BlackBerry sues Facebook, WhatsApp, Instagram over patent infringement: What’s the big deal ?

This week, Blackberry (NYSE: BB), the tech giant that ‘invented’ smartphones, filed a patent infringement lawsuit against Facebook, whatsapp and instagram in the Los Angeles federal court. Blackberry’s move highlights a number of significant issues with patents, including monetizing their ‘value,’ the investment in portfolio of patents, and their role in protecting investments in Research and Development.

What’s Blackberry’s patent suit all about?

BlackBerry’s complaint seems to cover a broad range of topics and highlights how the company’s ‘patent-protected’ messaging product BlackBerry Messenger (BBM) innovated mobile communication techniques. The complaint (CASE NO. 2:18-cv-01844 – link) filed in the court runs over 117 pages and focuses on the following seven patents:

  • 7,372,961 – Method of public key generation
  • 8,279,173 – User interface for selecting a photo tag
  • 8,209,634 – Previewing a new event on a small screen device
  • 8,301,713- Handheld electronic device and associated method providing time data in a messaging environment
  • 8,429,236 Transmission of status updates responsive to status of recipient application
  • 8,677,250 – System and method for switching between an instant messaging conversation and a game in progress
  • 9,349,120  – System and method for silencing notifications for a message thread

The tech world thrives on the ‘innovation’ buzzword

Technology innovations are sometimes foundational in nature – like Apple’s Version 1 of iPhone – but in most cases, cool, and cooler technologies are just improvements of existing ideas, products or services. Such incremental  improvements, like the emergence of Smartphone and messaging ecosystem, collectively transform technology landscapes.

On the surface, the patent lawsuit seems like a classic David vs Goliath battle, and an attempt to protect investments in intellectual property (IP). Of course, yesterday’s Goliath is now the nimble little Blackberry!

The Digerati seems to be polarized by Blackberry’s action since the patents in question are extremely broad and cover features like message notifications ‘red dot,’ and the idea of signaling the arrival of new messages with a numeric message counter on the notification icon, security and use of public keys.

These features described in the patent applications emerged from Blackberry’s R&D efforts about a decade ago, at a time when BBM was popular and relevant. However, the features are now commonplace, and have been incorporated into successive versions of the popular messaging services including WhatsApp.

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So, what’s the big deal here

Blackberry has acquired a considerable number of patents in its portfolio. During the Waterloo Innovation Summit a few years ago, the CEO John Chen was quoted saying (link)

“We have today about 44,000 patents. The good thing about this is that we also have one of the youngest patent portfolios in the entire industry, so monetization of our patents is an important aspect of our turnaround,”

The effort to monetize its intellectual property seems to be successful and  BlackBerry has fine-tuned its approach to harvesting its patent portfolio. A Yahoo article highlights successive wins by BlackBerry in defending its patents:

  • The company filed a 105-page complaint against networking hardware company Avaya in 2016, using a much more technical and less common-sense slate of eight patents. That suit appears to have been settled under unknown terms, somewhere during Avaya’s recent stint under Chapter 11 bankruptcy protection.
  • Nokia is currently ordered to pay BlackBerry $137 million in a licensing contract dispute, though that procedure is still under appeal.
  • Qualcomm had to cough up $940 million to settle a royalty dispute with BlackBerry last year.

In 2014, the U.S. Supreme Court made it much harder to enforce software patents. The court was of the opinion that just “taking established ways of doing business and putting them on a computer” shouldn’t be considered new intellectual property. BlackBerry lawsuit seems to recognize this fact and focuses on explaining why the patents it holds were truly innovative at the time they were invented.

A spokeswoman for Blackberry said the company remains open to a partnership with Facebook.

“However, we have a strong claim that Facebook has infringed on our intellectual property, and after several years of dialogue, we also have an obligation to our shareholders to pursue appropriate legal remedies,” she said.


Any lessons for innovators here?

Patent rights and the potential to earn royalties may incentivize individuals and companies to invest in Research and Development (R&D). A “Patented” product or service can help in its marketing, and can also prevent others from cloning/copying the idea, and act as a barrier to entry for copycats. Individuals working for tech companies may also be motivated to file for patents to showcase their personal intellect and credentials.

Small businesses, individuals and academics sometimes rush to file for Patents after initial ideation. It takes considerable time and resources to file for a patent application. After being granted a patent, individuals and small businesses may not have the resources or marketing skills to monetize such Intellectual Property.  They may also lack the resources required to enforce their IP rights since legal battles are expensive.

Bottomline: While there are lessons in this lawsuit against Facebook, individuals and startups may not be able to use Blackberry’ playbook when it comes to enforcing one’s intellectual property rights.

PS: In the quest for ‘digital innovation,’ I filed a couple of patent applications that I abandoned after I realized the endless wait involved. The patents, if granted, would have ‘padded’ my resume, but may not have left me any wealthier.

About the author: Mohan K is a Tech Executive, blogger and columnist

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