In support of their Motion, the parties state as follows: Case 2:24-cv-00904-JRG-RSP Document 16 Filed 12/06/24 Page 2 of 3 PageID #:

On November 6, 2024, Plaintiffs filed their Complaint alleging patent infringement against Defendants.

On December 2, 2024, counsel for Defendants agreed to waive service under the Hague Convention for Defendants, all foreign entities, in exchange for a 120-day extension of time for all Defendants to answer or otherwise plead by April 2, 2025.

Defendants’ agreement with Plaintiffs should not be construed as a waiver of any other rights or defenses, including, for instance, Defendants’ right to file counterclaims, affirmative defenses, or to otherwise challenge the validity of the subject patents.

WHEREFORE, the parties respectfully request that the time in which Defendants are required to move, answer or otherwise respond to Plaintiffs’ Complaint be extended up to and including April 2, 2025.

Pursuant to Federal Rule of Civil Procedure 6(b) and the Court’s December 5, 2022 Standing Order Regarding Motions for Extension of Time, Plaintiff VideoLabs, Inc. (“VideoLabs”) and Defendant HP, Inc. (“HP”) respectfully request that the Court enter a Second Amended Scheduling Order, moving the close of fact discovery, expert discovery, and dispositive and Daubert motions by about three weeks, as indicated in the Proposed Second Amended Scheduling Order being submitted with this motion.

The remaining deadlines remain unchanged.

This request does not change the date of any hearing, trial, or other Court date, and does not extend the deadline of a final submission that affects the Court’s ability to hold a scheduled hearing, trial, or Court event.

Respectfully submitted,

Before KARL D. EASTHOM, STACEY G. WHITE, and BRIAN P. MURPHY, Administrative Patent Judges.

With the Board’s authorization, Petitioner and Patent Owner (collectively referred to as “the Parties”) filed a Joint Motion to Terminate due to settlement in each of the above-captioned proceedings.

However, a petitioner can avoid the § 315(b) bar by filing its petition(s) within one year after service of a complaint alleging infringement of the challenged patent.

Further, “[t]here are strong public policy reasons to favor settlement between the parties to a proceeding,” and, thus, “[t]he Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).

Accordingly, for the reasons discussed above, it is ORDERED that each Joint Motion in each of the above-captioned proceedings is granted, and each of the above-captioned proceedings is terminated pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and FURTHER ORDERED that each Joint Request to treat the Settlement Agreement as business confidential information in each of the above-captioned proceedings is granted, and each Settlement Agreement shall be kept separate from the files of Patent 8,291,236, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).3

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.

On information and belief, personal jurisdiction also exists specifically over each of the Defendants because they have overlapping executives, interlocking corporate structures and close relationships as manufacturer, importer and distributor of accused products.

The patent vastly improves upon existing methods, and the core technology it describes has been used throughout the industry for years as the Case 2:24-cv-00904-JRG-RSP Document 1 Filed 11/06/24 Page 18 of 47 PageID #: gold standard for coding video.

May 12, Case 2:24-cv-00904-JRG-RSP Document 1 Filed 11/06/24 Page 32 of 47 PageID #: 2014) (intent satisfied where defendant provided “technical support and services, as well as detailed explanations, instructions and information as to arrangements, applications and uses” of accused products).

Case 2:24-cv-00904-JRG-RSP Document 1 Filed 11/06/24 Page 41 of 47 PageID #: 2014) (intent satisfied where defendant provided “technical support and services, as well as detailed explanations, instructions and information as to arrangements, applications and uses” of accused products).

Pursuant to Federal Rule of Civil Procedure 6(b) and the Court’s December 5, 2022 Standing Order Regarding Motions for Extension of Time, Plaintiff VideoLabs, Inc. (“VideoLabs”) and Defendant HP, Inc. (“HP”) respectfully request that the Court enter a First Amended Scheduling Order, moving the close of fact discovery by two weeks as indicated in the Proposed First Amended Scheduling Order being submitted with this motion.

The remaining deadlines remain unchanged.

