`
`
`
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 1 of 25 Page ID #:18701
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`COOLEY LLP
`MICHAEL G. RHODES (116127)
`(rhodesmg@cooley.com)
`101 California Street, 5th Floor
`San Francisco, CA 94111-5800
`Telephone: (415) 693-2000
`Facsimile:
`(415) 693-2222
`
`
`COOLEY LLP
`HEIDI L. KEEFE (178960)
`(hkeefe@cooley.com)
`MARK R. WEINSTEIN (193043)
`(mweinstein@cooley.com)
`MATTHEW J. BRIGHAM (191428)
`(mbrigham@cooley.com)
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`Telephone: (650) 843-5000
`Facsimile:
`(650) 849-7400
`
`Attorneys for Defendants
`FACEBOOK, INC., WHATSAPP INC.,
`and INSTAGRAM, LLC
`
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`BLACKBERRY LIMITED,
`Plaintiff,
`
`v.
`FACEBOOK, INC., WHATSAPP INC.,
`and INSTAGRAM LLC,
`Defendants.
`_________________________________
`SNAP INC.,
` Defendant.
`
`
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`FACEBOOK DEFENDANTS’
`OPPOSITION TO BLACKBERRY’S
`MOTION FOR PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(U.S. PATENT NOS. 8,677,250,
`8,279,173, AND 9,349,120)
`Hearing Date: September 5, 2019
`Time: 8:30 A.M.
` Ctrm: 9D
`
`Assigned to the Hon. George H. Wu
`
`
`
`
`
`
`
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`
`
`
`
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`Blackberry's Exhibit No. 2006
`Page 1 of 25
`
`
`
`
`
`Page
`
`INTRODUCTION ............................................................................................ 1
`I.
`LEGAL STANDARD ...................................................................................... 2
`II.
`III. ARGUMENT.................................................................................................... 2
`A.
`BlackBerry Has Not Shown Infringement of the ’250 Patent ............... 2
`B.
`BlackBerry Has Not Shown Infringement of the ’173 Patent ............. 10
`C.
`BlackBerry Has Not Shown Infringement of the ’120 Patent ............. 15
`1.
`BlackBerry Has Not Shown that the Accused Muting
`Features Satisfy All Limitations of the Asserted Claims .......... 15
`a.
`The Accused Products Continue to Provide
`Notifications Even for “Muted” Conversations
`and Chats ......................................................................... 15
`The Accused Facebook and WhatsApp Products
`Do Not Store a Flag Indicating That a Chat Is Muted .... 20
`IV. CONCLUSION .............................................................................................. 21
`
`b.
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 2 of 25 Page ID #:18702
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`TABLE OF CONTENTS
`
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`
`
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`i
`
`
`
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`Blackberry's Exhibit No. 2006
`Page 2 of 25
`
`
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 3 of 25 Page ID #:18703
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`TABLE OF AUTHORITIES
`
`
`
`
`Page(s)
`
`
`Cases
`DeMartini Sports, Inc. v. Worth, Inc.,
`239 F.3d 1314 (Fed. Cir. 2001) ............................................................................ 2
`Kahn v. Gen. Motors Corp.,
`135 F.3d 1472 (Fed. Cir. 1998) ............................................................................ 2
`L & W, Inc. v. Shertech, Inc.,
`471 F.3d 1311 (Fed. Cir. 2006) ............................................................................ 2
`Medtronic, Inc. v. Mirowski Family Ventures, LLC,
`571 U.S. 191 (2014).............................................................................................. 2
`Nazomi Commc’ns, Inc. v. Arm Holdings, PLC,
`403 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 15
`Soremekun v. Thrifty Payless, Inc.,
`509 F.3d 978 (9th Cir. 2007) ................................................................................ 2
`TypeRight Keyboard Corp. v. Microsoft Corp.,
`374 F.3d 1151 (Fed. Cir. 2004) ...................................................................... 6, 10
`Uniloc USA, Inc. v. Microsoft Corp.,
`632 F.3d 1292 (Fed. Cir. 2011) ............................................................ 2, 5, 13, 21
`Statutes
`35 U.S.C. § 101 .......................................................................................................... 1
`Other Authorities
`Fed. R. Civ. P.
`30(b)(1) ................................................................................................................. 3
`30(b)(6) ................................................................................................................. 3
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`
`
`
`
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`1
`
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`Blackberry's Exhibit No. 2006
`Page 3 of 25
`
`
`
`I.
