Facebook, Inc. v. BlackBerry Limited

I'll research this case and its broader litigation context before drafting the overview.

Now let me get the specific IPR2019-00787 decision and the district court outcome.

Let me pin down the actual PTAB decision in IPR2019-00787 and the settlement terms.

Case Overview & Background

Parties. This IPR is a side-front in BlackBerry Limited v. Facebook, Inc., No. 2:18-cv-01844-GW-KS (C.D. Cal.) — a nine-patent infringement campaign that BlackBerry Limited, the Canadian successor to Research In Motion, launched against Facebook, Inc., WhatsApp Inc., and Instagram, LLC (plus a companion suit against Snap Inc., No. 2:18-cv-02693-GW-KS, consolidated for pretrial purposes). BlackBerry is nominally an operating company — it makes enterprise cybersecurity and embedded/IoT software — but by 2018 it had exited the smartphone hardware business, and Facebook's counsel characterized it in briefing as "a well-financed non-practicing patent enforcement entity" for the patents in suit, noting BlackBerry did not practice at least seven of them and sought no preliminary injunction (Dkt. 161-1, Mem. ISO Motion to Stay, at 8–9, https://storage.courtlistener.com/recap/gov.uscourts.cacd.[703149](/patent/703149)/gov.uscourts.cacd.703149.161.1.pdf). Facebook's deputy GC Paul Grewal publicly framed the suit as BlackBerry "looking to tax the innovation of others" (Ars Technica, Mar. 2018, https://arstechnica.com/tech-policy/2018/03/BlackBerry-sues-facebook-arguing-it-owns-basic-messaging-concepts/). BlackBerry's district-court team was Quinn Emanuel (James Asperger, Patrick Schmidt); the Facebook defendants were represented by Cooley LLP (Heidi Keefe, Mark Weinstein, Matthew Brigham, Michael Rhodes).

Accused technology and patent. The accused instrumentalities are the Facebook, Messenger, Messenger Lite, Workplace Chat, Pages Manager, WhatsApp Messenger, and Instagram applications and their backend messaging infrastructure — specifically their status/message-delivery behavior (Compl. ¶¶ 6, 17, 85). The patent at issue here, U.S. Patent No. 8,429,236, "Transmission of Status Updates Responsive to Status of Recipient Application" (issued Apr. 23, 2013; inventors Michael Brown and Gerhard Klassen; Tech Center 2400, Art Unit 2451), claims, in one-line technical sketch, a mobile device that detects whether the recipient's application is actively processing status updates and picks a message transmission mode accordingly — e.g., batching or throttling updates when the recipient isn't actively reading them, to conserve battery and network resources. Asserted claim 15 recites a "mode selector" plus a "message generator"; the IPR challenged claims 1, 5, 10, 15, 17, and 18 (Dkt. 161-1 at 10 (table)). Notably, of the three Facebook entities, only WhatsApp was accused of infringing the '236 patent (Dkt. 669 at 4 n.3, https://storage.courtlistener.com/recap/gov.uscourts.cacd.703149/gov.uscourts.cacd.703149.669.0.pdf) — which is why only WhatsApp litigated the '236 claim construction and § 101 issues.

