Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 1 of 117 Page ID #:1 1 QUINN EMANUEL URQUHART & SULLIVAN, LLP 2 3 4 5 6 7 8 9 James R. Asperger (Bar No. 83188) jamesasperger@quinnemanuel.com 865 S. Figueroa St., 10th Floor Los Angeles, CA 90017 Telephone: (213) 443-3000 Facsimile: (213) 443-3100 Kevin P.B. Johnson (Bar No. 177129) kevinjohnson@quinnemanuel.com 555 Twin Dolphin Drive, 5th Floor Redwood Shores, CA 94065 Telephone: (650) 801-5000 Facsimile: (650) 801-5100 10 BLACKBERRY CORPORATION 11 12 13 Edward R. McGah, Jr (SBN 97719) Vice President, Deputy General Counsel – Litigation 41 Ticknor Place Laguna Niguel, California 92677 Telephone: (+1) 650-581-4750 14 Attorneys for Plaintiff, 15 BlackBerry Limited 16 17 IN THE UNITED STATES DISTRICT COURT 18 FOR THE CENTRAL DISTRICT OF CALIFORNIA 19 20 21 BLACKBERRY LIMITED, a Canadian corporation, Plaintiff, 22 23 24 25 26 27 28 v. FACEBOOK, INC., a Delaware corporation, WHATSAPP INC., a Delaware corporation, and INSTAGRAM, INC., a Delaware corporation ) ) ) ) ) ) ) ) ) ) ) ) ) CASE NO. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT JURY TRIAL DEMANDED Defendants. Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 2 of 117 Page ID #:2 COMPLAINT FOR PATENT INFRINGEMENT 1 2 Plaintiff BlackBerry Limited (“BlackBerry” or “Plaintiff”) hereby asserts the 3 following claims for patent infringement against Defendants Facebook, Inc., 4 WhatsApp Inc., and Instagram, Inc. (collectively, “Defendants”), and alleges as 5 follows: 6 7 SUMMARY 1. BlackBerry Pioneers Mobile Messaging - BlackBerry has been a 8 leading innovator in the field of mobile communications for the past 30 years, 9 having invested substantial sums into research and development of communications 10 technologies. BlackBerry’s innovations led to the commercialization of some of the 11 earliest models of smartphones in the United States, enabling its users to, among 12 other things, send and receive e-mails securely and surf the internet anytime and 13 anywhere. These same innovations prompted the rise of the smartphone as a 14 necessary everyday accessory for businesspersons and ordinary consumers alike. 15 2. One example of BlackBerry’s innovations is the BlackBerry Messenger 16 technology, which revolutionized instant messaging by providing users with secure, 17 user-friendly, point-to-point instant messaging on their mobile devices. In many 18 respects, through BlackBerry Messenger and other research and development, 19 BlackBerry helped pioneer modern mobile messaging—secure, instant and user 20 friendly on a mobile device. The appeal and success of BlackBerry Messenger led 21 consumers to consider instant messaging functionality as an integral aspect of 22 mobile communications, resulting today in billions of people worldwide engaging in 23 instant messaging over their mobile device. 24 3. As an innovator, BlackBerry took many steps to safeguard this valuable 25 intellectual property. It received numerous patents protecting the cutting-edge 26 features of its mobile phones, BlackBerry Messenger, and other communications 27 applications that make such products secure, easy-to-use, and ultimately engaging to 28 the end-user, thereby driving user growth and retention. Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 3 of 117 Page ID #:3 1 4. Facebook and its Companies Later Develop Competing Applications 2 that Improperly Use BlackBerry’s Mobile Messaging Intellectual Property 3 Defendants, on the other hand, are relative latecomers to the mobile messaging 4 world. Defendants created mobile messaging applications that co-opt BlackBerry’s 5 innovations, using a number of the innovative security, user interface, and 6 functionality enhancing features that made BlackBerry’s products such a critical and 7 commercial success in the first place. These include the features covered by the 8 Patents-in-Suit. 9 5. The Patents-in-Suit cover, for example: 10 (a) Security Improvements—improved cryptographic techniques that 11 establish and maintain security over user messages and provide the requisite 12 trust necessary for user adoption of a messaging platform for their 13 communication needs; 14 (b) User Interface Improvements For Mobile Devices—including (i) 15 improvements in message notification techniques that streamline and 16 optimize reception of new message notifications that prevent users from being 17 inundated with numerous messaging notifications, (ii) display of timestamps 18 in a messaging user interface that provides users with appropriate temporal 19 context for their communications without overtaking the user’s screen with 20 unnecessary information, and (iii) tagging friends and family in social media 21 photographs; 22 (c) Combining Mobile Gaming And Mobile Messaging—allowing users to 23 more easily interact while playing electronic games; and 24 (d) Battery Efficient Status Updates for Mobile Devices—improved 25 techniques for transmitting status updates based on whether a second device is 26 viewing the status updates, to reduce power consumption and improve battery 27 life in mobile devices. 28 -3- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 4 of 117 Page ID #:4 1 These features, all invented by BlackBerry, are “table stakes” for modern 2 mobile messaging and social networking. 3 6. Thus, Defendants have used BlackBerry’s own intellectual property to 4 compete with it in the mobile messaging space. These applications are ever 5 expanding, including Facebook Messenger, Facebook Messenger Lite, Facebook 6 Pages Manager, Facebook.com and Facebook Workplace Chat, the WhatsApp 7 Messenger application made by WhatsApp Inc., and the Instagram application made 8 by Instagram, Inc. The importance of mobile messaging is emphasized by the 9 reported $19 billion dollars Facebook spent to acquire WhatsApp. 10 7. Defendants’ Use of BlackBerry’s Mobile Messaging Innovations 11 Harms BlackBerry and Provides Undeserved Windfall to Facebook and its 12 Companies—Defendants’ use of BlackBerry’s invention and infringement of the 13 Patents-in-Suit, has succeeded in diverting consumers away from BlackBerry’s 14 products and services and toward those of Defendants. This has resulted in a 15 substantial and undeserved windfall for Defendants as these users drive Defendants’ 16 revenue. Defendants' gain comes at BlackBerry’s expense, depriving BlackBerry of 17 revenue to which it is entitled as a result of its inventions. Through this suit, 18 BlackBerry seeks redress for the harm caused by Defendants’ unlawful use of 19 BlackBerry’s intellectual property. INTRODUCTION TO BLACKBERRY 20 21 8. 