Litigation

Untitled case

on appeal / unverified

2020-1256

Patents at issue (1)

8209634

Summary

Federal Circuit appeal listed on the Google Patents litigation panel for US8209634, arising out of the Central District of California BlackBerry v. Facebook litigation. Narrative could not confirm full caption, disposition, or whether the '634 patent was specifically at issue.

Case overview & background

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

I'll research this case thoroughly before drafting the overview.

Confirmed the caption. Now let me pin down which patents were actually on appeal and whether the '634 was among them.

Now let me verify the appeal's specific scope and the linked IPR outcomes.

Key legal developments & outcome

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

I'll research this case systematically, starting with the Federal Circuit appeal number and the underlying district court litigation.

Key correction emerging: 2020-1256 is the appeal from the Rule 54(b) judgment on the '351/'929 patents, while the '634 patent's PTAB proceeding was separately appealed. Let me dig into the docket chronology.

Now let me pin down the claim construction order, the 2021 dismissal dates, and what happened to the PTAB appeal on the '634 patent.

Plaintiff representatives

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

I'll research this case's docket and counsel.

Counsel of Record — Plaintiff‑Appellant BlackBerry Limited, Fed. Cir. No. 2020‑1256

Case identification first (correcting the sparse metadata): No. 2020‑1256 is BlackBerry Limited v. Facebook, Inc., consolidated with No. 2020‑1258 (BlackBerry Ltd. v. Snap Inc.), appeals from C.D. Cal. Nos. 2:18‑cv‑01844‑GW‑KS and 2:18‑cv‑02693‑GW‑KS (Judge George H. Wu). The appeals were docketed Dec. 17, 2019, orally argued, and affirmed under Federal Circuit Rule 36 on Dec. 10, 2020 (per curiam: Lourie, O'Malley, Reyna); mandate issued Jan. 19, 2021, costs taxed against BlackBerry (Snap recovered $52.32). Sources: Fed. Cir. judgment, Doc. 64 (Justia); CAFC Dec. 10, 2020 orders page; Justia docket 20-1256.

Important scope caveat on the '634 patent. U.S. 8,209,634 was one of the nine patents BlackBerry asserted against the Facebook defendants in C.D. Cal., but the 2020‑1256/1258 appeals arise from the district court's Oct. 1, 2019 § 101 rulings and the December 2019 judgment (Dkt. 491) on other patents (e.g., 8,296,351; 8,676,929; 9,349,120; 8,279,173; 8,825,084; 8,326,327). The '634 patent's validity was resolved in IPR2019‑00924 / IPR2019‑00925 (FWD Oct. 1, 2020, claims held unpatentable), which BlackBerry appealed separately as Fed. Cir. No. 2021‑1377 — a different appeal with different counsel (Fish & Richardson, Michael T. Hawkins, Minneapolis, as patent owner; Cooley's Heidi L. Keefe for petitioners). See Patent Owner's Notice of Appeal, IPR2019‑00925 (Dec. 3, 2020). If your interest is the '634 appellate team, that lineup belongs in a separate section (below).

The 2020‑1256 appellate team (all Quinn Emanuel Urquhart & Sullivan LLP)