Procedural posture and significance. The petition (IPR2019-00787) was filed March 5, 2019, roughly a month after BlackBerry served its narrowed election of 48 asserted claims (Feb. 7, 2019), and was denied institution — the Board's panel was Administrative Patent Judges Michael Zecher, Miriam Quinn, and Robert Weinschenk (Docket Alarm case page, https://www.docketalarm.com/cases/PTAB/IPR2019-00787/Facebook_Inc._v._BlackBerry_Limited/; Law360 PTAB docket lists status "Institution Denied"). ⚠️ Caveat: I could not locate the decision paper itself; the denial issued sometime between March and October 15, 2019, when BlackBerry's counsel already referred to the Board having "rejected Petitioners' IPR2019-00787" (IPR2019-00940, Paper 12 at 1). The case is notable on several counts. First, it is a clean example of IPR linkage cutting both ways: BlackBerry promptly weaponized the denial in district court, arguing that "the PTAB's denial of Defendants' IPR petition" supported a finding that the '236 claims' ordered combination was not "routine, conventional, or well-known" (Dkt. 658 at 7), yet the Board's no-institution call on § 103 prior art proved irrelevant to the court's § 101 analysis. On July 2, 2020, Judge George H. Wu issued a tentative-then-final ruling granting the Facebook defendants' summary judgment motion of invalidity of the '236 patent under Alice/§ 101, mooting the supplemental claim construction of "mode selector"/"message generator" he had ordered in March 2020 (Dkt. 669; Dkt. 673). Second, the outcome illustrates how settlement can erase the merits record: after BlackBerry appealed the earlier § 101 rulings on the '351 and '929 patents (Fed. Cir. No. 2020-1256, affirmed without opinion under Fed. Cir. R. 36, Dec. 10, 2020), the parties settled; the court granted BlackBerry's unopposed motion to vacate the '236 summary-judgment ruling (Dkt. 680, Feb. 8, 2021) and dismissed all remaining claims with prejudice (Dkt. 682, Feb. 16, 2021). The practical result is that the '236 patent ended the litigation with no surviving merits adjudication in either forum — institution denied at the PTAB, invalidity judgment vacated in the district court — a pattern worth flagging for anyone treating the denial decision as a merits vindication of the patent. Finally, the broader campaign was a consequential test of software patent eligibility in mobile messaging (Judge Wu invalidated claims across the '351, '929, '120, '713, '250, '173, '084, and '327 patents at various stages) and ran in parallel with BlackBerry's suits against Snap and Twitter, plus BlackBerry's own September 2019 IPR counter-attacks on Facebook's patents — an unusual two-way PTAB war. Market context: the accused apps reached billions of users, and BlackBerry's licensing push followed its 2016 hardware exit; Facebook had paid ~$19B for WhatsApp and ~$1B for Instagram (Compl. ¶ 86).

Source notes. Party names, patent number, petition date, and status are taken from the case metadata and cross-checked against the C.D. Cal. docket (CourtListener/RECAP) and PTAB docket aggregators. Verified: petition challenged claims 1, 5, 10, 15, 17, 18; denial of institution; panel composition; the March 2019–July 2020 district court sequence; and the 2021 vacatur/dismissal. Not verified: the exact entry date and text of the IPR2019-00787 institution decision, the specific prior-art references and grounds asserted, and petitioner-side IPR counsel — these require the PTAB paper itself (or PTAB E2E/PTA-PETS access) and should not be stated as fact until confirmed.

I'll research both the IPR and the underlying district court litigation, since the metadata here points to a PTAB proceeding embedded in a broader patent dispute.

The metadata points to a PTAB petition embedded in a larger C.D. Cal. litigation. Let me pin down the IPR decision and the district court record.

Now let me nail down the IPR decision itself and the appellate outcome.

I'll search for press coverage of this IPR and the underlying Facebook/BlackBerry patent fight.

Press coverage of Facebook v. BlackBerry (IPR2019-00787) and the underlying '236 dispute

Bottom line: I found no press article that discusses IPR2019-00787 itself. The petition's denial of institution appears to have gone unreported in the outlets I searched (Reuters, Bloomberg, Law360, BBC, IPWatchdog, tech trade press); the fact of denial is documented instead in PTAB docket records — Docket Alarm lists IPR2019-00787, filed 2019-03-05 against U.S. Patent No. 8,429,236, with status "Institution Denied" before Judges Zecher, Quinn and Weinschenk — and is recited by the parties themselves in later filings, where BlackBerry told the Board that it "already rejected Petitioners' IPR2019-00787 on U.S. Pat. No. 8,429,236" and argued in district court that "the PTAB denied Defendants' proposed IPR because the prior art failed to disclose this configuration of elements" (BlackBerry's '236 supplemental claim construction brief, Dkt. 658). Reporting exists in volume, but it is about the C.D. Cal. litigation (No. 2:18-cv-01844-GW-KS) and about sibling IPRs on other BlackBerry patents.

What the press actually reported on the dispute. Reuters reported on 2018-03-07 that BlackBerry sued Facebook, WhatsApp and Instagram in Los Angeles federal court, alleging the defendants "created mobile messaging applications that co-opt BlackBerry's innovations," and framed the suit as part of CEO John Chen's monetization strategy for a portfolio of "more than 40,000 global patents." BBC News reported the same day that BlackBerry claimed Facebook copied BBM features — unread-message counters, read receipts, photo tagging — and quoted Facebook deputy general counsel Paul Grewal saying the suit "sadly reflects the current state of its messaging business" and that Facebook would fight it; the BBC's Dave Lee added the analyst take that "to say WhatsApp gained its popularity by stealing BBM tech is quite the stretch," noting BlackBerry was asserting "features that are so commonplace in mobile messaging you probably don't even consider them to be features." Bloomberg aired a segment the same day in which its reporters characterized the case as a bet on "pre-smartphone era IP," questioned "what is the incremental value of that 15 years later," and said Facebook viewed the suit as "a desperate attempt by BlackBerry to wring some money out," while also noting Silicon Valley's relative skepticism toward software patents. MIT Technology Review and The Next Web did feature-level breakdowns (The Next Web enumerated the five most familiar asserted features, including autocomplete photo tagging and timestamping). Silicon Republic noted the complaint ran nearly 120 pages and that BlackBerry sought injunctive relief and damages without specifying an amount — no outlet I found reported a damages demand figure at filing.

