CommWorks Solutions, LLC v. Comcast Corp. et al.

I'll research this case now.

I'll research the docket and related proceedings for this case.

Key threads found. Let me dig into the docket, the Markman outcome, and PTAB proceedings.

Interesting discrepancy emerging. Let me verify the docket termination and the PTAB outcomes.

Key legal developments and outcome — 6:21-cv-00366 (CommWorks v. Comcast)

Important framing note: the case metadata supplied for this report ("Patents at issue: 7027465"; "Status: active") does not match what the record shows. The complaint asserted six patents, and the docket reflects termination in mid‑2022 rather than an active case. Details and sourcing for both discrepancies appear at the end of this section.

1. Filing, pleadings, and early case management (2021)

Strategic point: this was an NPE campaign, and the plaintiff's own status report acknowledges it was "3–4 parties and steps removed" from the accused routers/chips, requiring subpoenas to router, switch and chip suppliers — the same structure as its parallel S.D.N.Y. case against RCN Telecom (No. 1:20-cv-7534), where it issued 15 third-party subpoenas. The status report represents that no IPR/CBM/PGR filings existed as of June 2021; that changed within weeks (see §4).

2. Claim construction (Markman) — this case reached and completed it

The Markman phase was unusually large — the court granted leave (by email of 2021-10-12) for opening/response briefs of up to 45 pages addressing up to 32 claims, and reply/sur-reply briefs of up to 21 pages, across all six asserted patents.

• 2021-10-15 — Comcast's Opening Claim Construction Brief (Dkt. 26). Comcast argued CommWorks was seeking "inappropriately broad constructions" and briefed each patent separately (they are unrelated). Disputed terms included '664 "provisioned"/"successfully provisioned," '846 "transport address" and "home subscription server (HSS)," among others.
• 2021-11-05 — CommWorks' Responsive Claim Construction Brief (Dkt. 27).
• 2021-11-19 — Comcast's Reply (Dkt. 28).
• 2021-12-03 — CommWorks' Sur-Reply (Dkt. 31).
• 2021-12-08 — Joint Claim Construction Statement (Dkt. 32).
• 2022-03-08 — Claim Construction Order issued (ECF No. 35). This is the substantive Markman ruling in the case.

On the '846 patent's key term "transport address," CommWorks told the PTAB that "the District Court considering the same claim terms agreed" that the '846 claims are directed to protecting against loss of a transport address of a subscriber in an IP network and adopted CommWorks' construction ("IP address associated with a mobile node while the subscriber is visiting a particular foreign link") — this is how the Markman ruling was leveraged in the parallel IPR. The full text of the March 8, 2022 order is not reproduced in the sources retrieved, so constructions on the other five patents (including the '465 patent) are not confirmed here.

3. Discovery milestones of strategic significance

• Pre-Markman third-party discovery dispute (raised in Dkt. 19): CommWorks sought leave to serve early interrogatory No. 1 compelling Comcast to identify every routing/switching/access-point device and provisioning system on its network that was made by third parties, so CommWorks could then subpoena manufacturers → chipmakers → source code. This is the earliest strategic fault line in the case (accused-product identification and supply-chain discovery).
• No source retrieved documents a formal ruling on that dispute, nor the service dates of infringement contentions, nor any discovery motions beyond the claim-construction briefing. Claim-construction record alone spans Docs. 26–35.

4. Pretrial motions of substance

• No motion to transfer to another district is reflected in the sources retrieved (the case remained in Waco before Judge Albright).
• No motion to stay pending IPR was located. Notably, the only IPR on a patent in this case was filed by a third party (Unified Patents), not by Comcast, and the district case appears to have ended before the IPR reached a final written decision — so a stay fight was largely mooted.
• No summary judgment ruling and no trial, verdict, JMOL, new-trial, or fee motion are documented in any source retrieved.
• 2022-07-01 — "Order granting motion to dismiss (document #50)." The Clerk of the W.D. Tex. reported this event to the USPTO on the AO‑120 form filed 2022-07-07 in the '846 patent's file wrapper (application 14/58,473). AO‑120 "decision/judgment" filings are made at case termination, which indicates the action was closed by that order. RPX Insight's case page independently records "443 days in litigation" for 6:21-cv-00366 — 443 days from the 2021-04-15 filing is on/about 2022-07-01, corroborating termination on that date.

