Litigation

Netflix, Inc. v. VideoLabs, Inc.

Final Written Decision - appealed

IPR2023-00628

Filed
2023-02-23
Terminated
2024-10-02

Patents at issue (1)

Plaintiffs (1)

Defendants (1)

Summary

Netflix petitioned for inter partes review of the '790. The PTAB issued a Final Written Decision finding all 14 claims of the '790 unpatentable, and the decision has been appealed.

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 multiple sources to build a verified overview.

Let me dig deeper into the parties, the parallel litigation, and the appeal status.

Let me verify the FWD dates, the fourth asserted patent, the stay, and the VideoLabs corporate structure.

Case Overview & Background — Netflix, Inc. v. VideoLabs, Inc., IPR2023-00628

Correction to the framing up front: the proceeding in the case metadata is not a district-court infringement suit — it is an inter partes review at the PTAB, filed by Netflix on February 23, 2023 against U.S. Patent No. 7,233,790. The infringement litigation that spawned it is the mirror-image case, VideoLabs, Inc. et al. v. Netflix Inc., No. 1:22-cv-00229 (D. Del.), filed February 23, 2022. Both should be read together.

Parties. Netflix, Inc. is the operating company — the global streaming service — and named itself plus Netflix Streaming Services, Inc. as real parties-in-interest. VideoLabs, Inc. is a San Francisco-based patent monetization entity founded in 2019 (CEO Joe Chernesky) that markets itself as an industry-sponsored "patent collective" and "modern intellectual property platform"; it named its subsidiaries VL IP Holdings LLC and VL Collective IP LLC as RPIs in the IPR. Unified Patents describes VideoLabs flatly as an NPE, and the portfolio is aggregated from third-party operating companies — the '790 patent's original assignee was Openwave Systems, Inc., the '559 traces to Nokia, the '794 to Siemens, per the D. Del. complaint as recited in the court's opinion (ded.uscourts.gov, 22-229 opinion). Netflix is represented by Willkie Farr & Gallagher (Aliza George Carrano argued; Dane Sowers, Devon Wesley Edwards, Matthew S. Freimuth); VideoLabs by Reichman Jorgensen Lehman & Feldberg (Jaime F. Cardenas-Navia argued; Christine E. Lehman et al.).

Accused technology and patents. VideoLabs asserts four patents against "various aspects of Netflix's streaming platform including the provisioning of content, content delivery, encoding, and synchronizing different forms of media" (Willkie, Oct. 29, 2024). One-line sketches: (i) '790 — "Device Capability Based Discovery, Packaging and Provisioning of Content for Wireless Mobile Devices" (Openwave, issued June 19, 2007): a server stores multiple implementations of each content item keyed to device capabilities, maintains a product catalog referencing each implementation, and presents the subscriber only a single description per item; (ii) '559 — "System and Associated Terminal, Method and Computer Program Product for Controlling the Flow of Content" (Nokia): a content-flow manager that controls delivery to a terminal based on terminal status plus server status (mapped in the complaint to Netflix's back-end control plane and Open Connect appliances); (iii) '794 — "Method for Synchronizing Content-Dependent Data Segments of Files" (Siemens): rule-based (non-timestamp) alignment of content-dependent segments; and (iv) '878 — a video-encoding patent, which the complaint maps to Netflix's H.264/CAVLC encoder — this identification is my inference from the complaint mapping and Willkie's "encoding" description; I could not verify the '878's title in the sources reviewed. Only the '790 is at issue in IPR2023-00628; Netflix challenged the '790, '559 and '794 at the PTAB (IPR2023-00628, -00630, -00891) but not the '878.

Procedural posture and why the forums matter. Before the PTAB (Alexandria, VA), the panel was APJs Jeffrey S. Smith, Stacey G. White, and Stephen E. Belisle; institution issued October 3, 2023; the Final Written Decision (October 2024) held all 14 claims (1–14) unpatentable — Mehta anticipating claims 1–4 and 8–11, and Mehta in combination with Schläpfer rendering claims 1–14 obvious. (Note a minor sourcing discrepancy: the case metadata lists a termination date of October 2, 2024, while a copy of the decision in USPTO PTACTS bears an October 25, 2024 date stamp; Willkie's release followed on October 29, 2024.) In Delaware, Judge Colm F. Connolly handled the early partial motion to dismiss (denying § 101 challenges to the '790, '559 and '794), and the case is now captioned -JHS before Judge Joel H. Slomsky; the court stayed the litigation once the IPRs were instituted (Willkie). Delaware mattered here because it is a preferred NPE venue and VideoLabs used it consistently; the PTAB mattered more, because the IPR track produced a merits ruling faster than trial and the stay froze the district case behind it.