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 4 of 25 Page ID #:18704
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`INTRODUCTION
`In its rush to have something heard at the same time as the pending motions for
`summary judgment under 35 U.S.C. § 101, BlackBerry filed an error laden and
`deficient motion for partial summary judgment seeking to establish that several
`accused products infringe claims across multiple patents. Tellingly, the “Statement
`of Uncontroverted Facts” accompanying the motion relies almost entirely on bald
`statements that BlackBerry’s experts analyzed the systems and provided opinions.1
`When those opinions are closely analyzed, they demonstrate BlackBerry’s inability to
`show that any accused product infringes any asserted claim.
`The ’250 patent requires enabling a “game application” to utilize a “contact list”
`for an instant messaging application, but BlackBerry and its expert point only to a
`“Chats list” that does not contain a list of the user’s contacts and cannot be accessed
`by any supposed game application. The deposition of BlackBerry’s expert also
`uncovered a profound lack of knowledge, as he repeatedly changed positions multiple
`times in an attempt to salvage BlackBerry’s theory, raising credibility issues that
`provide a separate basis for rejecting BlackBerry’s motion. With respect to the
`’173 patent, which requires the display of a “tag type indicator” for every tag in a tag
`list, BlackBerry’s expert admitted that he was relying on a blank area of the screen –
`on which nothing is displayed – as the supposedly displayed indicator. For the
`’120 patent, which requires the ability to silence all new message notifications within
`a thread, BlackBerry’s expert acknowledged that the accused products continue to
`show visual cues that inform the user of the receipt of new messages, even for silenced
`threads. These and the other flaws with BlackBerry's analysis, as discussed below,
`actually show non-infringement of the asserted patents. But at a minimum, they raise
`genuine issues of material fact that preclude summary judgment.
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`1 E.g., SUF Nos. 29-36.
`
`
`
`
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`1
`
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`Blackberry's Exhibit No. 2006
`Page 4 of 25
`
`
`
`
`
`
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 5 of 25 Page ID #:18705
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`II. LEGAL STANDARD
`infringement,
`literal
`to establish
`BlackBerry’s motion only attempts
`not infringement under the doctrine of equivalents.2 The standard for proving literal
`infringement is well-settled, and exacting. Literal infringement exists only “when
`every limitation recited in the claim appears in the accused device, i.e. when ‘the
`properly construed claim reads on the accused device exactly.’” DeMartini Sports,
`Inc. v. Worth, Inc., 239 F.3d 1314, 1331 (Fed. Cir. 2001) (citation omitted).
`The absence of even a single limitation precludes a finding of literal infringement.
`See, e.g. Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477-78 (Fed. Cir. 1998).
`Whether an accused product infringes a claim presents a question of fact. See Uniloc
`USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301-02 (Fed. Cir. 2011).
`BlackBerry bears the burden of proving infringement. See, e.g., Medtronic, Inc.
`v. Mirowski Family Ventures, LLC, 571 U.S. 191, 198-199 (2014). In the context of
`summary judgment, “[w]here the moving party will have the burden of proof on an
`issue at trial,” as here, “the movant must affirmatively demonstrate that no reasonable
`trier of fact could find other than for the moving party.” Soremekun v. Thrifty Payless,
`Inc., 509 F.3d 978, 984 (9th Cir. 2007); see also, e.g., L & W, Inc. v. Shertech, Inc.,
`471 F.3d 1311, 1318 (Fed. Cir. 2006). As established below, BlackBerry has not
`carried its burden with respect to any of the asserted claims or any of the accused
`products addressed in its motion.
`III. ARGUMENT
`A. BlackBerry Has Not Shown Infringement of the ’250 Patent
`It is somewhat puzzling that BlackBerry’s motion chose to lead with the
`’250 patent considering
`the profound deficiencies
`in BlackBerry’s
`theory.
`The problems with BlackBerry’s infringement theory run the gamut of summary
`
`2 BlackBerry’s two technical experts (on which BlackBerry’s motion entirely relies)
`only evaluated literal infringement for purposes of the present motion. (Schonfeld
`Dep., 22:21-23:4, Keefe Ex. 1; Rosenberg Dep., 132:2-9, Keefe Ex. 2.)
`OPP. TO MSJ PARTIAL SUMMARY
`Case Nos. 2:18-cv-01844;
`2
`JUDGMENT OF INFRINGEMENT
`2:18-cv-02693 GW(KSx)
`(’250, ’173, ’120 PATENTS)
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`
`
`
`Blackberry's Exhibit No. 2006
`Page 5 of 25
`
`
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 6 of 25 Page ID #:18706
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`judgment defects, from BlackBerry and its expert misunderstanding how the accused
`products operate, to serious credibility issues with BlackBerry’s expert that cannot be
`resolved on summary judgment. At a minimum, genuine issues of material fact
`remain as to whether Facebook infringes any claim of the ’250 patent.
