Litigation
Roku, Inc. v. Flexiworld Technologies, Inc.
TerminatedIPR2022-01267
- Filed
- 2022-07-29
- Terminated
- 2022-10-31
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
Case Overview & Background: Roku, Inc. v. Flexiworld Technologies, Inc. (IPR2022-01267)
Parties and accused technology. Roku, Inc., the petitioner, is a publicly traded operating company that makes streaming players (Express, Streaming Stick, Ultra), the Roku TV operating system, and the Roku Mobile App; its platform is embedded in smart TVs sold by TCL, Hisense, Philips, and others. Flexiworld Technologies, Inc., the patent owner, is a non-practicing entity — Unified Patents describes it as "an NPE," and Stanford's NPE Litigation Database categorizes it under "Failed startup" — founded by prolific inventor William Ho Chang, who (with co-inventor Christina Ying Liu) holds a large portfolio of short-range wireless patents dating to 2000–2002. The underlying dispute began when Flexiworld sued Roku in W.D. Tex. on July 27, 2021 (Flexiworld Techs. v. Roku, Inc., No. 6:21-cv-00767-ADA), asserting the '257 patent along with family members U.S. 7,944,577 and 9,389,822 against Roku's streaming ecosystem. Flexiworld's infringement theory: the Roku Mobile App acts as the claimed "information apparatus" that discovers a Roku device on a local network and wirelessly "casts" selected video/audio to the Roku device or Roku TV — which allegedly acts as the claimed "output controller device" associated with a television or audio output — using Wi-Fi/802.11 protocols (per the complaint analysis on the W.D. Tex. docket).
The patent and procedural posture. The sole patent at issue in this IPR is U.S. Patent No. 9,836,257 B2, "Mobile Information Apparatus That Includes Intelligent Wireless Display, Wireless Direct Display, or Transfer of Digital Content for Playing Over Air the Digital Content at Smart Televisions, Television Controllers, or Audio Output Devices." Issued December 5, 2017, from an application filed January 18, 2002 (provisional priority January 19, 2001), the '257 patent is directed to a mobile wireless apparatus (e.g., a smartphone) that establishes a short-range wireless connection (IEEE 802.11/Bluetooth) with a distinct wireless output controller associated with a TV or audio device, runs a security/authentication procedure, receives a user's GUI selection of digital content, and wirelessly transfers the content to the output controller for rendering — i.e., early-2000s "screen casting" technology. Representative claim 27 (a non-transitory computer-readable medium claim) is emblematic of the asserted functionality. Roku filed the IPR petition on July 29, 2022 (Paper 1), challenging claims 3–7, 12–16, and 27–40, with expert testimony from Dr. Samrat Bhattacharjee, concurrently filing parallel IPRs against the '822 and '577 family patents (IPR2022-01268 and IPR2022-01269). The case sat before a panel of Administrative Patent Judges Terrence W. McMillin, Christopher L. Ogden, and Brent M. Dougal (Tech Center 2600). Critically, venue and posture matter here: the W.D. Tex. Waco Division case (suffix "-ADA" = Judge Alan D. Albright, the era's most-active patent venue) was stayed while the IPRs ran, and Roku's petitions were filed within the one-year statutory bar window after service. The proceeding never reached institution: on October 27, 2022, the parties filed a Joint Motion to Terminate (Paper 7) along with a Settlement and Patent License Agreement (Ex. 2001) and a Joint Request to Keep Separate (Paper 8); the Board granted termination on October 31, 2022 (Paper 9), keeping the license terms confidential under 37 C.F.R. § 42.74(c), with a refund approved November 28, 2022. The settlement likewise resolved the W.D. Tex. litigation.
