Litigation

BlackBerry Limited v. Facebook et al.

related; consolidated for pretrial purposes; on appeal

2:18-cv-01844-GW-KS

Patents at issue (1)

8326327

Plaintiffs (1)

Summary

Related action by BlackBerry against Facebook, WhatsApp, and Instagram, consolidated for pretrial purposes with BlackBerry v. Snap. The narrative lists Federal Circuit appeal 2020-1256 as arising from this consolidated action. The narrative does not fully identify the patents asserted in this case.

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 against the docket record, court opinions, and trade press.

Case overview and background

The parties. Plaintiff BlackBerry Limited is a Canadian corporation (Waterloo, Ontario) — an operating company that once dominated smartphones and, after exiting the handset business, repositioned itself as a cybersecurity/embedded-software vendor that monetizes a portfolio of roughly 40,000+ patents through an internal "IP & Licensing" group. That makes this an operating-company assertion rather than a classic PAE/NPE suit, though defendants framed it the other way: Facebook Deputy GC Paul Grewal's on-the-record response was that "BlackBerry's suit sadly reflects the current state of its messaging business… BlackBerry is now looking to tax the innovation of others" (Reuters, Mar. 6, 2018; CBC). Defendants are Facebook, Inc., WhatsApp Inc., and Instagram, LLC (the "Facebook Defendants"), each a Delaware entity. BlackBerry is represented by Quinn Emanuel (Sanford Weisburst, James Asperger, Pushkal Mishra, Patrick Schmidt); the Facebook Defendants by Cooley (Heidi Keefe, Matthew Brigham, Mark Weinstein, Dena Chen, with Elizabeth Prelogar on appeal).

The accused technology. The March 6, 2018 complaint (Dkt. 1, a 117-page filing) and the operative First Amended Complaint (Dkt. 15, Apr. 4, 2018) accused the Facebook, Messenger, Messenger Lite, Workplace Chat, Pages Manager, WhatsApp, and Instagram apps and their back-end/advertising platforms of "co-opt[ing] BlackBerry's innovations" in security, user interface, and messaging functionality — characterized as "latecomers to the mobile messaging world" (CBC). BlackBerry sought injunctive relief and damages, demanded a jury, and stressed the scale of the accused services (the complaint notes Facebook's ~$19B WhatsApp and ~$1B Instagram acquisitions). Note the difference from the Snap branch: the Snap case targeted Snap Map (location sharing) and unread-message badges.

The patents. This is where the metadata and the docket diverge, so I'll be explicit. The metadata lists U.S. Patent No. 8,326,327 as the patent at issue. The '327 patent ("System and Method for Determining Action Spot Locations Relative to the Location of a Mobile Device," issued Dec. 4, 2012) claims a mobile device that displays a GUI marking nearby "action spots" — locations where other devices recently captured photos/videos or sent messages — with an indication of activity level (e.g., color coding); it is the Snap Map patent. Per the docket, the '327 patent was asserted against Snap, Inc. in the consolidated companion case, 2:18-cv-02693-GW-KS, not against the Facebook Defendants (see Judge Wu's Oct. 1, 2019 order discussing '327 claims 1, 2, 3, 9, and '084 claims 1, 2, 6). The two actions were consolidated for pretrial purposes on Sept. 27, 2018 (Dkt. 92), and the Federal Circuit appeals were consolidated (2020-1256 lead / 2020-1258 member), which is why the existing narrative ties 2020-1256 to the consolidated action. For the Facebook case proper, the Oct. 1, 2019 order states BlackBerry asserted nine patents; the ones I could verify from the record and contemporaneous reporting are: 7,372,961 (secure key generation — hash-then-reject-sampling to derive an unbiased DSA private key k mod q, accused via the OpenSSL library used in encrypted messaging); 8,209,634 ("Previewing a new event on a small screen device" — notification badges on app icons); 8,301,713 (providing time data/timestamps in a messaging environment); 8,296,351 and 8,676,929 (both "System and method for pushing information to a mobile device" — location/feedback-signal-driven targeted ad push, and time-triggered ad insertion using meta tags); 8,677,250 (switching between an IM conversation and a game in progress using the IM contact list); 8,279,173 ("User Interface for Selecting a Photo Tag" — a tag list with per-tag "tag type indicator"); and 9,349,120 (silencing notifications for a selected message thread). I could not verify the identity of the ninth patent from the sources retrieved, and I am not aware of a reliable public list — treat that one as unsourced.

