Litigation

Cedar Lane Technologies Inc. v. Epix Inc.

1:22-cv-00050

Court
D. Del.

Patents at issue (1)

Defendants (1)

Summary

Cedar Lane asserted the '242 against Epix Inc. in D. Del.

Case overview & background

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

I'll research this case across multiple sources.

Case Overview — Cedar Lane Technologies Inc. v. EPIX, Inc., No. 1:22-cv-00050-RGA (D. Del.)

The parties. Cedar Lane Technologies Inc. is a non-practicing entity, not an operating company. It was incorporated in British Columbia, Canada in April 2019, has no public website or product line, and is run by lawyer/entrepreneur Greg Benoit; IAM's March 2023 profile describes it as "America's top-filing NPE," and Lex Machina's 2023 report ranked it the single most prolific patent plaintiff in the U.S. since 2020 (IAM; JD Supra NPE Showcase; worldip analysis). Its asserted portfolio is largely acquired from Intellectual Ventures — IPWatchdog tags Cedar Lane filings "[IV selloff]" (IPWatchdog, Nov. 3, 2022). EPIX, Inc. is the opposite: a privately held operating company founded in 1983 and headquartered in Buffalo Grove, Illinois (now Lake Zurich, IL), which designs and manufactures PIXCI® frame grabbers, industrial/scientific cameras, and XCAP/XCLIB image-acquisition software for machine vision, medical imaging and high-speed video, with customers including NASA, USAF, IBM, Bell Labs and NIST (epixinc.com; RobotToday profile; Photonics.com). This is the archetypal small-capability-company-versus-volume-filer pairing.

The patent and the accused technology. The case metadata lists U.S. Patent No. 8,537,242 ("Host interface for imaging arrays," issued Sept. 17, 2013, inventor Mark Suska, priority to a Jan. 21, 2000 provisional). It is a divisional of U.S. Patent No. 6,972,790 (issued Dec. 6, 2005) — and notably, the docket's patent report to the Commissioner lists both '790 and '242 (D.I. 14), so the complaint apparently pleaded both, notwithstanding the single-patent case metadata. Technical sketch: the claims cover an interface (preferably integrated on the same die as a CMOS image sensor) containing a buffer — a FIFO or addressable memory — that stores image data and pixel clock signals at the sensor's own clock rate; when the buffered data reaches a predetermined level, a signal generator asserts an interrupt or bus-request signal to the host processor, and the host then controls readout rate, decoupling sensor sampling speed from host transfer speed (Google Patents; Justia; abstract and claim 8's FIFO-counter/bus-arbitration limitations). The '790 is the parent with essentially the same disclosure and 21 claims (USPTO OG record). Original assignee of the family was Psion Teklogix Systems Inc. (Mississauga, Canada), with a later assignment to Harusaki Technologies LLC (an IV-linked vehicle) before Cedar Lane (Justia; USPTO assignment records). Caveat: I was not able to review the complaint's exhibits/claim charts, so the precise accused instrumentality is not confirmed from the pleading itself; given EPIX's product line and the patent's FIFO/bus-arbitration subject matter, the accused products are almost certainly its PIXCI frame grabbers and/or Silicon Video cameras and associated acquisition software — that is an inference, not a verified fact.

Procedural posture and venue. Filed January 13, 2022 in the District of Delaware and assigned to Judge Richard G. Andrews (1:22-cv-00050-RGA), as part of a same-day batch of at least four related Cedar Lane suits (1:22-cv-00050, -051, -054, -058) (D.I. 5–6 docket via Unified Patents; UniCourt). EPIX was served January 20, 2022; the answer deadline was extended by stipulation to March 12; EPIX answered on March 11, 2022 with affirmative defenses and counterclaims and moved two out-of-state attorneys (Neil J. McNabnay and Lance E. Wyatt) pro hac vice, which Judge Andrews granted the same day (D.I. 7–11). Five days later, on March 16, 2022, the parties filed a stipulated dismissal with prejudice, which Judge Andrews so-ordered the same day, terminating the case (D.I. 12, 13, 14) (DocketBird). Total lifespan: about nine weeks; no Rule 12 motion, no claim construction, no discovery disputes, no trial. Delaware mattered here for the usual reasons — it is the incorporation home of countless technology defendants, its judges (Andrews included) run predictable, fast patent dockets, and a Delaware filing pressures a quick, cheap resolution; Cedar Lane split its campaign between D. Del. and W.D. Tex.

