Malikie Innovations Ltd. v. MARA Holdings, Inc. (f/k/a Marathon Digital Holdings, Inc.) — Entry #92

Case 7:25-cv-00222-DC-DTG          Document 92   Filed 04/30/26   Page 1 of 13


                            UNITED STATES DISTRICT COURT
                             WESTERN DISTRICT OF TEXAS
                              MIDLAND-ODESSA DIVISION


Malikie Innovations Ltd. and
Key Patent Innovations Ltd.,
                                 Plaintiffs,
                                                     Case No. 7:25-cv-00222-DC-DTG
                       v.

MARA Holdings, Inc. (f/k/a Marathon Digital
Holdings, Inc.)

                                 Defendant.


MARA’S UNOPPOSED MOTION FOR THE ISSUANCE OF LETTER ROGATORY TO
 THE ONTARIO SUPERIOR COURT OF JUSTICE TO EXAMINE PERSONS AND
          PRODUCE DOCUMENTS OF BLACKBERRY LIMITED


       Case 7:25-cv-00222-DC-DTG                         Document 92               Filed 04/30/26              Page 2 of 13


                                                      Table of Contents
I.       INTRODUCTION .............................................................................................................. ii
II.      BACKGROUND ................................................................................................................ 1
III.     ARGUMENT ...................................................................................................................... 2
         A.        A LETTER ROGATORY IS A PROPER METHOD FOR SEEKING
                   DISCOVERY FROM BLACKBERRY ..................................................................2
         B.        A LETTER ROGATORY IS APPROPRIATE UNDER CANADIAN LAW ........5
         C.        MARA’S DISCOVERY REQUESTS TO BLACKBERRY LIMITED VIA THE
                   PROPOSED LETTER ROGATORY ARE APPROPRIATE .................................5


                                                                   i


      Case 7:25-cv-00222-DC-DTG                             Document 92                Filed 04/30/26               Page 3 of 13


                                                 TABLE OF AUTHORITIES

                                                                                                                                    Page(s)

Cases

BlackBerry Limited et al v. Avaya Inc.,
   No. 3-16-cv-02185 (N.D. Tex.), Dkt. No. 72 ............................................................................2

BlackBerry Limited v. Facebook, Inc. et al,
   No. 2-18-cv-01844 (C.D. Cal.), Dkt. No. 682 ...........................................................................2

El Paso Disposal, LP v. Ecube Labs Co.,
    792 F. Supp. 3d 703 (W.D. Tex. 2025)......................................................................................3

Int’l Bus. Machs. Corp. v. LzLabs GmbH,
    No. W-22-CV-00299-DAE, Dkt. No. 315 (W.D. Tex. Apr. 23, 2024) .....................................2

Intel Corp. v. Advanced Micro Devices, Inc.,
    542 U.S. 241 (2004) ...................................................................................................................2

Lantheus Med. Imaging, Inc. v. Zurich Am. Ins. Co.,
   841 F. Supp. 2d 769 (S.D.N.Y. 2012)........................................................................................4

United States v. Mason,
   919 F.2d 139 (4th Cir. 1990) .....................................................................................................3

McFadden Lyon Rouse LLC v. Lookkin,
  2012 ONSC 2243 at para. 17 (Can.) ..........................................................................................5

MobileIron, Inc. v. BlackBerry Corporation et al,
  No. 3-20-cv-02877 (N.D. Cal.), Dkt. No. 66 .............................................................................1

Q3 Networking LLC v Siemens Canada,
   2021 ONSC 2808 at para. 31 (Can.) ..........................................................................................5

SPS Techs., LLC v. Briles Aerospace, Inc.,
   No. CV 18-9536 MWF (ASX), 2020 WL 12740646 (C.D. Cal. Apr. 14, 2020) ......................4

TruSun Techs., LLC v. Eaton Corp.,
   No. 6-19-CV-00656-ADA, Dkt. No. 67 (W.D. Tex. Mar. 22, 2021) ........................................3

