Litigation

Untitled case

active

1:24-cv-01199

Patents at issue (1)

11012827PTAB institution denied

Summary

This is a US patent infringement lawsuit concerning US patent 11012827 filed in the Texas Western District Court.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

HBCU Messaging US LP, a non-practicing entity (NPE) and a subsidiary of the HBCU Technology Foundation (formerly Rembrandt Messaging Technologies II, LP), has initiated a patent infringement lawsuit against technology giant Apple Inc. and financial technology company Green Dot Corporation. The plaintiff alleges that Apple's Apple Cash service, along with its supporting hardware (such as laptops, smartphones, and smartwatches) and software (including the Messages app and related infrastructure), infringes upon its intellectual property. Green Dot is implicated for its role in implementing payment technology within the accused Apple Cash service.

The lawsuit centers around US Patent No. 11,012,827, which generally pertains to a messaging system capable of utilizing either a short message service (SMS) or a packet-switched message service (PSMS). The case, 1:24-cv-01199, was originally filed in the Austin Division of the U.S. District Court for the Western District of Texas but has since been reassigned to the Waco Division under the purview of Judge Alan D. Albright. The Western District of Texas, particularly the Waco Division, has become a prominent venue for patent litigation, often favored by patent owners.

Currently, the case is in the claim construction phase, with a Markman hearing having been scheduled for January 20, 2026. Fact discovery was slated to commence the day following the Markman hearing. This litigation is notable due to its nature as an NPE assertion against major technology and financial services companies, stemming from a patent portfolio originally held by Messmo Technologies Pty. Limited. The involvement of an NPE like HBCU Messaging US LP, a subsidiary of a foundation, highlights a common strategy of asserting patents to generate revenue. There is also a related inter partes review (IPR) proceeding, IPR2026-00105, which has been referenced in relation to claim construction deadlines in the district court case.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Patent Infringement Litigation: HBCU Messaging US LP v. Apple Inc. et al.

Case Number: 1:24-cv-01199
Court: U.S. District Court for the Western District of Texas
Patents at Issue: US 11012827, among others.
Status: Active, with trial scheduled for July 2027.

Key Legal Developments and Chronology:

1. Filing & Initial Pleadings:

  • Complaint Filed (2024-10-07): HBCU Messaging US LP (f/k/a Rembrandt Messaging Technologies II, LP), a subsidiary of the HBCU Technology Foundation, filed a patent infringement lawsuit against Apple Inc. and Green Dot Corporation in the Western District of Texas. The complaint accused both defendants of infringing seven mobile messaging patents, including US Patent 11012827, through products and services such as Apple Cash and Apple's Messages app.
  • Service of Summons (2024-11-05): Apple Inc. was served with the summons and complaint. The defendants were required to serve an answer or motion under Rule 12 within 21 days of service, or 60 days if a U.S. agency or employee.
  • Judge Reassignment (2025-04-15): The case was reassigned to Judge Alan D. Albright for all proceedings.

2. Pre-trial Motions of Substance:

  • Details regarding specific motions to dismiss, transfer, or stay pending IPR by Apple or Green Dot are not explicitly detailed in the search results beyond general mentions of the IPR process. However, the scheduling order reflects the ongoing litigation alongside the IPR proceedings.

3. Claim Construction (Markman) Outcomes:

  • Claim Term Exchange (2025-08-01): Parties were scheduled to concurrently exchange a list of claim terms for construction and identify any claim elements governed by 35 U.S.C. § 112(f) or Pre-AIA 35 U.S.C. § 112 sixth paragraph.
  • Proposed Constructions & Extrinsic Evidence Exchange (2025-08-15): Parties were scheduled to concurrently exchange proposed constructions and supporting extrinsic evidence.
  • Opening Claim Construction Briefs (2025-09-22): HBCU Messaging US LP and Apple Inc. filed their opening claim construction briefs.
  • Responsive Claim Construction Briefs (2025-10-24): Apple Inc. and HBCU Messaging US LP filed their responsive claim construction briefs.
  • Markman Hearing Scheduled (2026-01-20): A Markman hearing is scheduled to be held at 9:00 a.m. on January 20, 2026.

4. Discovery Milestones with Strategic Significance:

  • Fact Discovery Opening (2026-01-21): Fact discovery is scheduled to open the day after the Markman hearing. Initial Disclosures per Rule 26(a) are also due on this day.
  • Preliminary Invalidity Contentions (2025-07-15): The defendant was required to serve preliminary invalidity contentions in claim chart form, detailing prior art, indefinite claims under 35 U.S.C. § 112, or ineligible subject matter under 35 U.S.C. § 101. Related prior art and technical documents for accused products were also to be produced.
  • Fact Discovery Close (2026-10-06): Fact discovery is set to close on October 6, 2026.
  • Expert Reports Due (2026-11-10): Expert reports are due on November 10, 2026.