Procedural posture and why the venue matters. Filed in the U.S. District Court for the Central District of California, Western Division (Los Angeles), before Judge George H. Wu (Ctrm 9D), with Magistrate Judge Karen L. Stevenson on discovery; C.D. Cal. was a natural forum given BlackBerry's U.S. presence in Irvine, California and the defendants' extensive California user base and operations, though I have not verified the complaint's specific venue allegations. The case proceeded on a fast track: claim construction (Corrected Final Ruling, Apr. 5, 2019), then cross-motions for summary judgment heard Sept. 5, 2019. On Oct. 1, 2019, Judge Wu issued a sealed § 101 order (Dkt. 468; amended/public version at Dkt. 487) that **invalidated the

Key legal developments & outcome

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

I'll research the docket, opinions, appeal, and PTAB records for this case.

Good initial hits. Now let me dig into the pre-trial motion outcomes, the §101 ruling, and the PTAB proceedings.

Now let me pin down the motion-to-dismiss ruling, the February 2020 summary-judgment/stay rulings, and the PTAB appeal outcomes.

Plaintiff representatives

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

I'll verify and expand the plaintiff-side roster against docket records, firm bios, and press coverage.

Counsel of record for Plaintiff BlackBerry Limited — BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-01844-GW-KS (C.D. Cal.)

Bottom line: BlackBerry was represented throughout by Quinn Emanuel Urquhart & Sullivan, LLP out of its Los Angeles office (865 S. Figueroa St., 10th Floor), with support from its Redwood Shores, New York, San Francisco, and Washington, D.C. offices, plus BlackBerry in-house counsel Edward R. McGah, Jr. No separate "local counsel" firm was used — Quinn Emanuel's L.A. partners served that function, and its California-barred partners signed the filings.

Trial-level team (C.D. Cal.)

Attorney Role Firm / office Note
James R. Asperger (Bar No. 83188) Lead trial counsel / attorney of record — the ECF filer and signatory on the great majority of BlackBerry's substantive filings (e.g., Dkt. 79, 116, 456, 457, 671, 677, 679, 681) Quinn Emanuel, Los Angeles QE partner; the face of BlackBerry's C.D. Cal. patent campaign in this case, the consolidated Snap case (2:18-cv-02693), and the Twitter case (2:19-cv-01444). Also listed on the Federal Circuit appearance in No. 20-1256.
Kevin P.B. Johnson (Bar No. 177129) Senior trial counsel Quinn Emanuel, Redwood Shores QE partner and one of the firm's best-known technology patent trial lawyers; listed in every BlackBerry signature block in this case and on the 20-1256 appeal.
Victoria F. Maroulis (Bar No. 202603) Trial team Quinn Emanuel, Redwood Shores Appears in BlackBerry's signature blocks in this docket (e.g., Dkt. 116, 550, 671) and on the appeal.
Ray R. Zado (Bar No. 208501) Trial team Quinn Emanuel, Redwood Shores Same signature blocks; listed in the Oct. 1, 2019 § 101 opinion's counsel roster (487 F. Supp. 3d 870).
Patrick T. Schmidt (Bar No. 274777) Trial team; signed the Feb. 13, 2021 stipulated dismissal (Dkt. 681) Quinn Emanuel, Los Angeles Handled much of the claim construction and summary judgment briefing; also on the 20-1256 Federal Circuit roster.
Pushkal Mishra (Bar No. 298695) Trial team Quinn Emanuel, Los Angeles Named in Judge Wu's Oct. 1, 2019 opinion counsel list and on the Federal Circuit roster.
Sanford Ian Weisburst Appellate lead — argued for BlackBerry in the Federal Circuit (No. 20-1256, argued fall 2020; judgment Dec. 10, 2020) Quinn Emanuel, New York QE partner; per the Fed. Cir. judgment caption, "SANFORD IAN WEISBURST … argued for plaintiff-appellant." Also Quinn Emanuel's lead/back-up PTAB counsel for BlackBerry in the parallel IPRs.
Jordan R. Jaffe (Bar No. 254886) Of counsel / trial support Quinn Emanuel, Los Angeles Listed on the PACER Monitor attorney roster for this case number and in BlackBerry signature blocks across the related matters.
Iman Lordgooei (Bar No. 251320) Of counsel / trial support Quinn Emanuel, Los Angeles Appears in the Oct. 1, 2019 opinion's counsel list and in BlackBerry filings in the related N.D. Cal. action.
Jeffrey William Nardinelli Appellate Quinn Emanuel, San Francisco Listed "also represented by … JEFFREY NARDINELLI, San Francisco" in the Federal Circuit judgment.
Kristen Bird (Bar No. 192863) Of counsel (case team) Quinn Emanuel, Los Angeles Named in the Oct. 1, 2019 opinion's counsel list. Caveat: her published bio is commercial/antitrust/structured-finance litigation, not patent-first — I found no filing in this docket signed by her, so treat her as a supporting team member rather than a patent brief-writer.
Scott L. Watson Of counsel (case team) Quinn Emanuel, Los Angeles Also named in the Oct. 1, 2019 opinion's counsel list; no independent confirmation of a substantive role in the patent briefing.
Edward R. McGah, Jr. (SBN 97719) In-house counsel — "Vice President, Deputy General Counsel – Litigation," BlackBerry Corporation, 41 Ticknor Place, Laguna Niguel, CA BlackBerry (client entity) Not a firm lawyer but listed on the signature block of essentially every BlackBerry filing in this docket as "Attorneys for BlackBerry Limited."