`The problem with BlackBerry’s infringement arguments begin at limitation
`[9.a], which recites “enabling a game application on the electronic device to utilize a
`contact list for an instant messaging application for playing games with contacts in
`the contact list by identifying game play in the contact list.” BlackBerry’s arguments
`about this limitation provide a clear example of either misunderstanding or
`misrepresenting how the accused products work. In order to fully understand why
`BlackBerry’s motion must fail, it is helpful to unpack and explain its theory.
`Under BlackBerry’s theory, the “game application” corresponds to an Instant
`Game that can be invoked from Facebook Messenger or the Facebook website.
`(Schonfeld Dep., 29:4-13, 29:23-30:9; Mot. at 6-7.) The only specific game that
`BlackBerry and its expert identify or discuss is “Words with Friends,” created by non-
`party Zynga, Inc. (Schonfeld Dep., 29:23-30:9; Chen Decl., ¶5.)3 Blackberry then
`alleges that the claimed “contact list for an instant messaging application,”
`corresponds to the “Chats” list shown on the Facebook website and through the
`Messenger app. (Schonfeld Dep., 33:21-34:1 (citing Schonfeld Decl., pp. 16 & 27);
`see also Mot. at 7:4-6.) With those understandings in mind, we now turn to the
`specific requirements in limitation [9.a].
`As noted, limitation [9.a] requires that the alleged “game application” (like
`Words with Friends) be enabled “to utilize a contact list for an instant messaging
`application.” BlackBerry simply assumes without explanation that the Chats list
`qualifies as a “contact list” for purposes of claim 9. But a reasonable jury could
`
`3 For each witness from whom Facebook submits a declaration herewith, BlackBerry
`has already received document discovery and taken their depositions under Fed. R.
`Civ. Pro. 30(b)(1) and 30(b)(6).
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`3
`
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`
`
`
`
`
`
`
`Blackberry's Exhibit No. 2006
`Page 6 of 25
`
`
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 7 of 25 Page ID #:18707
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`conclude that the Chats list is not a contact list. As explained in the accompanying
`declaration of Facebook engineer Kun Chen, who was deposed by BlackBerry prior
`to the filing of its motion,
`
`
`
` (Chen Decl., ¶¶4, 9.)
`This difference is illustrated by the exemplary Chats list shown at the right,
`which shows five exemplary chats. (Id., ¶9.)
`The first two chats correspond to group chats that
`have user-selected titles (e.g., “Running group” and
`“Ice cream on Sundays!”), and do not identify any
`participating users or “contacts.” The remaining
`three chats include two one-on-one conversations
`(one between the user and Emma Coleman and the
`other between the user and Derek Rodgers), and one
`group conversation (including both Emma and
`Derek). Although the Chats list can include the
`names of individuals, as shown, the list is oriented
`around conversations, not individual contacts. (Id.)
`Thus, the names of other users may be missing from,
`or included multiple times in, the Chats list (as
`shown), and contacts who are not in those chats will not be listed at all. (Id.)
`BlackBerry’s infringement theory apparently assumes that any list that may
`show names of individuals qualifies as a “contact list,” regardless of how the list is
`organized or presented, and regardless of its purpose. BlackBerry never asked for a
`construction of “contact list,” the Court did not construe it, and the term is not defined
`
`
`
`
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`4
`
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`Blackberry's Exhibit No. 2006
`Page 7 of 25
`
`
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 8 of 25 Page ID #:18708
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`in the ’250 patent.4 The term “contact list” therefore takes on its ordinary and
`everyday meaning, and at a minimum, a question of fact exists as to whether the
`“Chats” list qualifies under that ordinary meaning. See Uniloc, 632 F.3d at 1301-02
`(application of the claim to the accused device was a question of fact). A reasonable
`jury could conclude that a list of “Chats” is not the same as a list of contacts, and
`therefore does not qualify as a contact list.
`This is not the only flaw with BlackBerry’s infringement theory – diving down
`to a more technical level reveals profound deficiencies. As noted, limitation [9.a]
`expressly requires that the alleged “game application” be enabled “to utilize a contact
`list for an instant messaging application.” But as shown below, an Instant Game such
`as Words with Friends (the alleged “game application”)
`
` (Chen Decl., ¶10.)
