Litigation

Netflix, Inc. et al. v. DivX, LLC

Final Written Decision; DivX prevailed

IPR2020-00647

Filed
2020-03-11
Terminated
2021-09-27

Patents at issue (1)

9270720

Defendants (1)

Summary

Netflix and Hulu petitioned for inter partes review of claims 1–5 and 12 of U.S. 9,270,720. The Board instituted review and issued a final written decision on September 27, 2021 finding no challenged claims unpatentable.

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 docket, PTAB, and industry coverage.

Good foundation. Now let me verify patent details, the district court venue/judges, and later developments.

Case Overview: Hulu, LLC & Netflix, Inc. v. DivX, LLC, IPR2020-00647 (PTAB)

Scope note: the case in the metadata is the PTAB inter partes review, not a district court action. The "court/division/judge" and venue questions only make sense against the parallel district court litigation that generated this IPR — DivX, LLC v. Netflix, Inc., No. 2:19-cv-01602 (C.D. Cal.), and DivX, LLC v. Hulu, LLC, No. 2:19-cv-01606 (C.D. Cal.). I treat the IPR as the through-line and the district case as its litigation context, flagging where sourcing is thinner.

1. The parties: an operating-company defense coalition vs. a Fortress-backed monetization entity

Petitioners are Netflix, Inc. (Delaware corp., Los Gatos HQ, with a large Los Angeles office) and Hulu, LLC (LA-headquartered streaming service) — both operating companies defending their adaptive-bitrate streaming (ABS) platforms. The patent owner is DivX, LLC, which carries two very different identities. The legacy DivX (founded c. 1999–2000 by Jérôme Rota and Jordan Greenhall) pioneered MPEG-4-based consumer video compression, the DivX codec/software, and a studio-accepted DRM stack, and licensed software into "more than one billion consumer electronic devices" (DivX's own pleading language, C.D. Cal. Dkt. 67 at 2, ECF No. 2:19-cv-01602). The present DivX, LLC is a different animal: Netflix's briefing (Dkt. 797-1) documents that Fortress Investment Group (a SoftBank subsidiary) bought the NeuLion/Sonic IP patent assets in Feb. 2018, dropped them into a newly formed entity renamed DivX, LLC, and that the plaintiff "has no engineering department, employs only one engineer, is led by an attorney, and engages in litigation and patent licensing as its primary business," with revenue passed through to DivX CF Investors LLC (97% owner). DivX's mandatory notices in the related IPRs identify DivX, LLC and DivX CF Investors LLC as real parties in interest. DivX itself disputes the "same company" narrative in the district case; the characterization above is Netflix's, and it is contested.

2. What's accused, and which patents

The accused technology is the defendants' streaming platforms — the server-side encoding/packaging and manifest (index-file) generation that feeds the Netflix and Hulu apps, plus DRM/sample encryption using the ISO Common Encryption and MP4 PIFF structures. DivX's infringement contentions against Netflix and Hulu were themselves exhibits to this petition (Exs. 1007–1008), i.e., the IPR was filed directly off the district court contentions. Patents:

  • U.S. 9,270,720 ("Systems and Methods for Automatically Generating Top Level Index Files," Braness et al., assignee Sonic IP; filed 2014 as a continuation, priority to Aug. 31, 2011) — the only patent in this IPR: a playback server receives a request with a product identifier, retrieves device capabilities, filters the list of content "assets," and generates a device-tailored top-level index file (e.g., SMIL) for ABS. Claims 1–5 and 12 challenged.
  • U.S. 9,998,515 — continuation of the '720 with near-identical spec; the subject of companion IPR2020-00648 (claims 1–6, 8–10, 13–14, 16–17, 19), appealed alongside this one.
  • The district court portfolio originally spanned seven patents — the '673 (protected/encrypted video stream, frame key tables), '651 (deblocking filter), '792 (dual-index multimedia file for trick play), '720, '515, '486, and '588 (partially encrypted frames using common keys) — reduced to four at trial (Fed. Cir. No. 24-1541 opinion; Final Judgment, Dkt. 1197).

3. Procedural posture and why it matters

The petition in IPR2020-00647 was filed March 11, 2020; the Board instituted on Oct. 1, 2020 (Paper 9) and issued its Final Written Decision on Sept. 27, 2021 (Paper 28) holding no challenged claims unpatentable over the two asserted §103 grounds — Pyle (U.S. 8,782,268) + Marusi (EP 2180664) and Lewis (US 2012/0047542) + Marusi. Panel: APJs Gerstenblith, Ullagaddi, and Ahmed (the same panel handled the sister '792 IPR, IPR2020-00646). Netflix appealed; the Federal Circuit affirmed on Oct. 25, 2023 in a precedential opinion (Netflix, Inc. v. DivX, LLC, Nos. 2022-1203/-1204), holding Netflix's Board-ignored-arguments theories forfeited, over a Dyk dissent; mandate issued Dec. 4, 2023.

