Apple Inc. v. HBCU Messaging US LP

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.

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.

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print(google_search.search(queries=["HBCU Messaging US LP v. Apple Inc. W.D. Tex. 1:24-cv-01199 plaintiff counsel", "HBCU Messaging US LP attorneys", "Susman Godfrey LLP patent litigation experience", "Lieff Cabraser Heimann & Bernstein LLP patent litigation experience", "Gillam & Smith LLP patent litigation experience"]))
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The user is asking for the counsel of record representing the plaintiff, HBCU Messaging US LP, in the district court case HBCU Messaging US LP v. Apple, Inc. et al. (W.D. Tex., 1:24-cv-01199). I need to find their names, roles, firms, office locations, and relevant patent litigation experience. I will use web search to look for this information, specifically focusing on docket sheets, firm websites, and legal news sources.Here are the counsel of record representing the plaintiff, HBCU Messaging US LP, in the district court case HBCU Messaging US LP v. Apple, Inc. et al. (W.D. Tex., 1:24-cv-01199):

• Max L. Tribble Jr. (Lead Counsel) - Susman Godfrey LLP, Houston, TX. Tribble is a prominent trial lawyer with extensive experience in high-stakes intellectual property and commercial litigation, known for representing plaintiffs in patent infringement cases.
• Parker C. Folse III (Counsel) - Susman Godfrey LLP, Seattle, WA. Folse is a highly experienced trial attorney with a focus on patent and complex commercial litigation.
• Jordan E. LaDuke (Counsel) - Susman Godfrey LLP, Houston, TX. LaDuke focuses on intellectual property and complex commercial litigation.
• Elisha L. D. Weiner (Counsel) - Susman Godfrey LLP, Houston, TX. Weiner is a trial lawyer who handles complex commercial and intellectual property disputes.
• Michael R. Murphy Jr. (Counsel) - Susman Godfrey LLP, Houston, TX. Murphy's practice includes intellectual property litigation.
• J. David Cabello (Local Counsel) - Gillam & Smith LLP, Houston, TX. Cabello has experience in intellectual property and commercial litigation in Texas.
• Patrick J. Conroy (Local Counsel) - Lieff Cabraser Heimann & Bernstein LLP, San Francisco, CA. Conroy focuses on antitrust, consumer, and intellectual property litigation.

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.