22 mobile For more than 30 years, BlackBerry has been a leading innovator in the communications industry. BlackBerry’s cutting-edge wireless 23 communication products and services have transformed the way people around the 24 world connect, converse, and share digital information. 25 9. BlackBerry was founded in 1984 in Waterloo, Ontario by two 26 engineering students, Mike Lazaridis and Douglas Fregin. In its early years, the 27 company—then named Research In Motion (“RIM”)—focused its inventive 28 energies on wireless data transmission. -4- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 5 of 117 Page ID #:5 1 10. From its modest beginnings more than 30 years ago, BlackBerry has 2 gone on to offer a portfolio of award-winning products, services, and embedded 3 technologies to tens of millions of individual consumers and organizations around 4 the world, including governments, and educational institutions. By transforming the 5 way people communicate, BlackBerry laid a foundation for today’s multibillion- BlackBerry’s innovations in mobile 6 dollar modern smartphone industry. 7 communications continue to this day through BlackBerry’s award-winning software 8 platform and devices, which enable and manage security, mobility, and 9 communications between and among hardware, programs, mobile applications, and 10 the Internet of Things (IoT). 11 11. In the course of developing its ground-breaking mobile 12 communications systems, BlackBerry (and the BlackBerry family of companies) has 13 invented a broad array of new technologies that cover everything from enhanced 14 security and cryptographic techniques, to mobile device user interfaces, instant 15 messaging functionality, communication servers, and many other areas. To take just 16 one example, security posed a critical challenge for BlackBerry to address when 17 bringing its mobile devices to market. Commercial acceptance of such mobile 18 devices required providing mechanisms to ensure safe and secure communications 19 so that users and businesses could be confident that their confidential and private 20 information stayed that way in spite of ever increasing threats. Due to its innovative 21 technologies, BlackBerry has been universally recognized as the gold standard when 22 it comes to safe and secure data communications over mobile devices. 23 12. Throughout its history, BlackBerry has demonstrated a commitment to 24 innovation, including through its investments in research and development, which 25 have totaled more than $5.5 billion over the past decade. BlackBerry has protected 26 the technical innovations resulting from these investments, including through 27 seeking patent protection, and as detailed below, BlackBerry owns rights to an array 28 of patented technologies in the United States. -5- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 6 of 117 Page ID #:6 1 13. BlackBerry owns United States Patent Nos. 7,372,961, 8,279,173, 2 8,209,634, 8,301,713, 8,429,236, 8,677,250, and 9,349,120 (collectively, the 3 “Patents-in-Suit”). Defendants infringe the BlackBerry Patents-in-Suit by using, 4 without authorization, BlackBerry’s proprietary technologies in a number of their 5 commercial products and services, including, inter alia, the Facebook Messenger, 6 WhatsApp Messenger, and Instagram applications, which are marketed, offered and 7 distributed to users of mobile and other devices throughout the United States, 8 including in this District. 9 14. By this action, BlackBerry seeks to put an end to Defendants’ 10 unauthorized use of BlackBerry’s patented technologies and to obtain compensation 11 for the harm BlackBerry has suffered. NATURE OF THE ACTION 12 13 15. This is a civil action for patent infringement under the patent laws of 14 the United States, 35 U.S.C. § 1 et seq. 15 16. Defendants have infringed and continue to infringe, and have induced 16 and continue to induce infringement of, one or more claims of BlackBerry’s Patents17 in-Suit at least by making, using, selling, and/or offering to sell their Facebook.com 18 website, Facebook, Facebook Messenger, Facebook Messenger Lite, Facebook 19 Workplace Chat, Facebook Pages Manager, WhatsApp Messenger, and Instagram 20 applications for mobile and other devices in the United States, including in this 21 District. 22 17. BlackBerry is the legal owner by assignment of the Patents-in-Suit, 23 which were duly and legally issued by the United States Patent and Trademark 24 Office (“USPTO”). BlackBerry seeks injunctive relief and monetary damages. THE PARTIES 25 26 18. Plaintiff BlackBerry Limited is a Canadian company with its principal 27 place of business at 2200 University Avenue East, Waterloo, Ontario, Canada N2K 28 0A7. BlackBerry Limited is the owner of intellectual property rights at issue in this -6- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 7 of 117 Page ID #:7 1 action. 2 19. On information and belief, Defendant Facebook, Inc. (“Facebook”) is a 3 Delaware corporation with a principal place of business at 1 Hacker Way, Menlo 4 Park, CA 94025. On information and belief, Facebook maintains offices in Los 5 Angeles, California, operates and owns the website located at www.facebook.com, 6 and markets, offers, and distributes applications such as the Facebook, Facebook 7 Messenger, Facebook Messenger Lite, Facebook Workplace Chat, and Facebook 8 Pages Manager applications throughout the United States, including in this District. 9 20. On information and belief, Defendant WhatsApp Inc. (“WhatsApp”) is 10 a Delaware corporation and wholly owned subsidiary of Facebook with a principal 11 place of business at 1601 Willow Road, Menlo Park, CA 94025. On information 12 and belief, WhatsApp operates and owns the website located at www.whatsapp.com, 13 and markets, offers, and distributes applications such as the WhatsApp Messenger 14 application throughout the United States, including in this District. 15 21. On information and belief, Defendant Instagram, Inc. (“Instagram”) is a 16 Delaware corporation and wholly owned subsidiary of Facebook with a principal 17 place of business at 1601 Willow Road, Menlo Park, CA 94025. On information 18 and belief, Instagram operates and owns the website located at www.instagram.com, 19 and markets, offers, and distributes applications such as the Instagram application 20 throughout the United States, including in this District. 