Where coverage diverges from, or outruns, this particular proceeding. Almost all of the above coverage lumps the '236 patent into a nine-patent campaign and none of it identifies-00787 or explains the denial; readers would not learn from press accounts that Facebook lost this particular challenge at the institution stage. The most substantive legal-trade coverage that touches the campaign is Law360's docket-linked reporting, which recorded that on 2019-10-02 "a California federal judge has declared claims from six BlackBerry patents invalid under the U.S. Supreme Court's Alice decision, giving a leg-up to Facebook, Twitter and Snap," and — on a different patent than the '236 — that Facebook urged invalidation of a BlackBerry image-tagging patent by pointing to an 1818 painting of the Founding Fathers (Law360, 2019-08-02). IPWatchdog reported on 2019-08-15 on the two Facebook IPRs that were instituted against the photo-tagging patent and on the Board's handling of parallel petitions — again, not the '236 petition. Outside the U.S. track, a Chinese-language analysis published by the China IP Protection Network (2020-01-22) reported that the Munich Regional Court ruled on 2019-12-05 (case 7 O 5314/18) that Facebook, Messenger, WhatsApp and Instagram infringed four BlackBerry patents, that enforcement could follow a ~€1.6 million bond, and that Facebook would appeal to the Munich Higher Regional Court and seek revocation before the Federal Patent Court — a parallel proceeding with no bearing on the '236 outcome but frequently conflated with the U.S. case in secondary coverage.

What I could not verify. I found no press reporting of a verdict, judgment, or settlement resolving the '236 dispute or the litigation as a whole, and none on the denial of institution in IPR2019-00787; my search was cut short before I could exhaust settlement-reporting angles, so the absence of settlement coverage here should be read as "not found," not "did not happen." For the same reason I am not asserting any damages or license figure. The most complete account of what happened to the '236 patent specifically is in the court record rather than the press: Judge George Wu's July 2020 order granting summary judgment of invalidity under § 101 (Dkt. 673), where BlackBerry had argued the PTAB's denial of this IPR supported eligibility — i.e., the denial of IPR2019-00787 mattered chiefly as ammunition in the § 101 fight, a connection no news outlet appears to have drawn.

Sources

• Docket Alarm | Litigation Outcomes, Delivered
• Facebook, Inc. v. BlackBerry Limited
• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• * 22Exhibit 713.1 _Blackberry Limited v
• Facebook Targets Blackberry Photo Tagging Patent, Apple Takes Aim at Firstface and Continues Serial Challenges Against Nartron - Facebook Targets Blackberry Photo Tagging Patent, Apple Takes Aim at Firstface and Continues Serial Challenges Against Nartron
• Facebook, Inc. v. BlackBerry Limited, 4:18-cv-05434 - CourtListener.com - ORDER GRANTING 73 JOINT Stipulation REGARDING FACEBOOKS MOTION TO AMEND INFRINGEMENT CONTENTIONS
• Facebook, Inc. v. BlackBerry Limited, 4:18-cv-05434 - CourtListener.com - Minute Entry for proceedings held before Magistrate Judge Jacqueline Scott Corley: Motion Hearing held on 9/12/2019 re 53 MOTION...
• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• 23 (^3) BlackBerry’s cited cases primarily involved inter partes proceedings with estoppel consequences
• Case 2:18-cv-01844-GW-KS Document 673 Filed 07/23/20 Page 2 of 12 Page ID #:45065

I'll research the petitioner-side (Facebook) counsel of record in IPR2019-00787 and cross-check against the district court docket.

Let me pull the actual IPR2019-00787 docket and petitioner power of attorney.

Let me try to locate the IPR2019-00787 docket directly to confirm the petitioner's power of attorney and any counsel changes.

Counsel of Record — "Plaintiff" Side (Facebook, Inc.) in IPR2019-00787

Threshold correction on party role. IPR2019-00787 is not a civil "plaintiff/defendant" case: Facebook, Inc. appears as Petitioner and BlackBerry Limited as Patent Owner. (The metadata's "Plaintiff(s): Facebook, Inc." reflects the caption order Facebook, Inc. v. BlackBerry Limited, not a plaintiff role.) So the counsel below are Facebook's IPR petitioner-side counsel of record. For completeness I also list Facebook's counsel in the two district-court tracks where Facebook genuinely was the plaintiff/defendant, since the same team ran all three.

