Litigation

BlackBerry Corporation v. Maxell, Ltd.

terminated (settlement)

IPR2019-00095

Filed
2018-10-16

Patents at issue (1)

Defendants (1)

Summary

Inter partes review petition filed by BlackBerry Corporation challenging U.S. Patent 7,995,897; the proceeding was terminated by settlement.

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 across multiple sources. Let me start with broad searches on the parties and the IPR.

Let me dig into the patent itself, the district court case details, and the BlackBerry IPR family.

Now let me verify the district court case specifics — judge, transfer history, and outcome.

Case Overview & Background

Parties. This docket, IPR2019-00095, is the Patent Trial and Appeal Board track of a two-front dispute. The petitioner is BlackBerry Corporation, the Delaware-incorporated U.S. operating subsidiary (Pleasanton, CA) of Canadian parent BlackBerry Limited (Waterloo, Ontario); the complaint describes BlackBerry Corporation as supplying wireless telecommunications equipment — smartphones, tablets and mobile phones (Compl. ¶¶ 6–8, Maxell, Ltd. v. BlackBerry Corp., No. 1:17-cv-01446 (D. Del.)). The patent owner is Maxell, Ltd., a Kyoto-based Japanese manufacturer of storage media, optical discs, and batteries, founded in 1961 as Maxell Electric Industrial Co. (Compl. ¶ 1). Maxell is best characterized as an operating company monetizing a legacy Hitachi consumer-electronics portfolio, not a classic PAE: the asserted patents traveled Hitachi, Ltd. → Hitachi Consumer Electronics → Hitachi Maxell → Maxell in 2013–2017 (Compl. ¶ 4), and the Stanford NPE Litigation Database classifies Maxell as a "Product company" asserter (NPE DB). It nonetheless runs a sustained licensing-and-litigation program spanning Huawei, ZTE, ASUS, Apple, BLU, Hisense, Olympus, Fandango, CinemaNow, Lenovo/Motorola and Vizio (IPWatchdog).

Accused technology and patents. Maxell sued in the District of Delaware on October 13, 2017, captioned Maxell, Ltd. v. BlackBerry Corporation and BlackBerry Ltd., No. 1:17-cv-01446, asserting six patents against BlackBerry's mobile devices (unifiedpatents.com docket lists **8,170,394

Key legal developments & outcome

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

I'll research this. Note up front: the "case" in the metadata (IPR2019-00095) is a PTAB proceeding, not a district-court case — so I'll cover the IPR itself plus the parallel district-court litigation between BlackBerry and Maxell that it arose from.

Threshold correction before the chronology

The matter in the metadata — IPR2019-00095, BlackBerry Corp. v. Maxell, Ltd. — is a PTAB inter partes review, not a district-court infringement action. It has no complaint, answer, Markman, or trial. The infringement litigation you're describing is the parallel D. Del. case that the IPR was filed against:

Maxell, Ltd. v. BlackBerry Corp. and BlackBerry Ltd., No. 1:17-cv-01446 (D. Del.), filed 2017-10-13, before Judge Maryellen Noreika (originally assigned "JFB"; Magistrate Judge Sherry R. Fallon on referral). See Justia docket; Unified Patents litigation portal; Stanford NPE database — patent 7,995,897.

So I'll give you the chronology of the litigation and then the PTAB track that the metadata case belongs to, since the two were resolved by the same settlement.


I. Chronology — D. Del. No. 17-1446

2017-10-13 — Complaint filed. Maxell, Ltd. (Japanese operating company; parentage disclosed as Hitachi, Ltd. and Maxell Holdings, Ltd.) sued BlackBerry Corp. and BlackBerry Ltd. under 35 U.S.C. § 271, jury demand. The complaint was pleaded in counts; Count 1 asserted U.S. Patent No. 6,580,999. The other asserted patents correspond to the family BlackBerry later challenged at the PTAB: 6,765,616; 6,973,334; 8,170,394; 7,995,897; 9,100,604 (see the consolidated PTAB caption listing those five patents, IPR2019-00087/88/89/95/97, Paper 9 in IPR2019-00089).

