Facebook, Inc. et al. v. BlackBerry Limited

I'll verify the key facts before drafting. Let me run several searches in parallel.

Now let me pin down the '351 patent's actual subject matter, the FWD outcome, and counsel.

Case Overview & Background

A threshold correction on posture. IPR2019‑00941 is not itself an infringement action — it is an inter partes review before the PTAB, filed April 5, 2019 by Facebook, Inc. (with Instagram, LLC and WhatsApp Inc. named as petitioners in the Board papers; your metadata lists Facebook and WhatsApp) against BlackBerry Limited as patent owner, challenging U.S. Patent No. 8,296,351. The infringement litigation that gives the IPR its significance is BlackBerry Limited v. Facebook, Inc., No. 2:18‑cv‑01844‑GW‑KS (C.D. Cal.), in which BlackBerry sued Facebook, WhatsApp and Instagram on March 6, 2018 and filed an operative First Amended Complaint on April 4, 2018 asserting nine patents, with the '351 as Count VIII. The IPR was filed one day before the § 315(b) one‑year bar (service was effected April 6, 2018), and the Board instituted on December 4, 2019 (Paper 11) over BlackBerry's § 314(a) rehearing request, which argued Facebook had elected to litigate invalidity in district court and lost that race.

The parties. BlackBerry Limited is the Waterloo, Ontario operating company — the former Research In Motion — suing as a patent owner asserting its own messaging, advertising‑delivery and notification patents (not an NPE; BlackBerry was still an active device/software vendor and, by 2018, an increasingly active licensor). Facebook, WhatsApp and Instagram are the accused operating companies; Facebook Messenger, WhatsApp Messenger and the Instagram apps (and, for the advertising patents, Facebook's targeted‑advertising infrastructure) were the accused products. Petitioners' counsel of record was Cooley LLP (Heidi L. Keefe, Mark Weinstein, Andrew Mace), per the parties' December 11, 2019 joint status update filed in the companion IPRs; I could not verify BlackBerry's IPR counsel from the record available to me. The same patents were asserted in parallel against Snap (No. 2:18‑cv‑02693‑GW‑KS) and Twitter (No. 2:19‑cv‑01444‑GW‑KS), consolidated with the Facebook case for pretrial purposes before Judge George H. Wu in the Central District of California.

The patent. U.S. Patent No. 8,296,351 B2, "System and Method for Pushing Information to a Mobile Device," issued October 23, 2012, and shares its specification with continuation U.S. Patent No. 8,676,929 (the co‑asserted '929). In one line: it claims a "proxy content server" that aggregates Internet/Intranet content and advertising into pre‑defined channels and pushes a selected channel to a mobile device based on a feedback signal indicating the device's position — i.e., server‑side targeted ad/content delivery tuned for bandwidth‑ and battery‑constrained handsets. Claim 1 recites the channel storage, the position‑indicating feedback signal, and information comprising static/dynamic/default advertising or content information, combined into an advertisement or information bulletin. The challenged claims were 1, 2, 14 and 21; BlackBerry statutorily disclaimed claims 9 and 15 on December 18, 2019.

Why it matters. Three things make this docket notable. First, it is a clean example of parallel‑track divergence: on October 1, 2019, Judge Wu granted summary judgment that claims 1, 2, 14, 20 and 21 of the '351 (and claims 1, 9 and 16 of the '929) were invalid under § 101, and entered Rule 54(b) final judgment for defendants on November 26, 2019 — while the Board was simultaneously instituting a § 102/§ 103 trial on overlapping claims. BlackBerry's appeal to the Federal Circuit (No. 2020‑1256, notice filed December 11, 2019) ran in parallel with the IPR; I was unable to verify the appellate outcome from the sources I could reach, so treat that as unresolved here. Second, the Board's December 1, 2020 Final Written Decision reportedly found the challenged claims unpatentable (per PTAB docket aggregators and the panel of APJs Gregg I. Anderson, Miriam L. Quinn and Robert L. Kinder); I could not retrieve the FWD text itself, so the precise claim‑by‑claim outcome should be confirmed against the paper. Third, the case sits squarely in the Fintiv/§ 314(a) story: when Snap filed a substantively identical copy of Facebook's '351 petition in IPR2020‑00391, the Board denied institution, reasoning that the district court had already entered final judgment holding the claims unpatentable under § 101 and that the petitioner had delayed until after disclaimer and judgment — an early and often‑cited application of discretionary denial where the parallel litigation had already concluded on different (eligibility) grounds. It is also one thread in the roughly ten‑petition 2019 campaign (IPR2019‑00516, ‑00528, ‑00706, ‑00787, ‑00899, ‑00923, ‑00924, ‑00925, ‑00940, ‑00941, ‑00942) that Facebook and Snap mounted against BlackBerry's portfolio alongside the district court suits.