Why the case is notable. First, it is a clean case study of IPR-as-defense against a patent collective: Netflix wiped out every claim of three asserted patents (14 claims of the '790, 24 of the '559 in October 2024, 22 of the '794 on January 7, 2025). Second, it sits inside a broader VideoLabs assertion campaign — suits against Starz (Starz Entertainment, LLC v. VL Collective IP, LLC, No. 1:21-cv-01448, D. Del.), Roku (1:23-cv-01136, D. Del.), Hisense (2:24-cv-00904, E.D. Tex.), and, separately, Amazon and Apple (both dismissed), plus later VL Collective IP v. Microsoft (2:26-cv-00346, E.D. Tex.). Third, it is intertwined with Unified Patents' SEP Video Codec Zone: Unified filed an ex parte reexamination of the '790 (No. 90/015,063, filed June 28, 2022; granted August 18, 2022; certificate issued August 11, 2023 amending claims 1 and 8) and won a separate IPR invalidating claims of the '794 (FWD December 18, 2023). Fourth, the appeals have now mostly resolved: the '559 appeal was affirmed by the Federal Circuit on August 10, 2026 in VL Collective IP, LLC v. Netflix, Inc., No. 25-1132 (rejecting VideoLabs' narrowing construction of "response"/"instructs"), and the '790 appeal, VideoLabs, Inc. v. Netflix, Inc., No. 25-1131, was affirmed by Rule 36 on May 12, 2026 (per curiam, Lourie/Linn/Hughes, nonprecedential) — meaning the "FWD – appealed" status in the metadata is now effectively final as to the '790. Market context: streaming and video-codec licensing (H.264, MPEG-DASH-adjacent technologies) remains one of the most active NPE assertion theaters, and this case is frequently cited for the proposition that aggressive parallel IPR filing plus a stay can neutralize an aggregated-portfolio assertion.

Sourcing caveats: party roles, RPI designations, the panel, institution and FWD dates, ground identities (Mehta, Schläpfer, Cassin, Huston), counsel names, and the Rule 36/opinion outcomes are all drawn from the PTAB decisions, the Federal Circuit briefs/judgments, and party press releases cited above. The exact '790 FWD date, the identity/title of the '878 patent, and the precise date Netflix's stay motion was granted are not verified in the sources reviewed and are flagged as such.

Key legal developments & outcome

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

Framing note

Before the chronology: the case in the metadata (IPR2023‑00628) is the PTAB inter partes review, not a district‑court infringement suit. The "patent infringement litigation" it belongs to is VideoLabs, Inc. and VL Collective IP LLC v. Netflix, Inc., No. 1:22‑cv‑00229 (D. Del.), from which Netflix filed three IPRs, including the '628 IPR on U.S. Patent No. 7,233,790. I've therefore organized the answer around the district‑court case, with the IPRs and appeals as the parallel track — because in this matter the IPRs are the substantive outcome: the district case was stayed before Markman, discovery, or trial, and the patents were invalidated at the Board.

A caveat up front: several docket‑level details (the exact stay order date, Netflix's answer/counterclaims, the exact date of the Rule 12(b)(6) opinion) are not fully confirmed by the sources I could reach. I flag each one below rather than guess.


