Litigation

Apple Inc. v. HBCU Messaging US LP

Pending

IPR2026-00105

Patents at issue (1)

11991600PTAB institution denied

Plaintiffs (1)

Summary

Apple Inc. filed an Inter Partes Review (IPR) petition challenging the validity of US 11,991,600. The PTAB has not yet decided whether to institute a trial. The outcome could significantly impact the related district court litigation.

Case overview & background

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

This case involves patent infringement litigation filed by HBCU Messaging US LP against Apple Inc. and Green Dot Corporation in the U.S. District Court for the Western District of Texas. HBCU Messaging US LP is a non-practicing entity (NPE) and a subsidiary of the HBCU Technology Foundation, a 501(c)(3) nonprofit organization focused on supporting technological innovations and programs at Historically Black Colleges and Universities (HBCUs). The Foundation acts as a collective technology transfer organization for HBCUs. HBCU Messaging US LP holds rights to a portfolio of patents, originally assigned from Messmo, a former mobile internet texting platform. Apple Inc. is a major American multinational technology company known for its consumer electronics, software, and online services, including the iPhone, iPad, and Apple Watch. Green Dot Corporation is a payment platform company.

The district court complaint, filed on October 7, 2024 (and amended on January 24, 2025), alleges infringement of seven mobile messaging patents: US 8,918,127; 11,012,827; 11,089,450; 11,653,182; 11,653,183; 11,991,600; and 11,991,601. These patents generally relate to messaging systems capable of sending messages through either a cellular Short Message Service (SMS) or a packet-switched message service outside the cellular network, with a core aspect being the ability to determine if a recipient supports packet-switched messages before sending. Apple is accused of infringing these patents through its Messages app and Apple Cash service, with Green Dot Corporation targeted for its payment technology integrated into Apple Cash. The case is being heard in the U.S. District Court for the Western District of Texas, assigned to Judge Alan D. Albright. This venue has been a prominent forum for patent litigation, particularly under Judge Albright, who has been recognized for attracting a significant number of patent cases.

This case is notable due to the plaintiff being a subsidiary of a non-profit foundation associated with HBCUs, aiming to generate revenue to support these institutions. The assertion pattern involves an NPE enforcing a portfolio of messaging patents against a major technology company and its payment partner. The litigation is further complicated by the multiple parallel Inter Partes Review (IPR) proceedings initiated by Apple at the Patent Trial and Appeal Board (PTAB) challenging the validity of several of the asserted patents, including IPR2026-00105 concerning US 11,991,600. The outcomes of these IPRs could significantly influence the district court litigation, potentially leading to a stay of the district court case or narrowing the asserted claims if patents are found unpatentable.

Key legal developments & outcome

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

The patent infringement litigation involving HBCU Messaging US LP v. Apple Inc. and Green Dot Corporation (W.D. Tex., 1:24-cv-01199) has progressed through initial pleadings, a detailed scheduling order, and early claim construction proceedings, alongside parallel Inter Partes Review (IPR) challenges at the Patent Trial and Appeal Board (PTAB).

Here are the key legal developments and outcomes in chronological order:

  • October 7, 2024: Complaint Filed
    HBCU Messaging US LP filed its initial complaint against Apple Inc. and Green Dot Corporation in the U.S. District Court for the Western District of Texas.

  • January 24, 2025: Amended Complaint Filed
    HBCU Messaging US LP filed an amended complaint, further detailing the alleged infringement of seven mobile messaging patents: US 8,918,127; 11,012,827; 11,089,450; 11,653,182; 11,653,183; 11,991,600; and 11,991,601.

  • April 9, 2025: Agreed Scheduling Order Issued
    The District Court issued an Agreed Scheduling Order, setting out a timeline for the litigation. Key deadlines included:

    • July 15, 2025: Deadline for filing motions to amend or supplement pleadings or to join additional parties.
    • May 13, 2025: Plaintiff to serve a disclosure of asserted claims and preliminary infringement contentions.

  • August 28, 2025: IPR Petition (IPR2025-01493) Filed
    Apple Inc. filed an Inter Partes Review petition, IPR2025-01493, challenging the validity of US Patent No. 11,089,450. This patent is one of the seven asserted in the district court litigation.

  • September 22, 2025: Claim Construction Briefs Filed
    Both HBCU Messaging US LP and Apple Inc. filed their Opening Claim Construction Briefs in the district court case.

  • October 17, 2025: Responsive Claim Construction Briefs Due
    The parties were scheduled to file their Responsive Claim Construction Briefs. Apple's responsive brief was filed around October 24, 2025.

  • October 31, 2025: Stipulation Filed
    A stipulation was filed by the parties.

  • January 9, 2026: IPR2025-01493 Institution Decision
    The Patent Trial and Appeal Board (PTAB) issued a Director's Discretionary Decision Refer, indicating that IPR2025-01493 (challenging US 11,089,450) would proceed for a review of its merits and non-discretionary considerations, meaning institution was not denied on discretionary grounds. As of this date, no motion to stay the district court litigation pending IPR outcome had been filed.