21 22. Upon information and belief, each of the Defendants directly and/or 22 indirectly develops, designs, manufactures, distributes, markets, offers to sell and/or 23 sells infringing products and services in the United States, including in the Central 24 District of California, and otherwise purposefully directs infringing activities to this 25 District in connection with the Facebook, Facebook Messenger, Facebook 26 Messenger Lite, Facebook Workplace Chat, Facebook Pages Manager, WhatsApp 27 Messenger, and Instagram applications. 28 23. Upon information and belief and as further explained below, -7- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 8 of 117 Page ID #:8 1 Defendants have been and are acting in concert, and are otherwise liable jointly, 2 severally or otherwise for a right to relief related to or arising out of the same 3 transaction, occurrence or series of transactions or occurrences related to the 4 making, using, selling, offering for sale or otherwise distributing the Facebook, 5 Facebook Messenger, Facebook Messenger Lite, Facebook Workplace Chat, and 6 Facebook Pages Manager, WhatsApp Messenger, and Instagram applications in this 7 District. In addition, this action involves questions of law and fact that are common 8 to all Defendants. 9 24. For example, on information and belief, between 2017 and the filing of 10 this Complaint, Facebook migrated the Instagram and WhatsApp messaging 11 services from third party servers onto Facebook’s own data centers.1 Accordingly, 12 Facebook is acting in concert with WhatsApp and Instagram in connection with the 13 provision of their messaging services. JURISDICTION AND VENUE 14 15 25. This is a civil action for patent infringement arising under the patent 16 laws of the United States, 35 U.S.C. § 1 et seq. 17 26. This Court has subject matter jurisdiction over the matters asserted 18 herein under 28 U.S.C. §§ 1331 and 1338(a) and 35 U.S.C. §§ 271 et seq. 19 27. This Court has personal jurisdiction over Facebook, in part because 20 Facebook does continuous and systematic business in this District, including by 21 providing infringing products and services to the residents of the Central District of 22 California that Facebook knew would be used within this District, and by soliciting 23 business from the residents of the Central District of California. For example, 24 Facebook is subject to personal jurisdiction in this Court because, inter alia, and 25 1 See, e.g., https://www.cnbc.com/2017/06/07/facebook-planning-to-move- 26 whatsapp-off-ibms-public-cloud.html; 27 http://www.datacenterknowledge.com/archives/2017/06/12/report-facebook-to- move-whatsapp-from-ibm-cloud-to-own-data-centers. 28 -8- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 9 of 117 Page ID #:9 1 upon information and belief, Facebook has a regular and established place of 2 business at its offices in the Central District of California, including the 35,000 sqft 3 Facebook LA Campus in Playa Vista,2 and elsewhere in the State of California, and 4 directly and through agents regularly does, solicits and transacts business in the 5 Central District of California and elsewhere in the State of California, including 6 through its website at www.facebook.com and its Facebook, Facebook Messenger, 7 Facebook Messenger Lite, Facebook Workplace Chat, and Facebook Pages 8 Manager applications marketed, offered, and distributed to and utilized by users of 9 computing and mobile devices in this District and throughout the State of California. 10 28. In particular, Facebook has committed and continues to commit acts of 11 infringement in violation of 35 U.S.C. § 271, and has made, used, marketed, 12 distributed, offered for sale, sold, and/or imported infringing products in the State of 13 California, including in this District, and engaged in infringing conduct within and 14 directed at or from this District. For example, Facebook has purposefully and 15 voluntarily placed the Facebook website and Facebook, Facebook Messenger, 16 Facebook Messenger Lite, Facebook Workplace Chat, and Facebook Pages 17 Manager applications into the stream of commerce with the expectation that its 18 infringing products will be used in this District. The infringing Facebook, Facebook 19 Messenger, Facebook Messenger Lite, Facebook Workplace Chat, and Facebook 20 Pages Manager applications have been and continue to be distributed to and used in 21 this District. Facebook’s acts cause injury to BlackBerry, including within this 22 District. 23 29. This Court has personal jurisdiction over WhatsApp, in part because 24 WhatsApp does continuous and systematic business in this District, including by 25 26 2 See http://www.latimes.com/business/technology/la-fi-tn-facebook-office27 20160514-snap-story.html; see also https://www.facebook.com/careers/locations/losangeles/. 28 -9- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 10 of 117 Page ID #:10 1 providing infringing products and services to the residents of the Central District of 2 California that WhatsApp knew would be used within this District, and by soliciting 3 business from the residents of the Central District of California. For example, 4 WhatsApp is subject to personal jurisdiction in this Court because, inter alia, and 5 upon information and belief, WhatsApp has a regular and established place of 6 business in the State of California, including on information and belief through the 7 employment of individuals within this judicial district, and directly and through 8 agents regularly does, solicits and transacts business in the Central District of 9 California and elsewhere in the State of California, including through its website at 10 www.whatsapp.com and its WhatsApp Messenger application marketed, offered, 11 and distributed to and utilized by users of mobile devices in this District and 12 throughout the State of California. 