Cedar Lane Technologies Inc. v. Dai Nippon Printing Co., Ltd.

I'll research this case and the patent before drafting.

I'll research this case across the docket, PTAB, and legal press. Let me start with several parallel searches.

The docket looks short — let me verify PTAB activity on the '489 patent and the broader campaign context.

Cedar Lane Techs. v. Dai Nippon Printing — Key Developments (6:21-cv-00597, W.D. Tex.)

Bottom line: This was a nine-document, ~24-week case that never reached an answer. The entire substantive legal history is: complaint → service → two agreed extensions → plaintiff's voluntary dismissal with prejudice on 2021-11-29. No motion to dismiss, no transfer/stay motion, no Markman, no discovery, no IPR involving this defendant, no judgment, no fees motion, no appeal.

Chronology (docket-grounded)

Category-by-category

Initial pleadings. Complaint only. DNP never answered and asserted no counterclaims (no invalidity/non-infringement/inequitable-conduct pleadings exist). Cedar Lane's Rule 7.1 disclosure and Rabicoff's appearance were the sole plaintiff-side papers beyond the complaint.

Pre-trial motions of substance. None. No Rule 12(b) motion to dismiss, no § 1404(a) transfer motion (notable, since DNP is a Japanese company and foreign-defendant transfer/sufficiency-of-service fights are common), no motion to stay pending IPR, no summary judgment. The two extensions were unopposed/agreed notices, not contested motions.

Claim construction. Never reached. No scheduling order, no Markman briefing, no Albright preliminary-construction practice, no hearing.

Discovery. None of record. No infringement/contentions, no ESI, no depositions. The only "discovery-adjacent" event is the 2021-07-07 waiver of service (DNP avoiding formal service under Rule 4(d)).

Trial / verdict / post-trial. None. No JMOL, new-trial, or § 285 fees motion by either side.

Final disposition. Voluntary dismissal with prejudice (Dkt. 13) on 2021-11-29, before DNP's 2021-12-08 answer deadline. Because no answer had been filed, dismissal was available as of right under Fed. R. Civ. P. 41(a)(1)(A)(i) — which is why the docket shows no separate order granting it; the notice itself terminated the case. The dismissal being with prejudice means Cedar Lane cannot refile on the '489 patent against DNP, and it is the functional equivalent of a final judgment for DNP with no claim-preclusive findings on validity or infringement. No appeal was taken.

Parallel PTAB proceedings. I found no IPR/PGR petition by Dai Nippon Printing against U.S. Patent No. 6,721,489, and therefore no stay practice in this case. Campaign-level PTAB activity against Cedar Lane did exist around this period — most relevantly, Unified Patents petitioned for IPR against Cedar Lane patents in early October 2019 (RPX reports the '177 patent), and a Unified Patents v. Cedar Lane proceeding, IPR2020-00006 (filed 2019-10-03; instituted 2020-03-18; final written decision 2021-02-12, challenging claims 1–26), appears in PTAB records. I could not confirm from the retrieved sources that IPR2020-00006 targeted the '489 rather than a sibling patent, so treat that identification as unverified. In any event, nothing at the PTAB affected this docket, and the dismissal was not tied to any Board proceeding.

Strategic context (inference, clearly flagged)

• Patent provenance. Per RPX, the '489 (inventors Benyamin et al.; issued 2004-04-13; priority ~March 2000; a one-patent family) originated with PhatNoise, Inc., passed to an Intellectual Ventures affiliate in 2006, and reached Cedar Lane in 2019 via AVInnov LLC. Justia's citation table lists 6,721,489 (Apr. 13, 2004, Benyamin et al.) under the heading "Remotely controlling playback devices" — I could not independently confirm the patent's formal title from a USPTO source, so treat the title as provisional.
• Same-patent campaign. Cedar Lane asserted the '489 widely and almost always extracted short-lived outcomes: Charter/Frontier/Starz (2019), Walt Disney (6:20-cv-00949, 2020), Spotify (1:21-cv-00676, 2021), Verizon (6:22-cv-00043, 2022), and near-contemporaries Seiko Epson (6:21-cv-00962, filed 2021-09-16) and Fujitsu (6:21-cv-01361, filed 2021-12-27, dismissed with prejudice by 2022-03-31). The DNP dismissal fits a pattern of rapid, with-prejudice exits consistent with a nuisance-value license — though no license, settlement agreement, or payment is documented in the docket, so the existence of a deal is an inference, not a sourced fact.
• Timing cluster. Cedar Lane dismissed several defendants within days of each other in late November 2021 (e.g., Allied Vision, D.E. 1:21-cv-01285, dismissed 2021-11-22), which suggests either consolidated portfolio resolution or a winding-down of filings rather than a merits-driven result specific to DNP.