Why the case is notable. This IPR is a textbook example of coordinated NPE-defense strategy and its limits. Flexiworld — which has a history of asserting its early-2000s wireless portfolio against major tech companies — picked a fight with Roku in Albright's Waco court, and Roku responded with a three-IPR barrage against the asserted family. All three terminated pre-institution in under three months when the parties reached a global patent license, demonstrating how IPR petitions function as leverage to force portfolio-wide settlements. The deeper significance lies in what happened next on the same patent: Unified Patents had separately filed IPR2022-00775 (April 8, 2022), which was instituted on claims 27–28 (November 8, 2022) and went to a Final Written Decision (Paper 41, November 1, 2023) — but the Board upheld the claims, crediting Flexiworld's evidence of conception as early as October 22, 2000 (swearing behind the Olgaard and Acharya references via draft provisional-application file metadata). That outcome validates the strength of Flexiworld's priority claims and suggests Roku's settlement — the terms of which remain confidential — was a commercially rational exit from exposure on core casting functionality embedded across Roku's devices and licensed TV platforms. The case thus sits at the intersection of NPE assertion patterns against streaming-TV incumbents, the W.D. Tex./PTAB forum dynamic, and the strategic use of pre-institution settlements to resolve litigation while preserving the patent for continued assertion against other targets (Flexiworld later sued Sony over the same '257 patent in E.D. Tex. in December 2023, per Stanford's NPE database).
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
Key Legal Developments and Outcome — Flexiworld v. Roku (W.D. Tex.) and Related IPR2022-01267
Case Identification
- Patent infringement litigation: Flexiworld Technologies, Inc. v. Roku, Inc., No. 6:21-cv-00767-ADA (W.D. Tex., Waco Div., Judge Alan D. Albright) — the "Roku Litigation" in which the '257 patent was asserted (along with U.S. Patent Nos. 7,944,577; 9,389,822; and 10,846,031).
- Parallel PTAB case (the case in your metadata): Roku, Inc. v. Flexiworld Technologies, Inc., IPR2022-01267 (PTAB), challenging U.S. Patent No. 9,836,257 B2 ("'257 patent," wireless display/streaming of digital content from mobile devices to TVs/audio devices; inventors William Ho Chang and Christina Ying Liu).
- Related sibling litigation: Flexiworld v. Roku, No. 6:20-cv-00819-ADA (W.D. Tex., filed 2020-09-08), asserting a different patent family ('064, '114, '066 patents). The October 2022 settlement resolved this case as well.
Chronological Developments
1. Filing & Initial Pleadings
- 2021-07-27 — Flexiworld filed its Original Complaint in 6:21-cv-00767-ADA, alleging infringement of four patents: the '577 patent (claims 1, 23), the '822 patent (claim 39), the '257 patent (claim 27), and the '031 patent (claim 34). Accused products: Roku Devices (Express, Streaming Stick, Ultra), the Roku Mobile App, Roku TV OS, and Roku TV products. (Case Readiness Status Report; Ex Parte complaint analysis; Patexia.)
- 2021-08-24 — PGR2021-00111 was filed against the '031 patent (one of the four asserted patents); notice filed in the district court (ECF 24). (I could not verify who filed it or its outcome — flagged as unverified.)
- 2021-11-05 (per the parties' status report) — Roku "responded" to the complaint by filing a Motion for Partial Dismissal Due to Lack of Standing as to the '577, '257, and '031 patents (ECF 15). Note: the status report contains an internal date inconsistency (it also says briefing was to complete by 2021-10-27), so the exact filing date of ECF 15 is not fully confirmed. I did not locate a separate Roku answer/counterclaim docket entry; the standing motion functioned as the initial substantive response.
2. Pre-Trial Motions of Substance
- 2021-10-20 — Roku filed a motion to transfer venue (ECF 26). (Ruling not verified.)
- 2021-10-25 — Case Readiness Status Report: the parties agreed the case should be stayed pending resolution of the standing motion, and confirmed there would be fewer than 35 asserted claims and no technical advisor. Related co-pending cases identified: 6:20-cv-00819-ADA, 6:21-cv-00680-ADA, and 6:21-cv-00882-ADA.
- Standing (12(b)(1)/12(b)(7)) defense — In the parallel case 6:20-cv-00819-ADA, Judge Albright denied Roku's materially similar partial-dismissal-for-lack-of-standing motion on 2022-06-06 (ECF 198), rejecting Roku's argument that a 2005 Samsung assignment (through the '541 patent/'958 application) stripped Flexiworld of standing under Washington contract law. (The docket for the same motion in 6:21-cv-00767 was not separately verified; it was pending when the case settled.)