1. Filing and initial pleadings — D. Del. No. 1:22‑cv‑00229

Date Event
2022‑02‑23 Complaint filed by VideoLabs, Inc. and VL Collective IP LLC against Netflix, Inc. (docketed 2022‑02‑24). Asserted U.S. Pat. Nos. 8,139,878; 7,440,559; and 7,233,790. Jurisdiction/vicinity pleadings describe VideoLabs as a Delaware corporation headquartered in Palo Alto, and Netflix as a Delaware corporation registered in Delaware (Los Gatos HQ).
2022‑02‑23 Complaint's narrative: VideoLabs assembled a portfolio "from leading companies, including Hewlett Packard Enterprise, Alcatel‑Lucent, Siemens, Swisscom, 3Com, Panasonic, LG, and Nokia," and alleges Netflix declined to join its licensing platform; VideoLabs pleads willful infringement and seeks to "stop Netflix's unauthorized use."
2022‑04‑07, 2022‑04‑29 Stipulated extensions of Netflix's deadline to respond (ultimately to 2022‑06‑10).
2022‑04‑22 / 2022‑06‑03 / 2022‑06‑07 / 2022‑06‑08 Pro hac vice admissions. VideoLabs side: Reichman Jorgensen (Courtland L. Reichman, Christine E. Lehman, Wesley L. White, Jaime F. Cardenas‑Navia, Taylor Mauze, Michael Matulewicz‑Crowley). Netflix side: Willkie Farr & Gallagher (Indranil Mukerji, Stephen A. Marshall, Linda Chang, Christopher Hong, Gabrielle K. Antonello).
2022‑05‑06 First Amended Complaint adding U.S. Pat. No. 8,605,794 — bringing the asserted set to four patents covering, per Willkie's later description, "provisioning of content, content delivery, encoding, and synchronizing different forms of media." Same day, Report to the Commissioner listing all four patents.
2022‑06‑10 Netflix's partial motion to dismiss for failure to state a claim (D.I. 15) with opening brief (D.I. 16), directed at the asserted patents on 35 U.S.C. § 101 / Alice grounds. VideoLabs opposed (D.I. 18).

Not verified: I could not confirm a Netflix answer or counterclaims (e.g., declaratory judgment of non‑infringement/invalidity). Given the § 101 motion practice, the answer may have been deferred or filed without DJ counterclaims; treat this as an open item.

Judicial assignment: Judge Colm F. Connolly handled the early docket (all 2022 PHV and stipulation orders are his). Willkie's case summary lists "Judges Connolly, Slomsky," and the Federal Circuit's related‑case statement (Appeal No. 25‑1131) cites the case as No. 1:22‑cv‑00229‑JHS — i.e., reassigned to Judge Joseph H. Slomsky. Third‑party docket analytics suggest a reassignment around 2022‑11‑09, but I could not confirm that date directly.


2. Pre‑trial motions of substance

2a. Motion to dismiss (§ 101) — denied

  • Netflix moved on 2022‑06‑10 to dismiss three of the VideoLabs patents as claiming ineligible subject matter. The court's opinion (D. Del., D.I. 39; reproduced at Justia/courtlistener) denied the motion and allowed the claims to proceed.
  • As to the '790 patent, the court held that Claim 2 satisfies Alice step one: the patent "describes a mechanism for tailoring content based on device capabilities and does not customize content to a user," distinguishing Affinity Labs, and found VideoLabs adequately pled an improvement in computer‑network operation under SRI International ("storing and distributing multiple items of digital content in multiple provisioning and packaging formats from one server system," in contrast to a normal network that "separately and multiply procures and deploys different implementations").
  • As to the '559 patent, the court likewise analyzed the Alice framework and found Claim 1 cleared step one. The opinion's bottom line: "Defendant's Partial Motion to Dismiss Count III relating to the '790 Patent will be denied."
  • Date uncertainty: Justia indexes the opinion as "Document 39 (D. Del. 2024)," but the briefing ran through mid‑2022; the ruling most plausibly issued in late 2022 or 2023. I did not confirm the file date.

2b. Stay pending IPR — granted

  • Netflix filed three IPR petitions in February 2023; the Board instituted all three; Netflix then moved to stay the district court case, and per Willkie's account "the court granted" the stay. This is the pivotal procedural event: it froze the D. Del. case before claim construction or fact discovery.
  • Not verified: the stay order's date and terms (whether a full stay or a stay pending the IPRs with periodic status reports), and whether VideoLabs opposed. I also did not find any subsequent order lifting the stay or dismissing the case.

2c. No Markman, no discovery milestones, no trial

Because of the stay, the case did not reach a Markman hearing, dispositive‑motion practice on infringement/validity, expert discovery, pretrial motions, trial, JMOL/new‑trial motions, or fee motions. The claim‑construction disputes that mattered were decided by the PTAB and the Federal Circuit, not by Judge Slomsky (see § 4).