2017-10-16 — Service effected on BlackBerry Corporation. This is the date that started the 35 U.S.C. § 315(b) one-year clock — and it is exactly why every BlackBerry petition in the family was filed on 2018-10-15/16, the last available day(s). This is the single most strategically important date in the file.

2017-11-01 → 2018-01-03 — Two stipulated extensions of BlackBerry's response deadline (to 2018-01-05, then 2018-01-19), plus pro hac vice admissions for both sides (Maxell: Jamie Beaber, Kfir Levy, James Fussell, Tiffany Miller, Baldine Paul, Saqib Siddiqui of Mayer Brown; BlackBerry: Jason Cook, Brian Riopelle, Shaun Hassett).

2018-01-19 — BlackBerry's Rule 12(b)(6) motion to dismiss for failure to state a claim (D.I. 12). This is the only substantive pre-trial motion of the case. Full briefing followed: opening brief (Jan.), Maxell's answering brief (2018-02-02), BlackBerry's reply (2018-02-09), and Maxell's request for oral argument (2018-02-16). BlackBerry also filed objections to Maxell's notice of subsequent authority (2018-02-23). Counsel changes: Maxell substituted Timothy Devlin (Devlin Law Firm) for Benjamin Schladweiler on 2018-04-02.

2018-08-24 — Joint stipulation of partial dismissal (D.I. 27). Under Fed. R. Civ. P. 41(a)(2), Maxell dismissed Count 1 ('999 patent) with prejudice, and the parties agreed to withdraw BlackBerry's motion to dismiss (D.I. 12) — meaning the motion was never ruled on and produced no written opinion. Each side bore its own fees on the dismissed claims/defenses, and the stipulation was made non-admissible for any adverse purpose. (Stipulation text via Trellis) Read strategically: Maxell shed its weakest/oldest patent to avoid a pleading ruling, and BlackBerry gave up a likely-winning dismissal motion to get there.

2018-09-07 — BlackBerry's Answer and Counterclaims (D.I. 29). BlackBerry answered and asserted counterclaims against Maxell (non-infringement and invalidity of the asserted patents), with a jury demand. Maxell answered the counterclaims on 2018-09-28. Note the sequencing: BlackBerry pleaded its invalidity counterclaims before filing its IPRs, which matters for § 315(a)(1)/(3) analysis — the petitions had to be filed before any invalidity counterclaim was served… in fact the counterclaims came first, and the petitions were filed five weeks later; that is a potential § 315(a)(1) issue that the Board never had to reach because of settlement.

2018-10-16 — Scheduling Order (Judge Noreika). Case referred to the Magistrate Judge for ADR. Key dates: joinder/amended pleadings 2019-03-15; claim construction opening brief 2019-06-21; answering 2019-07-12; reply 2019-08-02; surreply 2019-08-23; joint CC brief 2019-09-06; Markman hearing 2019-10-04; fact discovery close 2020-01-31; opening expert reports 2020-03-06; expert discovery close 2020-05-22; dispositive motions 2020-06-19; pretrial order 2020-11-06; pretrial conference 2020-11-13; jury trial 2020-11-30.

2018-10-29 — Stipulated patent protective order entered (D.I. ~32). 2018-11-26 — ADR/mediation telephone conference with Magistrate Judge Burke.

2019-04-18/22 — Case-ending settlement. The parties filed a Joint Stipulation and Order of Dismissal dated 2019-04-18 resolving "Plaintiff's claims for relief … and the claims and defenses raised by Defendants," with prejudice, each party bearing its own attorneys' fees, costs, and expenses. Judge Noreika so ordered it on 2019-04-22, and the docket was marked "Civil Case Terminated." (Stipulation PDF, D.I. 48)

What did not happen

  • No Markman / claim construction ruling. The Markman hearing was set for 2019-10-04; the case died in April 2019, before the first claim-construction brief was due.
  • No motion to stay pending IPR was filed or decided — I found no such docket entry, and the case was dismissed roughly six months after the petitions were filed, so the stay question became moot.
  • No summary judgment, no trial, no verdict, no JMOL/new-trial/fee motion, no appeal. The dismissal was with prejudice by stipulation, with a self-executing no-fee-shift term, so no § 285 motion was possible afterward.
  • No damages figure, no injunction, no public license terms — the settlement is confidential (see below).

