DCT

1:17-cv-01446

Maxell Ltd v. BlackBerry Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-01446, D. Del., 10/13/2017
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant BlackBerry Corporation is a Delaware corporation, and Defendant BlackBerry Ltd. is not a resident of the United States and may be sued in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s smartphones and tablets infringe seven patents related to mobile device technologies, including walking navigation, user interface design for multimedia playback, cellular power control, and digital camera functionalities.
  • Technical Context: The patents address various usability and performance challenges in mobile devices, a market characterized by rapid technological evolution and intense competition over user experience and hardware efficiency.
  • Key Procedural History: The complaint alleges that on May 4, 2017, a predecessor-in-interest (Hitachi) contacted BlackBerry to discuss potential licensing of patents including at least one of the patents-in-suit, which may be relevant to the question of pre-suit notice.

Case Timeline

Date Event
1998-11-10 ’334 Patent Priority Date
1999-05-07 ’897 Patent Priority Date
1999-07-12 ’999 Patent Priority Date
2000-01-11 ’616 and ’604 Patents Priority Date
2002-02-27 ’821 Patent Priority Date
2003-06-17 ’999 Patent Issue Date
2004-07-20 ’616 Patent Issue Date
2005-08-30 ’394 Patent Priority Date
2005-12-06 ’334 Patent Issue Date
2007-04-03 ’821 Patent Issue Date
2011-08-09 ’897 Patent Issue Date
2012-05-01 ’394 Patent Issue Date
2015-08-04 ’604 Patent Issue Date
2017-05-04 Hitachi contacts BlackBerry regarding potential licensing of the ’999 Patent
2017-10-13 Complaint Filing Date

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

U.S. Patent No. 6,580,999 - Portable Terminal With the Function of Walking Navigation (issued Jun. 17, 2003)

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of using conventional map services on the small screens of portable devices, particularly for a walking user. Such services often require complex operations like scrolling and scaling, and the map display is not intuitively aligned with the user's direction of travel in the physical world (’999 Patent, col. 2:4-16).
  • The Patented Solution: The invention proposes a simplified navigation interface that compresses location information for display on a narrow screen. It can show the direction and distance to a destination using a simple arrow, which can be oriented to match the user's actual direction of travel. The system is also described as being able to obtain the location of another portable terminal to provide route guidance between the two users (’999 Patent, Abstract; col. 3:12-21).
  • Technical Importance: The technology aimed to improve the usability of pedestrian navigation on early-generation mobile devices that had significant constraints on screen size, input methods, and processing power (’999 Patent, col. 2:50-57).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-6 (Compl. ¶19, 21).
  • Independent Claim 1 requires:
    • A device for getting location information denoting a present place of the portable terminal.
    • A device for getting direction information denoting an orientation of the portable terminal.
    • A device for getting the location information of another portable terminal.
    • Wherein a direction from the present place to the location of the other portable terminal is displayed with distance information to supply route guidance.

U.S. Patent No. 8,170,394 - Multimedia Player Displaying Operation Panel Depending on Contents (issued May 1, 2012)

The Invention Explained

  • Problem Addressed: The patent notes that reproducing different types of digital content—such as linear content (e.g., video) and interactive content (e.g., data broadcasting)—requires different sets of user controls. Displaying all possible controls simultaneously clutters the interface and can be confusing for the user (’394 Patent, col. 1:15-31).
  • The Patented Solution: The invention describes a multimedia player that automatically and exclusively displays one of two distinct operation panels: a "linear content operation panel" for functions like play and stop, or an "interactive content operation panel" for functions like navigating interactive menus. Only one panel is displayed at a time, simplifying the user interface based on the context of the content being played (’394 Patent, Abstract; col. 2:9-14).
  • Technical Importance: This approach sought to create a more intuitive and less cluttered graphical user interface for multimedia devices by contextually presenting only the relevant controls to the user (’394 Patent, col. 2:40-44).

