network provides a terminal with a "deny access time interval," during which connection requests from that terminal will be refused. This interval is dynamically adapted by the network based on monitored load conditions. This allows the network to instruct M2M devices to "back off" during peak hours and attempt connection later, preserving resources for higher-priority traffic (’667 Patent, Abstract; col. 2:3-12).
  • Technical Importance: This technology provides network operators with a tool to manage the massive and growing traffic from Internet of Things (IoT) and M2M devices, ensuring network stability and quality of service (Compl. ¶83).

Key Claims at a Glance

  • The complaint asserts independent claim 35 (Compl. ¶85).
  • The essential elements of independent claim 35 are:
    • A terminal for use in a telecommunications network.
    • A message receiver configured to receive a message from the network containing a "deny access time interval."
    • The time period of the interval is adapted by the network based on monitored network load.
    • A processor executes an "access request operation" to transmit requests in accordance with the deny access time interval.
    • The terminal executes M2M applications and is denied network access 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

Technology Synopsis

The patent describes a method for Multiple-Input-Multiple-Output (MIMO) transmission. The invention linearly precodes a signal by performing a matrix product of a source data matrix and a linear precoding matrix. The resulting precoded vectors, which correspond to the columns of the precoded matrix, are then transmitted successively, with the symbols of each vector distributed across the multiple transmit antennas. This approach is designed to increase the capacity and diversity of the wireless channel (’564 Patent, Abstract; Compl. ¶110).

Asserted Claims

Independent method claim 1 and independent device claim 13 (Compl. ¶108).

Accused Features

BlackBerry devices, such as the DTEK60, that implement MIMO antennas for transmission and reception over LTE networks, allegedly performing the claimed precoding and sending of precoded vectors (Compl. ¶¶109, 111, 113).

U.S. Patent No. 7,995,091 - Mixed Media Telecommunication Call Manager

Technology Synopsis

The patent addresses the problem of maintaining call continuity when moving between networks with different capabilities. It describes a videophone that, upon receiving an indication that its current mixed-media call (e.g., video on an LTE network) is being discontinued, is configured to automatically initiate a second, audio-only call (e.g., via circuit-switched fallback to a 3G network) to the same remote videophone, thus preventing the call from dropping entirely (’091 Patent, Abstract; Compl. ¶136).

Asserted Claims

Independent device claim 1 and independent method claim 8 (Compl. ¶134).

Accused Features

BlackBerry devices, such as the DTEK60, that are configured to perform videocalls over LTE and allegedly implement the claimed circuit-switched fallback mechanism upon receiving a "CS Service Notification" from the network's Mobility Management Entity (MME) (Compl. ¶¶137, 139).

U.S. Patent No. 6,856,818 - Data store for mobile radio station

Technology Synopsis

The patent discloses a "modified subscriber data storage module," such as a SIM or UICC card, that can store multiple distinct data records corresponding to a single standard data record address. The module's internal processor selects which of the multiple records to return based on the "current operational condition of the mobile station" (e.g., which of two phone lines is active), independently of the command sent by the phone. This allows for enhanced features like dual-line support to be implemented on the SIM card without requiring modification to the phone's hardware or software (’818 Patent, Abstract; Compl. ¶162).

Asserted Claims

Independent claim 18 (Compl. ¶160).

Accused Features

BlackBerry devices, such as the DTEK60, operating with a USIM/UICC card. The infringement theory alleges that the device and card together comprise the claimed mobile station, and that the card's selection of an "Application Data File (ADF) at the initialization phase" based on default operating conditions constitutes the claimed selection of a data record based on an operational condition (Compl. ¶¶163, 50).

The Accused Instrumentality

Product Identification

  • The complaint accuses all BlackBerry smartphones and other mobile telecommunication devices configured to operate on LTE, UMTS, or cdma2000 data networks (Compl. ¶58, ¶85, ¶108, ¶134, ¶160). Specific exemplar products identified include the BlackBerry PRIV and the BlackBerry DTEK60 (Compl. ¶58, ¶85).