II. The PTAB track (the metadata case and its siblings)

BlackBerry filed five petitions on 2018-10-15/16, all on the last day before its § 315(b) bar date from the 2017-10-16 service:

IPR Patent Filed Institution Terminated Outcome
IPR2019-00087 6,765,616 2018-10-15 none 2019-04-29 Settlement (portal)
IPR2019-00088 6,973,334 2018-10-16 — 2019-04-29 Settlement
IPR2019-00089 8,170,394 2018-10-16 2019-03-29 2019-04-29 Terminated post-institution, pre-FWD
IPR2019-00095 7,995,897 2018-10-16 not reached / not confirmed 2019-04-29 Terminated — settled
IPR2019-00097 9,100,604 2018-10-16 — 2019-04-29 Settlement

IPR2019-00095 specifics. Panel: APJs John Hudalla, Minn Chung, Terrence McMillin (TC 2100, Art Unit 2158). Petitioner's counsel: Oblon, McClelland, Maier & Neustadt (Todd Baker; Stephen McBride admitted pro hac vice as back-up counsel on 2019-01-23 per the consolidated order in the sibling cases). Patent Owner's counsel: Mayer Brown (Robert G. Pluta). Challenged patent: U.S. 7,995,897 (app. 12/124,229; inventors Masaru Takahashi and Junji Shiokawa). (DocketAlarm docket; GreyB IPVerse)

2019-04-23 — Joint Motion to Terminate filed in the family (Paper 12 in the '394 case), authorized by the Board by email on 2019-04-22 — the same day the district court entered the dismissal. A true copy of the written settlement agreement was filed as Ex. 1022 with a § 317(b) / 37 C.F.R. § 42.74(c) request to keep it business-confidential.

2019-04-29 — Termination decisions issued in all five proceedings. The Board's reasoning in the instituted '394 case is the template:

"We have not yet decided the merits of this proceeding, and a final written decision has not been entered. However, even though this proceeding has moved beyond the preliminary stage, the Parties have shown adequately that termination of the proceeding is appropriate." … "This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a)."
— [IPR2019-00089, Termination Decision (Paper 15), 2019-04-29](https://www.docketalarm.com/cases/PTAB/IPR2019-00089/Inter_Partes_Review_of_U

In the news

What the press has reported about this case, summarized with links to the source articles.

I'll verify the listed articles and search for additional coverage.

Now let me check the other listed articles and search for additional coverage.

Let me check whether the IPWatchdog roundups actually discuss the BlackBerry–Maxell matter.

Press & Analysis Coverage

The settlement is the only genuinely case-specific coverage, and it is thin. The 2019 resolution of the Delaware action — and, with it, the mootness of IPR2019-00095 and its four sibling petitions — was reported by Seeking Alpha on 2019-04-22 in a three-sentence item crediting Bloomberg: "BlackBerry (NYSE:BB) and Maxell Holdings have settled a lawsuit where Maxell had accused Blackberry of infringing video patents," with the case described as having "involved seven patents related to smartphones' GPS and camera functions," and Maxell characterized as a serial licensor that "has sued a number of companies seeking patent royalties; it's squared off against ZTE, Huawei, BlackBerry and ASUS." No terms were reported, consistent with the § 317(b) confidential-treatment request filed with the Board on 2019-04-23. Two discrepancies with the record are worth flagging: the D. Del. complaint (No. 1:17-cv-01446) as summarized in the earlier sections asserted six patents (the '999, '616, '334, '394, '897 and '604), not seven; and the counterparty is Maxell, Ltd. — "Maxell Holdings, Ltd." was the disclosed parent at filing. Treat the "seven patents" figure as a reporter's rounding error or a reference to the broader portfolio rather than to the pleaded counts.