Key Claims at a Glance

  • The complaint asserts independent claim 4 and dependent claims 2, 5, and 7 (Compl. ¶32, 35).
  • Independent Claim 4 requires:
    • An input unit, a reproducer, and an output unit for digital content.
    • A display that shows the outputted content together with an alternative display of either a linear content operation panel or an interactive content operation panel.
    • The buttons of the linear panel are mutually different from the buttons of the interactive panel.
    • A controller that ensures only one of the two panels is displayed exclusively at any given time.

U.S. Patent No. 6,973,334 - "Cellular Telephone" (issued Dec. 6, 2005)

  • Patent Identification: U.S. Patent No. 6,973,334, "Cellular Telephone," issued Dec. 6, 2005 (Compl. ¶44).
  • Technology Synopsis: This patent addresses power control in a cellular telephone, particularly for CDMA systems. It describes a controller that adjusts the gain of a variable amplitude amplifier and the bias condition of a power amplifier based on the signal strength received from a cell-site station, aiming to reduce current consumption and prolong battery life (’334 Patent, Abstract).
  • Asserted Claims: At least claims 1 and 4 (Compl. ¶46).
  • Accused Features: The BlackBerry PRIV is accused of infringing by implementing UMTS/3GPP standards for receiving communication and power control signals and adjusting transmitter power accordingly (Compl. ¶47-50).

U.S. Patent No. 7,199,821 - "Imaging Apparatus and Method for Controlling White Balance" (issued Apr. 3, 2007)

  • Patent Identification: U.S. Patent No. 7,199,821, "Imaging Apparatus and Method for Controlling White Balance," issued Apr. 3, 2007 (Compl. ¶60).
  • Technology Synopsis: The patent describes a method for controlling white balance in a digital camera. The system uses information about object distance, zoom value, and object brightness to set a threshold, which is then used to adjust the white balance control amount, aiming to improve color accuracy under various photographic conditions (’821 Patent, Abstract).
  • Asserted Claims: At least claim 7 (Compl. ¶62).
  • Accused Features: The BlackBerry DTEK60 is accused of infringing by using its auto-focus, zoom, brightness measurement, and white balance functions to control white balance based on distance, zoom, and brightness values (Compl. ¶63).

U.S. Patent No. 6,765,616 - "Electric Camera" (issued Jul. 20, 2004)

  • Patent Identification: U.S. Patent No. 6,765,616, "Electric Camera," issued Jul. 20, 2004 (Compl. ¶73).
  • Technology Synopsis: This patent relates to an electric camera with a high-resolution image sensor. The invention describes a method of vertically mixing or "culling" signal charges from a subset of pixels to produce an output signal that matches the number of scanning lines of a display. This allows a high-pixel-count sensor to be used for both high-resolution still images and standard-resolution video monitoring (’616 Patent, Abstract).
  • Asserted Claims: At least claim 13 (Compl. ¶75).
  • Accused Features: The BlackBerry DTEK60 is accused of infringing by using its 21MP camera sensor and a driver that allegedly mixes or culls pixel signals to display images, including using different mixing/culling values (K1 and K2) for different zoom levels (Compl. ¶76-80).

U.S. Patent No. 7,995,897 - "Video Recording and Reproducing Method, and Video Reproducing Apparatus and Method" (issued Aug. 9, 2011)

  • Patent Identification: U.S. Patent No. 7,995,897, "Video Recording and Reproducing Method, and Video Reproducing Apparatus and Method," issued Aug. 9, 2011 (Compl. ¶90).
  • Technology Synopsis: The patent addresses a method for recording both moving pictures (e.g., MPEG) and still pictures (e.g., JPEG) on a recording medium. It describes recording still pictures using two different encoding methods, one of which is the same as the moving picture encoding method, to ensure that devices capable of decoding only the moving pictures can still decode and display some of the still pictures (’897 Patent, Abstract).
  • Asserted Claims: At least claims 4-6 and 10-12 (Compl. ¶92).
  • Accused Features: The BlackBerry Leap is accused of infringing by being capable of reproducing video using one encoding method (e.g., MPEG-4) and pictures by a second method (e.g., JPEG), and producing thumbnails with a smaller number of pixels (Compl. ¶93).

