This week’s IP Matters is a patent-infringement action against Facebook, Instagram, and WhatsApp by former smartphone company BlackBerry. Now a licensing company for BlackBerry software and patents, can BlackBerry get the courts to stop the three social-media platforms  from continuing to market, operate, and use certain mobile-messaging technologies in their social-networking apps?  

BlackBerry has sued Facebook Inc and its subsidiary companies, Instagram Inc and WhatsApp Inc for allegedly infringing on Blackberry’s messaging-technology patents.

In a 117-page complaint brought before the US District Court for the Central District of California, Blackberry demands an injunction to stop Facebook, Instagram, and WhatsApp from continuing to allegedly infringe its patents. BlackBerry also wants an award of damages as compensation for the infringement.

The parties involved in this patent-infringement lawsuit—BlackBerry, Facebook, Instagram, and WhatsApp—barely need introduction.

BlackBerry Limited is a Canadian company based in Ontario. For up to 30 years, BlackBerry has been in the mobile-communication business in the United States developing innovative messaging-technologies. BlackBerry is perhaps best known for its BlackBerry Messenger (BBM), a technology that revolutionized instant messaging. BBM enabled users communicate on their Blackberry devices in a user-friendly and secure way. Though after so much feet-dragging, BBM app was made available to non-Blackberry mobile-phone users as well. According to Blackberry, it has taken “many steps to safeguard this valuable intellectual property” by “patenting the cutting-edge features of its mobile phones, BlackBerry Messenger, and other communications applications that make such products secure, easy-to-use, and ultimately engaging to the end-user, thereby driving user growth and retention.”

Facebook Inc is a California-based, social-networking-service company. Since Facebook launched its website in 2004, it has grown from being limited to Harvard students to becoming a social network with more than 2 billion monthly active users by June 2017. Facebook Inc operates and owns Facebook.com, and offers the apps Facebook Lite, Facebook Messenger, Facebook Workplace Chat, and Facebook Pages Manager. WhatsApp Inc is a wholly owned subsidiary of Facebook. WhatsApp also operates and owns WhatsApp.com, and offers WhatsApp Messenger. The other Facebook subsidiary is Instagram Inc. Instagram operates and owns Instagram.com, and offers the app Instagram.

What’s BlackBerry’s contention against the Facebook family?

BlackBerry contends that Facebook and its subsidiary companies have been infringing on BlackBerry’s patents—some of BlackBerry’s mobile-messaging technologies considered critical to BlackBerry’s commercial success as a pioneer. It’s a fight for its intellectual property. In its 5-count complaint, BlackBerry is specifically suing Facebook, Instagram, and WhatsApp for the following:

1. Alleged infringement of Blackberry’s U.S. PATENT NO. 7,372,961 (The ’961 Patent). The ’961 Patent uses public key cryptosystems to protect and provide security for data communication systems. Facebook Messenger app actually uses a public key to initiate a secure connection with a Facebook server.
2. Alleged infringement of Blackberry’s U.S. PATENT NO. 8,209,634 (The ’634 Patent). The ’634 Patent describes, among other things, “[a] method of providing notifications of unread messages on a wireless communication device.” Facebook Messenger, WhatsApp, and Instagram noticeably contain user interfaces that display message icons in like manner.
3. Alleged infringement of Blackberry’s U.S. PATENT NO. 8,279,173 (The ’173 Patent). The ’173 Patent discloses, among other things, “a user interface for selecting a photo tag” and includes “a method of selecting a photo tag for a tagged photo.” Again, both Facebook and Instagram apps enable users tag photos.
4. Alleged infringement of Blackberry’s U.S. PATENT NO. 8,301,713 (The ’713 Patent). The ’713 Patent discloses, among other things, “[a]n improved handheld electronic device and an associated method are provided in which time data regarding certain aspects of a messaging conversation on a handheld electronic device are made available to a user …”. Facebook Messenger, WhatsApp, and Instagram apps have this message time-stamping functionality as well.
5. Alleged infringement of U.S. PATENT NO. 8,429,236 (The ’236 Patent). The ’236 Patent discloses, among other things, methods and devices for “[s]electing and modifying the transmission rates and sizes of status update messages transmitted by a mobile communications device to a recipient application based on use of the updates …”. Both Facebook and WhatsApp enable users update their status and transmit status messages in different modes.

What are Facebook’s, Instagram’s, and WhatsApp’s reactions to BlackBerry’s patent-infringement allegations?

