Litigation
Multimedia Technologies Pte Ltd. v. Tubi, Inc.
active and pending2:23-cv-00124
- Filed
- 2023-03-20
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Patent infringement case filed by Multimedia Technologies Pte Ltd. against Tubi, Inc. in the Eastern District of Texas. According to public records, the case is still active and pending.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
This patent infringement case is part of a broader litigation campaign targeting the streaming media and smart TV industry. The plaintiff, Multimedia Technologies Pte Ltd., is a Singapore-based entity that appears to be a non-practicing entity (NPE) or patent assertion entity (PAE). Corporate records indicate its business involves the "brokerage and consultancy services of intellectual property assets," and it has filed similar lawsuits against other major electronics companies like LG and Vizio. The patents being asserted were originally assigned to engineers at the electronics manufacturer Flex Ltd. (formerly Flextronics). The defendant, Tubi, Inc., is a major operating company in the streaming media sector and a subsidiary of Fox Corporation. Tubi offers a popular, free, ad-supported video-on-demand (AVOD) streaming service with tens of millions of monthly active users, available on a wide range of devices including smart TVs, which are at the heart of the dispute.
The lawsuit alleges that Tubi's streaming service infringes U.S. Patent No. 10,419,805. The '805 patent, titled "System and method for remote control of a smart television," generally covers technology for using a secondary device, such as a smartphone, to control content and features on a smart TV. The case was filed in the U.S. District Court for the Eastern District of Texas (2:23-cv-00124), a venue historically favored by patent plaintiffs due to its experienced judiciary, specialized local patent rules, and a reputation for moving cases relatively quickly to trial. While some sources link this specific case number to a parallel lawsuit filed by Multimedia Technologies against Vizio, the case against Tubi proceeds in this notable and active patent litigation forum.
This case is notable primarily as an example of a broad NPE assertion campaign against a thriving technology sector. The significance of the lawsuit is heavily influenced by the outcomes of parallel litigation. Specifically, in a similar case Multimedia Technologies brought against LG Electronics over the '805 patent and other related patents, an Eastern District of Texas jury recently found the patents were not infringed and were invalid. Furthermore, LG successfully challenged claims from the asserted patent family, including the '805 patent, in Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). These prior adverse rulings in the same court district and at the PTAB present a significant challenge for the plaintiff and will likely form a core part of Tubi's defense strategy.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
Key Legal Developments and Case Status
As of May 2026, the patent infringement lawsuit filed by Multimedia Technologies Pte Ltd. against Tubi, Inc. has been stayed pending the outcome of appeals from related proceedings at the Patent Trial and Appeal Board (PTAB). The case has seen limited substantive litigation in district court due to the parallel invalidity challenges against the asserted patent.
Initial Pleadings and Case Consolidation
- 2023-03-20: Complaint Filed. Multimedia Technologies Pte Ltd. filed a patent infringement complaint against Tubi, Inc., alleging that Tubi's ad-supported streaming service, particularly its functionality allowing control via a secondary device, infringes U.S. Patent No. 10,419,805. The complaint was filed in the Marshall Division of the Eastern District of Texas and assigned to Judge Rodney Gilstrap. (Dkt. 1).
- 2023-05-16: Tubi's Answer and Counterclaims. Tubi filed its answer, denying infringement and asserting counterclaims for a declaratory judgment of non-infringement and invalidity of the '805 patent. (Dkt. 11).
- Case Consolidation: This case is one of several similar lawsuits filed by Multimedia Technologies against various companies in the streaming and smart TV industry. For pre-trial purposes, it was associated with related cases, most notably Multimedia Technologies Pte Ltd. v. Vizio, Inc. (2:23-cv-00125), which also involves the '805 patent.
Stay Pending PTAB Proceedings and Related Litigation
The most significant development in the case against Tubi has been the impact of parallel invalidity challenges against the '805 patent, primarily initiated by LG Electronics in a separate but related lawsuit.
- Background of Parallel IPRs: LG Electronics, defending against infringement claims on the same patent family, filed several Inter Partes Review (IPR) petitions at the PTAB. In two key proceedings, IPR2023-00588 and IPR2023-00589, the PTAB instituted trial, finding a reasonable likelihood that LG would prevail in proving the challenged claims of the '805 patent were unpatentable as obvious.
- 2023-11-20: Joint Motion to Stay. Given the PTAB's institution of IPRs on the '805 patent, Multimedia Technologies and Tubi filed a Joint Motion to Stay the district court case pending the PTAB's final written decisions. (Dkt. 32). The parties argued that a stay would simplify the issues, reduce litigation costs, and avoid inconsistent rulings, as the PTAB's decision could invalidate the very patent claims at issue.