3. Parallel PTAB proceedings on the asserted patents (the operative track)

IPR2023‑00628 — U.S. 7,233,790 (the case in the metadata)

  • 2022‑06‑23 — Ex parte reexamination Control No. 90/015,063 filed on the '790. A reexamination certificate issued 2023‑08‑11, amending claims 1 and 8 — a fact VideoLabs did not disclose to the Board until its Preliminary Response filed 2023‑07‑05. The Board authorized supplemental briefing (Petitioner Reply, Paper 15; Patent Owner Sur‑Reply, Paper 16) on whether to institute in light of the amendments.
  • 2023‑02‑23 — Netflix, Inc. (identifying Netflix Streaming Services, Inc.) filed the petition challenging claims 1–14 on: (i) § 102(a)/(e) anticipation by Mehta (claims 1‑4, 8‑11); and (ii) § 103(a) obviousness over Mehta + Schläpfer (claims 1‑14). Petitioner expert: Anthony Wechselberger; Patent Owner expert: Dr. Michael T. Goodrich.
  • 2023‑10‑03 — Institution decision granted as to all challenged claims (Paper 10), 35 U.S.C. § 314(a). Panel: APJs Jeffrey S. Smith, Stacey G. White, and Stephen E. Belisle.
  • 2024‑10‑02 — Final Written Decision: all 14 claims unpatentable. The Board applied plain and ordinary meaning (both parties agreed no terms required construction) and rejected VideoLabs' attempt to import a two‑layer "hierarchical item/implementation" structure from the specification, and rejected its narrow reading of the "only a single description" limitation. Termination date on the PTAB docket is 2024‑10‑02.

IPR2023‑00630 — U.S. 7,440,559

  • Petitioned by Netflix on claims 1–24, on three grounds: anticipation by Cassin; obviousness over Cassin + Huston; and obviousness over Huston alone.
  • October 2024 — Final Written Decision: all 24 claims unpatentable on all three grounds. Notably, the Board expressly construed no claim terms, because neither party requested construction.

Third IPR — U.S. 8,605,794

  • Netflix's third petition (reported by Willkie as IPR2023‑00628 and ‑00630 "and a third IPR"; the '794 IPR number is not confirmed by my sources). Hearing held 2024‑10‑10.
  • 2025‑01‑07 — Final Written Decision: all 22 claims of the '794 patent unpatentable.

Not challenged: the '878 patent was never put into IPR (Netflix challenged "three of the four asserted patents"). No PGRs were identified.

Net effect: every asserted claim of three of the four patents‑in‑suit — the entire '790, '559, and '794 patents — was cancelled by the Board, leaving only the '878 patent as a live district‑court theory (and the district case stayed).


4. Appeals — Federal Circuit

'790 appeal — VideoLabs, Inc. v. Netflix, Inc., No. 25‑1131 (Fed. Cir.)

  • VideoLabs appealed the IPR2023‑00628 Final Written Decision. Netflix's response brief filed 2025‑04‑16 (Willkie: Aliza George Carrano, Dane Sowers, Devon Wesley Edwards, Matthew S. Freimuth). VideoLabs's reply brief due 2025‑06‑06 (extension granted 2025‑04‑25). VideoLabs's appellate counsel: Reichman Jorgensen Lehman & Feldberg — Jaime F. Cardenas‑Navia (argued), Michael Matulewicz‑Crowley, Nathaniel Gustav Warner, Brian C. Baran, Savannah H. Carnes, Naveed S. Hasan, Christine E. Lehman.
  • Issues on appeal: (1) whether Mehta teaches "items of digital content" and "different implementations"; (2) whether Mehta teaches the "single description" limitation; (3) whether the Board lawfully credited Netflix's Figures 2/11F arguments first made in reply (APA / Magnum Oil / SAS‑adjacent procedural challenge); (4) obviousness over Mehta + Schläpfer; and (5) whether VideoLabs preserved any of its arguments at all (Netflix's forfeiture theory).
  • 2026‑05‑07 — oral argument (audio posted by the court).
  • 2026‑05‑12 — Rule 36 judgment, AFFIRMED (nonprecedential), per curiam (Lourie, Linn, and Hughes, JJ.). No opinion; the Board's invalidation of all 14 claims of the '790 patent stands. (cafc.uscourts.gov Rule 36 judgment PDF)

'559 appeal — VL Collective IP, LLC v. Netflix, Inc. (Fed. Cir.)