Why this case is notable:

  • IPR-as-stay-machine. Netflix/Hulu filed a coordinated wave of IPRs against the seven asserted patents (filed starting Oct. 2019 and into 2020). Judge Gutierrez stayed the parallel C.D. Cal. actions on May 11, 2020, and the stay held until roughly May 2024 (WilmerHale) — effectively deferring a billion-dollar-scale case by four years.
  • The IPR win proved pyrrhic. The claims upheld here were later held invalid under §101 by the district court on summary judgment (Dkt. 774, reflected in Final Judgment Dkt. 1197 ¶5: claims 1–2, 4, and 5 of the '720 and claim 1 of the '515). After a March 13–25, 2026 jury trial, the jury found no infringement of any of the four tried patents, and judgment entered for Netflix on May 7, 2026, with DivX recovering nothing against a damages demand exceeding $400M (WilmerHale). Separately, in Netflix, Inc. v. DivX, LLC, No. 24-1541 (Fed. Cir. Feb. 13, 2026), the Federal Circuit reversed the Board's claim construction of the '588 patent's "within the requested portions" limitation using the nearest-reasonable-referent canon, vacated, and remanded — after which DivX discontinued the '588.
  • NPE assertion model. DivX is the video-codec analog to Fortress's VLSI campaign: fund-formed shell asserting a broad legacy portfolio against Netflix, Hulu, Samsung, TCL, LG, and MediaTek, plus an ITC action on the '486 (Hulu I briefing, Dkt. 145). Unified Patents has separately attacked the portfolio in its SEP Video Codec Zone (e.g., U.S. 10,326,987, IPR2021-01476; Fed. Cir. Rule 36 affirmance of invalidity, June 24, 2025).
  • Market context. The patents cover the plumbing of adaptive bitrate streaming (top-level index/manifest generation, byte-range requests, partial-frame encryption) — i.e., the DASH/HLS-era infrastructure underlying essentially every major streaming service, which is why a single Fortress entity could credibly seek nine-figure damages from Netflix.

Sourcing caveats: The FWD, institution date, petition date, grounds, panel, appeal, and judgment facts above are directly documented (FWD Paper 28; Fed. Cir. 22-1203 opinion and mandate; Dkt. 1197; WilmerHale release). Two points are less firm: (i) Netflix's counsel in the district case is Netlix's own WilmerHale team per WilmerHale's release; petitioner-side counsel in this IPR is only confirmed in the public record for the sister '792 IPR (Sheppard Mullin — Harper Batts), so I would not state counsel for -00647 without checking the docket; and (ii) the exact reassignment sequence in C.D. Cal. (initially Judge Michael W. Fitzgerald on the 2019 motions, then Judge Philip S. Gutierrez for the stay/claim-construction phase, ultimately Judge George H. Wu for the 2026 trial and judgment) is assembled from docket text rather than a single authoritative order and should be treated as approximate.

Key legal developments & outcome

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

I'll research this case. Note upfront: the "case" metadata describes a PTAB IPR (Netflix/Hulu v. DivX), while the request asks about infringement-litigation milestones (complaint, Markman, trial). Let me map both the district court action and the parallel PTAB proceedings.

I have the broad outline. Now let me drill into the district court docket, the stay, the post-appeal phase, and the other IPRs.

Framing: two overlapping proceedings

The metadata you gave me is the PTAB IPR (Netflix, Inc. & Hulu, LLC v. DivX, LLC, IPR2020-00647), which is an administrative validity challenge, not an infringement suit. The ask — complaint, answer, Markman, trial, JMOL — maps onto the companion district court litigation, DivX, LLC v. Netflix, Inc., No. 2:19-cv-01602 (C.D. Cal.), and its sibling DivX, LLC v. Hulu, LLC, No. 2:19-cv-01606 (C.D. Cal.). I cover both, because the IPR is the reason the infringement case sat dormant for four years.

Bottom line: DivX won the IPR in question (claims 1–5, 12 of the '720 patent survived, affirmed by the Federal Circuit in 2023), but Netflix ultimately won the litigation — a March 2026 jury verdict of non-infringement on all asserted claims plus a § 101 summary-judgment win that killed the '720 and '515 patents, ending a case in which DivX sought ~$424–500M.

