Roku, Inc. v. VideoLabs, Inc.

I'll research this case. Let me start with the key filings and party background.

Good foundation. Let me dig into the '790 patent itself, the parallel Netflix IPR, and the district court litigation.

Let me research VideoLabs' corporate background, the district court case status, and the Federal Circuit appeal.

Scope note before the chronology

The authoritative case metadata here is a PTAB proceeding, not a district court case: Roku, Inc. v. VideoLabs, Inc., IPR2025-00072, filed 2024-11-08, terminated 2025-04-01 on settlement, pre-institution, on U.S. Patent No. 7,233,790 (the "'790 patent"). See PTAB docket, https://gaeflexstaging-dot-docketupdate.appspot.com/cases/PTAB/IPR2025-00072/Roku_Inc._v._VideoLabs_Inc/; https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2025-00072.

There is therefore no "Roku v. VideoLabs" infringement action. The infringement litigation that spawned this IPR is the mirror-image case, VideoLabs, Inc. and VL Collective IP LLC v. Roku, Inc., C.A. No. 1:23-cv-01136-JHS (D. Del.), before Judge Joel H. Slomsky (E.D. Pa., sitting by designation). I cover that action first because it supplies the complaint/answer/Markman/trial sequence you asked about, then the eight parallel PTAB proceedings (including IPR2025-00072), then the final disposition. Where I could not verify a fact from a primary source, I say so.

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1. Filing and initial pleadings — D. Del. C.A. No. 23-1136

Answer/counterclaims: I found no indexed answer or counterclaim by Roku in 23-1136. Roku responded with a motion to dismiss rather than an answer, and the case was stayed before an answer appears in the docket summaries. Treat "Roku asserted invalidity/non-infringement counterclaims" as unverified — do not assume it happened.

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2. Pre-trial motions of substance

• Motion to dismiss (twice). Granted in part/denied as to the FAC on 2024-05-16 (D.I. 31). The earlier motion (D.I. 9) was mooted by the FAC. Docket Alarm: "No. 9 MOTION to Dismiss for Failure to State a Claim… (D.Del. Feb. 16, 2024)"; "No. 31" denial recited in D.I. 37.
• Motion to stay pending IPR — the decisive motion. Filed 2024-07-18 (D.I. 36), brief at D.I. 37. Roku asked for a stay pending IPR2023-00628, -00630, -00891, IPR2024-01023, -01024, -01025 and -01026 (five of the seven asserted patents, covering 7 of the patents collectively with other proceedings) plus the Federal Circuit appeal in IPR2022-01086 concerning the '794 patent, Fed. Cir. No. 2024-1890. Roku argued the case was in its earliest stage — no Rule 26(f) conference, no discovery served, no Rule 16 conference, no trial date — and that VideoLabs, as an NPE, would suffer no cognizable prejudice. D.I. 36/37, https://www.docketalarm.com/cases/Delaware_District_Court/1--23-cv-01136/VideoLabs_Inc._et_al_v._Roku_Inc/docs/36.pdf
• 2024-07-26 — stay GRANTED (D.I. 41). The order stays the case pending conclusion (including appeals) of the enumerated IPRs and the IPR2022-01086 appeal, and directs a joint status report within 30 days of the last final, non-appealable decision. Docket Alarm: "No. 41 ORDER STAYING CASE: Defendant's Motion to Stay (Doc No. 36) is GRANTED (D.Del. Jul. 26, 2024)."

No transfer motion and no summary-judgment motion were filed — the case never got past the pleadings.

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3. Claim construction (Markman)

None in Roku's case. No Markman order, no Joint Claim Construction Statement, no Phillips briefing exists in 23-1136; the stay froze the case at the pleading stage. (The only claim-construction order cited in the Roku IPR record is from a different case — Petitioner Ex. 1007, Starz Entm't, LLC v. VL Collective IP, D. Del. No. 1:21-cv-01448-JLH.) Claim-scope disputes over the '790 patent were resolved at the PTAB, in Netflix's IPR on plain-and-ordinary meaning (see §5).

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4. Discovery milestones

None of strategic significance occurred. Roku's stay brief states that as of 2024-07-18 no Rule 26(f) conference had been held, no discovery requests served, no initial disclosures exchanged, and no case schedule or trial date set. That was a load-bearing fact for the stay ruling. The stay issued eight days later.