Sourcing caveats. Party names, the district court number and judge, the § 101 summary judgment and Rule 54(b) judgment dates, the service date and bar calculation, the challenged claims and the disclaimer, and the Cooley counsel signature are grounded in filed papers (Dkt. 15, 157, 468/487, 490, 491; BlackBerry's Request for Rehearing in IPR2019‑00941; the Dec. 11, 2019 joint status update; the IPR2020‑00391 denial). The institution date, FWD date and FWD outcome rest on PTAB docket indexing rather than the decision text. The specific claim‑charting of the '351 against Facebook's and Instagram's advertising systems is not verified in the materials I retrieved — the '351 infringement narrative I could confirm in the public record is from the Snap complaint — and no damages figures or expert damages opinions are verified.

I'll research this alongside the parallel district court litigation, which is the focus of your questions.

I have the district court docket. Now let me pin down the PTAB dispositions and the Federal Circuit appeal.

Now the endgame of the district court case and the second set of IPRs.

Facebook, Inc. v. BlackBerry Ltd. — Litigation Timeline and Outcome

Important framing note. IPR2019-00941 was not itself an infringement suit; it was Facebook/WhatsApp's PTAB challenge to claims of U.S. Patent No. 8,296,351 (“the '351 patent”), filed as a companion to the underlying district court litigation: BlackBerry Limited v. Facebook, Inc., No. 2:18-cv-01844-GW-KSx (C.D. Cal.) (Judge George H. Wu). That case is where the pleadings, Markman, summary judgment, and settlement you asked about actually occurred, so the chronology below is anchored there, with the PTAB track interleaved. Docket numbers come from CourtListener/RECAP and Docket Alarm mirrors of PACER; they are reliable but should be re-verified against PACER before filing.

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I. Filing and initial pleadings (2018)

I'll search multiple angles to find press coverage of this IPR and the related BlackBerry v. Facebook litigation.

What the press actually covered

A threshold finding first: I found no press article that reports specifically on IPR2019-00941 — not the April 2019 petition, the Board's institution decision, BlackBerry's rehearing request, the December 1, 2020 termination, or the '351 patent's fate at the PTAB. Trade outlets covered the district court case and the Federal Circuit appeal that shadowed it, and that is what the reporting below reflects. Everything I found on the IPR side is primary-source docket material (PTAB filings, the Board's institution and joinder decisions, and the parties' joint status updates in the C.D. Cal. case), not journalism.

The reporting

Coverage began with the complaint. Reuters reported in March 2018 that BlackBerry sued Facebook, WhatsApp and Instagram in Los Angeles federal court, framing the suit as part of CEO John Chen's strategy to monetize a portfolio of more than 40,000 global patents after losing the smartphone market; BlackBerry spokeswoman Sarah McKinney told Reuters that "protecting shareholder assets and intellectual property is the job of every CEO" while insisting litigation was "not central to BlackBerry's strategy." Facebook Deputy General Counsel Paul Grewal's response — that the suit "sadly reflects the current state of its messaging business" and that "BlackBerry is now looking to tax the innovation of others" — was carried by Reuters, CBC News and the BBC. CBC News noted the 117-page filing sought financial compensation without specifying a dollar figure, and quoted Android Central managing editor Daniel Bader saying BlackBerry's recent success came from "licensing their patents and their technology to many larger companies" — an analyst take, not a court record fact. MIT Technology Review framed the stakes as precedential, warning that some asserted patents "lay claim to widely used approaches" and that a BlackBerry win "could go after more tech firms."

The most pointed commentary went beyond the pleadings. The BBC appended an analysis by technology reporter Dave Lee arguing that while BBM "was indeed a precursor to popular apps like WhatsApp… to say WhatsApp gained its popularity by stealing BBM tech is quite the stretch," because BBM was device-locked and stagnated while WhatsApp iterated — a skepticism about the merits that appears nowhere in the complaint. CBC News similarly stressed that "the claims in the suit have not been tested in court." Notably, none of the 2018 coverage I found discussed the '351 patent by number or described its push-advertising subject matter; the outlets focused on the more consumer-legible patents (unread-message badges, photo tagging).

