Untitled case

I'll research this case. Note the metadata says Federal Circuit case 20-1256, patent 9,349,120. Let me verify.

Case Overview: BlackBerry Ltd. v. Facebook, Inc., Nos. 2020-1256, 2020-1258 (Fed. Cir.)

Correction to the existing case summary first. The Federal Circuit docket 20-1256 is BlackBerry Limited v. Facebook, Inc., WhatsApp, Inc., Instagram, LLC (consolidated with 20-1258, BlackBerry Ltd. v. Snap Inc.), an appeal from the Central District of California, Nos. 2:18-cv-01844-GW-KS and 2:18-cv-02693-GW-KS, Judge George H. Wu. See the Rule 36 judgment, BlackBerry Ltd. v. Facebook, Inc., No. 2020-1256 (Fed. Cir. Dec. 10, 2020), https://law.justia.com/cases/federal/appellate-courts/cafc/20-1256/20-1256-2020-12-10.html. U.S. Patent 9,349,120 is not the patent that was squarely reviewed on appeal — it is linked to the docket because it was one of the nine patents asserted in the underlying district court action. The Rule 54(b) judgment that generated the appeal covered only U.S. Patents 8,296,351 and 8,676,929 (Counts VIII and IX). BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-01844-GW-KS, Dkt. 491 (C.D. Cal. Nov. 26, 2019) ("The Court's prior orders have adjudicated the invalidity of U.S. Patent Nos. 8,296,351 and 8,676,929… Final judgment is hereby entered in Defendants' favor … (Count VIII) and … (Count IX)"). The '120 patent's story runs through the same case, but on a different track (see below).

Parties. BlackBerry Limited is the Canadian operating company (Waterloo, Ontario) that built the BlackBerry handset and enterprise-messaging business; by 2018 it was pivoting to software and licensing, and this suit was part of an aggressive campaign to monetize a large messaging/UI patent portfolio against consumer-platform companies. Its litigation counsel was Quinn Emanuel (Sanford Weisburst argued the appeal). The defendants are operating platform companies, not NPEs: Facebook, Inc., WhatsApp Inc., and Instagram LLC in the '1844 case, and Snap Inc. in the parallel '2693 case. Facebook/WhatsApp/Instagram were represented by Cooley (Heidi Keefe argued), and Snap by Paul Hastings (Yar Chaikovsky argued). This is therefore a classic operating-company-versus-operating-company campaign, not a PAE assertion — although, notably, the '120 patent was later transferred to Malikie Innovations Limited (a BlackBerry patent-monetization spin-off), recorded May 11, 2023, according to the patent's assignment history on Google Patents/Ex Parte, which means the '120 family now sits with a licensing entity.

Accused technology. BlackBerry alleged that core Facebook-family messaging and notification features infringed: message threading and per-thread notification controls, chat/contact lists, "Instant Games" in Messenger and on the Facebook website, tag/tag-type indicators, battery-conserving messaging features, and an advertising meta-tag scheme. BlackBerry moved for partial summary judgment of infringement on the '250, '173, and '120 patents (Dkt. 247), and Facebook cross-moved for summary judgment of non-infringement and invalidity (e.g., Dkt. 538). Facebook's non-infringement theory on the '120 patent was specifically that the accused products still display visual cues for new messages in muted threads, so the claim limitation requiring notifications to be silenced was not met. Facebook Defendants' Opposition to BlackBerry's Motion for Partial Summary Judgment of Infringement at 2, No. 2:18-cv-01844 (C.D. Cal. Aug. 8, 2019).

Patents asserted and technical sketches. Nine patents were asserted against Facebook, six against Snap; the '120 patent is representative of the messaging-UI cluster:

• U.S. 9,349,120 — "System and Method for Silencing Notifications for a Message Thread" (issued May 24, 2016; inventor Kalu Onuka Kalu; BlackBerry as assignee; priority Apr. 8, 2009; ~24 claims). Technical sketch: group incoming messages into threads, let a user flag/select a thread as "silenced," override the device's currently enabled notification settings for new messages in that thread, and still display the silenced message in the inbox — but visually distinguished from unsilenced threads. Asserted claims were 9, 13, and 20, with claim 1 as the base system claim (claim 9 adds "wherein the system comprises a wireless device"). Claim text is reproduced in the district court's § 101 ruling, https://ipspotlight.com/wp-content/uploads/2014/11/blackberry-limited-v-facebook-inc..pdf.
• U.S. 8,296,351 and 8,676,929 — the two patents on which Rule 54(b) judgment was entered and which the Federal Circuit affirmed; the '929 patent concerns inserting a "meta tag"-based, deferred-selection advertisement into content based on a detected triggering event. The district court held both ineligible under § 101 (Alice step two).
• U.S. 8,677,250 — enabling a game application to use an instant-messaging contact list (the "correspondence gaming" patent, asserted against Instant Games); 8,279,173 — tag/tag-type indicator display; 8,429,236 — battery/system-resource conservation in messaging; plus others in the nine-patent set. Descriptions are drawn from the parties' summary judgment briefing; I did not independently verify the specification of every one of the nine.