- 2023-11-21: Stay Granted. Judge Gilstrap granted the joint motion, staying the case and administratively closing it for statistical purposes. (Dkt. 33). The order required the parties to file joint status reports every six months and to notify the court within 14 days of the final resolution of the IPR proceedings, including any appeals to the U.S. Court of Appeals for the Federal Circuit.
PTAB Decisions and Current Posture
- 2024-11-15: PTAB Finds Claims Unpatentable. In its Final Written Decisions for IPR2023-00588 and IPR2023-00589, the PTAB ruled that all challenged claims of the '805 patent are unpatentable. This outcome was a major victory for the petitioners and defendants in the various litigations, including Tubi.
- Appeal to the Federal Circuit: Following the adverse PTAB decisions, Multimedia Technologies appealed the rulings to the Federal Circuit.
- Current Status (May 2026): The district court case against Tubi remains stayed and administratively closed pending the final outcome of the Federal Circuit appeals of the PTAB's invalidity findings. The ultimate fate of this lawsuit is directly tied to whether Multimedia Technologies can successfully overturn the PTAB's decisions. If the Federal Circuit affirms the PTAB, it will effectively end the district court case, as the patent will have been rendered invalid. If the appeal is successful, the stay in the Eastern District of Texas would likely be lifted, and litigation would resume.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- The Dacus Firm
- D. "Bo" M. Baucum · lead counsel
- Brent E. Dacus · of counsel
- M. Elizabeth O'Neill · of counsel
- Adrian M. Azer · of counsel
Plaintiff's Counsel
Multimedia Technologies Pte Ltd. has retained counsel from The Dacus Firm, P.C., a law firm based in Tyler, Texas.
D. "Bo" M. Baucum - Lead Counsel
- Firm: The Dacus Firm, P.C. (Tyler, TX)
- Note: Baucum has represented clients in numerous patent infringement cases in the Eastern District of Texas, often representing patent assertion entities.
Brent E. Dacus - Of Counsel
- Firm: The Dacus Firm, P.C. (Tyler, TX)
- Note: Dacus is the founder of the firm and has extensive experience in East Texas patent litigation, including cases involving streaming media technology.
M. Elizabeth O'Neill - Of Counsel
- Firm: The Dacus Firm, P.C. (Tyler, TX)
- Note: O'Neill's practice focuses on intellectual property litigation, and she is frequently listed as counsel in cases filed by The Dacus Firm in the Eastern District of Texas.
Adrian M. Azer - Of Counsel
- Firm: The Dacus Firm, P.C. (Tyler, TX)
- Note: Azer has experience in complex commercial litigation, including intellectual property disputes.
This legal team is listed on the complaint filed on March 20, 2023. The Dacus Firm is known for regularly representing plaintiffs in patent cases within the Eastern District of Texas.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Winston & Strawn
- Michael A. Bittner · lead counsel
- Krishnan Padmanabhan · lead counsel
- Scott A. W. Johnson · of counsel
- T. "Dino" Divonis · of counsel
- Gillam & Smith
- Melissa R. Smith · local counsel
Counsel for Defendant Tubi, Inc.
Tubi, Inc. has retained a team from the law firm Winston & Strawn LLP to lead its defense, supported by local counsel from Gillam & Smith LLP. The following attorneys have made appearances on the official court docket.
Lead Counsel
Michael A. Bittner (Lead Attorney)
- Firm: Winston & Strawn LLP, Chicago office.
- Note: Bittner is an experienced patent litigator with a focus on high-tech disputes involving software and electronics, and has represented major tech companies in district courts and at the PTAB.
Krishnan Padmanabhan (Lead Attorney)
- Firm: Winston & Strawn LLP, New York office.
- Note: Padmanabhan has extensive experience representing technology and media companies in complex patent litigation across various federal courts.
Of Counsel / Associate Attorneys
Scott A. W. Johnson
- Firm: Winston & Strawn LLP, Chicago office.
- Note: Johnson focuses his practice on intellectual property litigation, including patent disputes in federal district courts.
T. "Dino" Divonis
- Firm: Winston & Strawn LLP, Chicago office.
- Note: Divonis is a technology litigator who has represented clients in patent cases involving consumer electronics and software technologies.
Local Counsel
- Melissa R. Smith
- Firm: Gillam & Smith LLP, Marshall, Texas.
- Note: Smith is a highly-regarded and experienced local counsel in the Eastern District of Texas, frequently retained by out-of-state firms in patent infringement cases.