- 2022-07-29 — Roku filed three IPR petitions against three of the four asserted patents: IPR2022-01267 ('257), IPR2022-01268 ('822), and IPR2022-01269 ('577). Flexiworld's preliminary responses were due 2022-12-08. No IPR was filed against the '031 patent (it was already subject to PGR2021-00111).
- Stay pending IPR — No formal stay order was located; the case was effectively stayed by agreement pending the standing motion and then resolved before institution decisions.
3. Claim Construction (Markman)
- The case did not reach a Markman ruling. It was stayed/limited pending the standing motion, and the IPRs were filed before any claim-construction order. The only substantive "construction" activity was in the parallel Unified Patents IPR (below), where the Board construed terms under the Phillips standard in the context of the final written decision. (No district-court Markman order verified.)
4. Discovery Milestones
- Limited verified detail. In the sibling 6:20-cv-00819 case, expert discovery was active into early 2022 (e.g., Flexiworld expert Kevin C. Almeroth's opening report dated 2022-01-13 and rebuttal report dated 2022-04-08), and that case reached trial-preparation filings (proposed voir dire, verdict form, motions in limine dated 2022-03-31). For 6:21-cv-00767 specifically, discovery was truncated by the agreement to stay and the October 2022 settlement; no significant discovery order was verified.
5. Trial Events / Verdict / Post-Trial Motions
- No trial occurred in 6:21-cv-00767. The case settled before institution of Roku's IPRs and before any trial setting. (The sibling 6:20-cv-00819 case reached trial preparation in spring 2022, but its verdict/post-trial history was not verified in my search results, and it too was resolved by the 2022 settlement.)
6. Settlement, Dismissal, and Final Disposition
- 2022-10-21 — Roku and Flexiworld executed a Settlement and Patent License Agreement resolving "the entire dispute" over the '257 patent and the other asserted patents, with an agreement to (a) dismiss the Roku Litigation with prejudice and (b) terminate all pending IPRs (IPR2022-01267/01268/01269, plus the "remaining proceedings" from the earlier IPR2021 series).
- 2022-10-25 — Board (per email) authorized the joint termination filings.
- 2022-10-27 — In each of IPR2022-01267/01268/01269, the parties filed: Joint Motion to Terminate (Paper 7), the Settlement and Patent License Agreement (Ex. 2001), and a Joint Request to Keep Separate (Paper 8). The motion certified there were no collateral agreements (35 U.S.C. § 317(b)) and stated the parties were concurrently filing joint motions to dismiss all claims in the Roku Litigation with prejudice. (The district court's dismissal order entry was not independently verified, but the parties represented the dismissal was being filed concurrently.)
- 2022-10-31 — PTAB Decision — Settlement Prior to Institution of Trial (37 C.F.R. § 42.74): granted the joint motions, terminated IPR2022-01267 ('257), IPR2022-01268 ('822), and IPR2022-01269 ('577) with respect to both parties, and ordered the settlement agreement kept business confidential, separate from the patent files. The Board noted it "ha[d] not yet determined whether to institute trial." (DocketAlarm copy of decision; panel: APJs McMillin, Ogden, Dougal.)
- 2022-11-28 — PTAB refunded $25,500 in post-institution fees to Roku in IPR2022-01267 (Notice of Refund).
- Status: Terminated (settled). The license agreement resolved all pending disputes between Roku and Flexiworld across the district court and PTAB.
7. Parallel PTAB Proceedings and Their Effect
- IPR2022-00775 (Unified Patents LLC v. Flexiworld, '257 patent) — Petition filed 2022-04-08 (i.e., three months before Roku's IPRs, by a non-party). Board instituted trial on all challenged claims on 2022-11-08 — notably after Roku's IPRs were settled and terminated. The institution decision identified 6:21-cv-00767 as related litigation. In the Final Written Decision (issued ~2023-11-01; reported 2023-11-03), the same panel (APJs McMillin, Ogden, Dougal) upheld claims 27 and 28 of the '257 patent — the very claim (27) Flexiworld asserted against Roku — rejecting Unified's § 103 obviousness challenge and dismissing Flexiworld's motion to amend. Effect on the litigation: because this challenge was brought by Unified Patents (not Roku) and Roku had already settled and licensed, the FWD did not disturb the settlement, but it did remove any estoppel/validity cloud from the '257 patent and vindicated the licensed patent's validity.
