DCT
3:18-cv-03324
Thompson v. BlackBerry Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Raphael Thompson (Georgia)
- Defendant: BlackBerry Limited (Canada) and BlackBerry Corporation (Delaware)
- Plaintiff’s Counsel: Nelson Bumgardner Albritton PC; Hill, Kertscher & Wharton, LLP
- Case Identification: 3:18-cv-03324, N.D. Tex., 12/18/2018
- Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because Defendant BlackBerry Corporation has a principal place of business in Irving, Texas, and has allegedly committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that the "Do Not Disturb" mode in certain BlackBerry mobile devices infringes two patents related to selectively filtering incoming communications based on user-defined exemptions.
- Technical Context: The technology concerns customizable "quiet modes" on mobile devices, which allow users to block unwanted notifications while permitting communications from pre-approved contacts.
- Key Procedural History: The '629 Patent is a continuation of the application that resulted in the '053 Patent. The complaint alleges that Plaintiff provided BlackBerry with pre-suit notice of infringement via a letter received on October 11, 2018. To support its non-obviousness contentions, the complaint references patents from BlackBerry, Google, and Microsoft filed after the patents-in-suit's priority date as evidence of industry-wide efforts to solve the same problem.
Case Timeline
| Date | Event |
|---|---|
| 2007-04-20 | Priority Date for '053 and '629 Patents |
| 2014-10-21 | '053 Patent Issued |
| 2016-10-18 | '629 Patent Issued |
| 2018-10-09 | Plaintiff sent notice letter to BlackBerry |
| 2018-10-11 | BlackBerry allegedly received notice letter |
| 2018-12-18 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,868,053 - "Communication Delivery Filter for Mobile Device," issued October 21, 2014
The Invention Explained
- Problem Addressed: The patent’s background section identifies the problem of mobile device users being disturbed by non-critical calls and messages during nighttime hours, even though they may wish to leave their phones on to receive important communications ('053 Patent, col. 1:33-44). This created a need for a "selectable Nighttime Mode" to filter unwanted notifications from non-essential contacts ('053 Patent, col. 1:45-51).
- The Patented Solution: The invention is a method for a mobile device to implement a filtering mode where notifications for incoming communications are inhibited by default. However, if a communication originates from a source matching a pre-defined "exempt message characteristic" (e.g., a phone number selected from the device's address book), the device bypasses the filter and processes the communication normally. For non-exempt voice calls, the invention specifies that the call is sent directly to voicemail ('053 Patent, Abstract; col. 3:5-8).
- Technical Importance: The invention provided a system for users to manage communication overload, particularly during off-hours, without completely disconnecting from potentially urgent contacts (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶33).
- The essential elements of Claim 1 include:
- Receiving an "exempt message characteristic" identifying one or more telephone numbers selected from a list already stored on the device.
- Enabling a "message reception notification inhibitor" that, by default, blocks notifications for all incoming messages.
- While the inhibitor is enabled, receiving messages, including at least one voice call.
- Examining the received message to see if it contains the exempt characteristic.
- Bypassing the inhibitor for messages that contain the exempt characteristic.
- As a default, for a voice call where the exempt characteristic is absent, inhibiting the notification and "sending the voice call to voice mail."
- Disabling the inhibitor to return the device to normal processing for all messages.
- The complaint does not explicitly reserve the right to assert dependent claims but pleads infringement of "one or more claims" (Compl. ¶36).
U.S. Patent No. 9,473,629 - "Communication Delivery Filter for Mobile Device," issued October 18, 2016
The Invention Explained
- Problem Addressed: As a continuation of the '053 patent's application, the '629 Patent addresses the same problem of unwanted mobile device interruptions ('629 Patent, col. 1:47-55).
