Stingray Group Inc. v. Edwin A. Hernandez-Mondragon

This Inter Partes Review (IPR2025-00351) involves Stingray Group Inc. challenging U.S. Patent No. 11,140,441, owned by Edwin A. Hernandez-Mondragon, before the Patent Trial and Appeal Board (PTAB). Stingray Group Inc. is a Canadian operating company that provides multi-platform music and video services, distributing content across radio, television, digital TV, internet, and mobile devices. Edwin A. Hernandez-Mondragon is an individual inventor, serial entrepreneur, and founder of EGLA CORP, a technology incubator. He is actively involved in licensing and enforcing his patent portfolio, suggesting a role consistent with a patent assertion entity (PAE).

The asserted patent, U.S. Patent 11,140,441, is titled "Broadcasting Multimedia Content and Assembling Media Streams." This patent broadly covers systems and methods for broadcasting multimedia content, including the creation of custom HTML user interfaces encapsulated into an MPEG transport stream and the rendering of webpages to generate temporal screen captures for broadcast. While there is no "accused product" directly within the IPR itself, this PTAB proceeding is linked to a co-pending patent infringement lawsuit, Hernandez v. Stingray Digital Group Inc. (Case # 1:24-cv-21226), filed in the U.S. District Court for the Southern District of Florida. The underlying district court litigation implicates Stingray's core business of multimedia content delivery and broadcasting services.

The procedural posture is critical, as the PTAB has instituted review of all claims of the '441 patent. This institution decision was made after considering Fintiv factors and Workload Memo guidance, which relate to the PTAB's discretion in whether to proceed with an IPR when parallel district court litigation exists. As a result of the IPR institution, the related district court litigation (involving Judge Rodolfo A. Ruiz, II and Chief Magistrate Judge Edwin G. Torres) has been stayed. This venue matters significantly as the PTAB offers a specialized and often more expeditious avenue for challenging patent validity compared to district court proceedings, and its decisions can effectively resolve infringement disputes. The case is notable for its clear demonstration of the strategic interplay between PTAB validity challenges and district court infringement actions. It also highlights the assertion patterns of individual patent owners like Mr. Hernandez-Mondragon, who actively monetize their intellectual property.

Patent Litigation: Edwin A. Hernandez-Mondragon v. Stingray Group Inc.

This case involves patent infringement litigation in the District Court for the Southern District of Florida and parallel Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) concerning U.S. Patent No. 11,140,441 and related patents.

Key Legal Developments and Outcome:

District Court Litigation (Southern District of Florida, Case No. 1:24-cv-21226-RAR)

• 2024-04-02 – Filing of Complaint: Edwin A. Hernandez-Mondragon (along with EGLA Corp.) initiated a patent infringement lawsuit against Stingray Group Inc., Stingray Music USA, Inc., AT&T Enterprises LLC, and Mood Media LLC. The lawsuit alleged infringement of U.S. Patent Nos. 10,123,074, 10,524,002, and 11,140,441, among others.
• Early 2025 – Motions to Dismiss: Defendants filed motions to dismiss several counts of the complaint.
• 2025-03-28 – Ruling on Motions to Dismiss and Motion to Stay: District Judge Rodolfo A. Ruiz, II, affirmed and adopted a Magistrate Judge's Report and Recommendation, which largely denied the defendants' motions to dismiss, allowing most claims to proceed to trial. Crucially, the judge also denied the defendants' motion to stay the district court litigation pending the outcome of the parallel IPR proceedings.
• 2025-04-09 – Amended Complaint Order: Plaintiff Edwin A. Hernandez-Mondragon was directed to file a Third Amended Complaint.
• 2025-10-XX – Anticipated Trial (Likely Postponed): Following the denial of the motion to stay, the patent owner, Dr. Hernandez, indicated preparations for a trial anticipated in October 2025.
• Late 2025 – Pre-trial Motions: As of December 2025, parties were actively filing pre-trial motions, including motions for summary judgment and motions in limine, with responses due later that month. No definitive outcome on these motions or whether the trial commenced in October 2025 is publicly available, but given the recent PTAB decisions, it is likely the trial was postponed or its posture altered.