- IPR2021-00713 / IPR2021-00714 (Roku v. Flexiworld) — Final Written Decisions had already issued before October 2022 (per the parties' joint motion), relating to patents in the earlier 6:20-cv-00819 litigation. The parties simultaneously moved to terminate the "remaining proceedings" as part of the same global settlement.
- PGR2021-00111 ('031 patent) — Filed 2021-08-24; outcome unverified, but the '031 patent was not part of the settled Roku IPRs.
Outcome Summary
The Roku–Flexiworld dispute — including the W.D. Tex. infringement action 6:21-cv-00767-ADA (in which the '257 patent's claim 27 was asserted) — was resolved by a confidential Patent License Agreement dated 2022-10-21. That agreement produced:
- Dismissal with prejudice of the district-court litigation;
- Pre-institution termination of Roku's three IPRs (IPR2022-01267/01268/01269) on 2022-10-31, before any merits decision;
- Confidential treatment of the settlement terms under 35 U.S.C. § 317(b)/37 C.F.R. § 42.74(c).
Post-settlement, the '257 patent survived an independent validity challenge: the PTAB's Final Written Decision in IPR2022-00775 (Nov. 2023) upheld claims 27–28 against Unified Patents' obviousness challenge.
Source & Verification Notes
- Verified via primary records: PTAB termination decision (IPR2022-01267/01268/01269, Paper 9, 2022-10-31); Joint Motion to Terminate (Paper 7, 2022-10-27); Notice of Refund (2022-11-28); Case Readiness Status Report (6:21-cv-00767, 2021-10-25); Judge Albright's 2022-06-06 standing order in 6:20-cv-00819 (ECF 198); IPR2022-00775 institution decision (2022-11-08).
- Unverified / flagged: the exact docket entries for Roku's answer/counterclaims in 6:21-cv-00767; the rulings (if any) on the 2021-10-20 transfer motion and the 6:21-cv-00767 standing motion; the district court's dismissal order entry; the PGR2021-00111 outcome; and the verdict/post-trial history of the sibling 6:20-cv-00819 case. These should be confirmed against PACER before relying on them in a filing.
In the news
What the press has reported about this case, summarized with links to the source articles.
I'll search several angles for press coverage of this case.
Let me search additional angles for press coverage.
Let me search a few more targeted angles.
Press and analyst coverage
Short version: there is no dedicated press coverage of IPR2022-01267 itself. Searches across the case caption, the party names, the '257 patent number, and the settlement produced no article from Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF, or JD Supra that reports on the Roku–Flexiworld IPR as its subject. The pre-institution termination was a one-line docket event, and because the parties' October 21, 2022 Patent License Agreement was kept confidential under 37 C.F.R. § 42.74(c), there was no settlement figure, royalty rate, or license scope for a reporter to work with. Notably, the outlets that do track NPE campaigns — RPX and Unified Patents — covered the Flexiworld campaign's other fronts rather than this termination; Unified's Unified Patents post of 2022-11-10 (four days after the Roku IPRs were terminated and ten days after the sibling W.D. Tex. cases were dismissed) discusses the '257 patent only in the context of Unified's own IPR2022-00775, noting the patent "has been asserted against Roku" without mentioning that Roku's parallel challenge had just been settled away.