  • January 20, 2026: Markman Hearing Held
    A Markman hearing for claim construction was held in the district court.

  • January 21, 2026: Fact Discovery Opened
    Fact discovery officially opened in the district court case, following the Markman hearing. Initial disclosures per Rule 26(a) were also due on this day.

  • January 23, 2026: Identification of Claim Terms Filed
    HBCU Messaging US LP filed its "Identification of Claim Terms."

  • 2026: IPR2026-00105 Petition Filed
    Apple Inc. filed IPR2026-00105, challenging the validity of US 11,991,600. As of May 15, 2026, the PTAB has not yet decided whether to institute a trial for this IPR.

  • April 1, 2027: Dispositive Motions Deadline
    The deadline for filing all dispositive motions in the district court case is set for April 1, 2027.

  • July 12, 2027: Jury Trial Scheduled
    The district court case is set for a jury trial commencing at 9:00 a.m. on July 12, 2027.

Present Posture:
The district court litigation is in the early stages of discovery, following the claim construction hearing. The outcome of the Markman hearing is pending (not yet published in search results) and will significantly shape the scope of the asserted claims. Parallel IPR proceedings, including the pending IPR2026-00105 concerning US 11,991,600, could lead to a motion to stay the district court case or impact the asserted claims if patents are found unpatentable. No motion to stay has been filed as of January 2026.

Plaintiff representatives

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

I'll research plaintiff-side counsel in both the district court case and the IPR2026-00105 proceeding.

Good initial results. Let me verify the full attorney roster, pro hac vice admissions, and biographical details.

Plaintiff's counsel of record — HBCU Messaging US LP

Bottom line: HBCU Messaging US LP is represented by a two-firm team: Devlin Law Firm LLC (Wilmington, Delaware) as lead/patent counsel in both the district court case and the PTAB proceedings, and The Shore Firm (Dallas, Texas) as Texas/local counsel in the district court. Four attorneys have been identified from signed filings, the Markman transcript, and the Patent Owner's Mandatory Notices in IPR2026-00105. No in-house counsel for HBCU Messaging has appeared on the record in any filing I could locate.

Counsel roster

Attorney Role Firm / office Notes
Timothy Devlin Lead counsel — district court and Patent Owner Lead Counsel in IPR2026-00105 (Reg. No. 41,706; DE Bar No. 4241) Devlin Law Firm LLC, 1526 Gilpin Avenue, Wilmington, DE 19806 Managing partner; former Fish & Richardson principal and co-chair of its IP Risk Management Group; claims 200+ patent cases as lead counsel; IAM Top-250 patent litigators (2011–2021); long history representing the Rembrandt entities from which this portfolio derives (e.g., Rembrandt Vision Techs. v. Ciba Vision)
Michael W. Shore Texas / local counsel; appeared for Plaintiff on the docket (Dkt. 5, Oct. 8, 2024); argued at the Markman hearing The Shore Firm, 5646 Milton St., Suite 423, Dallas, TX 75206 (earlier filings list 901 Main St., Suite 3300, Dallas, TX 75202) Texas Bar No. 18294915, licensed 1990; founder of The Shore Firm (formerly Shore Chan Bragalone); IP-commercialization practice focused on universities/non-profits; notable results include VideoShare v. Google (~$25.9M verdict) and UNM Rainforest Innovations v. Toyota
Neil A. Benchell Back-up counsel in IPR2026-00105 ("pro hac vice forthcoming" per Mandatory Notices); co-signatory on district court claim construction papers ("admitted pro hac vice") Devlin Law Firm LLC, Wilmington, DE Devlin firm patent litigator; USPTO registration number not confirmed in the sources reviewed
Zachary Della Porta Associate / of counsel on the Plaintiff's litigation team; co-signed the Identification of Claim Terms (Aug. 1, 2025) and Responsive Claim Construction Brief (Oct. 24, 2025) as "admitted pro hac vice" The Shore Firm, Dallas, TX Texas Bar No. 24134899; patent-litigation experience includes UNM Rainforest Innovations v. Toyota and CM HK Ltd. v. Samsung Elecs. (E.D. Tex.)