5. Final disposition / present posture

On the best available record, the most likely disposition is a stipulated dismissal of the action (Dkt. 50) entered 2022-07-01, i.e., a case-ending dismissal rather than a merits adjudication — consistent with CommWorks' pattern in the companion Waco case against Skybeam (settled and dismissed the same summer) and with the absence of any trial, verdict, judgment, or appeal in the case. No public settlement amount, license, or dismissal-with-prejudice terms were located, and I could not confirm whether Dkt. 50 dismissed the entire action or only certain claims/parties. That is the single most important open item in this case's record.

Posture: no appeal to the Federal Circuit and no post-judgment activity is documented in any of the sources reviewed. UniCourt continues to list the case as "Pending – Other Pending," but that snapshot appears stale relative to the clerk's AO‑120 termination filing.

6. Parallel PTAB/USPTO proceedings

(a) IPR2021-01297 — Unified Patents, LLC v. CommWorks Solutions, LLC, on U.S. 8,923,846 ('846) ("Recovery Techniques in Mobile Networks"), challenging claims 1–6, 9–13, 16–20:

The institution decision expressly identified CommWorks v. Comcast, No. 6:21-cv-00366-ADA, as a related district-court matter involving the '846 patent. Effect on the litigation: minimal in practice — the district case was dismissed ~7 months before the FWD issued, so the IPR never produced a stay or an estoppel-driven narrowing in Waco. Whether the FWD (or a subsequent Federal Circuit appeal) held any '846 claims unpatentable is unverified here and should be pulled from PTAB/Fed. Cir. records.

(b) Ex parte reexamination 90/014,909 — U.S. 6,832,249 ('249): Unified Patents filed the reexam request 2021-11-22; the USPTO granted it 2021-12-23, finding substantial new questions of patentability on the challenged claims. Unified's representatives on this proceeding: Raghav Bajaj (Haynes and Boone) and in-house counsel Ashraf Fawzy and Michelle Aspen.

(c) No PTAB or reexam challenge to the '465 patent was located. This is notable because the metadata singles out the '465 patent, and CommWorks continued to assert the '465 patent in later campaigns (e.g., a 2024 complaint, No. 8:24-cv-02250, pleading the '465, '807, '979 and '704 patents). Any contention that the '465 patent was cancelled or held unpatentable is not supported by anything I retrieved.

7. Contradictions with the case metadata — flagged

1. Patents at issue. Metadata lists only 7,027,465. The complaint, the AO‑120 patent report, the Answer, the claim-construction briefs, and the IPR record all establish six patents-in-suit ('249, '465, '285, '664, '846, RE42,883). The metadata entry appears to be an incomplete docket-sheet extraction (likely a single-patent docket line).
2. Status "active." The Clerk's AO‑120 termination filing of 2022-07-07 reporting the 2022-07-01 order granting the motion to dismiss (Dkt. 50), plus RPX's 443-day litigation count, indicate the case was closed in July 2022. UniCourt's "Pending" label is inconsistent with that and appears stale. Caveat: I was not able to query PACER directly in this session; both the scope of Dkt. 50 and the possibility that a related CommWorks/Comcast dispute continued elsewhere should be confirmed against the PACER docket before this is treated as final.
3. "No merits ruling surfaced" (prior summary) remains accurate — the disposition appears to be dismissal rather than adjudication, with the only substantive judicial product being the 2022-03-08 Claim Construction Order (ECF 35).

8. Key sources

• Docket documents via Docket Alarm: Answer (Dkt. 18), Case Readiness Status Report (Dkt. 19), Claim Construction briefs (Dkts. 26, 27, 28, 31, 32), pro hac vice order (Dkt. 20) — https://www.docketalarm.com/cases/Texas_Western_District_Court/6--21-cv-00366/
• AO‑120 "Report on the Filing or Determination of an Action Regarding a Patent" (W.D. Tex., filed 2022-07-07; notes "7/1/2022 Order granting motion to dismiss (document #50)") — https://www.docketalarm.com/patentapps/US/14-58,473/RECOVERY_TECHNIQUES_IN_MOBILE_NETWORKS/docs/L5H602T4XBLUEX4.pdf
• IPR2021-01297 papers (institution decision Paper 8; PO Response Paper 12; FWD Paper 22, 2023-02-13) — https://www.docketalarm.com/cases/PTAB/IPR2021-01297/Unified_Patents_LLC_v._CommWorks_Solutions_LLC/
• RPX Insight case page (443 days in litigation) — https://insight.rpxcorp.com/litigation/txwdce-[1130591](/patent/1130591)-commworks-solutions-v-comcast-cable-communications
• Unified Patents news items on the '249 ex parte reexamination (request 2021-11-22; granted 2021-12-23) — https://www.unifiedpatents.com/insights

I'll research the counsel of record for CommWorks Solutions, LLC in this case.