Attorney Role in 20‑1256 Firm office Docket basis Note
Sanford I. ("Sandy") Weisburst Principal counsel of record; argued the appeal Quinn Emanuel, New York, NY (51 Madison Ave.) EoA as principal counsel, Dec. 31, 2019 (Doc. 5); filed Certificate of Interest (Doc. 6) and Docketing Statement (Doc. 7); argued per Rule 36 judgment Co‑chair of Quinn Emanuel's National Appellate Practice; former law clerk to Justice Clarence Thomas and Judge Laurence Silberman; has argued in the 1st–11th, D.C. and Federal Circuits, including patent appeals such as Liqwd v. L'Oréal (Fed. Cir. 2018‑2152) and the Alacritech appeals. (firm bio)
James R. Asperger Of counsel (appellate); lead trial counsel of record in C.D. Cal. Quinn Emanuel, Los Angeles, CA EoA as of counsel, June 29, 2020 (Doc. 34) Named first among BlackBerry's counsel in Judge Wu's published rulings, 487 F. Supp. 3d 870 (C.D. Cal. 2019); filed the bulk of BlackBerry's district-court motion papers (e.g., ECF 247, 515–521) and the Dec. 11, 2019 notice of appeal (ECF 498).
Patrick T. Schmidt Of counsel Quinn Emanuel, Los Angeles, CA EoA as of counsel, Jan. 24, 2020 (Doc. 17) District-court team member; continued representing BlackBerry post-mandate (e.g., Jan. 14, 2021 motion to vacate the '236 summary-judgment ruling, ECF 677).
Pushkal Mishra Of counsel Quinn Emanuel, Los Angeles, CA EoA as of counsel, Dec. 31, 2019 (Doc. 8) Appeared in C.D. Cal. via G‑123 notice of appearance (added as counsel of record) and appears in the reported opinions' counsel listing.
Kevin P.B. Johnson Of counsel Quinn Emanuel, Redwood Shores, CA EoA as of counsel, June 29, 2020 (Doc. 35) Long-time Quinn Emanuel trial lawyer; best known publicly as lead trial counsel for Apple in Apple v. Samsung.
Jeffrey W. Nardinelli Of counsel Quinn Emanuel, San Francisco, CA Named as BlackBerry's counsel in the Rule 36 judgment; also listed in the C.D. Cal. opinions ⚠️ His separate Federal Circuit entry-of-appearance number was not in the docket excerpts retrieved (Justia's copy stops at Feb. 5, 2020); his appearance is nonetheless established by the judgment's counsel listing.
Richard A. Lowry Of counsel Quinn Emanuel, Washington, DC EoA as of counsel, Dec. 31, 2019 (Doc. 9) Federal Circuit/director-level appellate support on the briefs; no independent verified bio detail retrieved — treat as low-confidence beyond the docket entry.

In‑house: Edward R. McGah, Jr., BlackBerry Corporation, Laguna Niguel, CA, appears in the C.D. Cal. counsel listings in Judge Wu's published rulings (487 F. Supp. 3d 870). I found no Federal Circuit entry of appearance for in-house counsel in 20‑1256 — the appeal was handled entirely by Quinn Emanuel.

Local counsel: none. There is no local-counsel requirement at the Federal Circuit, and the same Quinn Emanuel team that tried the case in Los Angeles briefed and argued the appeal (Weisburst from New York at the podium).

Related appellate counsel for the '634 patent itself (No. 2021‑1377)

  • Michael T. Hawkins (Reg. No. 57,867), Fish & Richardson P.C., Minneapolis — counsel for Patent Owner/Appellant BlackBerry in the IPR appeal, per BlackBerry's Dec. 3, 2020 Notice of Appeal in IPR2019‑00925.
  • Appellee side: Heidi L. Keefe, Andrew C. Mace, Mark R. Weinstein, Yuan Liang, Cooley LLP (Washington, DC / Palo Alto).
  • In the underlying IPRs, BlackBerry's patent-owner team included Quinn Emanuel's Sanford Weisburst in an appellate consulting capacity in the parallel Alacritech matters, but the '634 IPR papers were signed by Fish & Richardson. Confirm the 21‑1377 appearance lineup against that docket before relying on it.

Sourcing / confidence notes

  • High confidence: Weisburst as principal counsel and arguing attorney; Asperger, Schmidt, Mishra, Johnson, Lowry as of counsel; all grounded in specific Federal Circuit docket entries (Docs. 5–9, 17, 34, 35) and the text of the Rule 36 judgment (Doc. 64).
  • Medium confidence: Nardinelli (named in judgment, specific EoA not captured) and Lowry's substantive role (docket only).
  • Not sealed / not missing: every counsel appearance here is a public docket entry; the sealing in the district court case (numerous ECF sealing orders in Jan.–Feb. 2020) went to briefs and expert materials, not to counsel identities.
  • Do not rely on the CourtListener docket's "late docketing due to clerk error" entry to date the appeal — the notice of appeal was filed Dec. 11, 2019 (ECF 498), and the Federal Circuit docketed No. 2020‑1256 on Dec. 17, 2019; a duplicate notification was entered in the district court docket a year later (Dec. 14, 2020) due to that clerical error.

