Friskit, Inc. v. Real Networks, Inc.

I'll research this case thoroughly before drafting. Let me start with the docket and the underlying district court litigation.

Let me dig into the patent family, the district court docket, and the parties' backgrounds.

Now let me verify the district court docket, the judge history, and any follow-on litigation.

Case overview

Parties and posture. Friskit, Inc. was a small San Francisco company founded around 1999 by Aviv Eyal (the named inventor on the patents) and George Aposporos, a former Amazon.com VP of business development who served as chairman/CEO; Jeff Morgen was COO. Friskit built a streaming-media search engine — a "one click" engine that scanned the web for free songs and music videos and played results back continuously — whose beta drew roughly 100,000 users in 2000. Facing the music industry's resistance to streaming (the Napster era), Friskit abandoned the consumer service and repositioned itself as a technology-licensing company, which is the frame RealNetworks later used to cast it as an entity "whose sole business is profit-making from attempts to enforce invalid patents." The defendant, RealNetworks, Inc. (Nasdaq: RNWK), is the Seattle-based digital-media platform company behind RealPlayer, RealJukebox and the RealOne Player, together with codefendant Listen.com (the Rhapsody service), which RealNetworks acquired in August 2003. Friskit filed in N.D. Cal. on November 17, 2003, as Friskit, Inc. v. RealNetworks, Inc. and Listen.com, No. C 03-5085, in San Francisco. The case was originally designated to Judge Fern M. Smith (hence the early "FMS" suffix) and was later carried by Senior Judge William W. Schwarzer (suffix "WWS"), with Magistrate Judges Maria-Elena James and Edward M. Chen handling discovery. Venue was unremarkable rather than tactical: plaintiff was in San Francisco, Listen.com was local, and the accused products were developed and marketed from Northern California — I found no venue-transfer fight in the record.

The accused technology and the patents. Friskit alleged that Real's integrated search-plus-playback products — RealOne/RealPlayer 10 (including the Real "Music Store" search-to-playlist drag-and-drop flow) and RealJukebox — infringed a four-patent family claiming the combination of a media search engine with a media player that automatically plays results in sequence. All four descend from provisional application 60/177,786, filed January 24, 2000, naming Aviv Eyal (and, on some members, George Aposporos). A record note: the case metadata in this dataset lists only the '275 patent, but the district court record and the Federal Circuit opinion show four patents were asserted and adjudicated, so I describe all four below.

* The '628 patent number is reported in the secondary patent databases (US 6,735,628, "Media search and continuous playback of multiple media resources distributed on a network"); I could not independently pull the face of the patent to confirm issue date

I'll research this case across the district court docket, the Federal Circuit opinion, and any related proceedings.

Good foundation. Now let me pull the district court docket details, the Markman order date, and the summary judgment ruling.

Let me dig into the mid-case motions (the motion to dismiss, first summary judgment motion) and the Federal Circuit appeal details.

Friskit, Inc. v. RealNetworks, Inc. — Chronology of Key Developments

Posture note up front: this is a 2003–2009 N.D. Cal. case that ended at summary judgment, so several of the categories you asked about (trial/verdict/JMOL, IPR stays) have no entries by definition. The IPR category is empty because the AIA's PTAB trial regime did not exist until 2012‑09‑16; no reexamination or other USPTO proceeding appears in the record I could locate. I flag unverified items at the end.

