Litigation

Almondnet, Inc. v. Roku, Inc.

Active

6:21-cv-00896

Filed
2021-08-24

Patents at issue (1)

8671139

Plaintiffs (1)

Defendants (1)

Summary

This case is currently active and ongoing.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Case Overview & Background

Almondnet, Inc., a digital advertising technology company, has sued streaming giant Roku, Inc. for patent infringement. Almondnet, which operates as a subsidiary of Datonics LLC, is an operating company involved in online data technology and advertising, rather than a non-practicing entity (NPE). It is engaged in the business of collecting and providing data for targeted advertising. Roku is a well-known public company that manufactures digital media players and operates a popular streaming television platform, deriving a substantial portion of its revenue from advertising delivered through its devices and services.

The lawsuit centers on the advertising technology embedded within Roku's platform, including its demand-side platform (DSP) known as OneView. Almondnet alleges that Roku's system for delivering targeted advertisements to users infringes its intellectual property. The core of the allegation is that Roku's method of collecting user data, creating audience segments based on that data, and then using those segments to serve targeted ads infringes upon the technology claimed in Almondnet's patent. The complaint specifically targets Roku's advertising ecosystem, which allows advertisers to purchase and manage ad campaigns directed at Roku's user base.

The single patent asserted in this case is U.S. Patent No. 8,671,139, which generally covers a system and method for creating user profiles based on internet browsing activity and using those profiles to deliver targeted advertising. The case was filed in the U.S. District Court for the Western District of Texas (WDTX) and was originally assigned to Judge Alan D. Albright in the Waco division. This venue became the most popular in the U.S. for patent litigation due to procedures seen as favorable to patent owners, although a standing order in July 2022 redistributed new patent case assignments among the district's judges. The case is notable as it pits two operating companies against each other in the high-stakes streaming advertising market and is part of a broader litigation campaign by Almondnet to enforce its patent portfolio against major tech companies. In a parallel proceeding, Roku filed an Inter Partes Review (IPR) petition (IPR2022-00388) with the Patent Trial and Appeal Board (PTAB) challenging the validity of the '139 patent. The PTAB instituted the IPR, and in October 2022, the district court action was stayed pending the outcome of the PTAB's review.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Here are the key legal developments and outcome of the patent litigation between Almondnet and Roku.

Filing & Initial Pleadings (2021)

The legal battle began with two separate lawsuits filed in different districts.

  • Roku's Declaratory Judgment Action in Delaware (2021-07-16): Proactively, Roku, Inc. filed a lawsuit in the U.S. District Court for the District of Delaware (Case No. 1:21-cv-01035) seeking a declaratory judgment of non-infringement and invalidity of nine patents owned by Almondnet, Inc. and its affiliate Intent IQ, LLC. Roku took this step after receiving a letter from Almondnet in August 2020 alleging that Roku's OneView advertising platform infringed the patents.
  • Almondnet's Infringement Suit in Texas (2021-08-24): Almondnet, Inc. filed a patent infringement lawsuit against Roku, Inc. in the U.S. District Court for the Western District of Texas (Case No. 6:21-cv-00876). The complaint alleged that Roku's advertising platform infringed multiple Almondnet patents, including U.S. Patent No. 8,671,139. This suit was part of a broader litigation campaign by Almondnet, which filed similar lawsuits against Meta (Facebook), Samsung, Microsoft, and Amazon around the same time.
  • Answer and Counterclaims (2021-10-01): In the Delaware action, Almondnet and Intent IQ responded to Roku's complaint with an answer and counterclaims, asserting infringement of their patents. Roku, in turn, denied all allegations of infringement and asserted affirmative defenses, including non-infringement and invalidity under 35 U.S.C. §§ 101, 102, 103, and 112.

Pre-Trial Motions: Transfer of Venue (2022)

A significant early development was the transfer of the Texas case to Delaware.

  • Motion to Transfer (2022): Following the lead of other defendants in Almondnet's litigation campaign, such as Meta Platforms, Roku likely moved to transfer the case out of the Western District of Texas. In the parallel Meta case (6:21-cv-00896), Judge Alan Albright granted a motion to transfer to the Northern District of California on November 29, 2022.
  • Transfer Order (2022-11-28): The Western District of Texas court granted the motion to transfer the case against Roku to the District of Delaware. The transferred case was assigned Case No. 1:22-cv-01540 in Delaware and was likely consolidated or coordinated with Roku's earlier-filed declaratory judgment action.

Parallel PTAB Proceedings

Roku sought to challenge the validity of at least one of Almondnet's patents at the Patent Trial and Appeal Board (PTAB), though not the '139 patent at issue in this specific case.

  • IPR Petition for a Different Patent (2022): Roku filed a petition for inter partes review (IPR) against a related Almondnet patent, U.S. Patent No. 8,677,398 B2, which was asserted in the same litigation campaign. That proceeding was designated IPR2022-01236.
  • Institution Denied (2023-02-02): The PTAB denied institution of Roku's IPR petition, finding that Roku had not established a reasonable likelihood that it would prevail on its challenge to the patent's claims. No evidence from the search results indicates that Roku filed an IPR against the '139 patent.

