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VideoLabs, Inc. et al v. Roku, Inc.

Docket 1:23-cv-01136, Delaware District Court (Oct. 11, 2023)
Judge Joel H Slomsky, presiding
Patent
DivisionWilmington
FlagsSTAYED, CLOSED, PATENT
Cause35:271 Patent Infringement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
7233790; 7440559; 7769238; 7970059; 8291236; 8605794; 8667304
7233790
7440559
77692387970059829123686057948667304
Plaintiff VideoLabs, Inc.
Plaintiff VL Collective IP LLC
Defendant Roku, Inc.
...
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No. 41 ORDER STAYING CASE: Defendant's Motion to Stay (Doc No. 36 ) is GRANTED

Document VideoLabs, Inc. et al v. Roku, Inc., 1:23-cv-01136, No. 41 (D.Del. Jul. 26, 2024)
Motion to StayGranted
VIDEOLABS, INC. and VL COLLECTIVE
AND NOW, this 26th day of July 2024, upon consideration of Defendant’s Motion to Stay (Doc. No. 36) and the statements of the parties made at the July 25, 2024 telephone conference, it is ORDERED that: 1.
Defendant’s Motion to Stay (Doc. No. 36) is GRANTED.
All proceedings in this case are stayed until January 12, 2025.
The parties shall provide a joint status report to the Court within seven (7) business days of when the Patent Trial and Appeal Board (“PTAB”) issues final written decisions in the following inter partes review (“IPR”) proceedings: IPR2023-00628,
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No. 36 MOTION to Stay - filed by Roku, Inc

Document VideoLabs, Inc. et al v. Roku, Inc., 1:23-cv-01136, No. 36 (D.Del. Jul. 18, 2024)
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.
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.
Upon consideration of Defendant Roku, Inc.’s Motion to Stay (“Motion”) and any opposition thereto, IT IS HEREBY ORDERED THAT:
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.).
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No. 18 First AMENDED COMPLAINT against Roku, Inc.- filed by VideoLabs, Inc., VL Collective IP LLC

Document VideoLabs, Inc. et al v. Roku, Inc., 1:23-cv-01136, No. 18 (D.Del. Mar. 8, 2024)
Complaint
VideoLabs then compiled a portfolio of these core patents, obtaining them from leading companies, including Hewlett Packard Enterprise, Alcatel-Lucent S.A., Siemens AG, Swisscom AG, 3Com, Panasonic, LG, and Nokia.
To this day, VideoLabs continues to promote an efficient, respected, and balanced intellectual property environment where technology companies have predictable design freedom and innovators who contribute impactful patented inventions can obtain fair and just compensation.
As discussed with regard to the ’236 patent infra, both CAS and DRM systems are critically important technologies for securing valuable content programming intended for myriad consumer devices.
In addition to making real-time streaming of content possible, every incremental increase in compression efficiency yields substantial benefits to companies that store, process, transmit or access video.
In addition to making real-time streaming of content possible, every incremental increase in compression efficiency yields substantial benefits to companies that store, process, transmit or access video.
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No. 9 MOTION to Dismiss for Failure to State a Claim - filed by Roku, Inc

Document VideoLabs, Inc. et al v. Roku, Inc., 1:23-cv-01136, No. 9 (D.Del. Feb. 16, 2024)
Motion to Dismiss for Failure to State a Claim
Pursuant to Federal Rule of Civil Procedure 12(b)(6) and 35 U.S.C. § 101, Defendant Roku, Inc. (“Roku”) moves to dismiss Counts I–IV of Plaintiffs VideoLabs, Inc. and VL Collective IP LLC (collectively, “Plaintiffs”)’s complaint (D.I.
1) with prejudice on the grounds that U.S. Patent Nos. RE43,113; 7,233,790; 7,440,559; and 8,605,794 fail to recite patentable subject matter under
The grounds for this motion are set forth more fully in Roku’s Opening Brief and the materials and information cited therein.
The Court, having considered Defendant Roku, Inc. (“Roku”)’s Motion to Dismiss Counts I–IV of Plaintiffs VideoLabs, Inc. and VL Collective IP LLC (collectively, “Plaintiffs”)’s complaint (D.I.
Defendant’s motion is hereby GRANTED; The claims of U.S. Patent Nos. RE43,113; 7,233,790; 7,440,559 and 8,605,794 fail to recite patentable subject matter under 35 U.S.C. § 101; and
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No. 1 COMPLAINT FOR PATENT INFRINGEMENT filed with Jury Demand against Roku, Inc. ( Filing fee $ ...

Document VideoLabs, Inc. et al v. Roku, Inc., 1:23-cv-01136, No. 1 (D.Del. Oct. 11, 2023)
Complaint
VideoLabs spent millions of dollars and thousands of hours analyzing the video space and identifying the patents that reflect the innovations with the highest impact.
VideoLabs then compiled a portfolio of these core patents, obtaining them from leading companies, including Hewlett Packard Enterprise, Alcatel-Lucent S.A., Siemens AG, Swisscom AG, 3Com, Panasonic, LG, and Nokia.
To this day, VideoLabs continues to promote an efficient, respected, and balanced intellectual property environment where technology companies have predictable design freedom and innovators who contribute impactful patented inventions can obtain fair and just compensation.
growth and rising levels of consumer expectations, a new and better framework was necessary to lay the foundation for a next generation content delivery model that provided the best and most efficient service to end users.
As discussed with regard to the ’236 patent infra, both CAS and DRM systems are critically important technologies for securing valuable content programming intended for myriad consumer devices.
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No. 23 OPENING BRIEF in Support re 22 MOTION to Dismiss for Failure to State a Claim (First Amended ...

Document VideoLabs, Inc. et al v. Roku, Inc., 1:23-cv-01136, No. 23 (D.Del. Apr. 5, 2024)
This step is satisfied only when the claim limitations “involve more than performance of ‘well- understood, routine, [and] conventional activities previously known to the industry.’” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.
Thus, the Federal Circuit has “repeatedly affirmed § 101 rejections at the motion to dismiss stage,” “based on intrinsic evidence from the specification without need for ‘extraneous fact finding outside the record.’” See Cleveland Clinic Found.
The Federal Circuit has explained that a motion to dismiss for lack of patent eligibility may be granted when “there are no factual allegations that, taken as true, prevent
Indeed, the Federal Circuit has repeatedly explained that ineligibility “may be, and frequently has been, resolved on a Rule 12(b)(6) or (c) motion,” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018), and can be “based on intrinsic evidence from the specification without need for extraneous fact finding outside the record,” Secured Mail Sols.
For the foregoing reasons, Defendants respectfully request that the Court hold that the claims of the ’559, ’794, and ’790 patents are directed to patent-ineligible subject matter under Section 101 and dismiss the First through Third Counts of the First Amended Complaint with prejudice.
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No. 20

Document VideoLabs, Inc. et al v. Roku, Inc., 1:23-cv-01136, No. 20 (D.Del. Mar. 8, 2024)

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