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5. Parallel PTAB proceedings on the asserted patents (and their effect)

A. Roku's own IPR wave (2024–2025). Roku filed at least eight IPRs against the seven asserted patents, including IPR2024-01023/-01024/-01025/-01026 on 2024-06-14, and IPR2025-00071 ('559 patent, filed 2024-11-11) and IPR2025-00072 ('790 patent, filed 2024-11-08).

*B. The '790 patent's operative PTAB record — IPR2023-00628, Netflix, Inc. v. VideoLabs, Inc.:*

• Filed 2023-02-23; instituted 2023-10-03 on claims 1–14 (Paper 17). https://www.docketalarm.com/cases/PTAB/IPR2023-00628/Netflix_Inc._v._VideoLabs_Inc/docs/10-03-2023-Board/Institution_Decision__Grant-17-Institution_Decision__Grant.pdf
• Final Written Decision in October 2024 (indexes show 2024-10-02; the PTAB decision copy in the record bears "Date: October 25, 2024") holding all 14 claims of the '790 patent unpatentable — claims 1–4 and 8–11 anticipated by Mehta, and claims 1–14 obvious over Mehta + Schläpfer. https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1553655](/patent/1553655)/download-documents?artifactId=Xqv6fMPoCedaLK0IfmCKYGYcvVz-eVKQH2pGyQeedCA5-TX2Lam1kxQ
• Appeal: VideoLabs, Inc. v. Netflix, Inc., Fed. Cir. No. 2025-1131 (VideoLabs appealing). Affirmed per Fed. Cir. R. 36 (nonprecedential) on 2026-05-12 by a panel of Lourie, Linn, and Hughes. https://cafc.uscourts.gov/opinions-orders/25-1131.RULE_36_JUDGMENT.5-12-2026_2692278.pdf
• Ex parte reexamination Control No. 90/015,063 ('790), filed 2022-06-23; reexamination certificate issued 2023-08-11, amending independent claims 1 and 8. (Cited in the IPR2023-00628 institution decision and as Petitioner Ex. 1014 in IPR2025-00072.)
• Related wins: IPR2023-00630 ('559, all 24 claims unpatentable, Oct. 2024) and IPR2023-00891 ('794, all 22 claims unpatentable, FWD 2025-01-07). Willkie client alerts: https://www.willkie.com/news/2024/10/willkie-invalidates-two-patents-on-behalf-of-netflix and https://www.willkie.com/news/2025/01/willkie-successfully-invalidates-another-videolabs-patent-on-behalf-of-netflix

C. IPR2025-00072 itself (the instant proceeding), minute-by-minute:

D. Ripple effects worth flagging. VideoLabs opposed ASUSTeK's motion for joinder into IPR2024-01023, arguing (i) the Roku IPR's termination renders joinder moot and (ii) joinder would let ASUSTeK circumvent the § 315(b) one-year bar; the Board had instituted that Roku IPR on 2024-12-05. https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1557091](/patent/1557091)/download-documents?artifactId=QKP1JUj9EzZWtJJT0BaqHwaxvpiE242xUXiLfrERH1H0awiR6iKQePE

E. Other fora on the same patents. The '790 patent has been litigated in Starz Entertainment, LLC v. VL Collective IP, LLC, No. 1:21-cv-01448-JLH (D. Del.); VideoLabs, Inc. v. Netflix, Inc., No. 1:22-cv-00229 (D. Del.) (stayed pending the IPRs); and older actions (Unwired Planet v. Apple, N.D. Cal. 3:13-cv-04134; Apple, D. Nev. 3:12-cv-00505). Roku's stay brief also referenced a trial scheduled for August 2025 in the Western District of Texas involving several of the same asserted patents; I could not verify that case name from the sources retrieved, so treat the identity of that WDTX action as unsourced.

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6. Trial, verdict, post-trial motions

None. There was no Markman, no trial, no verdict, no JMOL/new-trial/fee motion, and no appeal in 23-1136. The equivalent merits adjudications happened at the PTAB: the '790, '559 and '794 patents were invalidated in Netflix's IPRs, and the '790 invalidity judgment was affirmed by the Federal Circuit (Rule 36) on 2026-05-12.

