MobileIron, Inc. v. BlackBerry Corporation

I'll research this case before drafting.

Good initial findings. Let me verify the docket, rulings, and the full patent set.

Let me pin down the dismissal, any ruling on the anti-SLAPP motion, and press coverage.

Case Overview & Background — MobileIron, Inc. v. BlackBerry Corp., No. 3:20-cv-02877-JCS (N.D. Cal.)

The parties are two competing operating companies, not an NPE and a target — but the case was litigated as a fight about patent-assertion conduct. Plaintiff MobileIron, Inc. (Delaware; HQ at 490 E. Middlefield Rd., Mountain View, CA) was founded in 2007 and sold enterprise mobility management / unified endpoint management (UEM) software — UEM, Access, Sentry, Mobile Threat Defense, and AppConnect — and was a public company (NASDAQ: MOBL) until Ivanti announced its acquisition in late September 2020 (the acquisition is recited in MobileIron's updated PTAB mandatory notices, e.g. IPR2020-01741, Paper 7, Jan. 5, 2021). Defendants are BlackBerry Corporation (Delaware; U.S. subsidiary, then based in Irving, TX) and BlackBerry Ltd. (Waterloo, Ontario), the former RIM handset maker that had pivoted to software/security and, increasingly, patent licensing — MobileIron's First Amended Complaint (Dkt. 32, filed June 29, 2020) alleges BlackBerry publicly describes a portfolio of roughly 38,000 patents and derives "a substantial proportion of its revenue from intellectual property licensing," and notes BlackBerry's 2015 acquisition of Good Technology for $425 million. Counsel: Goodwin Procter (Neel Chatterjee, Monte Cooper) for MobileIron; Hueston Hennigan (John Hueston, Douglas Dixon, Joseph Reiter) for BlackBerry.

The accused technology runs in both directions, which is the single most important thing to understand about this docket. MobileIron's affirmative infringement counts target BlackBerry's enterprise software — "BlackBerry Intelligent Security," the "Enterprise Mobility Suite" (including a UEM service), "Enterprise BRIDGE," and the "QNX CAR Platform for Infotainment" — and assert four MobileIron patents: U.S. 9,426,120 ("Location and Time Based Mobile App Policies" — context/location-conditioned application of device policies), U.S. 10,038,598 ("Leveraging and Extending Mobile Operating System MDM Protocol" — extending native OS mobile-device-management commands), U.S. 8,359,016 ("Management of Mobile Applications"), and U.S. 8,869,307 ("Mobile posture-based policy, remediation and access control for enterprise resources"). The '961 patent named in the case metadata is on the other side of the "v.": U.S. 7,372,961, "Method of Public Key Generation" (Vanstone et al., filed Dec. 26, 2001; issued May 13, 2008), a Certicom-origin cryptography patent that BlackBerry asserted in its Aug. 26, 2019 and Mar. 9, 2020 notice letters. Its claims (1–6, 15–20, 23–28 were challenged) cover rejection-sampling key generation — hashing a random seed, testing whether the hash output is less than the group order q, rejecting and repeating if not, then reducing mod q — i.e., avoiding modulo bias in DSA/ECC key generation. MobileIron did not sue on the '961; it sought a declaratory judgment of non-infringement as to the '961 and nine other BlackBerry patents, coupled with state-law claims for attempted civil extortion, violation of Cal. Bus. & Prof. Code § 17200, unclean hands, and patent misuse, alleging BlackBerry sent meritless notice letters (including on the '469 patent, which MobileIron alleges was "statutorily surrendered" when reissue RE44,746 issued) to extract portfolio licenses.

