DCT

1:10-cv-00457

Motorola Inc v. Research Motion Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:10-cv-00457, N.D. Ill., 01/22/2010
  • Venue Allegations: Venue is alleged to be proper based on Defendants conducting regular business and committing acts of patent infringement within the Northern District of Illinois.
  • Core Dispute: Plaintiff alleges that Defendant’s BlackBerry handheld devices, associated battery packs, and server software infringe four patents related to cryptographic data protection, battery voltage protection, user interface methodologies, and wireless data delivery control.
  • Technical Context: The lawsuit concerns foundational technologies in the smartphone market, including data security for wireless networks, power management for portable devices, user interface design for limited-keypad devices, and network-efficient data delivery.
  • Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or licensing history between the parties related to the patents-in-suit.

Case Timeline

Date Event
1993-08-26 U.S. Patent No. 5,319,712 Priority Date
1994-06-07 U.S. Patent No. 5,319,712 Issues
1995-02-03 U.S. Patent No. 5,569,550 Priority Date
1996-10-29 U.S. Patent No. 5,569,550 Issues
1997-08-04 U.S. Patent No. 6,232,970 Priority Date
1998-06-12 U.S. Patent No. 6,272,333 Priority Date
2001-05-15 U.S. Patent No. 6,232,970 Issues
2001-08-07 U.S. Patent No. 6,272,333 Issues
2010-01-22 Complaint Filed

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

U.S. Patent No. 5,319,712

  • Patent Identification: U.S. Patent No. 5,319,712, "Methods and Apparatus for Providing Cryptographic Protection of a Data Stream in a Communication System," issued June 7, 1994 (Compl. ¶12).
  • The Invention Explained:
    • Problem Addressed: The patent describes the problem of securing data in packet-based communication systems where packets may be lost or arrive out of order, which can disrupt conventional encryption methods and cause cascading decryption failures (’712 Patent, col. 2:3-13). Encrypting at the network layer (Layer 3) is noted as particularly problematic, as the loss of a single packet could render all subsequent packets indecipherable (’712 Patent, col. 4:39-44).
    • The Patented Solution: The invention proposes an encryption and decryption method at the data link layer (Layer 2). It involves assigning a sequence number and an "overflow" number to each data packet, and then using these numbers to encrypt each packet individually (’712 Patent, Abstract). As illustrated in the patent’s FIG. 1, this allows each packet to be decrypted independently upon receipt, meaning the loss or delay of one packet does not affect the successful decryption of others that are received correctly (’712 Patent, FIG. 1; col. 4:44-49).
    • Technical Importance: This approach provided a more robust method for securing data transmissions over unreliable wireless networks by compartmentalizing the effect of packet loss, a common issue in early cellular data systems (’712 Patent, col. 4:35-49).
  • Key Claims at a Glance:
    • The complaint asserts independent claims 6 (a transmitting unit) and 17 (a method) (Compl. ¶16).
    • Independent Claim 6 requires, in part:
      • "assigning means" for assigning a packet sequence number to a packet.
      • "updating means" for updating a transmit overflow sequence number.
      • "encrypting means" for encrypting the packet as a function of both the packet sequence number and the transmit overflow sequence number.
    • Independent Claim 17 requires, in part, the steps of:
      • assigning a packet sequence number to a packet.
      • updating a transmit overflow sequence number.
      • encrypting the packet as a function of the sequence and overflow numbers.
    • The complaint reserves the right to assert associated dependent claims 8–10 (Compl. ¶16).

U.S. Patent No. 5,569,550

  • Patent Identification: U.S. Patent No. 5,569,550, "Battery Pack Having Under-Voltage and Over-Voltage Protection," issued October 29, 1996 (Compl. ¶13).
  • The Invention Explained:
    • Problem Addressed: The patent identifies the challenge of protecting modern rechargeable batteries, such as lithium-ion, from damage caused by either being discharged too deeply (under-voltage) or charged too much (over-voltage) (’550 Patent, col. 1:25-45). Both conditions can shorten the battery's lifespan and, in extreme cases, create a safety risk (’550 Patent, col. 1:33-36).
    • The Patented Solution: The invention describes a battery pack containing two distinct "one way blocking switch means," each controlled by the battery's voltage (’550 Patent, Abstract). An under-voltage switch prevents the battery from discharging further once its voltage drops to a predetermined low level, but still permits current to flow in for recharging (’550 Patent, col. 2:50-58). A separate over-voltage switch prevents the battery from accepting more charge once its voltage reaches a predetermined high level, but still allows current to flow out to power a device (’550 Patent, col. 3:15-24). This dual-switch architecture, shown in FIG. 2, provides comprehensive protection for both charging and discharging cycles.
    • Technical Importance: This design offered a simple yet robust circuit-level solution to improve the safety and operational life of rechargeable batteries in the growing market for portable electronics (’550 Patent, col. 2:10-15).
  • Key Claims at a Glance:
    • The complaint asserts independent claims 1 (a battery pack) and 12 (a battery pack with distinct under- and over-voltage circuits) (Compl. ¶21).
    • Independent Claim 1 requires, in part:
      • at least one battery cell.
      • "one way blocking switch means" for blocking a recharge current when in an off state.
      • "voltage controlled switch means" responsive to the battery voltage for generating a signal to control the switch.
    • Independent Claim 12 requires, in part:
      • an "under-voltage protection circuit" with a first one-way blocking switch that blocks discharge current.
      • an "over-voltage protection circuit" with a second one-way blocking switch that blocks recharge current.
    • The complaint reserves the right to assert associated dependent claims 3–5, 7, 9, 10, and 13–15 (Compl. ¶21).