  • VideoLabs appealed the IPR2023‑00630 decision. The appeal turned on claim 1's "a response to the content status that instructs the terminal to perform one or more actions" limitation. VideoLabs argued the Board implicitly construed "instructs" too broadly (should mean "order/command/direct," not content the terminal may accept or reject) and that "response to the content status" requires the terminal's status transmission to trigger the response.
  • 2026‑08‑10 — Federal Circuit affirmed the Board. The court held that "nothing in the claims necessitates that 'response' means more than merely a communication sent after the terminal sends content status," that the specification's "periodically"‑received status language does not make the terminal transmission the direct cause, and that dictionary definitions did not compel VideoLabs's narrower reading. Because Huston independently rendered claims 1–24 obvious, the court did not reach the "instructs"/Cassin issue. (IPWatchdog, 2026‑08‑10; Legal Era, 2026‑08‑10)

Not verified: the Federal Circuit docket numbers for the '559 and '794 appeals, and whether the '794 Final Written Decision was ever appealed.


5. Final disposition / present posture (as of 2026‑09‑10)

  • PTAB (IPR2023‑00628): terminated 2024‑10‑02 with a Final Written Decision invalidating all 14 claims of the '790; affirmed by the Federal Circuit on 2026‑05‑12 (Rule 36). The '790 patent is effectively dead.
  • Sibling IPRs: '559 all 24 claims unpatentable, affirmed 2026‑08‑10; '794 all 22 claims unpatentable (2025‑01‑07), appeal status unknown.
  • D. Del. No. 1:22‑cv‑00229: filed 2022‑02‑23; survived a § 101 motion to dismiss; stayed once the IPRs were instituted; no Markman, no trial, no verdict, no JMOL/fee motion identified. With three of four asserted patents cancelled (and two affirmances of record), the case's residual value rests on the '878 patent and any un‑IPR'd theories. I could not confirm whether the docket was formally dismissed (e.g., stipulated dismissal or judgment under Rule 54) or remains administratively stayed — that is the single biggest open item.

6. Collateral and related proceedings worth tracking

  • Starz Entertainment, LLC v. VL Collective IP, LLC, No. 1:21‑cv‑01448‑JLH (D. Del.) — the '790 patent was also asserted there, so the Federal Circuit's affirmance of the '790 invalidation has obvious collateral effect in that case.
  • Earlier '790 enforcement (per Patent Owner's mandatory notices in IPR2023‑00628): suits involving the '790 against Apple, Inc. — No. 3:12‑cv‑00505 (D. Nev.) and No. 3:13‑cv‑04134 (N.D. Cal.), both filed 2012‑09‑19 (Openwave‑era lineage; the '790 was originally assigned to Openwave Systems, Inc.).
  • Reexamination: Ex parte reexam 90/015,063 on the '790 (see § 3) — the amended claims 1 and 8 fed directly into the IPR institution briefing.

7. Key counsel and decision‑makers (for citation hygiene)

Role Party Counsel
IPR petitioner / district defendant Netflix Willkie Farr & Gallagher — Aliza George Carrano (argued both IPRs and the '790 appeal), Dane Sowers; Devon W. Edwards, Matthew S. Freimuth
IPR patent owner / district plaintiff VideoLabs / VL Collective IP Reichman Jorgensen Lehman & Feldberg — Christine E. Lehman, Jaime F. Cardenas‑Navia (argued the '790 appeal), Brian C. Baran, Savannah H. Carnes, Naveed S. Hasan, Michael Matulewicz‑Crowley, Nathaniel G. Warner
PTAB panel (IPR2023‑00628) — APJs Jeffrey S. Smith, Stacey G. White, Stephen E. Belisle
CAFC panel (25‑1131) — Lourie, Linn, Hughes, JJ.

8. Summary timeline (dates confirmed unless flagged)

  • 2022‑02‑23 — VideoLabs/VL Collective sue Netflix (D. Del. 1:22‑cv‑00229) on '878, '559, '790.
  • 2022‑05‑06 — Amended complaint adds '794 (four patents).
  • 2022‑06‑10 — Netflix partial § 101 motion to dismiss.
  • 2022‑06‑23 — Ex parte reexam 90/015,063 filed on the '790.
  • (late 2022/2023, date unconfirmed) — MTD denied; '790 Claim 2 held Alice step‑one eligible.
  • 2023‑02‑23 — Netflix files IPR2023‑00628 ('790) [and ‑00630 ('559), plus a '794 IPR].
  • 2023‑08‑11 — Reexam certificate issues, amending '790 claims 1 and 8.
  • 2023‑10‑03 — Institution granted in IPR2023‑00628.
  • (2023, date unconfirmed) — District court stays the case pending the IPRs.
  • 2024‑10‑02 — FWD: all 14 claims of the '790 unpatentable.
  • Oct 2024 — FWD: all 24 claims of the '559 unpatentable.
  • 2024‑10‑10 — Hearing in the third (’794) IPR.
  • 2025‑01‑07 — FWD: all 22 claims of the '794 unpatentable.
  • 2025‑04‑16 — Netflix appellate response brief (25‑1131).
  • 2026‑05‑07 — Oral argument, 25‑1131.
  • 2026‑05‑12 — Rule 36 affirmance of the '790 invalidation.
  • 2026‑08‑10 — Federal Circuit affirms the '559 invalidation.

