Claims from BlackBerry Messaging and Social Media Patents Invalidated Under Alice in Central District of California
A California judge has ruled that claims from four messaging and social media patents asserted by BlackBerry are invalid under Alice. In an October 1 order issued in the company’s lawsuit against Twitter, District Judge George H. Wu held that two patents generally related to notification management are unpatentably directed to abstract ideas but granted the plaintiff leave to amend its complaint in order to add additional factual allegations regarding those patents. The court also declined to invalidate two other patents, one due to a factual dispute under Aatrix and the other due to its similarity to certain other patents previously upheld by the Federal Circuit. In addition, the order incorporated Judge Wu’s analysis from another sealed decision issued that same day in cases against Facebook and Snap in which the court invalidated a further two patents but left a third intact.
BlackBerry launched the underlying litigation campaign in July 2016, adding cases against Facebook (and subsidiaries Instagram and Whatsapp) in March 2018 (2:18-cv-01844), Snap that April (2:18-cv-02693), and Twitter in February 2019 (2:19-cv-01444). Asserted in those complaints are multiple, overlapping sets of patents from the 48 presently at issue in the campaign. All three defendants have been accused of infringement through their respective services’ and apps’ support of notification alert badges and advertising, with Facebook and Twitter also alleged to infringe through their products’ support of silencing notifications for selected messaging threads and Facebook and Snap targeted over their support of time-stamped messages and location sharing. Facebook is further accused of infringement through its products’ support of encrypted messaging, game-related messaging, and photo tagging, while Twitter’s support of retweets, message read receipts, and tweet filtering are also at issue in that case. The cases against Facebook and Snap were consolidated in September 2018.
In June 2018, Facebook filed a Rule 12(b)(6) motion to dismiss under Alice as to four of the asserted patents, arguing that the 8,296,351 and 8,676,929 patents are both unpatentably directed to the abstract idea of “sending advertisements to users based on triggering events”; the 8,209,634 patent, to “displaying information regarding unread messages”; and the 9,349,120 patent, to “silencing message notifications”. That same day, Snap filed its own 12(b)(6) motion, asserting similar arguments as to the ‘351, ‘929, and ‘634 patents and further arguing that the 8,301,713 patent is impermissibly directed to the abstract ideas of “time stamping”; and the 8,326,327 and 8,825,084 patents, to “locating and mapping activity”.
Judge Wu ruled on the Facebook and Snap motions together in August 2018, granting Snap’s challenge as to the ‘713 patent as directed to the abstract idea of “displaying a timestamp based on the rule of whether a predetermined duration of time has passed” without the addition of a sufficient inventive concept. However, the court denied the motions as to all other patents. Judge Wu explained that for the ‘634 patent, statements from the specification show that the “claims are drawn to a particular technological improvement in mobile devices rather than an abstract idea”, citing the Federal Circuit’s 2018 decision in Core Wireless v. LG Electronics. Even if the patent were not abstract, Judge Wu explained, dismissal would also be premature under Berkheimer. Dismissal was also premature for the same reason for the ‘929 patent, the court held, further ruling that the ‘327 and ‘084 patents are not abstract in light of Core Wireless.
Facebook and Snap then brought a second round of Alice challenges in July 2019, with Facebook and Snap each filing a single motion for summary judgment against the ‘351 and ‘929 patents and Facebook filing another summary judgment motion against the ‘120 patent. However, the day after, Judge Wu struck the motions, citing “reasons of judicial economy and case management” and the filings’ collective page count, ordering the parties to file a shorter, consolidated motion for summary judgment within seven days.
The parties filed that motion a week later, arguing first that the ‘351 and ‘929 patents are directed to the abstract idea of “collecting and sending ads or other content to a user based on location or time of day”. They analogized this to the manner in which “[b]usinesses have promoted products and services in this way for generations by sending coupons for a free dessert on a customer’s birthday or handing a customer a coupon when they walk by a store”. Furthermore, the defendants argued that both claim construction and extrinsic evidence—including “plaintiff’s expert admissions and contemporaneous texts”—made it clear that the challenged claims “merely collect information, analyze it, and display certain results” rather than providing an inventive concept, and that “there is nothing about the claims that is not routine or conventional”. The ‘120 patent, they continued, is directed to the abstract idea of “not being notified about new messages that fall into a particular category”, noting that “for decades, people have called out to their assistants, ‘hold calls from Joe’”. The challenged claims again lack an inventive concept, they argued, as they “merely recite generic computer techniques for keeping track of and displaying information”, with BlackBerry’s arguments also allegedly undermined by extrinsic evidence.