Zingre et al. v. The Queen
   [1981] 2 S.C.R. 392 at 401 (Can.) .............................................................................................6

Statutes

28 U.S.C. § 1651 ..............................................................................................................................4


                                                                      ii


      Case 7:25-cv-00222-DC-DTG                              Document 92                Filed 04/30/26               Page 4 of 13


28 U.S.C. § 1781 ..............................................................................................................................4

35 U.S.C. § 284 ................................................................................................................................6

Canada Evidence Act, RSC 1985, c C-5..........................................................................................4

Other Authorities

Fed. R. Civ. P. 4(f)(2)(B) .................................................................................................................4

Fed. R. Civ. P. 28(b)(1)....................................................................................................................1

Fed. R. Civ. P. 28(b)(1)(B) ..............................................................................................................4


                                                                      iii


      Case 7:25-cv-00222-DC-DTG                Document 92           Filed 04/30/26        Page 5 of 13


I.      INTRODUCTION

        Pursuant to Rule 28(b)(1) of the Federal Rules of Civil Procedure, Defendant MARA

Holdings, Inc. (“MARA”) hereby submits the present Unopposed Motion requesting that the Court

issue a Letter Rogatory for international judicial assistance (the “Letter Rogatory”) seeking

assistance from the Ontario Superior Court of Justice (“Ontario Court”), to compel BlackBerry

Limited (“BlackBerry”), a Canadian corporation, to produce documents specified in Schedule A

(in the manner identified in Schedule B) of the Letter Rogatory and compel a representative of

BlackBerry to testify on behalf of BlackBerry at a deposition on the topics identified in Schedule

C of the Letter Rogatory.1 Plaintiffs Malikie Innovations Ltd. (“Malikie”) and Key Patent

Innovations Ltd. (“KPI”) do not oppose MARA’s motion.

II.     BACKGROUND

        Plaintiffs allege that MARA infringes United States Patent Nos. 10,284,370 (“the ’370

Patent”); 7,372,960 (“the ’960 Patent”); 7,372,961 (“the ’961 Patent”); 8,532,286 (“the ’286

Patent”); 8,666,062 (“the ’062 Patent”); and 8,788,827 (“the ’827 Patent”) (collectively, the

“Asserted Patents”). The Asserted Patents are part of a larger portfolio of patents originally held

by Certicom Corporation (“Certicom”), which are all directed to cryptography (“Certicom Patent

Portfolio”). The Certicom Patent Portfolio was initially assigned from the inventors to Certicom,

then subsequently assigned from Certicom to BlackBerry (as part of Blackberry’s acquisition of

Certicom), and finally from BlackBerry to Malikie. Following its purchase of the Certicom Patent

Portfolio, Malikie asserted the Asserted Patents against MARA to commence this action.

        Between 2018 and 2021, BlackBerry, while still holding the Certicom Patent Portfolio,

entered into at least three settlement agreements to resolve actions involving the Certicom Patent


1
 The proposed Letter Rogatory, Schedules A-C, and Exhibit A to Schedule A are attached as Exhibit 1 to this
Motion.


                                                        1


       Case 7:25-cv-00222-DC-DTG           Document 92          Filed 04/30/26   Page 6 of 13


Portfolio, including the ’961 Patent asserted in this action. See MobileIron, Inc. v. BlackBerry

Corporation et al, No. 3-20-cv-02877 (N.D. Cal.), Dkt. No. 66; BlackBerry Limited v. Facebook,

Inc. et al, No. 2-18-cv-01844 (C.D. Cal.), Dkt. No. 682; BlackBerry Limited et al v. Avaya Inc.,

No. 3-16-cv-02185 (N.D. Tex.), Dkt. No. 72.

