Yar R. Chaikovsky

Paul Hastings LLP

Palo Alto

Patent litigation

Chaikovsky is co-chair of Paul Hastings LLP's IP practice with a specialty in invalidity challenges under Section 101 of the Patent Act. Recent matters include work for clients Trend Micro Inc., Snap Inc., HTC Corp., H.I.G. Capital LLC, Xtera Inc., Twitter Inc. and Canon Inc.

He is currently defending social media giant Snap, the developer of Snapchat, against claims of patent infringement by personal digital assistant maker BlackBerry Ltd. over six patents related to mobile messaging technology.

In its complaint, BlackBerry alleges to have invested billions of dollars over the past decade in it research and development -- including its patent portfolio -- which it has sought to enforce. It is also suing Facebook Inc., Instagram, Twitter Inc. and WhatsApp Messenger. BlackBerry Ltd. v. Snap Inc., 18-CV02693 (C.D. Cal., filed April 3, 2018).

BlackBerry contends the defendants co-opted its pioneering work in the mobile messaging arena. The stakes are high.

"They were fuzzy, BlackBerry claims two of the patents are worth multiple hundreds of millions of dollars from these defendants," Chaikovsky said. "I think they calculated a little incorrectly."

From the start of the case, U.S. District Judge George H. Wu of Los Angeles let the parties know he uses a landline. After the claim construction hearing last fall, things were looking up for his client, Chaikovsky said.

"It became clear our positions as a defendant were correct, not overreaching. The plaintiff makes broad statements, but that causes problems for them because the broader you go, the less tethered to the real world your claims become."

Wu issued a tentative summary judgment order holding that two of the patents are ineligible for protection under Section 101. The judge concluded the patents, which BlackBerry says represent improved methods for deploying targeted advertising, are merely "dressing up the abstract concept of collecting and compiling information."

Chaikovsky also persuaded Wu to invalidate two additional patents. In October, Wu granted Snap summary judgment, finding ineligible claims of four of the six patents originally asserted. BlackBerry then moved to dismiss the case in order to appeal the ruling.

The defendant's claims are unlikely to win reversal, Chaikovsky said.

"For instance, BlackBerry took the concept of advertising and put it on the internet. There's nothing unique about putting it on a mobile device. You can tell how I feel about their chances on appeal -- not good," he said. "It's stuff that maybe 20 years ago might have been asserted, but now it just is not patentable.

"Look at it like this: Edison invented a light bulb filament that lasted 13 hours. Now that was an invention. You know, it's always fun to win. We're litigators. That's what we live for."

-- John Roemer