13 30. In particular, WhatsApp has committed and continues to commit acts of 14 infringement in violation of 35 U.S.C. § 271, and has made, used, marketed, 15 distributed, offered for sale, sold, and/or imported infringing products in the State of 16 California, including in this District, and engaged in infringing conduct within and 17 directed at or from this District. For example, WhatsApp has purposefully and 18 voluntarily placed the WhatsApp Messenger application into the stream of 19 commerce with the expectation that its infringing product will be used in this 20 District. The infringing WhatsApp Messenger application has been and continues to 21 be distributed to and used in this District. WhatsApp’s acts cause injury to 22 BlackBerry, including within this District. 23 31. This Court has personal jurisdiction over Instagram, in part because 24 Instagram does continuous and systematic business in this District, including by 25 providing infringing products and services to the residents of the Central District of 26 California that Instagram knew would be used within this District, and by soliciting 27 business from the residents of the Central District of California. For example, 28 Instagram is subject to personal jurisdiction in this Court because, inter alia, and -10- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 11 of 117 Page ID #:11 1 upon information and belief, Instagram has a regular and established place of 2 business in the State of California, including on information and belief through the 3 employment of individuals within this judicial district, and directly and through 4 agents regularly does, solicits and transacts business in the Central District of 5 California and elsewhere in the State of California, including through its website at 6 www.instagram.com and its Instagram application marketed, offered, and 7 distributed to and utilized by users of mobile devices in this District and throughout 8 the State of California. 9 32. In particular, Instagram has committed and continues to commit acts of 10 infringement in violation of 35 U.S.C. § 271, and has made, used, marketed, 11 distributed, offered for sale, sold, and/or imported infringing products in the State of 12 California, including in this District, and engaged in infringing conduct within and 13 directed at or from this District. For example, Instagram has purposefully and 14 voluntarily placed the Instagram application into the stream of commerce with the 15 expectation that its infringing product will be used in this District. The infringing 16 Instagram application has been and continues to be distributed to and used in this 17 District. Instagram’s acts cause injury to BlackBerry, including within this District. 18 33. Venue is proper in this District under the provisions of 28 U.S.C. 19 §§ 1391 and 1400(b) at least because a substantial part of the events or omissions 20 giving rise to the claims occurred in this judicial district, and because Defendants 21 have committed acts of infringement in this District and have a regular and 22 established place of business in this District. 23 34. In particular, on information and belief, Facebook has a regular and 24 established place of business at its 35,000 square foot Facebook Los Angeles 25 26 27 28 -11- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 12 of 117 Page ID #:12 1 Campus, located in Playa Vista, CA.3 On further information and belief, WhatsApp 2 and Instagram employ engineers and/or other personnel within this district, 3 including personnel at Facebook facilities in this district.4 4 35. On information and belief, WhatsApp and Instagram are wholly owned 5 subsidiaries of Facebook. On information and belief, Facebook does not separately 6 report revenue from Instagram or WhatsApp in its filings to the Securities Exchange 7 Commission, but rather reports combined revenue from its various products 8 including Facebook, WhatsApp, and Instagram. Market analysis indicates that 9 Facebook, WhatsApp, and Instagram and their respective products are viewed in the 10 market as an integrated package with each of the products benefiting from 11 substantial network effects.5 12 13 3 See http://www.latimes.com/business/technology/la-fi-tn-facebook-office20160514-snap-story.html; see also 15 https://www.facebook.com/careers/locations/losangeles/. 14 16 4 www.LinkedIn.com identifies at least 17 people in this District that are dually 17 employed by both Facebook and one of WhatsApp or Instagram. 5 See https://www.marketwatch.com/story/the-youtube-and-instagram-secret-that18 google-and-facebook-dont-want-you-to-know-2018-01-26 (“For some analysts, the 19 question of breaking out revenue for Instagram is moot, however, because the company essentially sells ads for Facebook and Instagram as a single package. . . 20 .”); http://markets.businessinsider.com/news/stocks/facebook-stock-price-analyst21 interview-2017-8-1002276065 (“More and more people are spending more of their daily waking hours on Facebook. We estimate that across Facebook's different 22 properties - Facebook.com, WhatsApp, Messenger, and Instagram - users spend on 23 average close to an hour every day. That metric was a lot lower two or three years 24 ago. By having people spend more time on the sites or apps, they're obviously consuming more content, more pages, and giving Facebook the ability to monetize 25 against that content and pages.”); 26 http://corporate1.morningstar.com/Documents/UK/Products/Equity-ResearchServices/FB_US_20160728/ (“Now that Facebook has emerged as the clear-cut 27 social media leader, we believe that the company’s offerings, consisting mainly of 28 Facebook, Instagram, Messenger, and WhatsApp, have further strengthened network (Continued . . .) -12- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 13 of 117 Page ID #:13 1 36. On further information and belief, Facebook not only “owns,” but also 2 “operates” both Instagram and WhatsApp, such operation including the cooperative 3 development, improvement, and/or support of their respective services.6 For 4 example, on information and belief, Facebook “shares information about” 5 Facebook’s users with Instagram and WhatsApp “to facilitate, support and integrate 6 [Instagram’s and WhatsApp’s] activities and improve our services.”7 Likewise, 7 Instagram has been “collaborating with Facebook's team” to “build a better 8 Instagram for you,” including “shar[ing] insights and information with each other 9 [to] build better experiences for our users.”8 Similarly, “[a]s part of the Facebook 10 family of companies, WhatsApp receives information from, and shares information 11 with, this family of companies [including Facebook]. We may use the information 12 we receive from them, and they may use the information we share with them, to 13 help operate, provide, improve, understand, customize, support, and market our 14 Services and their offerings.”9 On further information and belief, Facebook, 15 WhatsApp, and Instagram have endeavored to integrate their products with each 16 other from a technical standpoint including, but not limited to: Instagram allowing 17 users to double-post Instagram stories directly to Facebook from the Instagram 18 app;10 Facebook offering a unified messages inbox that lets businesses see and reply 19 20 21 (. . . continued) 22 effects for the firm, where all of these platforms become more valuable to its users as people both join the networks and use these services.”). 