Uncertain / flagged items

  • "Miles D. Freeman, Federal Trade Commission, Los Angeles" appears in the counsel listing printed at the head of the Oct. 1, 2019 opinion (487 F. Supp. 3d 870) as reproduced by Casetext/Vlex. I could not verify who he represented or whether he had any role in this case — the string looks like an artifact of the aggregator's counsel parsing. Do not treat as BlackBerry counsel without confirmation.
  • Yury Kapgan (Bar No. 218366) and Jonathan Tse (Bar No. 305468) appear on Quinn Emanuel signature blocks for BlackBerry in the related N.D. Cal. action, Facebook, Inc. v. BlackBerry Ltd., No. 4:18-cv-05434-JSW (where BlackBerry was the defendant). I did not find them on filings in 2:18-cv-01844 — do not list them as counsel of record here.
  • Pro hac vice: I saw no PHV orders in the retrieved material. That is unsurprising — Asperger, Johnson, Maroulis, Zado, Schmidt, Mishra, Jaffe, Lordgooei and Bird all hold California bar numbers, so PHV was largely unnecessary. Any PHV applications that were filed are not documented in the sources I could reach.
  • Nothing was sealed as to counsel identity. The docket entries I cite (Dkt. 79, 116, 456, 457, 550, 671, 677, 679, 681) are public and carry the signature blocks quoted above. Sealing in this case went to the § 101 order (Dkt. 468, later amended/public at Dkt. 487) and exhibits, not appearances.

Adjacent rosters (do not conflate with trial counsel of record)

  • PTAB / IPR counsel for BlackBerry in the parallel Facebook, Inc. v. BlackBerry Ltd. IPRs (e.g., IPR2019-00516, -00528): James M. Glass (lead, New York), with Sam Stake, Ogi Zivojnovic, and John McKee as back-up. These are the § 42.8 mandatory-notice designations; Glass and Stake were not the C.D. Cal. trial signatories.
  • Federal Circuit roster in No. 20-1256 (per the Dec. 10, 2020 judgment): Weisburst (argued), plus Asperger, Mishra, Schmidt (L.A.), Kevin P.B. Johnson (Redwood Shores), Jeffrey Nardinelli (S.F.), and Richard A. Lowry (Washington, D.C.). Lowry appears in the judgment caption as part of BlackBerry's appellate team; I did not independently confirm his firm affiliation from a QE source, so treat that attribution as unverified.
  • For completeness, defendants' appellate counsel included Elizabeth Prelogar (then Cooley, Washington, D.C.) — noted only to avoid the common confusion with BlackBerry's team.