`
`and its expert were mistaken.
`
`
`
`
`
` But BlackBerry
`
`
`
`
`4 The specification does not provide meaningful guidance on this issue. Figure 3
`shows an exemplary “Mike’s Contact List” that includes a section for conversations
`(304), but unlike the accused Chats list, the contact list in the specification also
`contains a specific section (308) that provides an actual listing of contacts.
`(’250, Figs. 3-4.)
`5 The term “API” stands for Application Programming Interface (API), which is an
`interface that allows software programs to gain access to certain functionality. (Chen
`Decl., ¶6; Schonfeld Dep., 38:6-24.) Here, Facebook provides an API for its Instant
`Games platform that provides a series of functions that allow game developers to adapt
`their games to interact with the features of Facebook Messenger. (Chen Decl., ¶6.)
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`5
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`
`
`
`
`
`
`
`Blackberry's Exhibit No. 2006
`Page 8 of 25
`
`
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 9 of 25 Page ID #:18709
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`
`
`
`In other words,
`
`
`
`
`
`
`
`
`
`It was clear from the deposition of BlackBerry’s expert that, when he wrote his
`declaration, he did not understand the limitations of
`
` He had never tested it, and could not confirm
`
` – on which he expressly
`relied – was accurate. (Schonfeld Dep., at 35:25-36:6, 46:7-47:7.) When asked
`whether
`
`
`
`
` A reasonable jury could decide, based on the lack of knowledge and
`equivocations of BlackBerry’s expert, to not credit him or BlackBerry’s theory of
`infringement that he attempted to support. See TypeRight Keyboard Corp. v.
`Microsoft Corp., 374 F.3d 1151, 1158-59 (Fed. Cir. 2004) (“[S]ummary judgment is
`not appropriate where the opposing party offers specific facts that call into question
`the credibility of the movant’s witnesses.”).
`The problems do not end there. Limitation [9.a] also recites “enabling a game
`application on the electronic device to utilize a contact list for an instant messaging
`application … by identifying game play in the contact list.” BlackBerry’s analysis
`of the latter portion of limitation [9.a] (“by identifying game play in the contact list”)
`does not mention
`. BlackBerry appears to treat
`“utiliz[ing] a contact list for an instant messaging application,” and “identifying game
`OPP. TO MSJ PARTIAL SUMMARY
`Case Nos. 2:18-cv-01844;
`6
`JUDGMENT OF INFRINGEMENT
`2:18-cv-02693 GW(KSx)
`(’250, ’173, ’120 PATENTS)
`
`
`Blackberry's Exhibit No. 2006
`Page 9 of 25
`
`
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 10 of 25 Page ID #:18710
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`play in the contact list,” as two separate and independent requirements that can be
`shown by disparate and unrelated functionalities. (Schonfeld Decl., ¶¶40-41, 53-54.)
`But the claim links the two by reciting the ability to “utilize a contact list …
`by identifying game play in the contact list.” BlackBerry has articulated no theory
`that accounts for these interrelated requirements.
`BlackBerry’s expert had no idea whether
`
`
`
`– had any role in the display of the Chats list (the alleged “contact list”),
`let alone identifying game play in the alleged contact list. (Schonfeld Dep., 50:21-
`51:3.)
`
` An Instant Game, such as Words with
` BlackBerry
`Friends,
`thus cannot show that Facebook “enabl[es] a game application … to utilize a contact
`list … by identifying game play in the contact list.”
`There are even more problems. BlackBerry’s expert admitted that the
` would be invoked, if at all, by the Instant
`Game (the alleged “game application”). (Schonfeld Dep., 37:7-13, 48:18-49:4.) But
`BlackBerry’s expert admitted that he had no idea “if the Words with Friends game
`ever
`.” (Id., 37:16-20.) Nor could he
`answer this question with respect to any other game available through Facebook
`Instant Games. (Id., 37:21-38:4.)6 BlackBerry’s expert further admitted that he had
`never looked at the source code for Words with Friends (or any other Instant Game).
`(Id., at 31:5-32:1.) He, in fact, claimed he did not need it. (Id., at 32:6-33:4.) In any
`case, BlackBerry has zero evidence of any game application
`that used
`
` in order to
`6 An Instant Game does not need to use
`function. (Schonfeld Dep., 39:10-22; Chen Decl., ¶8.) The mere existence of an
`operational Instant Game, therefore, does not provide evidence that the game ever uses
`.