The PTAB proceeding itself drew essentially no press. I found no article — in Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, or the patent blogs — that discusses IPR2019-00095 by number, its panel, or its termination decision. The proceeding died quietly on 2019-04-29, six days after the district court dismissal, and because no institution decision issued on the '897 the case generated no merits holding for commentators to chew on. The listed IPWatchdog roundup of 2020-08-19 does discuss Maxell directly, but not this case: its "PTAB Skips Maxell IPRs" headline refers to the Board's Fintiv/NHK Spring discretionary denials of Apple's IPR2020-00407/408/409 against the '317, '498 and '999 patents, and it lists BlackBerry only as one of the defendants in Maxell's long-running campaign ("Maxell (Hitachi) has for years been launched a series of complaints over the years against companies like Fandango, Blackberry, BLU, CinemaNow, ASUSTek, Olympus, ZTE, and Hisense"). Two other listed items I must flag as not covering this case on the text I could retrieve: the Techrights piece of 2018-07-15 is about BT's suit against Fortinet and Sonos's patent monetization, with no mention of BlackBerry or Maxell; and the IPWatchdog roundups of 2020-07-23 and 2021-03-03, judging from their headlines and the surrounding series, concern Snap's joinder petitions and Neodron/Pineapple34/IV-patent activity rather than the Maxell matter — I could not verify any BlackBerry–Maxell discussion in either, and the July 2020 Snap item points to a different BlackBerry campaign (BlackBerry's messaging-patent suits against Snap and Facebook), which should not be conflated with this one.

Where the trade press does add value is on why Maxell mattered as a litigant. RPX framed the BlackBerry settlement as part of a burst: in a 2019-03-20 note it reported that "[o]n the heels of recent settlements with ASUSTek, Huawei, and ZTE, Maxell has sued Apple," and — directly relevant here — that Maxell's March 15, 2019 E.D. Tex. complaint accused Apple of infringing ten patents "including patents previously asserted by Maxell against ASUSTek, BlackBerry, Huawei, and/or ZTE," with several of those patents having been tried against ZTE. That is the clearest press confirmation that Maxell recycled the BlackBerry portfolio into later campaigns. IAM (republished via Lexology) similarly situated BlackBerry inside Maxell's licensing push — describing the former Hitachi unit as having "targeted companies including ZTE, Huawei and Blackberry as it seeks to expand its licensing programme" — and used Maxell's decision to sue Olympus in February 2019 as the occasion for analyzing Hitachi-lineage enforcement strategy. For scale, Law360's reporting, dated 2019-02-04 and reproduced by Mayer Brown, recorded Maxell's $43.3 million willful-infringement jury verdict against ZTE and the ensuing confidential settlement — the benchmark against which BlackBerry's own 2019 exit would have been priced.

Net assessment. The absence of coverage is itself informative: because BlackBerry filed on the § 315(b) last day, the Board never instituted on the '897, and the parties settled within roughly six months of service, there was no ruling, no estoppel, no Federal Circuit appeal, and no public license term — the four things that generate patent-press attention. The one substantive press claim to treat cautiously is the "seven patents related to smartphones' GPS and camera functions" line in the Bloomberg-derived Seeking Alpha item; the docket and the five IPR petitions support six asserted patents, and the '897 itself (Takahashi & Shiokawa, app. 12/124,229, TC 2100/Art Unit 2158) is a video/image-processing patent rather than a GPS one, which suggests the item generalized from Maxell's ZTE patents-in-suit — the mix of camera, power-management, audio-decoding and "walking location" patents Law360 described — rather than from the BlackBerry complaint.

Sources

Plaintiff representatives

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

I'll research counsel of record for the petitioner/plaintiff side — BlackBerry Corporation — in IPR2019-00095, and cross-check against the parallel Delaware litigation.

Let me pull the actual docket filings and the signature blocks.

Now let me confirm the power of attorney and back-up counsel details specific to the '095 proceeding.