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7. Settlement, dismissal, judgment, or appeal — final disposition and present posture

• Global settlement: executed 2024-12-19; it is the stated basis for terminating the Roku IPRs, including IPR2025-00072 (terminated pre-institution, 2025-04-01).
• IPR2025-00072 is over: terminated by joint request, no institution decision, no estoppel, fee refunded. That is the final disposition of the case in the metadata.
• D. Del. 23-1136: docket flags show STAYED and CLOSED as of the indexed snapshot (https://www.docketalarm.com/search/?f=party_obj.name_exact-Roku&q=patent%3A%288291236%29). I could not confirm whether the "CLOSED" flag reflects an administrative closing on stay or a formal dismissal/stipulated dismissal entered after the settlement — the sourcing is ambiguous, so I would not represent that a dismissal judgment was entered without pulling the docket from PACER.
• VideoLabs' collateral losses are final as to the '790 patent: PTAB invalidity affirmed by the Federal Circuit on 2026-05-12 (Fed. Cir. No. 2025-1131).

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Bottom line

Roku's IPR2025-00072 was one flank of a multi-front defensive campaign — eight Roku IPRs plus a stay motion — against a seven-patent NPE complaint filed on 2023-10-11 in Delaware. The stay issued on 2024-07-26 (D.I. 41) before any discovery or Markman, and the parties settled on 2024-12-19, which unwound the IPRs in sequence from January through April 2025. IPR2025-00072 never reached institution; it died by joint motion on 2025-04-01. Meanwhile, the '790 patent's substantive fate was decided in Netflix's IPR2023-00628 (all claims unpatentable, October 2024; affirmed 2026-05-12), which in practical terms gave Roku the outcome it wanted from the Delaware case without a trial.

I'll research this. Note an important framing point up front: IPR2025-00072 is a PTAB proceeding where Roku is the petitioner, so "plaintiff-side" counsel here means Roku's IPR counsel of record (plus any parallel district court/ITC counsel for Roku in the related VideoLabs campaigns). Let me search.

Good — I have the key docket pointers. Let me pull the actual power-of-attorney filings and the parallel district court / ITC counsel for Roku.

Now let me pin down the full names on both the PTAB side (Wolf Greenfield) and the parallel D. Del. side (Gibson Dunn + Morris Nichols), plus any ITC track.

Bottom line up front

The case you flagged, IPR2025-00072 (Roku, Inc. v. VideoLabs, Inc.), is a PTAB inter partes review, not a district court infringement suit. Roku is the petitioner — i.e., the "plaintiff-side" party in the PTAB framing the metadata uses. Its counsel of record are Wolf, Greenfield & Sacks, P.C., with Scott A. McKeown as lead. The parallel district court case in which the same '790 patent was asserted is VideoLabs, Inc. v. Roku, Inc., 1:23-cv-01136-JHS (D. Del.), where the roles are reversed (VideoLabs is plaintiff, Roku the defendant) and Roku is represented by Gibson, Dunn & Crutcher LLP with Morris, Nichols, Arsht & Tunnell LLP as Delaware counsel. I cover both, since "plaintiff" is ambiguous across the two proceedings.

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1. Counsel of record for Roku in IPR2025-00072 (petitioner side)

Sourcing / confidence: GreyB's IP Verse docket entry for IPR2025-00072 lists "McKeown, Scott et al." as the petitioner counsel of record (https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2025-00072). The Wolf Greenfield team names are confirmed verbatim from the certificate-of-service blocks in the companion Roku v. VideoLabs IPRs, IPR2024-01023/01024/01025/01026, where VideoLabs' counsel served "Wolf, Greenfield & Sacks, P.C. — Scott A. McKeown … Libbie A. DiMarco … Victor Cheung" (e.g., Patent Owner's Supplemental Mandatory Notice, Nov. 19, 2024, via docketalarm.com).