Why the case is notable. First, it is a data point in the largest volume-assertion campaign of the period: the '242 alone appears in roughly 50-plus suits against camera, frame-grabber, machine-vision, drone and end-user defendants (Imperx, Navitar, The Imaging Source, Phase One, LaVision, Ikegami, Ricoh, STMicroelectronics, Motorola Solutions, Skydio, Hertz, Enterprise, Lexmark, and others) (Patsnap litigation record; Stanford NPE Litigation Database). Second, the outcome is a textbook illustration of NPE settlement economics: Cedar Lane reportedly achieved a ~96% settlement rate with a median case life of about 94 days, and none of its cases reached trial (IAM; worldip analysis; JD Supra) — exactly the pattern of a nine-week dismissal with prejudice against a 40-year-old frame-grabber manufacturer whose defense costs would dwarf any license. The dismissal terms (license, covenant, or payment) are not disclosed on the docket, so the consideration is unknown. Third, the patents' leverage rested on cost-of-defense rather than adjudicated strength: I found no PTAB challenge to the '242 and no published claim-construction or invalidity ruling in the family; Patsnap and analogous databases record no validity challenges, though I could not run a full PTAB docket search before hitting my research limit, so treat "no IPR" as probable-but-not-confirmed. Fourth, timing: the '790/'242 family expired around August 1, 2023 (20 years from the December 21, 2000 filing), and Cedar Lane's new filings collapsed in 2023 amid the Delaware ownership/litigation-funding disclosure push under Chief Judge Connolly — IAM attributed the drop-off in NPE filings partly to Cedar Lane simply stopping (LinkedIn/IAM summary). Epix thus sits inside a late-stage, near-expiry assertion wave rather than any merits-driven dispute.

Sourcing note: docket events, judge, dates and party names are confirmed from PACER-derived dockets; the patent text from Google Patents/Justia; the ownership chain from USPTO assignment records (No. 8,537,242, reel/frame entries including the Teklogix→Psion Teklogix correction and the Harusaki Technologies assignment). The identity of EPIX's and Cedar Lane's law firms, the settlement consideration, and the exact accused products are not verified here and should be confirmed against the complaint (D.I. 1, Exs. 1–4) and EPIX's counterclaims (D.I. 9).

Key legal developments & outcome

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

I'll research this case now.

Cedar Lane Technologies Inc. v. Epix, Inc., No. 1:22-cv-00050-RGA (D. Del.)

Bottom line up front

This case never got past the pleadings. Cedar Lane filed a two-patent infringement complaint on 2022-01-13; Epix answered with affirmative defenses and counterclaims on 2022-03-11; and five days later, on 2022-03-16, the parties filed a joint stipulation of dismissal with prejudice, which Judge Richard G. Andrews so-ordered the same day. The docket contains only 14 entries. There was no motion to dismiss, no transfer motion, no stay motion, no summary judgment practice, no Markman/claim construction, no discovery of record, no trial, no post-trial motions, no appeal, and — as far as I can determine from public sources — no PTAB proceeding against the asserted patent. The final disposition is a with-prejudice dismissal in D. Del. on 2022-03-16, case terminated.