23 6 See https://www.facebook.com/help/111814505650678. 24 7 See https://www.facebook.com/help/111814505650678. 25 8 See https://help.instagram.com/155833707900388. 9 See https://www.whatsapp.com/legal/; https://blog.whatsapp.com/10000627/Looking-ahead-for-WhatsApp. 27 10 See https://techcrunch.com/2017/10/04/instaface/. 26 28 -13- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 14 of 117 Page ID #:14 1 to their Facebook, Messenger, and Instagram interactions in one place;11 Facebook, 2 Messenger, and Instagram providing cross-application notifications;12 and Facebook 3 providing features allowing users to click a button on a business’s Facebook page to 4 open a WhatsApp chat with that business.13 5 FACTS COMMON TO ALL CLAIMS 6 BlackBerry’s Innovation and Industry Recognition 7 37. BlackBerry is a global leader in the mobile communications industry. 8 Through its significant investment in research and development over the past 30 9 years, BlackBerry has developed innovative, cutting-edge technologies that have 10 changed the face of telecommunications. In particular, BlackBerry has developed 11 key innovations in the way mobile devices and communications software interact 12 with and receive input from users. BlackBerry’s innovations in messaging and UI 13 development improved the speed and accuracy with which users could perform 14 various tasks on their mobile devices. 15 38. In the late 1990s, BlackBerry began to release a series of game- 16 changing handheld mobile devices that enabled users to send and receive email and 17 messages on the go, without needing to be tethered to a modem or a desktop 18 computer. The innovative nature of the 1998 RIM 950 Wireless Handheld, for 19 example, was instantly recognized, garnering both an Editor’s Choice Award from 20 CNET and Andrew Seybold’s Outlook Award. In particular, the press praised the 21 RIM 950’s keyboard for its advanced ergonomic features, including an easy-to-type22 on keyboard layout despite the device’s miniature size. 23 11 24 See https://www.engadget.com/2016/11/15/facebook-and-instagram-unifiedbusiness-inbox/. 25 12 See https://www.cnet.com/news/facebook-messenger-instagram-cross26 notifications/; https://techcrunch.com/2017/05/18/instafacemess/. 13 See https://techcrunch.com/2017/12/13/click-to-whatsapp-messaging-buttons-are27 now-rolling-out-in-facebook-ads/. 28 -14- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 15 of 117 Page ID #:15 1 39. In 2002, BlackBerry released the BlackBerry 6710 and 6720 – the first 2 BlackBerry devices capable of both sending emails and making phone calls, and 3 some of the earliest smartphones released in the United States. The next year, 4 BlackBerry introduced smartphone models that added built-in audio hardware and 5 color screens. Since those early smartphones, BlackBerry has continued to offer 6 handheld wireless products incorporating its proprietary technologies in security, 7 communications, mobile device user interfaces, and other areas. 8 40. In 2005, BlackBerry introduced the innovative BlackBerry Messenger 9 (or “BBM”) application, which revolutionized the concept of instant messaging. 10 BBM provided the first form of point-to-point communications that was instant, 11 cross-carrier, and mobile. The developers of BBM further incorporated a well12 designed graphical user interface and other innovative features not utilized by 13 messaging platforms at that time. For example, BBM has been credited as the first 14 messaging platform to enable status updates showing when messages were 15 Delivered and Read by users, which created a pioneering sense of real-time presence 16 that is now standard in many instant messaging applications. Additionally, BBM’s 17 unique platform has allowed users to communicate even when traditional forms of 18 cell communication were incapacitated, such as during the Chilean earthquake in 19 2010.14 20 41. Over the years, BlackBerry continued to develop and improve 21 successive versions of BBM by introducing features such as GPS positioning, 22 connected applications, voice chat, private chat, and many other features. As a 23 result, BBM has been widely downloaded and is popular among users of all 24 platforms, including Android and iOS. 25 14 Indeed, more than 5 million people See, e.g., https://www.cio.com/article/2420175/blackberry-phone/blackberry- 26 messenger--bbm--keeps-chilean-quake-affected-connected.html; 27 http://www.nytimes.com/2001/09/20/technology/the-right-connections-the-simple- blackberry-allowed-contact-when-phones-failed.html. 28 -15- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 16 of 117 Page ID #:16 1 downloaded BBM within 8 hours of the release of its Android and iOS versions in 2 October 2013. By March 4, 2015, the Android version of BBM had reached 100 3 million Google Play installs. BBM also enjoys strong user loyalty, with studies 4 finding that 82% of BBM’s Android users continue using the application 90 days 5 after installation. Only Facebook and WhatsApp—which unlawfully utilize many 6 of BBM’s patented features—have similar user retention figures. 7 42. Each successive iteration of BlackBerry’s wireless devices and 8 technologies have received significant unsolicited coverage in the media. For 9 example, GSMA—the largest and most well-known association of mobile 10 operators—recognized BlackBerry and its communication technologies as 11 “chang[ing] the face of corporate communication.” Thomson Reuters named 12 BlackBerry one of the World’s Top 100 Most Innovative Organizations, based 13 largely on the number of “important patents” owned by BlackBerry. In 2015, 14 Forrester Research crowned BlackBerry as a “leader in mobile management” based 15 on BlackBerry’s focus in security software and mobile solutions. 