- The Patented Solution: The '629 Patent claims a mobile device rather than a method. The device comprises a "module" that can operate in a normal mode or a second, filtered mode. In the filtered mode, the device by default inhibits a "user-indicator" (e.g., a ringtone) for an incoming communication unless it includes a "user selectable exempt characteristic." The patent also claims a user interface for switching between modes and selecting the exempt characteristics from originator identifications stored on the device ('629 Patent, Abstract; col. 5:50-65).
- Technical Importance: This patent provides protection for the physical device and its software components that implement the filtering system described in the '053 Patent (Compl. ¶15).
Key Claims at a Glance
- The complaint asserts at least independent Claim 11 (Compl. ¶42).
- The essential elements of Claim 11 include:
- A "module" that enables a first (normal) mode and a second (filtered) mode of operation.
- In the second mode, the module operates to inhibit a "user-indicator" for a communication unless it includes a "user selectable exempt characteristic."
- A "user interface" for detecting user interactions to selectively enable the first or second mode and to select the exempt characteristics.
- The exempt characteristic is the identification of a potential communication originator, selected from a plurality of such identifications stored on the device.
- The complaint pleads infringement of "one or more claims" of the '629 Patent (Compl. ¶45).
III. The Accused Instrumentality
- Product Identification: The BlackBerry PRIV, DTEK50, and DTEK60 mobile devices (Compl. ¶27, ¶41).
- Functionality and Market Context: The complaint alleges that the accused devices include a "Do Not Disturb" (DND) mode that infringes the patents-in-suit (Compl. ¶26). This DND functionality allows a user to activate a "Priority only" setting, which silences notifications for most communications (Compl. ¶33.c, p. 10). However, users can designate certain contacts as "starred contacts" or "favorites," and calls or messages from these exempt contacts will bypass the DND filter and generate a normal notification (Compl. ¶33.b, ¶33.e). The complaint alleges BlackBerry sells these devices in the United States (Compl. ¶5). A graphic from a user guide demonstrates how to configure priority interruptions, explicitly listing "Starred contacts only" as an option to bypass "Do Not Disturb" mode (Compl. p. 15, Exhibit F at 2).
IV. Analysis of Infringement Allegations
'053 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving at least one exempt message characteristic... comprising information that identifies one or more telephone numbers... from the plurality of telephone numbers already stored within the mobile device | The user selects contacts to "star," which designates their associated phone numbers, stored in the device's contacts, as exempt from DND mode. A screenshot from the device's settings menu illustrates the "Interruptions" screen, which allows a user to limit notifications to calls and messages from "Starred contacts only." | ¶33.b, p. 9 | col. 3:36-39 |
| enabling a message reception notification inhibitor... to be active such that message notifications for any messages received at the mobile device are by default inhibited | The user activates the DND mode via a user interface, which by default inhibits notifications for incoming calls and messages. A screenshot of the device's quick settings panel depicts the user interface for activating 'Do not disturb' mode with options including 'Priority only.' | ¶33.c, p. 10 | col. 3:1-3 |
| while the... inhibitor is enabled... the mobile device examining the received message to determine if the received message includes the exempt message characteristic | When DND mode is active, the device checks if an incoming call is from a "starred contact." | ¶33.e | col.2:21-25 |
| the mobile device bypassing the message reception notification inhibitor... only if the exempt message characteristic is identified in the received message | If the call is from a starred contact, the DND filter is bypassed, and the phone provides an audible alert. | ¶33.e | col. 3:40-44 |
| as a default, inhibiting the message reception notification for the received message if the exempt message characteristic is absent and the message is a voice call and sending the voice call to voice mail | If the incoming call is not from a starred contact, the call is silenced and sent to voicemail. | ¶33.e | col. 3:5-8 |
'629 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a module, operating entirely within the mobile device, configured to enable a first mode... and... a second mode of operation | The DND software program, in conjunction with the phone application, enables both a normal operating mode (DND disabled) and a filtered DND mode (DND enabled). | ¶42.b, ¶42.c | col. 2:20-25 |
| [in the second mode] the mobile device as a default, inhibits the provision of the user-indicator... unless the communication initiation includes at least one user selectable exempt characteristic | In DND mode, the device silences ringtones and other user-indicators unless the call is from a "starred contact." | ¶42.c | col. 5:55-60 |
| a user interface for detecting user interactions... to selectively enable operation... in the first mode... and second mode... and to enable the selection of exempt characteristics | The touch screen and volume buttons are used to turn DND mode on/off, and the phone app's user interface is used to "star" contacts to make them exempt. | ¶42.d | col. 2:25-27 |
| the exempt characteristics comprise the identification of a potential communication originator and is selected from a plurality of originator identifications stored within the mobile device | The "starred contact" designation is an exempt characteristic, selected from the list of contacts stored on the device. | ¶42.e | col. 2:32-35 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "Nighttime Mode," used throughout the patent specifications to describe the invention's context ('053 Patent, col. 1:45-51), limits the claim scope to features explicitly for nighttime use, or if it can be read more broadly to cover a general-purpose "Do Not Disturb" feature.