A note on the patent count: the case metadata lists only U.S. Patent No. 8,537,242. The docket is slightly inconsistent on this point — the initial AO-120 form filed with the complaint (D.I. 3) reported only 6,972,790, while the AO-120 filed at dismissal (D.I. 14) reported both 6,972,790 and 8,537,242. The two patents are parent/divisional (the '242 is a divisional of the '790), both titled "Host interface for imaging arrays," and Cedar Lane pleaded them together in this and the parallel suits, so I treat both as asserted here. (D.I. 3 / D.I. 14 via Patexia; Unified Patents litigation portal)


Chronological developments

1. Filing and initial pleadings

2022-01-13 — Complaint filed (D.I. 1).
Cedar Lane Technologies Inc. filed a jury-demand patent infringement complaint against EPIX, Inc. in D. Del. (filing fee $402, receipt ADEDC-3781007), with Exhibits 1–4 attached (the patents and claim charts). The same day: magistrate-consent notice (D.I. 2), AO-120 patent report listing the '790 (D.I. 3), Rule 7.1 disclosure stating no parent/affiliate (D.I. 4), and summons issued (D.I. 5).

This filing was part of a coordinated January 2022 wave of Cedar Lane suits asserting the "host interface for imaging arrays" family. IPWatchdog's January 20, 2022 filings round-up recorded the new D. Del. case against Epix on the '242, and the retail-patent-litigation report for January 2022 lists Epix among dozens of Cedar Lane defendants (alongside Excelitas, Illunis, Thorlabs, Advantech, SensoPart, Snap, MGM, Honda, and others) on the '790 and '242. (IPWatchdog, 2022-01-20; Illinois Lawyer Now, Jan. 2022 report)

The accused instrumentalities were not identified by name in the complaint body; Cedar Lane incorporated claim charts in Exhibits 3–4 by reference. Epix is a machine-vision/imaging hardware company (PIXCI frame grabbers, XCAP software), which fits the family's targeting profile.

2022-01-19 — Case assignment and related-case consolidation of assignment.
Ass

Plaintiff representatives

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

I'll research the counsel of record for Cedar Lane Technologies in this D. Del. case.

Counsel of Record for Plaintiff Cedar Lane Technologies Inc.

Short answer: The docket shows exactly one attorney of record for the plaintiff — David W. deBruin, a Delaware-barred solo/regional-firm patent litigator who served as Cedar Lane's regular Delaware counsel across its 2020–2023 campaign. No co-counsel, no pro hac vice admissions, and no in-house counsel appear for Cedar Lane in this case.


David W. deBruin — Lead counsel (sole attorney of record)

Item Detail
Role Lead counsel and only attorney appearing for Cedar Lane; filed the complaint (D.I. 1, 1/13/2022), the summons return (D.I. 6), the extension stipulation (D.I. 7), the related-cases letter to Judge Andrews (D.I. 8, 2/10/2022), and the stipulation of dismissal (D.I. 12, 3/16/2022)
Bar number Delaware No. 4846
Firm (as of this filing) Gawthrop Greenwood, PC, 3711 Kennett Pike, Suite 100, Wilmington, DE 19807 (302-777-5353; ddebruin@gawthrop.com). This is the address used on his contemporaneous Cedar Lane filings in D. Del., including the Dec. 6, 2021 stipulation in Cedar Lane v. Fantasia Trading (AnkerDirect), C.A. No. 1:21-cv-01428-RGA
Later/other affiliations Previously The deBruin Firm LLC (405 N. King St., Suite 440, Wilmington); Law360 currently indexes him under Napoli Shkolnik (Wilmington, DE), where he continued handling Cedar Lane matters such as Cedar Lane Techs. v. Openeye US Inc. (D. Del., Nov. 2022)
Location Wilmington, Delaware (in-state counsel; no local-counsel arrangement was needed since he is D. Del.-barred)

Relevant patent litigation experience (one-line note): deBruin was Cedar Lane Technologies' near-exclusive Delaware counsel for its mass patent-assertion campaign against camera/CCTV, consumer-electronics and semiconductor defendants (dozens of D. Del. suits asserting the '790, '242, '527 and related patents in 2020–2023), and he also represented other patent plaintiffs including BE Labs, Inc. (e.g., BE Labs v. Belkin Int'l, D. Del.), Cassiopeia IP LLC (v. Barco, Inc.), InvesTrex LLC (v. Yahoo Inc.; v. News Corp.), Open Network Solutions Inc. (v. Microsoft), and Adaptive Headlamp Technologies (v. Hyundai) — i.e., a high-volume, plaintiff-side assertion practice rather than a defense-side or trial-heavy practice.