The closest thing to press treatment of the Roku–Flexiworld dispute in the PTAB is a Law360 item dated 2022-10-24 headlined "Roku Gets PTAB To Trim Wireless Communications Patent," which reported that "the U.S. Patent Trial and Appeal Board has largely invalidated claims in a wireless communications patent at the center of infringement litigation lodged against Roku and Amazon in the Western District of Texas, ruling that Roku showed part of the patent is obvious based on prior art." That decision — the October 21, 2022 final written decision in IPR2021-00714 holding claims 1–10, 12 and 14 of the '064 patent unpatentable while sustaining claims 15–20 — concerned an earlier Flexiworld patent family, not the '257 patent at issue in IPR2022-01267. Caveat on the source: Law360's case page for "Roku, Inc. v. Flexiworld Technologies, Inc." lists the proceeding as an IPR "Filed: April 09, 2021" and status "Trial Instituted." That is inconsistent with the case metadata for IPR2022-01267 (filed 2022-07-29, terminated 2022-10-31), and appears to be Law360's aggregation of the Roku–Flexiworld IPR family anchored to the April 2021-filed IPRs; the '257-specific proceeding may not have its own Law360 tracking page. I flag this because it means even the trade-press docketing is ambiguous about which Roku–Flexiworld IPR is being described.
Coverage of the underlying infringement campaign is somewhat richer, though mostly from 2020–2022 and mostly in secondary outlets. LawStreetMedia reported on Flexiworld's original W.D. Tex. complaint against Roku, describing the accused Express, Express+, Premiere, Streaming Stick, Streaming Stick+ and Ultra products and summarizing the plaintiff's theory that a Roku device acts as the claimed "wireless controller" receiving content over Wi-Fi "using 'Play on Roku' and 'Casting' data output methods," and that Flexiworld sought declaratory judgment, damages, royalties and fees. RPX reported on 2021-02-11 on Flexiworld's expanding campaign — the June 2020 Amazon suit, the September 2020 Roku suit, and a new Canon case, all in Judge Albright's court — framing the central dispute as whether a prior Samsung assignment agreement divested Flexiworld of standing (the same argument Judge Albright rejected on 2022-06-06). The Georgia IP Litigation blog, republished via Lexology on 2022-11-09, covered Flexiworld's three N.D. Ga. suits against Hisense over fifteen patents and accused Hisense Smart-TVs including its "Roku TV" models, describing Flexiworld as "a research and development company in the field of wireless technologies" purporting to hold "over 117 issued patents worldwide" — an interesting characterization contrast with Unified Patents' description of the same entity as "an NPE."
The most substantive reported analysis concerns what happened to the '257 patent after Roku exited. Patexia reported on 2023-11-03 that the PTAB upheld claims 27 and 28 of the '257 patent against Unified Patents' § 103 obviousness challenge, explaining that Flexiworld prevailed in part on inventor William Ho Chang's declaration addressing "conception and diligence" (Ex. 2031) and noting the panel was APJs McMillin, Ogden and Dougal — the same panel that terminated Roku's IPR2022-01267. Patexia expressly tied the outcome back to the Roku case, stating the '257 patent "was a central point of contention in a legal battle involving Roku Inc recognized as Flexiworld Technologies, Inc. v. Roku, Inc., No. 6:21-cv-00767, filed in the Western District of Texas on July 27, 2021," and that "this case was resolved through a settlement in 2022." Where reporting goes beyond the record: Patexia's account of the '257 patent's commercial significance ("streaming from a smartphone to a television") and its description of Flexiworld's representation by "Nelson Bumgardner Albritton P.C." are editorial gloss on the filings; the firm name it uses reflects an earlier iteration of the firm now styled Nelson Bumgardner Conroy, and its counsel list (Brent Bumgardner, Charles Ginnings, T. William Kennedy) is broader than the counsel of record in IPR2022-01267. As for reported numbers: no outlet reported any damages figure, award, or settlement term in the Roku–Flexiworld matter — the license terms are confidential and, as far as these searches show, were never leaked or disclosed.
Bottom line for citation purposes: if you need press corroboration that the Roku–Flexiworld '257 dispute existed, was litigated in Albright's court and settled in 2022, Patexia (2023-11-03) and LawStreetMedia are usable. For IPR2022-01267 specifically — its filing, the three-IPR barrage, or the October 31, 2022 termination — the only reliable sources are the PTAB papers themselves (Papers 1, 7, 8, 9, 11) and docket aggregators (Docket Alarm, Patexia Research, Unified Patents' portal), not journalism.