`
`
`
`
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`7
`
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`Blackberry's Exhibit No. 2006
`Page 10 of 25
`
`
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 11 of 25 Page ID #:18711
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
` performed the function of
`“utiliz[ing] a contact list” by “identifying game play in the contact list,” as the claim
`requires. This failure of proof provides a further basis to deny BlackBerry’s motion
`for summary judgment.
`BlackBerry’s theory of infringement also fails with respect to limitation [9.b]
`because BlackBerry has not articulated what its theory (if any) actually is – and its
`expert’s attempts to do so at his deposition called his credibility into question.
`Limitation [9.b] recites, in relevant part, the step of “preparing game messages to be
`sent to the particular contact by including game progress data in an instant messaging
`message and an identifier to associate the data with the game application.” A clear
`requirement of this claim language is that the “identifier” must be included in a “game
`message” that is sent to the particular contact (e.g., the other game player).
`BlackBerry’s expert agreed. (Schonfeld Dep., 60:2-17.)
`The only example of the claimed “identifier” in BlackBerry’s motion is
`“a banner including the name of the game being played.” (Mot. at 7-8.)
`But BlackBerry’s expert admitted that he did not know whether that information is
`actually sent to the particular contact, as the claim expressly requires. (Schonfeld
`Dep., 70:24-71:5
`
`
`
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`
`
`
`.)
`The deposition of BlackBerry’s expert played out like a game of cat-and-mouse,
`in which BlackBerry’s expert repeatedly demurred as to what, if anything, was the
`“identifier to associate the data with the game application” in the accused product –
`repeatedly testifying that such an identifier existed but never identifying what it was.
`(Schonfeld Dep., 57:2-58:21, 61:20-63:18, 70:17-72:15.) The section of his
`declaration addressing limitation [9.b] identified two different IDs used with Instant
`Games –
` – but the declaration does not state whether
`OPP. TO MSJ PARTIAL SUMMARY
`Case Nos. 2:18-cv-01844;
`8
`JUDGMENT OF INFRINGEMENT
`2:18-cv-02693 GW(KSx)
`(’250, ’173, ’120 PATENTS)
`
`
`Blackberry's Exhibit No. 2006
`Page 11 of 25
`
`
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 12 of 25 Page ID #:18712
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`those IDs (individually or collectively) correspond to the claimed “identifier.”
`(Schonfeld Decl., ¶¶42, 55.) The reason for his hesitancy was apparent from the
`deposition – BlackBerry’s expert had no idea whether any of these supposed
`identifiers was actually included in any “game messages to be sent to the particular
`contact,” as the claim expressly requires. (Schonfeld Dep., 63:24-64:5, 149:13-20,
`150:20-151:19.) As for the “
`,” he had no idea how it was generated, how it
`was represented, or whether it was generated by the Instant Game or by Facebook.
`(Id., 78:3-13.)
`The result of the lack of knowledge of BlackBerry’s expert was an unsupported
`and conditional opinion; for example, with respect to the
`, BlackBerry’s
`expert testified:
`
`
` In other words, to the extent an identifier in Facebook’s
`system meets the claim requirement for an identifier – which BlackBerry’s expert did
`not know – it was part of his infringement theory. Summary judgment cannot be
`granted based on equivocations and evasions.
`Counsel for BlackBerry then conducted an improper, leading redirect at the
`close of the deposition. Counsel handed his expert pages of the deposition of a
`Facebook witness
`, which were never cited or included with the expert’s
`declaration or BlackBerry’s motion, and asked the expert to read them. (Schonfeld
`Dep., 142:12-25, 144:4-13, 146:4-147:1.) Under the guise of attempting to refresh the
`memory of the witness, this highly suggestive examination by BlackBerry’s counsel
`guided the expert to a brand new ID – a “
`,” which was never previously
`identified. (Id., 143:2-144:2, 154:18-155:5.)7
`
`
`
`7 It is not clear if BlackBerry intends to change its theory to now assert that the “
`” discussed late in the deposition is the claimed “identifier” for purposes of claim
`[9.b]. This would be inappropriate, as any “
`” argument relies on arguments
`
`
`
`
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`9
`
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`Blackberry's Exhibit No. 2006
`Page 12 of 25
`
`
`
`
`
`
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 13 of 25 Page ID #:18713
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`In the end, the repeated equivocations, flat out lack of knowledge, and changed
`opinions of BlackBerry’s expert call into question his preparation, knowledge, and
`ultimately his credibility as a witness. See TypeRight Keyboard Corp., 374 F.3d at
`1158-59 (“[S]ummary judgment is not appropriate where the opposing party offers
`specific facts that call into question the credibility of the movants witnesses.”).
