Snap Inc. v. BlackBerry Limited

I'll dig into the docket, the patent, and the related district court case.

Good material. Now let me pin down the July 2020 denial decision, the IPR2019-00941 outcome, and the Federal Circuit appeal.

Let me verify the Federal Circuit outcome and what happened in the instituted Facebook IPR (IPR2019-00941).

Case Overview & Background

A note on framing first: despite the caption, this docket is not an infringement suit. IPR2020-00391 is a PTAB proceeding in which Snap Inc. is the petitioner and BlackBerry Limited is the patent owner. The actual infringement litigation that spawned it was BlackBerry Ltd. v. Snap Inc., No. 2:18-cv-02693-GW-KS (C.D. Cal.), filed April 3, 2018 (per BlackBerry's Preliminary Response, which states "BlackBerry first sued Petitioner for infringing the '351 Patent on April 3, 2018"). Both parties are operating companies, not NPEs: BlackBerry Limited is the Waterloo, Ontario-based successor to Research In Motion — the former BlackBerry handset maker, by 2018-2020 pivoting to enterprise software/security and actively monetizing its patent portfolio; Snap Inc. is the Santa Monica-based maker of Snapchat. BlackBerry is thus a practicing-company plaintiff asserting its own R&D-derived portfolio, though the campaign had a distinctly licensing-driven flavor (it sued Facebook/WhatsApp/Instagram the month before Snap, and Twitter later, all in C.D. Cal.).

Patent and accused technology. The sole patent in this IPR is U.S. Patent No. 8,296,351, "System and Method for Pushing Information to a Mobile Device," issued October 23, 2012 from Application No. 12/726,405, originally assigned to Research In Motion. Claim 1 (the illustrative claim, reproduced in the Board's decision) recites a proxy content server that (i) receives information from network sources and stores it into one of a plurality of "channels" keyed to predefined information categories — the parties stipulated "channel" means simply a memory location; (ii) receives a feedback signal over a wireless network indicating the mobile device's position and uses it to select which channel to push to the device; and (iii) serves static, dynamic, or default advertising information (or content), where combining static with dynamic/default yields an advertisement or information bulletin. Claim 14 is the only other independent claim, adding selection in response to a "triggering event." In one line: a location-triggered, server-side ad/content push architecture for bandwidth-constrained mobile devices. BlackBerry accused the Snapchat mobile application and its location-based content/advertising delivery of infringement; the '351 claim 1/14 and '929 claim 1/9 assertions were resolved on §101 at summary judgment before any infringement mapping was tried, so the public record is thin on which specific Snapchat features were mapped to which elements (see caveat below). The '351 was one of six patents BlackBerry asserted against Snap, alongside the '634 (app-icon notification badges), the '929 (a continuation sharing the '351 specification), and the "action spot" patents ('327, '084).

Posture and why it matters. The district case landed in the Central District of California, Western Division, before Judge George H. Wu (Magistrate Judge Karen L. Stevenson), and was consolidated for pretrial purposes with the Facebook case on September 27, 2018 (Dkt. 92). Venue mattered: BlackBerry chose Snap's home district rather than a plaintiff-friendly Texas venue, and Judge Wu ran the parallel Facebook/Snap/Twitter matters in a coordinated fashion, producing an early §101 knockout — on October 1, 2019 he granted summary judgment that claims 1, 2, 14, 20 and 21 of the '351 (and '929 claims 1, 9, 16) were patent

I'll research this. Note the case metadata is the PTAB IPR (IPR2020-00391), so the "litigation" is the parallel district court suit — let me confirm the details.

Now let me dig into the district court docket, the Markman ruling, summary judgment, appeal, and parallel IPRs.

Very useful. Now let me pin down the first Snap IPR (IPR2019-00830), the IPR2019-00941 outcome, and the district court docket details (answer/counterclaims, stay motions).

Framing note

The metadata case is IPR2020-00391 — a PTAB proceeding, not a lawsuit. The "patent infringement litigation" here is the parallel district court action: BlackBerry Ltd. v. Snap Inc., No. 2:18-cv-02693-GW-KSx (C.D. Cal.), before Judge George H. Wu. It was filed 2018-04-03, consolidated for pretrial purposes with BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-01844-GW-KSx, and it never reached trial — it was resolved on § 101 summary judgment plus a stipulated partial settlement, then affirmed by the Federal Circuit on a Rule 36 affirmance. I've separated the district court track from the PTAB track below and flagged anything I could not verify.