Sources
- UNITED STATES PATENT AND TRADEMARK OFFICE
- Filed on behalf of: Flexiworld Technologies, Inc
- UNITED STATES PATENT AND TRADEMARK OFFICE
- Search court records on patent:(9836257)
- Search court records on patent:(9836257) - - All Courts
- Docket Alarm | Litigation Outcomes, Delivered - - All Courts
- Roku, Inc. v. Flexiworld Technologies, Inc., IPR2022-01267 (P.T.A.B.)
- Flexiworld patent challenged — Unified Patents
- UNITED STATES PATENT AND TRADEMARK OFFICE
- Roku, Inc. v. Flexiworld Technologies, Inc. - IPR2022-01269
- Roku, Inc. v. Flexiworld Technologies, Inc.
- Roku, Inc. v. Flexiworld Technologies, Inc. > Summary
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Nelson Bumgardner Conroy
- Timothy E. Grochocinski · plaintiff counsel
- Albritton Law
- Eric M. Albritton · plaintiff counsel
- In-house counsel
- Joseph Paul Oldaker · plaintiff counsel
- Andrew J. Wright · plaintiff counsel
Threshold clarification: this docket is an IPR, not an infringement case
IPR2022-01267 is an inter partes review before the PTAB — there is no "plaintiff" or "defendant" in the Rule 42 sense. The parties are Petitioner Roku, Inc. and Patent Owner Flexiworld Technologies, Inc. Flexiworld is the plaintiff only in the underlying W.D. Tex. infringement actions that the October 2022 settlement resolved, principally Flexiworld Technologies, Inc. v. Roku, Inc., No. 6:21-cv-00767-ADA (W.D. Tex.), which is the litigation identified in the IPR petition and in the parties' Joint Motion to Terminate (Paper 7). Below I give (A) Flexiworld's counsel of record in this IPR and (B) Flexiworld's counsel as plaintiff in the related W.D. Tex. litigation. Nothing is sealed; the termination docket is fully public.
A. Flexiworld's counsel of record in IPR2022-01267 (Patent Owner)
Per the PTAB's Notice of Refund (Paper 11, mailed Nov. 28, 2022) and the parties' Joint Motion to Terminate (Paper 7, filed Oct. 27, 2022):
- Brent N. Bumgardner — Lead counsel for Patent Owner; Reg. No. 48,476; Nelson Bumgardner Conroy P.C., 3131 W. 7th Street, Suite 300, Fort Worth, TX 76107. He signed the Joint Motion to Terminate and the settlement/business-confidential filings. He is a co-founder of the Fort Worth IP boutique and has served as Flexiworld's lead PTAB counsel across its IPR docket (e.g., lead counsel in related IPR2022-00775 on the same '257 patent, per Patent Owner's Mandatory Notices dated May 12, 2022).
- Charles Austin Ginnings — Back-up counsel; Reg. No. 62,706; Nelson Bumgardner Conroy P.C., 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462. Named in the Paper 11 counsel list for the Patent Owner; likewise back-up counsel in related IPR2022-00775.
Related IPR filings on the same '257 patent confirm the broader NBC team that would have handled this matter (though Paper 11 names only Bumgardner and Ginnings for this case): Robert A. Delafield II (back-up, NBC Fort Worth) and Timothy E. Grochocinski (back-up, pro hac vice, NBC Orland Park) — see Flexiworld's Mandatory Notices in IPR2022-00775 (May 12, 2022).
For completeness, Roku's petitioner-side counsel per Paper 11 were Patrick McKeever, Miguel Bombach, Evan Day, and Kristen Schunter (Perkins Coie LLP); Matthew C. Bernstein (Perkins Coie) was admitted pro hac vice for Roku by unopposed motion (Paper 6, Sept. 15, 2022).