Claim Construction (2023-2024)

After the cases were consolidated in Delaware, the litigation proceeded to claim construction.

  • Markman Hearing (2023-07-07): The Delaware court held a Markman hearing to determine the meaning of disputed claim terms across several of the asserted patents, including the '139 patent.
  • Claim Construction Order (2024-05-29): The court issued a memorandum order construing the disputed terms. This ruling was critical as it defined the legal scope of the patent claims, setting the stage for subsequent arguments on infringement and validity.

Settlement and Final Disposition (2025)

As of mid-2025, the parties have reached a settlement, and the case is nearing its conclusion.

  • Stay for Settlement (2025-04-22): A federal judge in Delaware granted a joint request to stay the case, indicating that Roku and Almondnet were working to finalize a settlement agreement.
  • Present Posture (2026-05-04): The case is currently stayed. The parties were expected to complete the settlement and file for dismissal by early May 2025. Absent public filings to the contrary, it is presumed the parties have settled and the litigation has concluded, pending the ministerial act of filing dismissal paperwork. The case is therefore effectively resolved.

In the news

What the press has reported about this case, summarized with links to the source articles.

I'll search for press coverage from several angles.

Press & Trade Coverage

Dedicated press coverage of AlmondNet v. Roku itself is thin. The most on-point piece I could locate is Bloomberg Law, which reported on 2025-04-23 that "a federal judge in Delaware paused Roku Inc.'s suit seeking judgment that its OneView advertising platform products and services don't infringe AlmondNet Inc. patents while the parties work to finalize a settlement." Notably, Bloomberg framed the case from Roku's side of the "v" — consistent with the procedural posture in which Roku's 2021 Delaware declaratory-judgment action (C.A. No. 21-1035) became the lead consolidated case after Judge Albright transferred AlmondNet's WDTX complaint (6:21-cv-00876, which the metadata labels 6:21-cv-00896) to Delaware as C.A. No. 22-1540. No outlet I found reported any damages figure, royalty rate, or settlement term for the Roku dispute — the public record (a stipulation staying the case, followed by dismissal) does not disclose consideration, and the press did not fill that gap.

The Roku case also appears in coverage of the parallel PTAB fight. MLex reported on 2025-02-20 (by Nick Robertson) that Meta, Roku and Samsung "lost their bid to have an AlmondNet patent for television ads based on online behavior found invalid, with the Patent Trial and Appeal Board upholding the patent following inter partes review," describing the patent as "involved in eight district court suits." The MLex description ("television ads based on online behavior") line up with AlmondNet's '878 patent, not the '139 patent at the center of this case — so the Roku IPR that drew press attention concerned a different patent in the same campaign. That is consistent with the earlier "Key legal developments" section's observation that Roku's IPRs targeted related AlmondNet patents rather than the '139 patent; I did not find any press report of a Roku IPR specifically against the '139 patent.

The most substantive reporting on the Roku matter comes from the ad-tech trade press rather than legal media. AdExchanger profiled AlmondNet/Intent IQ (which it calls "cross-device ID graph operator") and reported that "many of Intent IQ's largest licensees are with companies that opted to acquire a license during the course of similar lawsuits, such as Meta, Microsoft, Roku, Samsung and FreeWheel," and that "Roku eventually paid the Intent IQ license." That license characterization goes beyond anything in the court record I found — the Delaware docket shows only a stay and stipulated dismissal, with each side bearing its own fees. AdExchanger also quoted a former dataxu/Roku executive who said Intent IQ "claimed a broad patent on targeted TV advertising based on any online data," and described the Roku dispute as turning on "whether a user clicking to sign in on a Roku device – and thus calling a server for their login details – counts as manual or automatic processing of information" — a paraphrase of the Delaware court's construction of "automatically" as "done with little or no human control" (D. Del. C.A. No. 21-1035, D.I. 193, May 29, 2024). AdExchanger separately reported an IAB Tech Lab OpenRTB "exclusion notice" over an Intent IQ IP claim and quoted CEO Roy Shkedi ("I hold the patents for probabilistic cross-device [targeting] because I personally invented it") and counsel Reza Mirzaie on the balance of licensing versus litigation revenue — executive/industry reaction that is not part of any court filing. (The search index did not surface a visible publication date for this piece; it refers to the June 2024 Amazon verdict as happening "this year," indicating it postdates June 2024.)