Cross-reference flag for the earlier sections

The case metadata's single listed patent, U.S. 8,326,327, is the Snap Map patent asserted against Snap in 2:18-cv-02693, not against the Facebook Defendants. The public record resolves the "ninth patent" gap left in the earlier draft: the original complaint (Dkt. 1, ¶ 13) asserted seven patents — 7,372,961; 8,279,173; 8,209,634; 8,301,713; 8,429,236; 8,677,250; 9,349,120 — and the First Amended Complaint (Dkt. 15, ¶ 14) added 8,296,351 and 8,676,929, bringing it to the nine patents Judge Wu references. The previously unidentified ninth patent is therefore 8,429,236 (the patent on which the court later granted summary judgment of invalidity, Dkt. 673, which BlackBerry moved to vacate in aid of the global settlement, Dkt. 677, with dismissal following at Dkt. 681).

Defendant representatives

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

I'll verify the defense roster against docket records, opinions, and firm sources.

Now let me verify the full Cooley roster and any in-house or additional counsel, plus appellate counsel.

Bottom line

The Facebook Defendants (Facebook, Inc., WhatsApp Inc., Instagram, LLC — plus the originally-named Instagram, Inc.) were represented exclusively by Cooley LLP, which staffed the case out of Palo Alto with California-bar partners in San Francisco and Santa Monica filling the "local counsel" function. No separate local-counsel firm appears anywhere in the record — unlike the Snap branch, where Snap used Paul Hastings (Yar Chaikovsky, Palo Alto; Thomas Zaccaro, Los Angeles) with Fitzgerald Knaier (Kenneth Fitzgerald, San Diego) as local counsel. Cooley's Palo Alto team was also simultaneously representing Facebook/WhatsApp as plaintiff against BlackBerry in the N.D. Cal. mirror action, Facebook, Inc. v. BlackBerry Ltd., No. 4:18-cv-05434-JSW (N.D. Cal.) (Dkt. 5, Cooley signature block).

Counsel of record — U.S. District Court (C.D. Cal. No. 2:18-cv-01844-GW-KS)

Attorney Role Firm / office Cal. Bar / note
Heidi L. Keefe Lead counsel (trial and appeal); the ECF filer/attesting attorney on virtually every Facebook Defendants' filing; argued Fed. Cir. No. 2020-1256 Cooley LLP, 3175 Hanover St., Palo Alto (also Cooley Washington, DC address used in PTAB) Bar No. 178960. Co-chair of Cooley's IP litigation group and Facebook/Meta's lead outside patent trial counsel; argued the § 101 appeal (Fed. Cir. op., 20-1256)
Matthew J. Brigham Core trial-team partner; first attorney to appear for the Facebook Defendants (stipulation, Dkt. 24, Apr. 23, 2018); handled discovery/declaration practice and claim-construction and MSJ briefing Cooley LLP, Palo Alto Bar No. 191428. Listed on the 2020-1256 Federal Circuit brief
Mark R. Weinstein Core trial/PTAB partner; presented at the PTAB oral hearing in Facebook v. BlackBerry, IPR2019-00940 ('929 patent) as "lead counsel" with Keefe Cooley LLP, Palo Alto / Washington, DC Bar No. 193043. Heavy PTAB practice; later appears in Cooley IPR teams (e.g., Nintendo, IPR2024-00668)
Michael G. Rhodes California-bar counsel of record in the caption; supplies the C.D. Cal./N.D. Cal. admission for the team (the functional "local counsel" role, in-house at Cooley) Cooley LLP, 101 California St., 5th Fl., San Francisco Bar No. 116127. Listed in every Facebook Defendants' signature block (e.g., Dkt. 667)
Dena Chen Partner; counsel of record (declared as such, Dkt. 353-1, Aug. 26, 2019); SJ sur-reply, deposition/letter-rogatory work; on the Federal Circuit brief Cooley LLP, Palo Alto Now a Cooley trial/appellate partner (former Alsup clerk); no bar no. verified
Lowell D. Mead Partner of record on the early pleadings/stipulations and the 2018 filings Cooley LLP, Palo Alto Bar No. 223989
Randall R. Lee Of counsel/trial team; named in the published opinion caption Cooley LLP, Santa Monica Longtime patent trial lawyer; named as Facebook Defendants' counsel in the 487 F. Supp. 3d caption
Andrew Mace Associate/attorney of record named in the published opinion caption Cooley LLP (Palo Alto) Role detail not independently verified
Elizabeth Lee Stameshkin Associate/attorney of record named in the published opinion caption Cooley LLP (Palo Alto) Role detail not independently verified
Phillip E. Morton Admitted pro hac vice; named in the published opinion caption Cooley LLP, Washington, DC Pro hac vice designation appears in the 487 F. Supp. 3d reporter caption

