January 9, 2025
On January 7, Willkie secured another win for client Netflix, invalidating US Patent No. 8,605,794 owned by VL Collective IP LLC (VideoLabs) at the Patent Trial and Appeal Board (PTAB). Partner Aliza George Carrano argued Netflix’s case before a three-judge PTAB panel at the United States Patent and Trademark Office headquarters in Alexandria, Virginia. This is the third VideoLabs patent that Willkie has now invalidated in the litigation against VideoLabs.
VideoLabs initially sued Netflix in 2022 in the District of Delaware for allegedly infringing four patents that VideoLabs contends is practiced by various aspects of Netflix’s streaming platform including the provisioning of content, content delivery, encoding, and synchronizing different forms of media.
The Willkie team swiftly responded by filing separate inter partes review (IPR) actions at the PTAB challenging the validity of three of the four asserted patents. After reviewing Netflix’s IPR petitions, the PTAB determined that there was a reasonable likelihood that Netflix would prevail on at least one of the claims challenged in each patent and instituted all three IPR proceedings. With the IPRs going forward, Willkie moved to stay the district court litigation, which the court granted.
In the recently issued Final Written Decision, the PTAB agreed with Netflix that all 22 claims of the ’794 patent were unpatentable.
Willkie previously secured the invalidation of two other patents owned by VideoLabs before the PTAB – US Patent Nos. 7,233,790 and 7,440,559 – stemming from the same lawsuit. In those IPR petitions, the PTAB also agreed with Netflix on every issue for every claim for each invalidity ground, finding that all 14 claims of the ’790 patent and all 24 claims of the ’559 patent were unpatentable.
The Willkie team was led by partner Aliza George Carrano and included associate Dane Sowers.
VideoLabs initially sued Netflix in 2022 in the District of Delaware for allegedly infringing four patents that VideoLabs contends is practiced by various aspects of Netflix’s streaming platform including the provisioning of content, content delivery, encoding, and synchronizing different forms of media.
The Willkie team swiftly responded by filing separate inter partes review (IPR) actions at the PTAB challenging the validity of three of the four asserted patents. After reviewing Netflix’s IPR petitions, the PTAB determined that there was a reasonable likelihood that Netflix would prevail on at least one of the claims challenged in each patent and instituted all three IPR proceedings. With the IPRs going forward, Willkie moved to stay the district court litigation, which the court granted.
In the recently issued Final Written Decision, the PTAB agreed with Netflix that all 22 claims of the ’794 patent were unpatentable.
Willkie previously secured the invalidation of two other patents owned by VideoLabs before the PTAB – US Patent Nos. 7,233,790 and 7,440,559 – stemming from the same lawsuit. In those IPR petitions, the PTAB also agreed with Netflix on every issue for every claim for each invalidity ground, finding that all 14 claims of the ’790 patent and all 24 claims of the ’559 patent were unpatentable.
The Willkie team was led by partner Aliza George Carrano and included associate Dane Sowers.