B. Flexiworld's counsel as plaintiff in the underlying W.D. Tex. infringement cases
Because the IPR was terminated pre-institution on the strength of the Patent License Agreement that also dismissed the district court litigation (Joint Motion to Terminate, Paper 7, ¶¶ 3–6), the "plaintiff's counsel" question most naturally points to the district court record:
- 6:21-cv-00767-ADA (the case cited in the IPR petition): the Original Complaint's signature block identifies Timothy E. Grochocinski (Nelson Bumgardner Conroy P.C.) as counsel for Plaintiff Flexiworld; Roku was represented by Matthew C. Bernstein and Martin E. Gilmore (Perkins Coie LLP, San Diego and Austin offices).
- 6:20-cv-00819-ADA (the earlier Flexiworld v. Roku action, also settled/closed): UniCourt's docket listing shows plaintiff-side attorneys Joseph Paul Oldaker, Eric M. Albritton, Timothy E. Grochocinski, and Andrew J. Wright; Roku's attorney of record was Matthew Cook Bernstein (Perkins Coie). I could not confirm from the sources retrieved the firm affiliations of Oldaker and Wright in this specific docket, so treat those two attributions as unverified beyond the docket listing.
One-line experience notes (where reliably known)
- Brent Bumgardner: Founding member of Nelson Bumgardner Conroy; veteran patent-owner-side litigator who has quarterbacked Flexiworld's multi-forum enforcement campaign (IPRs and W.D. Tex. cases against Roku and others).
- Timothy E. Grochocinski: Illinois-licensed patent trial lawyer (NBC Orland Park office); appears as Flexiworld's district-court counsel and PTAB back-up counsel across this campaign.
- Eric M. Albritton: Longview, TX patent trial lawyer (Albritton Law) synonymous with the Eastern District of Texas patent-litigation boom; frequently represents patent owners/NPEs in Texas venues.
Bottom line: If you mean the IPR docket as filed, Flexiworld's counsel of record are Brent N. Bumgardner (lead, NBC Fort Worth) and Charles Austin Ginnings (back-up, NBC Orland Park). If you mean the underlying infringement suit, Flexiworld's plaintiff-side counsel of record include Timothy E. Grochocinski (6:21-cv-00767 and 6:20-cv-00819), with Eric M. Albritton, Joseph Paul Oldaker, and Andrew J. Wright also appearing for Flexiworld in 6:20-cv-00819 per the docket listing. All appearances ended with the October 2022 settlement and the Board's termination decision (Paper 9, Oct. 31, 2022).
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Nelson Bumgardner Conroy
- Brent N. Bumgardner · lead counsel
- Robert A. Delafield II · back-up counsel
- Charles Austin Ginnings · back-up counsel
I'll research the counsel of record for Flexiworld Technologies in IPR2022-01267.
I found key filings. Let me dig deeper into the PTAB docket entries to identify all counsel of record for Flexiworld (the patent owner/respondent) and their roles.
Let me verify the specific docket entries for IPR2022-01267, including the termination decision and any mandatory notices/powers of attorney filed by the patent owner.
Counsel of Record — Flexiworld Technologies, Inc. (Patent Owner / "Defendant")
Important framing caveat: The case in the metadata (IPR2022-01267) is a PTAB inter partes review — not a district-court infringement suit. In that proceeding, Roku is the Petitioner and Flexiworld Technologies, Inc. is the Patent Owner/Respondent (the party defending the '257 patent). The underlying infringement case — Flexiworld Technologies, Inc. v. Roku, Inc., No. 6:21-cv-00767-ADA (W.D. Tex.) — had the parties reversed (Flexiworld was plaintiff there). Flexiworld's counsel below are the attorneys of record in the IPR, which is what the docket shows.
The proceeding terminated pre-institution (Oct. 31, 2022) after the parties settled via a Patent License Agreement; Flexiworld never filed a preliminary response. Its appearances were limited to the Joint Motion to Terminate (Paper 7, Oct. 27, 2022) and the Joint Request to Keep Separate (Paper 8), plus counsel listings in the Board's Termination Decision (Paper 9) and the Nov. 28, 2022 notice.
1. Brent N. Bumgardner — Lead Counsel
- Firm/Office: Nelson Bumgardner Conroy P.C., 3131 W. 7th Street, Suite 300, Fort Worth, TX 76107 (Reg. No. 48,476).