Counsel of Record — Petitioner/Plaintiff Side

A caption caution first. IPR2019-00095 is a PTAB inter partes review, not a district court infringement action, so there is no "plaintiff" in the Rule 7.1 sense. BlackBerry Corporation is styled Petitioner; Maxell, Ltd. is Patent Owner (the Board's own captions sometimes show the patent's inventors, "Takahashi et al.," in the respondent field on aggregator sites such as GreyB/IPVerse). The plaintiff in the underlying infringement suit was Maxell, in Maxell Ltd. v. BlackBerry Corp., No. 1:17-cv-01446 (D. Del.), where BlackBerry was the defendant. Both sides' counsel are given below, because the two teams were entirely different firms — a point worth flagging.

A. PTAB counsel for BlackBerry Corporation (IPR2019-00095)

All of record through Oblon, McClelland, Maier & Neustadt, LLP, 1940 Duke Street, Alexandria, VA 22314 — a firm whose practice is essentially entirely PTAB/prosecution work, not general district court litigation.

Name Role Reg. No. Notes
W. Todd Baker Lead counsel (registered practitioner) 45,264 Named as lead in BlackBerry's power of attorney across the related Maxell IPR series; the Board's standing rule in these proceedings was that "Petitioner shall continue to have a registered practitioner represent it as lead counsel." Also the name IPVerse records as petitioner counsel for the '095.
Stephen McBride Back-up counsel only (pro hac vice) n/a (NY & VA bars; Fed. Cir.) Admitted pro hac vice by APJ McMillin on 2019-01-23 in IPR2019-00087, -00088, -00089, -00095, and -00097. His declaration states concurrent PHV requests in the same five proceedings and lists prior PHV appearances in IPR2016-01469, -01470, IPR2017-00251, -00253, -00254, -00255. Expressly limited to back-up role.
Marc Weinstein Back-up counsel not verified Listed in the "PETITIONER:" service block of the Board's 2019-01-23 order whose caption covers the '095.
Christopher Ricciuti Back-up counsel not verified Same source.
Ali H. Allawi Back-up counsel not verified Same source.
Michael D. West Back-up counsel not verified Same source.

On the registration numbers: I could verify Reg. No. 45,264 for Baker from BlackBerry's power of attorney in the companion IPR2019-00087 (same petitioner, same firm, same lead counsel, filed 2018-11-02), and McBride's PHV status from his own declaration and the Board's order. I could not verify individual registration numbers for Weinstein, Ricciuti, Allawi, or West — the power-of-attorney document I retrieved was partially truncated, and one number (76,996) appears in the table adjacent to the McBride entry without a clean name attribution. I am not assigning it to anyone. Anyone needing those numbers should pull the Paper 2/Paper 4 power of attorney from PTAB E2E in IPR2019-00095 directly.

B. What is not on the record

  • No in-house counsel of record. BlackBerry's PTAB filings were handled entirely by outside counsel; no BlackBerry legal-department attorney appears in the '095 service lists. (BlackBerry's then-VP and Deputy General Counsel–Litigation, Edward R. McGah, Jr., appears on BlackBerry's C.D. Cal. filings in the Facebook/Snap cases around 2020, but not in this IPR.)
  • No "local counsel" concept. The PTAB has no local-counsel requirement, so the Delaware-local role BlackBerry needed in D. Del. has no analogue here.
  • No counsel for Maxell on the petitioner side, obviously — but for completeness, Patent Owner Maxell was represented by Robert G. Pluta (Reg. No. 50,970) of Mayer Brown LLP, with a Mayer Brown service group (Beaber, Nese, Fussell, Bonner, Siddiqui) that also staffed Maxell's Delaware case. IPVerse records Pluta as respondent counsel for the '095. Note that Mayer Brown's Jamie Beaber is the attorney quoted in Law360 on the ZTE verdict discussed in the earlier press section.
  • Termination-phase signatories. Because the proceeding ended in settlement, the operative papers were joint motions to terminate under § 317(a) and a joint § 317(b) request to treat the agreement as business confidential. The settlement itself is sealed, so no counsel fees, licence terms, or dismissal conditions are public.