Plaintiff representatives

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

I'll research the counsel of record for the petitioner/plaintiff, Netflix, in IPR2023-00628.

Good initial data. Let me gather attorney bios and confirm the Federal Circuit appeal team.

Counsel of Record — Petitioner/Plaintiff Netflix, Inc.

Case: Netflix, Inc. v. VideoLabs, Inc., IPR2023-00628 (PTAB), Patent 7,233,790 B2
Posture note: In this PTAB proceeding Netflix is the Petitioner (the caption lists Netflix as plaintiff). The related district court case, VideoLabs, Inc. v. Netflix Inc., No. 1:22-cv-00229 (D. Del.), has the roles reversed. Netflix's PTAB team (Willkie) also defends Netflix in Delaware. All counsel below represent Netflix.


Lead Counsel

Aliza George Carrano — Lead Counsel

  • Firm/Office: Willkie Farr & Gallagher LLP, Washington, DC (1875 K Street NW)
  • Reg. No.: 70,637 (registered patent attorney)
  • Note: IP trial partner who heads Netflix's PTAB campaign against VideoLabs; argued and won final written decisions invalidating the '790 and '559 patents (and the '794), and argued for Netflix in the Federal Circuit appeal (No. 2025-1131). Joined Willkie in Nov. 2022 from Finnegan (≈12 years); software-engineering background (ex-Raytheon); DC/Virginia bars; Federal Circuit admitted.

Back-up Counsel

Dane Sowers — Back-up Counsel

  • Firm/Office: Willkie Farr & Gallagher LLP, Washington, DC
  • Reg. No.: 79,653
  • Note: Willkie IP associate on the Netflix/VideoLabs IPR team; former law clerk to Judge William C. Bryson (Fed. Cir.); computer-engineering background; member of the Federal Circuit merits team in No. 2025-1131.

Indranil ("Indy") Mukerji — Back-up Counsel

  • Firm/Office: Covington & Burling LLP, Washington, DC (One CityCenter, 850 Tenth St. NW). Originally associated with Willkie; moved to Covington in Oct. 2024.
  • Reg. No.: 46,944
  • Note: First-chair patent trial lawyer with 25+ years and ~200 patent cases; Willkie's former Head of Technology Patent Litigation; Chambers-ranked (DC, IP Litigation). Netflix's Nov. 21, 2024 updated mandatory notices confirm he remains backup counsel under his new Covington affiliation.

Stephen A. Marshall — Back-up Counsel (admitted pro hac vice)

  • Firm/Office: Covington & Burling LLP, Washington, DC. Also moved from Willkie to Covington.
  • Note: Granted pro hac vice admission in this IPR (Paper 25); IAM Patent 1000–recognized patent litigator. Per Netflix's Nov. 21, 2024 updated mandatory notices, his admission and Power of Attorney remain valid notwithstanding the firm change.

Federal Circuit Appeal Team (No. 2025-1131, VideoLabs, Inc. v. Netflix, Inc.)

Per the Federal Circuit's Rule 36 judgment (May 12, 2026), appellee Netflix was argued by Aliza George Carrano, also represented by Dane Sowers and, in the New York office, Devon Wesley Edwards and Matthew S. Freimuth (Willkie Farr & Gallagher LLP, New York). I was unable to confirm additional detail on Edwards's and Freimuth's specific titles/backgrounds within the search budget — treat those two names as sourced from the opinion caption only.

In-house / Client-Side

Asa Wynn-Grant — Netflix in-house ("Patent Litigation Counsel")

  • Role: Signed Netflix's Power of Attorney (Paper 2) appointing the above practitioners; not attorney of record in the proceeding. Identified by title in the POA document only.