None of the defending parties has filed a defense yet. BlackBerry’s complaint was filed only 3 days ago—6 March 2018.

But if Facebook’s Deputy General Counsel’s statement on Twitter is anything to go by, BlackBerry should prepare for a big fight from the Facebook family. According to the statement, Facebook’s Deputy General Counsel remarked that “Blackberry’s suit sadly reflects the current state of its messaging business. Having abandoned its efforts to innovate, Blackberry is now looking to tax the innovation of others. We intend to fight.”

Facebook, Instagram, and WhatsApp may fight by claiming that the mobile-messaging technologies they use are either different from BlackBerry’s inventions or are improvements of the existing inventions. They may even fight to have the Court revoke the patents BlackBerry is in court to protect, claiming that they formed part of the state of the art before BlackBerry’s patents—that the inventions were neither new nor inventive in the first place.

Will BlackBerry win this fight over patent infringement?

Well, the US District Court for the Central District of California will be in the best position to decide that.

But I will briefly point out 3 things you need to understand about the way patents work.

This will enable you make informed decisions when you consider protecting your new or inventive technology through patent. The 3 points are as follows:

1. Getting a patent requires the inventor to disclose every detail about how the invention works. This is patent’s biggest irony. You don’t get a grant of patent, until you disclose everything about how your invention works. These details would be made available in a public database. So if you need to keep how your invention or innovation works a secret, patent is not for you.
2. Patent protection is typically first to file, not first to invent. If BlackBerry had just invented its revolutionary mobile-messaging technologies without patenting them, BlackBerry would have no right to stop Facebook, Instagram, or WhatsApp, or any other company or person from making, distributing, operating, marketing, or selling the same inventions. This is why it is advisable to get patent as soon as a new product or process is invented. With patent, you are sure no company or person appears from the blues to permanently disrupt your business by restraining you from enjoying your inventions.  
3. The doctrine of equivalents may be applied in Blackberry’s favour. If an allegedly infringing product serves the same purpose or completes the same function as the original invention, a court of law may decide that the patent holder or patentee can claim damages for patent infringement. The doctrine of equivalents was established in Graver Tank & Manufacturing Company v Linde Air Productions Inc. The decision produced a ‘triple identity’ test which states that a latter product is equivalent to an earlier patented product if it (i) performs the same function as the original; (ii) performs that function in the same way; and (iii) achieves the same result as the original. So even if Facebook, Instagram, and WhatsApp never copied any of BlackBerry’s mobile-messaging technologies literally, the court may still find the three companies liable based on a doctrine known as the doctrine of equivalents. The doctrine of equivalents provides that even if the patentee’s invention is not completely identical to the infringing product, the patentee is still entitled to claim patent infringement.

Patent or Not—3 things you should always consider.

I will now list 3 things you should always consider when deciding on the most suitable type of intellectual-property protection for your inventions:

1. Patents don’t last forever. You get patent for investing in research & development of the product or process you have invented or improved, enabling you recoup your investments and also make profits. For this purpose, a patent gives you exclusive ownership—monopoly to make, export, sell, use, or stock the invention. Typically, this monopoly lasts 20 years. After this period, the patent is not renewable. Even during this period, the state may require you to compulsorily license the invention for state’s use.
2. Software patents are very tricky. If what you have invented is written in computer language—a software program—you may be able to get both copyright protection and grant of patent as well. (In Nigeria, software programs are literary works eligible for copyright protection only. But in the US and the UK, software with inventive functionalities enjoy protection as software patents.) Here, copyright protects the expression of your original idea in object or source codes, while patent protects the new or inventive functionality or functionalities of the invention. And while copyright typically lasts the lifetime of the creator and 70 years after the creator’s death, patents typically last 20 years. Why software patents—such as BlackBerry’s software patents—are tricky is that because of the nature of software programs, experts believe that allowing creators get patents for software badly stifle innovation. This is a valid fear. So Facebook, Instagram, and WhatsApp would likely try to compel the court to revoke BlackBerry’s mobile-messaging technology patents for stifling innovation in the mobile-communication space.
3. You never know what you really need until you consider all options. Because you have invented a new product or process, it’s easy to conclude it’s patent you need. But always consider all options. Copyright, industrial designs, or even trade secrets may be what you need. Or sometimes, it’s a combination of one or more you need to maximize protection. And sometimes, it may even be that in the industry you plan to launch your invention, it’s the execution that matters, and not the invention. I call it the USP IP Strategy. What’s your USP?

In IP matters, it’s never too early because IP matters to business and development, any day.