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I. Filing & initial pleadings (2018)

• 2018-03-06 — BlackBerry sues Facebook/WhatsApp/Instagram in C.D. Cal. (No. 2:18-cv-01844), nine patents.
• 2018-04-03 — BlackBerry files the Snap complaint (71 pages), asserting six patents: 8,825,084 ('084, Count I), 8,326,327 ('327, Count II), 8,301,713 ('713, Count III), 8,209,634 ('634, Count IV), 8,296,351 ('351, Count V), 8,676,929 ('929, Count VI). Accused product: the Snapchat app and backend, including Snap Map/heat-map "action spots," message timestamps, app-icon badges, and "push"-based ad delivery. Served 2018-04-06.
• 2018-04-09 — Case transferred from Judge Pregerson/Magistrate Kim to Judge Wu as related to the Facebook case (General Order 16-05).
• 2018-05-29 — Court sets MTD briefing schedule (motion 6/7; opposition 6/28; reply 7/12; hearing 8/2).
• 2018-06-07 — Snap's Rule 12(b)(6) motion to dismiss (Dkt. 24), arguing all six patents are patent-ineligible under § 101 and, alternatively, that willfulness/enhanced damages and pre-suit indirect infringement be struck. Snap also filed a case-management motion to stay pending ruling on the motion to dismiss.
• 2018-06-28/07-12 — BlackBerry's consolidated opposition (Dkt. 38, filed jointly against both defendants on the common patents '634, '351, '929) and Snap-specific opposition (Dkt. 39); Snap reply (Dkt. 41). Both sides filed § 101 supplemental authority (Interval Licensing; BSG Tech).
• 2018-08-21 — MTD ruling (Dkt. 68). Snap's motion granted with prejudice as to claims 1, 5, and 9 of the '713 patent (the timestamp patent — abstract idea of displaying a timestamp based on whether a predetermined duration has elapsed). All other relief denied without prejudice, including the § 101 attacks on the '351 and '929 patents, because "claim construction issues and factual questions preclude dismissal." Per press coverage (Courthouse News, The Recorder, 2018-08-22), the court also dismissed the willful-infringement and pre-suit indirect-infringement allegations without prejudice, with leave to seek amendment after discovery.
• Answer/counterclaims — Snap filed an answer and counterclaims seeking declaratory judgment of non-infringement (First Cause of Action) and invalidity (Second Cause of Action); both are recited and disposed of in the Final Judgment. I could not verify the exact filing date from the sources retrieved (it followed the 2018-08-21 MTD denial; the case later had a pending "Snap's Motion for Leave to File a First Amended Answer and Counterclaims," Dkt. 242-4, which was denied as moot in October 2019).
• 2018-09-27 — The Snap and Facebook cases are consolidated for pretrial purposes (Dkt. 92 in the lead case).

II. Pre-trial motions of substance

Motion to stay pending IPR. On 2019-04-16, the defendants (referenced in BlackBerry's own PTAB exhibit list as applying to both case numbers) filed a Notice and Motion to Stay Pending Inter Partes Review. On **2019-

I'll research press coverage of this IPR proceeding and the broader Snap–BlackBerry patent dispute.

Press coverage: IPR2020-00391 and the underlying BlackBerry–Snap dispute

Bottom line: I found no press article that reports on IPR2020-00391's institution decision itself. Searches on the case caption, the petitioner/patent owner pair, and the '351 patent number returned PTAB filings, PTAB docket aggregators, and the Law360 PTAB case page for "Snap Inc. v. BlackBerry Limited" (which lists the matter as "Institution Denied" but carries no article text) — but no Reuters, Bloomberg Law, Law360 article, IPWatchdog, Patently-O, or trade-press story on the January 2020 petition or the July 13, 2020 denial of institution and joinder to IPR2019-00941. The proceeding appears to have been treated by the press as a follow-on administrative footnote to the district court case, which is where all the actual coverage sits. What follows summarizes that coverage, since it constitutes the entire press record for the dispute over the '351 patent.