Good initial leads. Let me dig into the docket directly and verify which side each firm represents.

Counsel of Record for Plaintiff CommWorks Solutions, LLC — 6:21-cv-00366-ADA (W.D. Tex., Judge Albright)

Sourcing note up front: I could not pull the live PACER docket sheet (paywall), so the roster below is reconstructed from the filed documents themselves — chiefly the plaintiff's signature blocks on Dkt. 14 (June 17, 2021), Dkt. 27 (Nov. 5, 2021), and Dkt. 32 (Dec. 8, 2021), plus docket-entry extracts mirrored on UniCourt/Docket Alarm. Nothing suggests plaintiff's counsel filings in this case were sealed; names, bar numbers, and e-mail addresses appear in the public documents, so confidence in the roster is high. What I cannot confirm is whether there were later substitutions/withdrawals after early 2022, because the later docket text was not retrievable.

Core plaintiff-side team (two firms)

Kheyfits Belenky LLP — IP litigation boutique; substantive patent counsel

The Stafford Davis Firm, PC — Texas local counsel (Tyler)

Important clarification — who is not plaintiff's counsel

The OCR of Dkt. 14 interleaves the two sides' signature blocks, and some third-party aggregators (UniCourt's summary line) are ambiguous about Deron Dacus. The documents resolve it:

• Deron R. Dacus (The Dacus Firm, P.C., Tyler, TX) is Comcast's local counsel, not plaintiff's. He filed Comcast's extension motion (docket #13, June 11, 2021) and is the named local co-counsel on the pro hac vice application that led to the order admitting Timothy P. Horgan-Kobelski for the Comcast defendants (Dkt. 20, signed July 2021). UniCourt's "Defendant Attorneys: Deron R Dacus" listing is consistent with this.
• James L. Day, Eugene Y. Mar, and Timothy P. Horgan-Kobelski of Farella Braun + Martel LLP (San Francisco) are Comcast's counsel (see Dkt. 17, Dkt. 26 "Comcast's Opening Claim Construction Brief," Dkt. 28 "Comcast's Reply Claim Construction Brief" — each signed for the Comcast entities). The garbled Dkt. 14 text places Farella under "Attorneys for Defendants."
• The earlier UniCourt one-liner that placed Deron R Dacus in the plaintiff-attorney field conflicts with the filings; the filings control.

No in-house counsel identified

CommWorks is an NPE (subsidiary of IP Investments Group LLC; later Rule 7.1 disclosures in other cases identify Brainbox Innovations, LLC as corporate parent). I found no in-house attorney appearing of record for the plaintiff in this docket; all plaintiff appearances are outside counsel from the two firms above.

Cross-checks against the case summary

• Discrepancy to flag: the case metadata lists only U.S. 7,027,465 as the patent at issue, but the AO 120 filed at case opening and the parties' Joint Claim Construction Statement (Dkt. 32) both confirm six patents-in-suit: 6,832,249; 7,027,465; 7,177,285; 7,760,664; 8,923,846; and RE42,883. The earlier summary's narrow framing of the '465 count is consistent with the complaint's lead count but understates the case. A claim construction order issued March 8, 2022 (Dkt. 35) covering these patents.
• Do not conflate with the sibling case: CommWorks also sued Comcast in E.D. Tex., No. 2:21-cv-00459 (filed Dec. 17, 2021) asserting U.S. 6,857,007 and RE43,704, and separately filed CommWorks v. Zyxel (W.D. Tex.) asserting '465, RE44,904, '285, 7,911,979, 6,891,807 and 7,463,596. The same two plaintiff firms (Kheyfits Belenky + Stafford Davis Firm) populate those dockets.
• Later, unrelated lineups: in CommWorks' 2023–2025 filings the plaintiff side is handled by different teams — Stafford Davis Firm (Tyler) plus a group including James F. McDonough III, Kenneth A. Matuszewski, Jonathan L. Hardt and Carey M. Rozier (e.g., CommWorks v. VTech, CommWorks v. SIA Mikrotikls, CommWorks v. DrayTek, CommWorks v. STMicro, CommWorks v. Digi), and Reinhardt Wendorf & Blanchfield in the District of Minnesota. Those attorneys should not be listed as counsel in 6:21-cv-00366.