U.S. Patent No. 9,100,604 - "Electric Camera" (issued Aug. 4, 2015)

  • Patent Identification: U.S. Patent No. 9,100,604, "Electric Camera," issued Aug. 4, 2015 (Compl. ¶103).
  • Technology Synopsis: This patent is related to the ’616 Patent and further describes a digital zoom function in an electric camera. The zoom effect is achieved by discontinuously changing the quantity (K) of vertical pixel lines that are mixed or culled according to the desired magnification factor, while continuously changing the area of the imaging device from which signals are read (’604 Patent, Abstract).
  • Asserted Claims: At least claim 4 (Compl. ¶105).
  • Accused Features: The BlackBerry DTEK60 is accused of infringing through its digital zoom functionality, which allegedly generates image signals by mixing or culling vertical pixel lines at intervals of a quantity K from different areas of the imaging device (Compl. ¶108-109).

III. The Accused Instrumentality

Product Identification

  • The complaint names a wide range of BlackBerry smartphones and tablets, including models from the Bold, Curve, KeyOne, PRIV, DTEK, Leap, and Passport series, as the accused products (Compl. ¶22, 36, 52, 65, 82, 95, 111).

Functionality and Market Context

  • The accused instrumentalities are mobile communication devices that incorporate functionalities central to the modern smartphone market, including GPS-based mapping and navigation, multimedia playback, cellular communication, and high-resolution digital photography (Compl. ¶20, 33-34, 47-50, 63). The complaint alleges that these features, implemented through a combination of hardware and software (such as GPS mapping applications), infringe Maxell’s patents (Compl. ¶20). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

U.S. Patent No. 6,580,999 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a device for getting location information denoting a present place of said portable terminal The accused products have GPS functionality and show the present place on a map (e.g., as a dot or arrow). ¶20 col. 3:10-14
a device for getting direction information denoting an orientation of said portable terminal The accused products include a compass and/or gyroscope to provide direction information denoting an orientation. ¶20 col. 3:19-21
a device for getting the location information of another portable terminal The accused products include components for obtaining another terminal's location over a network, such as by a user sharing a destination address or current location. ¶20 col. 3:30-33
a direction from said present place to the location of said another portable terminal is displayed with the distance information...to supply route guidance... The mapping applications on the accused products provide route guidance information as walking navigation with distance information. ¶20 col. 10:42-50

Identified Points of Contention

  • Scope Questions: A potential point of contention may be the scope of "getting the location information of another portable terminal." The complaint alleges this is met when a user "can share his/her destination address or current location to a second user" (Compl. ¶20). The defense may argue that this describes sending location data, whereas the claim requires getting or acquiring the other terminal's location.
  • Technical Questions: The patent specification emphasizes a simplified user interface, such as a single arrow, for small screens (’999 Patent, Abstract). The complaint alleges infringement through full-featured third-party mapping applications (Compl. ¶20). This raises the question of whether the complex graphical display of a modern mapping app performs the function of supplying "route guidance information" in the manner contemplated by the patent.

U.S. Patent No. 8,170,394 Infringement Allegations

Claim Element (from Independent Claim 4) Alleged Infringing Functionality Complaint Citation Patent Citation
an input unit which inputs digital content The DTEK60 receives digital content via 4G LTE/WiFi signals, memory, or a camera. ¶33 col. 4:33-39
a reproducer which reproduces the inputted digital content The DTEK60 includes a processor programmed to reproduce video and music content. ¶33 col. 1:15-18
an output unit which outputs the reproduced digital content The DTEK60 outputs reproduced content to a display or speakers. ¶33 col. 1:15-18
a display which displays the outputted digital content together with an alternative display of either of a linear content operation panel...or an interactive content operation panel The DTEK60 displays a linear content operation panel for linear reproduction functions and an interactive content operation panel for interactive functions. ¶34 col. 3:40-49
wherein buttons of the linear content operation panel are mutually different from buttons of the interactive content operation panel The complaint alleges the linear and interactive panels are "distinct panels from each other and no disabling of buttons is required to generate them." ¶34 col. 3:40-49
a controller which controls the alternative display...wherein only one of the linear content operation panel or the interactive content operation panel is displayed exclusively at any given time The complaint alleges that "Only one of the linear content operation panel or the interactive content operation panel is displayed at a time with the outputted digital content together in one screen." ¶34 col. 2:9-14