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1. PTAB counsel of record for Petitioner (IPR2019-00787)

The Board's service/correspondence address of record for the Petitioner in the Facebook–BlackBerry IPR family is Cooley LLP, Attn: Patent Group, 1299 Pennsylvania Ave. NW, Suite 700, Washington, DC 20004. This is confirmed by BlackBerry's own filings in the family: BlackBerry's Mandatory Notices served April 27, 2019 and its Power of Attorney certificates of service direct all service to "Heidi L. Keefe, Andrew C. Mace, Mark R. Weinstein, Yuan Liang, Cooley LLP, Attn: Patent Group, 1299 Pennsylvania Ave, NW, Suite 700, Washington, DC 20004" (see BlackBerry's Mandatory Notices/Power of Attorney in IPR2019-00940, which lists IPR2019-00787 among the related Facebook petitions, https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1525284](/patent/1525284)/download-documents?artifactId=Y2RFJxTYm17dh3g3nqKk2dPOO55dJrUvEWHgZJMNACFUxoVW_YJiGPw).

Verification caveat (important). I was unable to retrieve the Petitioners' Power of Attorney filed in IPR2019-00787 itself (Paper 2-type document), nor a Notice of Appearance or withdrawal in that proceeding — PTAB E2E/PTA-PETS access is required. The lead/back-up role assignments above are therefore established by (a) BlackBerry's service lists identifying the Cooley attorneys as Petitioner's counsel of record in the '787 family and (b) Cooley's consistent Keefe-lead/Mace-Weinstein-backup appointment pattern in contemporaneous Facebook petitions. The identity of counsel is well sourced; the precise role labels in the '787 power of attorney are inferred. Note also that the '787 petition is captioned "Facebook, Inc. et al. v. BlackBerry Limited" in BlackBerry's related-matters disclosure, implying Instagram, LLC and WhatsApp Inc. may have joined as petitioners even though the case metadata lists only Facebook, Inc.

No in-house counsel appears in any PTAB filing I located; Facebook's PTAB papers run through Cooley. I found no sealed or under-seal counsel information in the IPR (the PTAB papers in this proceeding are public), and because institution was denied there was no counsel-withdrawal order to consult.

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2. District-court counsel for Facebook (context — same team)

(a) N.D. Cal. No. 4:18-cv-05434-JSW (Facebook, Inc. v. BlackBerry Limited et al.) — Facebook is the actual plaintiff (declaratory-judgment/patent action filed Sept. 4, 2018). All Cooley LLP, Palo Alto unless noted:

• Heidi L. Keefe (178960) — lead; signed the complaint and every substantive filing (e.g., Dkt. 115, Dkt. 121).
• Mark R. Weinstein (193043) — of counsel/lead trial team.
• Matthew J. Brigham (191428) — of counsel; handled discovery/expert-strike motion practice (Dkt. 493).
• Lowell D. Mead (223989) — of counsel; docketing and case-management filings.
• Benjamin S. Lin (232735) — of counsel (Notice of Appearance, Dkt. 17).
• Mark A. Zambarda (314808) — of counsel (Notice of Appearance, Dkt. 16).
• Michael G. Rhodes (116127) and Matthew D. Caplan (260388) — Cooley LLP, San Francisco (101 California St.), of counsel.
• Source: signature blocks at https://www.courtlistener.com/docket/[7805760](/patent/7805760)/facebook-inc-v-blackberry-limited/ and https://storage.courtlistener.com/recap/gov.uscourts.cand.[331602](/patent/331602)/gov.uscourts.cand.331602.80.0.pdf

(b) C.D. Cal. Nos. 2:18-cv-01844-GW-KS and 2:18-cv-02693-GW-KS (BlackBerry v. Facebook/WhatsApp/Instagram; BlackBerry v. Snap) — Facebook as defendant. The court's published § 101 rulings list the defense team as Heidi Lyn Keefe, Lowell D. Mead, Mark R. Weinstein, Andrew Mace, Dena Chen, Elizabeth Lee Stameshkin, Matthew J. Brigham (Cooley LLP, Palo Alto), Michael G. Morton (Cooley LLP, Washington, DC, pro hac vice), Randall R. Lee (Cooley LLP, Santa Monica), and Yar R. Chaikovsky (Paul Hastings LLP, Palo Alto) — see BlackBerry Ltd. v. Facebook, Inc., 487 F. Supp. 3d 870 (C.D. Cal. 2019) (counsel listing), https://caselaw.findlaw.com/court/us-dis-crt-cd-cal/[2109053](/patent/2109053).html. Chaikovsky's appearance signals that Paul Hastings served as co-counsel alongside Cooley in the C.D. Cal. infringement actions; I found no Paul Hastings appearance in the PTAB proceeding.