C. The district court team — a different firm entirely

For cross-reference, since a reader will otherwise assume the PTAB team mirrored the litigation team: in Maxell Ltd. v. BlackBerry Corp., No. 1:17-cv-01446 (D. Del.) (Judge Maryellen Noreika; case terminated 2019-04-22 on a with-prejudice stipulation of dismissal filed 2019-04-18), BlackBerry's appearances were:

  • Chad S. C. Stover and Regina A. Murphy — Delaware counsel filing the bulk of BlackBerry's papers (motion to dismiss, answer and counterclaims, protective order, discovery requests).
  • Pro hac vice admissions sought on BlackBerry's behalf: Jason W. Cook, Brian C. Riopelle, Shaun W. Hassett (motion filed 2018-01-03); Meghan M. Rachford (2018-01-29); George B. Davis, Kuan-Chieh Tu (2018-03-16).

I have not independently confirmed the firm affiliations for that group beyond what the docket entries show; the naming pattern is consistent with a McGuireWoods team plus a Delaware firm, but treat that as inference, not a documented fact. The structural point is solid regardless: Oblon ran the PTAB campaign while a separate litigation team ran the Delaware defense — a common split when a defendant wants registered-practitioner depth at the Board and trial counsel in court.

D. Reliability notes

Two things a reader should discount. First, my confirmations rest on Docket Alarm / Unified Patents / IPVerse captures of PTAB papers rather than a live PTAB E2E or PACER pull; the underlying documents (the Board's 2019-01-23 PHV order, McBride's declaration, and BlackBerry's power of attorney) are genuine filed papers, but the aggregator renderings are what I could actually read. Second, there is an easy trap here: Christopher T. L. Douglas appears as "Lead Counsel for Petitioners" in a similarly captioned Maxell IPR from the same period (IPR2019-00068, a joint motion to terminate signed 2019-04-11, with Maxell served through Mayer Brown). Douglas is not BlackBerry's counsel and has no role in IPR2019-00095; that proceeding involved a different petitioner group. Do not carry him into this case's counsel table.

Defendant representatives

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

I'll research counsel appearances in both the underlying Delaware infringement action and the PTAB proceeding.

Good foundation. Now let me pin down BlackBerry's IPR-side counsel and its Delaware local counsel.

Now let me pull the actual IPR2019-00095 filings to confirm the counsel designations of record in this proceeding.

Counsel of Record — BlackBerry Corp. v. Maxell, Ltd. (IPR2019-00095) and the Underlying D. Del. Action

Framing note / metadata flag. The case metadata for this docket lists Plaintiff: BlackBerry Corporation and Defendant: Maxell, Ltd., which mirrors the PTAB caption (petitioner v. patent owner). That is the inverse of the infringement case: in the underlying action, Maxell, Ltd. v. BlackBerry Corp. and BlackBerry Ltd., No. 1:17‑cv‑01446‑MN (D. Del.), Maxell was the plaintiff and BlackBerry the defendant. Because the request asks for defense-side counsel in "this patent infringement case," I set out both sides below: (A) BlackBerry's defense team in Delaware plus its PTAB team in this IPR; and (B) Maxell's team, since Maxell is the party the metadata labels "Defendant." Nothing in the record suggests any filing was sealed as to counsel identity — the confidentiality in this case attaches to the § 317(b) settlement agreement, not to appearances.


A. BlackBerry Corporation / BlackBerry Ltd. — defendants in the infringement action, petitioners here

1. Chad S.C. Stover — Delaware local counsel (defense).
Barnes & Thornburg LLP, Wilmington, DE (1000 N. West Street, Suite 1500, in the 2019 filings; the firm's Wilmington office is now listed at 222 Delaware Avenue, Suite 1200). Delaware Bar No. 4919; registered patent attorney. He is the signatory for BlackBerry on the joint stipulation of dismissal that ended the Delaware case (Dkt. 48, dated Apr. 18, 2019); he also appears as BlackBerry's Delaware counsel on Maxell's February 2019 service list for infringement contentions (Dkt. 47). Experience note: career Delaware IP litigator (U. Del. B.M.E.; UNC J.D. 2003), frequent first-chair in D. Del.; obtained early summary judgment for a defendant in S.D.N.Y. patent case against ACCO Brands and defended it on appeal, and is repeatedly recognized in Best Lawyers for Patent Litigation.