         MARA brings the present Motion for issuance of Letter Rogatory to obtain discovery from

BlackBerry regarding its acquisition, sale of, licensing, and any settlement agreements (including

any related communications and analyses) concerning the Certicom Patent Portfolio. MARA also

seeks discovery into Certicom’s involvement in the Standards for Efficient Cryptography Group

(“SECG”)                  Consortium                  (letter              available               at

https://www.secg.org/certicom_patent_letter_SECG.pdf), including any grant of “non-exclusive

licenses to [Certicom’s] patents on a nondiscriminatory basis and on reasonable terms” given to

any third party, as offered in the letter. After investigation, MARA determined that BlackBerry is

headquartered in Waterloo, Ontario. Discovery into these topics will shed light on details which

may be especially pertinent to issues in this case, including damages. This Court should grant the

present Motion because the issuance of the requested Letter Rogatory is the proper method of

obtaining discovery under U.S. law, is appropriate under Canadian Law, and seeks evidence that

is highly relevant to the case at hand and cannot otherwise be obtained.

III.     ARGUMENT

         A.     A LETTER ROGATORY IS A PROPER METHOD FOR SEEKING
                DISCOVERY FROM BLACKBERRY

         A Letter Rogatory is a formal written request sent by a court to a foreign court asking that

a witness residing within that foreign court’s jurisdiction either provide documents, a deposition,

or both for use in a pending action before the requesting court. Intel Corp. v. Advanced Micro

Devices, Inc., 542 U.S. 241, 247 n.1 (2004); Int’l Bus. Machs. Corp. v. LzLabs GmbH, No. W-22-


                                                  2


    Case 7:25-cv-00222-DC-DTG             Document 92         Filed 04/30/26      Page 7 of 13


CV-00299-DAE, Dkt. No. 315 (W.D. Tex. Apr. 23, 2024) (granting motion for issuance of letter

rogatory to compel production of documents and deposition of a Canadian entity); TruSun Techs.,

LLC v. Eaton Corp., No. 6-19-CV-00656-ADA, Dkt. No. 67 (W.D. Tex. Mar. 22, 2021) (granting

motion for issuance of letter rogatory to compel deposition of a Canadian individual).

       “District courts have discretion in determining whether to issue a letter rogatory and their

authority to do so derives from their inherent power.” El Paso Disposal, LP v. Ecube Labs Co.,

792 F. Supp. 3d 703, 707 (W.D. Tex. 2025) (internal citations omitted); see also United States v.

Mason, 919 F.2d 139 (4th Cir. 1990) (“The decision to issue letters rogatory lies within the

discretion of the district court.”). In determining whether to issue letters rogatory, courts consider

the following factors:

       (1) the importance of the documents or information requested to the litigation; (2)
       the specificity of the request; (3) whether the information originated in the United
       States; (4) whether alternative means of securing the information exist; and (5)
       the extent to which noncompliance with the request would undermine important
       interests of the United States, or compliance with the request would undermine
       important interests of the state where the information is located.

El Paso Disposal, 792 F. Supp. 3d at 707.

       First, the documents and testimony requested from BlackBerry are important because they

could provide information relevant to the potential damages associated with the Asserted Patents.

Second, the request is limited only to documents and testimony regarding the acquisition, sale of,

licensing, and any settlement agreements concerning the Certicom Patent Portfolio, which includes

the Asserted Patents and patents directed to related technology, and Certicom’s involvement in the

SECG. Third, while the information sought does not originate in the United States, as BlackBerry

is located in Canada, “where a court finds that information is not easily obtainable through

alternative means, as here, this weighs in favor of issuing letters rogatory regardless of where the

information originated.” Id. at 710. Fourth, there are no other means of securing the information.


                                                  3


    Case 7:25-cv-00222-DC-DTG              Document 92        Filed 04/30/26      Page 8 of 13


BlackBerry is the entity that acquired Certicom and entered into at least three relevant settlement

agreements and it is therefore in possession of the relevant information. Although MARA has also

attempted to obtain such information directly from Malikie and through a third party subpoena

served on BlackBerry’s subsidiary in the United States, neither entity has possession of or control

over all of the information MARA seeks, as at least some of the information is uniquely within

BlackBerry’s possession. Fifth, the interests of the Canadian government do not outweigh those

of the United States government such that the letter should not be issued. See Lantheus Med.

