HBCU Messaging US LP (f/k/a Rembrandt Messaging Technologies II, LP), a subsidiary of the HBCU Technology Foundation, has accused Apple and Green Dot (1:24-cv-01199) of infringing seven mobile messaging patents in a single Western District of Texas complaint. Apple is accused of infringement through the provision of the Apple Cash service and supporting hardware (e.g., laptops, smartphones, and smartwatches) and software (e.g., Apple's Messages app and related servers/infrastructure) products, while Green Dot is targeted over the implementation of its payment technology in the Apple Cash service. This litigation is not the first between the plaintiff and Apple; the new complaint recounts in some detail the history of a German action filed against Apple ("and others") in June 2015, an action that remains active today.
The plaintiff describes its asserted patents (8,918,127; 11,012,827; 11,089,450; 11,653,182; 11,653,183; 11,991,600; 11,991,601) as related to a "messaging system that can utilize either a short message service ('SMS') or packet switched message service ('PSMS')". They belong to a family of 21 patents issuing between March 2013 and May 2024, with prosecution of at least one related application continuing before the USPTO. The family has an earliest estimated priority date in July 2007 based on the filing of an application in Australia. Graham Merrett is the family's sole named inventor.
Merrett tags himself on social media as a "CTO and leader of high performance engineering teams", currently with OtherLevels (a platform for sports betting), since August 2017, and with Messmo—Messmo Technologies Pty. Ltd., an Australian entity and the patents' original assignee—from 2007-2009. He describes Messmo as an "early to market mobile over the top (OTT) messaging service, acquiring over 2 million subscribers". In its complaint, HBCU Messaging pleads on information and belief that "from 2007 through 2010, Messmo was a mobile internet texting platform that enabled users to share text and attachments such as audio, images and video with other Messmo users and non-users alike through its free downloadable application" and that "Messmo ceased commercial operations in 2009 or 2010".
In 2014, Messmo assigned a portfolio of patents, including the asserted family, to Rembrandt Messaging Technologies, LP (later renamed "HBCU Messaging International, LP"), which moved the US assets to the plaintiff, Rembrandt Messaging Technologies II, LP, later renamed HBCU Messaging US. At the time, per the complaint (pleaded again, "on information and belief"), "both Rembrandt Messaging and Rembrandt Messaging II were controlled, directly or indirectly, by" Rembrandt IP Management, LLC, an IP monetization firm. Ten litigation campaigns fall under the Rembrandt IP umbrella, between September 2005 and September 2023. John T. Meli Jr., of later Equitable IP Corporation notoriety, acted as the patent counsel for Rembrandt IP during part of this time.
At a point in time not identified in the complaint, those running the Rembrandt entities holding the former Messmo patents decided "to work with the HBCU Tech Foundation regarding the Asserted Patents, as well as other patents assigned from Messmo". HBCU Messaging US pleads that it is jointly owned by HBCU Tech Holding I, LLC and HBCU Tech Holding II, LLC, each a wholly owned subsidiary of the HBCU Technology Foundation, "a 501(c)(3) nonprofit organization that was formed . . . by the National Association for Equal Opportunity in Higher Education ('NAFEO') . . . the only national membership association of all of the nation's HBCUs and Predominantly Black Institutions (PBIs)". The apparent intent here was to "spur[] technological innovations, and support[] technology programs within the nation's Historically Black Colleges and Universities ('HBCUs'), and act[] as a collective technology transfer organization for all of the nation's HBCUs that lack such function or could otherwise utilize such support".
The plaintiff pleads that on June 29, 2015, "Rembrandt Messaging (then the owner of German patents within the same international patent family as the Asserted Patents), filed suit against Apple and others in the German Court in the Regional Court of Düsseldorf", asserting a European counterpart of the US patents newly asserted against Apple in the Western District of Texas. Apple apparently responded with an initially successful nullity action that invalided the claims of that EP over certain prior art, but subsequent appeals, in light of "new testing" from Rembrandt Messaging—now HBCU International Messaging—have led to an agreement that a "supplement expert report" on validity will be issued, while the underlying affirmative lawsuit is remains pending but stayed. HBCU Messaging US pleads knowledge and ultimately willfulness based on this history, as well as related communications between the parties.
For some of the asserted patents, infringement is pegged to just Apple, while for others, HBCU Messaging US pleads that Apple and Green Dot "have and continue to jointly directly infringe". The complaint casts a wide net of accused products: "The Accused Instrumentalities include: (1) Apple's Messages App; (2) Apple's Messages App operating with Apple Cash; (3) Apple's Messages App, alone or in conjunction with Apple Cash, along with any other software operating on Apple Devices (as defined below) that perform any of the functionalities set forth in the attached claim chart Exhibits demonstrating infringement of the Asserted Patents ('Claim Charts,' attached as Exhibits 2, 4, 6, 8, 10, 12, and 14); (4) Apple's servers and infrastructure that support or otherwise provide functionality for iMessage, Apple's Messages App, and/or Apple Cash; (5) devices sold or offered for sale by Apple, including but not limited to the Apple iPhone, iPad Watch and MacBook, that utilize Apple's Messages App and/or Apple Cash (generally, 'Apple Devices'); (6) any WiFi routers offered or sold by Apple".
Delvin Law Firm LLC and Shore Law Firm represent HBCU Messaging US. The new case has yet to be assigned to a specific judge. 10/7, Western District of Texas.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