Procedurally, the case is a short, hard-fought, and ultimately unresolved squabble over pleadings and PTAB leverage. Filed April 27, 2020 in N.D. Cal., San Francisco Division, and assigned to Chief Magistrate Judge Joseph C. Spero (Dkt. 6), with both sides consenting to magistrate jurisdiction (Dkt. 13, 19) — so there was no Article III judge and no possibility of a jury trial absent consent. Venue is unsurprising and essentially uncontested: MobileIron's HQ was in Mountain View, BlackBerry maintained Bay Area offices (331 Fairchild Dr., Mountain View; San Ramon), and BlackBerry's Good Technology subsidiary sat in Sunnyvale. BlackBerry responded with a motion to dismiss and a California anti-SLAPP "special motion to strike" aimed at the extortion/UCL/misuse counts (Dkts. 20, 24; renewed against the FAC at Dkts. 37, 38 on July 17, 2020), with briefing that was heavily sealed and a hearing ultimately set for Nov. 13, 2020 (Dkt. 52). Parallel to the pleadings, the parties filed nine IPRs in eight weeks: BlackBerry petitioned on Sept. 17, 2020 against MobileIron's '120 ('01519), '307 ('01593 and '01594), '016 ('01604), and '598 ('01634); MobileIron petitioned against

I'll research this case systematically, starting with the docket and PTAB records.

Good baseline. Now let me pull the full district court docket and the PTAB termination orders.

Let me get the full docket from CourtListener and the December 2020 dismissal details.

Case Posture Summary

Research caveat: I could not pull PACER directly. The docket below is reconstructed from CourtListener/RECAP, Justia, Docket Alarm, and Unified Patents PTAB mirrors; PTAB papers come from the USPTO PTACTS/docket mirrors. I flag the two or three items I could not independently confirm.

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1. Filing and initial pleadings

MobileIron filed on 2020-04-27 (Dkt. 1), pleading 35 U.S.C. § 145 patent infringement and demanding a jury. The case was assigned to Chief Magistrate Judge Spero; both parties consented to magistrate jurisdiction (Dkt. 13 on 2020-05-12; Dkt. 19 on 2020-05-15), so there was never an Article III judge on this docket.

The First Amended Complaint (2020-06-29, Dkt. 32) is the operative pleading and is unusually aggressive in framing. It is captioned "First Amended Complaint for Patent Infringement, Attempted Extortion, Violation of California Business and Professions Code § 17200, and Declaratory Relief of Non-Infringement, Unclean Hands and Patent Misuse." Its opening paragraph accuses BlackBerry of having "decided to shake companies down by making countless meritless patent assertions," extracting "extortionate license fees," and asserting "patents they know are statutorily surrendered." (FAC text via Docket Alarm)

The FAC asserted three MobileIron patents — the '016 patent (8,359,016, Count I), the '120 patent (9,426,120, Count II), and the '307 patent (8,869,307, Count III) — plus state-law extortion and § 17200 claims and declaratory relief.

Important correction to the case metadata: U.S. Patent No. 7,372,961 is BlackBerry's patent (Vanstone et al., "Method of Public Key Generation," filed 2001-12-26, issued 2008-05-13), not a MobileIron patent. It entered this case only derivatively — as one of the BlackBerry patents MobileIron sought a declaration of non-infringement on, and as the counter-patent BlackBerry used in pre-suit notice letters. MobileIron challenged the '961 in its own IPR petition. So for the '961, MobileIron was the petitioner and BlackBerry the patent owner; in the district court, the '961 was a defensive/DJ patent, not a MobileIron affirmative claim. If a downstream system is keying this case to the '961 as an "asserted patent," that characterization is backwards.

Pre-suit context that shaped the pleadings. BlackBerry's licensing campaign letters (August 26, 2019 and March 9, 2020, from Cole Schotz's Gary R. Sorden) put MobileIron on notice of a long list of BlackBerry patents including the '961, and specifically touted that the '961 "not only survived an IPR petition by Facebook but also survived a summary judgement motion alleging invalidity under Alice and non-infringement." (Cole Schotz letter, filed as an exhibit) That letter is the evidentiary hook for MobileIron's "extortion" theory.

Answer/counterclaims: I could not verify that BlackBerry ever filed an answer with counterclaims. BlackBerry went straight to dispositive motions (below), and the case was dismissed before an answer would customarily be forced.