5. Trial Events, Verdict, and Post-Trial Motions:

  • Dispositive Motions Deadline (2027-04-01): All dispositive motions are to be filed on or before April 1, 2027.
  • Jury Trial Commencing (2027-07-12): The case is set for a jury trial commencing at 9:00 a.m. on July 12, 2027.

6. Settlement, Dismissal, Judgment, or Appeal:

  • The case is currently active with a trial date in July 2027. No final disposition, settlement, or dismissal has been publicly reported as of today's date.
  • Settlement Offer Deadline (2026-02-10): Parties asserting claims for relief were ordered to submit a written offer of settlement to opposing parties by February 10, 2026, with a written response due by March 10, 2026. These offers are private but retained by the Court for potential use in assessing attorney's fees and costs.

7. Parallel PTAB IPR/PGR Proceedings:

  • IPR2025-01493 Filed: Apple Inc. filed an Inter Partes Review (IPR) petition, IPR2025-01493, challenging US Patent 11012827, which is asserted in the district court litigation.
  • IPR Status: The IPR proceeding is active at the Patent Trial and Appeal Board (PTAB). The PTAB typically issues an institution decision within three months of the Patent Owner Preliminary Response deadline, and a final written decision within 12 months of institution, with a possible six-month extension, leading to an approximate total elapsed time of 18 months from petition filing to final written decision. The search results indicate that the Markman hearing in the district court case had not yet happened and would not have happened before the Director is likely to determine whether to refer the IPR petition for merits consideration. The status and outcome of IPR2025-01493 (i.e., institution decision, final written decision) are not yet publicly available in the search results as of today's date.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the plaintiff's counsel of record for this case. Let me search across docket sources, firm websites, and legal news.

Good — I have strong leads. Let me verify the firm details, confirm the pro hac vice admissions, and gather experience notes.

Let me confirm the remaining attorneys (Zachary Della Porta, Neil Benchell) and check the docket's party/attorney listing.

Plaintiff's Counsel of Record — HBCU Messaging US LP v. Apple, Inc. & Green Dot Corp., No. 1:24-cv-01199-ADA (W.D. Tex.)

The plaintiff (HBCU Messaging US LP, f/k/a Rembrandt Messaging Technologies II, LP) is represented by a two-firm team: Devlin Law Firm LLC (Wilmington, Delaware) as lead/appellate-side counsel, and The Shore Firm (Dallas, Texas) as Texas counsel. The same Devlin team also serves as Patent Owner's counsel in the parallel PTAB proceedings (IPR2026-00104 / IPR2026-00105), which corroborates the district-court appearances.

# Attorney Role Firm & Office Notes
1 Timothy Devlin Lead counsel (first-named and /s/ signatory on all substantive plaintiff filings; designated Lead Counsel in the IPR mandatory notices) Devlin Law Firm LLC, 1526 Gilpin Avenue, Wilmington, DE 19806 (302-449-9010) Managing partner, Devlin Law Firm; previously Principal at Fish & Richardson (co-chair, IP Risk Management Group). Claims lead counsel in 200+ patent cases; Chambers USA, Best Lawyers, IAM Top-250 patent litigators since 2011. Representative plaintiff wins include Rembrandt Vision Techs. LP v. Ciba Vision (E.D. Tex.) and Deep Nines v. McAfee (E.D. Tex.).
2 Neil A. Benchell Of counsel / back-up counsel (district court and IPR) Devlin Law Firm LLC, Wilmington, DE Admitted pro hac vice in W.D. Tex. by order at Dkt. 8 (Oct. 9, 2024) (amended PHV motion at Dkt. 7). Designated back-up counsel in HBCU's PTAB mandatory notices. Appeared for plaintiff at the Markman hearing. Frequently co-counsel with Devlin (e.g., Maschio Gaspardo S.p.A. v. Precision Planting, D. Del.).
3 Michael W. Shore Texas / local counsel (entered the first appearance for plaintiff) The Shore Firm, Dallas, TX (901 Main St., Suite 3300, Dallas 75202; firm address 5646 Milton St., Suite 423, Dallas 75206) Texas Bar No. 18294915, licensed 1990 (SMU Dedman, Order of the Coif). Notice of Attorney Appearance filed Oct. 8, 2024 (Dkt. 5); also filed plaintiff's PHV motions. IP-commercialization practice focused on universities/research institutions — represented Purdue University in Waco Division patent litigation and UNM Rainforest Innovations; The Shore Firm was plaintiff's counsel in VideoShare v. Google (W.D. Tex.), a ~$25.9M patent verdict.
4 Zachary Della Porta Associate / of counsel (plaintiff side) The Shore Firm, Dallas, TX Pro hac vice motion filed by Mr. Shore on his behalf Oct. 9, 2024 (Dkt. 9); by the Aug. 1, 2025 claim-term identification he is listed as "admitted pro hac vice." Formerly an associate associated with Moster Craft, P.C. (Lubbock, TX); appeared pro hac vice for UNM Rainforest Innovations in UNM Rainforest Innovations v. Toyota Motor N.A. (E.D. Tex., 2024).