Multi-Patent Capsule: U.S. Patent No. 6,232,970

  • Patent Identification: U.S. Patent No. 6,232,970, "User Interface Methodology Supporting Light Data Entry for Microprocessor Device Having Limited User Input," issued May 15, 2001 (Compl. ¶14).
  • Technology Synopsis: The patent addresses the difficulty of entering data on devices with limited input capabilities, such as a small set of physical keys (’970 Patent, col. 2:1-14). The proposed solution is a user interface with a "super-key" feature that presents context-sensitive menus and adaptive lists to anticipate the user's intended action, thereby guiding the user through tasks and minimizing the need for manual character-by-character input (’970 Patent, Abstract).
  • Asserted Claims: Independent claim 10 (Compl. ¶25).
  • Accused Features: The complaint accuses BlackBerry handheld devices and associated software of infringing by incorporating the claimed user interface methods (Compl. ¶25-¶26).

Multi-Patent Capsule: U.S. Patent No. 6,272,333

  • Patent Identification: U.S. Patent No. 6,272,333, "Method and Apparatus in a Wireless Communication System for Controlling a Delivery of Data," issued August 7, 2001 (Compl. ¶15).
  • Technology Synopsis: The patent describes a problem in wireless systems where sending data to a device that lacks the necessary software to process it is inefficient and wastes network resources (’333 Patent, col. 1:20-30). The invention solves this by having the wireless system's fixed infrastructure maintain a registry of the software applications and versions available on each subscriber unit. The system checks this registry before transmission and sends the data only if it confirms the target device has a compatible application (’333 Patent, Abstract).
  • Asserted Claims: Independent claims 1, 7, and 12 (Compl. ¶30).
  • Accused Features: The complaint accuses BlackBerry handheld devices and the BlackBerry Enterprise Server ("BES") software of infringement, alleging they collectively operate as a system that controls data delivery based on the capabilities of the recipient device (Compl. ¶30-¶31).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies a broad range of products, including numerous models of BlackBerry wireless handheld devices (e.g., Pearl, Curve, Bold, and Storm series), specific models of battery packs sold for those devices (e.g., C-M2, C-S2, D-X1), and "all versions 4.0 or later of Blackberry Enterprise Server ('BES')" software (Compl. ¶17, ¶22, ¶26, ¶31).
  • Functionality and Market Context: The complaint characterizes the accused products as components of an integrated wireless communication system (Compl. ¶9). The BlackBerry handheld devices are alleged to provide users with mobile access to email and other data, while the BES software is alleged to manage the secure delivery of that data within an enterprise context (Compl. ¶31). The battery packs are identified as the power source for the handheld devices (Compl. ¶22). The infringement allegations target the core functionality of this system, including its methods for data security, power management, user input, and intelligent data routing (Compl. ¶16, ¶21, ¶25, ¶30).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

'712 Patent Infringement Allegations

Claim Element (from Independent Claim 6) Alleged Infringing Functionality Complaint Citation Patent Citation
"assigning means for assigning a packet sequence number to a packet derived from a data stream received from the network layer" The complaint does not detail the specific mechanism but alleges that accused BlackBerry devices and systems perform this function. This functionality would involve segmenting a data stream and applying a sequential identifier to each packet for tracking and reassembly. ¶16-¶17 col. 6:55-61
"updating means, operatively coupled to the assigning means, for updating a transmit overflow sequence number as a function of the packet sequence number" The complaint does not provide sufficient detail for analysis. In the context of the patent, this would involve maintaining a secondary counter that increments when the primary packet sequence number rolls over, creating a larger, unique frame number for encryption. ¶16-¶17 col. 7:1-6
"encrypting means ... for encrypting, prior to communicating the packet and the packet sequence number on the physical layer, the packet as a function of the packet sequence number and the transmit overflow sequence number" The complaint does not provide sufficient detail for analysis. In the context of the patent, this would involve using the combined sequence and overflow numbers as part of an initialization vector or key to encrypt the data within each packet before wireless transmission. ¶16-¶17 col. 7:47-54