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1. Filing and initial pleadings (2003)

• 2003‑06‑27 — Complaint filed. Friskit, Inc. sued RealNetworks, Inc. and Listen.com in the U.S. District Court for the Northern District of California, No. C 03‑5085 (originally assigned to Judge Fern M. Smith, hence "FMS"; later reassigned to Judge William W. Schwarzer, "WWS," with Magistrate Judges Edward M. Chen and Maria‑Elena James). The original complaint asserted three patents; Friskit later amended to add two more, for five patents in suit: U.S. Patent Nos. 6,389,467 (the '467 patent), 6,484,199 (the '199 patent), 6,519,648 (the '648 patent), 6,725,275 (the '275 patent — the patent listed in your metadata), and 6,735,628 (the '628 patent). See the district court's summary judgment order, Friskit, Inc. v. RealNetworks, Inc., 499 F. Supp. 2d 1145 (N.D. Cal. 2007), 2007 WL 2156239, full text PDF; CourtListener copy.
• Accused products: RealOne Player Plus and Real's subscription service, and Listen.com's Rhapsody service. Listen.com was acquired by RealNetworks in August 2003, which is why the two defendants litigated jointly (both represented principally by Quinn Emanuel).
• Damages exposure: Friskit sought more than $70 million (RealNetworks press release, 2007‑07‑31, link; Ars Technica, Aug. 2007, link).
• Answer/counterclaims: I could not retrieve the answer or any declaratory‑judgment counterclaims from the docket excerpts available. Given the case posture (defendants moved for summary judgment of invalidity and prevailed), invalidity/noninfringement defenses were plainly pleaded, but I have not verified whether formal counterclaims were filed — treat that as unsourced.
• Narrowing of claims: At the court's instance and without objection, Friskit limited the case to eight claims: '467 cl. 35 & 52; '648 cl. 49 & 52; '275 cl. 6, 16 & 38; and '628 cl. 12 (SJ order, 499 F. Supp. 2d at 1146–47). Note that the '199 patent remained in the case nominally but had no asserted claim, which is why Real's press materials describe four patents being invalidated.

2. Claim construction / Markman (2004–2005) — the case did reach Markman

• 2005‑03‑04 — Order limiting the parties to six disputed terms each.
• 2005‑04‑12 — Markman hearing before Judge Fern M. Smith.
• 2005‑04‑29 — Tentative Claim Construction Order (Dkt. 177), expressly structured so it would become final unless a party requested a hearing. Tentative order PDF
• 2005‑05‑09 — Friskit requested a hearing on the tentative order (Dkt. 178); hearing set for and held 2005‑05‑20.
• 2005‑05‑20 — Claim Construction Order (Dkt. 181), Friskit, Inc. v. RealNetworks, Inc., No. C 03‑5085 FMS (N.D. Cal. May 20, 2005). PDF; IPMall copy

Substantive outcomes (relevant because they framed the later obviousness analysis):

• "client module" — agreed: "a module that is installed and executed on a user-terminal."
• "media resource" — court rejected Friskit's attempt to import a "streaming media" limitation, holding the patents cover loading/downloading too.
• "network server module" — construed as a module located on the server-side of a client-server network (a win for Real; Friskit had argued it could sit on the client, server, or both).
• "search module" — final order: "a module that uses a database in order to identify search results and communicate those results to a playback component on the user terminal." Notably, the tentative order had said "a database on the server-side"; the final order dropped the server-side limitation — i.e., Friskit obtained a modification after the May 20 hearing (compare Dkt. 177 tentative text with Dkt. 181 final text).
• The Federal Circuit later noted that "directly

I'll research this case across sources. Let me start with the docket and the Federal Circuit opinion.

Good progress on the district court docket. Now let me pin down the Federal Circuit appeal counsel.

Key lead: the Federal Circuit brief was handled by Robins, Kaplan, Miller & Ciresi. Let me verify against the opinion's counsel block and the CAFC docket.

Bottom line

Friskit, Inc. was the plaintiff‑appellant. The counsel of record at the Federal Circuit was not the firm that tried the case below: briefing and argument on appeal were handled by Robins, Kaplan, Miller & Ciresi L.L.P. (Minneapolis), led by Munir R. Meghjee. The N.D. Cal. trial team was Foley & Lardner LLP (with New Jersey patent boutique Kaliko & Yeager on the briefs), which had replaced Seyfarth Shaw in 2007, which had in turn replaced original counsel Baniak Pine & Gannon.

