Monticello Enterprises LLC v. Starbucks Corporation

Monticello Enterprises LLC initiated a patent infringement lawsuit against Starbucks Corporation in the U.S. District Court for the Western District of Texas, Waco Division. The plaintiff, Monticello Enterprises LLC, is identified as a non-practicing entity (NPE) or patent assertion entity (PAE), primarily engaged in licensing and asserting a portfolio of patents related to mobile payment and in-app purchase technologies. The defendant, Starbucks Corporation, is a global coffeehouse chain renowned for its extensive network of company-operated and licensed stores, and its widely adopted mobile application which integrates in-app payment and ordering functionalities. The core of the alleged infringement revolved around Starbucks' mobile commerce infrastructure, specifically its in-app payment API, simplified checkout features, and wireless point-of-sale data exchange systems.

The primary patent at issue in this specific case was U.S. Patent No. 11,004,139. This patent broadly covers systems and methods for facilitating in-app payments and wireless point-of-sale transactions. While this case specifically listed '139, Monticello Enterprises LLC has asserted a broader portfolio of patents against Starbucks and other defendants concerning mobile payment and wireless point-of-sale technologies in related litigations.

The case, filed on November 9, 2023, was administratively closed on April 19, 2024, without a merits ruling, and was consolidated into a lead case, 6:23-cv-753-XR, assigned to Judge Xavier Rodriguez in the Waco Division of the Western District of Texas. The Western District of Texas, particularly its Waco Division under Judge Alan Albright (though this case was assigned to Judge Rodriguez), has historically been a popular venue for patent plaintiffs, including NPEs, due to its reputation for expedited trials and procedural characteristics perceived as plaintiff-friendly. This case is notable as part of a multi-defendant assertion campaign by Monticello Enterprises against major retailers utilizing mobile payment systems. Furthermore, Unified Patents, an anti-NPE organization, has actively challenged Monticello's related patent portfolio through ex parte reexamination proceedings, successfully securing a final rejection of all challenged claims of U.S. Patent No. 11,468,497 (a patent related to transmitting user payment data) in November 2024, highlighting ongoing efforts to invalidate patents asserted by Monticello.

Monticello Enterprises LLC v. Starbucks Corporation (6:23-cv-00763) was a patent infringement case that, despite being administratively closed, saw substantive legal developments through its consolidation into a lead case. The litigation ultimately resulted in a dismissal via summary judgment, which is currently on appeal.

Here is a chronological overview of the key legal developments and outcomes:

Filing & Initial Pleadings

• 2023-11-09: Monticello Enterprises LLC filed a patent infringement complaint against Starbucks Corporation in the U.S. District Court for the Western District of Texas. The complaint alleged infringement of U.S. Patent 11,004,139, among others, relating to in-app payment and wireless point-of-sale technologies, specifically targeting Starbucks' mobile commerce infrastructure.

Pre-trial Motions of Substance

• 2024-04-19: The individual case, 6:23-cv-00763, was administratively closed and consolidated into lead case 6:23-cv-00753-XR, which involved Monticello Enterprises LLC against Macy's, Inc. and other defendants, including Starbucks. This procedural consolidation meant all further substantive activity for Starbucks' case would occur under the lead case docket.
• Post-consolidation (dates approximate, before 2024-12-04): Defendants, including Starbucks, filed motions to dismiss under Federal Rule of Civil Procedure 12(b)(6), arguing that the asserted patents (including Patent 11,004,139) claimed ineligible subject matter under 35 U.S.C. § 101.
• 2024-12-04: Magistrate Judge Derek T. Gilliland issued a Report and Recommendation (R&R) proposing the denial of the defendants' motions to dismiss.
• 2025-01-21: The Court adopted Magistrate Judge Gilliland's R&R, denying the defendants' motions to dismiss without prejudice. The court allowed the defendants to raise the patent eligibility issue again at the summary judgment stage.
• Before 2026-03-18: Defendants filed a Joint Motion for Summary Judgment (ECF Nos. 58, 60) in the consolidated lead case. This motion likely addressed issues of non-infringement or invalidity, potentially including the patent eligibility arguments previously raised.
• Before 2026-03-18: Magistrate Judge Derek T. Gilliland issued another R&R (ECF No. 78), recommending that the Joint Motion for Summary Judgment be granted.
• 2026-03-18: The Court adopted the Magistrate Judge's R&R in part, granted the Joint Motion for Summary Judgment, and dismissed the consolidated cases, including the action against Starbucks. The dismissal was based on a finding that a release in prior agreements (referred to as PSAs) protected the defendants as "Sublicensee Released Parties."

Claim Construction (Markman) Outcomes

• The case did not reach the claim construction (Markman) stage on its merits. It was dismissed on summary judgment based on a contractual release.

Discovery Milestones with Strategic Significance

• Michael I. Shamos was identified as an expert witness for the defendants in the consolidated cases, including the Starbucks action, concerning the asserted patents (9,824,408, 10,121,186, 10,643,266, 11,004,139, 11,461,828, and 11,468,497), which relate to online, wireless, and in-app payment systems.

Trial Events, Verdict, and Post-trial Motions

• No trial or verdict occurred in this case. The consolidated cases were dismissed prior to trial.

Settlement, Dismissal, Judgment, or Appeal

• 2026-03-18: The case against Starbucks, as part of the consolidated lead case 6:23-cv-00753-XR, was dismissed by the court through an order granting summary judgment in favor of the defendants.
• 2026-04-22: Monticello Enterprises LLC filed an appeal to the Court of Appeals for the Federal Circuit (Case No. 26-1717) concerning the dismissal of the Starbucks case. The appeal remains open.

