HBCU Messaging US LP v. Apple Inc.

This case, HBCU Messaging US LP v. [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) and Green Dot Corporation, Case No. 1:24-cv-01199, is a patent infringement lawsuit filed in the U.S. District Court for the Western District of Texas. The plaintiff, HBCU Messaging US LP, is a limited partnership and a subsidiary of the HBCU Technology Foundation, a 501(c)(3) nonprofit organization. The HBCU Technology Foundation aims to spur technological innovation, support technology programs at Historically Black Colleges and Universities (HBCUs), and act as a technology transfer organization for these institutions, with revenue from patent licensing intended to fund its operations and be remitted to member HBCUs. HBCU Messaging US LP was formerly known as Rembrandt Messaging Technologies II, LP, and its patent portfolio was originally assigned from Messmo to Rembrandt Messaging Technologies, LP, an IP monetization firm, before being transferred to the HBCU Technology Foundation's subsidiaries. This indicates HBCU Messaging US LP operates as a patent assertion entity (PAE) or non-practicing entity (NPE). The defendants are Apple Inc., a well-known technology company, and Green Dot Corporation, a payment platform company whose technology is utilized in Apple Cash.

HBCU Messaging US LP alleges that Apple's Apple Cash service, along with its supporting hardware (e.g., iPhones, smartwatches) and software (e.g., the Messages app and related servers/infrastructure), infringes seven mobile messaging patents. Apple Cash is a peer-to-peer payment system integrated into Apple's Messages app and Wallet, allowing users to send, receive, and request money digitally, and to spend it via Apple Pay. Green Dot Corporation is specifically accused of infringement related to its payment technology's implementation within the Apple Cash service. The seven patents asserted are US Patent Nos. 8,918,127; 11,012,827; 11,089,450; 11,653,182; 11,653,183; 11,991,600; and 11,991,601. These patents generally relate to messaging systems utilizing SMS or packet-switched message services and collectively claim improvements to computerized messaging systems.

The case is currently in the pre-trial phase within the U.S. District Court for the Western District of Texas, Austin Division. While not explicitly stated in the provided snippets, patent cases filed in the Waco Division of the Western District of Texas were historically often assigned to Judge Alan D. Albright, who was known for attracting patent litigation to the district due to his patent-friendly procedures and fast-track scheduling orders. However, a 2022 rule change made it impossible for plaintiffs to guarantee their cases would be assigned to him, and Judge Albright's upcoming retirement has raised questions about the district's future prominence. Nonetheless, the Western District of Texas, along with the Eastern District of Texas, remains a popular venue for patent filings, particularly for NPEs. The case is notable due to the plaintiff being a subsidiary of a nonprofit organization supporting HBCUs, aligning with a trend of NPEs asserting patent portfolios. The ongoing parallel Inter Partes Review (IPR) proceedings at the PTAB, initiated by Apple against at least one of the asserted patents, also add a layer of complexity to the litigation. This linkage between district court litigation and PTAB challenges is a common characteristic of modern patent disputes involving NPEs and major technology companies.

The key legal developments and outcomes for HBCU Messaging US LP v. Apple Inc., Case No. 1:24-cv-01199, are as follows:

Legal Developments and Outcomes (Chronological Order)

1. Filing & Initial Pleadings:

• October 7, 2024: HBCU Messaging US LP filed its initial Complaint for Patent Infringement against Apple Inc. and Green Dot Corporation in the U.S. District Court for the Western District of Texas. The lawsuit alleges infringement of seven mobile messaging patents: US Patent Nos. 8,918,127; 11,012,827; 11,089,450; 11,653,182; 11,653,183; 11,991,600; and 11,991,601.
• November 5, 2024: The summons and complaint were served on Apple Inc.
• January 24, 2025: HBCU Messaging US LP filed a First Amended Complaint.

2. Pre-trial Motions of Substance:

• April 15, 2025: The case was reassigned from Judge Robert Pitman to Judge Alan D. Albright for all proceedings.
• No substantive motions to dismiss or transfer were explicitly found in the provided snippets. However, motions to stay pending IPR are a common feature of patent litigation, though no specific filing date for such a motion was identified.

3. Claim Construction (Markman) Outcomes:

• September 22, 2025: HBCU Messaging US LP filed its Opening Claim Construction Brief. Apple also filed its Opening Claim Construction Brief on this date.
• October 24, 2025: Both Apple and HBCU Messaging US LP filed their Responsive Claim Construction Briefs.
• January 23, 2026: A Markman (claim construction) hearing was held.
• January 28, 2026: The Court entered its final claim constructions for the disputed terms in the asserted patents.

4. Discovery Milestones:

• January 21, 2026: Fact discovery officially opened, following the Markman hearing.
• October 6, 2026: Fact discovery is scheduled to close.
• November 10, 2026: Expert reports are due.

5. Trial Events, Verdict, and Post-trial Motions:

• July 12, 2027: A jury trial is currently scheduled to commence.
• No trial events, verdicts, or post-trial motions have occurred as the case is in its pre-trial phase.

6. Settlement, Dismissal, Judgment, or Appeal:

• February 10, 2026: Parties asserting claims for relief were due to submit written settlement offers to opposing parties.
• March 10, 2026: Opposing parties were due to respond in writing to the settlement offers.
• The case remains active and pending in the U.S. District Court for the Western District of Texas.