A. District court phase I: filing, pleadings, early motions (2019–2020)

Date Event
2019-03-05 DivX, LLC files two complaints in C.D. Cal.: DivX v. Netflix, No. 2:19-cv-01602 (PSG/DFMx), and DivX v. Hulu, No. 2:19-cv-01606. DivX asserted seven patents against Hulu and the same seven plus one more against Netflix (per the court's 2020-05-11 stay order). Initial patents: U.S. 7,295,673; 8,139,651; 8,472,792; 9,184,920; 9,270,720 (per the AO-120 form at Dkt. 107).
2019-08-21 First Amended Complaint (Dkt. 60), adding U.S. 9,998,515; 10,212,486; 10,225,588.
2019 (fall) Netflix moves to dismiss under Rule 12(b)(6), arguing the '720 and '515 (and others) claim ineligible subject matter under § 101. DivX's opposition filed 2019-09-30 (Dkt. 67) — a preview of the eligibility fight that decided the case six years later. I could not locate the ruling text; Netflix answered on 2019-12-05 (Dkt. 76), and Netflix's answer included declaratory-judgment counterclaims of non-infringement and invalidity (the Final Judgment disposes of "Counts I, III, V, X…" as Netflix counterclaims).
2020-01-29 Scheduling order sets trial for 2021-04-27 (Dkt. 83).
2020-03-11 Netflix/Hulu file the IPR petitions that become IPR2020-00646/–00647/–00648 (and others) — the date in your case metadata.
2020-03-13 Netflix moves to stay the district court case pending IPR.
2020-05-11 Judge Philip S. Gutierrez grants the stays in both the Netflix and Hulu cases (Dkt. 94 motion granted; see the minute order at Dkt. 107, DivX v. Netflix / DivX v. Hulu). DivX later characterizes this as a 3.5-year stay.

B. The parallel PTAB proceedings

Netflix filed roughly seven IPR petitions against eight asserted patents (DivX's own filing says Netflix challenged all but one patent; one claim of the eighth was never petitioned). The one in your metadata:

IPR2020-00647 — U.S. 9,270,720 ("automatically generating top level index files")

  • Petitioner: Hulu, LLC and Netflix, Inc. (RPIs: Netflix, Hulu). Patent Owner: DivX, LLC (RPIs: DivX, LLC and DivX CF Investors LLC).
  • Challenged claims: 1–5 and 12, on two § 103(a) grounds (pre-AIA): Pyle + Marusi and Lewis + Marusi.
  • Experts: Clifford Reader, Ph.D. (Netflix); Kenneth A. Zeger, Ph.D. (DivX).
  • Papers: Petition (Paper 3); Preliminary Response (Paper 7); Institution Decision Paper 9, 2020-10-01; PO Response (Paper 14); Reply (Paper 17); Sur-reply (Paper 21); oral hearing 2021-06-14.
  • Final Written Decision, Paper 28, 2021-09-27 (panel: Gerstenblith, Ullagaddi, Ahmed) — no challenged claim shown unpatentable. DivX prevailed. Case terminated 2021-09-27. 2021 WL 4859625.

Companion IPRs (same day, same panel structure):

  • IPR2020-00648 — U.S. 9,998,515 (continuation of the '720): FWD 2021-09-27 held claim 1 patentable but claims 16, 17, 19 unpatentable. 2021 WL 4859708.
  • IPR2020-00646 — U.S. 8,472,792: FWD (date not confirmed in my sources) addressing claims 1, 5, 8, 9, 13–16, 18, 21–23.
  • IPR2020-00558 — U.S. 10,225,588: FWD 2024-02-22 (2024 WL 734765) rejecting Netflix's obviousness challenge on the Board's claim construction; one judge dissented.
  • IPR2020-00511 — U.S. 9,184,920: FWD later vacated and remanded by the Federal Circuit; Board remand papers 2023-08-11/2023-08-25.