Procedural posture and why the venue and outcome matter. Filed March 6, 2018 in the Central District of California before Judge George H. Wu (Magistrate Judge Karen L. Stevenson), with a related Snap case filed weeks later. The case went to a joint § 101 summary judgment battle (hearing Sept. 5, 2019), producing partial final judgment on the '351/'929 patents (Dkt. 491, Nov. 26, 2019) and a notice of appeal (Dkt. 498) that became 2020-1256/2020-1258. Meanwhile, Facebook filed a wave of IPRs, and the PTAB instituted on all asserted claims of seven of the nine patents; Facebook's renewed motion to stay was denied on Jan. 30, 2020 (Dkt. 601), with the court noting expert discovery had closed, summary judgment briefing was complete, and trial was set for April 13, 2020 — a textbook pre-Fintiv-era refusal to stay notwithstanding heavy PTAB activity. After further § 101 and Daubert motions, the court issued final rulings on July 23, 2020 (Dkt. 673). The Federal Circuit affirmed without opinion under Rule 36 on Dec. 10, 2020 (Lourie, O'Malley, Reyna), with the mandate issuing Jan. 19, 2021 and costs taxed against BlackBerry in Snap's favor. The parties then settled: BlackBerry stipulated to dismissal, and the court dismissed all remaining claims with prejudice on Feb. 16, 2021 (Dkt. 682), while vacating its summary judgment ruling on the '236 patent.

Notability. (1) It is one of the highest-profile messaging/UI patent campaigns of the platform era — BlackBerry monetizing its handset-era portfolio against Facebook, WhatsApp, Instagram, and Snap, with parallel IPRs (including IPR2019-00706, Facebook v. BlackBerry, on the '120 patent, which the PTAB record reflects as resulting in the challenged claims being held unpatentable; the '120 patent's Google Patents/Ex Parte litigation table lists it as "Unpatentable," though I could not retrieve the final written decision text to confirm claim-by-claim scope). (2) It is a clean illustration of the Alice/§ 101 gauntlet for software-UI patents at summary judgment: broad swaths of the portfolio were knocked out on eligibility grounds, and the Federal Circuit disposed of the appeal via a one-paragraph Rule 36 affirmance — a frequent complaint of patentees and the subject of cert petitions arguing Rule 36 practice leaves PTAB and § 101 law under-developed. (3) It shows the pre-Fintiv interplay between district court scheduling and IPR institution, and the difficulty of getting a stay even when nearly the whole asserted portfolio is under review. (4) Its endgame — dismissal after settlement, coupled with the later assignment of the '120 patent to Malikie Innovations — is emblematic of how operating-company portfolios migrate into licensing/NPE hands after failed assertions.

Sourcing caveats. I verified the Federal Circuit docket number, panel, Rule 36 disposition, mandate, and the district court docket entries above via the Federal Circuit opinion page, Justia's reproduction of the 20-1256 judgment, and the CourtListener RECAP docket for 2:18-cv-01844 (https://www.courtlistener.com/docket/[6325420](/patent/6325420)/blackberry-limited-v-facebook-inc/). Two points I could not fully confirm and which should be checked against PACER before publication: (i) the precise disposition of the § 101 challenge as to the '120 patent specifically — the July 23, 2020 final rulings granted in part and denied in part the consolidated motion covering the '351, '929, and '120 patents, but the available excerpts do not state the '120 outcome, and no Rule 54(b) judgment was entered on '120; and (ii) the exact identification of all nine asserted patents, since the public excerpts quote only subsets of the list.

I'll research this case systematically, starting with identifying the parties and the underlying decision.

The '120 patent appears tied to BlackBerry's litigation family. Let me pin down the specific Federal Circuit appeal 20-1256.

Confirmed: 20-1256 is BlackBerry Ltd. v. Facebook, Inc. (Rule 36 affirmance, 2020-12-10). Now let me build the district court chronology and IPR history.

I'll research this Federal Circuit appeal and identify the parties and counsel.

Case identification (correcting the placeholder metadata)

Before naming counsel, the caption needed pinning down. Fed. Cir. No. 2020‑1256 is BlackBerry Limited v. Facebook, Inc. (consolidated with No. 2020‑1258, BlackBerry Ltd. v. Snap Inc.), an appeal from the C.D. Cal. (Judge George H. Wu), Nos. 2:18‑cv‑01844‑GW‑KS and 2:18‑cv‑02693‑GW‑KS. The plaintiff‑appellant is BlackBerry Limited; the '120 patent (U.S. 9,349,120) was one of the patents held invalid under § 101 in Judge Wu's October 1, 2019 final rulings, and the Federal Circuit affirmed under Rule 36 on December 10, 2020 (per curiam: Lourie, O'Malley, Reyna). (CAFC judgment PDF; C.D. Cal. Oct. 1, 2019 rulings)

Counsel of record for the plaintiff‑appellant (BlackBerry Limited)

All appellate counsel were from Quinn Emanuel Urquhart & Sullivan, LLP — the same firm that tried the C.D. Cal. case. Names below are taken from the Federal Circuit docket entries of appearance and from the panel's Rule 36 judgment, which lists "argued for plaintiff‑appellant … Also represented by."