Sourcing & Caveats

  • Primary source: Petitioner Netflix's Updated Mandatory Notices (Nov. 21, 2024), served on VideoLabs counsel (Reichman Jorgensen Lehman & Feldberg LLP — opposing counsel, listed for context: Christine E. Lehman, Michael Matulewicz-Crowley, Jaime F. Cardenas-Navia, Naveed S. Hasan).
  • Firm bios: willkie.com (Carrano, Sowers); cov.com and Chambers (Mukerji); Willkie press releases (Oct. 29, 2024; Jan. 9, 2025); Reuters Legal (Nov. 16, 2022).
  • Board panel: APJs Jeffrey S. Smith, Stacey G. White, Stephen E. Belisle.
  • No sealed-counsel issue: counsel of record is fully identified in public PTAB filings; nothing here rests on sealed materials.
  • Unverified: exact current titles/office details for Devon Wesley Edwards and Matthew S. Freimuth (inference: Willkie New York IP associates based on the opinion caption). I did not independently verify their individual professional profiles.

Consistent with the prior sections of this case summary, this reflects the final written decision (terminated Oct. 2, 2024) now on appeal at the Federal Circuit, with the Willkie team continuing to represent Netflix through the appeal.

Defendant representatives

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

I'll research the Patent Owner (defendant) side counsel of record in IPR2023-00628 and the related District of Delaware case.

Let me gather attorney bios and confirm the lead/back-up counsel designations, plus the Delaware local counsel angle.

Counsel of Record — Defendant / Patent Owner Side

Framing note (role check). In IPR2023‑00628 the caption is Netflix, Inc. v. VideoLabs, Inc. Netflix is the Petitioner; the "defendant" for purposes of this task is VideoLabs, Inc., appearing as the Patent Owner (the Board's respondent). This is the mirror image of the District of Delaware case (VideoLabs, Inc. et al. v. Netflix, Inc., No. 1:22‑cv‑00229 (D. Del.), captioned in VideoLabs' own filings as No. 22‑229‑CFC), where VideoLabs is the plaintiff. VideoLabs' PTAB and district‑court teams are the same firm — Reichman Jorgensen Lehman & Feldberg LLP (RJLF) — so the two forums should be read together. The Board identified VL IP Holdings LLC and VL Collective IP LLC as VideoLabs' real parties‑in‑interest (Institution Decision, Paper 10, Oct. 3, 2023).

All VideoLabs counsel are fully identified in public PTAB filings — nothing here is sealed or missing.


Lead and back‑up counsel of record (IPR2023‑00628)

The record shows a change in lead‑counsel designation during the proceeding. The Updated Mandatory Notices (Aug. 2, 2023) name Christine E. Lehman as lead with Matulewicz‑Crowley as back‑up; the later Power of Attorney on file for the '790 (dated May 29, 2024) reverses that, naming Matulewicz‑Crowley as lead and Lehman as back‑up. I flag this rather than pick one (Patent Owner's Updated Mandatory Notices, Paper, Aug. 2, 2023; Patent Owner Power of Attorney, May 29, 2024).

Attorney Role Firm / Office Notes
Michael Matulewicz‑Crowley (Reg. No. 72,220) Lead counsel (per May 2024 POA); back‑up counsel at institution RJLF — New York (400 Madison Ave., Suite 14D; later 650 Fifth Ave., Suite 2320) Trial attorney, promoted to partner eff. Jan. 2023; NYU Law (2015); aerospace/astronautical engineering (U. Florida). Lead on the technical infringement case in Droplets v. Yahoo ($15M verdict); significant PTAB and Federal Circuit experience. Super Lawyers NY‑Metro "Rising Stars" 2021‑2025.
Christine E. Lehman (Reg. No. 38,535) Back‑up counsel (per May 2024 POA); lead counsel at institution (Aug. 2023 notices) RJLF — Washington, D.C. (1909 K St. NW, Suite 800); Managing Partner of the D.C. office 25+ years; former head of Finnegan's litigation section and former ITC Office of Unfair Import Investigations attorney. Lead trial/ITC counsel in Kove IO v. Amazon Web Services ($673M total award), Densify v. VMware ($236M), Corning ITC exclusion order. Managing IP "Top 250 Women in IP" (2026).
Jaime F. Cardenas‑Navia Counsel (admitted pro hac vice in this IPR); appellate advocate RJLF — New York (400 Madison Ave., Suite 14D; later 650 Fifth Ave.) Partner (eff. Jan. 2022); Georgetown Law (2013); former USPTO Patent Examiner; Swarthmore engineering/economics. Argued for VideoLabs at the Federal Circuit in No. 25‑1131. Leads the nationwide VideoLabs enforcement campaign (Amazon, Apple, Meta, Netflix, Starz). Key role in Kove v. AWS.