This request does not change the date of any hearing, trial, or other Court date, and does not extend the deadline of a final submission that affects the Court’s ability to hold a scheduled hearing, trial, or Court event.

Respectfully submitted,

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.

P. 12(B)(5) ...................................................................................................... passim Case 2:25-cv-00161-JRG-RSP Document 11 Filed 03/12/25 Page 4 of 16 PageID #: Defendants TCL Technology Group Corporation et al. (collectively “Defendants” or “TCL”) are foreign entities located in China, Mexico, Hong Kong, and Vietnam and respectfully move the Court for dismissal under Federal Rule of Civil Procedure 12(b)(5) for improper service.

Case 2:25-cv-00161-JRG-RSP Document 11 Filed 03/12/25 Page 11 of 16 PageID #: On a Rule 12(b)(5) Motion, it is Plaintiff’s burden of establishing proper service of process for each Defendant.

Mar. 16, 2012) (“Because substituted service on the Texas Secretary of State for a nonresident defendant requires the transmittal of judicial documents abroad, the Hague Convention is implicated.”); Traxcell Techs., LLC v. Nokia Sols.

of State – Bureau of Consular Affairs website) to show that service of process by mail is improper in China and Mexico – two of the countries where several of the Defendants are located.

Both Plaintiff and TCL Communication (USA) are incorporated in Delaware and maintain principal places of business in California (see Exhibit A and Compl., ECF No. 1, ¶14).

We find that, at this stage of the proceeding and based on the present record, Petitioner provides sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’236 patent.

Petitioner asserts the extrinsic evidence demonstrates a person of ordinary skill in the art “would have recognized that DTCP protocols include authentication and key and certificate exchange procedures that ensure communications are protected.” Pet. 41 (citing Ex. 1010 ¶ 9; Ex. 1011 ¶¶ 53, 107, 139–143).

Dr. Wasilewski, moreover, cites corroborating documentary evidence to support his opinion that DTCP protocols “require” AKE key exchange and authentication of the client-receiver by the DSCT (via DTLA license certificate) and a POSA would have recognized that fact.

At this stage, Patent Owner disputes Petitioner’s evidence that a POSITA would have recognized Russ’s disclosure of DTCP encryption as requiring AKE key exchange via DTLA license certificate as a “second root of trust” for authenticating the client-receiver.

However, according to Petitioner, Russ “leaves to the POSA specific implementation details regarding entitlements or usage rights for the myriad of encryption schemes that may be selected for communications between DSCT 110 and client-receiver 122, like DTCP or CPRM DRM schemes.” Id. (citing Ex. 1005, 16:64–17:14).

For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.

To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.

The Board defines a LEAP practitioner as a patent agent or attorney having three (3) or fewer substantive oral arguments in any federal tribunal, including PTAB.

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.

In stipulating to move any due dates in the scheduling order, the parties must be cognizant that the Board requires four weeks after the filing of an opposition to the motion to amend (or the due date for the opposition, if none is filed) for the Board to issue its preliminary guidance, if requested by Patent Owner.

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.

The parties to this action are properly joined under 35 U.S.C. § 299 because of the right to relief asserted against Defendants jointly and severally arises out of the same series of transactions and occurrences relating to the making, importing, using, offering for sale and selling of the same products or processes.

On information and belief, personal jurisdiction also exists specifically over each of the Defendants because they have overlapping executives, interlocking corporate structures and close relationships as manufacturer, importer and distributor of accused products.

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.

Case 2:25-cv-00161-JRG-RSP Document 1 Filed 02/10/25 Page 40 of 52 PageID #: 2014) (intent satisfied where defendant provided “technical support and services, as well as detailed explanations, instructions and information as to arrangements, applications and uses” of accused products).

Before KARL D. EASTHOM, STACEY G. WHITE, and BRIAN P. MURPHY, Administrative Patent Judges.

In IPR2025-00304, Petitioner ASUSTek Computer Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C. § 311 requesting institution of inter partes review of claims 32–36, 38–41, 43, 66–70, 72–75, 77, and 130–137 of U.S. Patent No. 8,291,236 B2 (Ex. 1001, “’236 patent”).