Functionality and Market Context

  • The accused functionality relates to core operations required for modern mobile communications. The complaint alleges that to be interoperable with standard networks, the accused products must implement (1) data permutation and encoding for error checking; (2) back-off timer mechanisms for network congestion management; (3) MIMO precoding for multi-antenna transmission; (4) circuit-switched fallback for videocalls; and (5) selection of subscriber profiles on a UICC card (Compl. ¶76, ¶88, ¶111, ¶137, ¶163). The complaint asserts these products are part of a major global market for mobile technology in which BlackBerry competes (Compl. ¶1-2, ¶54).

No probative visual evidence provided in complaint.

Analysis of Infringement Allegations

'662 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a generating device configured to generate check data The BlackBerry PRIV includes an encoder configured to generate supplementary data for use in error checking. ¶61 col. 7:7-8
a varying device configured to vary original data prior to supplying said original data to the generating device as varied data The BlackBerry PRIV includes a varying device, such as an interleaver, which is configured to vary the original data it receives before supplying it to the generating device (encoder). ¶61 col. 7:9-11
wherein said varying device includes a permutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data The device's interleaver is configured to reorder the bit position of at least some of the bits of the original data provided to it without reordering any of the blocks of that original data. ¶61 col. 7:12-16

Identified Points of Contention

  • Scope Questions: The complaint’s theory hinges on an "interleaver" present in the accused devices qualifying as the claimed "varying device" that includes a "permutating device" (Compl. ¶61). A potential dispute may arise over whether a standard interleaver, often used for distributing burst errors, performs the specific function claimed by the patent—varying the data to create a time-dependent check function designed to defeat systematic errors.
  • Technical Questions: The complaint alleges that the accused devices perform bit permutation "without reordering any of the blocks of original data," as required by the claim (Compl. ¶61). A central technical question will be what evidence supports this specific operational detail, as the complaint primarily relies on the devices' alleged compliance with general communication standards rather than detailing the specific operation of the accused interleavers.

'667 Infringement Allegations

Claim Element (from Independent Claim 35) Alleged Infringing Functionality Complaint Citation Patent Citation
a message receiver configured for receiving a message from the telecommunications network, the message comprising information relating to a deny access time interval... The DTEK60's modem and/or processor receives a "reject" message from the network that includes a back-off timer value (e.g., T3346), which indicates the time period during which network access is denied. ¶88 col. 2:5-9
wherein the time period is adapted by the telecommunications network depending on a monitored network load The duration of the back-off timer is adapted by the network based on monitored network load, for example, through the MME congestion control mechanism. ¶88 col. 2:9-11
...an access request operation for transmitting an access request to the telecommunications network in accordance with the deny access time interval... The DTEK60's processor is configured to not re-send a resource request until the received back-off timer period expires. ¶88 col. 2:14-16
wherein machine-to-machine applications are executed... and wherein the terminal for the machine-to-machine applications are denied access to the telecommunications network during peak load time intervals... The DTEK60 executes M2M applications, such as requesting mail or app updates, and during peak load times, it receives a "Reject" message with a back-off timer, denying the resource request. ¶88 col. 2:18-22

Identified Points of Contention

  • Scope Questions: A central issue may be the definition of "machine-to-machine applications." The complaint alleges that background smartphone functions like checking for email or app updates fall within this term (Compl. ¶88). This raises the question of whether the patent, which discusses applications like remote meter reading, can be construed to cover user-centric background processes on a general-purpose smartphone.
  • Technical Questions: The claim requires that the terminal is denied access "during peak load time intervals." The complaint alleges that the accused "Reject" message with a back-off timer occurs "during such peak load time intervals" (Compl. ¶88). A key technical question will be whether the accused functionality is specifically tied to pre-defined "peak load time intervals" as the claim suggests, or if it is a more general congestion response that can occur at any time the network experiences high traffic.

