Litigation

Maxell, Ltd. v. BlackBerry Corporation et al.

settled/closed

1:17-cv-01446

Filed
2017-10-13
Terminated
2019-03-29

Patents at issue (1)

8170394

Plaintiffs (1)

Summary

Maxell sued BlackBerry Corporation and BlackBerry Ltd. in Delaware district court. BlackBerry filed an IPR on the '394 patent and the parties settled, with the case dismissed/closed on March 29, 2019.

Case overview & background

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

I'll research this case thoroughly using web searches.

Key legal developments & outcome

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

I'll research this case across multiple sources. Let me start with several searches.

Let me dig into the docket, the IPRs, and the motion to dismiss ruling.

Let me get the full docket and the complaint details.

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 appearances for this case.

Let me verify the specific attorneys, their firms, and roles.

Counsel of Record for Plaintiff Maxell, Ltd.

Maxell, Ltd. v. BlackBerry Corp. & BlackBerry Ltd., No. 1:17-cv-01446-MN (D. Del., filed Oct. 13, 2017; closed Mar. 29, 2019) — patent-in-suit: U.S. Pat. No. 8,170,394.

Maxell used a two-tier structure typical of D. Del.: a Delaware firm as local counsel of record and Mayer Brown LLP (Washington, D.C. / Chicago) as lead/out-of-state counsel admitted pro hac vice. The most directly probative docket document is D.I. 47 (Notice of Service of Maxell's Initial Infringement Contentions, Feb. 20, 2019), which lists the full Maxell team under an "OF COUNSEL" block and signs Devlin/Gorman as "Attorneys for Maxell, Ltd."; D.I. 48 (Apr. 18, 2019) repeats the Mayer Brown roster. (D.I. 47, D.I. 48)

Lead counsel

Attorney Role Firm / Office Note
Jamie B. Beaber Lead counsel for Maxell (PHV; moved for admission Oct. 2017) Mayer Brown LLP, 1999 K St. NW, Washington, D.C. Mayer Brown's lead lawyer on Maxell's global enforcement campaign; he has sworn in PTAB filings that he is "lead counsel for the plaintiff, which includes Patent Owner Maxell, Ltd." in the parallel Maxell v. ZTE case. Later led the team that won a $111.7M EDTX jury verdict for Maxell against Samsung (May 2025). (Beaber PHV declaration, Mayer Brown verdict release)

Mayer Brown team (listed as "of counsel" on the Delaware filings)

All admitted pro hac vice per the docket-alarm/unified-patents docket entries (motions filed by local counsel).

Attorney Role Firm / Office Note
Kfir B. Levy Of counsel (PHV, Oct. 2017) Mayer Brown, Washington, D.C. Partner; core member of the Maxell trial team (later on the Samsung $111.7M verdict team).
James A. Fussell, III Of counsel (PHV, Oct. 2017) Mayer Brown, Washington, D.C. Partner; Maxell patent-litigation team.
Tiffany A. Miller Of counsel (PHV, Oct. 2017) Mayer Brown, Washington, D.C. Counsel-level; listed on Maxell's Apple/ZTE litigation teams.
Baldine B. Paul Of counsel (PHV, Oct. 2017) Mayer Brown, Washington, D.C. Listed on Maxell appeals/trial teams (e.g., Maxell v. Apple, E.D. Tex. 5:19-cv-00036).
Saqib J. Siddiqui Of counsel (PHV, Oct. 2017) Mayer Brown, Washington, D.C. Partner; part of the Maxell trial team (Samsung verdict).
Alison T. Gelsleichter Of counsel (PHV, Oct. 2017) Mayer Brown, Washington, D.C. Counsel-level; Maxell team.
Jonathan Weinberg Of counsel (PHV, Feb. 2018) Mayer Brown, Washington, D.C. Associate-level; appears on the final April 2019 Maxell service letter.
Robert G. Pluta Of counsel (PHV, Feb. 2018) Mayer Brown, 71 S. Wacker Dr., Chicago Partner; Mayer Brown's PTAB/IPR-side partner (relevant given BlackBerry's IPR2019-00089 on the '394 patent).
Amanda Streff Bonner Of counsel (PHV, Feb. 2018) Mayer Brown, Chicago Associate at the time; also on Maxell's Apple team.
William J. Barrow; Bryan C. Nese; Michael L. Lindinger Of counsel (appear on 2019 Maxell service filings; separate PHV motions not individually confirmed in the sources reviewed) Mayer Brown, Washington, D.C. Later additions to the Maxell staffing; Nese and Lindinger also appear on the Samsung trial team.

