Amazon.com, Inc. et al. v. VB Assets, LLC

This Inter Partes Review (IPR2020-01367) was initiated by Amazon.com, Inc. and several of its affiliated entities (collectively, "Amazon"), which are major operating companies in e-commerce, cloud computing, and consumer electronics. The IPR challenged the validity of U.S. Patent 8,073,681 owned by VB Assets, LLC. VB Assets, LLC operates as a patent assertion entity (PAE) or non-practicing entity (NPE), formed by former employees and investors of VoiceBox Technologies, an early pioneer in conversational AI. VB Assets holds and licenses a portfolio of intellectual property covering innovations in voice assistants and conversational AI technology. The specific patent at issue, U.S. Patent 8,073,681, generally describes a "System and method for a cooperative conversational voice user interface" that uses shared knowledge to interpret user intent from speech and generate adaptive responses.

The IPR was filed as a defensive measure in the Patent Trial and Appeal Board (PTAB) on July 28, 2020, in response to a patent infringement lawsuit, VB Assets, LLC v. Amazon.com Services LLC, C.A. No. 19-1410 (MN), filed in July 2019 in the United States District Court for the District of Delaware. In the district court case, VB Assets accused Amazon's Alexa products, including the Echo, of infringing the '681 patent and several other related patents concerning voice recognition and natural language processing. The PTAB proceeding concluded on December 21, 2022, with a Final Written Decision and an IPR Certificate, resulting in the disclaimer of claims 37-42 of the '681 patent.

This case is notable due to VB Assets' pattern of asserting conversational AI patents, stemming from the acquired VoiceBox Technologies portfolio, against major technology companies like Amazon, Apple, and Google. The district court litigation, presided over by Judge Maryellen Noreika, culminated in a November 2023 jury verdict finding willful infringement by Amazon and awarding VB Assets $46.7 million in damages, with ongoing royalties later established by the court. The IPR's outcome, leading to the disclaimer of claims, highlights the strategic interplay between district court litigation and PTAB challenges in high-stakes patent disputes involving foundational voice technology.

Key Legal Developments and Outcome for VB Assets, LLC v. Amazon.com, Inc. et al. (D. Del. Case No. 1:19-cv-01410), related to IPR2020-01367 concerning U.S. Patent 8,073,681:

Filing & Initial Pleadings:

• July 2019: VB Assets, LLC filed a patent infringement lawsuit against Amazon.com, Inc. and related entities in the U.S. District Court for the District of Delaware, alleging infringement of several patents, including U.S. Patent No. 8,073,681 (the '681 patent), 9,626,703 (the '703 patent), 7,818,176 (the '176 patent), and 9,269,097 (the '097 patent). The lawsuit claimed Amazon's Alexa and Echo products infringed VoiceBox Technologies' pioneering voice-based technologies. VB Assets, LLC was formed by former employees and investors of VoiceBox Technologies, which developed speech language recognition technologies.

Pre-trial Motions of Substance:

• September 16, 2020: The District Court denied Amazon's motion to dismiss the first amended complaint under Federal Rule of Civil Procedure 12(b)(6), which argued that the asserted patent claims, including those of the '681 patent, were invalid as directed to patent-ineligible subject matter under 35 U.S.C. § 101.
• May 23, 2023: Amazon filed motions for summary judgment, including for invalidity of the '681, '703, and '097 patents, and non-infringement of all five asserted patents. The court issued an order regarding these motions, indicating some were denied.

Parallel PTAB IPR Proceedings:

• July 28, 2020: Amazon.com, Inc. and its affiliates filed IPR2020-01367 against VB Assets, LLC, challenging the validity of U.S. Patent 8,073,681.
• December 21, 2022: IPR2020-01367 was terminated with a Final Written Decision and an IPR Certificate. As a result, claims 37-42 of U.S. Patent 8,073,681 were disclaimed. The district court litigation, however, proceeded with claim 13 of the '681 patent.

Trial Events, Verdict, and Post-Trial Motions:

• November 2-8, 2023: A five-day jury trial was held in the District of Delaware.
• November 8, 2023: The jury returned a unanimous verdict, finding that Amazon willfully infringed claim 13 of the '681 patent, claim 25 of the '703 patent, claim 40 of the '176 patent, and claim 23 of the '097 patent. The jury also found that Amazon failed to prove that these asserted claims were invalid for lack of adequate written description or obviousness, and that the claims were patent eligible under Section 101. The jury awarded VB Assets $46.7 million in running royalty damages.
• Post-Trial Motions: Both parties filed post-trial motions. Amazon renewed its motion for judgment as a matter of law (JMOL) on infringement, invalidity, ineligibility, and willfulness. VB Assets sought pre-judgment and post-judgment interest on the damages award, an ongoing royalty, and enhanced damages.
• September 30, 2024: The District Court issued an order granting-in-part and denying-in-part Amazon's motion for JMOL and VB Assets' motion for an ongoing royalty, pre-judgment interest, post-judgment interest, and enhanced damages.
• December 12, 2024: The court issued a further order regarding an ongoing royalty. It awarded VB Assets an ongoing royalty of $0.45 for the '681 patent per net new Alexa user, and $0.25 for the '176 and '097 patents per net new Alexa shopping user.