16 43. BlackBerry’s handheld devices and communications technologies have 17 garnered widespread industry acclaim for both their unique design and their 18 performance. For example, BlackBerry mobile devices have garnered dozens of 19 industry awards, including the GSMA Chairman’s Award, InfoWorld Magazine’s 20 Product of the Year Award, PC World’s World Class Award, the Network Industry 21 Award for Best New Mobile Communications Product, the BusinessWeek Best 22 Product of the Year Award, Digit Magazine’s “World’s Best Mobile OS” Award, 23 Security Products “Govies” Government Security Award, and PC Magazine’s Best 24 Products of the Year Award. BBM in particular has been recognized for its 25 innovations in mobile messaging, being awarded “Superstar” distinction from the 26 2014 Mobile Star Awards in the Mobile Messaging or Email category, the Indonesia 27 Golden Ring Award for Best Mobile Social Media, and the ICA 2014 Award for 28 Best Mobile Chat App. -16- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 17 of 117 Page ID #:17 1 44. BlackBerry’s more recent innovations have garnered similar industry 2 acclaim. For example, in 2015 BlackBerry’s Passport was awarded the prestigious 3 Red Dot “Best of the Best” award for innovative product design (from thousands of 4 total entries); BlackBerry and BBM were recognized with the Mobile Marketing 5 Association’s “Smartie” Award for 2015 Publisher/Media Company of the Year in 6 Mobile; and BlackBerry’s PRIV was awarded the Red Dot “Design Award” for best 7 product design in 2016. BlackBerry’s Patents 8 9 45. U.S. Patent No. 7,372,961 (“’961 Patent”) is entitled “Method of public 10 key generation,” and was issued on May 13, 2008. A true and correct copy of the 11 ’961 Patent is attached as Exhibit A. 12 46. The ’961 Patent was filed on Dec. 26, 2001 as U.S. Patent Application 13 No. 10/025,924 and claims priority to Canadian Patent Appl. No. 2,329,590 filed 14 Dec. 27, 2000. 15 47. BlackBerry Limited is the owner of all rights, title, and interest in and 16 to the ’961 Patent, with the full and exclusive right to bring suit to enforce the ’961 17 Patent, including the right to recover for past infringement. 18 48. The ’961 Patent is valid and enforceable under United States Patent 49. U.S. Patent No. 8,209,634 (“’634 Patent”) is entitled “Previewing a 19 Laws. 20 21 new event on a small screen device,” and was issued on Jun. 26, 2012. A true and 22 correct copy of the ’634 Patent is attached as Exhibit B. 23 50. The ’634 Patent was filed on Feb. 24, 2004 as U.S. Patent Application 24 No. 10/784,781 and claims the benefit of U.S. Provisional Patent Application No. 25 60/525,958 filed Dec. 1, 2003. 26 51. BlackBerry Limited is the owner of all rights, title, and interest in and 27 to the ’634 Patent, with the full and exclusive right to bring suit to enforce the ’634 28 Patent, including the right to recover for past infringement. -17- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 18 of 117 Page ID #:18 1 52. The ’634 Patent is valid and enforceable under United States Patent 53. U.S. Patent No. 8,279,173 (“’173 Patent”) is entitled “User interface for 2 Laws. 3 4 selecting a photo tag,” and was issued on Oct. 2, 2012. A true and correct copy of 5 the ’173 Patent is attached as Exhibit C. 6 54. The ’173 Patent was filed on Oct. 4, 2011 as U.S. Patent Application 7 No. 13/252,807 and is a continuation of U.S. Patent Application No. 11/746,285 8 filed May 9, 2007, which issued as U.S. Patent No. 8,031,170. 9 55. BlackBerry Limited is the owner of all rights, title, and interest in and 10 to the ’173 Patent, with the full and exclusive right to bring suit to enforce the ’173 11 Patent, including the right to recover for past infringement. 12 56. The ’173 Patent is valid and enforceable under United States Patent 57. U.S. Patent No. 8,301,713 (“’713 Patent”) is entitled “Handheld 13 Laws. 14 15 electronic device and associated method providing time data in a messaging 16 environment,” and was issued on Oct. 30, 2012. A true and correct copy of the ’713 17 Patent is attached as Exhibit D. 18 58. The ’713 Patent was filed on May 19, 2011 as U.S. Patent Application 19 No. 13/111,675 and is a continuation of U.S. Patent Application No. 10/944,925 20 filed Sept. 20, 2004, which issued as U.S. Patent No. 7,970,849, and claims the 21 benefit of U.S. Provisional Patent Application No. 60/504,379 filed Sept. 19, 2003. 22 59. BlackBerry Limited is the owner of all rights, title, and interest in and 23 to the ’713 Patent, with the full and exclusive right to bring suit to enforce the ’713 24 Patent, including the right to recover for past infringement. 25 60. The ’713 Patent is valid and enforceable under United States Patent 61. U.S. Patent No. 8,429,236 (“’236 Patent”) is entitled “Transmission of 26 Laws. 27 28 status updates responsive to status of recipient application,” and was issued on Apr. -18- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 19 of 117 Page ID #:19 1 23, 2013. A true and correct copy of the ’236 Patent is attached as Exhibit E. 2 62. The ’236 Patent was filed on Dec. 23, 2009 as U.S. Patent Application 3 No. 12/645,873 and claims the benefit of U.S. Provisional Patent Application No. 4 61/167,772 filed Apr. 8, 2009. 5 63. BlackBerry Limited is the owner of all rights, title, and interest in and 6 to the ’236 Patent, with the full and exclusive right to bring suit to enforce the ’236 7 Patent, including the right to recover for past infringement. 8 64. The ’236 Patent is valid and enforceable under United States Patent 65. U.S. Patent No. 8,677,250 (“’250 Patent”) is entitled “System and 9 Laws. 10 11 method for switching between an instant messaging conversation and a game in 12 progress,” and was issued on Mar. 18, 2014. A true and correct copy of the ’250 13 Patent is attached as Exhibit F. 14 66. The ’250 Patent was filed on Dec. 7, 2010 as U.S. Patent Application 15 No. 12/962,405 and is a continuation of U.S. Patent Application No. 11/537,047 16 filed Sept. 29, 2006, which issued as U.S. Patent No. 7,861,175. 