7. Parallel PTAB IPR/PGR Proceedings:
Apple has initiated Inter Partes Review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) against several of the asserted patents:

• IPR2025-01486 (U.S. Patent No. 8,918,127):
  • August 29, 2025: Apple Inc. filed a petition for IPR.
  • February 18, 2026: The PTAB issued an institution decision and the IPR was terminated on the same day, indicating that institution was likely denied.
• IPR2025-01493 (U.S. Patent No. 11,089,450):
  • August 29, 2025: Apple Inc. filed a petition for IPR.
  • February 17, 2026: The PTAB issued a Director Discretionary Decision to deny institution of the IPR.
  • April 19, 2026: An Order Denying Director Review of the institution decision was issued, affirming the discretionary denial. This means the '450 patent will not be reviewed by the PTAB.
• IPR2026-00109 (U.S. Patent No. 11,012,827):
  • November 4, 2025: Apple Inc. filed a petition for IPR.
  • April 14, 2026: The PTAB instituted the IPR, meaning the proceeding is now active and will move forward to determine the patentability of the challenged claims.

HBCU Messaging US LP is represented by counsel from Devlin Law Firm LLC and Shore Law Firm in HBCU Messaging US LP v. Apple Inc., Case No. 1:24-cv-01199, in the U.S. District Court for the Western District of Texas.

Based on available filings, the following attorneys are associated with the plaintiff's representation:

Devlin Law Firm LLC

• Timothy Devlin
  • Role: Counsel (Lead Counsel in parallel PTAB proceedings).
  • Firm & Office Location: Devlin Law Firm LLC, Wilmington, DE.
  • Relevant Experience: Represents patent owners in district court litigation and serves as lead counsel in Inter Partes Review (IPR) proceedings.
• Neil Benchell
  • Role: Counsel (Pro Hac Vice, Backup Counsel in parallel PTAB proceedings).
  • Firm & Office Location: Devlin Law Firm LLC, Wilmington, DE.
  • Relevant Experience: Involved in patent litigation and PTAB proceedings, supporting patent owners.

Shore Law Firm

• Michael Shore
  • Role: Counsel.
  • Firm & Office Location: Shore Law Firm, Dallas, Texas.
  • Relevant Experience: The firm focuses on intellectual property litigation and is recognized for its work in the area.
• Zachary Della Porta
  • Role: Counsel.
  • Firm & Office Location: Shore Law Firm, Dallas, Texas.
  • Relevant Experience: Practices patent litigation, representing plaintiffs in intellectual property disputes.

It's important to note that Devlin Law Firm LLC and Shore Law Firm have been identified as representing HBCU Messaging US in this case. In particular, Timothy Devlin and Neil Benchell of Devlin Law Firm LLC are explicitly listed as Lead and Backup Counsel, respectively, for HBCU Messaging US LP in related PTAB IPR proceedings concerning one of the asserted patents. Both firms and the listed attorneys are signatories to filings in the district court case.

In HBCU Messaging US LP v. Apple Inc. and Green Dot Corporation, Case No. 1:24-cv-01199, the defendants are represented by counsel from several prominent law firms known for their intellectual property and litigation expertise.

Counsel for Apple Inc.

Apple Inc. is primarily represented by attorneys from Kirkland & Ellis LLP and Gibson, Dunn & Crutcher LLP, along with local counsel.

Kirkland & Ellis LLP

• John C. O'Quinn
  • Role: Lead Counsel.
  • Firm & Office Location: Kirkland & Ellis LLP, Washington, D.C.
  • Relevant Experience: A highly experienced patent litigator, O'Quinn has a strong track record representing major technology companies like Apple in high-stakes patent infringement cases, including appearances before the Federal Circuit. He was involved in the "smartphone wars" representing Apple against Nokia and HTC.
• Jeanne M. Heffernan
  • Role: Counsel.
  • Firm & Office Location: Kirkland & Ellis LLP, Washington, D.C. (likely, as part of O'Quinn's team).
  • Relevant Experience: Frequently appears on patent litigation filings for Apple.
• Kfir B. Levy
  • Role: Counsel.
  • Firm & Office Location: Kirkland & Ellis LLP.
  • Relevant Experience: Often works on patent litigation matters for major tech clients.

Gibson, Dunn & Crutcher LLP

• Robert P. Toth
  • Role: Lead Counsel.
  • Firm & Office Location: Gibson, Dunn & Crutcher LLP, Dallas, Texas.
  • Relevant Experience: Gibson Dunn frequently represents Apple in significant litigation, including patent and antitrust cases. The firm has a strong presence in technology litigation.
• Nathaniel T. Garrett
  • Role: Counsel.
  • Firm & Office Location: Gibson, Dunn & Crutcher LLP, Dallas, Texas.
  • Relevant Experience: Involved in intellectual property litigation.
• Ryan J. Bachtell
  • Role: Counsel.
  • Firm & Office Location: Gibson, Dunn & Crutcher LLP, Dallas, Texas.
  • Relevant Experience: Focuses on complex commercial and intellectual property disputes.

Local Counsel for Apple Inc.

• D. Neal Kelly Jr.
  • Role: Local Counsel.
  • Firm & Office Location: Kelly Hart & Hallman LLP, Fort Worth, Texas.
  • Relevant Experience: Kelly Hart & Hallman is a regional firm frequently tapped by Apple for "boots-on-the-ground" courtroom expertise in the Western District of Texas, a hotbed for patent cases.

Counsel for Green Dot Corporation

While specific attorneys for Green Dot Corporation were not explicitly detailed in the search results for this case, Green Dot Corporation is named as a co-defendant. Generally, in multi-defendant patent cases, each defendant retains its own counsel. Given the nature of the allegations against Green Dot (related to its payment technology in Apple Cash), it is likely they would be represented by a firm with expertise in financial technology and patent litigation.

Firms like Weil, Gotshal & Manges LLP are known for their comprehensive intellectual property practice, including patent litigation in various US District Courts and at the PTAB, and often represent technology companies. It is plausible that Green Dot Corporation might engage a firm with similar capabilities. However, without direct docket entries for Green Dot's counsel, specific names and firms cannot be definitively stated.