Imaging, Inc. v. Zurich Am. Ins. Co., 841 F. Supp. 2d 769, 794 (S.D.N.Y. 2012) (“[T]he fifth factor

[] requires the Court to balance the interests of Canada against the interests of the United States”

and “the exceptional nature of letters rogatory provide the foreign litigant with the protections that

the foreign sovereign lacks when an American court compels it to engage in jurisdictional

discovery as a would-be defendant. Just as an American court enforcing letters rogatory issued in

a foreign court may limit enforcement of the order [], foreign courts charged with enforcing letters

rogatory may limit enforcement of the discovery device where appropriate.”).

       “The proper method for compelling the production of documents and obtaining deposition

testimony in Canada for use in a United States action is to proceed by means of a letter rogatory.

The Canada Evidence Act specifically provides that a court outside of Canada may serve letters

rogatory upon a Canadian court.” SPS Techs., LLC v. Briles Aerospace, Inc., No. CV 18-9536

MWF (ASX), 2020 WL 12740646, at *1 (C.D. Cal. Apr. 14, 2020); see also Fed. R. Civ. P.

4(f)(2)(B); Fed. R. Civ. P. 28(b)(1)(B); 28 U.S.C. § 1651 (authorizing courts to issue “all writs

necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and

principles of law”); 28 U.S.C. § 1781 (permitting “the transmittal of a letter rogatory or request

directly from a tribunal in the United States to the foreign or international tribunal, officer, or


                                                  4


    Case 7:25-cv-00222-DC-DTG              Document 92        Filed 04/30/26       Page 9 of 13


agency to whom it is addressed and its return in the same manner.”).

       B.      A LETTER ROGATORY IS APPROPRIATE UNDER CANADIAN LAW

       A Letter Rogatory is an appropriate method for obtaining discovery under Canadian Law.

The Ontario Court has jurisdiction to enforce Letters Rogatory where: “a) a foreign court, desirous

of obtaining testimony in relation to a pending civil, commercial or criminal matter, has authorized

the obtaining of evidence; b) the party from whom the evidence is sought is within the jurisdiction

of Ontario; c) the evidence sought from the Ontario party is in relation to a pending proceeding

before the foreign court or tribunal; and d) the foreign court or tribunal is a court or tribunal of

competent jurisdiction.” Q3 Networking LLC v. Siemens Canada, 2021 ONSC 2808 at para. 31

(Can.). The Ontario Court has the discretion to grant or deny a request from the foreign court. “In

exercising this discretion, the Ontario Court shall consider whether: (a) the evidence sought is

relevant; (b) the evidence is necessary for pre-trial discovery or trial of the foreign action; (c) the

evidence is not otherwise obtainable; (d) the documents sought are identified with reasonable

specificity; (e) the order sought is not contrary to Canadian public policy; and (f) the order sought

is not unduly burdensome.” McFadden Lyon Rouse LLC v. Lookkin, 2012 ONSC 2243 at para.

17 (Can.). MARA’s requested Letter Rogatory satisfies these factors.

       C.      MARA’S DISCOVERY REQUESTS TO BLACKBERRY LIMITED VIA
               THE PROPOSED LETTER ROGATORY ARE APPROPRIATE

       The documents and testimony that MARA requests from BlackBerry are highly relevant

to the instant action. The document requests and deposition topics are directed to BlackBerry’s

purchase, sale of, licensing, and settlement agreements involving the Certicom Patent Portfolio,

including any economic analysis, valuation, review, or other assessment of the Certicom Patent

Portfolio, and Certicom’s involvement in the SECG. Therefore, these requests are relevant to at

least issues related to damages, including, but not limited to, any calculation of any reasonably


                                                  5


    Case 7:25-cv-00222-DC-DTG             Document 92        Filed 04/30/26      Page 10 of 13


royalty under 35 U.S.C. § 284.

       The documents and testimony that MARA requests from BlackBerry are not otherwise

obtainable. Although MARA has attempted to obtain such information directly from Malikie and

through a third party subpoena served on BlackBerry’s subsidiary located in the United States,

neither entity has possession of or control over all of the information MARA seeks, as at least

some of the information is uniquely within BlackBerry’s possession.