Final Disposition or Present Posture:
The case is currently in the post-trial phase, with the court having ruled on various post-trial motions including the ongoing royalty rate. The jury verdict of willful infringement and $46.7 million in damages, along with the court-ordered ongoing royalties, stands, subject to any potential appeals to the Federal Circuit. VB Assets has also filed new patent infringement lawsuits against other entities, such as Google LLC in April 2026, related to its portfolio.

Counsel for Plaintiff(s) Amazon.com, Inc. et al. in IPR2020-01367

As the Patent Trial and Appeal Board (PTAB) case IPR2020-01367 has concluded, identifying the precise counsel of record for the petitioner, Amazon.com, Inc. et al., requires examining the official filings, such as the Petition for Inter Partes Review or a Power of Attorney. While direct public access to these specific documents through the provided search tools is limited, a consistent pattern in Amazon's PTAB litigation indicates their preferred counsel for such proceedings.

Based on available information and common representation patterns in Amazon's inter partes review cases, Knobbe Martens Olson & Bear LLP is frequently identified as representing Amazon entities as petitioners before the PTAB. For instance, Knobbe Martens attorneys, including Colin B. Heideman, have represented Amazon in similar IPRs, such as IPR2025-00757 and IPR2025-01365 [cite: 1 (from step 2), 4 (from step 3)]. While Fenwick & West LLP is also a prominent firm representing Amazon in broader patent litigation matters, particularly in district court infringement defense, Knobbe Martens has a strong track record in Amazon's PTAB challenges [cite: 7 (from step 3), 11 (from step 3), 1 (from step 4), 3 (from step 4)].

Given this, the counsel of record for Amazon.com, Inc. et al. in IPR2020-01367 would most likely be from Knobbe Martens Olson & Bear LLP.

Here is a summary of the likely counsel, based on Amazon's consistent representation in IPRs:

• Name: Colin B. Heideman (likely lead counsel)
  • Role: Lead Counsel (common for Knobbe Martens attorneys in Amazon IPRs)
  • Firm: Knobbe Martens Olson & Bear LLP, likely from one of their California (e.g., Orange County, San Diego), Washington D.C., or Seattle offices, given Amazon's locations and Knobbe Martens' national presence [cite: 1 (from step 4), 3 (from step 4), 5 (from step 4), 8 (from step 4)].
  • Note: Colin B. Heideman is a partner at Knobbe Martens and has been counsel for Amazon in other IPR proceedings. He is experienced in patent litigation and post-grant proceedings. [cite: 1 (from step 2), 4 (from step 3)]

Without direct access to the specific Power of Attorney or Petition for Inter Partes Review for IPR2020-01367, this assessment is based on a strong inferential pattern from Amazon's publicly documented legal representation in similar PTAB actions. There are no indications that filings are sealed or that counsel has not appeared.

This task identifies the counsel of record representing VB Assets, LLC in the related patent infringement case, VB Assets, LLC v. Amazon.com Services LLC, C.A. No. 19-1410 (MN), in the United States District Court for the District of Delaware.

Counsel for VB Assets, LLC (Plaintiff in District Court, Patent Owner in IPR)

Here are the attorneys who represented VB Assets, LLC:

• James C. Yoon (Lead Counsel)
  • Firm: Wilson Sonsini Goodrich & Rosati P.C., Palo Alto, CA.
  • Note: Mr. Yoon is noted for patent litigation, particularly in high-stakes technology disputes. He was involved in the appeal of this case to the Federal Circuit.
• Ryan R. Smith (Lead Counsel)
  • Firm: Wilson Sonsini Goodrich & Rosati P.C., Palo Alto, CA.
  • Note: Mr. Smith is also noted for his involvement in patent litigation and appeals, including the Federal Circuit appeal for this case.
• Matthew A. Macdonald (Counsel)
  • Firm: Wilson Sonsini Goodrich & Rosati P.C., Los Angeles, CA.
• Jamie Otto (Counsel)
  • Firm: Wilson Sonsini Goodrich & Rosati P.C., Los Angeles, CA.
  • Note: Ms. Otto was also listed as counsel for VB Assets, LLC in the appeal to the Federal Circuit.
• Alexander J. Turner (Counsel)
  • Firm: Wilson Sonsini Goodrich & Rosati P.C., Los Angeles, CA.
• Bradley T. Tennis (Counsel)
  • Firm: Wilson Sonsini Goodrich & Rosati P.C., Washington, DC.
• Mikaela E. Evans-Aziz (Counsel)
  • Firm: Wilson Sonsini Goodrich & Rosati P.C., San Francisco, CA.
  • Note: Ms. Evans-Aziz was also listed as counsel for VB Assets, LLC in the appeal to the Federal Circuit.
• Neal C. Belgam (Local Counsel)
  • Firm: Smith, Katzenstein & Jenkins LLP, Wilmington, DE.
• Jason Z. Miller (Local Counsel)
  • Firm: Smith, Katzenstein & Jenkins LLP, Wilmington, DE.