Case 1:23-cv-01136-JHS Document 36 Filed 07/18/24 Page 1 of 6 PageID #: 1141
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Defendant.
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`DEFENDANT ROKU INC.’S MOTION TO STAY
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`Defendant Roku, Inc. (“Roku”) respectfully moves to stay this action pending the
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`conclusion of: (1) the following inter partes review proceedings (and any subsequent appellate
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`proceedings) currently pending before the Patent Trial and Appeal Board: IPR2023-00628,
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`IPR2023-00630, IPR2023-00891, IPR2024-01023, IPR2024-01024, IPR2024-01025, and
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`IPR2024-01026, which relate to five of the seven asserted patents1; and (2) the conclusion of the
`
`appeal from IPR2022-01086 relating to the ’794 patent that is currently pending before the United
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`States Court of Appeals for the Federal Circuit, Docket No. 2024-1890 (Fed. Cir.).2
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`The grounds for this motion are set forth more fully in the accompanying Opening Brief
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`and the materials and information cited therein.
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`
`
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`1 The Asserted Patents are: U.S. Patent Nos. 7,233,790 (the “’790 patent”), 7,440,559 (the “’559
`patent”), 7,769,238 (the “’238 patent”), 7,970,059 (the “’059 patent”), 8,291,236 (the “’236
`patent”), 8,605,794 (the “’794 patent”), and 8,667,304 (the “’304 patent”).
`
`2 On the same day Roku filed this motion, the Court issued stay orders in the co-pending Meta and
`Netflix cases, and set a teleconference for July 25, 2024 to discuss a stay in this case. Roku was in
`the process of finalizing its motion to stay papers when the Court issued its July 18 Orders. Roku
`respectfully submits this motion to assist the Court in understanding Roku’s position, and will be
`prepared to discuss its motion with the Court at the July 25 teleconference.
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`C.A. No. 23-1136 (JHS)
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`JURY TRIAL DEMANDED
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`))))))))))
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`VIDEOLABS, INC. and
`VL COLLECTIVE IP LLC.,
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`ROKU, INC.,
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`Defendant.
`
`
`
`DEFENDANT ROKU INC.’S MOTION TO STAY
`
`Defendant Roku, Inc. (“Roku”) respectfully moves to stay this action pending the
`
`conclusion of: (1) the following inter partes review proceedings (and any subsequent appellate
`
`proceedings) currently pending before the Patent Trial and Appeal Board: IPR2023-00628,
`
`IPR2023-00630, IPR2023-00891, IPR2024-01023, IPR2024-01024, IPR2024-01025, and
`
`IPR2024-01026, which relate to five of the seven asserted patents1; and (2) the conclusion of the
`
`appeal from IPR2022-01086 relating to the ’794 patent that is currently pending before the United
`
`States Court of Appeals for the Federal Circuit, Docket No. 2024-1890 (Fed. Cir.).2
`
`The grounds for this motion are set forth more fully in the accompanying Opening Brief
`
`and the materials and information cited therein.
`
`
`
`
`1 The Asserted Patents are: U.S. Patent Nos. 7,233,790 (the “’790 patent”), 7,440,559 (the “’559
`patent”), 7,769,238 (the “’238 patent”), 7,970,059 (the “’059 patent”), 8,291,236 (the “’236
`patent”), 8,605,794 (the “’794 patent”), and 8,667,304 (the “’304 patent”).
`
`2 On the same day Roku filed this motion, the Court issued stay orders in the co-pending Meta and
`Netflix cases, and set a teleconference for July 25, 2024 to discuss a stay in this case. Roku was in
`the process of finalizing its motion to stay papers when the Court issued its July 18 Orders. Roku
`respectfully submits this motion to assist the Court in understanding Roku’s position, and will be
`prepared to discuss its motion with the Court at the July 25 teleconference.
`
`
`
`
`
`C.A. No. 23-1136 (JHS)
`
`JURY TRIAL DEMANDED
`
`
`))))))))))
`
`VIDEOLABS, INC. and
`VL COLLECTIVE IP LLC.,
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`ROKU, INC.,
`
`
`
`
`Case 1:23-cv-01136-JHS Document 36 Filed 07/18/24 Page 2 of 6 PageID #: 1142
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`
`/s/ Jennifer Ying
`
`
`
`
`Jack B. Blumenfeld (#1014)
`Jennifer Ying (#5550)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@morrisnichols.com
`jying@morrisnichols.com
`
`Attorneys for Defendant Roku, Inc.