2. Regina S.E. ("Gigi") Murphy — Delaware local counsel.
Barnes & Thornburg LLP, Wilmington, DE. Delaware Bar No. 5648. Listed alongside Stover as BlackBerry's Delaware counsel on the April 18, 2019 stipulation of dismissal (Dkt. 48).

3. Jason W. Cook — lead trial counsel (national), McGuireWoods LLP, Dallas, TX.
McGuireWoods LLP, 2000 McKinney Avenue, Suite 1400, Dallas, TX. He was the first-named McGuireWoods attorney on Maxell's service list as counsel for BlackBerry and was admitted pro hac vice in the Delaware case (pro hac vice motion filed on behalf of BlackBerry Corp. and BlackBerry Ltd. per the Unified Patents docket for 1:17‑cv‑01446). Experience note: Texas-based IP trial lawyer; McGuireWoods was BlackBerry's outside litigation firm nationally in this period.

4. Brian C. Riopelle — McGuireWoods LLP, Richmond, VA.
McGuireWoods LLP, Gateway Plaza, 800 East Canal Street, Richmond, VA. Named on BlackBerry's counsel service list and admitted pro hac vice. Experience note: long-time McGuireWoods IP litigation partner and a frequent author on patent damages and SEP issues.

5. Shaun W. Hassett and Kuan‑Chieh Tu — McGuireWoods LLP, Dallas, TX.
Both listed on BlackBerry's counsel service list (Hassett with a Dallas contact; Tu likewise) and both were the subject of BlackBerry's pro hac vice motions in D. Del. Experience note: associates/partners on McGuireWoods' patent trial team supporting the BlackBerry account; individual bios are thin in public sources.

6. George B. Davis — McGuireWoods LLP, Richmond, VA; Meghan M. Rachford — McGuireWoods LLP, Atlanta, GA.
Both appeared for BlackBerry via pro hac vice motions in the Delaware action (Unified Patents docket). Davis is a senior McGuireWoods IP litigation partner (former federal prosecutor); Rachford is an IP litigation partner in the Atlanta office.

7. W. Todd Baker — lead counsel for BlackBerry before the PTAB in this IPR family.
Oblon, McClelland, Maier & Neustadt, LLP, 1940 Duke Street, Alexandria, VA 22314 (Reg. No. 45,264). He is identified as Petitioner's lead counsel in the BlackBerry–Maxell petitions, and his name appears as lead counsel in the Board's order granting Stephen McBride pro hac vice admission in IPR2019‑00087/88/89/95/97 (Paper 9, Jan. 23, 2019) — the order that expressly covers this proceeding. GreyB/IPVerse independently lists "Todd Baker" as petitioner counsel for IPR2019‑00095 (IPVerse). Experience note: 25+ year PTAB/post-grant specialist (IPR, PGR, reexam), later a partner at Kirkland & Ellis in Washington, D.C., and an AIPLA officer.

8. Marc Weinstein, Christopher Ricciuti, Ali H. Allawi, Michael D. West — Oblon back-up counsel for BlackBerry in this IPR group.
Oblon, McClelland, Maier & Neustadt, LLP, Alexandria, VA. All four are on the consolidated service list in the Board's January 23, 2019 pro hac vice order covering IPR2019‑00095. Experience note: Oblon's PTAB team handling the parallel Maxell challenges; Weinstein is also named back-up counsel in Maxell's own power-of-attorney service certificate in the sibling IPR2019‑00087, confirming he was the counterpart contact for BlackBerry in this family.

9. Stephen McBride — back-up counsel only, admitted pro hac vice.
Admitted pro hac vice in IPR2019‑00095 (and its four siblings) by Paper 9 on January 23, 2019, expressly "back-up counsel only," with the Board ordering that BlackBerry "continue to have a registered practitioner represent it as lead counsel." Caveat: I could not confirm McBride's firm affiliation from the order text retrieved; the public snippets confirm the admission, not his letterhead.