Reporting on the outcome is thin and paywalled. Law360 maintains a case page for BlackBerry Limited v. Facebook, Inc. whose dated items record that on December 10, 2020 the Federal Circuit "backed a lower court ruling that four BlackBerry patents were invalid under the U.S. Supreme Court's 2014 Alice decision," and that on January 15, 2021 the two sides "agreed to end a patent dispute accusing each other of infringing numerous patents relating to messaging technology" — a settlement whose terms were not disclosed in anything I could locate, and for which no damages figure was ever reported or awarded. Law.com (Scott Graham, December 7, 2020) previewed that ruling with a piece titled "BlackBerry's Patent Campaign Against Facebook May Get New Life," reporting that a Federal Circuit panel "sounded as if it disagreed with U.S. District Judge George Wu about the eligibility of patents BlackBerry is asserting against the social network and against Snap," while cautioning that BlackBerry would "still have to overcome PTO invalidity rulings to fully restart its case" — the one piece of coverage I found that gestures at the PTAB proceedings sitting behind the appeal, without naming IPR2019-00941.

Where accounts diverge, and what's missing

The gap between the executive framing and the judicial record is the main fault line: BlackBerry's public statements in 2018 emphasized partnership and shareholder obligation, Grewal characterized the campaign as rent-seeking, and BBC analysis doubted the technical premise — yet the actual disposition was neither, with Judge Wu granting summary judgment of § 101 invalidity on the '351 and '929 patents on October 1, 2019 and the Federal Circuit affirming without a substantive opinion under Rule 36 (per the C.D. Cal. docket, Fed. Cir. No. 2020-1256). I found no Reuters, Bloomberg Law, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF, or JD Supra article addressing this IPR, and no reporting that connects the district court's Alice holding to the Board's parallel obviousness grounds (Noble in view of Hassett; Noble, Mann and Johnson) — so any account of the PTAB-specific significance of this proceeding would have to be built from the Board's papers rather than from press coverage. I also deliberately excluded foreign-language items about the separate Munich Regional Court action (7 O 5314/18), which concerns different patents and is not this case.

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• BlackBerry first sued Petitioner for infringing the '351 patent on April 3, 2018. On October 1, 2019, the United States District...
• From: Mace
• Petition analysis | IPR2019-00941 | Facebook Inc v. BlackBerry Ltd | Ex Parte
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Ex. 1007 | IPR2019-00941 | Facebook Inc v. BlackBerry Ltd | Ex Parte
• QUINN EMANUEL URQUHART &
• COOLEY LLP HEIDI L
• WHEREAS, on March 6, 2018, Plaintiff BlackBerry Limited ("BlackBerry") filed the Complaint against Defendants Facebook, Inc
• <t...

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  Filed On

  Institution Decision

  Patent

  Application

  Petitioners

• 专家解读德国法院对黑莓与脸书专利纠纷的判决 - 专家解读德国法院对黑莓与脸书专利纠纷的判决
• Complaint analysis | 2:18-cv-01844 | BlackBerry Ltd v. Facebook Inc | Ex Parte

I'll research the counsel of record for the petitioners (Facebook and WhatsApp) in this IPR proceeding.

Let me pull the actual petition and Final Written Decision for IPR2019-00941, which will list petitioner's counsel.

Let me confirm the 941 petition caption and the Final Written Decision, which will list counsel of record.

Scope note before the roster

This is a PTAB inter partes review, not a district court case, so several of the categories you asked about don't map cleanly:

• There is no PACER docket sheet and no "local counsel." Counsel of record is designated under 37 C.F.R. § 42.8(b)(3)–(4) in the petition's mandatory notices and appears on the caption block of every Board paper. The equivalents are lead counsel, back-up counsel (registered practitioners or pro hac vice), and in-house counsel who signed in and argued.
• The "plaintiff" here is the petitioner, Facebook, Inc. (with WhatsApp Inc. named as a petitioner/real party in interest; Instagram, LLC appears in the caption of the consolidated 940/941 Board papers).
• Important disambiguation: search results surface James M. Glass, John T. McKee, Sam Stake and Ogi Zivojnovic of Quinn Emanuel as "lead counsel" in these materials. They represented BlackBerry (patent owner), not Facebook. Likewise, Yar R. Chaikovsky / Paul Hastings appears on the '351 patent papers — that is Snap Inc.'s separate joinder petition, not the Facebook petition at issue here.