On February 27, 2025, pursuant to our authorization, Petitioner filed a Motion to Withdraw the Petition “through dismissal” in each instant case.

Joinder of a party to an instituted inter partes review is also within the Director’s sound discretion, which has been delegated to the Board.

35 U.S.C. § 315(c) (“[T]he Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition.”); Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321 (2020) (“[T]o effect joinder, § 315(c) requires the Director to exercise his discretion to decide whether to ‘join as a party’ the joinder applicant.

Before KARL D. EASTHOM, STACEY G. WHITE, and BRIAN P. MURPHY, Administrative Patent Judges.

In IPR2025-00304, Petitioner ASUSTek Computer Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C. § 311 requesting institution of inter partes review of claims 32–36, 38–41, 43, 66–70, 72–75, 77, and 130–137 of U.S. Patent No. 8,291,236 B2 (Ex. 1001, “’236 patent”).

On February 27, 2025, pursuant to our authorization, Petitioner filed a Motion to Withdraw the Petition “through dismissal” in each instant case.

Joinder of a party to an instituted inter partes review is also within the Director’s sound discretion, which has been delegated to the Board.

35 U.S.C. § 315(c) (“[T]he Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition.”); Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321 (2020) (“[T]o effect joinder, § 315(c) requires the Director to exercise his discretion to decide whether to ‘join as a party’ the joinder applicant.

Before KARL D. EASTHOM, STACEY G. WHITE, and BRIAN P. MURPHY, Administrative Patent Judges.

With the Board’s authorization, Petitioner and Patent Owner (collectively referred to as “the Parties”) filed a Joint Motion to Terminate due to settlement in each of the above-captioned proceedings.

However, a petitioner can avoid the § 315(b) bar by filing its petition(s) within one year after service of a complaint alleging infringement of the challenged patent.

Further, “[t]here are strong public policy reasons to favor settlement between the parties to a proceeding,” and, thus, “[t]he Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).

Accordingly, for the reasons discussed above, it is ORDERED that each Joint Motion in each of the above-captioned proceedings is granted, and each of the above-captioned proceedings is terminated pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and FURTHER ORDERED that each Joint Request to treat the Settlement Agreement as business confidential information in each of the above-captioned proceedings is granted, and each Settlement Agreement shall be kept separate from the files of Patent 8,291,236, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).3

Before KARL D. EASTHOM, STACEY G. WHITE, and BRIAN P. MURPHY, Administrative Patent Judges.

With the Board’s authorization, Petitioner and Patent Owner (collectively referred to as “the Parties”) filed a Joint Motion to Terminate due to settlement in each of the above-captioned proceedings.

However, a petitioner can avoid the § 315(b) bar by filing its petition(s) within one year after service of a complaint alleging infringement of the challenged patent.

Further, “[t]here are strong public policy reasons to favor settlement between the parties to a proceeding,” and, thus, “[t]he Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).

Accordingly, for the reasons discussed above, it is ORDERED that each Joint Motion in each of the above-captioned proceedings is granted, and each of the above-captioned proceedings is terminated pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and FURTHER ORDERED that each Joint Request to treat the Settlement Agreement as business confidential information in each of the above-captioned proceedings is granted, and each Settlement Agreement shall be kept separate from the files of Patent 8,291,236, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).3

Plaintiffs, VIDEOLABS, INC., and VL COLLECTIVE

de C.V.; and HISENSE INTERNATIONAL

PLEASE TAKE NOTICE that Xiang Wang of the law firm of Orrick, Herrington & Sutcliffe LLP, 5701 China World Tower A, No. 1 Jianguomenwai Avenue, Beijing, 100004 People’s Republic of China, will appear as counsel for Defendants HISENSE CO. LTD.;

HISENSE ELECTRONICA MEXICO S.A. de C.V.; and HISENSE INTERNATIONAL (HK)

The undersigned requests service of all pleadings, discovery, correspondence, notices, calendar, and other materials affecting this action.