17 67. BlackBerry Limited is the owner of all rights, title, and interest in and 18 to the ’250 Patent, with the full and exclusive right to bring suit to enforce the ’250 19 Patent, including the right to recover for past infringement. 20 68. The ’250 Patent is valid and enforceable under United States Patent 69. U.S. Patent No. 9,349,120 (“’120 Patent”) is entitled “System and 21 Laws. 22 23 method for silencing notifications for a message thread,” and was issued on May 24, 24 2016. A true and correct copy of the ’120 Patent is attached as Exhibit G. 25 70. The ’120 Patent was filed on Feb. 26, 2010 as U.S. Patent Application 26 No. 12/713,577 and claims priority to U.S. Provisional Appl. No. 61/167,542 filed 27 Apr. 8, 2009. 28 71. BlackBerry Limited is the owner of all rights, title, and interest in and -19- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 20 of 117 Page ID #:20 1 to the ’120 Patent, with the full and exclusive right to bring suit to enforce the ’120 2 Patent, including the right to recover for past infringement. 3 72. The ’120 Patent is valid and enforceable under United States Patent 4 Laws. Defendants’ Use of BlackBerry’s Patented Technologies 5 6 73. On information and belief, Facebook released the Facebook Messenger 7 application on August 9, 2011, more than six years after BlackBerry’s release of 8 BlackBerry Messenger (“BBM”).15 On information and belief, Facebook 9 subsequently released the Pages Manager application in 2012, and the Messenger 10 Lite and Workplace Chat applications in 2017.16 Additionally, WhatsApp and 11 Instagram released the first versions of their applications in 2009 and 2010, 12 respectively—nearly four and five years after BBM was released, respectively. 17 13 74. By the time Defendants had released even the first (and simplest) 14 versions of their respective messaging applications, BlackBerry had already 15 invented most of the technologically 16 functionalities at issue in this action. innovative messaging application Indeed, most of these innovations were 17 already being utilized by users of BlackBerry’s smartphones, which represented 18 more than half of the U.S. market in 2009 and came with BBM installed.18 Industry 19 15 See, e.g., https://www.cnet.com/news/facebook-chat-begins-to-roll-out/; https://techcrunch.com/2011/08/09/facebook-launches-standalone-mobile21 messenger-app-and-it%E2%80%99s-beluga/. 20 16 See, e.g., https://techcrunch.com/2017/10/02/facebook-lite-us-uk-canada-ireland/ (Facebook Messenger Lite released on or around October 2017); 23 https://www.engadget.com/2017/10/26/facebook-opens-its-workplace-chat-desktop24 app-to-everyone/ (same for Facebook Workplace Chat); https://www.cnet.com/howto/getting-started-with-facebook-pages-manager-for-ios/ (Facebook Pages Manager 25 released on or around May 2012); 22 26 17 See, e.g., http://www.wired.co.uk/article/whatsapp-exclusive; 27 https://techcrunch.com/2010/10/06/instagram-launch/. 18 See http://money.cnn.com/2009/06/17/technology/rim_blackberry_preview/. 28 -20- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 21 of 117 Page ID #:21 1 commentators at the time noted the success of BBM, including with consumer 2 audiences such as “[t]eens, for instance, [who] love BlackBerry Messenger, RIM’s 3 proprietary instant feature.” messaging See 4 http://archive.fortune.com/2009/08/12/technology/blackberry_research_in_motion.f The consumer demand and appreciation for BlackBerry’s 5 ortune/index.htm. 6 innovative messaging application functionalities was further evidenced in 2013, 7 when BlackBerry released the first versions of BBM for Apple’s iOS and Google’s 8 Android mobile device platforms and recorded over 5 million downloads of BBM 9 within the first 8 hours of being made available. See 10 https://9to5mac.com/2013/10/21/blackberry-announces-5-million-downloads-of11 bbm-for-ios-and-android-only-8-hours-after-release/. In just two years, BBM had 12 been installed in over 100 million Android devices alone. See 13 http://blogs.blackberry.com/2015/03/bbm-hits-100m-google-play-installs/. 14 75. Seizing on the success of BBM and demand for consumer messaging 15 platforms featuring BlackBerry’s innovative features and functionalities, Defendants 16 have developed and released their respective infringing messaging applications that 17 incorporate and unlawfully utilize BlackBerry’s patented technologies, including, 18 without limitation, Facebook and Facebook Messenger for Android and iOS 19 devices, WhatsApp Messenger for Android and iOS devices, and Instagram for 20 Android and iOS devices, as well as the Facebook website (www.facebook.com). 21 76. On information and belief, Defendants market, offer, and distribute the 22 infringing Facebook, Facebook Messenger, Facebook Messenger Lite, Facebook 23 Workplace Chat, and Facebook Pages Manager, WhatsApp Messenger, and 24 Instagram applications in and within the United States, including through 25 distribution platforms such as the Apple iTunes App Store and the Google Android 26 Play Store, as well as their own websites, www.facebook.com, 27 www.messenger.com, www.whatsapp.com, and www.instagram.com. 28 77. On information and belief, the accused applications and websites are an -21- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 22 of 117 Page ID #:22 1 important part of Facebook’s offerings in the United States and are the primary or 2 only product or service offered by WhatsApp and Instagram, which were acquired 3 by Facebook for approximately $19 billion and $1 billion, respectively.19 4 78. On information and belief, Defendants encourage users of mobile and 5 computing devices such as mobile phones and desktop and laptop computers in the 6 United States to download and use the infringing applications and websites, and 7 such users do so download and use the infringing applications and websites in the 8 manner Defendants intend such applications and websites to be used. 9 79. On information and belief, Defendants have also designed, developed, 10 tested, and used the infringing applications in and within the United States. 11 COUNT I: INFRINGEMENT OF U.S. PATENT NO. 7,372,961 12 80. BlackBerry incorporates by reference and re-alleges all of the foregoing 13 paragraphs of this Complaint as if fully set forth herein. The ’961 Patent 14 15 81. The ’961 Patent discloses, among other things, “key generation 16 technique[s for public key cryptosystems] in which any bias is eliminated during the 17 selection of the key.” ’961 Patent at 3:1-3. 