The 2018 filing wave. Bloomberg (via the Los Angeles Times, 2018-04-03) reported that BlackBerry sued Snap that day, accusing Snapchat of using patented messaging technology and mirroring the suit filed against Facebook the prior month; it framed the campaign around CEO John Chen's search for licensing revenue amid investor concern about the core software business, and noted BlackBerry had already extracted settlements from Cisco, BLU Products and Avaya. The Verge reported on 2018-04-04 that the 71-page complaint asserted six patents covering mobile mapping, advertising techniques and UI improvements, and specifically called out Snap Maps and the unread-message notification dot; The Verge also reported BlackBerry's claim that Snap's conduct produced "a substantial and undeserved windfall," quoted BlackBerry communications director Sarah McKinney ("We believe there are far more opportunities for partnership than disagreement"), and noted that BlackBerry sought damages, attorneys' fees, and destruction/recall of infringing products, with Snap declining to comment. SlashGear reported on 2018-04-04 that six patents issued 2012–2014 were asserted and that two overlapped the Facebook case, reading the suits as a monetization play by a company that "struggles to survive in a post-BlackBerry world." No outlet reported a damages figure; none appears to have been publicly specified.

The § 101 rulings that ultimately decided the '351 patent. Law360 reported on 2018-08-02 that Judge George H. Wu tentatively denied most of Facebook's and Snap's invalidity bids against seven patents, indicating only one looked invalid under Alice. Law360 followed on 2018-08-22 reporting that the court refused to invalidate the bulk of the patents but held certain claims of one time-stamping patent invalid under Alice. The decisive development was covered by RPX on 2019-10-04, which explained that Judge Wu's October 1, 2019 orders — a sealed one in the consolidated Facebook/Snap case plus a public one in the Twitter case — invalidated claims of the '351 and '929 patents as directed to the abstract idea of targeting ads by location or time, denied summary judgment as to the '120 patent, and granted BlackBerry leave to amend only as to two Twitter-only patents. RPX also supplied the "why it matters" framing the docket does not: it situated the rulings against a post-Berkheimer/Aatrix drop in Alice invalidation rates, from roughly 68% to under half. That judgment is the reason the later IPR petition was, in the Board's own analysis, directed at claims already held invalid or disclaimed — a point no press outlet appears to have covered.

Where accounts diverge, and reporting beyond the record. The most concrete discrepancy is arithmetic: Law360's docket summary of the October 1, 2019 ruling says the judge "declared claims from six BlackBerry patents invalid under … Alice" and gave "a leg-up to Facebook, Twitter and Snap" (Law360 case page), whereas RPX counts claims from four patents invalidated across the two orders (with two more patents left intact and one denied on factual disputes). The court record — the final judgments and the PTAB's own recounting — supports the narrower, patent-by-patent framing rather than a six-patent wipeout, so Law360's summary line reads as a loose aggregate. Reporting also goes beyond the record in the interpretive register: Bloomberg's framing of the suits as Chen's revenue hunt, SlashGear's survival narrative, and Motley Fool's 2018-09-14 piece (via Nasdaq) explicitly airing the criticism that "many critics accused BlackBerry of becoming a 'patent troll'" while arguing the licensing strategy was "a smart business strategy" — the Motley Fool piece also tallied licensing/IP revenue at $63 million, about 30% of BlackBerry's top line, and characterized the PTAB's treatment of the time-stamp patent as a "loss" for BlackBerry. Finally, TheStreet reported that BlackBerry settled the parallel Facebook litigation under a confidential agreement ("We have resolved our disputes pursuant to a confidential agreement and have no further comment," a BlackBerry spokesperson said) and noted BlackBerry shares jumped about 16% to $10.61 on the news; the copy I retrieved carries no visible publication date, so I can't date that report, and no outlet I found reported terms of any Snap resolution — the Snap case instead ended in a November 2019 final judgment and a Federal Circuit appeal, which the press does not appear to have covered either.