Petitioner's counsel of record — Facebook, Inc. / WhatsApp Inc. (IPR2019-00941)

Sources for the above: PTAB, Order Conduct of the Proceeding, IPR2019-00940/-00941, Paper 18 (Dec. 16, 2019) (caption blocks naming "PETITIONER: Heidi L. Keefe, Andrew C. Mace, COOLEY LLP"); Hearing Transcript, IPR2019-00940/-00941 (Sept. 3, 2020) (appearances: Mark Weinstein and Heidi Keefe of Cooley; Nikki K. Vo and Christen M. R. DuBois of Facebook; with Keefe identified as "lead counsel"); Patent Owner's Updated Exhibit List and certificate of service, IPR2019-00899 (July 1, 2020) (Cooley service list: Keefe, Mace, Weinstein, Liang); PTAB captions in the consolidated 940/941 papers at docketalarm.com.

What I could not verify

• No 941-specific petition caption block was retrieved. The § 42.8(b)(3) designation in the April 5, 2019 petition itself (Paper 2) would be the cleanest primary source; the roster above is reconstructed from Board caption blocks, the hearing transcript, and Cooley service lists in the companion proceedings. The team is consistent across all of them, but I did not open Paper 2.
• Instagram, LLC's status in 941 specifically. Board papers for the consolidated 940/941 proceedings carry the caption "Facebook, Inc., Instagram, LLC, and WhatsApp Inc."; the case metadata lists only Facebook and WhatsApp. Facebook's sibling petitions (e.g., IPR2019-00925) recite Facebook, Instagram and WhatsApp as real parties in interest, so the discrepancy is likely caption-style rather than substantive — but I did not confirm it from the 941 petition.
• Nothing was sealed among the counsel designations; PTAB mandatory notices and caption blocks are public. The confidentiality requests in this family concerned business-confidential settlement/agreement material (see the Twitter/IPR2019-01510 termination), not appearances.
• I did not locate a Law360 or Reuters piece naming the 941 petitioner-side team; the contemporaneous trade coverage found (Mealey's, Dec. 5, 2019) reports only the institution decision.

Practical takeaway

For any filing or citation purpose, the operative petitioner-side contact block in IPR2019-00941 is: Heidi L. Keefe (lead), Andrew C. Mace, Mark R. Weinstein, Yuan Liang — Cooley LLP, Attn: Patent Group, 1299 Pennsylvania Ave. NW, Suite 700, Washington, DC 20004 — with in-house support from Nikki K. Vo and Christen M. R. DuBois (Facebook, Menlo Park). The proceeding ran to a final written decision and terminated December 1, 2020, alongside Facebook's § 101 summary-judgment win on the '351 patent in BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-01844-GW-KS (C.D. Cal. Oct. 1, 2019).

Bottom line

IPR2019-00941 is a PTAB proceeding, not a district-court infringement action, so the party in the "defendant" posture is the Patent Owner, BlackBerry Limited. BlackBerry's counsel of record throughout the proceeding was Quinn Emanuel Urquhart & Sullivan, LLP, with James M. Glass (New York) as lead counsel and a three-lawyer backup team in New York and San Francisco. No local counsel is required at the PTAB, and none was designated.

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Supporting detail

Initial designations (Sept. 6, 2019). BlackBerry's Mandatory Notices under 37 C.F.R. § 42.8 named only Glass as lead and McKee as back-up, both in Quinn Emanuel's New York office, with service consented at qe-blackberry-ipr@quinnemanuel.com. (BlackBerry's Mandatory Notices, IPR2019-00941)

Expanded team (Apr. 13, 2020). BlackBerry filed an updated Power of Attorney and updated Mandatory Notices adding Sam Stake (pro hac vice to be requested) and Ogi Zivojnovic (Reg. No. 69,516) of the San Francisco office, alongside Glass and McKee. The POA appointed practitioners associated with Customer No. 505708 and was signed by Keith Bennett for BlackBerry. (Updated Power of Attorney, IPR2019-00940/00941, Paper 28 (Apr. 13, 2020))

Pro hac vice admission of Stake. The Board granted BlackBerry's motion on April 23, 2020 (Paper 33 in the companion IPR2019-00940, captioned for both 00940 and 00941), expressly limiting Stake to back-up counsel only and noting that lead counsel Glass is a registered practitioner. (Order, Paper 33)