Caveat: I was not able to retrieve the text of Paper 1 — Roku's Power of Attorney filed 11/8/2024 in IPR2025-00072 itself (the PTAB docket shows it exists). So the specific lead/back-up designations in this proceeding are inferred from the companion Roku–VideoLabs IPRs and the GreyB counsel listing, rather than quoted from the -00072 POA. If you need the designation exactly as filed, pull Paper 1 from PTAB E2E/P-TACTS. The petition's merits exhibits also confirm the Wolf Greenfield–style Roku campaign (Ex. 1018, the Settlement Agreement, is filed confidential and is not public).

No in-house Roku attorney is identified as counsel of record in the public PTAB filings I found; Roku's in-house legal team would be a real party in interest but did not appear on the PTAB service blocks. Say so rather than assume.

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2. Roku's counsel in the parallel D. Del. infringement action (VideoLabs, Inc. v. Roku, Inc., 1:23-cv-01136-JHS)

These are "Roku-side" counsel, though in that forum Roku is the defendant, not the plaintiff.

• Morris, Nichols, Arsht & Tunnell LLP — Wilmington, DE (Delaware/local counsel):

  • Jack B. Blumenfeld (Del. Bar #1014) — lead Delaware counsel; one of the most experienced Delaware patent litigators.
  • Jennifer Ying (Del. Bar #5550).
  • Both signed Defendant Roku, Inc.'s Opening Brief in Support of Its Motion to Stay Pending Inter Partes Review, D.I. 37 (July 18, 2024).

• Gibson, Dunn & Crutcher LLP — listed as "OF COUNSEL" on the same brief, spanning four offices: New York (200 Park Ave.), Irvine, CA (3161 Michelson Dr.), San Francisco (One Embarcadero Center), and Dallas (2001 Ross Ave.).

  • Honest limitation: the searchable text of D.I. 37 truncated the individual surnames ("Paul E. ___" (NY), "S. ___" (Irvine), "Jaysen S. ___" (SF), "Nathan R. ___" (Dallas)). I can confirm the firms, offices, and first names/initials as they appear, but I am not confident enough in the full surnames to state them as counsel of record — please verify against the docket (D.I. 37, p. 17) before relying on them. I won't guess.

Context: Judge Joel H. Slomsky (E.D. Pa., sitting by designation in D. Del.) granted Roku's motion to stay on July 26, 2024 (D.I. 41) — which is why the PTAB settlement and termination of IPR2025-00072 flowed through cleanly.

(For completeness: on the plaintiff side of the Delaware action, VideoLabs is represented by Michael J. Farnan, Farnan LLP, Wilmington, DE, per the summons; and in the related Netflix IPR, VideoLabs' PTAB lead counsel is Jerry D. Tice II with back-up Aaron R. Hand, both of Bunsow De Mory LLP, Redwood City, CA.)

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3. What I could NOT verify

• IPR2025-00072 Paper 1 (Roku's Power of Attorney) — text not retrieved; counsel designations inferred from companion filings.
• The settlement agreement (Ex. 1018) — filed confidential/sealed; no terms public. The Board granted the joint motion to terminate (Paper 6, Feb. 26, 2025), and approved a refund (Apr. 10, 2025).
• Any ITC Section 337 track and any W.D. Tex. VideoLabs action against Roku (a "Tex." case is referenced generically in a VideoLabs mandatory notice) — I did not confirm counsel there; treat as unverified.
• Roku in-house counsel of record — none identified publicly.

Sources: GreyB IP Verse docket for IPR2025-00072; PTAB P-TACTS/P-TACTS document downloads (Exhibit listing, joint termination motion); docketalarm.com PTAB entries for IPR2024-01023/01024/01025/01026 (mandatory notices, service blocks, Board emails); D. Del. D.I. 37 (Roku's stay brief) and D.I. 41 (stay order); Justia docket for VideoLabs, Inc. v. Roku, Inc., 1:23-cv-01136; Wolf Greenfield firm news page (Roku PTAB work).

I'll research this. Note upfront: the case in the metadata is a PTAB inter partes review, not a district court infringement suit — so the "defendant" party is the patent owner, VideoLabs, Inc., and "counsel of record" means counsel appearing in the IPR. Let me verify.

The Respondent (patent owner) side lists "Tice, Jerry et al." Let me dig into the actual papers and identify VideoLabs' counsel.

Let me confirm the full counsel lineup from the PO's Mandatory Notice and Power of Attorney in this specific IPR, plus VideoLabs' in-house counsel.

