BlackBerry vs Facebook – a David vs Goliath conundrum

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“When, as a culture, did we stop loving giant-killers? When did we stop appreciating the small, plucky fighter who could stand up to the behemoth? In school I heard about David and Goliath; at home, I now read Jack and the Beanstalk to my young child. It’s a pretty universal theme, and in my view a worthwhile one. So, what happened to our collective love-affair with the little guy? 

Earlier this year, BlackBerry sued Facebook in the US (United States District Court for the Central District of California) for infringement of multiple patents, relating to various aspects of Facebook Messenger, WhatsApp & Instagram. 

What surprised me most about this case at the time was the level of hostility that seemed to be brought to bear against BlackBerry in certain sections of the non-specialist press. Also, it was odd how charitable some journalists seemed to be to Facebook. Fundamentally, Facebook was being accused of infringing BlackBerry’s intellectual property rights. After all, would one look so charitably if a small, unheard-of company or individual were accused of counterfeiting Louis Vuitton bags, or of copying the Harry Potter books wholesale? I would guess not. 

Also, there seemed to be some (how can I put this) confusion in the lay press regarding a few fundamental principles relating to patents. I would like to try to clear that up here.    

For a start, some commentators seem to have complained that BlackBerry cannot possibly sue Facebook with respect to the features alleged to infringe (such as certain features related to instant messaging) because those features have become so very common in the modern world; ubiquitous, one might say. This is very far from the point. It makes no difference at all how common the features have become in the present time, other than to the extent that BlackBerry might be able to obtain more money from Facebook in damages. What matters is whether the claimed inventions in the patents were new and inventive when the original patent applications were made.  

No 'use it or lose it' principles

I have looked at the patents in question. They involve a variety of inventions, from generating cryptographic keys to linking a messaging service with a game. Some of the applications date back to 2010 or 2011; one of them even seems to date back as far as 2001. So the question is: were the claimed inventions new and inventive back then, when the patents were applied for? Answering this question typically involves asking a technical expert in the relevant field (computer science, telecommunications) to cast their mind back to the relevant date (which, if it’s a decade or more ago, is no simple task in such a fast-moving field) and ask whether someone in the field at that time would have come up with the patented invention just as an obvious, workshop development of what was around at the time. One must put knowledge of the patent itself, and everything else that post-dated it right up until the present day, out of one’s mind. Again, that’s not easy. But that’s the acid test. 

Also, some people were seemingly criticising BlackBerry because they no longer make telephones (talk about kicking someone when they’re down), and are trying to make money from their patents. Well, what’s wrong with that? The whole point of patents is that, in return for disclosing the details of the invention to the public, on a public register, the patentee gets a monopoly for a limited time (typically 20 years). That’s it. 

There’s nothing in patent law saying that you have to sell the thing you have invented. There’s no “use it or lose it” principle here. Also, there’s nothing saying that you have to have spent years and/or millions on coming up with your invention and getting your patent, even though in this case BlackBerry might well have done exactly that. You (and this means you too, dear reader, because anyone can be an inventor) come up with the idea for the invention, then you apply for the patent and, if it’s new and inventive, and described well enough to allow someone else to do what you have invented, you get your monopoly. That is what patents are. They are a reward for having made the details of your invention public. That still applies whether BlackBerry make telephones or not. 

Potential downsides

Facebook have of course defended themselves by saying that the patents in suit are invalid. All of that is fine. If the patents are not valid, and/or if they are not in fact infringed, then of course BlackBerry should not get a penny. But that might be a big “if”. 

Facebook have also retaliated by suing BlackBerry for infringement of several of Facebook’s own patents. This seems to be a change of tone from Facebook, certainly in light of earlier claims from Paul Grewal, Facebook’s deputy general counsel, to the effect that BlackBerry was seeking to tax other people’s innovation by way of their lawsuit. But in any event, Facebook of course have every right to take such action. 

To go back to the original lawsuit, though, the potential downsides of Facebook losing the case filed against them could be costly, to say the least. First, BlackBerry might obtain damages from Facebook for acts of infringement, which damages might be based upon how much money Facebook have made from the infringing features, or perhaps on the amount of money that Facebook would have paid BlackBerry had they taken a licence for the patents. 

Also, maybe even worse than that, Facebook could be slapped with an injunction preventing them from making available the relevant applications for the life of the relevant patent(s). The threat of an injunction is perhaps lowered in the US by the eBay decision, which established a principle that injunctions should generally only be granted where (amongst other things) the patentee suffers irreparable injury as a result of the infringement. (This is the one area where it might actually be relevant that BlackBerry are no longer selling telephones.) However, if an injunction were to be awarded, it could potentially cost Facebook even more than a damages award in terms of lost money, inconvenience and embarrassment. Also, in other jurisdictions (like the UK), where there is no EBay decision, it could be much simpler for a patentee to get a final injunction, if indeed they sue here as well. 

Some people might argue that, far from large IT companies being oppressed by frivolous lawsuits (hand me my violin), the opposite is in fact the case; such companies can often arrogate to themselves other parties’ inventions without so much as a by-your-leave, and then effectively dare those other, smaller, parties to take action. Such actions are costly in both money and management time, and the fact that large IT companies tend to have such vast resources can lead to an imbalance of arms. Fighting giants, far from being a fairy-tale, can in practice be a horror story for the (relatively) little guy, spending time and precious money trying to enforce their legal rights against a foe with seemingly endless resources to throw at them. 

If BlackBerry are eventually successful against Facebook, they might even consider proceeding against other parties. Indeed, a success against Facebook might give encouragement to other patentees to take on Facebook themselves, or big companies like them. If the patentees’ rights are strong, and their complaints are well-founded, then so much the better as far as this commentator is concerned. Long live the giant-killers.”

Matt Jones, Partner, EIP
Image Credit: Blackberry