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• * 22Exhibit 713.1 _Blackberry Limited v
• BlackBerry first sued Petitioner for infringing the '351 patent on April 3, 2018. On October 1, 2019, the United States District...
• BlackBerry Limited v. Facebook, Inc. et al - February 13, 2020
• Snap Inc. v. BlackBerry Limited - IPR2020-00391
• Snap Inc. v. BlackBerry Limited
• Snap Inc. v. BlackBerry Limited
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Petition for Inter Partes Review of U.S. Patent No. 8,296,351 B2
• UNITED STATES PATENT AND TRADEMARK OFFICE

I'll research this PTAB proceeding and identify Snap's counsel of record.

Let me pull the petition's mandatory notices and the PTAB docket/proceeding documents to confirm Snap's counsel of record.

Let me confirm the full document list/appearances in IPR2020-00391 and check the related Federal Circuit appeal.

Bottom line

A caption note first, because it matters for how you read the list: Snap Inc. is the petitioner in IPR2020-00391, not the plaintiff. Snap was the defendant in the underlying district court case (BlackBerry Ltd. v. Snap Inc., No. 2:18-cv-02693-GW-KS (C.D. Cal.)), where BlackBerry was plaintiff. So the correct question is "who represented the petitioner, Snap." All of Snap's counsel of record in this IPR were from Paul Hastings LLP — three attorneys, no in-house or local-counsel appearance on the PTAB docket.

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Snap Inc.'s counsel of record — IPR2020-00391

Service contact of record: Snap-Blackberry-PH-IPR@paulhastings.com.

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Sourcing and confidence level

• Direct record evidence in this proceeding: BlackBerry's Patent Owner Power of Attorney, filed Jan. 24, 2020 in IPR2020-00391, certifies service on "counsel of record for the Petitioner" as "Yar R. Chaikovsky, David Okano, Chad Peterman, Paul Hastings LLP, 1117 S. California Avenue, Palo Alto, CA 94304" — PTAB P-TACTS document (IPR2020-00391, Patent 8,296,351). This is the strongest confirmation that these three were Snap's counsel of record.
• Power of Attorney for Petitioner: I retrieved the text of the companion IPR2020-00392 POA (same petitioner, same patent owner, same day, Jan. 3, 2020), which appoints Paul Hastings Customer No. 36,183 and names exactly these three practitioners — Docket Alarm copy. I could not pull the native PDF of the IPR2020-00391 POA itself; the 00391 list above is inferred from the 00392 sibling filing plus the 00391 certificate of service. Treat the identity of the three as solid, the lead vs. back-up labeling as highly likely but reconstructed.
• Third-party docket abstract: GreyB/IPVerse lists "Petitioner Counsel — Yar Chaikovsky; Respondent Counsel — James Glass" for IPR2020-00391 (IPVerse) — consistent, but it only captures the lead name.
• Procedural context: The Board denied institution and denied Snap's "me-too" joinder to IPR2019-00941 (Facebook/Instagram/WhatsApp v. BlackBerry) in Snap Inc. v. BlackBerry Ltd., IPR2020-00391, Paper 8 (PTAB July 13, 2020) (Fintiv/§ 314(a) discretionary denial). See IPWatchdog, "Snap's Me-too Joinder Petitions Discretionarily Denied" (July 23, 2020).
• Appellate follow-on: In the consolidated Federal Circuit appeals (21-1130 lead / 21-1150 cross-appeal) from the C.D. Cal. § 101 judgment, Chaikovsky is listed as Snap's Federal Circuit counsel (Justia docket 21-1150; PACER Monitor, Fed. Cir. 20-1258).

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Caveats you should carry forward