Sources for the roster: the consolidated caption in BlackBerry Ltd. v. Facebook, Inc., 487 F. Supp. 3d 870 (C.D. Cal. 2019) (vLex; Casetext; FindLaw) lists "Heidi Lyn Keefe, Lowell D. Mead, Mark R. Weinstein, Andrew Mace, Dena Chen, Elizabeth Lee Stameshkin, Matthew J. Brigham, Cooley LLP, … Michael G. Rhodes, Cooley LLP, San Francisco, CA, Phillip E. Morton, Pro Hac Vice, Cooley LLP, Washington, DC, Randall R. Lee, Cooley LLP, Santa Monica, CA, for Facebook, Inc., WhatsApp Inc., Instagram, LLC"; and the signature blocks at Dkt. 24, Dkt. 170, and Dkt. 667.

Appellate counsel — Fed. Cir. No. 2020-1256 (consolidated with 2020-1258)

  • Heidi Lyn Keefe (Cooley, Palo Alto) — argued for the appellees.
  • Also on the brief: Matthew J. Brigham, Dena Chen, Mark R. Weinstein (Cooley) and Elizabeth B. Prelogar (Cooley, Washington, DC), listed in the opinion as "ELIZABETH PRELOGAR, Washington, DC" (Justia; CourtListener).
  • Prelogar was then a Cooley appellate partner (joined 2020; led Cooley's Supreme Court/appellate practice; later 48th U.S. Solicitor General, 2021–2025, and rejoined Cooley). Her appearance for Meta in this matter is corroborated by Cooley's fee declaration in the N.D. Cal. WhatsApp/NSO litigation (Dkt. 816-3).
  • The Federal Circuit docket shows Keefe filing the appellees' response to BlackBerry's extension motion (ECF No. 16, Jan. 22, 2020) (Fed. Cir. docket 20-1256).

In-house counsel

  • Nikki K. Vo and Christen M. R. Dubois, Facebook, Inc. (1 Hacker Way, Menlo Park) — appeared of record in the PTAB as petitioner's counsel alongside Cooley in Facebook, Inc., Instagram, LLC & WhatsApp Inc. v. BlackBerry Ltd., IPR2019-00940, and attended the Sept. 3, 2020 oral hearing (hearing transcript). I did not find them on the C.D. Cal. appearance docket; treat their district-court in-house participation as unverified.

Two corrections / cross-references to earlier sections

  1. "Chad Peterman" was not Facebook counsel. The earlier section noted a "declaration of Chad Peterman" in the April 16, 2019 motion-to-stay papers; that was a joint Facebook + Snap motion, and Peterman is a Paul Hastings partner in New York representing Snap Inc. (he also appeared for Snap at the Aug. 23, 2019 discovery conference before Mag. J. Stevenson, Dkt. 348). Don't attribute him to the Facebook Defendants.
  2. The unidentified "ninth patent" in the Facebook case is U.S. 8,429,236 ("message transmission mode"/WhatsApp-specific). Judge Wu's April 1, 2019 tentative claim-construction ruling enumerates the nine: the four asserted against all defendants ('713, '351, '929, '634) plus the five Facebook-only patents ('120, '250, '173, '961, and '236) ([Dkt. 152 at 3](https://www.docketalarm.com/cases/PTAB/IPR2019-00923/Facebook_Inc._v._BlackBerry_Limited/docs/04-03-2019-Petitioner/Exhibit-1035-Tentative_Ruling_on_Claim_