Sourcing and corroboration

Caveats

  • No in-house plaintiff counsel has appeared; HBCU Messaging US LP is a licensing/NPE entity, so all plaintiff-side appearances are outside counsel.
  • The clerk's email distribution list in the Jan. 26–28, 2026 claim-construction correspondence contains exactly these four plaintiff-side addresses (Devlin, Benchell, Shore, Della Porta), indicating no additional plaintiff counsel had entered an appearance as of early 2026. I could not access the paywalled PACER docket sheet itself, so I cannot rule out a later appearance filed after that date; nothing in the searchable record shows one.
  • Local-rule note: Devlin and Benchell are Delaware-based and appear only pro hac vice; Shore (Texas bar) supplies the in-district attorney presence required by W.D. Tex. practice.

Contradictions with the earlier case sections (flagged)

  1. Markman date. The prior "Key legal developments" section states the Markman hearing was "scheduled for January 20, 2026," and elsewhere says it "had not yet happened." The record now shows the hearing was held January 23, 2026 by Zoom before Judge Albright (transcript cited above), with preliminary constructions circulated in advance and the "wherein … when" terms deferred to summary judgment.
  2. IPR alignment. The prior section associates IPR2025-01493 with U.S. Patent 11,012,827. Apple's own sur-reply in that proceeding identifies the challenged patent as U.S. Patent 11,089,450, while IPR2026-00104 and IPR2026-00105 are separate Apple petitions against other patents in the same family (the '827 patent among the district-court patents). Citations: https://www.docketalarm.com/cases/PTAB/IPR2025-01493/Apple_Inc._v._HBCU_Messaging_US_LP/docs/12-29-2025-Petitioner/Other__other-11-Petitioners_Sur_Reply_to_Patent_Owners_Request_for_Discretionary_Denial.pdf
  3. Defendant-side confirmation. The Morrison & Foerster team for Apple in the earlier section (Nash, Hung, Malloy, Kiaei, Tavernier) matches the Markman transcript and the complaint-stage filings, except the transcript also shows Karina N. Pundeff (MoFo, San Francisco) and Nomin-Erdene Jagdagdorj (MoFo, Washington, D.C.) appearing. Green Dot's separate counsel of record still does not appear in the retrieved materials — the WDTX docket entries index the PHV motions as filed "on behalf of Apple, Inc., Green Dot Corporation," suggesting MoFo appeared for both defendants, but I could not independently confirm a distinct Green Dot legal team.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

In this patent infringement case (1:24-cv-01199), the defendants, Apple Inc. and Green Dot Corporation, are represented by the following counsel:

For Apple Inc.

  • Brian C. Nash - Counsel.

    • Firm: Morrison & Foerster LLP, based in San Francisco, CA.
    • Experience: Morrison & Foerster is a well-known firm in patent litigation, frequently representing technology giants.

  • Richard S.J. Hung - Counsel.

    • Firm: Morrison & Foerster LLP, San Francisco, CA.

  • Ryan J. Malloy - Counsel.

    • Firm: Morrison & Foerster LLP, San Francisco, CA.

  • Nima I. Kiaei - Counsel.

    • Firm: Morrison & Foerster LLP, San Francisco, CA.

  • Nishi A. Tavernier - Counsel.

    • Firm: Morrison & Foerster LLP, San Francisco, CA.

Apple also utilizes in-house counsel for its intellectual property litigation. For example, Jeff Myers serves as Chief IP Counsel, and Iain Cunningham is a Senior Litigation Counsel at Apple.

For Green Dot Corporation

As of the current information, specific counsel of record for Green Dot Corporation in this particular patent infringement case are not explicitly detailed in the provided search results beyond their initial naming as a defendant. However, it's worth noting that Green Dot Corporation has an appointed General Counsel, Amy Pugh, who joined in September 2022. While Green Dot has been involved in other legal investigations, these are not directly related to patent infringement.