Blackberry Ltd. v. Facebook, Inc.

• Decision Date: 01 October 2019
• Docket Number: CV 18-2693-GW-KSx,Case No. CV 18-1844-GW-KSx
• Citation: 487 F.Supp.3d 870
• Parties: BLACKBERRY LIMITED v. FACEBOOK, INC. et al BlackBerry Limited v. Snap Inc.
• Court: U.S. District Court — Central District of California

487 F.Supp.3d 870

BLACKBERRY LIMITED

v.FACEBOOK, INC. et al

BlackBerry Limited

v.Snap Inc.

Case No. CV 18-1844-GW-KSx

CV 18-2693-GW-KSx

United States District Court, C.D. California.

Filed October 1, 2019

James R. Asperger, Patrick Schmidt, Pushkal Mishra, Quinn Emanuel Urquhart and Sullivan LLP, Kristen Bird, Scott L. Watson, Quinn Emanuel Urquhart Oliver and Hedges LLP, Miles D. Freeman, Federal Trade Commission, Los Angeles, CA, Ray R. Zado, Kevin P. B. Johnson, Quinn Emanuel Urquhart and Sullivan LLP, Redwood Shores, CA, Dawn M. David, Pro Hac Vice, Quinn Emanuel Urquhart and Sullivan LLP, Salt Lake City, UT, Edward R. McGah, Jr., Blackberry Carporation, Laguna Niguel, CA, Iman Lordgooei, Jeffrey William Nardinelli, Jordan R. Jaffe, Zachary Christian Flood, Quinn Emanuel Urquhart and Sullivan LLP, San Francisco, CA, for BlackBerry Limited.

Heidi Lyn Keefe, Lowell D. Mead, Mark R. Weinstein, Andrew Mace, Dena Chen, Elizabeth Lee Stameshkin, Matthew J. Brigham, Cooley LLP, Yar R. Chaikovsky, Paul Hastings LLP, Palo Alto, CA, Michael G. Rhodes, Cooley LLP, San Francisco, CA, Phillip E. Morton, Pro Hac Vice, Cooley LLP, Washington, DC, Randall R. Lee, Cooley LLP, Santa Monica, CA, for Facebook, Inc., WhatsApp Inc., Instagram, LLC.

Yar R. Chaikovsky, David M. Beckwith, David T. Okano, Paul Hastings LLP, Daryl Stuart Bartow, Duane Morris LLP, Palo Alto, CA, Andrew M. Legolvan, Paul Hastings LLP, Keith M. Cochran, Kenneth M. Fitzgerald, Fitzgerald Knaier LLP, San Diego, CA, Chad J. Peterman, Paul Hastings LLP, New York, NY, for Snap Inc.

PROCEEDINGS: IN CHAMBERS - FINAL RULINGS ON:

DEFENDANTS' CONSOLIDATED MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. § 101 (U.S. PATENT NOS. 8,296,351, 8,676,929, AND 9,349,120) [239]

DEFENDANT SNAP, INC.'S MOTION FOR LEAVE TO FILE A FIRST AMENDED ANSWER AND COUNTERCLAIMS TO BLACKBERRY LIMITED'S COMPLAINT [242]

BLACKBERRY'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF U.S. PATENT NO. 8,825,084 [244]

BLACKBERRY'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF INFRINGEMENT OF U.S. PATENT NOS. 8,677,250, 8,279,173, AND 9,349,120 [247]

FACEBOOK DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. § 101 (U.S. PATENT NO. 8,279,173) [267]

DEFENDANT SNAP INC.'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER SECTION 101 OF U.S. PATENT NOS. 8,825,084 AND 8,326,327 [272]

GEORGE H. WU, UNITED STATES DISTRICT JUDGE

Attached hereto is the Court's Final Rulings on the above-entitled Motions.

BlackBerry Limited v. Facebook, Inc. et al.; Case No. 2:18-cv-01844-GW-(KSx)

BlackBerry Limited v. Snap Inc.; Case No. 2:18-cv-02693-GW-(KSx)

Final Rulings on: (1) Consolidated Defendants' Motion for Summary Judgment as to Motion for Summary Judgement of Invalidity under 35 U.S.C. § 101 of US Patent Nos. 8,296,351, 8,676,929 and 9,349,120 ; (2) Facebook Defendants' Motion for Summary Judgment as to Invalidity under 35 U.S.C. Section 101 ( U.S. Patent No. 8,279,173 ); (3) BlackBerry's Motion for Partial Summary Judgment as to Infringement of U.S. Patents 8,677,250 ; 8,279,173 ; and 9,349,120 against Facebook Defendants; (4) Snap's Motion for Summary Judgment as to Invalidity under Section 101 of U.S. Patent Nos. 8,825,084 and 8,326,327 ; (5) BlackBerry's Motion for Partial Summary Judgment as to Infringement of U.S. Patent 8,825,084 against Snap; and (6) Snap's Motion for Leave to File a First Amended Answer and Counterclaims

[Portions of the parties' briefing related to the pending motions addressed by this Ruling were filed under seal. The Court has [Redacted] the portions of this Ruling that it understands as pertaining to material the parties have stated is confidential. The parties will be expected to state their positions as to whether the highlighted material and/or any other material should remain under seal in a joint report filed three days after the issuance of the sealed version of this Order, including by proposing any redactions they would wish made to a public version of the document.]