Delaware local counsel of record

Attorney Role Firm / Office Note
Timothy Devlin (D. Del. No. 4241) Local counsel of record from Apr. 2, 2018 through case close; signs the Feb. 2019 service notice as "Attorney for Maxell, Ltd." Devlin Law Firm LLC, 1306 Broom St., Wilmington, DE Well-known Delaware patent litigator; also Maxell's Delaware counsel in the companion D. Del. cases (e.g., Olympus Corp. v. Maxell (D68369) and Maxell v. Olympus, 1:18-cv-00310). Substituted in via Notice of Substitution of Counsel (04/02/2018).
James Gorman (D. Del. No. 6284) Local counsel (same Devlin Law Firm block) Devlin Law Firm LLC, Wilmington, DE Delaware IP litigator; co-signed the Maxell service filings.
Benjamin J. Schladweiler Original Delaware counsel of record (filed the initial pleading-stage motions, incl. the Oct. 2017 PHV motions); terminated 04/02/2018 Wilmington, DE — contemporaneous secondary profiles attribute the 2017 filing to Greenberg Traurig LLP (his current firm, schladweilerb@gtlaw.com); he was previously a Bayard, P.A. director Delaware patent litigator who routinely serves as local counsel. ⚠️ Firm attribution for the 2017–18 window is drawn from a third-party attorney profile (Patexia) rather than a primary filing; the PACER caption/signature block for the original complaint would confirm the firm name at filing. (Patexia profile, docket)

Caveats and verification notes

  • No Maxell in-house counsel appears on this docket; Maxell (a Japanese operating company/NPE database "product company" plaintiff) litigated through outside counsel only.
  • The list above is drawn from docket-derived documents (D.I. 47, D.I. 48, the PHV motions) and third-party docket aggregators (Justia Dockets, UniCourt, Unified Patents, Docket Alarm). Some pro hac vice motions are known to exist (Beaber, Levy, Fuss

Defendant representatives

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

I'll research the counsel of record for the BlackBerry defendants in this case.

Let me dig deeper into the docket and counsel designations for the BlackBerry defendants.

Let me pull the docket sheet and confirm the BlackBerry-side counsel of record.

Counsel of Record for the Defendants (BlackBerry Corporation and BlackBerry Ltd.)

Bottom line: The public record shows BlackBerry was defended in the Delaware action by McGuireWoods LLP (the principal/lead defense firm, with attorneys admitted pro hac vice) working with Barnes & Thornburg LLP as Delaware local counsel. Separately, BlackBerry was represented by Oblon, McClelland, Maier & Neustadt, LLP in the parallel PTAB proceedings. No in-house counsel appear on the public docket for this case.

1. Principal defense firm — McGuireWoods LLP

These attorneys entered pro hac vice in the Delaware case; the docket reflects PHV motions filed by BlackBerry Corporation and BlackBerry Ltd. for each of them:

Name Role Firm / Office Notes
Brian C. Riopelle Lead / principal defense counsel (PHV) McGuireWoods LLP — Gateway Plaza, Richmond, VA Longtime McGuireWoods IP litigator; Richmond-based patent trial lawyer.
Jason W. Cook Defense counsel (PHV) McGuireWoods LLP — Dallas, TX Texas IP litigator; among the BlackBerry PHV entrants.
George B. Davis Defense counsel (PHV) McGuireWoods LLP — Richmond, VA PHV motion was filed jointly for Davis and Tu.
Shaun W. Hassett Defense counsel (PHV) McGuireWoods LLP — Dallas, TX Named in the BlackBerry PHV motion.
Meghan M. Rachford Defense counsel (PHV) McGuireWoods LLP — Atlanta, GA Separate PHV motion filed by BlackBerry.
Kuan-Chieh Tu Defense counsel (PHV) McGuireWoods LLP — Dallas, TX PHV motion filed jointly with George B. Davis.