C. Stays, first appeal, and the long pause (2022–2024)

Date Event
2022-01-08 DivX moves to lift the stay after all FWDs issue.
2022-03-29 Court denies the motion (Dkt. 130) — finds the stage-of-case factor neutral, simplification favors a continued stay, and prejudice only "slightly" favors lifting.
2023-10-25 Federal Circuit decision: Netflix, Inc. v. DivX, LLC, No. 2022-1203, 84 F.4th 1371 (precedential). Netflix's appeal was purely procedural — it did not contest the Board's substantive analysis, arguing only that the Board failed to address arguments made in the '720 and '515 petitions. The majority affirmed, holding the arguments were forfeited; Judge Dyk dissented, finding the Board improperly ignored preserved arguments (especially the "filtering" limitation of the '720 and the "retrieving" limitations of both patents). Net effect for the '720: the IPR2020-00647 win for DivX became final.
2023-12-29 DivX files a second motion to lift the stay (Dkt. 146), arguing that validity of all or some asserted claims of every asserted patent had been confirmed, that only three patents were on PTAB remand, and that appeals are a "speculative" basis for delay. Netflix opposed (Dkt. 153).
2024-05-01 Judge George H. Wu (case now 2:19-cv-01602-GW-AGR) lifts the stay and reopens the case (Dkt. 165); status conference set 2024-05-09. WilmerHale says it was retained "shortly before the stay was lifted in May 2024," at which point DivX was asserting seven patents and >$500M.
2024-05-09 Status conference sets Markman tutorial 2025-01-23, Markman hearing + further scheduling conference 2025-01-30 (see also the 2024-07-01 stipulated schedule order, Dkt. 179).

Note: the case was reassigned from Judge Gutierrez to Judge Wu during the dormant period; the 2020 stay order bears Gutierrez's name and the 2024+ orders bear Wu's.

D. Post-stay merits phase (2024–2026)

Claim construction (Markman). Tutorial 2025-01-23; hearing 2025-01-30. I was unable to locate the actual constructions or the Markman order text; the record shows the parties litigated claim scope again post-remand (e.g., DivX noting that "Netflix did not seek any additional claim constructions on remand" in the IPRs). Treat any specific construction as unsourced — flag this as a gap.

Discovery milestones with strategic significance.

  • Source-code discovery under a stipulated protective order (Dkt. 100), which DivX's expert Dr. Nick Feamster suggested limited his investigation — Netflix moved in limine to exclude any reference to it (Dkt. 809-1).
  • Netflix's patent-exhaustion defense: discovery into DivX's licenses with LG, Samsung, Element, Vizio, TCL, Roku, Funai, Google and Hisense, and Netflix's June 2025 supplemental damages contentions arguing DivX cannot recover for subscribers using already-licensed devices (Dkt. 356, filed 2025-07-03).
  • Ensnarement/doctrine-of-equivalents defense developed via Netflix's May 19, 2025 supplemental interrogatory responses.
  • Netflix's July 2025 motion for leave to amend its answer to add exhaustion and ensnarement (Dkt. 356).
  • Motion practice over the "DivX/Fortress" narrative — Netflix sought to preclude DivX from equating itself with the pre-2017 operating company (Dkt. 797-1, filed 2026-01-29).

Summary judgment — the decisive ruling. The Court's final rulings on the parties' summary judgment motions issued 2025-12-28 (Dkt. 774). Per the Final Judgment: claims 1–2, 4, and 5 of the '720 patent and claim 1 of the '515 patent are invalid for failing to claim patentable subject matter under 35 U.S.C. § 101. The same order granted DivX's motion for summary judgment on Netflix's on-sale/§ 102 defense "but only with respect to the server-side code" (per the parties' 2026-01-06 joint status report, Dkt. 780).

Trial. Jury trial commenced 2026-03-13 before Judge Wu; roughly seven trial days. DivX proceeded on seven claims across four patents — '673 (claims 29, 32), '651 (claim 2), '792 (claim 16), '486 (claims 1, 4, 15) — after the '720 and '515 were removed by the § 101 summary-judgment ruling (and the '920/'588 dropped out). DivX sought > $400M (pleadings elsewhere say $424M).

Verdict — 2026-03-25. The jury returned a unanimous defense verdict: Netflix did not infringe any asserted claim of all four patents ('673, '651, '792, '486). Because the verdict was "no" on infringement, the jury never reached invalidity or damages. Verdict form at Dkt. 1152 (entered 2026-03-26).

Final judgment — 2026-05-07 (Dkt. 1197, Rule 58): judgment of non-infringement on all asserted claims; entry of § 101 invalidity for the '720 claims 1–2, 4, 5 and '515 claim 1; judgment for Netflix on the specified FAC counts and on Netflix's counterclaim counts; case terminated (JS-6).

Post-trial motions. I found no reported JMOL/new-trial ruling or fee motion as of 2026-09-30. DivX's appellate options on the non-infringement verdict and the § 101 ruling remain open; no notice of appeal is confirmed in my sources. Flag as unverified.