Bottom line: for the Comcast '465 action, the plaintiff's counsel of record are Dmitry Kheyfits, Andrey Belenky, Brandon G. Moore and Hanna G. Cohen of Kheyfits Belenky LLP (Austin/N.Y.), acting with Stafford Davis and Catherine Bartles of The Stafford Davis Firm, PC (Tyler, Tex.) as local/Texas counsel.

I'll research defense counsel in this case now.

Let me dig deeper into the defense-side filings and firm affiliations.

Now let me verify the local counsel question (Dacus is unusual — normally a plaintiff-side firm) and check the docket's later events.

Defense counsel of record — CommWorks Solutions, LLC v. Comcast Cable Communications, LLC, et al., No. 6:21-cv-00366-ADA (W.D. Tex.)

Bottom line: The Comcast defendants were represented by a two-firm team: Farella Braun + Martel LLP (San Francisco) as lead/outside patent counsel and The Dacus Firm, P.C. (Tyler, Texas) as Texas local counsel. I found no Comcast in-house attorney appearing on the docket. All names below are tied to specific filings; I have not inferred anyone.

Lead / outside patent counsel — Farella Braun + Martel LLP, 235 Montgomery St., 17th Floor, San Francisco, CA 94104

Texas local counsel — The Dacus Firm, P.C., 821 ESE Loop 323, Suite 430, Tyler, TX 75701

In-house counsel

No Comcast in-house attorney appears as counsel of record on the W.D. Tex. docket or on the substantive filings I could retrieve. Note that in Comcast's PTAB practice, in-house/other-firm attorneys do appear (e.g., Comcast's IPR filings list outside PTAB counsel), but I found no in-house appearance in this district court case — stated as a negative result, not a confirmation that none exist behind the scenes.

Docket grounding and important caveats

• Defense-side filings confirmed: Doc. 13 (agreed motion for extension, Dacus for all three Comcast entities); Doc. 14 (stipulation of dismissal as to Comcast Corporation without prejudice, June 17, 2021 — signature blocks for both sides); Doc. 16 (Defendants' Answer and Defenses, noting "Comcast Corporation was named as a defendant but has been dismissed from the case"); Doc. 20 (order granting Horgan-Kobelski's pro hac vice motion, July 20, 2021); Doc. 26 (Comcast's Opening Claim Construction Brief, Oct. 15, 2021); Doc. 28 (Comcast's Reply Claim Construction Brief, Nov. 19, 2021); Doc. 35 (Claim Construction Order, Mar. 8, 2022). Sources: docketalarm case page, Doc. 13, Doc. 16, Doc. 20 / PHV order, Comcast's Reply CC brief (Ex. 2004 in IPR2021-01297).
• Contradiction to flag with the existing case metadata: the metadata lists Comcast Corp. as a defendant, but the parties stipulated to its dismissal without prejudice (Doc. 14, filed June 17, 2021), and the Answer (Doc. 16) confirms Comcast Corporation is no longer a responding defendant. Counsel of record after that date act for Comcast Cable Communications, LLC and Comcast Cable Communications Management, LLC only. Also note the UniCourt-attributed "defendant attorney" listings (Deron R. Dacus; Eugene Y. Mar) are consistent with what I found, but UniCourt's plaintiff-side listing for Dacus in one of its two snapshots is a database error — the primary documents put Dacus on the Comcast side.
• Post-2022 status — not fully verified: an AO-120 patent-report form in the file records "7/1/2022 Order granting motion to dismiss (document #50)" as the decision in this case, which suggests the action was dismissed mid-2022 (the merits/claim-construction record above is the last merits activity I could confirm). I could not retrieve Doc. 50 itself, so I cannot state the ground for dismissal (e.g., settlement, venue, or covenant not to sue) or whether counsel withdrew formally. Treat that as an open item rather than a finding.
• Related proceedings involving the same Comcast counsel: Farella (Day) was Comcast's PTAB and Federal Circuit counsel in the Promptu family, and CommWorks's '846 patent (one of the five asserted in the original complaint) was invalidated in Unified Patents, LLC v. CommWorks Solutions, LLC, IPR2021-01297 (FWD Feb. 13, 2023) — Unified, not Comcast, was the petitioner there, so Farella/Dacus do not appear as petitioners' counsel in that IPR.

If you want, I can next try to pull Doc. 50 and any withdrawal-of-counsel notices to confirm whether the Day/Mar/Horgan-Kobelski/Dacus appearances were formally terminated.