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3. Summary judgment on reliability of this list

• High confidence: Cooley LLP (Keefe lead; Mace, Weinstein, Liang on the service list) is Petitioner's counsel of record in IPR2019-00787; Cooley's Palo Alto/San Francisco/Washington, DC offices and the individual bar numbers; the district-court roster above.
• Inferred, not confirmed: the exact lead/back-up designations in the '787 power of attorney; whether Morton, Mead, Lin, Zambarda, Rhodes, Caplan, Chen, Stameshkin, Lee, or Chaikovsky appeared in the PTAB matter (they are documented in the district courts only).
• Not found / do not state as fact: any Facebook in-house attorney of record; any local counsel designation in the PTAB (none is required); the text of the '787 institution decision; and petitioner-side counsel in the event of any post-denial rehearing request (I found no rehearing paper for the '787 in the accessible dockets).

I'll research counsel of record for both sides of this dispute — the petitioner/defendant side (Facebook/WhatsApp) and the patent owner (BlackBerry) — across the IPR and the underlying C.D. Cal. case.

Now let me pin down the specific IPR2019-00787 filings (petitioner and patent-owner counsel) and BlackBerry's district-court team.

Let me try to retrieve the actual IPR2019-00787 papers (petition mandatory notices and patent owner's preliminary response) to identify counsel of record in this specific proceeding.

Counsel of Record — Role Mapping First

One clarification before the names, because it changes who counts as "defense" counsel here:

• In IPR2019-00787 itself, Facebook, Inc. is the petitioner and BlackBerry Limited is the patent owner / respondent (the party defending the '236 patent). BlackBerry bears the "defendant" caption label only because this IPR is captioned in reverse of the underlying infringement suit.
• In the underlying infringement case — BlackBerry Limited v. Facebook, Inc., No. 2:18-cv-01844-GW-KS (C.D. Cal.) — the defendants are Facebook, Inc., WhatsApp Inc., and Instagram, LLC (WhatsApp alone was accused on the '236 patent, Dkt. 669 at 4 n.3).

So below I give you both sets: (A) the defense-side team for Facebook/WhatsApp/Instagram, which is also the petitioner-side team in this IPR, and (B) BlackBerry's team, which defends the patent before the Board.

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A. Facebook, Inc., WhatsApp Inc., Instagram, LLC — Defendants below / Petitioners in IPR2019-00787

Firm: Cooley LLP (primary: 3175 Hanover Street, Palo Alto, CA 94304; secondary: 101 California Street, San Francisco; and 1299 Pennsylvania Ave. NW, Suite 700, Washington, D.C. 20004). Cooley is the firm that filed and prosecuted the stay motion listing IPR2019-00787 among the petitions, and is petitioners' counsel of record across the sibling Facebook-v.-BlackBerry IPRs.

In-house (spokesman, not counsel of record): Paul Grewal, then Facebook Deputy General Counsel, publicly defended the suit in March 2018 press (Ars Technica; BBC). He is not listed as counsel of record on any filing I could locate.

⚠️ Verification gap specific to this IPR: I could not retrieve the IPR2019-00787 petition's mandatory notices (37 C.F.R. § 42.8(b)(3)) or its power of attorney, so I cannot quote the exact lead/back-up designation on the '236 petition itself. Cooley's status as petitioners' counsel for the Facebook entities is established from (i) the sibling IPRs against the same BlackBerry portfolio (IPR2019-00940, -00941, -00942, -00923, -01511, -00829), where Keefe/Weinstein/Mace are the named petitioner counsel, and (ii) the Cooley-drafted stay motion that lists IPR2019-00787 as a Facebook Defendants' petition (Dkt. 161-1).

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B. BlackBerry Limited — Patent Owner here / Plaintiff below

Firm: Quinn Emanuel Urquhart & Sullivan, LLP (IPR team: 51 Madison Ave., 22nd Floor, New York, NY 10010; 50 California St., 22nd Floor, San Francisco; litigation team: 865 S. Figueroa St., 10th Floor, Los Angeles; 555 Twin Dolphin Dr., Redwood Shores).