Sourcing caveats

• Accused products are not identified in any source I retrieved. DNP is a Japanese printing/packaging and information-media company; the specific accused product line cannot be stated without the complaint's exhibits.
• DNP's law firm is not confirmed; only its attorney of record (Matthew Cook Bernstein) appears in the docket data.
• Discrepancy in third-party databases: a Korean government/KOTRA database entry for this same case number lists different patents (6,873,743; 7,088,855; 9,983,836), which appears to be a data error. Per the case metadata supplied, the sole patent at issue is 6,721,489, and the complaint's six exhibits are consistent with a single-patent assertion.
• The docket snapshots I could retrieve are from Patexia, UniCourt, and Ex Parte (UniCourt was last synced 2021-08-10 and therefore misses the November 2021 entries that Patexia captures). Recommend a fresh PACER pull of Dkts. 1, 13, and the Rule 41 termination entry to confirm the dismissal's precise procedural basis and to capture the complaint's accused-product allegations.

Key citations: Dkt. 1 (Compl., 2021-06-11); Dkt. 9 (waiver, 2021-07-08); Dkt. 10 (2021-10-04 extension); Dkt. 12 (2021-11-08 extension); Dkt. 13 (Notice of Voluntary Dismissal with Prejudice, 2021-11-29). Campaign background: RPX, "In a Matter of Months, Former IV Portfolio Bounces Off One NPE to Land in New Cedar Lane Complaints" (2019-11-09), https://litigation.rpxcorp.com/news/59211; Patexia docket, https://services.patexia.com/lawsuits/Cedar-Lane-Technologies-Inc-v-Dai-Nippon-Printing-Co-Ltd-id-[152832](/patent/152832)/documents; Unified Patents v. Cedar Lane, IPR2020-00006 summary, https://services.patexia.com/lawsuits/Unified-Patents-LLC-v-Cedar-Lane-Technologies-Inc-id-[128967](/patent/128967).

Bottom line

The public docket in Cedar Lane Techs. Inc. v. Dai Nippon Printing Co., Ltd., No. 6:21-cv-00597 (W.D. Tex.) shows exactly one attorney of record for the plaintiff: Isaac P. Rabicoff of Rabicoff Law LLC (Chicago). He signed the complaint, the Rule 7 disclosure statement, every service-related filing, and the notice of voluntary dismissal. No local counsel, no second plaintiff-side attorney, and no in-house lawyer ever entered an appearance on this docket.

Plaintiff's counsel of record

Notes and caveats

• No local counsel appears. Nothing in the 14-entry docket reflects a W.D. Tex. local-counsel designation or a pro hac vice motion by Rabicoff. Whether he was admitted to the W.D. Tex. bar (as opposed to simply never having the issue tested before the November 2021 dismissal) is not determinable from the public docket — I am flagging that rather than assuming either way. It is consistent with the pattern described in the N.D. Cal. sanctions order (suits dismissed before admission issues surfaced).
• Other Cedar Lane-side lawyers did not appear here. Kirk Anderson, a California-admitted Rabicoff Law associate who served as co-counsel in the Blackmagic case, has no appearance in this docket. Greg Benoit (Cedar Lane's founder/director and a lawyer) is a business principal, not counsel of record here.
• No sealed plaintiff filings appear on the docket; the docket is short and complete through dismissal (ECF Nos. 1–14). The case terminated on Cedar Lane's own notice of voluntary dismissal with prejudice (ECF No. 13), with the AO-120 form sent to the USPTO (ECF No. 14).
• Context on service (not counsel-related but relevant to the record): plaintiff effected service on the Japanese defendant via the Texas Secretary of State after an ex parte alternative-service route, a practice criticized in an amicus brief filed in the Federal Circuit — see ECF No. 8 (June 30, 2021), cited in the amicus table at fedcircuitblog.com.
• Defendant DNP was represented by Matthew Cook Bernstein; that side is outside the scope of your question.

Sources

• Docket entries and filing attorneys: Patexia litigation docket for No. 6:21-cv-00597 (services.patexia.com/lawsuits/Cedar-Lane-Technologies-Inc-v-Dai-Nippon-Printing-Co-Ltd-id-152832/documents); UniCourt case page for No. 6:21-CV-00597 (unicourt.com/case/pc-db5-cedar-lane-technologies-inc-v-dai-nippon-printing-co-ltd-931973).
• Rabicoff's role as Cedar Lane's lead counsel, sanctions, and referral: Cedar Lane Techs. Inc. v. Blackmagic Design Inc., No. 20-cv-01302-VC, Doc. 61 (N.D. Cal. Nov. 19, 2020); In re Isaac Rabicoff, No. 20-mc-80206-JD (N.D. Cal. Standing Committee final report).
• Bar admissions and public reprimand: Virginia State Bar Subcommittee Determination, VSB Docket No. 22-042-125771 (Dec. 8, 2022).
• Campaign scope / firm practice: RPX Empower, "In a Matter of Months, Former IV Portfolio Bounces Off One NPE to Land in New Cedar Lane Complaints" (Nov. 9, 2019); Mondaq/RPX, "Campaign Over Data Storage Patent Launched By Rabicoff-Repped Plaintiff" (May 13, 2025); Shenzhen IP Protection Center risk advisory (2022) noting Rabicoff Law LLC as Cedar Lane's primary firm.

