Litigation

BlackBerry Ltd. v. Facebook Inc.

dismissed

2021-1377

Filed
2020-12-03
Terminated
2021-02-26

Patents at issue (1)

8209634

Plaintiffs (1)

Defendants (1)

Summary

Appeal from the PTAB Final Written Decision in IPR2019-00925. Docketed Dec. 3, 2020; dismissed on BlackBerry's motion under FRAP 42(b), with mandate issued Feb. 26, 2021.

Case overview & background

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

I'll research the underlying district court case, the asserted patents, the PTAB proceedings, and the Federal Circuit appeal to build this overview.

Let me verify the specific patent, the district court details, and the settlement/appeal outcomes.

Let me verify the parallel litigation, the Federal Circuit § 101 affirmance, the settlement date, and the full patent list.

Key legal developments & outcome

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

I'll research the docket, PTAB proceedings, and disposition before laying out the chronology.

Good foundation. Now let me pin down the district court docket chronology and the PTAB side.

Plaintiff representatives

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

I'll research the docket and counsel for this Federal Circuit appeal.

Let me confirm the Federal Circuit docket entries and attorney details.

Counsel of Record for the Plaintiff-Appellant, BlackBerry Limited — Fed. Cir. No. 2021-1377

Bottom line: The Federal Circuit docket for this appeal reflects only two attorneys of record for BlackBerry (the appellant/plaintiff below), both at Fish & Richardson P.C. No local counsel, no separate in-house appearance, and no Quinn Emanuel appearance was docketed at the Federal Circuit before the appeal was dismissed 85 days after docketing. The appeal never reached briefing, so no merits brief signature blocks exist to cross-check.

Attorneys of record

Attorney Role Firm / Office Notable experience
Robert ("Rob") Courtney Lead appellate counsel of record; first-listed on the entry of appearance; filed BlackBerry's Certificate of Interest, Docketing Statement, and the FRAP 42(b) motion to dismiss Fish & Richardson P.C., Minneapolis, MN (3200 RBC Plaza, 60 South Sixth St.); also listed at Fish's Washington, DC office in some directories; admitted CA Bar No. 248392 Career Federal Circuit specialist — 50+ appeals; former law clerk to Chief Judge Sharon Prost and Judge Raymond Clevenger III; successfully obtained reversal of an IPR unpatentability holding in Cutsforth, Inc. v. MotivePower, Inc. (Fed. Cir. 2015) and reinstatement of enhanced damages in SRI Int'l v. Cisco Systems (Fed. Cir. 2020)
Michael T. Hawkins Co-counsel of record; also BlackBerry's lead PTAB counsel in IPR2019-00925 below Fish & Richardson P.C., Minneapolis, MN (3200 RBC Plaza, 60 South Sixth St.); USPTO Reg. No. 57,867 PTAB and Federal Circuit patent practitioner; signed BlackBerry's Notice of Appeal from the Final Written Decision (Dec. 3, 2020) and argued/attended the PTAB oral hearing in this IPR alongside Craig Deutsch

Docket grounding

  • Entry of appearance for Robert Courtney and Michael T. Hawkins as counsel for Appellant BlackBerry Limited, served and filed Dec. 22, 2020 (ECF No. 744759, 21-1377), filed by Robert Courtney — this is the controlling appearance for the plaintiff.
  • Certificate of Interest (ECF 744762) and Docketing Statement (ECF 744763), both filed Dec. 22, 2020 by Courtney.
  • Motion of Appellant BlackBerry Limited to voluntarily dismiss appeal pursuant to FRAP 42(b) (ECF 757434), filed Feb. 19, 2021 by Robert Courtney; order granting the motion and issuing mandate, Feb. 26, 2021 (ECF 758866).
  • Docketing notice: "[741054] Entry of Appearance is due 12/22/2020… [KMH] [Entered: 12/08/2020]" — docketed Dec. 8, 2020 on a Dec. 3, 2020 filing.

Sources: Unified Patents Federal Circuit litigation portal for No. 2021-1377 (docket text quoted above), https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/2021-1377; UniCourt docket summary for 21-1377 (listing "Appellant Attorney: Michael Timothy Hawkins"), https://unicourt.com/case/pc-ap1-blackberry-limited-v-facebook-inc-91850; Fish & Richardson attorney bio for Rob Courtney, https://www.fr.com/team/rob-courtney/.