- Basis in the record: Signed the Joint Motion to Terminate (Paper 7) on behalf of Flexiworld; listed for Patent Owner in the Board's Oct. 31, 2022 Termination Decision (Paper 9) and in the Nov. 28, 2022 PTAB notice (bbumgardner@nclaw.net). Designated lead counsel in Flexiworld's Mandatory Notices in related matters (e.g., IPR2022-00775 and IPR2022-01114).
- Experience: Longtime patent litigator and Nelson Bumgardner Conroy founding partner; lead counsel for Flexiworld across its multi-front enforcement campaign (IPRs and W.D. Tex. suits against Roku, Vizio, Hisense, and others) in wireless-display/streaming technology disputes.
2. Robert A. "Bobby" Delafield II — Back-Up Counsel
- Firm/Office: Nelson Bumgardner Conroy P.C., 3131 W. 7th Street, Suite 300, Fort Worth, TX 76107 (Reg. No. 64,709).
- Basis in the record: Listed for Patent Owner in the Termination Decision (Paper 9) as "Boddy Delafield" (a scrivener's rendering of "Bobby") with email bobby@nelbum.com; designated back-up counsel in Flexiworld's Mandatory Notices in the related IPRs (IPR2022-00775, IPR2022-01114).
- Experience: Patent litigator at Nelson Bumgardner Conroy handling PTAB and district-court work for patent owners, including the Flexiworld portfolio disputes with Roku.
3. Charles Austin Ginnings — Back-Up Counsel
- Firm/Office: Nelson Bumgardner Conroy P.C., 15020 S. Ravinia Ave., Suite 29, Orland Park, IL 60462 (Reg. No. 62,706).
- Basis in the record: Listed for Patent Owner in the Termination Decision (Paper 9) and in the Nov. 28, 2022 PTAB notice (austin@nelbum.com); designated back-up counsel in Flexiworld's Mandatory Notices in the related IPRs. (He signed parallel joint-to-terminate papers in sibling proceedings such as the PGR/IPR family.)
- Experience: Patent attorney focused on PTAB practice; part of the Flexiworld IPR defense team across the Roku-related proceedings.
Not confirmed on the IPR2022-01267 record
- Timothy E. Grochocinski (Nelson Bumgardner Conroy P.C., Orland Park, IL): listed as back-up counsel "pro hac vice to be filed" in Flexiworld's Mandatory Notices in the related proceedings (IPR2022-00775, IPR2022-01114), but I found no filing in IPR2022-01267 itself showing he appeared, and the Termination Decision's Patent Owner counsel list does not include him. Treat him as part of the broader Flexiworld team, not confirmed as counsel of record in this specific case.
- In-house counsel: None identified for Flexiworld on the public docket; Flexiworld (an NPE) appears to have been represented entirely by outside counsel here.
- No local counsel designation applies (PTAB practice uses lead/back-up counsel rather than local counsel).
Key docket sources
- PTAB Decision — Settlement Prior to Institution of Trial (Paper 9, Oct. 31, 2022), Roku v. Flexiworld, IPR2022-01267/-01268/-01269 — Patent Owner counsel list (Bumgardner, Delafield, Ginnings / Nelson Bumgardner Conroy P.C.).
- Joint Motion to Terminate (Paper 7, Oct. 27, 2022) — signed by Brent Bumgardner for Flexiworld (DocketAlarm/PTACTS).
- PTAB Notice (Nov. 28, 2022, refund approved, Paper 11) — Patent Owner service list (Bumgardner, Ginnings).
- Flexiworld Mandatory Notices in IPR2022-00775 (May 12, 2022) and IPR2022-01114 (July 18, 2022) — designations of lead/back-up counsel (used to corroborate roles because IPR2022-01267 terminated before a patent-owner mandatory notice/preliminary response was due).
If you intended the underlying W.D. Tex. infringement case (6:21-cv-00767-ADA) rather than the IPR, note that Flexiworld was the plaintiff there and Roku the defendant; that case's counsel roster (available on PACER) is separate and was not part of this analysis.