1. No in-house counsel appeared on the PTAB docket for Snap in this IPR. (Snap's in-house/other litigation counsel, e.g., Thomas A. Zaccaro, appears only in the C.D. Cal. docket — Dkt. 65, Notice of Appearance, Sept. 13, 2018 — not in the IPR.)
2. No local counsel concept applies at the PTAB, so the "local counsel" row is intentionally absent.
3. Nothing is sealed here. Because institution was denied on July 13, 2020, no protective order or sealing practice ever arose; the petition, POPR, and Paper 8 are public. The gap in my sourcing is retrieval of the native 00391 POA PDF, not any sealing.
4. Other Paul Hastings attorneys (e.g., Michael G. Beckwith, Andrew M. Legolvan, Philip Ou, Anthony Tartaglio) appear in the district court BlackBerry v. Snap/Facebook consolidated litigation and in other Paul Hastings IPR matters, but I found no evidence they entered an appearance in IPR2020-00391. Do not list them as counsel of record in this IPR without a docket entry to support it.
5. For completeness, the patent owner's counsel (the adverse side) was Quinn Emanuel — James M. Glass (lead, Reg. No. 46,729, New York), Sam Stake (back-up, pro hac vice), Ogi Zivojnovic (back-up, Reg. No. 69,516, San Francisco), and John McKee (Reg. No. 65,926) — in case your matter needs the full appearance picture.

Bottom line

This is a PTAB proceeding, so there is no PACER docket sheet and no "local counsel" requirement — the operative appearance record is the Patent Owner's Power of Attorney under 37 C.F.R. § 42.10(b) (filed Jan. 24, 2020) and the Patent Owner's Mandatory Notices. Both name a single firm for BlackBerry Limited: Quinn Emanuel Urquhart & Sullivan, LLP. Nothing in the papers I could locate is sealed, and no attorney other than the Quinn Emanuel team appears for the patent owner.

Counsel of record for BlackBerry Limited (Patent Owner / respondent)

The power of attorney also appoints generally "the Practitioners associated with Customer Number 505708" (Quinn Emanuel's PTAB customer number) — i.e., the firm's PTAB practitioners as a group, not just the four named attorneys.

Corporate signatory (not counsel)

• Keith Bennett, "Authorized Signing Officer, BlackBerry Limited" — executed the § 42.10(b) power of attorney on Jan. 24, 2020. He is a corporate representative, not an attorney of record.

In-house counsel — appeared in the parallel litigation, not on this PTAB record

• Edward R. McGah, Jr., Vice President, Deputy General Counsel – Litigation, BlackBerry Corporation, Laguna Niguel, CA — appears as counsel for BlackBerry in the parallel C.D. Cal. actions (BlackBerry Ltd. v. Snap Inc., No. 2:18-cv-02693-GW-KS; BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-01844-GW-KS). I found no filing in IPR2020-00391 signed by him, so he should not be listed as PTAB counsel of record.

Related Quinn Emanuel litigators (district court only — not of record here)

For completeness on the same patent: James R. Asperger, Victoria F. Maroulis, Jordan R. Jaffe, Yury Kapgan, Kevin P.B. Johnson, Iman Lordgooei, Pushkal Mishra, and Jonathan Tse signed BlackBerry's papers in the C.D. Cal. and N.D. Cal. cases involving the '351 patent. None is listed on the IPR2020-00391 power of attorney, so I would not describe them as counsel of record in this IPR.

Procedural context / caveats

• Petitioner Snap Inc. was represented by Yar R. Chaikovsky, David Okano, and Chad Peterman of Paul Hastings LLP (Palo Alto), per the certificate of service on the Jan. 24, 2020 power of attorney — useful for confirming the service list, not for your defendant question.
• The Board denied institution on July 13, 2020 (Paper 8) and, per the case metadata, also denied Snap's request for joinder to IPR2019-00941 (Facebook/Instagram/WhatsApp v. BlackBerry, also on the '351 patent). Paper 8 is cited in later PTAB briefing for the proposition that it is inefficient to try §§ 102/103 invalidity where the same claims were already held invalid under § 101 in the parallel district court case, and for the Board's Fintiv-style discretionary-denial analysis (Paper 8 at 17).
• Sources: USPTO P-TACTS/PTAB E2E documents for IPR2020-00391 (Patent Owner's Power of Attorney, Jan. 24, 2020; Patent Owner's Mandatory Notices); Quinn Emanuel attorney profiles and the Stake biography exhibit filed in a related IPR; State Bar of California profile for Stake.
• What I could not verify: whether Stake's pro hac vice motion was actually granted before the July 13, 2020 termination (the case was disposed of at the institution stage, so it may never have been reached), and any detailed public biography for Zivojnovic or McKee. I have not invented any of these details; the gaps are flagged rather than filled.