Parallel PTAB IPR Proceedings (IPR2025-00351 for U.S. Patent No. 11,140,441)

• 2024-12-23 – IPR Petition Filed: Stingray Group Inc. and Stingray Music USA, Inc. filed a petition for Inter Partes Review, IPR2025-00351, challenging claims 1-26 of U.S. Patent No. 11,140,441. This was one of three IPRs filed by Stingray against Dr. Hernandez-Mondragon's patents.
• Mid-2025 – Institution of IPR: The PTAB instituted review of all challenged claims (1-26) of U.S. Patent No. 11,140,441.
• Early June 2026 – Final Written Decisions (Favorable to Patent Owner): Recent announcements from EGLA Corp., Dr. Hernandez-Mondragon's company, indicated that the PTAB issued Final Written Decisions in the related Stingray IPRs. These decisions were favorable to Dr. Hernandez-Mondragon, with his "Cloud-Based Multimedia Delivery Patents" (including the '441 patent) reportedly "withstand[ing]" the IPR challenges, and claims being "upheld." This outcome represents a victory for the Patent Owner in the IPR proceedings.

Outcome and Effect on Litigation:

The PTAB's institution of IPR did not lead to a stay of the related district court litigation; the district court judge explicitly denied the defendants' motion to stay. However, the recent Final Written Decisions from the PTAB, upholding the patentability of the challenged claims in IPR2025-00351 and related IPRs, will likely have a significant impact on the ongoing district court case. While the exact current posture of the district court litigation following these IPR outcomes is not yet detailed in public search results, the PTAB's findings against invalidity strengthen the patent owner's position.

Stingray Group Inc., the petitioner in IPR2025-00351, is represented by attorneys from Alavi & Anaipakos PLLC. The counsel of record for Stingray Group Inc. and Stingray Music USA, Inc. are:

• Masood Anjom

  • Role: Counsel
  • Firm & Office: Alavi & Anaipakos PLLC, Houston, Texas
  • Experience: Mr. Anjom is listed as counsel for Petitioners in this IPR.

• Joshua S. Wyde

  • Role: Counsel
  • Firm & Office: Alavi & Anaipakos PLLC, Houston, Texas
  • Experience: Mr. Wyde is listed as counsel of record for Petitioners in this IPR.

• Michael D. McBride

  • Role: Counsel
  • Firm & Office: Alavi & Anaipakos PLLC, Houston, Texas
  • Experience: Mr. McBride is listed as counsel of record for Petitioners in this IPR and has previously been deemed admitted pro hac vice in other PTAB proceedings, such as Google LLC et al. v. Nariste Networks Pty. Ltd., IPR2023-04374.

Edwin A. Hernandez-Mondragon, the patent owner in IPR2025-00351, is represented by attorneys from Foley & Lardner LLP and Prince Lobel Tye LLP.

The counsel of record for Edwin A. Hernandez-Mondragon are:

• Michael R. Houston

  • Role: Partner (leads the firm's Patent Office Trials Practice)
  • Firm & Office: Foley & Lardner LLP, Chicago, Illinois
  • Experience: Dr. Houston is an intellectual property attorney whose practice focuses on patent challenges before the USPTO, including Inter Partes Review (IPR) proceedings. He is also a named inventor on over 40 patents and patent applications. His experience includes litigating patents across various technology areas, such as pharmaceuticals, medical devices, and electronics. He has been recognized by Patexia® as a Top-5 Best Performing Attorney for IPRs.

• Jeffrey J. Pyle

  • Role: Partner (Practice Group Leader for Media, Publishing and First Amendment Law)
  • Firm & Office: Prince Lobel Tye LLP, Boston, Massachusetts
  • Experience: Mr. Pyle is a trial lawyer with experience in a wide variety of cases, including intellectual property matters. While his recent emphasis has been on domestic and foreign patent prosecution, his broader experience encompasses litigation and transactional matters involving patents, trademarks, copyrights, and trade secrets. He has also been recognized as a Super Lawyer for Media and Advertising, General Litigation, and Constitutional Law.