Related counsel who did not appear at the Federal Circuit (useful context, not counsel of record here)

  • Fish & Richardson PTAB team below (served with papers as "counsel of record" for Patent Owner in IPR2019-00925): Michael T. Hawkins, Kim Leung, Nicholas Stephens, Kenneth W. Darby, and Craig A. Deutsch — per Petitioner's certificate of service in IPR2019-00925 (Nov. 4, 2019), https://www.docketalarm.com/cases/PTAB/IPR2019-00925/Inter_Partes_Review_of_U.S._Pat._8209634/. Hawkins and Deutsch appeared at the July 16, 2020 oral hearing (Paper 37 Hearing Transcript).
  • Quinn Emanuel served as BlackBerry's district court trial counsel in C.D. Cal. No. 2:18-cv-01844 (James R. Asperger, Kevin P.B. Johnson, Victoria F. Maroulis, Patrick T. Schmidt, Sanford Weisburst, Jordan Jaffe) and was also copied on PTAB service (James M. Glass, Ogi Zivojnovic, qe-blackberry-ipr@quinnemanuel.com). None of them entered an appearance in No. 2021-1377.
  • In-house: Edward R. McGah, Jr., VP & Deputy General Counsel–Litigation, BlackBerry Corporation (Laguna Niguel, CA), signed district court filings; Luke Stafford and Ned Siegel (BlackBerry in-house) attended the PTAB hearing. None is on the Federal Circuit docket.
  • Appellees' counsel (for completeness): Heidi L. Keefe, Mark R. Weinstein, and Andrew C. Mace of Cooley LLP — who filed a letter on Feb. 19, 2021 stating the Facebook appellees were "Not Participating in the Appeal."

Caveats

  • The Federal Circuit docket in this matter is unusually thin because the appeal was voluntarily dismissed before any brief was filed; there is no joint appendix, no merits brief, and no oral argument, so the two appearances above are the entire universe of plaintiff-side counsel of record. I found no later-filed amended entry of appearance, and no withdrawal.
  • Federal Circuit practice does not require local counsel, and none was designated — so no "local counsel" entry exists for the plaintiff.
  • I could not access the Federal Circuit's PACER docket directly to confirm the complete entry-by-entry list; the docket details above are drawn from the Unified Patents docket mirror and UniCourt, which agree with each other. Fee-paid PACER review would be the confirmatory step if a filing-grade citation is needed.

Defendant representatives

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

I'll verify the appellee-side appearances on the Federal Circuit docket and gather firm/experience details for each attorney.

Confirmed the appellee entry of appearance. Now I'll pull attorney bios and check for any other appearances or later firm changes.

Counsel of Record for the Defendants-Appellees (Facebook, Inc., Instagram, LLC, WhatsApp Inc.) — Fed. Cir. No. 2021-1377

Bottom line: The Federal Circuit docket shows exactly one entry of appearance on the appellee side, naming three Cooley LLP attorneys — Heidi L. Keefe, Mark R. Weinstein, and Andrew C. Mace. No in-house counsel, no local counsel, and no other firm appeared for the Facebook entities before the appeal was dismissed. None of them ever filed a merits brief: on Feb. 19, 2021 Keefe filed a one-page letter stating the appellees were "Not Participating in the Appeal" (ECF 757346), the same day BlackBerry moved to dismiss under FRAP 42(b).

Threshold note on party alignment (flagging a caption discrepancy)

The case metadata caption reads BlackBerry Ltd. v. Facebook Inc., and the "defendant" label is inherited from the district court suit. On the appellate docket the appellees are three entities — Facebook, Inc., Instagram, LLC, and WhatsApp Inc. — because the appeal arose from IPR2019-00925, in which those three were the Petitioners and BlackBerry was the Patent Owner. The Unified Patents docket mirror for No. 2021-1377 records the appearance verbatim as: "Entry of appearance for Heidi L. Keefe; Mark R. Weinstein; Andrew C. Mace as counsel for Appellees Facebook, Inc., Instagram, LLC and Whatsapp Inc." [744703] (entered 12/22/2020). The caption in the metadata is therefore a shorthand form; the operative appellee group is the three-entity Facebook family. Anyone filing-grade citing this should use the docket's caption, not the abbreviated one.