E. PTAB remands and appellate developments during the merits phase

  • 2026-02-13 — Netflix, Inc. v. DivX, LLC, No. 2024-1541 (Fed. Cir.) (2026 WL 405791, reported by Law360 as a "grammar"/"rule of the last antecedent" ruling and by Vorys as a precedential-style analysis piece): the court reversed the Board's construction of claim 1 of the '588 patent in IPR2020-00558, holding that "within the requested portions of the selected stream of protected video" modifies "encrypted portions of frames of video," not "encryption information"; under that construction the prior art teaches the limitation. Reversed, vacated, and remanded (costs to Netflix). This was the second time the Federal Circuit sent a Netflix challenge to the '588 back to the PTAB.
  • The 2023-12-29 DivX filing (Dkt. 146-1) and the 2024 filing (Dkt. 158) document the Board's second-remand posture on '588, '792, '920, with the Fed. Cir. having vacated FWDs on those three and remanded; '651 (claims 1 and 19 cancelled; claim 2 patentable, affirmed) and '515 (claim 16 cancelled; claim 1 affirmed) were final.
  • The WilmerHale client alert (2026-04-08) states that "earlier this month" the Federal Circuit reversed a PTAB decision upholding "a third patent," after which DivX granted Netflix a covenant not to sue on that patent. Which patent that is, and the exact date/citation of that third reversal, is not confirmed in the sources I could retrieve — I'd verify before relying on it.
  • Caution on secondary reporting: ip fray's post-verdict table labels the '720 and '515 as "invalidated by PTAB." That is inconsistent with the record — the PTAB upheld the '720 (affirmed 2023) and '515 claim 1, and it was the district court's § 101 ruling that invalidated them. Prefer the Final Judgment (Dkt. 1197 ¶ 5).

F. Global parallel picture (context, not the U.S. case)

DivX's campaign was worldwide: Brazil (State Court of Rio de Janeiro, filed 2020-10; permanent injunction granted Jan 2024 and upheld on appeal — the first-ever Brazilian SEP-style streaming injunction against Netflix); Germany (LG Mannheim, 7 O 88/21, filed 2022-04 — injunction later unenforceable after EPO revoked EP 3 467 666 (opposition division 2023-05-15; appeal T 1021/23 decided 2025-02-14) and the German Federal Patent Court invalidated EP 2 661 696); UPC Munich Local Division (UPC_CFI_465/2025, filed 2025-05, on EP 4 213 033, with a Netflix revocation counterclaim filed 2025-10; a Munich decision is dated 2026-09-15 in the UPC file). DivX also licensed Samsung, LG, Disney (2022-08), Roku and Hisense.

G. Outcome summary for IPR2020-00647 specifically

  • Petitioner lost; DivX prevailed. FWD of 2021-09-27 (Paper 28) determined that no challenged claim (1–5, 12) of U.S. 9,270,720 was unpatentable over Pyle+Marusi or Lewis+Marusi.
  • Affirmed on appeal: Netflix, Inc. v. DivX, LLC, No. 2022-1203, 84 F.4th 1371 (Fed. Cir. 2023-10-25) (precedential; Dyk, J., dissenting), on forfeiture grounds rather than the merits.
  • Practical effect on the litigation: the '720 survived IPR, but the case-level benefit to DivX evaporated — the district court later held the asserted '720 claims § 101-ineligible (2025-12-28), and the jury cleared Netflix of infringement of everything that reached trial (2026-03-25), with final judgment entered 2026-05-07.

H. Sourcing caveats

  • Docket numbers/dates cited above come from CourtListener/RECAP filings for 2:19-cv-01602 (Dkts. 60, 67, 76, 83, 94, 107, 130, 146-1, 158, 165, 179, 356, 780, 797-1, 809-1, 1152, 1197), the PTAB FWD texts, the Federal Circuit opinions (22-1203; 24-1541), and law-firm/industry summaries (WilmerHale 2026-04-08; ip fray; Law360 2026-02-13; Fed Circuit Blog 2023-10-25; Vorys 2026-04-02).
  • Not verified / gaps: (i) the ruling on Netflix's 2019 motion to dismiss; (ii) the substance of the 2025 Markman order; (iii) the '792 and '920 IPR FWD dates and citations; (iv) whether any JMOL, new-trial or fee motion was filed post-verdict, and whether DivX noticed an appeal; (v) the identity/date of the "third patent" Federal Circuit reversal referenced in the WilmerHale alert; (vi) whether a second-wave Netflix action (parallel to Hulu II, No. 2:21-cv-01615) existed and which patents it asserted.

Plaintiff representatives

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

I'll research this case. Note upfront that this is a PTAB inter partes review, not a district court infringement action — the "plaintiffs" (Netflix/Hulu) are the petitioners, and DivX is the patent owner. Let me verify the docket and counsel.