`
`
`
`
`OF COUNSEL:
`
`Paul E. Torchia
`GIBSON, DUNN & CRUTCHER LLP
`200 Park Avenue
`New York, NY 10166-0193
`(212) 351-4000
`
`S. Christopher Whittaker
`GIBSON, DUNN & CRUTCHER LLP
`3161 Michelson Dr., Suite 1200
`Irvine, CA 92612-4412
`(949) 451-3800
`
`Jaysen S. Chung
`GIBSON, DUNN & CRUTCHER LLP
`One Embarcadero Center, Suite 2600
`San Francisco, CA 94111-3715
`(415) 393-8200
`
`Nathan R. Curtis
`GIBSON, DUNN & CRUTCHER LLP
`2001 Ross Avenue, Suite 2100
`Dallas, TX 75201-2923
`(214) 698-3100
`
`
`July 18, 2024
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`Case 1:23-cv-01136-JHS Document 36 Filed 07/18/24 Page 3 of 6 PageID #: 1143
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`RULE 7.1.1 CERTIFICATE
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`I hereby certify that counsel for Defendant discussed the subject of the foregoing motion
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`with counsel for Plaintiffs and that Plaintiffs oppose the relief sought by this motion.
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`/s/ Jennifer Ying
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`Jennifer Ying (#5550)
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`Case 1:23-cv-01136-JHS Document 36 Filed 07/18/24 Page 4 of 6 PageID #: 1144
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`VIDEOLABS, INC. and
`VL COLLECTIVE IP LLC.,
`
`
`
`
`
`
`
`C.A. No. 23-1136 (JHS)
`
`
`
`
`))))))))))
`
`
`
`Plaintiffs,
`
`Defendant.
`
`v.
`
`
`ROKU, INC.,
`
`
`
`
`
`
`
`[PROPOSED] ORDER
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`Upon consideration of Defendant Roku, Inc.’s Motion to Stay (“Motion”) and any
`
`opposition thereto, IT IS HEREBY ORDERED THAT:
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`1.
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`2.
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`Roku’s Motion is GRANTED.
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`The case is stayed pending the conclusion (including any appeals) of the following
`
`inter partes review (“IPR”) proceedings: IPR2023-00628, IPR2023-00630, IPR2023-00891,
`
`IPR2024-01023, IPR2024-01024, IPR2024-01025, and IPR2024-01026, which relate to five of
`
`the seven asserted patents3; and (2) the conclusion of the appeal from IPR2022-01086 relating to
`
`the ’794 patent that is currently pending before the United States Court of Appeals for the Federal
`
`Circuit, Docket No. 2024-1890 (Fed. Cir.).
`
`3.
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`Within 30 days after the issuance of the last final, non-appealable decision in the
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`above-referenced proceedings, the parties shall submit a joint status report advising on the status
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`of the case.
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`3 The Asserted Patents are: U.S. Patent Nos. 7,233,790 (the “’790 patent”), 7,440,559 (the “’559
`patent”), 7,769,238 (the “’238 patent”), 7,970,059 (the “’059 patent”), 8,291,236 (the “’236
`patent”), 8,605,794 (the “’794 patent”), and 8,667,304 (the “’304 patent”).
`
`
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`Case 1:23-cv-01136-JHS Document 36 Filed 07/18/24 Page 5 of 6 PageID #: 1145
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`SO ORDERED, this ____ day of ____________, 2024.
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`____________________________
`United States District Judge
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`Case 1:23-cv-01136-JHS Document 36 Filed 07/18/24 Page 6 of 6 PageID #: 1146
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 18, 2024, I caused the foregoing to be electronically filed with
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`the Clerk of the Court using CM/ECF, which will send notification of such filing to all registered
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`participants.
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`I further certify that I caused copies of the foregoing document to be served on
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`July 18, 2024, upon the following in the manner indicated:
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`Brian E. Farnan, Esquire
`Michael J. Farnan, Esquire
`FARNAN LLP
`919 North Market Street, 12th Floor
`Wilmington, DE 19801
`Attorneys for Plaintiffs
`
`M. Elizabeth Day, Esquire
`Marc Belloli, Esquire
`Jerry D. Tice II, Esquire
`Aaron R. Hand, Esquire
`Hillary Bunsow, Esquire
`BUNSOW DE MORY LLP
`701 El Camino Real
`Redwood City, CA 94063
`Attorneys for Plaintiffs
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`/s/ Jennifer Ying
`
`Jennifer Ying (#5550)
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`
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