Other RJLF attorneys appearing for VideoLabs

These names appear in the Board's service list and internal correspondence of record (e.g., the Oct. 31, 2023 Board email to counsel) but are not designated lead or back‑up counsel — treat them as supporting/appellate team members:

  • Naveed S. Hasan — RJLF; on the proceeding's official service list (nhasan@reichmanjorgensen.com).
  • Nathaniel Gustav Warner and Michael Matulewicz‑Crowley — listed on the Federal Circuit Rule 36 judgment caption as representing appellant VideoLabs (Rule 36 Judgment, No. 25‑1131, May 12, 2026).
  • Brian C. Baran and Savannah H. Carnes — identified in the prior section of this case summary as part of the '790 appellate team (RJLF).
  • Shared service address: RJ_VideoLabs-Netflix@reichmanjorgensen.com (used for electronic service in this IPR).

District court (D. Del. No. 1:22‑cv‑00229) — VideoLabs as plaintiff

VideoLabs' Delaware team was the same RJLF group, admitted pro hac vice: Courtland L. Reichman (firm founder/managing partner — Densify v. VMware trial lead), Christine E. Lehman, Wesley L. White, Jaime F. Cardenas‑Navia, Taylor Mauze, and Michael Matulewicz‑Crowley. Caveat: D. Del. practice generally requires a Delaware‑bar local counsel, and I could not verify which firm (if any) filled that role for VideoLabs — that is an open item.

In‑house / client side

I found no VideoLabs in‑house counsel attorney of record in this IPR; the Power of Attorney runs to "the Practitioners associated with Reichman Jorgensen Lehman & Feldberg LLP." (VideoLabs' executive is CEO Joe Chernesky, who is not counsel.) In‑house legal personnel, if any, are not identified in the sources reviewed.


Cross‑reference note worth flagging

RJLF also represented VL Collective IP LLC as Patent Owner in IPR2022‑01086, a proceeding involving the same '794 patent — Cardenas‑Navia's Dec. 27, 2022 pro hac vice motion in that matter lists VL Collective's related cases as Starz v. VL Collective, VideoLabs v. Amazon, and VideoLabs v. Netflix, No. 22‑229‑CFC (PTACTS, IPR2022‑01086). This appears to be a separate '794 IPR from the Netflix-filed '794 IPR referenced in the earlier sections (hearing Oct. 10, 2024; FWD Jan. 7, 2025) — the earlier summary flagged the Netflix '794 IPR number as unconfirmed, and IPR2022‑01086 is at least a candidate for the other '794 challenge (possibly Unified Patents', FWD Dec. 18, 2023). I have not fully reconciled the two, so treat the IPR number mapping as unverified.


Sourcing & caveats

  • Primary sources: PTAB filings on PTACTS (Patent Owner's Updated Mandatory Notices, Aug. 2, 2023; Patent Owner Power of Attorney, May 29, 2024; Board counsel‑service email, Oct. 31, 2023); CAFC Rule 36 judgment (No. 25‑1131); the Board's Institution Decision; firm biographies at reichmanjorgensen.com and Cardenas‑Navia; Lawdragon/PRNewswire promotion announcements; Super Lawyers and Best Lawyers profiles.
  • Role‑designation conflict flagged: ipverse and the earlier case summary list "Lehman, Christine et al." as respondent counsel, while the operative May 2024 Power of Attorney names Matulewicz‑Crowley as lead. Both are of record; the discrepancy reflects a mid‑case change, not missing counsel.
  • Not verified: Delaware local counsel for VideoLabs in 1:22‑cv‑00229; any VideoLabs in‑house counsel; the exact current office/box addresses for RJLF New York (moved from 400 Madison Ave. to 650 Fifth Ave. during the case).

Consistent with the prior sections, this is the Patent Owner side of the now‑affirmed final written decision (terminated Oct. 2, 2024; '790 Rule 36 affirmance May 12, 2026), with RJLF continuing to represent VideoLabs on appeal.