Key Claim Terms for Construction

For the ’662 Patent

  • The Term: "varying device"
  • Context and Importance: This term is the central inventive concept of the ’662 Patent. Infringement depends on whether a standard component like an "interleaver" (Compl. ¶61) meets this limitation. Practitioners may focus on this term because the defense may argue that a standard interleaver's primary purpose is burst error mitigation, not creating the time-varying check function described in the patent to defeat systematic errors.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses multiple embodiments for varying the data, including adding a (pseudo) random number or performing permutations, suggesting the term is not limited to a single structure or method ('662 Patent, col. 4:11-23, col. 5:58-61).
    • Evidence for a Narrower Interpretation: The patent's background is narrowly focused on the problem of "systematic errors" that evade "normal (fixed) checking function[s]" ('662 Patent, col. 1:47-59). This may support an interpretation that a "varying device" must be a component whose purpose is to implement a "time-dependent checking function" to solve this specific problem, not a generic component that happens to reorder bits for other reasons.

For the ’667 Patent

  • The Term: "machine-to-machine applications"
  • Context and Importance: The infringement case for the ’667 Patent rests on applying this term to common smartphone background tasks like checking email and app updates (Compl. ¶88, ¶93). The patent's scope will be significantly impacted by this term's construction.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not provide an explicit, limiting definition of the term, which could allow it to encompass any automated communication between a device and a network server that does not require direct, real-time user interaction.
    • Evidence for a Narrower Interpretation: The Background of the Invention section provides specific context, describing M2M applications as involving "hundreds or thousands of devices that only rarely require access to a telecommunications network," and gives the "electronic reading of e.g. electricity meters" as an example (’667 Patent, col. 1:53-60). This suggests the term may be limited to autonomous, low-priority, IoT-style devices rather than background processes on a primary user communication device.

Other Allegations

  • Indirect Infringement: For all five asserted patents, the complaint alleges induced infringement under 35 U.S.C. § 271(b). The allegations are based on BlackBerry's creation and dissemination of promotional materials, user manuals, and technical support that allegedly instruct and encourage end users to operate the accused products in an infringing manner (e.g., connecting to an LTE network, using video calling, using M2M applications) (Compl. ¶¶67-69, 91-93, 118-120, 144-146, 166-168).
  • Willful Infringement: The complaint alleges willful infringement for all five patents. The basis for willfulness is alleged pre-suit knowledge. The complaint details an extensive history of communications, including letters, emails, and phone calls beginning as early as October 7, 2014, in which Plaintiffs allegedly notified BlackBerry of the patents, provided claim charts demonstrating infringement, and engaged in licensing discussions that were ultimately unsuccessful (Compl. ¶¶21-35, 37-45, 77, 101, 128, 154, 176).

Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of standards implementation versus affirmative infringement: The complaint’s theories for several patents rest on the allegation that compliance with industry standards like LTE compels the use of the patented technologies. A key question for the court will be whether implementing a feature required by a standard constitutes infringement of a patent, particularly where the defendant may argue it had no non-infringing alternative to participate in the market.
  • Another key issue will be one of definitional scope: The case may turn on whether claim terms rooted in a specific technical context can be construed to cover more general-purpose functionalities. For example, can the term "machine-to-machine applications," described in the ’667 Patent in the context of utility meters, be read to cover routine background data requests on a user's smartphone? Similarly, does a standard "interleaver" meet the functional requirements of the "varying device" claimed in the ’662 Patent?
  • A third core question will relate to knowledge and intent: Given the extensive pre-suit notice alleged in the complaint, which includes the provision of claim charts and invitations to license, the court will likely need to examine the evidence supporting BlackBerry's alleged state of mind. This will be critical not only for the question of willfulness but also for the claims of induced infringement, which require a showing of intent.