Source: D. Del. C.A. No. 1:17-cv-01446, Doc. 47 (Maxell's Notice of Service of Disclosure of Initial Infringement Contentions, dated Feb. 20, 2019), which lists the McGuireWoods attorneys as opposing counsel served by e-mail (jcook@, shassett@, gtu@, briopelle@, gdavis@, mrachford@mcguirewoods.com); corroborated by the Unified Patents litigation portal docket entry list showing PHV motions "filed by BlackBerry Corporation, BlackBerry Ltd." for Cook, Riopelle, Hassett (one motion); Rachford (separate motion); and Davis and Tu (joint motion).

2. Delaware local counsel — Barnes & Thornburg LLP

Name Role Firm / Office Notes
Chad S.C. Stover (Del. Bar No. 4919) Local counsel (Delaware) Barnes & Thornburg LLP — Wilmington, DE Delaware first-chair IP trial lawyer; ranked in Chambers USA (IP – Delaware); frequent Delaware local counsel in patent cases. Listed on the service list as BlackBerry's Delaware counsel.

Source: Doc. 47 lists "Chad S.C. Stover (No. 4919), Barnes & Thornburg LLP, [Wilmington, DE]" among the counsel served with Maxell's infringement contentions, i.e., as defense-side Delaware counsel. Note the address given in that filing (1000 N. West Street, Suite 1500, Wilmington, DE 19801) differs from Barnes & Thornburg's currently published Wilmington address (222 Delaware Avenue, Suite 1200); I'd treat the current address as the firm's standing office rather than a fact specific to this filing.

3. Related PTAB representation — Oblon, McClelland, Maier & Neustadt, LLP

BlackBerry's IPR petitions on the '394 patent (and the companion patents) were not handled by McGuireWoods/Barnes & Thornburg but by Oblon:

Name Role Firm
W. Todd Baker Petitioner's counsel (registered practitioner) Oblon, McClelland, Maier & Neustadt, LLP
Marc Weinstein Petitioner's counsel Oblon
Christopher Ricciuti Petitioner's counsel Oblon
Ali H. Allawi Petitioner's counsel Oblon
Michael D. West Petitioner's counsel Oblon
Stephen McBride Backup counsel only (pro hac vice, granted Jan. 23, 2019) (PHV — Board order restricts him to backup counsel)

Source: BlackBerry Corp. v. Maxell, Ltd., IPR2019-00089 (and IPRs -00087, -00088, -00095, -00097), Board Order granting Petitioner's Motion for Pro Hac Vice Admission of Stephen McBride (Jan. 23, 2019), which lists the Oblon attorneys as Petitioner's counsel; see also IPR2019-00089, Paper 15 (Termination Decision, Apr. 29, 2019).

Caveats and flags

  • Which McGuireWoods attorney was "lead" is not stated in a single authoritative filing I could retrieve. The docket shows the firm entered as a group via PHV; I have inferred Riopelle (Richmond) as the most senior/lead name, but the case materials do not designate a formal lead counsel for the defendants. Treat the lead/of-counsel labels above as firm/office-based, not as a court-recorded title.
  • No in-house counsel for BlackBerry appear on the public docket.
  • Contradiction to flag (dates): The case metadata lists the case as terminated 2019-03-29, but the PTAB's IPR2019-00089 termination decision (Paper 15) recites that the district court case was dismissed on April 22, 2019, and reports an April 23, 2019 joint motion to terminate the IPR. The March 29, 2019 date matches the IPR institution date ("We instituted trial … on March 29, 2019"), so the metadata termination date appears to conflate the two events. Worth verifying against the actual DE docket closing entry.
  • Patent scope: The metadata lists only the '394 patent, but the same parties litigated a family of patents in Delaware (the BlackBerry IPR series covered U.S. Pat. Nos. 6,765,616; 6,973,334; 8,170,394; 7,995,897; and 9,100,604). The '394 patent was one of several at issue.
  • Do not confuse sides: In this Delaware case, Mayer Brown (Robert G. Pluta, Amanda S. Bonner, James A. Fussell III, Saqib J. Siddiqui, Jamie B. Beaber, Kfir B. Levy, Tiffany A. Miller, Baldine B. Paul, Alison T. Gelsleichter, William J. Barrow, Bryan C. Nese, Michael L. Lindinger) plus the local firms Greenberg Traurig (Benjamin J. Schladweiler, later substituted out) and Devlin Law Firm (Timothy Devlin, James Gorman) represented Maxell, the plaintiff — not BlackBerry. Some search-result snippets juxtapose both sides' counsel; the Mayer Brown names are Maxell's, not the defendants'.