Meanwhile, Twitter had filed its own 12(b)(6) motion under Alice in June 2019, arguing that the 8,286,089 patent is unpatentably directed to the abstract idea of “flagging new messages until the inbox has been checked”; the 8,572,182 patent, to “inferring the status of messages in a conversation, such as whether the messages have been delivered or read”; the 9,021,059 patent, to “communicating the availability of information through a networked hub”; the 8,825,777 patent, to “screening repetitive content when it becomes excessive”; the ‘351 and ‘929 patents, to “assembling targeted advertising”, a “fundamental business practice”; and the ‘120 patent, to “sorting, analyzing, and presenting new messages”.
Judge Wu issued two orders on those motions on October 1, including a sealed opinion filed in the Facebook/Snap case addressing those defendants’ consolidated summary judgment motion, and another, publicly viewable decision in the Twitter case.
The latter order began its analysis by incorporating the court’s holdings as to the patents in the Facebook/Snap case. First, the court observed that it had invalidated the asserted claims from the ‘351 and ‘929 patents in its other, sealed opinion, and adopted that ruling as to the Twitter case as well—further denying BlackBerry leave to amend its complaint. Additionally, Judge Wu explained that he had denied summary judgment as to the ‘120 patent in the other case as the patent was not directed to an abstract idea, and denied Twitter’s challenge as to that patent as a result.
Judge Wu then turned to the patents solely challenged by Twitter. For the ‘089 patent, the court “specifically incorporate[d] by reference the analysis provided in each of its previous § 101 rulings regarding the ‘120 Patent”, explaining that the “parallels” between the two patents “put the ‘089 Patent similarly under the purview of the claims held non-abstract at Step One in Core Wireless”. If the patent were not abstract, the court continued, dismissal would be precluded under Aatrix due to factual questions that “likely exist” at Alice step two. Judge Wu also denied the motion as to the ‘059 patent as premature, explaining that “[s]ufficient Federal Circuit cases exist for the proposition that a specific arrangement and relationship among networked components may be patent-eligible as drawn to a technologically improved or unconventional distributed architecture, whether it be at Mayo/Alice Step One or Two”.
Judge Wu continued by addressing the ‘182 and ‘777 patents, highlighting them as warranting “further discussion” than the others so far addressed. The challenged claims of the ‘182 patent, Judge Wu remarked, are “highly reminiscent” of claims from the ‘713 patent that the court had previously found invalid. Here, the court rejected BlackBerry’s arguments that the selective display of a timestamp found in the claims (allegedly solving the problem of redundant time stamps) was a technological improvement, as well as the plaintiff’s arguments citing allegedly reduced bandwidth usage. Rather, the court found the challenged claims of the ‘182 patent are directed to the abstract idea of “reducing redundant notifications”, and after concluding that they also lacked an inventive concept, it invalidated the claims.
The challenged claims from the ‘777 patent, Judge Wu then observed, have “similar § 101 shortcomings” to the claims from the ‘182 patent. While BlackBerry had cited the preservation of “network resources and bandwidth” as a technological improvement offered by the ‘777 patent, Judge Wu instead found the claims to be “analogous to determining that a heckler’s increased, repeated comments at a rally require some intervention by event security”, among other analogies offered by Twitter that the court found persuasive. “Limiting the idea of monitoring and curbing content notifications to an online social network environment does not change the nature of the claims to become non-abstract”, the court explained. The claims thus fail at Alice step one, Judge Wu ruled, as they “are directed to solving a non-technological problem in a non-technological way”. Judge Wu then stated that he found BlackBerry’s arguments as to step two to be “unpersuasive”, ruling that the claims failed at step two because the plaintiff’s amended complaint lacked sufficient factual allegations that the claims “recite significantly more than routine, conventional, or well-understood material”.
Judge Wu then concluded by granting BlackBerry’s motion to amend its complaint against Twitter, stating that “[a]lthough the Court is not particularly persuaded that BlackBerry will be able to offer well-pled factual allegations that would support the patent eligibility of the asserted claims of the ‘182 and ‘777 Patents . . . BlackBerry will be permitted to file an amended complaint for the narrow purpose of providing additional factual allegations for these two patents”.
For more background on this campaign, see “BlackBerry Sues Twitter in Growing Campaign of Its Own” (February 2019).
The Impact of Berkheimer and Aatrix
Judge Wu’s decisions come against the backdrop of an overall downturn in Alice invalidation rates. RPX data shows that the share of patents invalidated under Section 101 has remained significantly lower since the Federal Circuit’s February 2018 decisions in Berkheimer and Aatrix, which held that dismissal under Alice may be premature where a party raises questions of fact as to a patent’s inventiveness. While the district court invalidation rate was just over 68% before those decisions issued, counted by patents challenged and adjudicated under Alice, it has since dropped to less than half as of the end of the third quarter.
For more information on this decline, as well as an overview of other recent developments related to patent eligibility, see RPX’s third-quarter review.