Thursday, February 14, 2019

BlackBerry seeking German patent injunction against WhatsApp's message-forwarding feature: validity is primary--but not only--issue

I'm temporarily back to Germany for app development-related reasons, and seized the opportunity to return to the Munich I Regional Court for the first time since the envelope-tracker injunction Qualcomm obtained late last year through procedural shenanigans.

Today the Seventh Civil Chamber (Presiding Judge: Dr. Matthias Zigann) held a first hearing in a BlackBerry v. WhatsApp & Facebook case that is part of a set of eight Munich patent infringement actions--over five different patents--against Facebook and its WhatsApp and Instagram subsidaries. The patent-in-suit discussed today: EP1746790 on a "method of sharing an Instant Messaging history."

It's undoubtedly a pure software patent, and Judge Dr. Zigann noted, diplomatically, that such patents are "at the margins of the scope of patent-eligible subject matter." However, the focus of first hearings in Munich is on claim construction and infringement analysis (so the parties can prepare accordingly for the second hearing, which is normally a decisive trial), not on validity.

Not only does the patent have a subject-matter problem but BlackBerry's lead counsel in this action, Quinn Emanuel's Dr. Jesko Preuss ("Preuß" in German), communicated right at the start of the hearing their decision to narrow the asserted claims by way of an additional claim limitation. Such claim amemdments are always an indication of a problem with distinguishing overbroad claims from the prior art. I believe the claims are still invalid, but BlackBerry and QE apparently believe that the narrowed claims are more defensible.

Facebook's lead counsel in this litigation, Freshfields Bruckhaus Deringer's Dr. Frank-Erich Hufnagel (frequently mentioned on this blog because of his representation of Apple in numerous other cases), wasn't impressed. The court even noted sua sponte that the additional claim limitation--requiring that the recipient of a forwarded message from a chat history not be the same as the one from whose chat it is copied--may contradict dependent claim 5. While this wasn't discussed, as a WhatsApp user I immediately realized that this modification means BlackBerry wouldn't have an infringement theory for the WhatsApp feature that allows one to copy a message (or its beginning in case it's long) when replying to a particular message from the history. Now it's exclusively about forwarding messages to a third party.

Judge Dr. Zigann noted that paragraph 10 of the patent specification mentions the possibility of performing a standard "copy and paste" operation for messages from a chat history, though it describes that approach as "woefully inadequate as well as cumbersome." As a matter of fact, the copy-and-paste option was widely used years before the priority date of that patent (July 20, 2005). I remember copying and pasting chat messages in 2000 using ICQ (then the leading instant messenger, and also mentioned in the patent specification) and in 2001 using mIRC, then (and possibly still) the most popular Internet Relay Chat (IRC) client. Old documentations of those (and other) tools should still be available in some Internet archives. Discussion boards also prove what I just said:

  • When UTF support (= support for many more special characters than in ASCII) was added, users discussed the practical implications, and copying and pasting came up.

  • discussed in 2001 how to save ICQ chat histories, and "Daddad" proposed just copying and pasting them.

Therefore, if BlackBerry seeks to defend the patent (which it is trying for now, though I really can't imagine that it would win a case over such a junk patent), it will have to push for a claim construction that gives the patent some technical meaning while still allowing an inventiveness theory.

In the early part of the two-hour hearing, Dr. Hufnagel voiced concerns over Judge Dr. Zigann's remark that a defendant should always focus on the top three invalidity contentions. While the court would allow filing more of then, the defendant should assume that only the top three (as indicated by the defendant)--or, as he conceded the number was arbitrary, maybe also four or six--would get a lot of attention, but the court lacks the time to entertain an infinite number of invalidity contentions. Dr. Hufnagel said that is really weak and has technicity problems, an issue with an inadmissible extension of subject matter, and additionally is anticipated by ten prior art references, a defendant should be able to seek a stay (pending parallel invalidity proceedings) based on more than, for instance, a hard limit of three contentions. Judge Dr. Zigann said that if an invalidity argument beyond the most important few was overwhelmingly strong, it would impress the court at any rate.

Dr. Hufnagel's concern is particularly understandable in light of bifurcation and the enforcement gap: instead of a full invalidity defense, German patent infringement proceedings don't come with an invalidity defense in a narrow sense as defendants can merely seek a stay based on an analysis that rarely results in a stay for obviousness considerations (it's typically just about novelty, or admissibility issues). But infringement cases are adjudicated way faster, so patent holders often get to enforce injunctive relief in Germany and then force a defendant to settle. As a result, any invalidity challenges must be withdrawn, and the patent will survive, regardless of how week it may be.

Facebook's motion for a stay will be discussed in detail at the mid-September trial. Patent attorneys from Samson & Partner (a patent firm that also frequently represents Apple) will then explain how they're challenging the patent in the Federal Patent Court of Germany. Today, Facebook's lawyers Dr. Hufnagel and Dr. Sonja Mross ("Mroß" in German) primarily argued non-infringement in accordance with Munich procedures.

Facebook argues that WhatsApp doesn't practice the claim limitation of "wrapping said message history into a file object based on the selected transmission mode for sharing said message history with said selected recipient" for three distinct, independent reasons:

  • WhatsApp doesn't perform certain steps in the sequence shown in a flowchart (Fig. 2 of the patent specification). Here, the court has an inclination for the time being, and BlackBerry unsurprisingly agrees, that no particular sequence of those operations is claimed.

  • WhatsApp doesn't perform the wrapping operation baed on the selected transmission mode. The patent is about potentially emailing a message history or sharing it through other channels, but in WhatsApp you always just forwarded a message from one WhatsApp installation to another. Here, the court has an inclination for the time being, and BlackBerry naturally agrees, that even if just one transmission mode is used, the patent is still infringed.

  • Based on the patent specification, Facebook argues that the patent expects the wrapping operation to preserve the entire look & feel of a message history, while WhatsApp just forwards the text. Here, the court has an inclination for the time being, and BlackBerry unsurprisingly agrees, that "look & feel" is not explicitly claimed.

Some discussion also arose over the meaning of an "IM communication session," with Facebook arguing from a user-interface angle while the court tends to view a "session" as a duration as opposed to a particular window or set of windows (and BlackBerry, obviously, agrees with the court).

In other words, the court favors a broad claim construction. I venture to guess that Facebook is confident it can show a reasonably high likelihood of the patent being invalidated even with a narrow construction. But come the actual trial in September, I wouldn't be surprised to see Facebook make a "squeeze" argument where a broad interpretation of one or claim limitations is an indispensable requirement for BlackBerry having any infringement argument, but then there would be prior art references over which the claimed invention isn't novel (or maybe there is something novel, but if a novel element is clearly not technical in the sense of European patent law, that's also the end of the story).

What BlackBerry is doing here is the equivalent of buying some lottery tickets. Those lottery tickets aren't cheap, though the fact that no QE partner represented them today shows that at least this particular case here is not one they'd want to bet the farm on. They just hope that maybe one of those Munich cases will present enough of a threat to Facebook that BlackBerry can cash in. But the overall BlackBerry-Facebook dispute has been going for almost a year, and it may take another year or two. Since patents on software "as such" aren't allowed in Europe, I really can't see why BlackBerry should be able to collect any patent royalties on anyone's European revenues with patents of this kind.

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