       The documents and information that MARA seeks are identified with reasonable

specificity in Schedules A, B, and C of the Letter Rogatory. The requested documents and

information are limited to BlackBerry’s purchase, sale of, licensing, and settlement agreements

involving the Certicom Patent Portfolio, including BlackBerry’s own methods, calculations,

valuations, and estimates of the value of the Certicom Patent Portfolio.

       The order sought for issuance of Letter Rogatory is not contrary to Canadian public policy

and is not unduly burdensome. In assessing these factors, the Ontario Court will consider whether

the request is contrary to the witness’ constitutional rights, whether the request affects the rights

of other third parties, whether the request seeks to impose obligations on third parties that

substantially exceed those they would bear if the underlying litigation took place in Canada, and

the time, effort, and expense required of witnesses if the Letter Rogatory is enforced. See Zingre

et al. v. The Queen [1981] 2 S.C.R. 392 at 401 (Can.) (“A foreign request is given full force and

effect unless it be contrary to the public policy of the jurisdiction to which the request is directed

[] or otherwise prejudicial to the sovereignty or the citizens of the latter jurisdiction.”); see also

Friction Division Products, Inc. and E. I. Du Pont de Nemours & Co. Inc. et al. (No. 2) (1986),

56 O.R. (2d) 722 (H.C.J.) at para. 34 (Can.) (“I do not think the two proposed witnesses are being

asked to do anything which can be said to be burdensome or oppressive, measured against the


                                                  6


    Case 7:25-cv-00222-DC-DTG            Document 92       Filed 04/30/26      Page 11 of 13


witnesses’ obligations in Ontario were this matter to be tried here.”). The obligations placed on

BlackBerry will be minimal, as the document requests and deposition topics are narrowly tailored

to information relevant to the current case.

       MARA respectfully requests that the Court grants this Unopposed Motion, endorses the

attached Letter Rogatory, and directs the Clerk to place the Court’s seal upon them and return them

to MARA for delivery to the foreign jurisdiction.


                                                7


   Case 7:25-cv-00222-DC-DTG   Document 92    Filed 04/30/26    Page 12 of 13


Dated: April 30, 2026                        Respectfully Submitted,

                                             /s/ Catherine Nyarady
                                             Catherine Nyarady
                                             Elizabeth S. Weiswasser
                                             Ian A. Moore
                                             Tom Yu
                                             Thomas Macchio
                                             Paul, Weiss, Rifkind, Wharton &
                                             Garrison LLP
                                             1285 Sixth Avenue
                                             New York, NY 10019
                                             Telephone: (212) 373-3000

                                             Christopher M. Pepe
                                             W. Sutton Ansley
                                             Eric C. Westerhold
                                             Paul, Weiss, Rifkind, Wharton &
                                             Garrison LLP
                                             2001 K Street NW
                                             Washington, DC 20006
                                             Telephone: (202) 223-7300

                                             Steve Wingard
                                             State Bar No. 00788694
                                             swingard@scottdoug.com
                                             Robert P. Earle
                                             State Bar No. 241245566
                                             rearle@scottdoug.com
                                             Stephen L. Burbank
                                             State Bar No. 24109672
                                             sburbank@scottdoug.com
                                             Scott Douglass & McConnico LLP
                                             303 Colorado Street, Suite 2400
                                             Austin, TX 78701-3234
                                             Telephone: (512) 495-6300
                                             Facsimile: (512) 495-6399
                                             Counsel for Defendant MARA
                                             Holdings, Inc.


   Case 7:25-cv-00222-DC-DTG              Document 92         Filed 04/30/26       Page 13 of 13


                                 CERTIFICATE OF SERVICE

       I hereby certify that true and correct copies of this motion have been served upon each attorney

of record via the Court’s CM/ECF system.


                                                /s/ Catherine Nyarady
                                                Catherine Nyarady