DCT
6:13-cv-02959
Zipit Wireless Inc v. BlackBerry Ltd
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Zipit Wireless Inc. (Delaware)
- Defendant: BlackBerry Limited (Canada) and BlackBerry Corporation (Delaware)
- Plaintiff’s Counsel: Foster Law Firm, LLC; Smith Risley Tempel & Santos LLC
- Case Identification: 6:13-cv-02959, D.S.C., 10/30/2013
- Venue Allegations: Plaintiff alleges venue is proper in the District of South Carolina because Defendants transact business in the state, maintain a registered agent for service of process, and purposefully direct business activities at residents of the state, from which the cause of action arises.
- Core Dispute: Plaintiff alleges that Defendant’s instant messaging and mobile device management products infringe two patents related to dedicated instant messaging terminals and device-centric control systems.
- Technical Context: The technology at issue addresses the early-2000s market for mobile communications, focusing on enhancing the usability of instant messaging and providing persistent, device-level controls for enterprise or parental management.
- Key Procedural History: The complaint alleges Plaintiff provided Defendants with written notice of infringement on August 27, 2013. Subsequent to the filing of this complaint, the asserted patents have been the subject of multiple Inter Partes Review (IPR) proceedings. Notably, IPRs resulted in the cancellation of the asserted independent claims of both patents-in-suit (Claims 1 and 11 of the '837 patent and Claim 1 of the '694 patent), which raises fundamental questions about the continued viability of the infringement counts as pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2003-12-24 | '837 Patent Earliest Priority Date |
| 2007-09-24 | '694 Patent Earliest Priority Date |
| 2011-02-22 | U.S. Patent No. 7,894,837 Issues |
| 2012-05-29 | U.S. Patent No. 8,190,694 Issues |
| 2013-08-27 | Plaintiff provides written notice of infringement to Defendants |
| 2013-10-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,894,837 - "Instant Messaging Terminal Adapted For Wireless Communication Access Points," Issued Feb. 22, 2011
The Invention Explained
- Problem Addressed: The patent describes challenges with early-2000s mobile devices for instant messaging (IM), including cumbersome data entry, the difficulty of managing multiple IM service accounts and buddy lists, and the complexity of connecting to various Wi-Fi hotspots with different security protocols (’837 Patent, col. 2:10-3:65).
- The Patented Solution: The invention is a handheld IM terminal with an integrated keyboard and display designed to simplify the mobile messaging experience. A central "control module" automates connection to Wi-Fi networks by detecting and using stored network profiles, and transparently manages communications across multiple, distinct IM services, for example by translating emoticon character sequences for the appropriate service (’837 Patent, Abstract; col. 5:46-68).
- Technical Importance: The technology aimed to provide a seamless user experience on a dedicated messaging device, addressing usability hurdles that predated the consolidation of these functions in modern smartphones (’837 Patent, col. 4:5-14).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 11 (Compl. ¶13).
- Independent Claim 1 requires:
- A handheld terminal housing
- An integrated data entry device and display
- An Internet protocol (IP) communications module to generate IM data messages
- A wireless transceiver
- A control module that executes an application to implement at least one IM protocol, providing the generated IM messages to the IP communications module.
- The complaint does not assert any dependent claims but makes no statement reserving the right to do so.
U.S. Patent No. 8,190,694 - "Device Centric Controls For A Device Controlled Through A Web Portal," Issued May 29, 2012
The Invention Explained
- Problem Addressed: The patent identifies a vulnerability in parental or enterprise controls for mobile devices: such controls are often tied to a user's account, not the physical device. A user could circumvent restrictions simply by logging in with a different, unrestricted account (’694 Patent, col. 2:40-52).
- The Patented Solution: The invention provides a "device-centric" control system. Each mobile device is equipped with a non-volatile "unique device identifier." The device sends "monitor messages" containing this identifier to a remote "control site." This site compares the device's reported activities against a control database of rules associated with that specific unique identifier and can send back command messages to enforce policies (e.g., block a contact, restrict usage time), regardless of the user account active on the device (’694 Patent, Abstract; col. 5:29-43).
- Technical Importance: The technology describes a persistent method of mobile device management (MDM) by tying restrictions to the hardware itself, a foundational concept for ensuring policy compliance in enterprise and parental control environments (’694 Patent, col.2:53-3:15).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 11 (Compl. ¶29).
- Independent Claim 1 requires a system with:
- A communication device with a non-volatile memory containing a "unique device identifier" and a communication module to generate "monitor messages."
- A "control site" with a device database and a control database.
- The control site is configured to compare data in the monitor message to control data, based on matching the unique device identifier from the message to one stored in its device database.
- The complaint does not assert any dependent claims but makes no statement reserving the right to do so.
III. The Accused Instrumentality
Product Identification
The complaint names "BlackBerry Messenger and BlackBerry devices that comprise BlackBerry Messenger" as infringing the '837 patent (Compl. ¶14) and "BlackBerry Enterprise Service 10 and servers and devices that comprise BlackBerry Enterprise Service 10" as infringing the '694 patent (Compl. ¶30).
Functionality and Market Context
- The complaint alleges that the accused BlackBerry devices and the BlackBerry Messenger application provide WiFi-enabled instant messaging functionality (Compl. ¶14).
- It further alleges that the BlackBerry Enterprise Service 10 (BES10) is a "Mobile Device Management enabled" system that operates on servers and devices (Compl. ¶30).
- The complaint does not provide specific details on the technical operation or market position of the accused products beyond these general characterizations.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain claim charts or detailed infringement contentions. The infringement allegations are pleaded through broad, conclusory statements asserting that Defendants' products meet the limitations of the asserted claims.