- Technical Questions: For the '053 Patent, a key factual issue will be whether the accused devices perform the specific function of "sending the voice call to voice mail" as a default for non-exempt calls, as required by Claim 1. The infringement analysis will depend on evidence of how the accused devices handle such calls, and whether this function is performed "entirely within the mobile device" (Compl. ¶33.c) or involves network-side operations.
V. Key Claim Terms for Construction
The Term: "message reception notification inhibitor" ('053 Patent, Claim 1)
- Context and Importance: This term defines the central functional component of the asserted method claim. The breadth of its construction will determine whether the accused DND software architecture falls within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes the function of inhibiting notifications in general terms, such as keeping the phone "silent" and the screen "dark" ('053 Patent, col. 3:4-6), which may support a functional definition covering any software that achieves this result.
- Evidence for a Narrower Interpretation: The term is consistently introduced in the context of a "selectable Nighttime Mode" ('053 Patent, col. 1:46). A defendant may argue that this context limits the "inhibitor" to the specific embodiments and purposes described, such as the "Nighttime Nap mode," rather than any generic DND function ('053 Patent, col. 4:11-14).
The Term: "module" ('629 Patent, Claim 11)
- Context and Importance: As the key structural element of the asserted device claim, the construction of "module" is critical. Practitioners may focus on this term because its interpretation as either pure software or requiring some associated structure can be case-dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to "a module or process that can operate within a mobile device" ('629 Patent, col. 2:20-21), suggesting the term is not meant to be limited to a specific hardware structure and can be met by a software program.
- Evidence for a Narrower Interpretation: A defendant may argue that to avoid indefiniteness under 35 U.S.C. § 112, the term "module" must be construed as being limited to the corresponding structure disclosed in the specification, such as the specific steps and logic illustrated in the flowchart of Figure 1 ('629 Patent, Fig. 1).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that BlackBerry induces infringement by providing user manuals and other technical documentation that instruct and encourage customers to use the accused DND features in an infringing manner (Compl. ¶36, ¶45).
- Willful Infringement: The willfulness allegation is based on BlackBerry’s alleged knowledge of the patents-in-suit as of its receipt of a notice letter on October 11, 2018. The complaint alleges that BlackBerry’s continued sale of the accused products after this date constitutes willful infringement (Compl. ¶35, ¶44).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claims, rooted in the specification's description of a "Nighttime Mode," be construed broadly enough to read on the accused general-purpose "Do Not Disturb" and "Priority only" functionalities found in modern mobile operating systems?
- A key evidentiary question will be one of technical fidelity: does the accused DND mode, as implemented in the BlackBerry devices, perform the exact sequence of functions recited in the claims? In particular, the analysis for the '053 patent will hinge on whether the accused devices, as a default for non-exempt voice calls, automatically perform the specific step of "sending the voice call to voice mail" entirely within the device as the claim requires.