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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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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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3 Notice Power of Attorney: Notice Power of Attorney

Document IPR2025-00071, No. 3 Notice Power of Attorney - Notice Power of Attorney (P.T.A.B. Nov. 25, 2024)
U.S. Patent No. 7,440,559 Patent Owner VideoLabs, Inc. hereby provides the present Power of Attorney pursuant to 37 C.F.R. §42.10(b).
Patent Owner presently selects the lead and backup counsel identified below to transact all business in the United States Patent & Trademark Office associated with the Inter Partes Review of the above- captioned patent.
Please recognize the correspondence address (including any electronic mail address) for the above-identified Inter Partes Review proceeding to be the address associated with the appointed lead counsel.
November 19, 2024 Dated: ___________________
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4 Notice Mandatory Notice: Notice Mandatory Notice

Document IPR2025-00071, No. 4 Notice Mandatory Notice - Notice Mandatory Notice (P.T.A.B. Nov. 25, 2024)
Pursuant to 37 C.F.R. §42.8, Patent Owner VideoLabs, Inc. submits the
The Patent Owner and real party-in-interest is VideoLabs, Inc. VideoLabs, Inc. 2100 Geng Road, Suite 210 Palo Alto CA, 94070
Patent Owner identifies the following related matters: Netflix, Inc. v. VL Collective IP LLC, IPR2023-00630 (Final Written Decision finding all claims unpatentable); On appeal, Case No. 25-1132 (Fed. Cir.).
Lead and back-up counsel and service information are identified below:
Patent Owner consents to e-mail service at the addresses listed above.
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1 Notice Power of Attorney: Power of Attorney

Document IPR2025-00071, No. 1 Notice Power of Attorney - Power of Attorney (P.T.A.B. Nov. 11, 2024)
In accordance with 37 C.F.R. § 42.10(b), Petitioner Roku, Inc. hereby appoints: Scott A. McKeown (Registration No. 42,866) Elizabeth A. DiMarco, pending admission pro hac vice Victor Cheung (Registration No. 66,229) Daniel D. Smith (Registration No. 71,278) and all practitioners associated with USPTO Customer Number 23628 of Wolf, Greenfield & Sacks, P.C., 600 Atlantic Avenue, Boston, Massachusetts 02210, United States of America, as its attorneys to transact all business before the United States Patent and Trademark Office associated with the Inter Partes Review of U.S. Patent No. 7,440,559.
I have authority to sign this document on behalf of Roku, Inc.
Associate General Counsel__
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2 Petition as filed: Petition for Inter Partes Review

Document IPR2025-00071, No. 2 Petition as filed - Petition for Inter Partes Review (P.T.A.B. Nov. 11, 2024)
Claim terms subject to IPR are to be construed in accordance with their ordinary and customary meaning as understood by a POSITA in light of the specification and prosecution history.
More particularly, the server 104 will load the client 108 with the objects associated with the channels.”) See also: • 4:1-20 (Table 1 listing examples of “Internet content” that can be synchronized using Kloba’s techniques, including “Multimedia: Images (e.g., JPEG, GIF, PNG, vector graphics, etc.),” “Audio Files (e.g. ’559 1[c].
Kloba discloses that server 104 includes “computer usable mediums [sic]” that store control logic (software) to implement the techniques described with respect to the claims above.
Kloba teaches a broad applicability to movie, book, and audio content, which is well known to benefit from more granular DRM controls to ensure copyright protections.
A POSITA would have had a reasonable expectation of success in implementing a deletion mechanism in Kloba’s content synchronization process because Robbin teaches a system operating in the proposed manner.
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1006 Exhibit: US Patent Application Publication No 20030079038 Robbin

Document IPR2025-00071, No. 1006 Exhibit - US Patent Application Publication No 20030079038 Robbin (P.T.A.B. Nov. 11, 2024)
Inventors: Jeffrey L. Robbin, Los Altos, CA (US); David Heller, San Jose, CA (US) Correspondence Address: BEYER WEAVER & THOMAS LLP
Description of the Related Art [0006] Synchronization operations have been convention- ally performed between portable devices, such as Personal Digital Assistants (PDAs) and host computers, to synchro- nize electronic files or other resources.
As a result, using conventional data transfer techniques with respect to media itemsresults in slow andinefficient operation and thus tends to present an unsatisfactory user experience.
When the decision 508 determines that the host computer is not requesting mediaattributes, the media device can, but need not, perform other hard drive operations for non-synchro- nizalion purposes (nol shown).
One such application is iTunes, version 2.0, produced by Apple Computer, Inc. of Cupertino, Calif. [0060] FIG.7 is a block diagram of a media management system 700 according to another embodimentof the inven- tion.
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1017 Exhibit: AviaGames, Inc v Skillz Platform, Inc, IPR2022 00530, Paper 14

Document IPR2025-00071, No. 1017 Exhibit - AviaGames, Inc v Skillz Platform, Inc, IPR2022 00530, Paper 14 (P.T.A.B. Nov. 11, 2024)
Before KATHERINE K. VIDAL, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The Board explained that because a district court determined that the challenged claims were invalid under § 101, “the interests of efficiency and integrity of the system would be best served by invoking 35 U.S.C. § 314(a) to deny institution.” Id. at 15.
Having reviewed the Decision, the relevant papers, and the relevant exhibits of record in this proceeding, I remand to the Board for a compelling merits determination consistent with the USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Guidance Memo”) (June 21, 2022),2 and my decision in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021- 01064, Paper 102, 49–50 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).
I balanced similar considerations in the Guidance Memo and in OpenSky by taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6.
Guidance Memo at 4; see also CommScope Tech. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023) (precedential) (holding that if Fintiv factors 1–5 favor discretionary denial, the Board must consider whether the record prior to institution demonstrates compelling merits).
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