Let me verify counsel details and check for any changes in the appearances during the proceeding.

Let me confirm the specific mandatory notices filed in IPR2020-00647 and check for any additional or substituted counsel.

Important framing note

IPR2020-00647 is not a district court infringement action — it is an inter partes review at the Patent Trial and Appeal Board. The parties styled as "plaintiffs" in the metadata (Netflix, Inc. and Hulu, LLC) are the petitioners, i.e., the party that initiated the proceeding and bears the burden of proof. DivX, LLC is the patent owner (the real-party-in-interest "defendant"). Counsel of record below therefore means the PTAB practitioners designated under 37 C.F.R. §§ 42.8(b)(3) and 42.10(a) in the petition's power of attorney and mandatory notices. (There is a separate, parallel C.D. Cal. infringement suit — DivX, LLC v. Netflix, Inc., No. 2:19-cv-01602, and DivX, LLC v. Hulu, LLC, No. 2:19-cv-01606 — where the roles are reversed; I flag that below to avoid confusion.)

Counsel of record for Petitioners Netflix, Inc. and Hulu, LLC (PTAB, IPR2020-00647)

All PTAB counsel of record are from Sheppard, Mullin, Richter & Hampton LLP, Silicon Valley office. The power of attorney was filed with the petition on March 11, 2020, and designates a single lead counsel with back-up counsel, plus a full power of attorney to practitioners associated with USPTO Customer No. 166,219 (the Sheppard Mullin Netflix/Hulu PTAB team).

Role Attorney Reg. No. Firm / Office
Lead counsel Harper S. Batts 56,160 Sheppard Mullin — Silicon Valley (Palo Alto / Menlo Park, CA)
Back-up counsel Chris(topher) Ponder 77,167 Sheppard Mullin — Silicon Valley (Menlo Park, CA)
Back-up counsel Jeffrey Liang 69,043 Sheppard Mullin — Silicon Valley (Menlo Park, CA)

Sources: Petitioner Hulu, LLC's Power of Attorney (filed Mar. 11, 2020), Docket Alarm doc. 03-11-2020, docketalarm.com/cases/PTAB/IPR2020-00647/.../Power_of_Attorney___Hulu,_LLC.pdf; PTAB Hearing Transcript (June 14, 2021), listing "HARPER BATTS, ESQ." and "CHRIS PONDER, ESQ., Sheppard, Mullin, Richter & Hampton LLP, 379 Lytton Avenue, Palo Alto, California 94301"; Petitioners' Updated Mandatory Notices (Nov. 24, 2021), signed by Harper Batts and listing the same three attorneys.

Attorney notes

  • Harper S. Batts — lead counsel. Partner and member of the firm's Executive Committee; Chambers-ranked IP litigator with 20+ years' experience. He leads Sheppard Mullin's Netflix/Hulu streaming-IPR practice and has handled close to a hundred IPRs. His firm bio specifically credits him with "represent[ing] leading streaming service companies in 6 IPR proceedings and related appeals against a competitor involving video compression, encryption, and streaming technologies" (the DivX campaign) and with Federal Circuit work in the same vein. He presented the petitioner's oral argument in this IPR (and in the companion '648 IPR). Sources: sheppard.com/people/harper-batts; PTAB hearing transcript.
  • Chris Ponder — back-up counsel. Now a partner in the Silicon Valley office; focuses on PTAB and competitor patent litigation for streaming, software, gaming, and medical-device clients. A former law clerk to Judge Payne (E.D. Tex.), he has appeared in 40+ IPRs (firm bio cites a ~90% institution rate). He argued/co-argued for petitioners here and took the Dr. Reader deposition. Sources: sheppard.com/people/chris-ponder; PTAB hearing transcript; Ex. 2006 deposition transcript.
  • Jeffrey Liang — back-up counsel. Partner (elevated 2022) in the Silicon Valley office; formerly an Intel engineer (EE background, B.S./J.D. University of Texas). Listed as back-up in the petition's mandatory notices and on the Netflix/Hulu PTAB team (e.g., the Broadcom and DivX campaigns). Sources: Sheppard Mullin 2022 partner-class announcement; World IP Review 2024 ranking; Cal. State Bar profile.

No in-house counsel was designated as counsel of record in the PTAB filings surfaced. No local counsel is applicable at the PTAB (there is no local-counsel rule), and none appears.