Defendant representatives

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

I'll research this systematically — first resolving the appeal itself, then the defendant-side counsel.

Good — the appeal is confirmed. Now let me nail down the appellee-side counsel roster and firm details.

Bottom line first

Case No. 2020‑1256 is BlackBerry Limited v. Facebook, Inc., WhatsApp, Inc., Instagram, LLC (consolidated with No. 2020‑1258, BlackBerry Ltd. v. Snap Inc.), appeals from C.D. Cal. Nos. 2:18‑cv‑01844‑GW‑KS and 2:18‑cv‑02693‑GW‑KS (Judge George H. Wu). The appeal was affirmed via Rule 36 judgment on December 10, 2020 (per curiam: Lourie, O'Malley, Reyna), with the mandate issuing January 2021. Fed. Cir. J. · CAFC 20-1256 page · C.D. Cal. Dkt. 675–676

So the defendant/appellee side splits into two separate defense teams — Cooley LLP for the Facebook entities and Paul Hastings LLP for Snap. The counsel roster below is taken from the Federal Circuit judgment's appearance block (Doc. 64) plus Federal Circuit docket entries (Docs. 2–4, 16, 27) and C.D. Cal. signature blocks.

A. Defendants-Appellees Facebook, Inc., WhatsApp, Inc., Instagram, LLC — Cooley LLP

Attorney Role Firm / office Note
Heidi Lyn Keefe Lead / principal counsel of record; argued the appeal (Fed. Cir. ECF No. 2, "Entry of Appearance … as principal counsel," 12/31/2019; Doc. 64) Cooley LLP, Palo Alto, CA (3175 Hanover St.) Cooley's longtime lead patent litigator for Facebook/Meta; has appeared for Facebook in Interval Licensing v. AOL (W.D. Wash.), Wireless Ink v. Facebook (S.D.N.Y.), Mekiki v. Facebook, Windy City Innovations v. Facebook (Fed. Cir. 20‑1153) and Express Mobile v. Meta (Fed. Cir. 24‑1190). Frequent Federal Circuit advocate.
Mark R. Weinstein Of counsel / arguing-team member on appeal (listed in Doc. 64) Cooley LLP, Palo Alto, CA Cooley IP litigation partner; also appeared for Facebook in Windy City Innovations v. Facebook, 20‑1153.
Matthew J. Brigham Of counsel on appeal (Doc. 64); also district-court counsel (author of the Brigham declaration supporting defendants' sealing/motion-to-strike papers) Cooley LLP, Bay Area (specific office not confirmed in retrieved filings) Member of the Cooley Facebook trial team in the C.D. Cal. case.
Dena Chen Of counsel on appeal (Doc. 64) Cooley LLP (office not confirmed in retrieved filings) Appellate-team member; no independently verified case history located.
Elizabeth B. Prelogar Of counsel on appeal — appellate/Supreme Court specialist (listed in Doc. 64 as "Washington, DC"; Cooley e-mail and D.C. address confirmed in contemporaneous Cooley filings) Cooley LLP, Washington, DC (1299 Pennsylvania Ave. NW) Joined Cooley in 2020 to lead its Supreme Court & appellate practice; later the 48th U.S. Solicitor General (2021–2025); has argued 35+ Supreme Court cases. Her 2020 Cooley practice included Facebook/WhatsApp matters (per the Cooley fee declaration filed in WhatsApp v. NSO Group).

District-court-only counsel (did not appear on the Federal Circuit judgment): Michael G. Rhodes (Cooley LLP, San Francisco, 101 California St.) — long-time Cooley partner and former global chair of the firm's litigation and cyber/data/privacy groups; his name appears on C.D. Cal. filings for the Facebook defendants (e.g., Dkt. 667 signature block) but not in the Federal Circuit appearance block.