'550 Patent Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
"under-voltage protection circuit including a first one-way blocking switch responsive to a first switch signal ... blocking a discharge current through said at least one battery cell when in said off state and always allowing a recharge current" The complaint alleges that accused BlackBerry battery packs and devices contain this circuitry. This would involve a switch, such as a MOSFET, that opens the discharge path to prevent the battery from draining below a critical voltage, while a parallel diode or similar component permits an inbound charging current to bypass the open switch. ¶21-¶22 col. 5:40-65
"over-voltage protection circuit comprising a second one-way blocking switch responsive to a second switch signal ... blocking a recharge current through said at least one battery cell when in said off state and always allowing a discharge current" The complaint alleges that accused BlackBerry battery packs and devices contain this circuitry. This would involve a second switch, oriented in the reverse direction, that opens the charging path to prevent over-voltage when the battery is full, while an associated one-way path allows current to flow out to power the device. ¶21-¶22 col. 6:23-40
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint employs notice-pleading standards and does not provide detailed factual support for its infringement allegations. A central point of contention for all asserted patents will therefore be whether Motorola can produce evidence in discovery that demonstrates, on a technical level, that the accused products practice each limitation of the asserted claims.
    • Technical Questions ('712 Patent): A key technical question is whether RIM's security architecture, which was marketed on its end-to-end encryption, performs the cryptographic functions at the data link layer (Layer 2) as claimed. The defense may argue that its system uses a different, non-infringing architecture (e.g., encryption at the application or transport layer) to achieve a similar result.
    • Scope Questions ('550 Patent): The infringement analysis for the ’550 Patent will raise the question of claim scope, particularly for the means-plus-function term "one way blocking switch means". The dispute may focus on whether the specific circuits used in BlackBerry battery packs are structurally equivalent to the MOSFET-and-diode implementation disclosed in the patent’s specification.

V. Key Claim Terms for Construction

Term from the ’712 Patent: "packet sequence number"

  • The Term: "packet sequence number" (Claim 6)
  • Context and Importance: The entire cryptographic method of the ’712 Patent is built upon the use of this number. Its definition and scope—whether it can be any sequential identifier or is limited to the specific type disclosed—are critical to the infringement analysis. Practitioners may focus on this term because its construction will determine whether a wide or narrow range of packet-tracking schemes falls within the claim's scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the number's function generally, stating the invention can be used with "any automatic repeat request (ARQ) scheme" that uses a "data packet sequence number (SN)" (’712 Patent, col. 4:11-15). This may support a construction covering any sequence number used in a packetized data system.
    • Evidence for a Narrower Interpretation: The patent’s detailed description and Table 1 explicitly describe a "7-bit long ARQ sequence number" occupying "Bits 6 thru 0" of a data frame (’712 Patent, col. 4:62; Table 1). A party could argue that this specific embodiment limits the term's meaning.

Term from the ’550 Patent: "one way blocking switch means"

  • The Term: "one way blocking switch means" (Claim 1)
  • Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112(f). Its scope is not its literal meaning but is restricted to the specific structures disclosed in the patent for performing the stated function (blocking current in one direction) and their structural equivalents. The infringement determination will depend entirely on a comparison between the accused circuitry and the patent's disclosed structure.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Narrower Interpretation: The patent explicitly discloses the structure corresponding to this function as an "N-channel MOSFET" with an "intrinsic diode" connected in parallel (’550 Patent, col. 3:55-col. 4:10). The patent states this specific orientation "allows recharge current to pass through ... regardless of the switch state" while allowing the switch to block discharge current (’550 Patent, col. 4:5-10). The analysis will therefore focus on whether the accused devices use this specific MOSFET-diode structure or a legally recognized equivalent.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges contributory and induced infringement for the patents containing method claims (’712, ’970, and ’333 Patents) (Compl. ¶16, ¶25, ¶30). The factual basis for inducement is the allegation that RIM provides instructional materials, such as user guides, that instruct customers on how to use the BlackBerry products in a manner that practices the claimed methods (Compl. ¶18, ¶27, ¶32).
  • Willful Infringement: The complaint does not use the term "willful." However, it alleges that RIM has had knowledge of its infringement since "at least the date of service of this Complaint" (Compl. ¶19, ¶23, ¶28, ¶33). This allegation forms a basis for potential post-filing willfulness and enhanced damages, but does not allege pre-suit knowledge of the patents.

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

  • Evidentiary Sufficiency: As the complaint provides minimal technical detail, a central issue for the court will be one of evidentiary sufficiency: can Motorola produce technical evidence through discovery to show that the specific operations of the accused BlackBerry systems map to each element of the asserted claims, or will its allegations fail for lack of proof?
  • Architectural Congruence: A key question will be one of architectural congruence: do RIM's systems, particularly for data security ('712 Patent) and management ('333 Patent), achieve their results using the specific Layer 2 and device-registry-based methods claimed by Motorola, or do they employ a fundamentally different and non-infringing technical architecture?
  • Structural Equivalence: For the battery technology ('550 Patent), the dispute will likely turn on a question of structural equivalence: does the specific circuitry within BlackBerry battery packs for voltage protection meet the legal standard for an equivalent to the MOSFET-and-diode structure disclosed in the patent, as required for infringement of the means-plus-function claims?