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2. Pre-trial motions of substance

Anti-SLAPP special motion to strike + Rule 12(b)(6) (the only substantive motions filed)

On 2020-06-18, BlackBerry filed two motions in tandem: a California anti-SLAPP "special motion to strike" (Dkt. 20, docketed as brought "Pursuant to Cal. Code Civ. Proc. Section 415.26" — the docket text appears to contain a typo for § 425.16, which is the anti-SLAPP statute) and a Rule 12(b)(6) motion to dismiss (Dkt. 24). Both were heavily sealed, with dueling administrative sealing motions (Dkt. 21, 22, 25, 26). The anti-SLAPP motion targeted the extortion/§ 17200 theories — a well-chosen vehicle, because it attacks the pre-suit notice letters as petitioning activity. That motion, if granted, would have carried a mandatory attorney's-fee award against MobileIron under § 425.16(c), and it may explain the fee-payment term in the eventual dismissal.

Both motions were directed at the original complaint and became moot when MobileIron amended on 2020-06-29. BlackBerry re-filed both against the FAC on 2020-07-17 (Dkt. 37 motion to strike; Dkt. 38 motion to dismiss), supported by a request for judicial notice. MobileIron opposed both on 2020-07-31 (Dkt. 43, 44), including a declaration from I. Neel Chatterjee. A stipulation and order set the briefing and hearing schedule (Dkt.

I'll research the docket and counsel filings for this case.

Good initial hits. Let me pull the full docket and attorney bios to verify roles and details.

Let me pull the full docket sheet to confirm every appearance and later entries.

Counsel of Record for Plaintiff MobileIron, Inc.

MobileIron, Inc. v. BlackBerry Corporation et al. (BlackBerry Ltd.), No. 3:20-cv-02877-JCS (N.D. Cal.) — assigned to Chief Magistrate Judge Joseph C. Spero; complaint filed April 27, 2020.

All plaintiff-side appearances on the docket were from a single firm: Goodwin Procter LLP. The docket text below is drawn from the PACER docket sheet reproduced as an exhibit in the parallel IPRs (BlackBerry Ex. 1020 in IPR2020-01519; BlackBerry Ex. 1023 in IPR2020-01634) and from the docket aggregators (Justia, Docket Alarm) for the same case.

Related PTAB counsel (not district-court counsel of record)

• Sanjeet K. Dutta (Reg. No. 46,145), Goodwin Procter, Redwood City — lead counsel for MobileIron as petitioner in IPR2020-01741 ('961 patent) and the other MobileIron-v.-BlackBerry IPRs. He does not appear on the N.D. Cal. docket sheet as of the September 10, 2020 docket print, so he was PTAB-only in this matter.

Caveats and sourcing notes

• No in-house MobileIron attorney appears on the docket excerpt I could verify; MobileIron (Mountain View, later acquired by Ivanti in 2020) litigated through outside counsel only.
• Docket completeness: the last full docket print available to me is dated September 10, 2020. Patexia's case summary lists "10 Plaintiff Attorneys" for this case, which suggests additional Goodwin appearances (or a withdrawal/substitution) after that date that I could not individually name or verify. Treat the five names above as the confirmed core of record and the balance as unverified. Nothing indicates any plaintiff-side filing was sealed in a way that hides counsel's identity — the sealing motions (Dkts. 25–27) concerned BlackBerry's motion-to-strike/dismiss papers, not appearances.
• Case posture: this was not a conventional infringement suit on the '961 patent. MobileIron asserted four of its own patents ('016, '120, '307, '598) and sought declaratory judgment of non-infringement as to ten BlackBerry patents including 7,372,961, plus state-law extortion/UCL claims. BlackBerry's Hueston Hennigan team (John Hueston, Moez Kaba, Doug Dixon, Joseph Reiter) won the anti-SLAPP fight; the case was dismissed as settled (termination date reported as Dec. 11, 2020; settlement agreement executed Feb. 22, 2021), with BlackBerry publicly stating MobileIron agreed to pay BlackBerry's legal fees and drop the suit. The related IPRs (IPR2020-01741 and siblings) were terminated in March 2021 on the parties' joint motions, before institution.

