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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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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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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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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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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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