Identified Points of Contention

  • Scope Questions: The definitions of "linear content operation panel" and "interactive content operation panel" will be critical. The patent provides specific examples related to broadcast television (video vs. data broadcasting) (’394 Patent, col. 1:23-31). Whether a modern smartphone's general-purpose UI for media playback and application use fits these definitions will likely be disputed.
  • Technical Questions: The complaint alleges the panels are "distinct" and generated without "disabling of buttons" (Compl. ¶34). A key factual question is whether the accused software generates two fundamentally separate UI objects, or if it merely alters the state of a single, persistent UI by hiding or showing certain control elements. The latter may not meet the "distinct panels" limitation.

V. Key Claim Terms for Construction

'999 Patent

  • The Term: "a device for getting the location information of another portable terminal"
  • Context and Importance: This term's construction is central to whether the accused functionality meets the claim. Practitioners may focus on whether "getting" requires an active, automated data pull from the other device or if it can be satisfied by passively receiving a location that another user has manually sent, as the complaint's allegations suggest (Compl. ¶20).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The plain meaning of "getting" is broad. The specification mentions data communication functions generally, which could encompass various methods of receiving data (’999 Patent, col. 12:59-64).
    • Evidence for a Narrower Interpretation: The patent's description of a "Meeting by Appointment Guidance Service" depicts two terminals exchanging data to confirm each other's present place, which suggests an automated, reciprocal process rather than a one-way, user-initiated share of a static address (’999 Patent, col. 8:6-23; Fig. 5).

'394 Patent

  • The Term: "linear content operation panel" and "interactive content operation panel"
  • Context and Importance: Infringement hinges on whether the accused device's UI can be categorized as having these two specific, mutually exclusive panel types. The case may depend on whether these terms are limited to the patent's examples or can be applied more broadly to a general-purpose smartphone UI.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is general. The patent's objective is to simplify user interfaces, a principle that could be argued to apply broadly to different UI implementations that switch contextually (’394 Patent, col. 2:40-44).
    • Evidence for a Narrower Interpretation: The specification consistently associates "linear content" with video/audio and "interactive content" with data broadcasting, suggesting the terms may be limited to that context (’394 Patent, col. 1:23-31). The use of "distinct panels" could also imply structurally separate UI components, not just different visual states of the same component (’394 Patent, col. 10:34-35).

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges induced infringement, stating that BlackBerry's user guides and instructions direct customers to use the accused products in an infringing manner (e.g., Compl. ¶23, 37, 53). It also alleges contributory infringement, asserting that specific components (e.g., GPS mapping applications, UI control panels) are material to the inventions, not staple articles of commerce, and are known by BlackBerry to be especially adapted for infringement (e.g., Compl. ¶24-25, 38-39).
  • Willful Infringement: Willfulness is alleged for all asserted patents. For the ’999 Patent, the allegation is based on pre-suit knowledge stemming from a May 4, 2017 communication from Hitachi to BlackBerry regarding potential licensing (Compl. ¶26-27). For the remaining six patents, the willfulness allegations are based on knowledge acquired no later than the service of the complaint itself (e.g., Compl. ¶40-41, 56-57).

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

  • A core issue will be one of definitional scope: can claim terms rooted in the context of earlier mobile technology—such as a "device for getting" another's location or distinct "linear" versus "interactive" panels for broadcast media—be construed to cover the integrated, multi-functional, and often third-party software-driven features of a modern smartphone?
  • A key evidentiary question will be one of technical operation: does the accused user interface software actually generate "distinct panels" as required by the ’394 Patent, or does it operate by modifying a single UI framework? Similarly, what is the precise mechanism by which location information is exchanged between users in the accused mapping applications to determine if it constitutes "getting" under the ’999 Patent?
  • A central issue for damages will be willfulness, which may depend on the court's view of the alleged pre-suit notice for the ’999 Patent and on BlackBerry's conduct with respect to all seven patents after the complaint was filed.