`A reasonable jury could conclude that the testimony of BlackBerry’s expert – the sole
`evidence offered in support of the present motion – should not be credited.
`B.
`BlackBerry Has Not Shown Infringement of the ’173 Patent
`BlackBerry has also failed to show infringement of the ’173 patent by the
`accused Facebook website and Instagram application. Again, BlackBerry has failed
`to carry its burden with respect to multiple limitations of the asserted claims.
`Claim 13, from which the sole asserted claim depends, recites a “computer
`readable medium” (transitory or non-transitory) that, when loaded into a device,
`performs the following functions: “displaying a tag list including tags from one or
`more tag sources matching a search string” [13.a], and “displaying a tag type indicator
`for each tag appearing in the tag list, said tag type being indicative of a tag source
`associated with the tag” [13.b]. As with the ’250 patent discussed above, to fully
`understand the flaws with BlackBerry’s infringement theory, Facebook will unpack
`and analyze that theory in more detail than was provided in BlackBerry’s motion.
`A key limitation is the display of a “tag type indicator for each tag appearing
`in the list,” as recited in claim [13.b]. The Facebook website and Instagram provide
`photo tagging features that present the user with a list of tag suggestions, allowing the
`user to specify a particular tag for a photo. (Wang Decl., ¶9; Douglas Decl., ¶3.)
`The two screen captures below show examples of how the Facebook website and
`Instagram can present tag suggestions to the user:
`
`and evidence not included with BlackBerry’s motion. BlackBerry never amended its
`motion or expert declaration to discuss the
`, or to withdraw BlackBerry’s
`prior reliance on the other (discredited) identifiers discussed earlier at the deposition.
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`10
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`
`
`
`Blackberry's Exhibit No. 2006
`Page 13 of 25
`
`
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 14 of 25 Page ID #:18714
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`
`
`Facebook Website
`
`Instagram App
`
`
`
`(Douglas Decl., ¶3; Wang Decl., ¶9.) BlackBerry contends that the tag suggestion
`lists shown above correspond to the claimed “tag list” of claim 13.
`As noted, a key limitation recites the display of “a tag type indicator for each
`tag appearing in the tag list” [13.b], which on its face requires a tag type indicator for
`every tag in the list. But the tag suggestion lists shown above (and every example
`provided by BlackBerry’s expert) show tag suggestions unaccompanied by any kind
`of visual indicator. For example, the screen capture on the left above shows “Derek
`
`
`
`
`
`Case Nos. 2:18-cv-01844;
`2:18-cv-02693 GW(KSx)
`
`
`11
`
`OPP. TO MSJ PARTIAL SUMMARY
`JUDGMENT OF INFRINGEMENT
`(’250, ’173, ’120 PATENTS)
`
`Blackberry's Exhibit No. 2006
`Page 14 of 25
`
`
`
`
`
`
`
`
`1 1
`
`2 2
`
`3 3
`
`4 4
`
`5 5
`
`6 6
`
`7 7
`
`8 8
`
`9 9
`
`10 10
`
`11 11
`
`12 12
`
`13 13
`
`14 14
`
`15 15
`
`16 16
`
`17 17
`
`18 18
`
`19 19
`
`20 20
`
`21 21
`
`22 22
`
`23 23
`
`24 24
`
`25 25
`
`26 26
`
`27 27
`
`28 28
`
`Case 2:18-cv-01844-GW-KS Document 280 Filed 08/08/19 Page 15 of 25 Page ID #:18715
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
`Rogers” with nothing more than his name and a small profile icon (neither of which
`BlackBerry contends is a “tag type indicator”). The screen capture on the right shows
`substantially the same for Dereck Joubert (among others). All of the example screen
`captures provided by BlackBerry show similar examples of tag suggestion lists
`containing items displayed without any kind of accompanying indicator. (Mot. at 14;
`Schonfeld Decl., ¶¶35, 36, 84, 88, 105, 129.)
`How can BlackBerry claim that Facebook and Instagram display “a tag type
`indicator for each tag appearing in the tag list” [13.b], when the accused products
`indisputably display tag suggestions without any such indicator? Or stated more
`simply, how can the absence of an indicator qualify as an “indicator”?
`BlackBerry responded to this question by inventing a new term – “blank
`indicator” – which it claims is displayed alongsid