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Roku, Inc. v. VideoLabs, Inc.

Docket IPR2025-00071, Patent Trial and Appeal Board (Nov. 11, 2024)
Case TypeInter Partes Review
Patent
7440559
Patent Owner VideoLabs, Inc.
Petitioner Roku, Inc.
Assignee PRAETOR FUND I, A SUB-FUND OF PRAETORIUM FUND I ICAV
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Netflix, Inc. v. VL Collective IP LLC

Docket IPR2023-00630, Patent Trial and Appeal Board (Feb. 23, 2023)
David McKone, Jeffrey Smith, Karl Easthom, Stacey White, Stephen Belisle, presiding
Case TypeInter Partes Review
Patent
7440559
Patent Owner VL Collective IP LLC
Petitioner Netflix, Inc.
Assignee PRAETOR FUND I, A SUB-FUND OF PRAETORIUM FUND I ICAV
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5 Notice Notice filing date accorded: Notice Notice filing date accorded

Document IPR2025-00071, No. 5 Notice Notice filing date accorded - Notice Notice filing date accorded (P.T.A.B. Dec. 6, 2024)
Such motion must: a. Contain a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding; and b.
A notice of intent to designate a provisionally recognized PTAB attorney as back-up counsel filed pursuant to 37 C.F.R. § 42.10(c)(2) must: (a) Identify the registered practitioner who will serve as lead counsel; (b) Identify the most recent prior proceeding in which the person seeking to appear was recognized pro hac vice by order of the Patent Trial and Appeal Board pursuant to a motion of the type described in 37 C.F.R. § 42.10(c)(1); and (c) Be accompanied by Certification in the form of an affidavit or declaration in which the individual seeking pro hac vice recognition attests to the following: i.
If the affiant or declarant is unable to provide the information requested above or make the required statements or representations under oath, or if the affiant or declarant does not qualify as a provisionally recognized PTAB attorney pursuant to 37 C.F.R. § 42.10(c)(2), the procedure set forth in 37 C.F.R. § 42.10(c)(2) is not available, and pro hac vice recognition may only be obtained via the process set forth in 37 C.F.R. § 42.10(c)(1).
Pro hac vice recognition will not be effective until the party files an updated mandatory notice after the expiration of the applicable time period (5 or 10 days) set forth in 37 C.F.R. § 42.10(c)(2)(iii).
The parties are also reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial Appeal Case Tracking System (P-TACTS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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31 Final Written Decision original: Final Written Decision original

Document IPR2023-00630, No. 31 Final Written Decision original - Final Written Decision original (P.T.A.B. Oct. 2, 2024)
An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
Furthermore, Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
Patent Owner contends that a person of ordinary skill in the art would have understood that the indication should contain as little data as possible in order to increase speed and decrease memory.
Mr. Wechselberger testifies that a person of ordinary skill in the art would have understood that the differencing engine would receive an identification of the versions of content stored on the caches in order to make that comparison.
Patent Owner contends that there is no mechanism in Cassin for issuing instructions, and therefore a person of ordinary skill in the art would not have had a reasonable expectation of success in adding Huston’s delete command.
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28 Other Hearing transcript: Other Hearing transcript

Document IPR2023-00630, No. 28 Other Hearing transcript - Other Hearing transcript (P.T.A.B. Aug. 20, 2024)
The above-entitled matter came on for hearing Monday, June 27, 2024, commencing at 12:48 p.m. EST, at the U.S. Patent and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
And so one thing we wanted to point out was that, you know, Videolabs in a Complaint that they recently filed had actually interpreted much of the disclosure in the '559 patent to read on when there's an automatic instruction to download certain content.
MS. CARRANO: Right and I believe that's coming from Patent Owner's expert and so what our response to that is that an indication is broad so it could include a yes, but when you look at those claims of Cassin, it also expressly discloses a list.
There is a direct communication coupling between the differencing engine and the client, the traffic server that's 242 and so looking at Slide 45, we know that the Huston discloses a variety of techniques to determine the differences.
MR. MATULEWICZ-CROWLEY: The person of ordinary skill in the art would understand that Huston is disclosing a system in which the differencing engine only gets information from the origin server.
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25 Order Other: Order Setting Oral Argument 37 CFR 4270

Document IPR2023-00630, No. 25 Order Other - Order Setting Oral Argument 37 CFR 4270 (P.T.A.B. Jun. 3, 2024)
In accordance with the Consolidated Trial Practice Guide5 (“CTPG”), issued in November 2019, Patent Owner may request to reserve time for a brief sur- rebuttal.
Finally, the parties are reminded that each presenter should identify clearly and specifically each paper (e.g., by slide or screen number for a demonstrative) referenced during the hearing to ensure the clarity and accuracy of the court reporter’s transcript and for the benefit of all participants appearing electronically.
Either party may request that a qualifying LEAP practitioner participate in the program and conduct at least a portion of the party’s oral argument.
The Board will grant up to fifteen (15) minutes of additional argument time to that party, depending on the length of the proceeding and the PTAB’s hearing schedule.
All practitioners are expected to have a command of the factual record, the applicable law, and Board procedures, as well as the authority to commit the party they represent.
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17 Order on Motion: ORDER Granting Petitioner’s Motions for Pro Hac Vice Admission of Stephen A Marshall 37 CFR § 4210

Document IPR2023-00630, No. 17 Order on Motion - ORDER Granting Petitioner’s Motions for Pro Hac Vice Admission of Stephen A Marshall 37 CFR § 4210 (P.T.A.B. Dec. 28, 2023)
Before KARL D. EASTHOM, JEFFREY S. SMITH, DAVID C. McKONE, STACEY G. WHITE, and STEPHEN E. BELISLE, Administrative Patent Judges.
Petitioner filed a motion in IPR2023-00630 requesting pro hac vice admission of Stephen A. Marshall.
In authorizing a motion for pro hac vice admission, the Board requires the moving party to provide a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice and an affidavit or declaration of the individual seeking to appear in the proceeding.
3 In consideration of the foregoing, it is hereby ORDERED that Petitioner’s Motions for pro hac vice admission of Stephen A. Marshall are granted.
FURTHER ORDERED that Petitioner is to continue to have a registered practitioner represent Petitioner as lead counsel for each proceeding; FURTHER ORDERED that Mr. Marshall is authorized to represent Petitioner as back-up counsel only in each proceeding; FURTHER ORDERED that Mr. Marshall comply with the Patent Trial and Appeal Board’s Consolidated Trial Practice Guide4 (84 Fed. Reg. 64,280 (Nov. 21, 2019)), and the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations; and FURTHER ORDERED that Mr. Marshall is subject to the Office’s 3 In connection with the Board's Rules of Practice for Trials the Declarations refer to “part 42 of the Code of Federal Regulations” (Ex. 1024 ¶ 5) instead of “part 42 of 37 C.F.R.” (Unified Patents at 3) (emphasis added).
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11 Order Other: Order Other

Document IPR2023-00630, No. 11 Order Other - Order Other (P.T.A.B. Oct. 3, 2023)

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