What the record does not show

  • No additional plaintiff-side counsel. The 14 docket entries (complaint through the Commissioner report) contain no notice of appearance, no pro hac vice motion, and no second signature block for Cedar Lane. Every plaintiff filing is signed by deBruin.
  • No in-house counsel for Cedar Lane ever entered an appearance. Cedar Lane is a patent-assertion entity with no disclosed parent/affiliate (its Rule 7.1 disclosure, D.I. 4, states "No Parents or Affiliates Listed").
  • Nothing sealed affecting counsel identification. The case ran only ~two months: EPIX answered and counterclaimed (D.I. 9, 3/11/2022), the parties stipulated to dismissal with prejudice (D.I. 12), and Judge Andrews so ordered on 3/16/2022 (D.I. 13), with the Commissioner report at D.I. 14. Cedar Lane also asserted U.S. Patent 6,972,790 alongside the '242 in the complaint.

For contrast — defense side (not asked, but confirms the asymmetry)

EPIX, Inc. was represented by Jeremy D. Anderson (Fish & Richardson, Wilmington — Delaware counsel) with Neil J. McNabnay and Lance E. Wyatt (Fish & Richardson, Dallas) admitted pro hac vice (D.I. 11, granted 3/11/2022).


Sourcing and confidence

Claim Source Confidence
deBruin is plaintiff's only counsel of record Docket text for D.I. 1, 6, 7, 8, 12 (DocketBird, Unified Patents, Patexia, UniCourt dockets for 1:22-cv-00050) High
Gawthrop Greenwood as his firm at filing Signature blocks on contemporaneous Cedar Lane D. Del. filings (e.g., 1:21-cv-01428-RGA, 12/6/2021; 1:21-cv-00927-LPS) and CourtListener RECAP PDFs Medium-High — the '050 filings themselves are signed with only his name and bar number in the docket text; the firm attribution is inferred from filings within weeks of this complaint
Later affiliation with The deBruin Firm LLC / Napoli Shkolnik CourtListener docket (Open Network Solutions v. Microsoft); Law360 attorney page Medium — reflects other periods, not necessarily January 2022
No pro hac vice / in-house counsel for plaintiff Full docket listing (14 entries, none of that type) High

Caveat: I could not pull the actual PDF of D.I. 1 in this case to read its caption block directly; the firm attribution rests on the signature blocks in deBruin's parallel Cedar Lane filings from the same weeks. If you need the precise firm name as printed on the '050 complaint, that one page of D.I. 1 is the definitive check.

Defendant representatives

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

I'll research the docket and counsel for Epix Inc. in this D. Del. case.

Good — the docket identifies three defense attorneys. Now let me verify their firms and roles.

Let me verify Lance Wyatt's firm and pull the actual filings to confirm who signed.

Counsel of Record for Defendant EPIX, Inc.

Bottom line: EPIX was represented by Fish & Richardson P.C., with Wilmington of counsel Jeremy D. Anderson as the Delaware attorney of record and Dallas principals Neil J. McNabnay and Lance E. Wyatt, Jr. admitted pro hac vice. All three appear on the docket between the Answer (D.I. 9, Mar. 11, 2022) and the dismissal (D.I. 12–13, Mar. 16, 2022). No in-house attorney ever entered an appearance, and I found no sealed filings or attorney entries beyond these three.