I'll research counsel of record for Dai Nippon Printing in this case.

Docket confirms defendant's filings were signed by Matthew Cook Bernstein. Let me identify his firm and check for additional appearances.

Let me check the CourtListener docket for any additional appearances and confirm his firm at the time.

Counsel of Record for Defendant Dai Nippon Printing Co., Ltd.

Bottom line: exactly one attorney appeared for DNP in this case — Matthew Cook Bernstein, then of Perkins Coie LLP (San Diego). No local counsel, no second defendant-side attorney, and no in-house counsel appear anywhere on the docket. The case died before any answer or motion to dismiss was filed.

Attorney detail

Supporting docket record (Case No. 6:21-cv-00597-ADA, W.D. Tex., Judge Alan D. Albright)

• Dkt. 10 (Oct. 4, 2021) — "NOTICE of Unopposed Request to Extend Time to Move, Answer or Otherwise Respond to Plaintiff's Complaint by Dai Nippon Printing Co., Ltd. … (Bernstein, Matthew)" — the only defendant-side filing in the case; deadline reset to 11/4/2021. (Patexia docket)
• Dkt. 12 (Nov. 8, 2021) — agreed further extension to 12/8/2021, filed by plaintiff's counsel Isaac Rabicoff (signaling Bernstein had agreed).
• Dkt. 13 (Nov. 29, 2021) — Notice of Voluntary Dismissal with prejudice filed by Cedar Lane; Dkt. 14 AO-120 report to the PTO. Case closed.
• UniCourt's party/attorney table for the case lists the sole defendant attorney as "Matthew Cook Bernstein." (UniCourt)

Methodological caveats — please read

1. No separate Notice of Attorney Appearance appears on the docket. Unlike plaintiff's counsel (Dkt. 2), Bernstein does not appear to have filed a standalone appearance; his name is captured as counsel via Dkt. 10 and the clerk's attorney record. I could not independently pull the CM/ECF docket directly (PACER paywall), so I am relying on aggregated docket mirrors for entries 1–14. If precise appearance mechanics matter, Dkt. 10's signature block is the document to pull.
2. Firm attribution is inferential as to this specific filing. The docket text for Dkt. 10 does not print the firm name. I attribute Perkins Coie because (a) contemporaneous W.D. Tex. dockets in which he filed in 2020–2021 (e.g., MV3 Partners LLC v. Roku, Inc., No. 6:18-cv-00308-ADA) list him at "Perkins Coie LLP, 11452 El Camino Real, Suite 300, San Diego, CA 92130 … mbernstein@perkinscoe.com," and (b) Perkins Coie's own attorney biography for him (submitted in a PTAB proceeding) confirms the San Diego/Taipei Perkins Coie affiliation in that era. The 2021 filing itself should be verified if the firm name must be stated with certainty.
3. No local counsel of record. Because W.D. Tex. practice requires a Texas-admitted attorney or pro hac vice admission, the absence of any Texas firm on the docket is consistent with Bernstein holding W.D. Tex. admission himself (his Perkins Coie bio lists the Western District of Texas among admitted courts). No pro hac vice motion was ever filed.
4. No in-house or DNP legal-department attorney appears on the docket. DNP is a Japanese parent; a U.S. subsidiary (DNP Imagingcomm America Corp.) exists but was not a party, and no in-house counsel is identified in any public filing. If DNP's Japanese legal department participated, it was behind the scenes and is not of record.
5. Factual flag on the patent list. The case metadata lists only U.S. Patent No. 6,721,489, and the docket confirms a single patent count. One secondary source (a Korean IP-protection database entry for this docket) instead lists US 6,873,743 / 7,088,855 / 9,983,836 — likely a database error or conflation with the companion Cedar Lane complaints filed the same week against other Japanese defendants. I flag it because it conflicts with the authoritative metadata; the '489 patent should be treated as controlling.
6. Nothing is sealed in this case that bears on counsel identity; the docket is complete and short (14 entries), so there is no hidden appearance.

Practical note for follow-on work: because the dismissal was with prejudice and styled as a "MOTION to Dismiss (Notice of Voluntary Dismissal with Prejudice)" signed by plaintiff's counsel — not a Rule 41(a)(1) notice — the terms were almost certainly papered in a settlement agreement that is not in the public record. Any res judicata or license-defense analysis for DNP-related products should start from that agreement, obtained from the parties rather than from PACER.