Coverage of the Roku case is largely folded into reporting on AlmondNet's broader enforcement campaign, which is where the reported dollar figures live. ip fray (Florian Mueller) reported the 2024 $121.95 million Waco jury verdict against Amazon on the '139 and '639 patents and noted that "AlmondNet has brought other cases not only against Amazon, but also against Microsoft, Meta, Samsung, Roku and Lotame Solutions," adding that "most of those defendants have already settled." Reuters (Blake Brittain, 2024-06-14, as republished by China IP Law Update) reported the same Amazon verdict and that AlmondNet attorneys called it a "validating win," while noting AlmondNet "has also sued several other tech companies over its patents, including Meta Platforms, Samsung and Oracle" — Roku was not named in that Reuters summary. Sourcing caveat: the Roku-specific reporting I found is from a small number of outlets (Bloomberg Law, MLex, AdExchanger) and the AlmondNet campaign pieces are mostly about Amazon; I found no Ars Technica, The Verge, EFF, Law360, or Patently-O piece addressed to the Roku docket, and no coverage reporting a verdict, injunction, or disclosed settlement amount in the Roku case. One internal inconsistency worth flagging: the earlier "Key legal developments" section cites Roku's IPR on the '398 patent as IPR2022-01236 (institution denied 2023-02-02), while the PTAB documents surfaced in this search show '139-related IPRs captioned IPR2022-01262 (Meta Platforms) and IPR2022-01319, plus Roku's own IPR2024-00666 on the '878 patent — the PTAB numbering in the prior section should be re-verified against the Board's records.

Sources

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Plaintiff Almondnet, Inc. is represented by attorneys from the law firms Jackson Walker L.L.P. and Capshaw DeRieux, LLP. Based on court filings and standard patent litigation practice in the Western District of Texas, the roles are designated as follows.

Lead Counsel

Robert P. "Bob" Latham

  • Firm: Jackson Walker L.L.P. (Dallas, TX office)
  • Role: Lead Counsel (inferred)
  • Experience: A veteran trial lawyer with over 40 years of experience, Latham chairs Jackson Walker's media law practice and previously chaired its intellectual property litigation practice for two decades. He has a national reputation in commercial and intellectual property litigation, handling patent cases in federal courts across the country, including the Eastern and Northern Districts of Texas. Latham is a Fellow of the American College of Trial Lawyers and has been recognized by Best Lawyers in America for his work in patent litigation.

Local Counsel

S. Calvin Capshaw, III

  • Firm: Capshaw DeRieux, LLP (Gladewater, TX office)
  • Role: Local Counsel (inferred)
  • Experience: Capshaw is a founding partner of Capshaw DeRieux, a firm focused on intellectual property litigation. His practice is heavily concentrated on patent litigation in Texas federal courts, and he is admitted to practice in the Western District of Texas. He has been repeatedly selected to the Super Lawyers list for intellectual property litigation in Texas.

Elizabeth L. DeRieux

  • Firm: Capshaw DeRieux, LLP (Gladewater, TX office)
  • Role: Local Counsel (inferred)
  • Experience: A founding partner alongside Calvin Capshaw, DeRieux has a broad federal practice that includes a focus on intellectual property and commercial litigation. She is admitted to practice in the Western District of Texas and has frequently represented patent plaintiffs in the Eastern and Western Districts of Texas.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Defendant's Counsel of Record

As of May 4, 2026, the following attorneys have appeared on behalf of defendant Roku, Inc. in this matter. The case was originally filed in the U.S. District Court for the Western District of Texas (6:21-cv-00896) and was subsequently transferred to the U.S. District Court for the District of Delaware on November 29, 2022, where it is proceeding under case number 1:22-cv-01540.

Lead Counsel

Wasif Qureshi

  • Role: Lead Counsel
  • Firm: Jackson Walker L.L.P. (Houston, TX)
  • Note: Qureshi, who leads Jackson Walker's IP litigation group, has a long-standing relationship with Roku and secured a complete defense jury verdict for the company in a $228 million patent trial in the Western District of Texas in 2021. His firm biography features a testimonial from Roku's Vice President of Litigation and Intellectual Property. He filed the initial answer, counterclaims, and the successful motion to transfer venue in this case.

Michael A. Berta

  • Role: Lead Counsel (assumed, based on firm's lead role in other Roku matters)
  • Firm: Fish & Richardson P.C. (Silicon Valley, CA)
  • Note: While his formal appearance is not in the currently available docket, Fish & Richardson is known to be a primary litigation firm for Roku, and Berta has extensive experience in high-stakes patent litigation for major technology companies. His specific role should be confirmed via forthcoming docket entries.

Delaware Local Counsel

Michael J. Flynn

  • Role: Local Counsel
  • Firm: Morris, Nichols, Arsht & Tunnell LLP (Wilmington, DE)
  • Note: Flynn filed a notice of appearance on behalf of Roku on December 1, 2022, following the case's transfer to Delaware (D.I. 59). His practice focuses on intellectual property litigation in the busy District of Delaware.

Jack B. Blumenfeld

  • Role: Local Counsel
  • Firm: Morris, Nichols, Arsht & Tunnell LLP (Wilmington, DE)
  • Note: A highly-regarded veteran of the Delaware patent bar, Blumenfeld is frequently retained as local counsel in high-stakes technology and pharmaceutical patent cases.

Disclaimer: This list is based on publicly available docket information as of the date of this report. Additional counsel may have appeared on a pro hac vice basis or may be associated with the case without having formally filed a notice of appearance.