Appearances at oral argument (Sept. 3, 2020). The consolidated 00940/00941 hearing transcript identifies the Patent Owner's arguing team as John T. McKee and James M. Glass (New York) and Ognjen Zivojnovic (San Francisco), with Glass described on the record as "lead counsel on this case." (Hearing Transcript)

Panel and outcome context (for accuracy on posture). Judges Miriam L. Quinn, Gregg I. Anderson, and Robert L. Kinder; instituted Dec. 4, 2019; Final Written Decision and termination Dec. 1, 2020, with the challenged claims held unpatentable. (PTAB docket summary; Mealey's, Dec. 5, 2019)

Attorney notes (sourced)

• James M. Glass — Quinn Emanuel partner in New York; per Chambers, "Chair of Quinn Emanuel's Post-Grant patent practice," lead counsel on 500+ PTAB proceedings, ranked among the most active PTAB attorneys since 2018, with Federal Circuit argument experience; listed PTAB work includes defending NantWorks/Bio-Rad (14 petitions denied institution), Juul v. NJOY, and representing Voxer in four Facebook-filed IPRs that were all denied institution and affirmed on appeal. (Chambers profile; Quinn Emanuel bio) Reg. No. 46,729; B.S. Polytechnic University of NY, J.D. Hofstra.
• Sam Stake — Quinn Emanuel San Francisco partner; admitted in California in 2008; pro hac vice declaration in these BlackBerry IPRs states ~12 years of IP/patent litigation practice and familiarity with the '351/'929 family; career highlights per firm bio include the $174.5M Voxer v. Facebook/Instagram verdict (W.D. Tex.), a complete defense verdict for Symantec in Finjan's $1B+ Delaware case, and an ITC win for Varian against Elekta. (Quinn bio; Cal. Bar record)
• John T. McKee — Reg. No. 65,926; consistently listed on BlackBerry's PTAB papers in the 2019 Facebook/BlackBerry wave (00940, 00941, 00942, 00516) and appeared at the September 2020 hearing. I did not locate a standalone firm biography detailing his individual case history; treat his "experience" line as based on docket appearances, not a published bio.
• Ogi Zivojnovic — Reg. No. 69,516; registered practitioner listed on BlackBerry's Apr. 13, 2020 notices/POA and in the hearing transcript. No detailed published bio located.

Who is not counsel of record (to avoid confusion)

• James R. Asperger (Quinn Emanuel, 865 S. Figueroa St., Los Angeles) appears on BlackBerry's service lists in related BlackBerry PTAB matters and was BlackBerry's C.D. Cal. litigation counsel, but he is not designated in IPR2019-00941's Mandatory Notices or Power of Attorney. (Example service list, IPR filed by Snap)
• Edward R. McGah, Jr. — BlackBerry VP & Deputy General Counsel, Litigation, appeared as in-house counsel in the mirror district-court case (C.D. Cal.), not in the IPR. (Quinn Emanuel filing, C.D. Cal. No. 2:18-cv-01844)
• No sealed filings or unappeared counsel issue exists here: the PTAB record is public and Quinn Emanuel's designations are on the face of the mandatory notices, powers of attorney, and hearing transcript.

Cross-check: the parallel district-court case (roles reversed)

Because the prompt calls this a "patent infringement case," note the mirror litigation, BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-01844-GW-KSx (C.D. Cal.), where BlackBerry was the plaintiff (Quinn Emanuel: James R. Asperger, Kevin P.B. Johnson, Victoria F. Maroulis, plus in-house Edward R. McGah, Jr.) and Facebook/WhatsApp/Instagram were the defendants, represented by Cooley LLP — Heidi L. Keefe, Mark R. Weinstein, Michael G. Rhodes, Andrew C. Mace, and Yuan Liang. Those Cooley attorneys were Petitioners' counsel in IPR2019-00941, not BlackBerry's. (Facebook Defendants' MSJ, Dkt. 226; Power of Attorney for Patent Owner Facebook, IPR2019-01596)

Caveats / unsourced items

• PTAB paper numbers in 00941 largely track the companion IPR2019-00940 filings; the Stake pro hac vice order (Paper 33) and the Apr. 13, 2020 POA/notices (Papers 28–29) are captioned for both proceedings, but I did not independently verify each 00941-specific paper number against PTAB's PTABE2E docket sheet — verify at PTABE2E if exact paper cites are needed for a brief.
• No individual case lists were located for McKee or Zivojnovic; I have not attributed specific matters to them beyond appearances in the BlackBerry PTAB wave.