Important framing correction

The case in the metadata — Roku, Inc. v. VideoLabs, Inc., IPR2025-00072 — is not a district-court infringement suit. It is an inter partes review at the PTAB, in which Roku is the petitioner and VideoLabs is the patent owner / respondent. So the party answering to "defendant" in the metadata is VideoLabs, Inc., and its "counsel of record" are the practitioners who appeared for the patent owner in the IPR. (For completeness: in the parallel district-court litigation, VideoLabs is the plaintiff and Roku is the defendant — VideoLabs, Inc. et al. v. Roku, Inc., No. 1:23-cv-01136-JHS (D. Del.).) I've given you the IPR counsel below, and flagged the district-court roles so the record isn't confused.

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Counsel of record for VideoLabs, Inc. (Patent Owner / respondent) — IPR2025-00072

Source: VideoLabs' Power of Attorney (Paper 3, filed Nov. 25, 2024; document dated Nov. 19, 2024) and Mandatory Notices (Paper 4), both in IPR2025-00072, as reproduced on the PTAB's PTACTS/Patent Trial portal and mirrored by Docket Alarm/Unified Patents. The same lead/back-up pairing appears in the related Roku IPRs (IPR2024-01023/-01024/-01025/-01026 and IPR2025-00071).

Service/e-filing contact also on the papers: VideoLabs_Roku@bdiplaw.com (a case-specific service address used in the Board correspondence cc lines for these Roku IPRs).

No local counsel: PTAB practice does not require a local-counsel appearance (unlike D. Del. or E.D. Tex.), so there is no "local counsel" attorney of record in this IPR — none appears on the papers.

In-house: VideoLabs' Power of Attorney was also signed by a VideoLabs in-house signatory identified as "General Counsel & Chief Intellectual Property Counsel, VideoLabs, Inc." The public snippets I retrieved truncate that individual's name. I could not confirm the name from the sources available, so I am not supplying one — treat the in-house signatory as "VideoLabs GC & Chief IP Counsel (name not confirmed)."

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Scope of counsel's activity in this particular IPR

Counsel's role here was short-lived because the case settled pre-institution:

• Nov. 8, 2024 — Roku files the petition (Paper 2) challenging the '790 patent over Chatani and Chatani + Mulligan.
• Nov. 25, 2024 — VideoLabs files its Power of Attorney (Paper 3) and Mandatory Notices (Paper 4) naming Tice (lead) and Hand (back-up).
• Feb. 26, 2025 — Joint Motion to Terminate filed due to settlement (Paper 6), with the confidential settlement agreement filed as Ex. 1018.
• Apr. 1, 2025 — proceeding terminated (settled); Board approved petitioner's refund Apr. 10, 2025.

So the VideoLabs team appeared, entered its notices, and then jointly moved to terminate — no POPR/institution-stage merits briefing appears on the docket before termination.

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Caution / sourcing notes

• The docket aggregators I used render the firm name inconsistently ("Bunsow" vs. OCR-garbled "Bunswo"); the correct name is Bunsow De Mory LLP.
• Different VideoLabs IPRs use different firms. For example, in ASUSTek v. VideoLabs, IPR2025-00306, VideoLabs is represented by William D. Belanger (lead) and Bryan C. Smith (back-up) of Troutman Pepper. Do not attribute Troutman counsel to IPR2025-00072 — the papers in this case name Bunsow De Mory.
• On the district-court side of the same dispute (VideoLabs v. Roku, 1:23-cv-01136 (D. Del.), stayed July 26, 2024), Roku (the defendant there) is represented by Morris, Nichols, Arsht & Tunnell (Jack B. Blumenfeld, Jennifer Ying) with Gibson Dunn attorneys of counsel; VideoLabs is plaintiff, led by its Bunsow De Mory team.
• Everything above is drawn from PTAB filings indexed on PTACTS, Docket Alarm, Unified Patents' PTAB portal, GreyB/Ipverse, and firm/bio pages (Benchmark Litigation). I did not independently pull the sealed settlement agreement or the raw PTAB PDFs end-to-end; if you need the exact attorney of record verified line-by-line, pull Paper 3 (POA) and Paper 4 (Mandatory Notice) from PTACTS for IPR2025-00072 directly.