Blackbird Tech LLC v. TomTom, Inc.

Case Overview and Background

This patent infringement suit represents a classic example of a prolific patent assertion entity (PAE), Blackbird Tech LLC, targeting a major operating company, TomTom, Inc. The plaintiff, Blackbird Tech, was founded by former "big law" patent litigators and operates a business model of acquiring patents and monetizing them through litigation, having filed over 100 lawsuits in its early years. The defendant, TomTom, Inc., is the U.S. arm of the Dutch multinational company TomTom N.V., a well-known developer of location and navigation technology, including personal navigation devices (PNDs), GPS-enabled sports watches, and in-dash automotive navigation systems. This litigation is part of a broader assertion campaign by Blackbird, which filed numerous similar lawsuits in the same court against other technology companies on the same day, all asserting the same patent.

The dispute centers on U.S. Patent No. 6,434,212, titled "Method and apparatus for providing a notification to a user of a monitoring device." The patent describes a system where a monitoring device (like a health or activity tracker) pairs with a separate communication device (like a smartphone) and alerts the user of the monitoring device to incoming communications, such as calls or messages. Blackbird alleged that various TomTom products with smartphone notification features infringed the '212 patent. While the specific accused products are not detailed in available documents, they likely included TomTom's GPS sports watches, such as the Runner or Spark series, which were on the market at the time and offered functionality to display notifications from a connected smartphone.

The case was filed in the U.S. District Court for the District of Delaware, a venue highly experienced in handling complex patent litigation due to the large number of U.S. corporations incorporated there. A 2017 court report indicates that a motion to dismiss for failure to state a claim was filed in the case. The case is particularly notable for its direct link to a parallel proceeding at the Patent Trial and Appeal Board (PTAB). In August 2017, TomTom, Inc. filed a petition for an inter partes review (IPR) against the '212 patent (IPR2017-02025), challenging the patent's validity. This dual-track strategy—fighting the infringement case in district court while simultaneously seeking to invalidate the patent at the PTAB—is a common defense tactic for companies accused of infringement by PAEs. The outcome of the IPR often heavily influences or even disposes of the corresponding district court litigation.

Case Developments: Parallel PTAB Proceeding Precedes Dismissal

The patent infringement litigation between Blackbird Tech LLC and TomTom, Inc. in the District of Delaware was ultimately shaped by a parallel proceeding at the Patent Trial and Appeal Board (PTAB). Although the district court docket is not publicly accessible through standard web searches, filings in the PTAB case confirm the litigation's existence and its resolution, which followed the denial of TomTom's patent challenge.

Filing and Initial Pleadings (2016)

2016-08-04: Blackbird Tech LLC, a patent monetization firm, filed a complaint for patent infringement against TomTom, Inc. in the U.S. District Court for the District of Delaware. The case was assigned docket number 1:16-cv-00687. (Note: The case number provided in the initial metadata, 1:16-cv-00688, corresponds to a parallel case filed by Blackbird against Wahoo Fitness, Inc. A PTAB filing by Blackbird correctly identifies the TomTom case as 16-cv-687).

The complaint alleged that TomTom's GPS and navigation products infringed U.S. Patent No. 6,434,212, which relates to a "method and device for monitoring a user's performance during a physical activity." This was one of several lawsuits Blackbird filed on the same day against various fitness and GPS technology companies, all asserting the same patent.

Details of TomTom's answer and any counterclaims are not available through public web search.

Parallel PTAB Inter Partes Review (2017-2018)

2017-08-30: TomTom, Inc. filed a petition for inter partes review (IPR) with the PTAB, challenging the validity of claims of U.S. Patent No. 6,434,212. The proceeding was designated as IPR2017-02025.

2018-03-08: The PTAB issued a "Decision Denying Institution of Inter Partes Review." The Board was not persuaded that there was a reasonable likelihood that TomTom would prevail in proving the challenged patent claims were unpatentable.

2018-03-12: Following the denial, TomTom filed a "Request for Refund of Post-Institution Fees," seeking the return of the $14,000 fee that is payable only if an IPR trial is instituted. This filing confirms that the IPR proceeding was terminated at the preliminary stage.

Dismissal of District Court Litigation (2018)

The denial of TomTom's IPR petition appears to have been a pivotal moment. With its invalidity challenge at the PTAB unsuccessful, the path was cleared for a resolution in the district court.

Although the specific docket entries for the district court case are not publicly available, the typical course of action following such a PTAB decision is for the parties to either settle or for the case to proceed toward claim construction and trial. However, given the business model of entities like Blackbird Tech, which often involves seeking nuisance-value settlements, a settlement and dismissal was the most probable outcome.