Parallel PTAB IPR/PGR Proceedings

• No specific PTAB IPR or PGR proceedings were identified for U.S. Patent 11,004,139 in the provided search results.
• However, Unified Patents initiated an ex parte reexamination proceeding against a related patent asserted by Monticello in the broader campaign, U.S. Patent 11,468,497.
  • 2024-04-26: Unified Patents filed the ex parte reexamination request against U.S. Patent 11,468,497.
  • 2024-06-14: The Central Reexamination Unit (CRU) granted the request, finding substantial new questions of patentability for the challenged claims of U.S. Patent 11,468,497.
  • 2024-11-07: The CRU entered a final rejection of all challenged claims of U.S. Patent 11,468,497.

Monticello Enterprises LLC was represented by the following counsel:

• Amar Thakur

  • Role: Counsel
  • Firm: George, Brothers, Kincaid & Horton LLP and Manatt, Phelps & Phillips, LLP
  • Office Location: Specific office locations are not detailed in the provided search results.
  • Relevant Experience: Represented Monticello Enterprises LLC in this patent infringement case.

• B. Russell Horton

  • Role: Counsel
  • Firm: George, Brothers, Kincaid & Horton LLP and Manatt, Phelps & Phillips, LLP
  • Office Location: Specific office locations are not detailed in the provided search results.
  • Relevant Experience: Represented Monticello Enterprises LLC in this patent infringement case.

• Bruce R. Zisser

  • Role: Counsel
  • Firm: George, Brothers, Kincaid & Horton LLP and Manatt, Phelps & Phillips, LLP
  • Office Location: Specific office locations are not detailed in the provided search results.
  • Relevant Experience: Represented Monticello Enterprises LLC in this patent infringement case.

The search results provide clear information about Starbucks' counsel in this case.

According to Snippet, "Ashley Kissinger, Kyle A. Ceuninck, and Richard W. Miller of Ballard Spahr LLP represented Starbucks". Snippet also links Richard W. Miller to Ballard Spahr LLP and lists his involvement in 6:23-CV-00763.

I will now gather more details on each of these attorneys and their firm.

Counsel for Starbucks Corporation:

• Ashley Kissinger

  • Role: Counsel
  • Firm: Ballard Spahr LLP
  • Office Location: While not explicitly stated in the provided snippets, Ballard Spahr has multiple offices. I will try to find a specific office.
  • Relevant Experience: Ballard Spahr is noted as "a firm with substantial IP litigation experience".

• Kyle A. Ceuninck

  • Role: Counsel
  • Firm: Ballard Spahr LLP
  • Office Location: Similar to Ashley Kissinger, I will attempt to find a specific office location.
  • Relevant Experience: Represented Starbucks in this patent infringement case.

• Richard W. Miller

  • Role: Counsel
  • Firm: Ballard Spahr LLP
  • Office Location: Will search for his specific office.
  • Relevant Experience: Patent attorney with 17 years of experience; practice areas include chemical, comp. arch. and software, and software, security. He is listed as representing Starbucks in this case and the consolidated case.

I should also check for any in-house counsel if possible, though the primary search focused on external litigation counsel. Snippet mentions Batur Oktay, former Global Head of IP at Starbucks, who joined Davis Wright Tremaine LLP in January 2025. While he was in-house at Starbucks and oversaw their IP program, he joined a new firm after this case was filed and consolidated, so he would not be an active counsel of record during the litigation in question for Starbucks itself, but rather a former in-house lead who transitioned. It's important to note the dates: case terminated April 2024, Oktay joined DWT January 2025. So he was at Starbucks during most of the duration of the litigation. He was likely an in-house contact but not external litigation counsel in the sense of appearing on the docket. I will clarify that for him.

Let's refine the search for office locations for the Ballard Spahr attorneys.Monticello Enterprises LLC v. Starbucks Corporation (6:23-cv-00763) saw Starbucks Corporation represented by attorneys from Ballard Spahr LLP.

The following counsel of record represented Starbucks Corporation:

• Ashley Kissinger

  • Role: Counsel
  • Firm: Ballard Spahr LLP
  • Office Location: Not explicitly detailed in the provided search results, but Ballard Spahr has numerous offices nationwide.
  • Relevant Experience: Represented Starbucks in this patent infringement case. Ballard Spahr is recognized as a firm with substantial intellectual property litigation experience.

• Kyle A. Ceuninck

  • Role: Counsel
  • Firm: Ballard Spahr LLP
  • Office Location: Not explicitly detailed in the provided search results.
  • Relevant Experience: Represented Starbucks in this patent infringement case.

• Richard W. Miller

  • Role: Counsel
  • Firm: Ballard Spahr LLP
  • Office Location: Not explicitly detailed in the provided search results.
  • Relevant Experience: A patent attorney with 17 years of experience, his practice areas include chemical, computer architecture and software, and software and security. He represented Starbucks in this case and in the consolidated lead case, 6:23-CV-00753.

While not acting as external litigation counsel, Batur Oktay served as the Global Head of IP at Starbucks for nearly two decades, overseeing the company's global intellectual property program during the period this litigation was active. He transitioned to Davis Wright Tremaine LLP as a partner in Seattle in January 2025, after the administrative closure of this specific case.