I. Background

Plaintiff BlackBerry Limited ("BlackBerry") has filed suit against Facebook, Inc., WhatsApp, Inc., and Instagram, LLC (collectively, "Facebook Defendants"), alleging infringement of nine patents. BlackBerry Limited v. Facebook, Inc. et al. , Case No. 2:18-cv-01844-GW-(KSx) ("Facebook Case "), Docket No. 1; see also Docket No. 15 (Facebook First Amended Complaint). BlackBerry separately filed suit against Snap Inc., alleging infringement of six patents. BlackBerry Limited v. Snap Inc. , Case No. 2:18-cv-02693-GW-(KSx) ("Snap Case "), Docket No. 1.

The following six motions are pending in the case:

(1) Consolidated Defendants' Motion for Summary Judgment as to Motion for Summary Judgement of Invalidity under 35 U.S.C. § 101 of US Patent Nos. 8,296,351, 8,676,929 and 9,349,120 (Docket No. 239) ;

(2) Facebook Defendants' Motion for Summary Judgment as to Invalidity under 35 U.S.C. Section 101 ( U.S. Patent No. 8,279,173) (Docket No. 267) ;

(3) BlackBerry's Motion for Partial Summary Judgment as to Infringement of U.S. Patents 8,677,250 ; 8,279,173 ; and 9,349,120 against Facebook Defendants (Docket No. 247);

(4) Snap's Motion for Summary Judgment as to Invalidity under Section 101 of U.S. Patent Nos. 8,825,084 and 8,326,327 (Docket No. 272) ;

(5) BlackBerry's Motion for Partial Summary Judgment as to Infringement of U.S. Patent 8,825,084 against Snap (Docket No. 244); and

(6) Snap's Motion for Leave to File a First Amended Answer and Counterclaims (Docket No. 242-4).

The motions have been fully briefed.¹ After briefing was completed on the motions, Facebook Defendants and Snap each filed one ex parte application seeking to submit an additional filing with respect to issues raised in some of the pending motions. Docket Nos. 353, 369. A hearing was held on the motions on September 5, 2019 and the matters were taken under submission.²

For the reasons stated in this Order, the Court would rule as follows:

(1) GRANT-IN-PART and DENY-IN-PART Consolidated Defendants' Motion for Summary Judgment as to Motion for Summary Judgement of Invalidity under 35 U.S.C. § 101 of US Patent Nos. 8,296,351, 8,676,929 and 9,349,120 (Docket No. 239) ;

(2) DENY Facebook Defendants' Motion for Summary Judgment as to Invalidity under 35 U.S.C. Section 101 ( U.S. Patent No. 8,279,173) (Docket No. 267) ;

(3) DENY BlackBerry's Motion for Partial Summary Judgment as to Infringement of U.S. Patents 8,677,250 ; 8,279,173 ; and 9,349,120 against Facebook Defendants (Docket No. 247) and DENY AS MOOT Facebook Defendants' ex parte application to file a surreply regarding motion (Docket No. 353);

(4) GRANT Snap's Motion for Summary Judgment as to Invalidity under Section 101 of U.S. Patent Nos. 8,825,084 and 8,326,327 (Docket No. 272) ;

(5) DENY AS MOOT BlackBerry's Motion for Partial Summary Judgment as to Infringement of U.S. Patent 8,825,084 against Snap (Docket No. 244); and

(6) DENY AS MOOT Snap's Motion for Leave to File a First Amended Answer and Counterclaims (Docket No. 242-4) and DENY AS MOOT Snap's ex parte application to file a supplemental brief regarding motion (Docket No. 369).

II. Legal Standard

A. Summary Judgment

Summary judgment shall be granted when a movant "shows that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a) ; see also Miranda v. City of Cornelius , 429 F.3d 858, 860 n.1 (9th Cir. 2005). As to materiality, "[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute as to a material fact is "genuine" if there is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. Id.

To satisfy its burden at summary judgment, a moving party without the burden of persuasion "must either produce evidence negating an essential element of the nonmoving party's claim or defense or show that the nonmoving party does not have enough evidence of an essential element to carry its ultimate burden of persuasion at trial." Nissan Fire & Marine Ins. Co. v. Fritz Cos., Inc. , 210 F.3d 1099, 1102 (9th Cir. 2000) ; see also Devereaux v. Abbey , 263 F.3d 1070, 1076 (9th Cir. 2001) (en banc ); Fairbank v. Wunderman Cato Johnson , 212 F.3d 528, 532 (9th Cir. 2000).

If the party moving for summary judgment meets its initial burden of identifying for the court the portions of the materials on file that it believes demonstrate the absence of any genuine issue of material fact, the nonmoving party may not rely on the mere allegations in the pleadings in order to preclude summary judgment[, but instead] must set forth, by affidavit or as otherwise provided in Rule 56, specific facts showing that there is a genuine issue for trial.

T.W. Elec. Serv., Inc., v. Pac. Elec. Contractors Ass'n , 809 F.2d 626, 630 (9th Cir. 1987) (internal citations and quotation marks omitted). In judging evidence at the summary judgment stage, the court does not make credibility determinations or weigh conflicting evidence, and views all evidence and draws all inferences in the light most favorable to the non-moving party. See id. at 630-31 (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ); see also Hrdlicka v. Reniff , 631 F.3d 1044 (9th Cir. 2011) ; Motley v. Parks , 432 F.3d 1072, 1075 n.1 (9th Cir. 2005) (en banc ).

Alternatively, a moving party with the burden of persuasion must establish "beyond controversy every essential element of its [claim or defense]" to satisfy its burden at summary judgment. S. Cal. Gas Co. v. City of Santa Ana , 336 F.3d 885, 888 (9th Cir. 2003). Therefore, in order to defeat such a motion, the nonmoving party need only raise a genuine issue of dispute on a single element of the claim.

B. Patent Eligibility under 35 U.S.C. § 101

An invention or a discovery is patentable if it is a "new...