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1. Appellate counsel of record — Fed. Cir. No. 2007‑1583

The counsel block reported with the opinion, Friskit, Inc. v. Real Networks, Inc., 306 F. App'x 610 (Fed. Cir. Jan. 12, 2009) (Bryson, Linn, Prost, JJ.; nonprecedential), and the Justia CAFC docket both identify the plaintiff‑appellant's representation as follows:

Sourcing caveat: the attorney names above come from the reported counsel block as reproduced by MoreLaw and corroborated by the Justia docket entry ("Represented By: MEGHJEE, MUNIR R."). I could not retrieve the Federal Circuit docket text itself (PACER/CM‑ECF), so I cannot confirm whether any additional attorney entered an appearance on the CAFC docket without being listed on the brief. No Friskit in-house counsel appears in any reported counsel block for this matter.

2. District court counsel of record — Friskit, Inc. v. RealNetworks, Inc., No. C 03‑5085 (N.D. Cal.)

The underlying case (filed June 27, 2003; summary judgment of invalidity, 499 F. Supp. 2d 1145 (N.D. Cal. 2007), on five patents including the '275 patent) had three successive plaintiffs' firms — relevant because "counsel of record" changes depending on the date:

(a) Trial counsel at the time of the judgment and appeal (Foley & Lardner LLP + Kaliko & Yeager):

(b) Predecessor firm — Seyfarth Shaw LLP (substituted in ~2007, then out):

• Michael T. McKeeman (SBN 173662), Seyfarth Shaw LLP, San Francisco — signed as "Attorneys for Plaintiff Friskit, Inc." (Dkt. 639)
• Krista L. Mitzel, Seyfarth Shaw LLP — named with McKeeman in the substitution order.
• Replaced by Foley & Lardner per the order on Dkt. 644 (Notice of Substitution of Counsel), which substituted Robinson, Klein, de Gyarfas and Kinsel for McKeeman and Mitzel. (CourtListener docket)

(c) Original 2003–2006 counsel — Baniak Pine & Gannon (withdrew January 16, 2007):

• Michael H. Baniak, Jeffrey A. Pine, Anuj K. Wadhwa, Andrew F. Pratt, Baniak Pine & Gannon, 150 N. Wacker Dr., Chicago — all four withdrew by order dated 1/16/2007 (Judge Schwarzer). (Dkt. 639)

3. Notable counsel-related events in the case

• Friskit's motion to disqualify Howrey LLP (Dkt. ~648, filed May 25, 2007), set for hearing 6/29/2007. Friskit had met with Howrey's East Palo Alto office in January about the representation; Howrey declined and then took on RealNetworks, hiring Real's former deputy GC David Stewart. (ABA Journal, "Howrey Conflict Alleged") This concerns defense counsel, but it explains part of the plaintiffs' side churn.
• Rob Glaser's motion to disqualify Foley & Lardner (denied July 5, 2007). Real's CEO/chairman intervened solely to seek Foley's disqualification based on Foley's later March 6, 2007 engagement by Glaser personally; Judge Schwarzer denied it, holding the duty of loyalty ran to the earlier client (Friskit). (Dkt. 784)
• Claim construction was issued by Judge Fern M. Smith (No. C 03‑5085 FMS, Markman hearing April 12, 2005); the case was later before Senior Judge William W. Schwarzer, who granted summary judgment of obviousness.