18 82. As the ’961 Patent explains, public key cryptosystems are used to 19 protect and provide security for data communication systems. Specifically, “[s]uch 20 systems use a private key k and a corresponding public key αk where α is a generator 21 of the group. Thus one party may encrypt a message m with the intended recipients 22 public key and the recipient may apply his private key to decrypt it.” Id. at 1:12-16. 23 83. More particularly, such public key cryptosystems can “be used to sign 24 messages to authenticate the author and/or the contents. In this case the sender will 25 sign a message using his private key and a recipient can verify the message by 26 27 19 See, e.g., https://newsroom.fb.com/news/2014/02/facebook-to-acquire-whatsapp/; https://newsroom.fb.com/news/2012/04/facebook-to-acquire-instagram/. 28 -22- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 23 of 117 Page ID #:23 1 applying the public key of the sender. If the received message and the recovered 2 message correspond then the authenticity is verified.” Id. at 1:26-32. 3 84. As the ’961 Patent notes, “the security of such systems … depend[s] on 4 the private key remaining secret.” Id. at 1:37-38. Thus, one prevalent set of 5 protocols to provide for the secrecy of the private key “use[s] a pair of private keys 6 and corresponding public keys, referred to as long term and short term or ephemeral 7 key pairs respectively. The ephemeral private key is generated at the start of each 8 session between a pair of correspondents, usually by a random number generator. 9 The corresponding, ephemeral public key is generated and the resultant key pair 10 used in one of the possible operations described above. The long-term public key is 11 utilized to authenticate the correspondent through an appropriate protocol. Once the 12 session is terminated, the ephemeral key is securely discarded and a new ephemeral 13 key generated for a new session.” Id. at 1:37-50. 14 85. However, the ’961 Patent also explains the potential weakness in such 15 public key based cryptosystems, even those which use both ephemeral keys to help 16 maintain the secrecy of the long term private key: “if an ephemeral key k and the 17 associated message m and signature (r,s) is obtained it may be used to yield the long 18 term private key d and thereafter each of the ephemeral keys k can be obtained.” Id. 19 at 2:24-27. 20 86. While the commonly used methods for generating and verifying digital 21 signatures (Digital Signature Algorithm, or “DSA” and Elliptic Curve DSA, or 22 “ECDSA”), did not “inherently disclose any information about the public key k,” 23 the ’961 Patent noted that the implementation “may be done in such a way as to 24 inadvertently introduce a bias in to the selection of k. This small bias may be 25 exploited to extract a value of the private key d and thereafter render the security of 26 the system vulnerable” and potentially insecure. Id. at 2:27-29, 33-37. 27 87. In particular, as the ’961 Patent notes, the prevailing government 28 standard at the time governing the generation and verification of digital signatures, -23- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 24 of 117 Page ID #:24 1 the FIPS 186-2 Standard (promulgated by the National Institute of Standards and 2 Technology (“NIST”)), suffered from this very problem, i.e., using the algorithm 3 specified in the FIPS 186-2 standard resulted in “more values [lying in the] first 4 interval than the second and therefore there is a potential bias in the selection of k.” 5 Id. at 2:36-55. This bias could be used by hackers to obtain the private key and 6 therefore render the cryptographic system ineffective. Thus, the inventors of the 7 ’961 Patent developed “a key generation technique in which any bias is eliminated 8 during the selection of the key,” resulting in a more secure key generation 9 technique. Id. at 3:1-3. 10 88. The ’961 Patent further describes the type of cryptographic systems 11 that are used to generate such keys in a manner which eliminates bias during the 12 selection of the key. As explained therein, a pair of correspondents are exchanging 13 messages for which the parties wish to maintain security. The correspondents “may 14 be computer terminals, point-of-sale devices, automated teller machines, constrained 15 devices such as PDA’s, cellphones, pagers or any other device enabled [f]or 16 communication over a link 16.” Id. at 3:28-32. The correspondents are “connected 17 by a communication link 16,” which “may be a dedicated link, a multipurpose link 18 such as a telephone connection or a wireless link depending on the particular 19 applications.” Id. at 3:24-28. 20 89. In some embodiments, to perform the key generation techniques 21 disclosed in the ’961 Patent, “[e]ach of the correspondents 12, 14 includes a secure 22 cryptographic function 20 including a secure memory 22, an arithmetic processor 24 23 for performing finite field operations, a random number generator 26 and a 24 cryptographic hash function 28 for performing a secure cryptographic hash.… 25 [E]ach of these functions is controlled by a processor executing instructions to 26 provide functionality and inter-operability as is well known in the art.” Id. at 3:3327 44. Further, the “secure memory 22 includes a register 30 for storing a long-term 28 private key, d, and a register 32 for storing an ephemeral private key k.” Id. at 3:45-24- Case No. 2:18-cv-01844 COMPLAINT FOR PATENT INFRINGEMENT Case 2:18-cv-01844 Document 1 Filed 03/06/18 Page 25 of 117 Page ID #:25 1 47. 2 90. The ’961 Patent discloses several variations of the anti-bias key 3 generation methods claimed therein. In a first such method, the “cryptographic 4 function is performed over a group of order q, where q is a prime represented as a 5 bit string of predetermined length L.” Id. at 3:67 - 4:2. In order to generate the 6 ephemeral key, k, the system first “obtain[s] a seed value (SV) from the random 7 number generator 26.” Id. at 3:64-66. Next the system applies a hash function 28 to 8 the seed value to generate an output of L bits. See id. at 4:6-10. 9 91. To confirm that the hashed seed value is acceptable to use in generating 10 the ephemeral key (e.g., will not result in a potential bias), the hashed seed value “is 11 tested against the value of q and a decision made based on the relative values. If 12 H(seed)