Would you like me to follow up with a verification pass on the post-September-2020 docket entries (to resolve the "10 plaintiff attorneys" count) or on Monte Cooper's/Andrew Ong's individual case histories?

I'll research the docket and counsel of record for this case.

Good initial data. Let me verify the docket further, including later appearances and any additional counsel.

Let me pull the fuller docket and verify additional appearances and the in-house/declarant question.

Counsel of Record for Defendant(s) — MobileIron, Inc. v. BlackBerry Corporation et al., No. 3:20-cv-02877-JCS (N.D. Cal.)

Bottom line: Both defendants — BlackBerry Corporation and BlackBerry Ltd. — were represented by the same four-attorney team from the litigation boutique Hueston Hennigan LLP. All four notices of appearance were filed on May 13, 2020 (Dkts. 14–17), roughly two weeks after the April 27, 2020 complaint. Douglas J. Dixon is the attorney PACER designates as LEAD ATTORNEY for both defendants.

Attorneys of record

Firm identification: Hueston Hennigan LLP — a Los Angeles–headquartered trial boutique with a Newport Beach office. Firm case summary: "Victory for BlackBerry In Civil Extortion and Unfair Competition Claims" (Dec. 2020), which states the team "forced [MobileIron] to pay Blackberry's legal fees and drop its lawsuit."

Additional team members identified by the firm (not shown as counsel of record in the docket snapshots I could access)

The firm's case write-up credits, in addition to Hueston, Kaba, Dixon, and Reiter: Christina (Christy) Von der Ahe Rayburn, Michael Todisco, Linda Xu, and Neil Anderson. These are almost certainly associates/staff attorneys who worked the matter without filing their own notices of appearance; I could not confirm any of them as of-record counsel, so treat them as litigation-team members rather than counsel of record.

Explicit gaps and caveats

• No in-house counsel appeared of record. Nothing in the docket snapshot (as of Sept. 10, 2020, reproduced as Ex. 1020 in BlackBerry Ltd. v. MobileIron, IPR2020-01519) or the Justia/CourtListener entries shows a BlackBerry legal-department attorney entering an appearance. The only BlackBerry-side individual I found named in the case papers is Gary R. Sorden, whose declaration supported the anti-SLAPP motion (Dkt. 25) and who authored the March 9, 2020 pre-suit infringement notice on Cole Schotz P.C. letterhead. I could not verify whether Sorden is BlackBerry in-house counsel or Cole Schotz outside counsel, and he does not appear as counsel of record — so I am not listing him as such.
• No local counsel. Hueston Hennigan (an L.A./Orange County firm) appeared pro hac vice–style as the only defense firm; no N.D. Cal. local-counsel firm appears on the docket.
• Sealed filings. Defendants' anti-SLAPP special motion to strike and much of its supporting material were filed under seal (Dkts. 22, 25, 26, 29); the underlying papers are not public, so the full defense argument set is not verifiable from open sources.
• PTAB counsel is different. In the parallel IPRs (e.g., IPR2020-01741 on the '961 patent, where BlackBerry Limited was patent owner), BlackBerry was represented by Fish & Richardson — Michael Hawkins (lead), Nicholas Stephens, Christopher Hoff, Andrew Dommer, and Terry Stalford, all Minneapolis. Those attorneys are not counsel in the district court case and should not be conflated with the Hueston Hennigan team.
• Date/outcome discrepancy (unverified). Secondary databases (Patexia/Unified Patents) list the case as "Dismissed – Settled" with a Dec. 11, 2020 termination date, while the IPR settlement agreement was executed Feb. 22, 2021 and the IPRs were terminated in March 2021. I could not confirm from a primary docket source which date is the operative dismissal, or whether the December 2020 event was a conditional dismissal. The prior case summary's "unverified" status on disposition should therefore stand.
• I was unable to retrieve the full post–September 2020 PACER docket in this session; if any additional attorney entered an appearance after Sept. 10, 2020 (e.g., for the settlement/fee proceedings), that would not appear above. Recommend a direct PACER pull of the complete docket sheet for case 3:20-cv-02877-JCS to confirm no later substitutions.