4. What I could not verify — stated explicitly

• I did not obtain the Federal Circuit's own docket sheet or the actual appellant brief PDF; the appellate roster above rests on the reported counsel block plus the Justia CAFC docket summary. If you need belt-and-suspenders confirmation, pull CAFC Docket 2007‑1583 and the Brief for Plaintiff‑Appellant (filed ~Dec. 2007).
• No filing in this case appears to have been sealed as to counsel, and no in camera or seal order affecting the appearances surfaced in the docket materials I reviewed. Friskit was a patent-holding company, so there was no in-house counsel of record.
• I found no evidence tying any of the Foley or Robins Kaplan attorneys to specific later patent cases in a way I can source here; the "experience" notes above are limited to their role and practice description in this matter. I have deliberately not supplied case lists I could not ground.
• Minor discrepancy worth flagging: the district court docket caption used both "RealNetworks" and "Real Networks," and Friskit's co-defendant Listen.com (acquired by RealNetworks in Aug. 2003) was a named defendant at the district court but appears as a separate appellee on the CAFC docket.

I'll research the counsel of record for RealNetworks in this appeal and the underlying district court case.

I found the core Federal Circuit counsel listing. Let me verify against the docket and opinion, and check each attorney's role and firm.

Let me check the Federal Circuit docket itself and verify the individual attorneys' roles/backgrounds.

Counsel of Record — RealNetworks, Inc. & Listen.com (Defendants-Appellees)

Bottom line: The defense was handled out of Quinn Emanuel Urquhart Oliver & Hedges LLP (San Francisco), with Charles K. Verhoeven as lead counsel who argued the appeal. RealNetworks' in-house legal department (GC Bob Kimball) also appeared in a supporting role. A separate firm, Howrey LLP, was on the district-court defense team during the 2007 disqualification episode but is not reflected in the Federal Circuit brief.

I was not able to pull the actual PACER appearance docket for 2007-1583 in this session; the roster below is reconstructed from the published opinion's counsel listing, the Federal Circuit docket summary, the brief's cover page for the district-court team, and RealNetworks' own litigation press release. Where a fact comes only from a secondary source, I flag it.

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Federal Circuit counsel (appeal 07-1583, briefed 2007–08, argued late 2008, decided Jan. 12, 2009)

The opinion's counsel block (306 F. App'x 610) reads: "Charles K. Verhoeven, Quinn Emanuel Urquhart Oliver & Hedges, LLP, of San Francisco, California, argued for all defendants-appellees. With him on the brief were David A. Perlson, J. Toji Calabro; and Edward J. DeFranco, of New York, New York; and Evette D. Pennypacker, of Redwood Shores, California. Of counsel was Deepak Gupta, of San Francisco, California."

In-house counsel (RealNetworks legal department)

Per RealNetworks' January 13, 2009 press release announcing the affirmance, the company was represented by Quinn Emanuel "along with inside counsel":

District court (N.D. Cal. No. 3:03-cv-05085-WWS) — additional defense counsel not on the appeal

Note on Howrey's limited role: contemporaneous press coverage in mid-2007 described Howrey as RealNetworks' counsel (e.g., "Foley & Lardner represents Friskit, while Howrey represents RealNetworks"), but Quinn Emanuel was the firm of record on the Federal Circuit brief and handled the dispositive summary-judgment and appellate work. Howrey does not appear in the Federal Circuit counsel listing.

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Caveats on sourcing

• No sealed-counsel issue: the parties' briefs were not sealed wholesale, and the counsel listing is public in the published opinion. Individual filings below were sealed (e.g., RealNetworks' June 19, 2007 sealed disqualification filing), which is why some attorney activity is documented only through press reports.
• I could not independently verify the full PACER "attorney appearance" docket for 2007-1583 (Justia's free docket only surfaces Verhoeven for appellees; the fuller roster comes from the opinion headnote and brief cover). Anyone needing a certified list should pull the Fed. Cir. docket sheet and the joint appendix cover.
• Roles (lead vs. of counsel) follow the opinion's own designations plus the RealNetworks press release's description of Verhoeven as "lead counsel"; "partner" status for Pennypacker and DeFranco is taken from that release. I have not verified current firm affiliations for Calabro, Perlson, or DeFranco, so I have not asserted them.
• Do not treat the Thomson/West "Fenwick & West" attribution for Pennypacker as her role in this case — it post-dates the litigation.