Based on the timelines of similar Blackbird cases and the definitive end of the parallel IPR, the district court case was likely dismissed via a joint stipulation of the parties sometime in mid-to-late 2018. However, without access to the official court docket, the exact date and terms of the dismissal remain unconfirmed. No substantive rulings on motions, claim construction, or summary judgment have been identified in public records, reinforcing the conclusion that the case was resolved at an early stage following the PTAB's decision not to institute the IPR.

Counsel for Plaintiff Blackbird Tech LLC

Based on court filings in this and other contemporaneous cases filed by Blackbird Tech LLC, the company utilized a combination of in-house counsel and local Delaware counsel.

• Wendy Verlander

  • Role: Lead Counsel (In-house)
  • Firm: Blackbird Tech LLC (d/b/a Blackbird Technologies)
  • Location: Boston, MA
  • Note: Verlander is the co-founder and CEO of Blackbird Technologies and previously was a partner in the patent litigation group at WilmerHale. She has extensive experience representing major technology companies and later, through Blackbird, monetizing patents for individual inventors and small companies.

• Christopher Freeman

  • Role: Counsel (In-house)
  • Firm: Blackbird Tech LLC (d/b/a Blackbird Technologies)
  • Location: Boston, MA
  • Note: Freeman is a co-founder of Blackbird Technologies and previously was an attorney at Kirkland & Ellis, where he focused on patent defense work.

• Stamatios Stamoulis

  • Role: Local Counsel
  • Firm: Stamoulis & Weinblatt LLC
  • Location: Wilmington, DE
  • Note: Stamoulis frequently serves as Delaware local counsel for patent plaintiffs, including in numerous cases filed by Blackbird Tech.

• Richard C. Weinblatt

  • Role: Local Counsel
  • Firm: Stamoulis & Weinblatt LLC
  • Location: Wilmington, DE
  • Note: Weinblatt, a partner at the firm, regularly appears alongside Stamatios Stamoulis as local counsel for patent holders in the District of Delaware.

• David L. Finger

  • Role: Local Counsel
  • Firm: Finger & Slanina, LLC
  • Location: Wilmington, DE
  • Note: David Finger is a seasoned Delaware litigator with experience in intellectual property, commercial, and corporate litigation. While Stamoulis & Weinblatt appeared on many Blackbird complaints, Finger's firm also served as counsel for Blackbird in some Delaware cases. His specific appearance in this case is not confirmed by the search results but is plausible given his firm's role in other Blackbird litigation.

Counsel for Defendant TomTom, Inc.

Based on available court filings and professional records, the following attorneys appeared on behalf of defendant TomTom, Inc. in this matter. The defense team combined Delaware-based local counsel with attorneys from a national firm, a common practice in the District of Delaware.

Local Counsel

• David M. Fry - Role: Local Counsel

  • Firm at time of case: Potter Anderson & Corroon LLP
  • Office Location: Wilmington, Delaware
  • Note: Mr. Fry was a partner at Potter Anderson, one of Delaware's oldest and most respected firms, with extensive experience serving as local counsel in federal patent litigation.

• Monté T. Squire - Role: Local Counsel

  • Firm at time of case: Potter Anderson & Corroon LLP
  • Office Location: Wilmington, Delaware
  • Note: An experienced intellectual property litigator, Mr. Squire has represented major corporations in complex patent cases in the District of Delaware and later served as an Administrative Patent Judge at the PTAB.

Additional Counsel

While the docket primarily shows local counsel filings, documents related to the parallel inter partes review (IPR) proceeding (IPR2017-02025) at the PTAB identify counsel from Blank Rome LLP as representing TomTom. It is highly probable they also served as lead counsel in the district court case, directing the overall strategy.

• Dipu A. Doshi - Role: Likely Lead Counsel

  • Firm at time of case: Blank Rome LLP
  • Office Location: Washington, D.C.
  • Note: Mr. Doshi is listed as lead attorney on PTAB filings for TomTom against the same patent, indicating a lead role in the overall invalidity and defense strategy.

• Michael S. Marcus - Role: Of Counsel

  • Firm at time of case: Blank Rome LLP
  • Office Location: Washington, D.C.
  • Note: Appears alongside Mr. Doshi on filings for the corresponding IPR petition, suggesting a significant role in the technical and legal arguments against the patent's validity.

• Megan R. Wood - Role: Of Counsel

  • Firm at time of case: Blank Rome LLP
  • Office Location: Washington, D.C.
  • Note: Also listed on the IPR petition, Ms. Wood was part of the core team challenging the '212 patent at the PTAB.