Attorneys of record

Attorney Role Firm / office Relevant patent litigation experience
Heidi L. Keefe Lead counsel of record — first-listed on the entry of appearance; filed the appellees' Certificate of Interest [744704], Docketing Statement [744707], and the Feb. 19, 2021 "not participating" letter [757346] Cooley LLP — Palo Alto, CA (3175 Hanover Street) and Washington, DC (1299 Pennsylvania Ave. NW, Suite 700; her address of record in the related IPRs) First-chair patent trial lawyer and registered patent attorney (USPTO Reg. No. 40,673; Cal. Bar 178960); 260+ patent cases; 50+ Federal Circuit appeals, "the majority as appellee"; lead role in both of Facebook's patent jury trials to date; leads Facebook/Meta's defense in the BlackBerry IPR family
Mark R. Weinstein Co-counsel of record (back-up/arguing counsel below) Cooley LLP — Palo Alto, CA (3175 Hanover Street) Cooley partner since 2009 (Cal. Bar 193043; not USPTO-registered — he appeared in the related IPRs by pro hac vice motion); has represented Facebook in a dozen-plus patent suits (Yahoo! v. Facebook; Leader Technologies; Tele-Publishing; Walker Digital); argued the Sept. 3, 2020 PTAB hearing in the companion IPR2019-00940
Andrew C. Mace Co-counsel of record (PTAB-side specialist; docketing/administrative filings below) Cooley LLP — Palo Alto, CA (3175 Hanover Street) Now Special Counsel; USPTO Reg. No. 63,342 (Cal. Bar 284484; NY); 175+ post-grant proceedings since 2014, recognized as a top petitioner-side PTAB attorney; handled the day-to-day IPR correspondence with the Board and served as the email service contact for BlackBerry's Notice of Appeal

Docket grounding

  • Entry of appearance for Keefe, Weinstein, and Mace as counsel for Appellees, served Dec. 22, 2020 by email — ECF 744703, filed by Heidi Keefe. This is the only appellee appearance on the docket.
  • Certificate of Interest (ECF 744704) and Docketing Statement (ECF 744707), both Dec. 22, 2020, filed by Keefe.
  • Letter from Appellees stating "Appellees Not Participating in the Appeal," served Feb. 19, 2021 by email — ECF 757346 (entered 11:53 a.m.), filed by Heidi Keefe.
  • Order granting BlackBerry's FRAP 42(b) motion and issuing mandate, Feb. 26, 2021 — ECF 758866.

Sources: Unified Patents Federal Circuit docket mirror, https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/2021-1377 (docket text quoted above); Cooley bios, https://www.cooley.com/people/heidi-keefe, https://www.cooley.com/people/mark-weinstein/in-depth, https://www.cooley.com/people/andrew-mace/in-depth; Chambers USA 2026 profile for Keefe (Band 2, Patent Litigation–California; Band 3, IP–Nationwide), https://chambers.com/lawyer/heidi-keefe-usa-5:[685959](/patent/685959).

Related defense-side counsel who did not appear at the Federal Circuit (context only)

  • Cooley district court team in BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-01844-GW-KSx (C.D. Cal.) — where Cooley was defense counsel for Facebook/WhatsApp/Instagram and the same three appellate counsel were the signing attorneys — plus Matthew J. Brigham, Lowell D. Mead, and Michael G. Rhodes (Cooley San Francisco). None entered an appearance in No. 2021-1377. That C.D. Cal. case settled and was dismissed in February 2021, the same window as the appellate dismissal (see Dkt. 679, 681).
  • Cooley as plaintiff's counsel in the mirror-image N.D. Cal. action, Facebook, Inc. v. BlackBerry Ltd., No. 4:18-cv-05434-JSW — same Keefe/Weinstein/Mace/Brigham/Mead/Rhodes lineup signing for Facebook.
  • Facebook in-house: Nikki K. Vo and Christen M.R. Dubois (Facebook, Inc., 1 Hacker Way, Menlo Park) appeared at the PTAB oral hearings in the companion IPRs (e.g., IPR2019-00940 hearing transcript, Sept. 3, 2020) but did not enter an appearance at the Federal Circuit.
  • PTAB petitioner-side counsel in IPR2019-00925 was Cooley; the parallel IPR2019-01597 (a different patent) was handled for Facebook by Oblon, McClelland, Maier & Neustadt (Robert C. Mattson, Stephen McBride) — a separate track with no bearing on this appeal.

Caveats

  • The Federal Circuit entry of appearance text (ECF 744703) does not itself state firm names or addresses; firm attribution and office locations come from Cooley's own bios, the PTAB mandatory notices and hearing transcripts, and State Bar/USPTO records, which are consistent.
  • Because the appeal was dismissed before briefing and the appellees affirmatively declined to participate, there is no appellee brief, no joint appendix contribution, and no oral argument — the three attorneys above are the entire universe of defense-side counsel of record. I found no amended appearance, no withdrawal, and no motion for leave to appear pro hac vice on the appellee side.
  • I could not open the Federal Circuit's fee-based PACER docket directly; the entries above are drawn from the Unified Patents docket mirror, whose text is internally consistent with the PTAB record (BlackBerry's Notice of Appeal certificate of service, Dec. 3, 2020, lists exactly Keefe, Mace, Weinstein, and Yuan Liang at Cooley). Paid PACER review is the confirmatory step if an entry-by-entry certification is required.
  • Current-status note: all three remain at Cooley as of the most recent sources I located (Keefe is now Co-Partner in Charge of Cooley's Washington, DC office; Mace's title has since been elevated to Special Counsel).