1. Jeremy D. Anderson — Delaware counsel of record (local counsel)

  • Firm / office: Fish & Richardson P.C., 222 Delaware Avenue, 17th Floor, Wilmington, DE 19801. (Since January 2025 he has been a partner at Baker & Hostetler LLP in Wilmington — he was not at Fish when I checked today, so his Fish affiliation is historical to this 2022 case.)
  • Docket role: The only Delaware-registered signatory. He filed the Answer, Affirmative Defenses and Counterclaims (D.I. 9), EPIX's Rule 7.1 disclosure (D.I. 10), and the pro hac vice motion (D.I. 11). Under D. Del. L.R. 83.5(d) he was the attorney required to file all papers.
  • Experience note: Long-time Delaware litigator (Georgetown J.D. 2002) with a substantial patent docket in D. Del. — e.g., Guild Forest LLC v. IFWE Inc., No. 1:18-cv-01483 (D. Del.) and CryptoPeak Security, LLC v. Cabela's Inc. (D. Del.); now chairs the Delaware State Bar Association's Corporate Counsel Section and is IAM Patent 1000–ranked.

2. Neil J. McNabnay — pro hac vice (senior principal; de facto lead)

  • Firm / office: Fish & Richardson P.C., 1717 Main Street, Suite 5000, Dallas, TX 75201.
  • Docket role: Named first in the PHV motion (D.I. 11), granted by Judge Andrews on Mar. 11, 2022, and added to the electronic noticing list that day. He is the most senior Fish principal on the file; on the record available, the "lead counsel" label is an inference from seniority and first-named PHV status rather than an express docket designation.
  • Experience note: Career patent litigator (Michigan J.D. 1997) and a fixture in E.D. Tex./W.D. Tex. NPE defense work — Clear With Computers/Orion IP campaign, Eolas v. Adobe, and more recently PNC Bank and First Community Bancshares defenses; consistently listed in Best Lawyers and Super Lawyers for IP litigation.

3. Lance E. Wyatt, Jr. — pro hac vice

  • Firm / office: Fish & Richardson P.C., Dallas, TX (1717 Main Street, Suite 5000); email format wyatt@fr.com.
  • Docket role: Second PHV attorney in D.I. 11, granted Mar. 11, 2022. He had been elevated to Fish principal effective January 1, 2022 — roughly two months before this appearance.
  • Experience note: Patent litigator and PTAB practitioner (SMU Dedman J.D. 2014; former law clerk to Judge Kara F. Stoll, Fed. Cir., and Judge Gloria M. Navarro, D. Nev.); co-tried Global eTicket Exchange v. Ticketmaster (W.D. Tex.) to a non-infringement verdict defeating a claimed $112M.

Context and caveats

  • The representation was extremely short. Cedar Lane served EPIX on Jan. 20, 2022; EPIX answered and counterclaimed on Mar. 11, 2022; the parties stipulated to dismissal with prejudice on Mar. 16, 2022 (D.I. 12), so-ordered the same day (D.I. 13). Defense counsel were on the docket for five days.
  • Patent report discrepancy worth flagging: the D. Del. Form AO-120 filed at dismissal (D.I. 14) lists both U.S. Patent Nos. 6,972,790 and 8,537,242, even though the case metadata here identifies only the '242. The complaint attached four exhibits and pleaded both patents from the same family; treat the '242-only framing as incomplete.
  • What I could not verify: the text of the PHV motion's supporting certification (D.I. 11) and the signature block of the Answer (D.I. 9) are behind PACER/RECAP paywalls in the sources I could reach; my identification of signatories rests on the docket text entries, which name exactly these three attorneys and no others. If additional Fish associates were listed in the body of those filings, they did not appear on the docket.
  • No parallel PTAB work by EPIX found in connection with the '242, consistent with the case resolving in five days.

Sources: D. Del. docket sheet via DocketBird and Unified Patents Litigation Portal (1:22-cv-00050, D.I. 1–14); Patexia litigation document list; UniCourt party/attorney table; fr.com team pages for McNabnay and Wyatt; Fish & Richardson press release (Jan. 5, 2022) on Wyatt's elevation; Martindale and BakerHostetler bio for Anderson; Law360 Radar entries for McNabnay/Wyatt.