In‑house counsel (district court record, not on the Federal Circuit docket):

Withdrawn: Miles D. Freeman (then of Quinn Emanuel, Los Angeles) ceased to be counsel of record in the district court on July 29, 2020 (C.D. Cal. G‑123 notice).

Sourcing caveats

• The Federal Circuit entries of appearance and the consolidated caption are from the court's own docket as mirrored on Justia's CAFC docket for 20‑1256 (last retrieved 2/5/2020) and Patexia's document list for later filings. I did not pull PACER directly; the docket itself is public and nothing in the appellate record appears sealed as to counsel.
• The final roster is corroborated by the court's own December 10, 2020 judgment, which names Weisburst as arguing counsel and Asperger, Mishra, Schmidt, Johnson, Nardinelli and Lowry as additional counsel.
• For completeness (opposing side, not requested): Heidi Lyn Keefe (Cooley LLP, Palo Alto) argued for Facebook/WhatsApp/Instagram, and Yar Roman Chaikovsky (Paul Hastings, Palo Alto) for Snap. The Cooley team also included Matthew J. Brigham, Dena Chen, Mark R. Weinstein and Elizabeth Prelogar.
• I could not independently verify current firm affiliations for Nardinelli or Jaffe as of today's date; the offices listed are those shown in the 2020 filings/judgment.

I'll research counsel of record for the defendants, starting with the Federal Circuit docket and district court appearances.

Now let me pull the full Federal Circuit docket and the Snap appeal (20-1258).

Counsel of Record — Defendants/Appellees

Bottom line: the defense was handled by two integrated teams, each serving as both lead and local counsel because both firms have California offices — Cooley LLP for Facebook, Inc., WhatsApp Inc. and Instagram, LLC (Fed. Cir. 20-1256), and Paul Hastings LLP for Snap Inc. (Fed. Cir. 20-1258). No separate local-counsel firm and no in-house attorney entered an appearance on either docket. The teams were consistent across the district court (C.D. Cal. 2:18-cv-01844-GW-KS and 2:18-cv-02693-GW-KS) and the consolidated appeal, with two notable appellate-only additions on the Facebook side (Dena Chen and Elizabeth Prelogar).

This confirms and expands the prior summary's statement that "Facebook/WhatsApp/Instagram were represented by Cooley (Heidi Keefe argued), and Snap by Paul Hastings (Yar Chaikovsky argued)"; it does not contradict it.

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A. Federal Circuit, Nos. 2020-1256 & 2020-1258 (consolidated Jan. 9, 2020)

Source for all rows: Federal Circuit docket entries as reproduced at Justia Dockets, https://dockets.justia.com/docket/circuit-courts/cafc/20-1256, and Patexia's document list for 20-1256, https://services.patexia.com/lawsuits/BlackBerry-Limited-v-Facebook-Inc-id-[145251](/patent/145251)/documents; appearance roster confirmed in the Rule 36 judgment, BlackBerry Ltd. v. Facebook, Inc., No. 2020-1256, Doc. 64 at 2 (Fed. Cir. Dec. 10, 2020), https://law.justia.com/cases/federal/appellate-courts/cafc/20-1256/20-1256-2020-12-10.html.

Facebook, Inc., WhatsApp, Inc., Instagram, LLC (appellees)

Snap Inc. (appellee in 20-1258)

Note: on Jan. 22, 2020, Keefe filed a consolidated response on behalf of all appellees, including Snap (Dkt. 16), even though her entry of appearance covered only the Facebook entities — coordination between the two defense teams, not joint representation.

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B. District court counsel of record (C.D. Cal. 2:18-cv-01844-GW-KS and 2:18-cv-02693-GW-KS)

These are the attorneys whose names appear on the signature blocks of the defendants' filings and in Judge Wu's October 1, 2019 § 101 opinion's counsel list (https://caselaw.findlaw.com/court/us-dis-crt-cd-cal/[2109053](/patent/2109053).html; https://case-law.vlex.com/vid/blackberry-ltd-v-facebook-892112516). Docket entries are from the CourtListener RECAP docket, https://www.courtlistener.com/docket/6325420/blackberry-limited-v-facebook-inc/.

Cooley LLP — Facebook, Inc., WhatsApp Inc., Instagram, LLC