B. Maxell, Ltd. — the party designated "Defendant" in the case metadata (patent owner/respondent here; plaintiff below)

10. Robert G. Pluta — Patent Owner's lead counsel in the PTAB.
Mayer Brown LLP, 71 S. Wacker Drive, Chicago, IL 60606 (Reg. No. 50,970). GreyB/IPVerse lists Pluta as the respondent/patent-owner counsel for IPR2019‑00095 (IPVerse); Maxell's power of attorney in the sibling BlackBerry petition appointed "Practitioner(s) at Mayer Brown LLP associated with Customer Number 26565" firm-wide rather than naming individuals (Maxell POA, IPR2019‑00087, Nov. 2, 2018). Caveat: Pluta's individual designation for the '897 docket specifically comes from a secondary database plus his consistent later role as Maxell's lead PTAB counsel (e.g., the 2022–23 Motorola/Maxell IPRs), not from an '897-specific paper I was able to retrieve.

11. Amanda S. Bonner — back-up counsel (Chicago) for Maxell in the PTAB.
Mayer Brown LLP, Chicago (Reg. No. 65,224).

12. James A. Fussell III, Bryan C. Nese, and Saqib J. Siddiqui — back-up counsel (Washington, D.C.) for Maxell in the PTAB.
Mayer Brown LLP, 1999 K Street NW, Washington, DC (Reg. Nos. 54,885; 66,023; 68,626 respectively). This lead/back-up structure is recited in Maxell's updated § 42.8(b)(3) designations in the later Maxell PTAB matters (example, IPR2022‑01348 mandatory notices).

13. Jamie B. Beaber — lead infringement counsel for Maxell in D. Del. (Mayer Brown, Washington, DC).
Mayer Brown LLP, 1999 K Street NW, Washington, DC. Named first among Maxell's "OF COUNSEL" in the Delaware case (Dkt. 47). Experience note: the architect of Maxell's U.S. monetization campaign; tried the ZTE case to a $43.3M willfulness verdict in Texas (Law360, Feb. 4, 2019) and is quoted on that verdict in later Maxell coverage.

14. Kfir B. Levy, Tiffany A. Miller, Baldine B. Paul, William J. Barrow, Michael L. Lindinger, and Alison T. Gelsleichter — Maxell of counsel, Mayer Brown LLP, Washington, DC.
All listed on the Delaware service list (Dkt. 47); Levy, Miller, Paul and Gelsleichter each entered pro hac vice in D. Del. per the Unified Patents docket.

15. Timothy Devlin (No. 4241) and James Gorman (No. 6284) — Maxell's Delaware local counsel.
Devlin Law Firm LLC, 1306 Broom Street, 1st Floor, Wilmington, DE 19806. They entered as substitute Delaware counsel on April 2, 2018, replacing Benjamin J. Schladweiler of Phillips Goldman & Spence (Unified Patents docket); both are on the April 18, 2019 stipulation of dismissal.


Sourcing gaps and cautions

  • No in-house counsel for either party appears in the docket material I could retrieve; BlackBerry's corporate representative signed PTAB powers of attorney in later matters (e.g., Keith Bennett as "Authorized Signing Officer," and a "Senior Director, Legal Counsel" on the 2020 BlackBerry revocation), but I found no in-house attorney of record in IPR2019‑00095 or in D. Del. 1:17‑cv‑01446.
  • Nothing is sealed as to counsel. The only sealed/confidential item is the settlement agreement, filed "Board and Parties Only" under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) with the April 2019 joint motions.
  • Address discrepancies. The Barnes & Thornburg Wilmington suite number differs between the 2019 filings (1000 N. West Street, Suite 1500) and current firm listings (222 Delaware Avenue, Suite 1200) — the firm moved offices; Stover is the same attorney throughout.
  • Unverified items are flagged above: McBride's firm, and the