'837 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a handheld terminal housing...a data entry device integrated in the terminal housing...a display mounted in the terminal housing... | The complaint alleges that BlackBerry devices comprise the claimed physical hardware elements. | ¶14 | col. 23:29-38 |
| an Internet protocol communications module...to generate instant messaging (IM) data messages... | The complaint alleges that BlackBerry devices and BlackBerry Messenger contain software and hardware for generating and communicating IM messages over IP networks. | ¶14 | col. 23:39-42 |
| a wireless transceiver mounted within the handheld terminal housing...to generate wireless data messages... | The complaint alleges BlackBerry devices are "WiFi-enabled" and thus contain the claimed wireless transceiver. | ¶14 | col. 23:43-49 |
| a control module...that executes an application program to implement at least one instant messaging protocol... | The complaint alleges that the processors and software on BlackBerry devices, running BlackBerry Messenger, perform the function of the claimed control module. | ¶14 | col. 23:50-62 |
Identified Points of Contention
- Technical Questions: A primary question is whether the general-purpose architecture of a BlackBerry smartphone and its operating system performs the specific functions of the claimed "control module," which the patent describes as transparently managing multiple IM services and translating graphical symbols between them (’837 Patent, col. 5:46-68). The complaint offers no facts to support this specific functional correspondence.
'694 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer network communication device having a non-volatile memory containing a unique device identifier and a communication module... | The complaint alleges that BlackBerry devices and servers comprising BlackBerry Enterprise Service 10 constitute the claimed device. | ¶30 | col. 12:51-54 |
| ...the communication module being configured to generate monitor messages...and to parse command messages... | The complaint alleges that BES10 generates messages from the device to a server and parses commands from the server for device management. | ¶30 | col. 12:55-59 |
| a control site...configured to compare data in the monitor message to control data...in response to the monitor message having a unique device identifier that is also stored in the device database. | The complaint alleges that BES10 servers act as the claimed "control site," using a device identifier to look up and apply management rules. | ¶30 | col. 12:60-67 |
Identified Points of Contention
- Scope Questions: A central question will be whether the identifiers used by the BES10 system (e.g., IMEI, PIN, MAC address) meet the definition of the claimed "unique device identifier," which the patent specification appears to frame as an identifier installed specifically for the purpose of the claimed control system (’694 Patent, col. 5:29-43). The complaint does not specify what identifier BES10 uses or why it meets the claim limitation.
V. Key Claim Terms for Construction
Term: "control module" (’837 Patent, Claim 1)
- Context and Importance: The definition of this term is critical for the '837 patent, as it distinguishes the invention from a general-purpose computer simply running an IM application. The scope of the functions attributed to this "module" will determine if the BlackBerry OS and BBM application infringe.
- Intrinsic Evidence for a Broader Interpretation: The claims use broad, functional language, referring to a module that "executes an application program to implement" an IM protocol, which could arguably read on a standard processor running software (’837 Patent, col. 23:50-54).
- Intrinsic Evidence for a Narrower Interpretation: The detailed description imbues the "control module" with specific functionalities beyond basic IM, such as integrating buddy lists from multiple different services into a single list and automatically substituting character sequences to generate graphical symbols compatible with a specific recipient's service (’837 Patent, col. 5:19-68).
Term: "unique device identifier" (’694 Patent, Claim 1)
- Context and Importance: This term is the lynchpin of the "device-centric" invention of the '694 patent. Its construction will determine whether standard, multi-purpose hardware identifiers used in MDM systems like BES10 fall within the scope of the claims.
- Intrinsic Evidence for a Broader Interpretation: The term itself is not explicitly defined, which may support an interpretation covering any identifier that is unique to a device, such as an industry-standard IMEI or MAC address.
- Intrinsic Evidence for a Narrower Interpretation: The specification describes the identifier as being installed by the manufacturer and stored in a "device database" at a "regulation/support site" specifically for the purpose of enabling the claimed control system, suggesting a purpose-built identifier rather than a generic one (’694 Patent, col. 5:29-43; Fig. 4).
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement for both patents. It asserts that Defendants induce infringement by offering and selling the accused products "in a manner understood and intended to infringe" (Compl. ¶15, ¶31) and contribute to infringement because the products are a "material part" of the invention, are "especially designed for use in infringing," and are not staple items of commerce suitable for substantial non-infringing use (Compl. ¶19, ¶35).
Willful Infringement
The complaint alleges willful infringement of both patents based on Defendants' alleged knowledge of the patents as of August 27, 2013, the date of a written notice from Plaintiff. The willfulness claim is further based on allegations that Defendants "deliberately avoided confirming their high probability of wrongdoing" (Compl. ¶17, ¶33).
VII. Analyst’s Conclusion: Key Questions for the Case
Case Viability: The most significant issue is the post-filing cancellation of all asserted independent claims (Claims 1 and 11 of the '837 patent; Claim 1 of the '694 patent) in IPR proceedings. A threshold question is whether Plaintiff can maintain this action as pleaded or if it must seek to amend its complaint to assert different, surviving claims, if any exist.
Definitional Scope: Assuming the case could proceed, a core issue for the '694 patent is whether a commercial Mobile Device Management system like BES10, which likely uses industry-standard hardware identifiers, practices the specific "device-centric" control method claimed in the patent, which appears to be built around a purpose-installed "unique device identifier" for communicating with a dedicated "control site."
Evidentiary Sufficiency: The complaint's infringement allegations are conclusory and lack specific factual support mapping accused product features to claim limitations. This raises the question of whether the pleadings meet the plausibility standard required to survive a motion to dismiss, as the court would have to infer how the accused products allegedly operate in a manner that satisfies the specific requirements of the patent claims.