Where each appears of record

  • District court (No. 1:24-cv-01199-ADA, W.D. Tex., Austin Division). Michael W. Shore's Notice of Attorney Appearance for HBCU Messaging was docketed October 8, 2024 (Dkt. 5, the day after filing). All later substantive filings are signed by the Devlin/Shore combination — e.g., Plaintiff's Responsive Claim Construction Brief (Dkt. 66, filed Oct. 24, 2025) and HBCU's Identification of Claim Terms Requiring Construction (Aug. 1, 2025) both carry the block signature of Devlin, Benchell, Shore, and Della Porta as "Attorneys for Plaintiff." The January 23, 2026 Markman transcript lists the appearances for Plaintiff as Timothy Devlin and Neil Benchell (Devlin Law Firm) and Michael W. Shore (The Shore Firm).
  • IPR2026-00105 (and related IPRs). HBCU Messaging's Mandatory Notices, dated November 21, 2025, designate Timothy Devlin as Lead Counsel and Neil Benchell as Back-up Counsel under 37 C.F.R. §§ 42.8(b)(3), 42.10(a), and identify HBCU Messaging US LP v. Apple, Inc., 1:24-cv-01199-ADA (W.D. Tex.) as the related matter. The Shore Firm does not appear to be designated in the PTAB proceedings, which means the district court team and the PTAB team are not identical.
  • Devlin also corresponded directly with the Board in the related IPRs (e.g., a letter to the Director's Discretionary Decision inbox regarding over-length discretionary-denial briefs in IPR2026-00104, -00105, -00107, and -00109), confirming his hands-on role across the IPR family.

Verification caveats

  • Docket currency. The public docket snapshot I could reach (Justia) was last retrieved December 4, 2024, so it captures only the earliest appearances. Later appearances, withdrawals, or pro hac vice orders entered in 2025–2026 (e.g., formal admission orders for Benchell and Della Porta) should be confirmed against PACER. I did not find a docket entry formally granting Della Porta's pro hac vice motion in this case, although he signs as admitted.
  • Possible additional Devlin attorney. Third-party IPR party/attorney tables for the companion matter IPR2026-00107 list a Feng Xu of Devlin Law Firm alongside Devlin. That source is an aggregated database rather than a signed filing, and I could not confirm a Feng Xu appearance in IPR2026-00105 specifically — treat as unverified.
  • No in-house counsel identified. Nothing in the complaint, claim construction papers, or Mandatory Notices identifies an in-house attorney for HBCU Messaging US LP or its parent, the HBCU Technology Foundation.
  • Firm-name variants. Filings and databases use "Devlin Law Firm LLC," "Devlin Law Firm," and the typo "Delvin Law Firm LLC"; the Shore entity appears as "The Shore Firm," "Shore Law Firm," and "Shore Firm LLP." These are the same two firms.

Contradiction to flag against the earlier sections

The previously generated chronology places the Markman hearing on January 20, 2026. The Markman hearing transcript introduced as an exhibit in the related IPRs is dated January 23, 2026 (case style "HBCU Messaging US LP v. Apple, Inc., et al., Civil Action No. 1:24-CV-1199," Waco/Austin Division, before Judge Albright). The earlier section separately lists a January 23, 2026 filing by HBCU of its "Identification of Claim Terms" — which conflicts with the August 1, 2025 date shown on the Identification of Claim Terms exhibit itself (and with the April 9, 2025 scheduling order's description of that disclosure). Recommend treating January 23, 2026 as the Markman date and August 1, 2025 as the Identification of Claim Terms date pending a PACER check.

Sources

Defendant representatives

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

The counsel of record representing the defendants, Apple Inc. and Green Dot Corporation, in the district court case HBCU Messaging US LP v. Apple, Inc. et al. (W.D. Tex., 1:24-cv-01199), and in the related IPR proceedings, include attorneys from several prominent intellectual property litigation firms.

For Apple Inc. (Defendant in District Court and Petitioner in IPRs):

  • W. Karl Renner (Lead Counsel for IPR2025-01493 and IPR2026-00105) - Fish & Richardson P.C., Minneapolis, MN. Renner is recognized as one of the nation's leading PTAB practitioners, with extensive experience in post-grant proceedings for large technology companies. Fish & Richardson handles more patent cases in District Courts, the Federal Circuit, the ITC, and the PTAB than any other national firm.
  • David Holt (Backup Counsel for IPR2025-01493) - Fish & Richardson P.C.
  • Ryan J. Malloy (Counsel for District Court) - Morrison Foerster, LLP.
  • Nima I. Kiaei (Counsel for District Court) - Morrison & Foerster LLP.
  • Brian Christopher Nash (Counsel for District Court) - Morrison & Foerster LLP.
  • Richard S.J. Hung (Counsel for District Court) - Morrison & Foerster LLP.
  • Nishi A. Tavernier (Counsel for District Court) - Morrison & Foerster LLP.
  • It's worth noting that while Fish & Richardson attorneys are actively representing Apple in the IPR proceedings, the district court filings suggest Morrison & Foerster LLP is also representing Apple in the broader infringement case.

For Green Dot Corporation (Defendant in District Court):

At present, public records specifically identifying separate counsel for Green Dot Corporation in the district court case are not readily available in the same detail as for Apple Inc. The amended complaint lists both Apple Inc. and Green Dot Corporation as defendants, and the general docket entries often refer to "Defendants" collectively. It is common in patent litigation for co-defendants, particularly those with an integrated product or service, to be represented by the same counsel, or for one defendant's counsel to take the lead. Further specific filings would be needed to definitively identify Green Dot's independent legal representation if any.