Related but distinct representation (flagging to avoid conflation)

  • Federal Circuit appeal (Netflix, Inc. v. DivX, LLC, Nos. 2022-1203/1204, decided Oct. 25, 2023). Appellant Netflix's appellate counsel were from Wilmer Cutler Pickering Hale and Dorr LLP — Thomas Saunders (argued), Robert Stiller, Mark Christopher Fleming, Sarah R. Frazier, and Melissa N. Morel. This was separate appellate representation, not the PTAB counsel of record. Source: 2023 Fed. Cir. opinion and Casetext/courtlistener reproduction.
  • Parallel district court litigation (C.D. Cal.). In DivX, LLC v. Hulu, LLC, No. 2:21-cv-01615 (C.D. Cal.), Hulu's district-court counsel were from WilmerHale (e.g., James M. Dowd, Jason F. Choy, Christopher T. Casamassima, Mary "Mindy" V. Sooter), and Netflix's from WilmerHale as well. DivX's district-court counsel were Irell & Manella LLP (Jason G. Sheasby, Lisa Glasser) and Robins Kaplan (Aaron Fahrenkrog, Emily Tremblay). These are the infringement-case counsel, distinct from the IPR counsel of record.

Counterpart (patent owner) counsel — for contrast only

DivX, LLC was represented at the PTAB by Lowenstein & Weatherwax LLP, Los Angeles: Kenneth J. Weatherwax (lead, on the companion '646 mandatory notices; Reg. No. 54,528), Nathan "Nathan Nobu" Lowenstein, and Patrick Maloney (back-up; argued here), among others. Source: PTAB hearing transcript; DivX mandatory-notices filings; Fed. Cir. appearance list.

Caveats / sourcing limits

  • The PTAB has no e-filing docket comparable to PACER for document images; the filings above are drawn from Docket Alarm, the USPTO PTACTS portal, and the hearing/transcript and briefs, which are consistent on the three Sheppard Mullin attorneys. I could not independently verify a full paper-by-paper index (e.g., any later pro hac vice additions or a substitution of lead counsel) because the search tool returned no further results. Nothing in the materials reviewed suggests lead counsel changed from Batts during the proceeding (the Nov. 24, 2021 updated mandatory notices still list him as signatory).
  • Attorney experience bullet points are drawn from firm/third-party bios and are descriptive of general practice, not specific to this docket; treat them as background rather than docket-verified facts.

Defendant representatives

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

I'll research the counsel of record for the patent owner (DivX, LLC), who is the defendant/respondent in this IPR proceeding.

Let me look deeper at the Patent Owner's mandatory notices and the exact counsel of record for DivX in this specific IPR.

Let me confirm the updated mandatory notice (Sept. 2021) reflecting the final counsel of record, and check DivX's in-house general counsel.

Counsel of Record — IPR2020-00647 (Hulu, LLC & Netflix, Inc. v. DivX, LLC)

Preliminary note on party roles. Although this matter is flagged as a "patent infringement case" with Netflix/Hulu as plaintiffs and DivX as defendant, IPR2020-00647 is a Patent Trial and Appeal Board inter partes review, not a district court action. In the PTAB framework the "plaintiff/defendant" roles map onto Petitioner (Netflix, Inc.; Hulu, LLC) and Patent Owner / Responding party (DivX, LLC). The party in the defensive/respondent position — the analog of the "defendant" — is therefore DivX, LLC, and I've focused on its counsel of record below, with the Petitioners' counsel listed afterward for completeness. (The parallel district court cases were DivX, LLC v. Netflix, Inc., No. 2:19-cv-01602 (C.D. Cal.) and DivX, LLC v. Hulu, LLC, No. 2:19-cv-01606 (C.D. Cal.).)

The filings here are public (no sealed counsel designations); the only sealed material is the later Hulu–DivX settlement agreement, which is irrelevant to counsel identity.

Counsel of Record for DivX, LLC (Patent Owner / "Defendant")

Source: Patent Owner DivX, LLC's Mandatory Notices, Paper 5 (Apr. 8, 2020), and Patent Owner's Updated Power of Attorney, Paper 29 (Nov. 9, 2021). All attorneys are at Lowenstein & Weatherwax LLP, then located at 1880 Century Park East, Suite 815, Los Angeles, CA 90067 (the firm later relocated to 1016 Pico Blvd., Santa Monica, CA 90405).