Notes on this group:

  • No separate "local counsel" appears to have been designated in the C.D. Cal. case; Cooley (Palo Alto/San Francisco) served as lead trial counsel, which is permissible because C.D. Cal. does not require local counsel.
  • No Facebook/WhatsApp/Instagram in-house attorney appears as counsel of record on the Federal Circuit docket in the materials I could retrieve. BlackBerry's own in-house counsel (Edward R. McGah, Jr., VP/Deputy GC) did appear on the plaintiff side in the district court, so the asymmetry is notable but likely reflects that Meta's in-house lawyers did not enter appearances.
  • The Cooley team also handled the parallel PTAB proceedings against the '634 patent — Facebook, Inc., Instagram, LLC & WhatsApp Inc. v. BlackBerry Ltd., IPR2019‑00925 (petition filed Apr. 4, 2019, on claims 1, 4‑7, 10‑13, 16‑18 of the '634 patent).

B. Defendant-Appellee Snap Inc. (consolidated appeal No. 2020‑1258; also a defendant on the '634 patent in the companion C.D. Cal. case) — Paul Hastings LLP

Attorney Role Firm / office Note
Yar Roman Chaikovsky Lead counsel for Snap; argued the appeal (Doc. 64) Paul Hastings LLP, Palo Alto, CA (1117 S. California Ave.) Paul Hastings IP litigation partner and Snap's regular lead patent counsel; led Snap's C.D. Cal. defense (BlackBerry's § 101 motion practice, damages discovery disputes) and Snap's IPR filings, including the '634 petition (IPR2019‑00938) and its motion for joinder to Facebook's IPR2019‑00925; also represented Snap in PARC v. Snap (C.D. Cal.).
David Okano Of counsel on appeal (Doc. 64); district-court counsel Paul Hastings LLP, Palo Alto, CA Member of the Snap trial team; co-authored Snap's § 101 motion papers and prior-art elections.
Chad J. Peterman Of counsel on appeal (Doc. 64); district-court counsel (pro hac vice) Paul Hastings LLP, New York, NY (200 Park Ave.) Snap appellate/PTAB-side counsel; named on Snap's '634 IPR papers.
Philip Ou District-court counsel (not listed in the Fed. Cir. judgment) Paul Hastings LLP, Palo Alto, CA Trial-team member on the § 101 motions.
Thomas Zaccaro District-court counsel (Los Angeles) Paul Hastings LLP, Los Angeles, CA (515 S. Flower St.) Effectively Snap's California-local/LA-side counsel in the C.D. Cal. filings.

Caveats and sourcing limits

  1. I could not pull the Federal Circuit docket directly from PACER. The docket entries and appearance blocks I relied on come from CourtListener/RECAP mirrors, Justia's CAFC docket, the Court's own judgment PDF (Doc. 64), and secondary reproductions of the CAFC docket (Patexia's 20‑1256 document list). A PACER pull of the full 20‑1256 docket would confirm whether any additional appearances (e.g., subsequent substitutions or amicus counsel) were filed after February 2020.
  2. Office locations for Matthew J. Brigham and Dena Chen are not verified. They are identified as Cooley counsel on the Federal Circuit judgment; their specific Cooley office was not stated in the filings I retrieved, so I have not guessed.
  3. Sealed material: the district court record contains numerous sealing orders (e.g., Dkt. 495, 499, 606) and sealed briefs, but those seal orders cover briefs and exhibits, not the identity of counsel. No attorney in this matter appears to have been concealed by sealing.
  4. The '634 patent's precise role in the appeal: the '634 patent was one of the "common" patents construed in Judge Wu's April 1, 2019 tentative/final claim construction ruling (Dkt. 152) and was asserted against all defendants including Snap, and it was the subject of the Facebook and Snap IPRs. However, the December 2019 judgment appealed from (Dkt. 491) followed the § 101 summary-judgment rulings on the '351, '929 and '120 patents, and because the Federal Circuit disposed of the appeal by Rule 36 affirmance without opinion, the court said nothing substantive about the '634 patent. I could not confirm from the retrieved docket text that the '634 patent was itself within the scope of the appealed judgment — treat that linkage (which appears on the Google Patents litigation panel) as unverified.
  5. Present-day status: the appeal is long concluded (mandate Jan. 2021; the underlying C.D. Cal. case was dismissed by stipulation on Feb. 16, 2021, Dkt. 682). The firms/offices above reflect the 2019–