Name (Reg. No.) Role Firm / Office Note
Kenneth J. Weatherwax (Reg. No. 54,528) Lead Counsel Lowenstein & Weatherwax LLP — Los Angeles Founding/managing partner; the firm is a patent-owner-only boutique that reports 400+ IPR/CBM proceedings and ~80 Federal Circuit appeals. Argued for DivX at the June 14, 2021 oral hearing.
Nathan Lowenstein (pro hac vice) Back-Up Counsel Lowenstein & Weatherwax LLP — Los Angeles/Santa Monica Managing partner; Patexia ranked him No. 1 patent-owner-side PTAB practitioner out of ~5,650 (2020–2025).
Bridget Smith (Reg. No. 63,574) Back-Up Counsel Lowenstein & Weatherwax LLP — Los Angeles Appeared as DivX counsel in the related IPR on U.S. 9,184,920 (won Aug. 2021).
Flavio Rose (Reg. No. 40,791) Back-Up Counsel Lowenstein & Weatherwax LLP — Los Angeles Senior PTAB litigator; also listed on DivX IPR team correspondence.
Edward Hsieh (Reg. No. 54,188) Back-Up Counsel Lowenstein & Weatherwax LLP — Los Angeles Listed on DivX IPR service lists across the related proceedings.
Parham Hendifar (Reg. No. 71,470) Back-Up Counsel Lowenstein & Weatherwax LLP — Los Angeles Co-tried DivX's IPR win on U.S. 10,225,588 against Netflix (complete victory, Feb. 2024).
Patrick Maloney (Reg. No. 67,247) Back-Up Counsel Lowenstein & Weatherwax LLP — Los Angeles Handled the Jan. 5, 2021 deposition of Netflix's expert Dr. Reader; appeared as DivX backup at the oral hearing.
Jason C. Linger (Reg. No. 76,794) Back-Up Counsel Lowenstein & Weatherwax LLP — Los Angeles Listed as backup counsel in the operative mandatory notices.

Actual hearing appearance (Paper 26, Hearing Transcript, July 14, 2021): For Patent Owner, Kenneth Weatherwax (lead) and Patrick Maloney (backup) appeared. (Petitioners' Harper Batts and Chris Ponder appeared for Netflix/Hulu.)

In-house contact for DivX: Noel Egnatios, Vice President & General Counsel of DivX, LLC, signed the Updated Power of Attorney (Paper 29, filed Nov. 9, 2021). (The signature block renders the name "Noel Ernst" with the typed name "Noel Egnatios" — an apparent scrivener's discrepancy; the RPI address listed is 4350 La Jolla Village Drive, Suite 950, San Diego, CA 92122.)

Caveat: An additional "Patent Owner Updated Mandatory Notice" was filed Sept. 20, 2021 (per the PTAB docket aggregator ipverse.greyb.com), but I could not retrieve its text within this session, so I cannot confirm whether it added or removed any names. The Nov. 9, 2021 Updated Power of Attorney still names Weatherwax as lead with Lowenstein as backup, consistent with the table above. I did not independently verify each attorney's individual pro hac vice admission order.

Petitioners' Counsel of Record (Netflix, Inc. & Hulu, LLC) — for context

Source: Petitioners' Power of Attorney, Paper 1 (Mar. 11, 2020); Petitioners' Updated Mandatory Notices, Paper 30 (Nov. 24, 2021). Firm: Sheppard, Mullin, Richter & Hampton LLP (Palo Alto; later service address at Four Embarcadero Center, San Francisco, and 1540 El Camino Real, Menlo Park).

  • Harper S. Batts (Reg. No. 56,160) — Lead Counsel. Longtime Sheppard Mullin PTAB practice leader; lead on the Netflix/Hulu IPR campaign against DivX.
  • Chris Ponder (Reg. No. 77,167) — Back-Up Counsel.
  • Jeffrey Liang (Reg. No. 69,043) — Back-Up Counsel.

Outcome (for grounding)

The Board (Judges Gerstenblith, Ullagaddi, Ahmed) issued a Final Written Decision on Sept. 27, 2021 (Paper 28) determining no challenged claims of U.S. 9,270,720 unpatentable — a DivX/Patent Owner win. Netflix appealed; the Federal Circuit affirmed in Netflix, Inc. v. DivX, LLC, No. 22-1203 (Fed. Cir. Oct. 25, 2023) (nonprecedential). L&W's own news page separately touts DivX wins in the parallel '651, '920, and '588 IPRs.

If you need district-court counsel specifically (as opposed to PTAB counsel), note that the C.D. Cal. infringement actions were defended by Quinn Emanuel and Wilmer Cutler Pickering Hale and Dorr (Netflix) and by Irell & Manella and Tensegrity Law Group (DivX) — different teams from the L&W group that handled the PTAB side. Let me know if you want that lineup broken out in full.